E-NUMERATE SOLUTIONS, INC. et al v. USA

Filing 116

REPORTED CLAIM CONSTRUCTION OPINION AND ORDER. Joint Status Report due by 3/14/2024. The Clerk is directed to correct the caption in this case. Signed by Judge Ryan T. Holte. (nd) Service on parties made.

In the United States Court of Federal Claims
No. 19-859
(Filed: 29 February 2024)

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

Claim Construction; Markman Hearing;
Indefiniteness; Antecedent Basis;
Means-Plus-Function

Sean T. O’Kelly, with whom was Gerard M. O’Rourke, O’Kelly & O’Rourke, LLC, 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
HOLTE, Judge.
Plaintiffs e-Numerate Solutions, Inc. and e-Numerate, LLC accuse the government of
patent infringement. The government argues eighteen claim terms in four asserted patents are
indefinite pursuant to 35 U.S.C. § 112 or must be construed pursuant to § 112, paragraph 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. 1
The Court previously issued a claim construction opinion and order construing disputed terms
not implicated by the government’s indefiniteness arguments, 2 following agreement by the
parties at a status conference to split the Markman hearing into two days. 3 The Court then held a
See also Haddad v. United States, 164 Fed. Cl. 28 (2023); Giesecke & Devrient GmbH v. United States, 163 Fed.
Cl. 430 (2023); Wanker v. United States, 152 Fed. Cl. 219 (2021); Thales Visionix, Inc. v. United States, 150 Fed.
Cl. 486 (2020); CellCast Techs., LLC v. United States, 150 Fed. Cl. 353 (2020).
2
e-Numerate Sols., Inc. v. United States, 165 Fed. Cl. 237 (2023).
3
7 Oct. 2022 Status Conference Tr. (“SC Tr.”) at 101:14–19, ECF No. 100 (“THE COURT: So the Court hopes to
divide the Markman hearing into two days with . . . the terms in day one, as much as we can get through them, and
1

second Markman hearing to construe the disputed terms related to indefiniteness. This Claim
Construction Opinion and Order construes the parties’ disputed terms implicating indefiniteness.
For the reasons below, the Court finds: Terms 1 and 2 have antecedent basis in their respective
independent claims and are not indefinite; Terms 3 and 4 are not indefinite because the meansplus-function terms are supported by algorithmic disclosure; and Terms 5, 6, and 7, as meansplus-function terms, are indefinite for lack of disclosed structure. Additionally, Terms 8–16
recite “code for,” and the parties dispute whether the language should invoke means-plusfunction interpretation under § 112, paragraph 6. The parties both agreed a term reciting “code
for” and a term reciting “means for,” may have different definiteness conclusions, despite
reciting the same functions. In this context, the Court finds the government has not met its
burden to prove “code for” invokes § 112, paragraph 6. As the indefiniteness arguments for
Terms 8–16 rely solely on interpreting the terms as means-plus-function, the Court accordingly
finds Terms 8–16 definite. Based on the conclusions for each of these terms, and for the reasons
below, the Court accordingly finds claim 26 of the ’816 Patent and claim 18 of the ’383 Patent
invalid as indefinite.
Overview of Claims 4

I.

The Court outlined the patents and claims at issue in its first claim construction Order.
See e-Numerate Sols., Inc. v. United States, 165 Fed. Cl. 237, 244–58 (2023). Prior to the second
Markman hearing, the parties filed supplemental briefing on three additional terms which the
government alleges are indefinite. See Def.’s Suppl. Claim Constr. Br. on Indefiniteness
(“Gov’t’s Suppl. Indef. Br.”), ECF No. 111; Pl.’s Br. in Opp’n to Gov’t’s Suppl. Claim Constr.
Br. (“Pl.’s Suppl. Indef. Br.”), ECF No. 112. The claims at issue in this indefiniteness claim
construction Order are:
•
•
•
•
II.

U.S. Patent No. 7,650,355, claim 15 (Term 1), claim 42 (Term 1);
U.S. Patent No. 8,185,816, claim 12 (Term 2), claim 26 (Terms 3 and 5);
U.S. Patent No. 9,262,383, claim 1 (Terms 8–10), claim 18 (Terms 4, 6, and 7); and
U.S. Patent No. 9,268,748, claim 11 (Terms 11–18).
Applicable Law5
A.

Indefiniteness

“A patent shall be presumed valid. . . . The burden of establishing invalidity of a patent
or any claim thereof shall rest on the party asserting such invalidity.” 35 U.S.C. § 282(a). Issued
patents grant the patentee “certain exclusive rights,” which may be enforced through civil actions
for infringement pursuant to 35 U.S.C. § 271. Microsoft Corp. v. I4I Ltd. P’ship, 564 U.S. 91,
then in day two, indefiniteness. Does that make the most sense? [THE GOVERNMENT]: Yes. [PLAINTIFFS]:
Yeah.”).
4
For the factual and procedural history of the case as well as a summary of the technology of the asserted patents,
refer to the Court’s first Claim Construction Opinion and Order. See e-Numerate Sols., Inc. v. United States, 165
Fed. Cl. 237, 243–46 (2023).
5
For the law of claim term interpretation, refer to the Court’s first Claim Construction Opinion and Order. See
e-Numerate Sols., Inc. v. United States, 165 Fed. Cl. 237, 258–59 (2023).

