Case 1:19-cv-00859-RTH Document 51 Filed 04/23/21 Page 1 of 10
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`IN THE UNITED STATES COURT OF FEDERAL CLAIMS
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`E-NUMERATE SOLUTIONS, INC. and
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`E-NUMERATE, LLC,
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`Plaintiffs,
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`C.A. No. 19-859-RTH
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`v.
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`Defendant.
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`THE UNITED STATES OF AMERICA,
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`JOINT STATUS REPORT
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`Plaintiffs e-Numerate Solutions, Inc., and e-Numerate, LLC (collectively “e-
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`Numerate”) and Defendant the United States of America (the “Government”) respectfully
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`submit this Joint Status Report (“JSR”) pursuant to the Court’s Order of April 20, 2021. D.I.
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`49. The parties met and conferred after submitting the prior joint status report (D.I. 48) and
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`were able to reach agreement on all issues with one exception.
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`Subject to Court approval, the parties agreed that e-Numerate would file an
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`unopposed motion to file a Second Amended Complaint concurrently herewith that, inter
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`alia, asserts United States Patent 10,423,708 (“the ‘708 patent”) in addition to the
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`previously asserted patents. The Second Amended Complaint asserts infringement by
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`several government agencies in addition to the previously accused infringement by the
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`Securities and Exchange Commission (“SEC”). Specifically, the Second Amended
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`Complaint asserts infringement by the following agencies: the Federal Deposit
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`Insurance Corporation
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`(“FDIC”)/Federal Financial
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`Institutions Examination
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`Case 1:19-cv-00859-RTH Document 51 Filed 04/23/21 Page 2 of 10
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`Council(“FFIEC”); the United States Department of Treasury(“USDOT”)/Office of
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`Management and Budget (“OMB”); and the Department of Energy (“DOE”)/Federal
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`Energy Regulatory Commission (“FERC”).
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`The parties agreed that the Government would respond to the Second Amended
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`Complaint within two weeks after it is deemed filed pursuant to CFC Rule 15(a)(3).
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`In addition, the parties agreed to shorten the time for service of infringement
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`contentions for the newly asserted ‘708 patent to 4 weeks (down from 8 weeks in CFC
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`PR 4) after service of an Answer. The parties further agreed that the Government
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`would serve invalidity contentions for all asserted patents 4 weeks after Plaintiffs
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`served the infringement contentions (down from 8 weeks in CFC PR 6).
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`Subject to Court approval, the parties agreed on a schedule for claim
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`construction proceedings that tracks the schedule previously entered by the Court (D.I.
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`36). The parties’ proposed schedule is attached hereto as Exhibit A.
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`The sole remaining dispute between the parties is the production of core
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`technical documents by the Government pursuant to CFC PR 7(a) for the additional
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`government agencies named in the Complaint. As a concession, e-Numerate is willing
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`to accept a rolling production of documents for these agencies with production to be
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`complete by September 27, 2021, which is one month after this Court’s rules require
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`production (August 27, 2021). The Government requests that production of technical
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`documents be due 4 weeks after the claim construction hearing in this matter (which
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`is in late November/early December, 2021).
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`Exhibit A hereto sets forth the parties’ proposed positions along with the
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`proposed schedule for claim construction in this case. Bolded entries show the areas
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`Case 1:19-cv-00859-RTH Document 51 Filed 04/23/21 Page 3 of 10
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`of dispute.
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`Plaintiffs’ Further Position
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`e-Numerate requests that the Government be ordered to make its production of
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`technical documents pursuant to CFC PR 7(a) for all accused Government agencies on
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`a rolling basis with production to be complete by September 27, 2021. This date is
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`one month after the Government would otherwise be required to produce these
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`documents under the local patent rules.
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`e-Numerate submits that requiring the Government to produce documents by
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`this date is more than reasonable given that: (1) the Government has been on notice of
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`potential infringement of these additional agencies since at least November 23, 2020,
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`and no later than January 5, 2021; (2) the Government was explicitly made aware of
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`e-Numerate’s intent to amend the Complaint to assert infringement by these additional
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`agencies at the status conference held on March 15, 2021; (3) e-Numerate’s proposal
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`adds an entire month from when document production would have been due under the
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`CFC patent rules regardless of the shortened time to serve contentions agreed upon by
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`the parties; and (4) the Government has made no showing of good cause and/or
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`complexity necessary to depart from the time frames set forth in the rules as required
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`by CFC PR 1. In short, there is no reason why the Government cannot meet this very
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`generous schedule.
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`The infringement of the asserted patents by government agencies other than the SEC
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`has been pending in this case for a long time. e-Numerate made the Court aware of the
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`potentially broad applicability of the asserted validation patents during the status conference
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`held on November 23, 2020. When e-Numerate served its preliminary infringement
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`contentions on December 15, 2020, e-Numerate explicitly identified the FDIC/FFIEC as
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`additional infringing agencies. D.I. 44 Ex. B (non-pertinent pages omitted). e-Numerate
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`continued its investigation and made the Government aware of still additional infringing
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`agencies via letter dated January 5, 2021. D.I. 44 Ex. C.
