Case 1:19-cv-00859-RTH Document 44-2 Filed 03/11/21 Page 1 of 4
`Case 1:19-cv-00859—RTH Document 44-2 Filed 03/11/21 Page 1 of 4
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`EXHIBIT B
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`EXHIBIT B
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`Case 1:19-cv-00859-RTH Document 44-2 Filed 03/11/21 Page 2 of 4
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`IN THE UNITED STATES COURT OF FEDERAL CLAIMS
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`Plaintiffs,
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`v.
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`E-NUMERATE SOLUTIONS, INC. and E-
`NUMERATE, LLC,
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`THE UNITED STATES OF AMERICA,
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`Defendant.
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`C.A. No. 1:19-cv-00859-RTH
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`PLAINTIFFS’ PRELIMINARY INFRINGEMENT CONTENTIONS
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`Pursuant to Rules 4 and 5 of the Patent Rules of the Court of Federal Claims (“PRCFC”),
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`Plaintiffs e-Numerate Solutions, Inc., and e-Numerate, LLC (collectively “Plaintiffs” or “e-
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`Numerate”) make the following disclosures to the United States (“the Government”).
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`I.
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`Preliminary Statement
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`e-Numerate filed suit against the Government on seven (7) duly issued United States
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`Patents: 7,650,355 (“the ‘355 patent”); 8,181,816 (“the ‘816 patent”); 9,262,383 (“the ‘383
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`patent”); 9,262,384 (“the ‘384 patent”); 9,268,748 (“the ‘748 patent”); 9,600,842 (“the ‘842
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`patent”); and 10,223,337 (“the ‘337 patent”).
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`As set forth in the Complaint (D.I. 1) and the Amended Complaint (D.I. 31) e-Numerate
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`has asserted that Mattress Firm Holding Corp. (“Mattress Firm”) along with Merrill
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`Communications LLC (“Merrill Communications”) and Merrill Corporation (“Merrill
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`Corp.”)(collectively “Merrill”) have infringed the ‘355, ‘816, ‘383, ‘384, ‘748, and ‘337 patents
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`by virtue of preparing and filing documents with the U.S. Securities and Exchange Commission
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`(“SEC”) using, inter alia, Merrill’s Merrill Bridge product. The SEC is accused of infringing the
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`‘842 patent.
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`Case 1:19-cv-00859-RTH Document 44-2 Filed 03/11/21 Page 3 of 4
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`Via a merger with Toppan Vintage, the Merrill Bridge product is now called Toppan
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`Merrill Bridge. References to “Merrill Bridge” should be understood to include Toppan Merrill
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`Bridge. As further set forth in the Complaint and the Amended Complaint, the Merrill Bridge
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`product is representative of software and services provided by various service providers to assist
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`their customers with SEC filings for which the United States has assumed liability. Furthermore,
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`the Mattress Firm SEC filing is representative of filings made by SEC filers for which the United
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`States has assumed liability. To the extent the claim charts appended hereto for each asserted
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`patent refer to Mattress Firm and/or Merrill and/or Merrill Bridge, it should be understood e-
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`Numerate contends that other similarly situated companies infringe the asserted patents for the
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`reasons set forth therein.
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`e-Numerate reserves the right to specifically accuse additional third-party products and
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`services of infringement as discovery proceeds and as additional information becomes available.
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`The SEC is accused of infringing the '842 patent. SEC activities/systems/software that
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`infringe the '842 patent include, but are not necessarily limited to, the Edgar Viewer, Edger
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`Renderer, Arelle (apparently a derivative of SEC work), and Inline XBRL Viewer. Upon
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`information and belief, the SEC has internal programs that e-Numerate believes also infringe the
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`'842 patent. These include, but are not necessarily limited to, a validator program, a compliance
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`reviewer, and an anti-fraud detector. Since the filing of the Complaint in this matter, e-Numerate
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`has identified additional activities by the Government that infringe the '842 patent. These include,
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`but are not limited to, activities of the Federal Deposit Insurance Corporation ("FDIC") and the
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`Federal Financial Institutions Examination Council ("FFIEC"). Upon information and belief, both
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`agencies require federally-insured banks to submit call reports and other bank reports. Upon
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`Case 1:19-cv-00859-RTH Document 44-2 Filed 03/11/21 Page 4 of 4
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`information and belief, both the FDIC and the FFEIC have internal activities/systems/software that
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`infringe the '842 patent by processing the call reports and the summary of deposits.
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`The ‘842 patent issued on March 21, 2017. The current action against the Government was
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`filed on June 11, 2019. All claims made against all infringing Government activities accrued for
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`the ‘842 patent only as of the date the ‘842 patent issued. See, e.g., Ross-Himes Designs, Inc. v.
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`United States, 139 Fed. Cl. 444, 459 (C.F.C. 2018); Starobin v. United States, 662 F.2d 747, 750
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`(Ct. Cl. 1981) (per curiam) (“Thus, it is only when procurement of an item precedes the issuance
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`of the patent rights, that the first use of the item subsequent to the issuance of the patent becomes
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`the time of the taking for the purpose of 28 U.S.C. § 2501.”). In light of this controlling precedent,
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`no claim against the Government is time-barred as a matter of law.
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`e-Numerate reserves the right to accuse additional Government activities of infringement
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`as discovery proceeds.
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`II.
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`Disclosure Under PRCFC Rule 4
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`Pursuant to PRCFC Rule 4, e-Numerate makes the following disclosures.
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`(a) The claim in each product, process, or method of each patent at issue that is allegedly
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`infringed by each opposing party.
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`e-Numerate contends that Mattress Firm and/or Merrill infringe the following claims of
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`each asserted patent:
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`‘355 Patent – Mattress Firm and/or Merrill infringes at least claims 1, 2 – 15, 21, 25 – 26,
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`27, 28, 29 – 42, 46, 52-53, 54 and 55 under at least 35 U.S.C. §§ 271(a), (b) and/or (c).
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`‘816 Patent - Mattress Firm and/or Merrill infringes at least claims 1, 3 – 9, 10, 12 – 14,
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`17, and 19 -– 25, 26 and 27 under at least 35 U.S.C. §§ 271(a), (b) and/or (c).
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