-2-

96 (2011). In the previous claim construction Order, the Court outlined the applicable law for
claim construction generally. e-Numerate Sols. v. United States, 165 Fed. Cl. 237, 258–60
(2023).
This claim construction Order solely addresses indefiniteness. “[I]ndefiniteness is a
question of law and in effect part of claim construction.” ePlus, Inc. v. Lawson Software, Inc.,
700 F.3d 509, 517 (Fed. Cir. 2012). “Indefiniteness must be proven by clear and convincing
evidence.” Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017). A
patent specification must conclude with claims distinctly pointing out the subject matter of the
invention. 35 U.S.C. § 112, ¶ 2. 6 Patent claims must apprise “a skilled artisan [of] the scope of
the claimed invention with reasonable certainty.” Sonix Tech. Co., 844 F.3d at 1376. If the
claim language fails to apprise a skilled artisan with reasonable certainty, the patent claim is
indefinite under § 112, paragraph 2. Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910
(2014). The incorporation of general knowledge “sufficiently well established in the art and
referenced in the patent” will help render a claim definite. Presidio Components, Inc. v. Am.
Tech. Ceramics Corp., 875 F.3d 1369, 1377 (Fed. Cir. 2017).
Claim construction may contain indefiniteness inquiries, but other invalidity arguments
under § 112, such as lack of enablement or lack of adequate written description, are separate and
distinct. See ePlus, Inc., 700 F.3d at 517; Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir.
2005) (“[W]e have certainly not endorsed a regime in which validity analysis is a regular
component of claim construction.”); see also Metabolite Lab’ys, Inc. v. Lab’y Corp. of Am.
Holdings, 370 F.3d 1354, 1361 (Fed. Cir. 2004); Sw. Software, Inc. v. Harlequin Inc., 226 F.3d
1280, 1297–98 (Fed. Cir. 2000). Despite invalidity conceptually overlapping with
indefiniteness, parties must use the proper standard when arguing invalidity. See, e.g., Augme
Techs., Inc. v. Yahoo! Inc., 755 F.3d 1326, 1340 (Fed. Cir. 2014) (“Appellants’ arguments appear
to be based on the wrong legal standard, i.e., written description or enablement as opposed to
indefiniteness.”); Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1358 n.2 (Fed.
Cir. 1999) (“[D]efiniteness and enablement are analytically distinct requirements [of validity],
even though both concepts are contained in 35 U.S.C. § 112.”).
B.

Means-Plus-Function Claims

Patent claims may be directed to a combination comprising a series of elements. “A
patentee may express an ‘element in a claim for a combination’ ‘as a means or step for
performing a specified function without the recital of structure, material, or acts in support
thereof.’” HTC Corp. v. IPCom GmbH & Co., KG, 667 F.3d 1270, 1278 (Fed. Cir. 2012)
(quoting 35 U.S.C. § 112, para. 6). Known as means-plus-function claiming, this claim drafting
technique pursuant to § 112, paragraph 6 results in a claim construction covering “the

The paragraphs of 35 U.S.C. § 112 were replaced with newly designated subsections when the America Invents
Act (AIA), Pub. L. No. 112–29, took effect on 16 September 2012. The four asserted patents the government argues
implicate indefiniteness in this case all claim a priority date before the AIA was enacted, so the Court refers to the
pre-AIA version of § 112. See e-Numerate Sols., Inc. v. United States, 165 Fed. Cl. 237, 261 (2023) (“The
government suggested the Court clarify HTML, XML, and SGML predate 21 May 1999, the priority date claimed
for all asserted patents except the ’842 Patent, and plaintiffs agreed.” (emphasis added)).
6

-3-

corresponding structure, material, or acts described in the specification and equivalents thereof.”
35 U.S.C. § 112, para. 6.
The presence of the word “means” creates a rebuttable presumption indicating invocation
of § 112, paragraph 6 but is not the “essential inquiry” in “assess[ing] . . . whether the limitation
in question is a means-plus-function term.” See Williamson v. Citrix Online, LLC, 792 F.3d
1339, 1348 (Fed. Cir. 2015). Instead, the analysis turns on “whether the words of the claim are
understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the
name for structure.” Id. Sufficient structure is recited “if the claim term is used in common
parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a
broad class of structures and even if the term identifies the structures by their function.” Skky,
Inc. v. MindGeek, S.A.R.L., 859 F.3d 1014, 1019 (Fed. Cir. 2017) (quoting TecSec, Inc. v. Int’l
Bus. Machs. Corp., 731 F.3d 1336, 1347 (Fed. Cir. 2013)). If both the claim and the
specification fail to disclose sufficient structure to perform the claimed function, then the claim
is indefinite. Williamson, 792 F.3d at 1352.
III.

Disputed Claim Term #1: “the step of receiving”

Plaintiffs’ Proposed Construction
Defendant’s Proposed Construction
Not indefinite. In claim 15, the step referred
Indefinite.
to is “receiving a series of numerical values
having tags indicating characteristics of the
numerical values” in claim 1. In claim 42, the
step referred to is “receiving a series of
numerical values having tags indicating
characteristics of the numerical values” in
claim 28.
The government disputes the construction of this claim term in claims 15 and 42 of the
’355 Patent. Rev. Joint Cl. Constr. Statement Ex. A (“Rev. J. Cl. Constr.”) at 6.
The following claim limitation highlights selected usage of the term in context:
wherein the step of receiving comprises receiving tags indicating characteristics
selected from the group consisting of: (1) value, (2) semantics, (3) format, (4)
measurement, (5) structure, and (6) provenance.
’355 Patent col. 57 ll. 34–37 (emphasis added).
A.