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`Plaintiffs again made the Government (and the Court) aware of the additional
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`agencies at the status conference held on March 15, 2021. In addition, e-Numerate sent the
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`Government a proposed second amended complaint on April 2, 2021 pursuant to the Court’s
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`Order at D.I. 45. The proposed pleading explicitly named these agencies as additional
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`infringing parties.
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`During the meet and confer leading up to this filing, it became apparent that the
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`Government has done no document collection at these additional agencies. Moreover, the
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`Government has not provided e-Numerate with any quantification of the supposed burdens
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`the Government will face in making the deadlines set forth in the rules. To the extent there
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`is any burden on the Government in meeting the late-September deadline, it is one of its own
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`making.
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`Notwithstanding these blatant shortcomings in the Government’s discovery efforts,
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`e-Numerate is willing to grant the Government an extension of one month from when
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`technical documents would otherwise have been due for production by the additional
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`agencies. e-Numerate has been (and remains) willing to work with the Government on
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`discovery issues in this case. However, the Government’s position on this issue is completely
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`contrary to the local patent rules.
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`The Government’s position amounts to a complete stay of additional document
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`production until 4 weeks after the claim construction hearing (which has not been officially
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`Case 1:19-cv-00859-RTH Document 51 Filed 04/23/21 Page 5 of 10
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`scheduled). Such an extension would give the Government at least 7 months to produce
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`technical documents from the date of this filing; 8 months after e-Numerate sent a proposed
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`Second Amended Complaint to the Government; almost 9 months from the status conference
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`held on March 15, 2021; and approximately a year after e-Numerate raised this issue with
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`the Government. The Government’s proposal is manifestly unreasonable. Moreover, the
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`Government is silent as to when it would even start to produce documents as to the additional
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`agencies.
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`The law is clear that a blanket assertion of “undue burden” is insufficient to deny
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`discovery. AAB Joint Venture v. U.S., 75 Fed. Cl. 448, 457-458 (Ct. Cl. 2007)(Noting that
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`“[s]ome court have even required the objecting party to produce affidavits or offer other
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`evidence to show the nature of the burden.”); Lakeland Partners, L.L.C. v. U.S., 88 Fed. Cl.
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`124, 133 – 34 & fn. 6 (Ct. Cl. 2009). That is, the Government must make specific assertions
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`regarding why the otherwise applicable scheduling rules should be modified so drastically in
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`its favor. The Government has not done that here (nor could it).
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`The Government’s position below contain numerous assertions about purported
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`discovery deficiencies of e-Numerate as well as the purported inadequacy of e-Numerate’s
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`infringement contentions. e-Numerate disputes these statements. However, these statements
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`are irrelevant to the issue presently before the Court. e-Numerate respectfully requests that
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`the Court deny the Government’s request and order LPR Rule 7(a) production to be made on
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`a rolling basis with a completion date of September 27, 2021.
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`Defendant’s Further Position
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`Defendant first notes that its time to answer or otherwise respond to the Second Amended
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`Complaint should be determined from when the Court accepts and deems the Second Amended
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`Complaint to be filed. At this point, Defendant does not anticipate responding to the amended
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`pleading with motion practice and expects to file its answer to the amended pleading within two
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`weeks of the filing date.
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`Defendant agrees to provide its invalidity contentions according to the schedule Plaintiffs
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`have proposed. However, Defendant’s agreement to this shortened time frame is based on its
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`understanding that the new infringement contentions that Plaintiffs will be serving pursuant to the
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`Second Amended Complaint are materially similar to the infringement contentions e-Numerate
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`previously served on December 15, 2020 and February 26, 2021. Defendant bases its
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`understanding on counsel’s representation at the recent status conference that Plaintiffs’ new
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`assertions are minor housekeeping issues based on infringement of a standard such that no
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`prejudice would arise from the new assertions. See, e.g., 3/15/2021 Hr. Tr. at 21:4-9 (“So it's sort
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`of a housekeeping thing. So we wanted to align the validation patents so that there are three
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`validation patents being asserted against the vendors and the same three validation patents are also
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`being asserted against the Government...”); 42:23 (“So in our view, if one of them infringes, they
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`all infringe.”).
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`The Second Amended Complaint does not provide any justification for e-Numerate to
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`amend its infringement theories or interpretations of its asserted claims. Rather, e-Numerate may
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`supplement with respect to the newly asserted patents and agencies, or where a previously asserted
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`patent is being asserted for the first time against the previously named agency, the Securities and
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`Exchange Commission. Defendant reserves the right to move to strike any infringement
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`contentions that are inconsistent with this understanding and may also move for further extensions
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`to the schedule.
