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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,
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`No. 19-859 C
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`Judge Lydia Kay Griggsby
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`Defendant.
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`PLAINTIFFS’ RESPONSE TO DEFENDANT’S MOTION FOR
`AN ENLARGEMENT OF TIME TO RESPOND TO THE COMPLAINT
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`Plaintiffs e-Numerate Solutions, Inc. and e-Numerate, LLC, (collectively “e-Numerate”)
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`hereby file their response to Defendant’s (“the Government”) Motion For An Enlargement of
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`Time To Respond To Complaint (“Motion”) pursuant to Rule 6(b) of the Rules of the Court of
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`Federal Claims (“RCFC”). E-Numerate does not oppose, and has not opposed, the
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`Government’s request for an enlargement. In fact, e-Numerate and the Government reached an
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`agreement on an enlargement prior to the filing of this Motion in return for the Government not
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`seeking a stay of this action in light of then-pending third party inter partes review (“IPR”)
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`petitions. The Government’s counsel, however, retreated from this agreement and insisted on
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`filing a one-sided, argumentative, and highly misleading Motion that focuses extensively on the
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`now-terminated IPRs. The Government’s actions were apparently motivated by its
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`dissatisfaction with the agreement it reached, along with a desire to color the Court’s view of e-
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`Numerate’s claims based on the pendency of the IPR petitions and their alleged relevance to the
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`pending proceeding. However, the Government failed to inform this Court that all of the IPRs it
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`Case 1:19-cv-00859-RTH Document 6 Filed 08/02/19 Page 2 of 5
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`discusses in its motion have been terminated and an adverse judgment entered against the
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`petitioner. As a result, e-Numerate must clarify and correct the record.
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`I.
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`PROCEDURAL BACKGROUND OF THIS LITIGATION
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`On July 11, 2017, e-Numerate filed a suit for patent infringement against Mattress Firm
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`Holding Corp. (“Mattress Firm”) in the United States District Court for the District of Delaware
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`(“Delaware Action”) asserting four of the seven patents asserted in this case. On September 18,
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`2017, e-Numerate amended the Complaint in the Delaware Action to add Merrill
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`Communications LLC and Merrill Corporation (collectively “Merrill”) as additional co-
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`defendants.
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`On July 12-13, 2018, Merrill filed four IPR petitions against the independent claims of
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`the four patents asserted in the Delaware Action. Last week, on July 25, 2019, the Patent Trial
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`and Appeal Board ("PTAB") entered an Order that Merrill's IPRs were considered abandoned
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`and an adverse judgment was entered against Merrill on all four of its pending IPRs. The
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`termination of all four of Merrill's IPRs and their complete lack of relevance to this action is
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`discussed below.
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` On October 19, 2018, the Government filed a Statement of Interest in the Delaware
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`Action claiming that Mattress Firm’s and Merrill’s activities associated with filing reports with
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`the SEC was done with the Government's “authorization and consent.” As a result, the
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`Government maintained that claims directed to those activities should be filed in the Court of
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`Federal Claims. Since the only activities accused of infringement in the Delaware Action were
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`SEC-related, Plaintiffs sought dismissal of the Delaware Action without prejudice. The District
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`Court agreed and dismissed the Delaware Action without prejudice on November 19, 2018.
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`2
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`Case 1:19-cv-00859-RTH Document 6 Filed 08/02/19 Page 3 of 5
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`The Government’s Motion misleadingly omits that the dismissal of the Delaware Action
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`was without prejudice. See Motion at pages 2 – 3. Similarly, the Government’s Motion implies
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`that the allegations of infringement in this case relate only to Mattress Firm and Merrill. That is
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`wrong. E-Numerate has accused all SEC filings following the Extensible Business Reporting
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`Language (“XBRL”) standard of infringing the patents-in-suit in this case. In addition, e-
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`Numerate has accused the Government of patent infringement via the Government’s activities.
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`II.
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`ALL IPRs HAVE BEEN TERMINATED AND ADVERSE JUDGMENT
`ENTERED AGAINST THE PETITIONER AND ARE IRRELEVANT TO
`THIS PENDING ACTION
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`The Government failed to amend its motion and inform this Court that all four pending
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`IPRs have been terminated by the PTAB. It is also important to note that none of the e-
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`Numerate patent claims asserted against the Government in this action have ever been subject to
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`an IPR petition.
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` With regard to the IPRs filed by Merrill, on July 24, 2019, Merrill requested to withdraw
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`from participation in the IPRs. Last week, this request was granted by the PTAB and the IPRs
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`were terminated with an adverse judgement entered against the petitioner on July 25, 2019. As a
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`result, there is simply no relevance whatsoever of the IPRs to this case. They have been
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`terminated and the claims at issue in those IPRs remain valid.
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`III. THE GOVERNMENT’S MOTION FOR AN ENLARGEMENT WAS
`UNNECESSARY
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`As set forth in the attached correspondence, e-Numerate and the Government reached an
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`agreement regarding the enlargement that the Government reneged on. Specifically, e-Numerate
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`agreed that it would grant the enlargement in return for the Government not moving to stay this
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`case in light of the then-pending IPRs. Apparently dissatisfied with the agreement it reached, the
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`Government insisted on filing a one-sided document that e-Numerate considered both improper
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`3
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`Case 1:19-cv-00859-RTH Document 6 Filed 08/02/19 Page 4 of 5
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`and misleading instead of a stipulation or a neutrally worded joint motion. Exhibits A and B.
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`Thus, all briefing on the Motion was entirely unnecessary.
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`With regard to the merits, the Government’s first and second justifications for an
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`enlargement are generally not disputed (although e-Numerate does not concede that all
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`recitations therein are correct). However, the Government’s third justification (the pendency of
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`the IPRs) is completely devoid of merit. All IPRs have been terminated. Exhibit C.
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`Finally, the Government’s fourth justification is highly misleading. The Government’s
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`filing of the Statement of Interest in the Delaware Action necessitated filing this case. The
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`Government has known this suit was coming for almost a year; and, in fact, effectively asked to
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`be sued via its Statement of Interest. Plaintiffs cannot be faulted for expanding the Complaint
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`and including additional patents not asserted in the Delaware Action given the Government’s
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`Statement of Interest in the Delaware Action.
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`IV. CONCLUSION
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`In sum, e-Numerate does not oppose granting a 60-day enlargement to the Government to
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`respond to the Complaint. E-Numerate further laments that any of this briefing, and its attending
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`imposition on the Court’s resources were made necessary simply because the Government
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`wanted to color the merits of the case at the outset by reference to matters wholly irrelevant.
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`4
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`Case 1:19-cv-00859-RTH Document 6 Filed 08/02/19 Page 5 of 5
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`Dated: August 2, 2019
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`Respectfully submitted,
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`O’KELLY ERNST & JOYCE, LLC
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`/s/ Sean T. O’Kelly
`Sean T. O’Kelly
`901 N. Market Street, Suite 1000
`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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`5
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