Parties’ Arguments

The parties’ primary dispute is whether “the step of receiving” has antecedent basis in
one of two terms in the corresponding independent claim. Specifically, claim 1 and claim 28 of
the ’355 Patent recite both “receiving a series of numerical values having tags indicating
characteristics of the numerical values” and “receiving a macro defined to perform an operation
on the series of numerical values.” ’355 Patent col. 56 ll. 36–56, col. 58 ll. 46–67. Plaintiffs

-4-

argue “the phrase in the dependent claim refers to the first receiving step: ‘receiving a series of
numerical values having tags indicating characteristics of the numerical values’” because “[t]hat
[antecedent] phrase explicitly refers to ‘tags indicating characteristics,’” as the dependent claims
do. Pls.’ Opening Claim Constr. Br. on Indefiniteness (“Pls.’ Indef. Br.”) at 11–12, ECF 79.
According to plaintiffs “[t]here is simply no reason that a person [having] ordinary skill in the art
[(PHOSITA)] would think that the limitations of claims 15 and 42 would (or could) refer to” the
other “receiving” step, because the other “receiving” step addresses only the macro, not tags and
their characteristics. Id. at 12. Plaintiffs assert the limitations at the end of independent claims 1
and 28—“the step of receiving the macro comprises . . .”— see ’355 Patent col. 56 ll. 50–56, col.
58 ll. 60–67, further supports a lack of ambiguity in the dependent claims because the macro
“receiving” step is already clarified. Pls’ Indef. Br. at 12. e-Numerate’s expert proposes the
Court read the phrase in the dependent claim as referring to the first receiving step; in other
words, reading “receiving a series of numerical values having tags indicating characteristics of
the numerical values,” as explicitly referring to “tags indicating characteristics of numerical
values.” Decl. of Michael Smith (“Smith Decl.”) ¶ 37, ECF No. 81-9. Additionally, eNumerate’s expert testifies “claims 15 and 42 further limit the characteristics recited in that
phrase in the independent claims” and, accordingly, a PHOSITA would readily understand such.
Id.
The government argues the claim term could plausibly refer to the macro “receiving” step
instead, because independent claims 1 and 28 require the macro to include meta-data, which
“may include information such as the source of the macro[] and correspond to the provenance
characteristic recited in [c]laims 15 and 42.” Def.’s Responsive Claim Constr. Br. on
Indefiniteness (“Gov’t’s Resp. Indef. Br.”) at 8, ECF No. 83. The government further cites as
support the inclusion of a “macro source” element and a “line item” in the “Document Type
Definition” (DTD) disclosed in the ’355 Patent specification. Id. at 8–9. The government asserts
the claim term could also refer to the first “receiving” step from independent claims 1 and 28, so
the term is ambiguous and therefore indefinite. Id. at 9. The government proffers its expert’s
opinion “a P[H]OSITA could not reasonably determine the scope of the ‘step of receiving’
limitation of claims 28 and 42.” Id. The government’s expert contends “it remains unclear
which is the proper antecedent basis for the term ‘the step of receiving comprises receiving tags’
as recited in claims 15 and 42 as it could refer to either the first or second ‘receiving’ clause in
the relevant independent claim.” Martin Decl. ¶ 45, ECF No. 81-7.
Plaintiffs contend the government’s expert’s “opinion is not consistent with the clear
meaning of the claim language involved and should be disregarded.” Pls.’ Indef. Br. at 12 (citing
Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005)). Additionally, plaintiffs reply, the
government’s “construction is contrary to the natural and logical reading of the claim language
itself and should be rejected.” Pls.’ Reply Claim Constr. Br. on Indefiniteness (“Pls.’ Reply
Indef. Br.”) at 3–4, ECF No. 89 (citing Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004) (“[A] claim construction analysis must begin and
remain centered on the claim language itself, for that is the language the patentee has chosen to
particularly point[] out and distinctly claim[] the subject matter which the patentee regards as his
invention.” (internal quotation marks omitted) (citation omitted)). Plaintiffs further argue: “The
issue is not how claims could be read, but rather how they would be read from the perspective of
a” PHOSITA. Pls.’ Sur-Reply Claim Constr. Br. on Indefiniteness (“Pls.’ Sur-Reply Indef. Br.”)

-5-

at 1, ECF No. 92 (citing Phillips., 415 F.3d at 1313 (“The inquiry into how a [PHOSITA]
understands a claim term provides an objective baseline from which to begin claim
interpretation.”)).
B.

Analysis
1.

