Case 1:19-cv-00859-RTH Document 6-2 Filed 08/02/19 Page 1 of 10
`Case 1:19—cv-00859—RTH Document 6-2 Filed 08/02/19 Page 1 of 10
`
`
`
`EXHIBIT B
`EXHIBIT B
`
`

`

`Case 1:19-cv-00859-RTH Document 6-2 Filed 08/02/19 Page 2 of 10
`From: Sean O'Kelly [mailto:sokelly@oelegal.com]
`Sent: Friday, July 19, 2019 3:13 PM
`To: Bolden, Sco (CIV) <Sco.Bolden@usdoj.gov>
`Cc: Gerard O'Rourke <gorourke@orourkefirm.com>; Kuan, Nelson <kuann@sec.gov>
`Subject: Re: e-Numerate: pleading schedule
`
`Scott,
`
`In the interest of moving this toward a mutually-agreeable resolution before you leave
`for vacation, why can't good cause just be that this suit involves several patents with
`numerous claims, and you need time to review everything, including the file wrappers,
`etc.? I think that's enough, and the court ought to find this compelling considering we
`don't oppose.
`
`We simply don't want argument, or the appearance of extraneous information that lends
`itself to argument.
`
`
`Sean
`
`
`Sean T. O'Kelly, Esq.
`O’Kelly Ernst & Joyce, LLC
`901 N. Market Street, 10th Floor
`Wilmington, DE 19801
`Phone: (302) 778-4000
`Direct: (302) 778-4001
`Facsimile: (302) 295-2873
`sokelly@oelegal.com
`
`
`On Fri, Jul 19, 2019 at 3:08 PM Bolden, Scott (CIV) <Scott.Bolden@usdoj.gov> wrote:
`
`Jerry,
`
` I
`
` agree with you that a “request” to the Court is not limited to a moon. But a “spulaon” is not a “request” to the
`Court; it will likely be viewed as an aempt to tell the Court what it must do. And, while we understand that some
`courts permit such spulaons, this Court does not. The Rules specifically acknowledge situaons where the pares
`may agree to an extension by spulaon (e.g., RCFC 26(d), RCFC 29), but this is not one of those situaons.
`
`I’m happy to work with you to resolve your concerns, but we cannot obtain relief through a moon without good
`cause. While a moon is, by nature, an “advocacy piece,” I have limited the “advocacy” to providing the “good cause”
`required by RCFC 6. I tried to make my statements as accurate, fair and neutral as reasonably possible.
`
`If we cannot reach an agreement, the rules contemplate that you will have an opportunity to oppose my moon. In
`accordance with RCFC 6.1(b), I ask you to inform me whether you will oppose. I plan to file it tonight (revising it, if
`necessary, as an opposed moon), so I request a response by 5:00pm. Thanks,
`
`Sco
`
`
`

