E-Numerate Sols. v. United States

• Docket Number: 19-859
• Decision Date: 22 March 2023
• Parties: E-NUMERATE SOLUTIONS, INC., and E-NUMERATE SOLUTIONS, LLC, Plaintiffs, v. THE UNITED STATES, Defendant.
• Court: U.S. Claims Court

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E-NUMERATE SOLUTIONS, INC., and E-NUMERATE SOLUTIONS, LLC, Plaintiffs,
v.
THE UNITED STATES, Defendant.

No. 19-859

United States Court of Federal Claims

March 22, 2023

Claim Construction; Markman Hearing; Plain and Ordinary Meaning; Intrinsic Record; Person Having Ordinary Skill in the Art.

Sean T. O'Kelly, O'Kelly & O'Rourke, LLC, with whom was Gerard M. O'Rourke, both of Wilmington, DE, for plaintiffs.

Shahar Harel, Trial Attorney, Intellectual Property Section, with whom were Carrie Rosato, Trial Attorney, Scott Bolden, Of Counsel, Nelson Kuan, Of Counsel, Gary L. Hausken, Director, Commercial Litigation Branch, and Brian M. Boynton, Principal Deputy Assistant Attorney General, Civil Division, U.S. Department of Justice, all of Washington, DC, for defendant.

CLAIM CONSTRUCTION OPINION AND ORDER

RYAN T. HOLTE JUDGE

Plaintiffs e-Numerate Solutions, Inc. and e-Numerate, LLC^[1] accuse the government of patent infringement. The parties filed claim construction briefs seeking to construe the meaning of various disputed claim terms and resolved construction of three terms amongst themselves. The government argues fifteen claim terms are indefinite under 35 U.S.C. § 112 or must be construed under § 112 ¶ 6. While the parties raised numerous terms for construction, the Court's procedures for claim construction, modeled after the rules of Judge Alan Albright of the United States District Court for the Western District of Texas, aided the Court in efficiently handling this claim construction.^[2] The Court first held a Markman hearing to construe the disputed terms not implicated by the government's indefiniteness arguments, following agreement by the parties

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at a status conference to split the Markman hearing into two days.^[3] This Claim Construction Opinion and Order construes the parties' disputed terms not implicating indefiniteness.

I. Background

A. Factual History

Plaintiff e-Numerate Solutions, Inc., the owner and assignee of the eight patents-in-suit and plaintiff e-Numerate, LLC (collectively, "plaintiffs" or "e-Numerate"), the exclusive licensee of the seven asserted patents, allege the government infringes the asserted patents. Second Am. Compl. ¶¶ 3-4, ECF No. 53. The asserted patents generally relate to markup languages. U.S. Patent No. 7,650,355 ("the '355 Patent") describes "provid[ing] macros and a markup language . . . which allows numerical analysis routines to be written quickly, cheaply, and in a form that is usable by a broad range of data documents[.]" '355 Patent at [57]. The '355 Patent "facilitates the browsing and manipulation of numbers, as opposed to text as in [Hypertext Markup Language ('HTML')], and does so by requiring attributes describing the meaning of the numbers to be attached to the numbers." Id. U.S. Patent Nos. 8,185,816 ("the '816 Patent"), 9,262,383 ("the '383 Patent"), 9,262,384 ("the '384 Patent"), 9,268,748 ("the '748 Patent"), and 10,223,337 ("the '337 Patent") all relate to the same provisional applications as the '355 Patent-"[p]rovisional application No. 60/135,525, filed on May 21, 1999, [and] provisional application No. 60/183,152, filed on Feb. 17, 2000"-and address similar technology. Id. at [60]; see '816 Patent at [60]; '383 Patent at [60]; '384 Patent at [60]; '748 Patent at [60]; '337 Patent at [60]. U.S. Patent No. 9,600,842 ("the '842 Patent") describes "allow[ing] users to efficiently manipulate, analyze, and transmit eXtensible Business Reporting Language ('XBRL') reports" and "to automatically build financial reports that are acceptable to governing agencies such as the [Internal Revenue Service]." '842 Patent at [57].

Plaintiffs contend the government has assumed liability for various companies which have infringed and continue to infringe the asserted patents through preparing and filing documents with the Securities and Exchange Commission ("SEC"). Second Am. Compl. ¶¶ 51-52, 65-66, 82-83, 99-100, 113-114, 138-139, 152-153. Plaintiffs also argue the SEC directly infringes the '816 and '383 Patents through analysis of infringing submissions. Id. ¶¶ 73-74, 90-91. Plaintiffs further assert the SEC, the Federal Deposit Insurance Corporation ("FDIC"), the Federal Financial Institutions Examining Council ("FFIEC"), the United States Department of the Treasury ("Treasury"), the Office of Management and Budget ("OMB"), the Federal Energy Regulatory Commission ("FERC"), and the United States Department of Energy ("DOE") directly infringe the '748 and '842 Patents by validating and processing infringing filings. Id. ¶¶ 122-125, 132, 134-136.