The Court’s Preliminary Construction

Before the Markman hearing, the Court considered the parties’ claim construction briefs
and all referenced materials completely in reaching a preliminary construction for this disputed
term. The first “receiving” clause of claims 1 and 28 recites: “receiving a series of numerical
values having tags indicating characteristics of the numerical values.” ’355 Patent col. 57 ll. 36–
37. The second recites “the macro comprises receiving the macro including interpreted code,
meta-data, and error handling instructions.” ’355 Patent col. 56 ll. 51–56, col. 58 ll. 46–50. In
Nautilus, the Supreme Court clarified a claim is indefinite “if its claims, read in light of the
specification delineating the patent, and the prosecution history, fail to inform, with reasonable
certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig
Instruments, Inc., 572 U.S. 898, 901 (2014). Plaintiffs have agreed to, and the Court previously
adopted, the government’s proposed construction of the term “macro” as a “short program which
performs one or more well-defined, generally limited tasks.” See e-Numerate Sols., Inc. v.
United States, 165 Fed. Cl. 237, 278 (2023). Based in part on the previous construction, the
Court preliminarily found a PHOSITA would be “reasonably certain” “the step of receiving
comprises receiving tags” refers to the first “receiving” step in independent claims 1 and 28,
referring to tags and characteristics, and not the second receiving step, referring to receiving a
macro (i.e., a “short program, which performed one or more well defined, generally limited
tasks.”). ’355 Patent col. 56 ll. 36–56, col. 58 ll. 47–67; see e-Numerate Sols., 165 Fed. Cl. at
278. Accordingly, the Court decided the following preliminary construction: plain and ordinary
meaning, consistent with the Court’s previous claim constructions. See Nautilus, 572 U.S. at
910.
Not indefinite.
2.

The Court’s Preliminary Construction
The Court’s Final Construction

At the Markman hearing, the parties maintained their disagreement on indefiniteness of
“the step of receiving.” Despite Claim 1 reciting both “receiving a series of numerical values”
and “receiving a macro,” plaintiffs assert the plain language of the claims and the similarity of
claim terms overcome any antecedent basis issues. 9 Aug. 2023 Oral Arg. Tr. (Tr.) at 18:17–
19:4, ECF No. 115. At oral argument, the government argued the terms were indefinite,
alleging: (1) a PHOSITA would find ambiguity in the claims; and (2) after finding ambiguity, a
PHOSITA would read into the claims the preferred embodiment in which macros include macro
headers which in turn include certain tags. Tr. at 22:2–14.
First, the Court addresses the government’s argument the plain language of the claim
term is ambiguous and could be read as referring to either “receiving a series of numerical values

-6-

having tags indicating characteristics of the numerical values” (the “first receiving limitation”) or
“receiving a macro defined to perform an operation on the series of numerical values” (the
“second receiving limitation”). Gov’t’s Resp. Indef. Br. at 7. In determining ambiguity, the
claim language is “not construed in a vacuum” but instead is read in light of “all of the intrinsic
evidence as it pertains to the terms in question.” DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d
1314, 1327 (Fed. Cir. 2001). Plaintiffs correctly indicate the language of dependent claim 15
mirrors the language of independent claim 1. Tr. at 18:17–19:4 (“[PLAINTIFFS]: . . . The first
step in claim 1 talks about receiving the series of numerical values having tags indicating
characteristics of the numerical values. In claim 15, it says, ‘[w]herein the step of receiving [is]
comprised of receiving tags indicating characteristics,’ and [then] it lists them.”). Claim 15
recites “tags,” “characteristics,” and “value,” which directly mirror claim 1’s first receiving
limitation: “receiving numerical values having tags indicating characteristics of the numerical
values.” Compare ’355 Patent col. 57 ll. 31–34, with id. col. 56 ll. 36–37. Claim 1’s second
receiving limitation, in contrast, recites a macro but makes no mention of “characteristics,”
“tags,” or “values.” See id. col. 56 ll. 54–56 (“receiving a macro . . . including interpreted code,
meta-data, and error handling instructions”). Due to the similarity of claim 15 to the first
receiving limitation—and its dissimilarity to the second receiving limitation—a PHOSITA
would be “reasonabl[y] certain[]” the limitations of dependent claim 15 narrow the first
“receiving” limitation (“receiving a series of numerical values having tags”) and not the second
“receiving” limitation (“receiving the macro”). See Nautilus, 572 U.S. at 910.
Second, the government contends the claims are further ambiguous in light of the
specification. See Gov’t’s Resp. Indef. Br. at 9. To arrive at this ambiguity, the government
asserts the specification’s “preferred embodiment” implies a macro must include characteristics,
tags, and values equivalent to those recited in claim 15. Tr. at 15:8–14 (“[THE
GOVERNMENT:] So a macro document consists of three documents: a macro header, a macro
code, and a macro references element. So all three are sent together in a macro document and
the macro code corresponds to the software. But the macro header is additional information that
must be included in this preferred embodiment.”); Tr. at. 16:16–24 (“[THE GOVERNMENT]:
. . . when we’ve been referring to the macro, you receive the code, but you also receive other
elements. And for those elements, you receive tags with certain attributes. . . you receive a
macro header and you receive a macro reference, and that’s shown in the ’748 Patent, column
97.”). In sum, the government’s theory of ambiguity requires a PHOSITA to: (1) read the claim
in light of a preferred embodiment in the specification; (2) assume the preferred embodiment’s
“tags with certain attributes,” Tr. at. 16:20, are necessary limitations not recited in the claims;
and (3) find the implied necessary limitations cause ambiguity as to the scope of the claims.
While the standard for whether a PHOSITA would be “reasonably certain” may take into
account the specification, embodiments in the specification are not read into the claims. See
Playtex Prod., Inc. v. Procter & Gamble Co., 400 F.3d 901, 908 (Fed. Cir. 2005) (“Claims of a
patent may only be limited to a preferred embodiment by the express declaration of the
patentee . . . .” (citing Karlin Tech., Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 973 (Fed. Cir.
1999))). The Court previously construed the definition of “macro” as a “short program which
performs one or more well-defined, generally limited tasks.” e-Numerate Sols., 165 Fed. Cl. at
280. The Court’s construction of “macro” does not necessarily encourage a skilled artisan to
turn to the specification to read in the government’s cited embodiment. The plain language of
the claims, therefore, cannot support inferring the second receiving step (“receiving a macro”)