`

`Case 1:19-cv-00859-RTH Document 6-2 Filed 08/02/19 Page 3 of 10
`From: Gerard O'Rourke <gorourke@orourkefirm.com>
`Sent: Friday, July 19, 2019 11:37 AM
`To: Bolden, Sco (CIV) <SBolden@CIV.USDOJ.GOV>; 'Sean O'Kelly' <sokelly@oelegal.com>
`Cc: Kuan, Nelson <kuann@SEC.GOV>
`Subject: RE: e-Numerate: pleading schedule
`
`Sco,
`
`What are you relying on for your statement that we cannot file a spulaon to extend me? As we read Rule 6(b)(1)
`(A), it refers to a “request” and is not limited to moons. That is, it would cover a spulaon. Rule 6.1 relates to
`moons for enlargement and appears to be limited to adversarial situaons.
`
`As we menoned to you, your enre moon is an advocacy piece that you are asking us to agree to and we simply
`cannot do that. We are more than happy to give you the 60 days based on the agreement we reached. We have
`aached a dra spulaon for your review that we think effectuates the pares’ agreement. The WHEREAS clauses in
`here are neutral and factually true. Please let us know your thoughts. Thanks.
`
`Jerry
`
`Gerard M. O'Rourke, Esq.
`O'Rourke Law Office, LLC
`1201 N. Orange Street,
`Suite 7260
`Wilmington, DE 19801-1186
`Phone: 484-770-8046
`Cell: 302-562-6960
`www.orourkefirm.com
`
`
`
`From: Bolden, Sco (CIV) [mailto:Sco.Bolden@usdoj.gov]
`Sent: Friday, July 19, 2019 10:10 AM
`To: Gerard O'Rourke <gorourke@orourkefirm.com>; 'Sean O'Kelly' <sokelly@oelegal.com>
`Cc: Kuan, Nelson <kuann@SEC.GOV>
`Subject: RE: e-Numerate: pleading schedule
`
`Jerry and Sean,
`
`The courtesy dra that I sent you is intended to be a moon that is filed on behalf of the Government. Since the
`moon seeks parcular relief from the Court, the moon needs to advocate for that relief. In this Court, the pares
`cannot simply spulate to an extension of a filing deadline. Instead, the pares must move the Court for the
`extension, and jusfy the extension.
`
`You have generally objected to some of the characterizaons of the IPR, but you have not explained any specific
`objecons to the language I used. In the IPR secon, I purposely used language that would capture both of our
`posions, i.e., “the IPRs *might* simplify the issues...”, “the requested extension *may* allow...”. I also acknowledge
`your argument: “...Plainffs have not expressly asserted the challenged claims in this parcular case...” These
`characterizaons appear neutral and fair to me. Let me know if there are specific facts that I cite that you believe are
`incorrect.
`
`It sounds like we have three opons at this point:
`
`
`

`

`Case 1:19-cv-00859-RTH Document 6-2 Filed 08/02/19 Page 4 of 10
`1. I indicate at the beginning of the moon that you do not oppose the moon and the relief sought, but that you
`dispute some of the characterizaons. For example, at the last sentence of the first paragraph could read: “On July 19,
`2019, Plainffs stated that they do not oppose the Government’s moon and the relief sought, but dispute some of the
`characterizaons in the unopposed moon.”
`
`2. You oppose the moon, and I file an opposed moon.
`
`3. We convert this into a joint moon. I’m willing to do this, but since I have already turned over a dra moon, you
`should provide a revised dra in response. In the revised dra, I would like to see an explanaon why parcular
`statements are objeconable and cannot be joint. If we reach an impasse over a specific statement, we can separately
`idenfy the statements that are Plainffs’ posion as opposed to Defendant’s posion.
`
`
`Please let me know what opon works for you, and we’ll proceed accordingly. Alternavely, if you think there is
`another opon that I haven’t considered, please let me know. Thanks,
`
`Sco
`
`From: Gerard O'Rourke <gorourke@orourkefirm.com>
`Sent: Friday, July 19, 2019 6:23 AM
`To: Bolden, Sco (CIV) <SBolden@CIV.USDOJ.GOV>; 'Sean O'Kelly' <sokelly@oelegal.com>
`Subject: RE: e-Numerate: pleading schedule
`
`Sco,
`
`To follow up on the below, Sean and I have now had an opportunity to review your unopposed moon. It is an
`advocacy piece on behalf of the US government and is unacceptable. We are willing to file a joint spulaon that
`embodies the agreement we offered and that the government accepted. If we need to include recitals, they should be
`neutral. If there is a menon of the IPR in the extension spulaon, it should simply state that an IPR has been filed by
`a third party against claims not asserted in this acon. Please send us a dra spulaon and we will turn it around
`quickly.
`
`Jerry
`
`Gerard M. O'Rourke, Esq.
`O'Rourke Law Office, LLC
`1201 N. Orange Street,
`Suite 7260
`Wilmington, DE 19801-1186
`Phone: 484-770-8046
`Cell: 302-562-6960
`www.orourkefirm.com
`
`
`
`From: Gerard O'Rourke
`Sent: Thursday, July 18, 2019 8:56 PM
`To: Bolden, Sco (CIV) <Sco.Bolden@usdoj.gov>; Sean O'Kelly <sokelly@oelegal.com>
`Subject: RE: e-Numerate: pleading schedule
`
`Sco,
`
`Why can’t we file this as a spulaon subject to approval of the Court that embodies the agreement we offered and
`that the government accepted? There are many statements in here about the IPR that we flatly do not agree with.
`
`