B. Procedural History

Plaintiffs filed their complaint on 11 June 2019. See Compl., ECF No. 1. On 11 October 2019,

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the government filed a motion to dismiss. See Def.'s Mot. to Dismiss under Rule 12(b)(6), ECF No. 8. This case was reassigned to the undersigned Judge on 9 December 2019. See Order, ECF No. 11. The Court denied the government's motion to dismiss on 7 August 2020. See Op. & Order, ECF No. 27.

Plaintiffs filed their opening claim construction brief, opening claim construction brief on indefiniteness, and an appendix on 14 March 2022. See Pls.' Opening Cl. Constr. Br. ("Pls.' Cl. Constr. Br."), ECF No. 78; Pls.' Opening Cl. Constr. Br. on Indefiniteness, ECF No. 79; App. in Supp. of Pls.' Opening Cl. Constr. Brs. ("App."), ECF Nos. 80-81. The government filed its responsive claim construction brief and responsive claim construction brief on indefiniteness on 29 April 2022. See Def.'s Resp. Cl. Constr. Br., ECF No. 82; See Def.'s Resp. Cl. Constr. Br. on Indefiniteness, ECF No. 83. On 1 June 2022, plaintiffs filed their reply claim construction brief and reply claim construction brief on indefiniteness. See Pls.' Reply Cl. Constr. Br., ECF No. 88; Pls.' Reply Cl. Constr. Br. on Indefiniteness, ECF No. 89. The government filed a surreply claim construction brief and a surreply claim construction brief on indefiniteness on 1 July 2022. See Def.'s Surreply Cl. Constr. Br., ECF No. 90; Def.'s Surreply Cl. Constr. Br. on Indefiniteness, ECF No. 91. On 15 July 2022, plaintiffs filed a surreply claim construction brief on indefiniteness. See Pls.' Surreply Cl. Constr. Br. on Indefiniteness, ECF No. 92. The parties filed their joint claim construction statement on 18 August 2022. See J. Cl. Constr. Statement, ECF No. 95.

The Court held a status conference on 7 October 2022 to discuss the parties' joint claim construction statement, plaintiffs' plans to drop U.S. Patent No. 10,423,708 ("the '708 Patent") from this case following reexamination, technology tutorials the parties submitted to the Court via email, similarities in the specifications of the asserted patents, and logistics for a Markman hearing. See Order, ECF No. 96; S.C. Tr. at 6:5-7:5. Following the status conference, the Court issued an order directing the parties to file: (1) the reexamination certificate for the '708 Patent; (2) "[a] stipulation of dismissal with prejudice of Count 8 of the Second Amended Complaint . . . to remove the '708 Patent;" and (3) a revised joint claim construction statement. Order at 1, ECF No. 97. The parties filed their joint stipulation of dismissal and the reexamination certificate on 18 October 2022, see J. Stipulation of Dismissal, ECF No. 101, and their revised joint claim construction statement on 20 October 2022, see Rev. J. Cl. Constr. Statement Ex. A ("RJCCS"), ECF No. 103-1. The Court held a Markman hearing on the disputed terms not implicating indefiniteness on 16 November 2022. See Order, ECF No. 98; 16 Nov. 2022 Markman Hearing Tr. ("Tr."), ECF No. 106. Following the hearing, the Court allowed the parties to submit supplemental briefing clarifying their arguments. See Order, ECF No. 104; Def.'s Suppl. Cl. Constr. Br., ECF No. 107; Pls.' Suppl. Cl. Constr. Br., ECF No. 108.

C. The Technology of the '355 Patent Family

On 18 May 2000, e-Numerate Solutions, Inc. filed U.S. Patent Application No. 09/573,780, later issued on 19 January 2010 as the '355 Patent. See '355 Patent at [10], [21]-[22], [45]. The '355 Patent, titled "Reusable Micro Markup Language," id. at [54], relates to "data processing systems and, more particularly, to a computer markup language for use in a data browser and manipulator." Id. col. 1 ll. 24-26. "A markup language is a way of embedding markup 'tags,' special sequences of characters, that describe the structure as well as the behavior

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of a document and instruct a web browser or other program on how to display the document." Id. col. 1 ll. 32-36.

Two examples of markup languages are HTML and Extensible Markup Language ("XML"). See id. col. 1 ll. 32, 61-62. HTML contains "a fixed set of tags with specific purposes" mixed with the ordinary text in text files, and "XML is a free-form markup language with unspecified tags, which allows developers to develop their own tags and . . . markup languages." Id. col. 1 ll. 39-40, 63-66. The background of the '355 Patent explains limitations of HTML and XML. See generally '355 Patent col. 1 ll. 39-59, col. 2 ll. 1-11. HTML's fixed set of tags limits the language to only working with text and images, and HTML only instructs browsers on reading and displaying a document's characters-not understanding the data the browser is displaying. See id. col. 1 ll. 39-44. HTML is incapable of interpreting numbers as numbers-it only reads them as text-preventing users from being able to search through numerical data or run it through "an analytical program without human intervention to copy-and-paste." Id. col. 1 ll. 44-59. XML falls short in two main areas. First, "XML describes structure and meaning, but not formatting." Id. col. 2 ll. 1-2. Second, individualized markup languages the XML users develop from non-standardized tags are incompatible with each other because "different users use the tags for different purposes." Id. col. 2 ll. 7-11.

"Methods and systems in accordance with the ['355 Patent]...