-7-

would include the tags or meta-data cited in claim 15. See Nautilus, 572 U.S. at 910.
The Court accordingly maintains its preliminary construction and finds Term 1 is not
indefinite for lack of antecedent basis. The Court additionally clarifies the “step of receiving”
referred to by claim 15 is “receiving a series of numerical values having tags indicating
characteristics of the numerical values” in claim 1. Additionally, the “step of receiving” referred
to by claim 42 is “receiving a series of numerical values having tags indicating characteristics of
the numerical values” in claim 28. See Phillips., 415 F.3d at 1312–13.
Plaintiffs’ Proposed Construction
Defendant’s Proposed Construction
Not indefinite. In claim 15, the step referred
Indefinite.
to is “receiving a series of numerical values
having tags indicating characteristics of the
numerical values” in claim 1. In claim 42, the
step referred to is “receiving a series of
numerical values having tags indicating
characteristics of the numerical values” in
claim 28.
Court’s Final Construction
Not indefinite.
The “step of receiving” referred to by claim 15 is “receiving a series of numerical values
having tags indicating characteristics of the numerical values” in claim 1.
The “step of receiving” referred to by claim 42 is “receiving a series of numerical values
having tags indicating characteristics of the numerical values” in claim 28.
IV.

Disputed Claim Term #2: “the markup language”

Plaintiffs’ Proposed Construction
Not indefinite. Antecedent basis is implied,
inter alia, by the use of the term “markup
document” in claim 10.

Defendant’s Proposed Construction
Indefinite.

The government disputes the construction of this claim term in claim 12 of the ’816
Patent. Rev. J. Cl. Constr. at 11.
The following claim limitation highlights selected usage of the term in context:
The data processing system of claim 10, wherein the markup language is compliant
with Extensible Markup Language version 1.0.
’816 Patent col. 56 ll. 28–30 (emphasis added).
A.

Parties’ Arguments

-8-

The parties disagree whether the term “markup language” in claim 12 of the ’816 Patent
has antecedent basis. Pls.’ Indef. Br. at 13; Gov’t’s Resp. Indef. Br. at 10. Plaintiffs allege
antecedent basis is found in the ’816 patent’s abstract: “a computer markup language, referred to
as Reusable Data Markup Language (‘RDML’) . . . .” Pls.’ Indef. Br. at 13. Plaintiffs cite
language from the specification, which indicates “markup language is a way of embedding
markup ‘tags,’ special sequences of characters.” Id. at 14 (quoting ’816 Patent col. 1 ll. 38–43).
Plaintiffs contend Energizer Holdings, Inc, in which the Federal Circuit stated “despite the
absence of explicit antecedent basis, ‘[i]f the scope of a claim would be reasonably ascertainable
by those skilled in the art, then the claim is not indefinite,’” supports their position. Id. (quoting
Energizer Holdings, Inc. v. ITC, 435 F.3d 1366, 1370–71 (Fed. Cir. 2006)). The parties agree
“markup documents” means “a document that contains markup language tags,” and plaintiffs
assert the independent claim’s use of “markup document” accordingly implies antecedent basis
for “markup language.” See id. at 14 (citing App. to Pls.’ Indef. Br. Ex. A). e-Numerate’s expert
contends a PHOSITA would “readily understand that a ‘markup document’ is written in a
markup language . . . [and] [t]his is explicitly taught in the ’816 patent.” Smith Decl. ¶ 44; see
’816 Patent col. 1 ll. 39–43.
The parties further disagree whether the antecedent basis for “markup language” refers to
“first markup document,” “second markup document,” or both in claim 10. See Gov’t’s Resp.
Indef. Br. at 9–10; Pls.’ Reply Indef. Br. at 4–5. The government contends claim 10 does not
recite any limitations regarding the first or second documents containing markup language tags
which are compliant with Extensible Markup Language (XML) version 1.0. Gov’t’s Resp.
Indef. Br. at 10–11. The government further argues plaintiffs’ citations to the specification fail
to support their position. Def.’s Sur-Reply Claim Constr. Br. on Indefiniteness (“Gov’t’s SurReply Indef. Br.”) at 3, ECF No. 91. According to the government, plaintiffs’ citations either do
not reference markup languages or, when the specification does discuss markup languages, it
states “[a]lthough the preferred embodiment of RDML is a markup language that is a fully
compliant implementation of XML version 1.0, other implementations are possible.” Id. at 3
(quoting ’816 Patent at col. 8 ll. 44–46). Lastly, the government’s expert contends “a
[PHOSITA] would dispute e-Numerate’s contention that a markup language is differentiated
from other languages by being ‘human-readable’ and by its use of ‘standard words, rather than
typical programming syntax.’” Decl. of David Martin (“Martin Decl.”) ¶ 49. The expert
highlights the term “‘markup language’ does not appear in claim 10,” and therefore does not
have proper antecedent basis. Id. ¶ 50.
Plaintiffs assert the government’s indefiniteness argument “ignores the longstanding rule
of claim construction that claim language is meant to be read from the perspective of a person of
ordinary skill in the art.” Pls.’ Indef. Reply Br. at 4. Plaintiffs contend the specification clearly
indicates the markup documents are all in the same markup language, RDML, and the
government has not pointed to any disclosure otherwise. Id. at 4–5; Pls.’ Sur-Reply Indef. Br. at
3. Plaintiffs explain “RDML is compliant with the XML standard but improves upon it by using
attributes describing the meaning of the numerical value in the markup languages tags.” Pls.’
Sur-Reply Indef. Br. at 3.
B.