`

`Case 1:19-cv-00859-RTH Document 6-2 Filed 08/02/19 Page 5 of 10
`Any invalidaon of a claim has no effect on a dependent claim under 35 USC § 282. In addion, the burden of proof in
`the IPR is completely different than in this ligaon. If we need to find recite reasons in the spulaon, we can put
`something neutral in that jusfies the extension: first request, 7 patents, many claims, lengthy complaint, the
`government’s need to invesgate, etc.
`
`Please advise. Thanks.
`
`Jerry
`
`From: Bolden, Sco (CIV) [mailto:Sco.Bolden@usdoj.gov]
`Sent: Thursday, July 18, 2019 4:27 PM
`To: Gerard O'Rourke <gorourke@orourkefirm.com>; Sean O'Kelly <sokelly@oelegal.com>
`Subject: RE: e-Numerate: pleading schedule
`
`Jerry and Sean,
`
`I’ve aached a dra of the moon. Thanks,
`
`Sco
`
`From: Gerard O'Rourke <gorourke@orourkefirm.com>
`Sent: Thursday, July 18, 2019 3:14 PM
`To: Bolden, Sco (CIV) <SBolden@CIV.USDOJ.GOV>; Sean O'Kelly <sokelly@oelegal.com>
`Subject: RE: e-Numerate: pleading schedule
`
`Sco,
`
`In order to avoid any issue as to the wording of the moon, please send to Sean and me for a quick review before you
`file it. We will give comments, if any, in short order.
`
`Thank you for the update on the shutdown/stay issue.
`
`Jerry
`
`From: Bolden, Sco (CIV) [mailto:Sco.Bolden@usdoj.gov]
`Sent: Thursday, July 18, 2019 2:48 PM
`To: Gerard O'Rourke <gorourke@orourkefirm.com>; Sean O'Kelly <sokelly@oelegal.com>
`Subject: RE: e-Numerate: pleading schedule
`
`Jerry,
`
`Yes, agreed. I will prepare an unopposed moon and file it tonight or tomorrow.
`
`With respect to other grounds for a stay, it is tough to idenfy the exceponal circumstances that could require a stay.
`One conceivable (and unfortunate) basis for moving for a stay would be a government shutdown. We’ve had to do so
`several mes over the past 4-5 years, and are required to do so based on statutory obligaons. Thanks,
`
`Sco
`
`From: Gerard O'Rourke <gorourke@orourkefirm.com>
`Sent: Thursday, July 18, 2019 12:32 PM
`To: Bolden, Sco (CIV) <SBolden@CIV.USDOJ.GOV>; Sean O'Kelly <sokelly@oelegal.com>
`Subject: RE: e-Numerate: pleading schedule
`
`

`

`Case 1:19-cv-00859-RTH Document 6-2 Filed 08/02/19 Page 6 of 10
`
`
`Sco,
`
` I
`
` have approval from e-Numerate to offer the following:
`
`
`1. Government gets addional 60 days to either answer or move under Rule 12;
`2. Government will not move to stay based on pendency of IPRs at PTAB level.
`3. Item 2 is without prejudice to government moving to stay if Plainffs appeal an adverse decision from PTAB.
`
`Would you be willing to agree to this? Please advise. Also, what other basis would there possibly be to move for a stay
`in this case other than the IPR?
`
`Jerry
`
`Gerard M. O'Rourke, Esq.
`O'Rourke Law Office, LLC
`1201 N. Orange Street,
`Suite 7260
`Wilmington, DE 19801-1186
`Phone: 484-770-8046
`Cell: 302-562-6960
`www.orourkefirm.com
`
`
`
`From: Bolden, Sco (CIV) [mailto:Sco.Bolden@usdoj.gov]
`Sent: Thursday, July 18, 2019 10:11 AM
`To: Gerard O'Rourke <gorourke@orourkefirm.com>; Sean O'Kelly <sokelly@oelegal.com>
`Subject: RE: e-Numerate: pleading schedule
`
`Jerry,
`
`Essenally yes. I had proposed the extension for a set number of days as an alternave to moving to stay. So if
`Plainffs do not oppose the 60-day extension, we will make every effort to respond within the requested me, and
`would not move to stay the case on the basis of the IPRs in lieu of responding. We would not move to stay for any
`other reason in lieu of responding absent something exceponal.
`
`Note that I’m trying to be careful with my language because I can see hypothecal possibilies where we might
`consider a moon to stay at a later point in the case. For example, if the IPRs result in invalidaon of the claims and
`you appeal that decision, we might consider postponement of any final invalidity posions pending the Federal
`Circuit’s views. In addion, just to be clear, our response to the Complaint may be by filing an Answer or may be by
`filing a RCFC 12 moon – we are currently considering all opons.
`
`Thanks,
`
`Sco
`
`From: Gerard O'Rourke <gorourke@orourkefirm.com>
`Sent: Wednesday, July 17, 2019 6:08 PM
`To: Bolden, Sco (CIV) <SBolden@CIV.USDOJ.GOV>; Sean O'Kelly <sokelly@oelegal.com>
`Subject: RE: e-Numerate: pleading schedule
`
`Sco,
`
`