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`Defendant disputes Plaintiffs’ implication that it had a duty to collect documents as to all
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`Case 1:19-cv-00859-RTH Document 51 Filed 04/23/21 Page 7 of 10
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`the newly asserted agencies prior to the filing of the Second Asserted Complaint. Defendant
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`repeatedly requested that Plaintiffs provide a proposed amended complaint with its allegations as
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`to all agencies after it had a basis to make those allegations. Plaintiffs initially indicated they
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`would provide such an amended complaint in February but only agreed to provide it on April 2
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`after the Court requested that they do so at the March 15th Status Conference.
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`Defendant respectfully requests that the Court stay the deadline as to the core technical
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`documents required under PRCFC 7(a) for the newly named agencies until four weeks after the
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`claim construction deadline for several reasons. First, Defendant has already produced tens of
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`thousands of pages of technical documents as to the S.E.C. but Plaintiffs have made no use of
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`those documents or any documents from third-parties despite this Court providing Plaintiffs the
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`opportunity to engage in third-party discovery five months ago. The Government maintains that
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`Plaintiffs’ infringement contentions are materially deficient and will separately present that issue
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`to the Court, but submits that this Court should not further complicate an action comprising eight
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`asserted patent with issues unrelated to the relevant claim construction deadlines. See, e.g.,
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`NeoMagic Corp. v. Trident Microsystems, Inc., 287 F.3d 1062, 1074 (Fed. Cir. 2002) (“claims
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`may not be construed with reference to the accused device.”). Further, by limiting the relevant
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`document production the Government expects that the claim construction hearing will not be
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`extended any further allowing for further issues in this case to be ruled on such as in an initial
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`period based on invalidity to further streamline the issues.
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`Second, Plaintiffs have already stated that their infringement theory is based on a standard
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`so under their own infringement theory there is little to be gained by producing technical
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`documents from numerous Government agencies other than inflicting an unnecessary burden to
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`the Government. 3/15/2021 Hr. Tr. at 42:23 (“So in our view, if one of them infringes, they all
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`Case 1:19-cv-00859-RTH Document 51 Filed 04/23/21 Page 8 of 10
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`infringe.”).
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` Third, the default deadlines in the rules allow for the Defendant to serve its core technical
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`documents 16 weeks after it answers a complaint. These rules were promulgated prior to
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`disruptions caused by the pandemic. Additionally, based on Defendant’s experience in collecting
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`and producing relevant documents, it expects that six or more months may be required with the
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`new agencies. Significantly, Defendant is not able to provide an estimate because its lead counsel
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`has not had communications with all the relevant agencies. For example, Plaintiffs’ unfiled
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`Second Amended Complaint implicates the Office of Management and Budget, a White House
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`sub-component for whom formal communication practices and procedures are required by
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`Department
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`of
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`Justice
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`policy.
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`See,
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`e.g.,
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`https://www.justice.gov/oip/foia-
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`library/communications_with_the_white_house_and_congress_2009.pdf/download
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`(memorandum released under FOIA explaining the relevant procedure in criminal matters).
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`Accordingly, Defendant respectfully requests that the Court stay the deadline pursuant to
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`PRCFC 7(a) as to new agencies until four weeks after the claim construction hearing.
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`Case 1:19-cv-00859-RTH Document 51 Filed 04/23/21 Page 9 of 10
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`Dated: April 23, 2021
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`Respectfully submitted,
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`O’KELLY & ERNST, LLC
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`/s/ Sean T. O’Kelly
`Sean T. O’Kelly
`824 N. Market Street, Suite 1001A
`Wilmington, Delaware 19801
`(302) 778-4000
`(302) 295-2873 (facsimile)
`sokelly@oelegal.com
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`and
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`O’ROURKE LAW OFFICE, LLC
`Gerard M. O'Rourke
`1201 N. Orange Street
`Suite 7260
`Wilmington, DE 19801-1186
`(484) 770-8046
`gorourke@orourkefirm.com
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`Attorneys for Plaintiffs e-Numerate
`Solutions, Inc. and e-Numerate LLC
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`Case 1:19-cv-00859-RTH Document 51 Filed 04/23/21 Page 10 of 10
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`Dated: April 23, 2021
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`Of Counsel:
`SCOTT BOLDEN
`NELSON KUAN
`Department of Justice
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`RICHARD M. HUMES
`Associate General Counsel
`GEORGE C. BROWN
`Assistant General Counsel
`Office of the General Counsel
`U.S. Securities and Exchange
`Commission
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`Respectfully submitted,
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`BRIAN M. BOYNTON
`Acting Assistant Attorney General
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`GARY L. HAUSKEN
`Director
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`/s/ Shahar Harel
`SHAHAR HAREL
`Trial Attorney
`Commercial Litigation Branch
`Civil Division
`Department of Justice
`Washington, DC 20530
`Email:
`Shahar.Harel@USDOJ.gov
`Telephone:
`(202) 305-3075
`Facsimile:
`(202) 307-0345
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`COUNSEL FOR THE UNITED STATES OF
`AMERICA
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