Analysis

-9-

1.

The Court’s Preliminary Construction

Before the Markman hearing, the Court considered the parties’ claim construction briefs
and all referenced materials in reaching a preliminary construction for this disputed term. The
data processing system of claim 10 identifies both the first and second markup document but
does not mention compliance with Extensible Markup Language. ’816 Patent col. 56 ll. 16–22. 7
The specification notes “[m]ethods and systems consistent with the present invention provide a
markup language, referred to as Reusable Data Markup Language (‘RDML’), and a data viewer
referred to as the RDML data viewer that is used to retrieve, manipulate and view documents in
the RDML format.” See ’816 Patent col. 8 ll. 15–21. The Court preliminarily determined a
PHOSITA would therefore read the term against a backdrop of these references and understand:
(1) the markup language discussed would apply to both documents; and (2) having two separate
markup languages would not be likely. Only reasonable certainty is required to rule out
indefiniteness. Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). The Court
accordingly preliminarily found claim 12, when viewed in light of the specification, allows a
PHOSITA to identify with “reasonable certainty” a singular markup language acting as “the
markup language” of both markup documents. The Court therefore adopted the preliminary
construction: “Not indefinite.”
Not indefinite.
2.

The Court’s Preliminary Construction

The Court’s Final Construction

At oral argument, the parties maintained their disagreement on the definiteness of “the
markup language” in claim 12. The parties disagree whether the “first markup document” and
the “second markup document” in claim 12 use the same markup language. Tr. at 23:21–24:13;
Tr. at 33:12–21. The government alleges RDML documents may exist in multiple languages.
Tr. at 32:19–33:3. Plaintiffs, however, argue a PHOSITA “would understand that they are
written . . . in the same language.” Tr. at 33:4–7.
The government argues the plain meaning of “first markup document” and the “second
markup document” in claim 10 does not limit the terms to the same markup language. Tr. at
27:4–12. In the previous Markman hearing, the Court defined “markup language” as follows:
“[A] nonprogramming computer language using tags to define elements within a document.
Examples of markup languages that existed as of 21 May 1999 includes [HTML, XML, SGML
and XBRL].” e-Numerate Sols., Inc. v. United States, 165 Fed. Cl. 237, 260–62 (2023) (citing
Markup Language, MICROSOFT COMPUTER DICTIONARY (4th ed. 1999)). The Court’s previous
construction of this term—and the claim’s plain language—contains no limitations requiring the
first markup document and the second markup document to have the same markup language.
The lack of any limitation on the markup language, however, does not make claim 10 indefinite.
7

Claim 10 recites, in part: “a memory storing a program . . . that automatically transforms the numerical values of
at least one of the first markup document and the second markup document so that the numerical values of the first
markup document and the second markup document have a common format, and that combines the first markup
document and the second markup document into a single data set[.]” ’816 Patent col. 56 ll. 16–22.