`

`Case 1:19-cv-00859-RTH Document 6-2 Filed 08/02/19 Page 7 of 10
`
`
`It was good speaking with you as well. Just to be clear, if we were to grant you a sixty day extension, would the United
`States agree to file an Answer and not move to stay the case? Please advise. Thank you.
`
`Jerry
`
`Gerard M. O'Rourke, Esq.
`O'Rourke Law Office, LLC
`1201 N. Orange Street,
`Suite 7260
`Wilmington, DE 19801-1186
`Phone: 484-770-8046
`Cell: 302-562-6960
`www.orourkefirm.com
`
`
`
`From: Bolden, Sco (CIV) [mailto:Sco.Bolden@usdoj.gov]
`Sent: Wednesday, July 17, 2019 5:36 PM
`To: Sean O'Kelly <sokelly@oelegal.com>; Gerard O'Rourke <gorourke@orourkefirm.com>
`Subject: RE: e-Numerate: pleading schedule
`
`Sean and Jerry,
`
`Thank you for speaking with me yesterday about the e-Numerate ligaon. I discussed the points you raised with my
`internal contacts. We intend to move for a 60-day enlargement of me to respond to the Complaint (from 8/12 to
`10/11). We believe that a 60-day request is jusfied, and a reasonable compromise with respect to the ligaon stay
`and 90-day request we discussed.
`
`As I menoned yesterday, we believe that the request is supported by: the number of patent claims and the
`complexity of their context; the voluminous Complaint; and the pending IPRs. Based on our conversaon, I understand
`that your client will likely oppose the request. Nevertheless, I appreciate your consideraon of the issue. I plan to get
`the moon on file before I am out of the office next week; so please let me know by 5:30pm tomorrow (7/18) whether
`Plainffs will oppose. Thanks,
`
`Sco
`
`From: Sean O'Kelly <sokelly@oelegal.com>
`Sent: Tuesday, July 16, 2019 2:51 PM
`To: Gerard O'Rourke <gorourke@orourkefirm.com>
`Cc: Bolden, Sco (CIV) <SBolden@CIV.USDOJ.GOV>
`Subject: Re: e-Numerate: pleading schedule
`
`Yes. Talk to you then.
`
`Sean
`
`
`Sean T. O'Kelly, Esq.
`O’Kelly Ernst & Joyce, LLC
`901 N. Market Street, 10th Floor
`Wilmington, DE 19801
`Phone: (302) 778-4000
`
`

