Case 1:19-cv-00859-RTH Document 5 Filed 07/19/19 Page 1 of 5
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`IN THE UNITED STATES COURT OF FEDERAL CLAIMS
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`E-NUMERATE SOLUTIONS, INC. and
`E-NUMERATE, LLC,
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`THE UNITED STATES,
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`No. 19-859 C
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`Judge Lydia Kay Griggsby
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`Plaintiffs,
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`v.
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`Defendant.
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`DEFENDANT’S MOTION FOR AN
`ENLARGEMENT OF TIME TO RESPOND TO THE COMPLAINT
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`Defendant, the United States (“the Government”), moves pursuant to Rule 6(b) of the
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`Rules of the Court of Federal Claims (“RCFC”) for an enlargement of time to respond to
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`Plaintiffs’ Complaint. Specifically, the Government requests that its time to respond be enlarged
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`sixty (60) days from August 12, 2019, the date now set for responding, to and including October
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`11, 2019. This is the Government’s first motion for an enlargement of its time to respond to the
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`Complaint. On July 16, 2019, counsel for the Government discussed different scheduling
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`options with counsel for Plaintiffs. On July 17, July 18, and July 19, 2019, the parties attempted
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`to negotiate the requested (60) day enlargement, but could not reach an agreement with respect to
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`this motion.
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`This is a suit pursuant to 28 U.S.C. § 1498(a) to recover reasonable compensation for the
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`alleged unauthorized use of an electronic markup language to file documents with the U.S.
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`Securities and Exchange Commission (“SEC”). See Complaint ¶¶ 5, 11, 28-30. According to
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`the Complaint, Mattress Firm Holding Corporation (“Mattress Firm”) used a program created by
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`Merrill Corporation (“Merrill”) to file documents with the SEC using eXtensible Business
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`Case 1:19-cv-00859-RTH Document 5 Filed 07/19/19 Page 2 of 5
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`Reporting Language (“XBRL”). See id. Plaintiff e-Numerate Solutions, Inc. (“ESI”) asserts
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`ownership of seven patents that cover an electronic markup language known as “Reusable Data
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`Markup Language.” Complaint ¶¶ 3, 13. The seven asserted patents are members of a complex
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`web of related patent applications, including patents and applications that are abandoned,
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`expired, pending, and under prosecution:
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`Figure 1. A "family tree" depiction of the asserted patents (highlighted).
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`Prior to the present case, Plaintiffs asserted infringement of claims of four of its patents in
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`a suit against Mattress Firm and Merrill in the United States District Court for the District of
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`Delaware. See Complaint ¶¶ 8-9; e-Numerate Solutions, Inc. et al. v. Mattress Firm Holding
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`Corp. et al., Case No. 17-933-RGA (D. Del.). On July 12, 2018, Merrill petitioned the United
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`States Patent and Trademark Office (“USPTO”) to invalidate the asserted independent claims of
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`those four patents in an administrative inter partes review (“IPR”). On October 19, 2018, the
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`Government filed a Statement of Interest in the district court litigation, see Complaint ¶ 10, and
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`the district court dismissed Plaintiffs suit against Mattress Firm and Merrill on November 19,
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`Case 1:19-cv-00859-RTH Document 5 Filed 07/19/19 Page 3 of 5
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`2018. Nevertheless, Merrill’s IPR petitions continued to move forward. On February 13, 2019,
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`the USPTO instituted review of claims of the four asserted patents and set an administrative trial
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`schedule extending through at least October 23, 2019. See Attachment.
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`The Government has been diligently working on its response to the Complaint. For at
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`least four reasons, however, the time allotted for responding to the Complaint under the Court’s
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`Rules has been inadequate to properly investigate the allegations.
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`First, counsel for the Government needs the requested enlargement to analyze the claims
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`and prosecution histories for all seven asserted patents and other related patent applications. In
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`total, the Government must review 289 claims scattered among seven patents. See supra Figure
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`1; ECF 1-4 at 72-75; ECF 1-6 at 72-73; ECF 1-8 at 118-19; ECF 1-10 at 89-93; ECF 1-12 at 117-
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`20; ECF 1-14 at 66-71; ECF 1-16 at 98-99. Plaintiffs expressly pled infringement of 77 of those
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`claims, see Complaint ¶¶ 39, 53, 67, 81, 95, 109, 116, but purport to reserve the right to plead
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`infringement of other claims, see, e.g., Complaint ¶¶ 39, 81, 109, 116 (“at least”). The patent
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`claims are fundamental to the issues in the case, and the extraordinary number that could be
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`asserted as set forth in the Complaint require additional review.
