Case 1:19-cv-00859-RTH Document 69-1 Filed 01/21/22 Page 1 of 2
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`Harel, Shahar (CIV)
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`From:
`Sent:
`To:
`Cc:
`Subject:
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`Shahar,
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`Gerard O'Rourke <gorourke@okorlaw.com>
`Thursday, October 28, 2021 12:52 PM
`Harel, Shahar (CIV)
`Bolden, Scott (CIV); Kuan, Nelson (CIV); Sean O'Kelly; Laura Carrig; Thomas Kramer
`Re: [EXTERNAL] e-Numerate v United States - 19-859: Judge Albright's Claim
`Construction Order
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`In light of the above, we would like to extend the next deadline by two weeks until November 22. I am using
`the exchange date we actually used for the definitions and adding two weeks from that. That also happens to be
`the Monday before Thanksgiving. Would you please advise whether you oppose that? If not, we'll map out a
`scheduling order and draft unopposed motion and send it to you for review.
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`With regard to the order of claim construction briefing, it appears we are at an impasse on that. Is there any
`need to have a further meet and confer before we file a motion? Please advise. As we mentioned, the Judge has
`followed the most current version of Judge Albright's order in this proceeding. Our use of standard reservation
`of rights language in the cover document does not (in our view) provide a basis for departing from the Judge's
`practice.
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`Finally, with regard to the claim constructions, we do not understand the Judge's Order to require that we
`propose definitions for your terms in the past exchange. We are reviewing your proposed definitions
`carefully. You should not assume that we will simply say "plain and ordinary meaning" for the terms and
`phrases you identified (but we have not). We are happy to discuss our thoughts with you on your terms during
`the meet and confer provided in the scheduling order.
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`Very truly yours,
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`Jerry
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`On Wed, Oct 27, 2021 at 12:10 PM Harel, Shahar (CIV) <Shahar.Harel@usdoj.gov> wrote:
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`Jerry,
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`We do not agree to your suggestion that we modify the scheduling order to switch the order of the claim construction
`briefing. As you know, the parties have been operating under a schedule in which e-Numerate would file the opening
`brief for close to a year and now that the parties have exchanged terms for constructions and proposed constructions it
`does not make sense to dramatically change that procedure. This is especially the case since e-Numerate reserved
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`Case 1:19-cv-00859-RTH Document 69-1 Filed 01/21/22 Page 2 of 2
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`“the right to modify, supplement, alter, delete and/or contradict any and all of [its] proposed constructions as
`this matter proceeds.” Plaintiffs’ Proposed Preliminary Constructions (emphasis added). Indeed, in its recent exchange
`e-Numerate did not even list the claim terms that Defendant identified for construction. Therefore, we understand
`that e-Numerate is proposing a “plain and ordinary” construction for these terms.
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`Regards,
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`Shahar
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`From: Gerard O'Rourke <gorourke@okorlaw.com>
`Sent: Tuesday, October 26, 2021 8:17 AM
`To: Harel, Shahar (CIV) <Shahar.Harel@usdoj.gov>; Bolden, Scott (CIV) <Scott.Bolden@usdoj.gov>; Kuan, Nelson (CIV)
`<Nelson.Kuan@usdoj.gov>; Sean O'Kelly <sokelly@okorlaw.com>; Laura Carrig <lcarrig@okorlaw.com>
`Subject: [EXTERNAL] e-Numerate v United States - 19-859: Judge Albright's Claim Construction Order
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`Shahar,
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`Judge Albright in the Western District of Texas has recently modified his claim construction procedure in
`patent cases to specify that the Defendant files the first brief. Please see the attached at pages 4 - 5.
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`Judge Holte has indicated that he wants to follow Judge Albright's procedures in previous scheduling orders in
`this matter. Will the Government consent to an amendment of the claim construction briefing to reflect Judge
`Albright's new procedure? Please advise.
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`Thanks.
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`Very truly yours,
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`Jerry
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