`

`Case 1:19-cv-00859-RTH Document 6-2 Filed 08/02/19 Page 8 of 10
`Direct: (302) 778-4001
`Facsimile: (302) 295-2873
`sokelly@oelegal.com
`
`
`On Tue, Jul 16, 2019 at 2:50 PM Gerard O'Rourke <gorourke@orourkefirm.com> wrote:
`Works for me. Sean?
`
`From: Bolden, Sco (CIV) [mailto:Sco.Bolden@usdoj.gov]
`Sent: Tuesday, July 16, 2019 2:41 PM
`To: Gerard O'Rourke <gorourke@orourkefirm.com>; Sean O'Kelly <sokelly@oelegal.com>
`Subject: RE: e-Numerate: pleading schedule
`
`Jerry,
`
`Yes, thank you. I’ve reserved a conference line if that works for you. The number is 210-795-0506, and the access
`code is 15576799.
`
`Sco
`
`From: Gerard O'Rourke <gorourke@orourkefirm.com>
`Sent: Tuesday, July 16, 2019 2:35 PM
`To: Bolden, Sco (CIV) <SBolden@CIV.USDOJ.GOV>; Sean O'Kelly <sokelly@oelegal.com>
`Subject: RE: e-Numerate: pleading schedule
`
`Hi Sco,
`
`Would 3 pm today work?
`
`Jerry
`
`Gerard M. O'Rourke, Esq.
`O'Rourke Law Office, LLC
`1201 N. Orange Street,
`Suite 7260
`Wilmington, DE 19801-1186
`Phone: 484-770-8046
`Cell: 302-562-6960
`www.orourkefirm.com
`
`
`
`From: Bolden, Sco (CIV) [mailto:Sco.Bolden@usdoj.gov]
`Sent: Tuesday, July 16, 2019 2:01 PM
`To: Sean O'Kelly <sokelly@oelegal.com>
`Cc: Gerard O'Rourke <gorourke@orourkefirm.com>
`Subject: RE: e-Numerate: pleading schedule
`
`Sean and Jerry,
`
`Let me know if you have me to talk in the next day or so about e-Numerate. I’m out on vacaon next week, so I’d
`like to see if we can figure out a schedule that works for everyone and get something on file this week. Thanks,
`
`
`

`

`Case 1:19-cv-00859-RTH Document 6-2 Filed 08/02/19 Page 9 of 10
`
`Sco
`
`From: Sean O'Kelly <sokelly@oelegal.com>
`Sent: Thursday, July 11, 2019 5:35 PM
`To: Bolden, Sco (CIV) <SBolden@CIV.USDOJ.GOV>
`Cc: Gerard O'Rourke <gorourke@orourkefirm.com>
`Subject: Re: e-Numerate: pleading schedule
`
`Scott,
`
`Thanks for your email. I've added Jerry to this reply, just to be sure.
`
`He and I will discuss your email and get back to you in short order.
`
`My best,
`Sean
`
`
`Sean T. O'Kelly, Esq.
`O’Kelly Ernst & Joyce, LLC
`901 N. Market Street, 10th Floor
`Wilmington, DE 19801
`Phone: (302) 778-4000
`Direct: (302) 778-4001
`Facsimile: (302) 295-2873
`sokelly@oelegal.com
`
`
`On Thu, Jul 11, 2019 at 5:24 PM Bolden, Scott (CIV) <Scott.Bolden@usdoj.gov> wrote:
`Sean,
`
`FYI, I received a bounce-back “undeliverable” email from Jerry’s email system. I used the email address
`I had for him and listed on the Complaint – I’m not sure if emails are getting through to him. Thanks,
`
`Scott
`
`From: Bolden, Scott (CIV)
`Sent: Thursday, July 11, 2019 3:24 PM
`To: sokelly@oelegal.com; Gerard O'Rourke <gorourke@orourkefirm.com>
`Subject: e-Numerate: pleading schedule
`
`Sean and Jerry,
`
` I
`
` hope you both have been having a good summer. I’ve attached a courtesy copy of my notice of
`appearance in e-Numerate’s case in the Court of Federal Claims.
`
`Would you be available for a call tomorrow (7/12, after 4:00pm only), Monday (7/15, after 2:00pm), or
`Tuesday (7/16, looks open)? I’d like to talk about scheduling a response to the Complaint, particularly in
`light of the pending IPRs.
`
`If you do have some availability, please let me know what time works for you, and I’m happy to set up a
`conference line. Thanks,
`
`

`

`Case 1:19-cv-00859-RTH Document 6-2 Filed 08/02/19 Page 10 of 10
`
`
`Scott Bolden
`Deputy Director
`Department of Justice, Civil Division
`Commercial Litigation Branch, Intellectual Property Section
`1100 L Street, NW
`Room 8500
`Washington, DC 20005
`Scott.Bolden@USDOJ.gov
`202-307-0262
`
`