- 10 -

Definiteness requires a claim to “inform those skilled in the art about the scope of the invention
with reasonable certainty.” Nautilus, 572 U.S. at 910. By its plain language, Term 2 does not
limit the first or second markup documents to being the same markup language—the markup
documents may be in the same markup language, or they may be different—but a broader scope
alone does not affect the reasonable certainty of “combin[ing] the first markup document and the
second markup document into a single data set.” 8 ’816 Patent at col. 56 ll. 20–23. The plain
language itself accordingly does not support a finding of indefiniteness. See Nautilus, 572 U.S.
at 910.
The government further alleges the term is indefinite because it is unclear which “markup
language” the term refers to. The government argues reading claim 12 as requiring two
documents with the same markup language is plausible and therefore renders the claim
indefinite. Tr. at 24:10–13 (“[THE GOVERNMENT:] [I]s it talking about the markup language
of the first markup document but not the second, the second but not the first, or is it talking about
the first and the second?”). Although it may be possible a PHOSITA reading the claim would
interpret the language as ambiguous, this ambiguity would be resolved by the clarity of the
specification. Med. Co. v. Mylan, Inc., 853 F.2d 1296, 1304–05 (Fed. Cir. 2017) (defining the
scope of a claim term in light of the specification). The specification of ’816 patent recites
numerous instances of RDML as the markup language used. 9 See e.g., ’816 Patent Abstract
(“Methods and systems provide a computer markup language referred to as reusable data markup
language (‘RDML’), and a data viewer for retrieving, manipulating and viewing documents and
files in the DRML format.”). Plaintiffs agree the specification only describes the usage of a
single markup language throughout the documents recited in the claims. Tr. at 33:12–34:4
(“[PLAINTIFFS]: Well, I don’t know that there’s an embodiment described where there are
somehow two radically different markup language documents. . . . THE COURT: . . .
[E]verything in the spec points to the clarity of the same markup language? [PLAINTIFFS]:
Right. . . . [T]he spec doesn’t teach necessarily combining like some HTML document and
something else . . . . [W]hat it teaches about RDML and it says it can be compliant and the
preferred embodiment is compliant with XML. . . . ”). 10 A PHOSITA viewing claims “in light
of the specification,” would recognize the specification teaches only RDML embodiments and
accordingly be “inform[ed] . . . about the scope of the invention with reasonable certainty” as
having both markup documents sharing a single markup language, RDML. See Nautilus, 572
U.S. 898 at 910; DeMarini Sports Inc v, Worth, Inc., 239 F.3d 1314, 1327 (Fed. Cir. 2001) (“We
note that claim terms are not construed in a vacuum. Rather, to interpret claim terms we look to
The Court notes the question of enablement is distinct from the present issue of indefiniteness. The Court does not
make any finding on enablement at this stage of the proceedings.
9
The government asserts reading RDML into the claims as “the markup language” has implications regarding
infringement. Tr. at 195:15–24 (“[THE GOVERNMENT]: . . . [W]e don’t think that this is limited to RDML, but
even if it were, [] that might not be a helpful resolution because later on, for noninfringement purposes, we’re going
to say we’re not using RDML. So what is RDML as opposed to XML as opposed to HTML?”). The Court notes
the question of infringement is distinct from the present issue of indefiniteness. Compare 35 U.S.C. § 112(a), with
§ 112(b). The Court does not make any finding on infringement at this stage of the proceedings.
10
Plaintiffs assert the use of different markup languages is not a possibility. Tr. at 36:14–20 (“THE COURT: Is
[having two documents in different markup languages] a possibility? [PLAINTIFFS]: Yeah, we don’t necessarily
know that that would be a reasonable reading of the claim language, that they could somehow be in radically
different markup language documents—markup languages.”). As noted, supra note 9, enablement is distinct from
indefiniteness, and the Court makes no finding on enablement at this stage of the proceedings.
8

- 11 -

all of the intrinsic evidence as it pertains to the terms in question.”). Despite the recitation of two
“markup documents” in claim 10, the “markup language” in claim 12 is not indefinite; one of
ordinary skill in the art reading the claims in light of the specification would be “reasonabl[y]
certain[]” of the term’s antecedent basis. See Nautilus, 572 U.S. 898 at 910.
The government lastly argues even if claim 10 only encompasses RDML, both XMLcompliant RDML and non-XML-compliant RDML would still constitute different languages and
result in an indefinite scope. Tr. at 35:1–6. Compliance with XML 1.0 standards, however, does
not transform the underlying RDML markup language into a new language as the government
contends. Id. (“[THE GOVERNMENT:] [T]he first markup document could be RDML that’s
XML 1.0 compliant. The second markup document could be RDML that’s not XML 1.0
compliant.”). Claims 10 and 12 indicate the two documents recited in claim 10 each have the
same underlying markup language—RDML—but the claims do not require XML compliance to
be consistent across both documents. Id. Compliance with XML or other secondary
characteristics does not create different “markup languages” which render claim 12 indefinite. A
PHOSITA would be “reasonabl[y] certain[]” both markup documents maintain a singular
underlying markup language regardless of XML compliance. Nautilus, 572 U.S. at 910.
A PHOSITA would be “reasonabl[y] certain[]” both markup documents include the same
markup language of RDML. The Court accordingly maintains its preliminary construction and
finds Term 1 is not indefinite for lack of antecedent basis. Id. The Court additionally clarifies
the markup language of claim 12 has antecedent basis in claim 10 because the first markup
document and the second markup document of claim 10 share an RDML markup language.
Plaintiffs’ Proposed Construction
Defendant’s Proposed Construction
Not indefinite. Antecedent basis is implied,
Indefinite.
inter alia, by the use of the term “markup
document” in claim 10.
Court’s Final Construction
Not indefinite.
The markup language of claim 12 has antecedent basis in claim 10 because the first markup
document and the second markup document of claim 10 share an RDML markup language.
V.

Disputed Claim Term #3: “means for automatically transforming the numerical
values of at least one of the first markup document and the second markup
document, so that the numerical values of the first markup document and the
second markup document have a common format”

Plaintiffs’ Proposed Construction
To be construed under § 112, ¶ 6.

Defendant’s Proposed Construction
Indefinite.

Function: Automatically transforming the
numerical values of at least one of the first
markup document and the second markup
document.

To be construed under § 112, ¶ 6.
Function: Automatically transforming the
numerical values of at least one of the first
- 12 -

Structure: X-value transformer employing
conversion factors. Fig.7A, block 710; fig.8,
block 808; fig.10, blocks 1012 & 1014;
fig.11; col. 19 l. 49–col. 20 l. 3; col. 23 ll. 47–
59; col. 30 l. 46–col. 33 l. 33; col. 25 l. 45–
col. 27, l. 45.

markup document and the second markup
document, so that the numerical values of the
first markup document and the second
markup document have a common format.
Structure: Undisclosed.
Term is indefinite.