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`Second, counsel for the Government needs the requested enlargement to review and
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`address the allegations in the voluminous Complaint. Plaintiffs’ Complaint comprises 124
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`numbered paragraphs, with an additional 22 sub-paragraphs. Some of the paragraphs are
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`approximately one page in length each. See, e.g., Complaint ¶¶ 17.a, 18.a, 20. Several
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`paragraphs include quotations without any citations to their source. See, e.g., Complaint ¶¶ 17-
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`18. In at least some instances, Plaintiffs simply converted their expert’s opinion testimony in the
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`IPR into factual allegations in the Complaint. See, e.g., Complaint ¶¶ 21-23. Many of Plaintiffs’
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`allegations relate to the actions of third-parties, rather than the Government itself. See
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`Case 1:19-cv-00859-RTH Document 5 Filed 07/19/19 Page 4 of 5
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`Complaint ¶¶ 39, 42-45, 53, 56-59, 67, 70-73, 81, 84-87, 95, 98-101, 116, 119-122.1 The entire
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`Complaint, including 16 attachments, comprises a total of 868 pages. These aspects of the
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`Complaint require additional review so that the Government can provide an informed and
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`comprehensive response.
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`Third, the requested enlargement is reasonable in light of the USPTO’s parallel reviews
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`of the claims of four of the asserted patents. In particular, the IPRs might simplify the issues in
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`question in this litigation if the USPTO invalidates the claims challenged by Merrill. While
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`Plaintiffs have not expressly asserted the challenged claims in this particular case, many of the
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`asserted claims directly depend on claims challenged before the USPTO.2 In addition, Plaintiffs
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`purport to reserve the right to assert the challenged claims at a later date. See supra at 3.
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`Finally, as noted above, Plaintiffs appear to understand that at least some of the same issues are
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`at stake in both proceedings, as demonstrated by their conversion of expert testimony from the
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`IPR into their allegations in this case. See id. Thus, the requested extension may allow for more
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`streamlined and efficient proceedings.
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`Fourth, the requested enlargement does not unfairly prejudice the Plaintiffs. The
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`litigation is at a very early stage, and formal discovery has not yet commenced. A 60-day
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`enlargement does not appear to harm the Plaintiffs, since Plaintiffs delayed filing their suit
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`against the Government for approximately seven months after the district court dismissed
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`Plaintiffs’ previous suit against Mattress Firm and Merrill.
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`1 Plaintiffs repeatedly misidentify these third-parties as Defendants in this case. Compare
`Complaint ¶¶ 28, 61, 69, 72, 83, 86, 100 with Complaint ¶ 5 (“Defendant is the United States of
`America”).
`2 For example, the USPTO instituted review of claims 1, 27, 28, and 54 of U.S. Patent No.
`7,650,355 as unpatently obvious. In this case, Plaintiffs asserted infringement of claims 2-15,
`21, 25-26 (which all depend from claim 1), 29-42, 46, 52-53 (which all depend from claim 28),
`and 55 (which depends from claim 1). See ECF 1-4 at 72-74.
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`Case 1:19-cv-00859-RTH Document 5 Filed 07/19/19 Page 5 of 5
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`For the above reasons, the Government respectfully requests that this motion be granted,
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`and the time to respond to Plaintiffs’ Complaint be extended to and including October 11, 2019.
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`The Government will make every effort to complete its response within the time requested.
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`Respectfully submitted,
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`JOSEPH H. HUNT
`Assistant Attorney General
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`GARY L. HAUSKEN
`Director
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`s/Scott Bolden
`SCOTT BOLDEN
`Deputy Director
`Commercial Litigation Branch
`Civil Division
`Department of Justice
`Washington, DC 20530
`Email:
`Scott.Bolden@USDOJ.gov
`Telephone:
`(202) 307-0262
`Facsimile:
`(202) 307-0345
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`July 19, 2019
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`Of Counsel:
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`RICHARD M. HUMES
`Associate General Counsel
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`GEORGE C. BROWN
`Assistant General Counsel
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`NELSON KUAN
`Senior Counsel
`Office of the General Counsel
`U.S. Securities and Exchange
`Commission
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