Case 1:19-cv-00859-RTH Document 63 Filed 11/09/21 Page 1 of 5
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` IN THE UNITED STATES COURT OF FEDERAL CLAIMS
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`Plaintiffs,
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`E-NUMERATE SOLUTIONS, INC. and
`E-NUMERATE, LLC,
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`THE UNITED STATES,
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`Defendant.
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`No. 19-859 C
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`Judge Ryan T. Holte
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`DEFENDANT’S RESPONSE IN OPPOSITION TO E-NUMERATE’S MOTION TO
`CHANGE THE ORDER OF THE CLAIM CONSTRUCTION BRIEFING
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`The United States (Defendant or “Government”) submits this Response in Opposition to
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`Plaintiffs e-Numerate Solutions, Inc. and e-Numerate, LCC (collectively, “e-Numerate”) Motion
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`to Amend the Scheduling Order (Dkt. 62) and respectfully requests that the Court deny the Motion.
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`e-Numerate’s Motion seeks to invert the order of the claim construction briefing and
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`should be denied for at least the following reasons. First, the only reason e-Numerate offers for
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`this change of schedule is that “this Court has expressed a preference for following Judge
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`Albright’s claim construction procedure in this matter” (Dkt. 62 at 1) and that Judge Albright has
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`modified this procedure. However, the parties have been operating under the current framework
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`in which Plaintiff files the opening claim construction brief, followed by a responsive claim
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`construction brief by Defendant for close to a year — since November 23, 2020 (Dkt. 36). Counsel
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`for both parties have committed to the current schedule for the past year, yet e-Numerate’s Motion
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`would unfairly burden only Defendant by unexpectedly reversing a significant step of the process.
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`Second, Judge Albright changed his rules to invert the order for the claim construction
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`briefing at least as far back as June 24, 2021 (see Dkt. 62-1 at *4). e-Numerate delayed more than
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`Case 1:19-cv-00859-RTH Document 63 Filed 11/09/21 Page 2 of 5
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`four months in bringing its motion based on such changes and offers no explanation for that delay.
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`That unjustified delay is sufficient grounds for this Court to deny e-Numerate’s Motion.
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`Third, this Court should deny e-Numerate’s Motion in order to align the claim construction
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`proceeding with Judge Albright’s default limitation on disputed claim terms. Under Judge
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`Albright’s rules, in cases with five or more patents the parties should not put forward more than a
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`dozen disputed claim terms. See, e.g., Dkt. 62-1 at *3; Dkt. 62-2 at *3. In this action, e-Numerate
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`is presently asserting more than 90 claims and in its exchange of proposed constructions for the
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`parties’ identified terms, Defendant, as required, provided constructions for those identified terms.
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`Due to the number of asserted claims, this included more than thirty proposed constructions.1
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`Notably, e-Numerate has still not provided proposed constructions for all of Defendant’s proposed
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`terms and has therefore asked that it first be afforded additional time to do so. See Dkt. 60 at *2
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`(entry provided for “Plaintiffs provide constructions for terms identified by the Government on 8
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`October 2021”). Therefore, e-Numerate will eventually drop its assertion of those claims reciting
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`the numerous terms which Defendant asserts are indefinite or offer a competing construction.
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`However, if e-Numerate were to provide a responsive claim construction brief as it proposes, its
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`will defer its decision until after Defendant engages in the onerous task of first briefing
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`unnecessary terms. Therefore, by maintaining the current order, the Court would promote an
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`efficient and streamlined claim construction process in which e-Numerate will withdraw its
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`assertion of unnecessary claims.
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`Fourth, e-Numerate’s suggestion that there is “ample time” to modify the claim
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`construction briefing process mischaracterizes the situation. Dkt. 62 at *1. e-Numerate’s
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`1 Defendant is including in its count those terms which it asserts should be held indefinite as part
`of the claim construction process.
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`Case 1:19-cv-00859-RTH Document 63 Filed 11/09/21 Page 3 of 5
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`contention is based on the Court first adopting e-Numerate’s previous motion (Dkt. 60), which the
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`Court has yet to rule on. Notably, the current deadline for the opening claim construction brief is
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`in a little more than three weeks, December 3, 2021. Dkt. 60 at *2. Defendant does not oppose
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`e-Numerate’s previous motion to change the schedule (Dkt. 60) but, as indicated therein, is
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`concerned with the entanglement of separate issues: e-Numerate’s failure to provide constructions
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`for all terms and the personal issue of its counsel with the separate request to change the order of
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`the briefing. While Defendant does not oppose a reasonable extension for the medical issue, it
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`would be prejudicial to Defendant to allow e-Numerate to initially avoid its obligation relating to
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`providing proposed claim constructions and then use that additional time to argue that there is
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`sufficient time to invert the order of the relevant briefs. Therefore, while Defendant does not
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`oppose e-Numerate’s previous motion, the Court could also provide a shorter extension without
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`changing the order of the briefing. Regardless, the previous motion should not provide the basis
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`of the “ample time” which e-Numerate relies on.
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`Therefore, this Court should deny e-Numerate’s Motion.
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`Case 1:19-cv-00859-RTH Document 63 Filed 11/09/21 Page 4 of 5
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`November 9, 2021
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`Of Counsel:
`SCOTT BOLDEN
`NELSON KUAN
`Department of Justice
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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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`Case 1:19-cv-00859-RTH Document 63 Filed 11/09/21 Page 5 of 5
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`CERTIFICATE OF SERVICE
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`I certify that a true copy of the foregoing was sent by e-mail this 9th day of November 2021
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`to:
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`Of Counsel:
`SCOTT BOLDEN
`NELSON KUAN
`U.S. Department of Justice
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`Date: November 9, 2021
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`Sean T. O’Kelly
`Gerard M. O'Rourke
`O’KELLY & O’ROURKE, LLC
`824 N. Market Street, Suite 1001A
`Wilmington, DE 19801
`302-778-4000
`sokelly@okorlaw.com
`gorourke@okorlaw.com
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`s/ Shahar Harel
`SHAHAR HAREL
`Trial Attorney
`Intellectual Property Section
`Commercial Litigation Branch
`Civil Division
`U.S. Department of Justice
`Washington, DC 20530
`Shahar.Harel@usdoj.gov
`Tel: (202) 305-3075
`Fax: (202) 307-0345
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`Attorney for the Defendant,
`the United States of America.
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