The government disputes the construction of this claim term in claim 26 of the ’816
Patent. Rev. J. Cl. Constr. at 13–14.
The following claim limitation highlights selected usage of the term in context:
A data processing system comprising: . . . means for automatically transforming
the numerical values of at least one of the first markup document and the second
markup document, so that the numerical values of the first markup document and
the second markup document have a common format; means for combining the first
markup document and the second markup document into a single data; and means
for displaying the single data set.
’816 Patent col. 58 ll. 1–17 (emphasis added).
A.

Parties’ Arguments

Two primary disputes underly the parties’ proposed constructions for Term 3: (1)
whether the term’s “so that” clause should be included in the function, and (2) whether the
term’s function has sufficient structural support in the specification.
Plaintiffs contend the “so that” clause should not be included in the term’s function
because it merely states the function’s result. Pls.’ Indef. Br. at 18. For support, plaintiffs cite
Lockheed, where the Federal Circuit refused to include a “whereby clause” in a term’s function
and determined the clause merely stated the result of the limitation rather than adding substance
to the claim. Id. (citing Lockheed Martin Corp v. Space Systems/Loral, Inc., 324 F.3d 1308 (Fed.
Cir. 2003)). The government contends e-Numerate “improperly broadens” the claimed function
by excluding the “so that” clause. Gov’t’s Resp. Indef. Br. at 12. The government asserts the
relevant function for Term 3 is not an automatic transformation in the abstract, but rather an
automatic transformation where the numerical values of the first markup document and the
second markup document have a common format. Id. The government argues “the language
after ‘so that’ does not describe the positioning of the ‘automatically transforming’ means but
describes the ‘automatically transforming’ means and should be part of the function.” Gov. SurReply Indef. Br. at 5.
Plaintiffs allege the specification’s disclosure of “conversion factors” provides
algorithmic support sufficient for the claim to render the term definite. Pls.’ Indef. Br. at 18.
Plaintiffs assert “as set forth in CellCast, the proper (and only) inquiry at this point in the

- 13 -

proceedings is whether there is some algorithm disclosed, and not whether the disclosure is
adequate.” Pls.’ Sur-Reply Indef. Br. at 4 (citing CellCast Techs., LLC v. United States, 150
Fed. Cl. 353 (2020)). Plaintiffs state “the specification unequivocally discloses the use of
conversion factors to transform numbers and provides examples.” Id. at 5. Plaintiffs further
argue algorithmic sufficiency cannot be resolved at this stage of litigation, before discovery has
begun. Id. (citing CellCast, 150 Fed. Cl. at 381).
The government replies, plaintiffs’ identified disclosures asserted as structure for
carrying out the recited transforming function are deficient when considering the full scope of
the recited functionality. Gov’t’s Resp. Indef. Br. at 14–15. The government argues there is no
coherent algorithm evident in “determining which numerical values should be transformed by the
X-value transformer.” Id. at 15. According to the government, the specification passages cited
by plaintiffs do not disclose an algorithm, but rather “provide[] a statement that writing the
algorithm is difficult and an ad hoc list of special cases.” Id. The government also asserts the
issue can be resolved at this state of the litigation because, unlike in CellCast, “the parties have
engaged in extensive expert discovery on claim construction issues.” Id. at 17.
B.

Analysis
1.

The Court’s Preliminary Construction

Before the Markman hearing, the Court considered the parties’ claim construction briefs
and all referenced materials in full in reaching a preliminary construction. First, the Court
considered the proper construction of the function and the dispute over the “so that” clause. The
Federal Circuit has explained “[t]he function of a means-plus-function claim must be construed
to include the limitations contained in the claim language.” Lockheed, 324 F.3d at 1319. The
Court determined Term 3’s “so that” clause—“so that the numerical values of the first markup
document and the second markup document have a common format”—substantively limited the
term because it restricted the manner in which transformation occurs and did not merely state a
result of the transformation. ’816 Patent col. 58 ll. 1–17. The Court accordingly preliminarily
concluded the “so that” clause limited Term 3’s function. See id.
Second, the Court considered whether the means-plus-function term claim contained
adequate structural support. For a software-based claim, the claim must be supported by
sufficient algorithmic disclosure such that a PHOSITA would “recognize the structure in the
specification and associate it with the corresponding function in the claim.” Noah Sys., Inc. v.
Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012). The Court found algorithmic support primarily
in Figure 10, which is further described in the specification at column 25, line 65–column 26,
line 28. See ’816 Patent fig.10, col. 25 l. 65–col. 26 l. 28. The Court preliminarily found these
portions of the specification disclose steps taking data from an initial document and transforming
the document into a new form, including changing a type of currency or the unit via a conversion
factor. Id. The Court found further support for the algorithm in Figure 11 and its related
disclosure, both of which describe steps taking place within the X-value transformer and the
transformation of a markup document’s values. See ’816 Patent fig.11, col. 30 l. 46–col. 33 l. 8.
This algorithm directly discusses steps taken to perform the function as constructed. See id.;
’816 Patent fig.10, col. 25 l. 65–col. 26 l. 28. The Court accordingly concluded, preliminarily,

- 14 -

the specification contained an algorithm sufficient support the term’s function, and the term was
accordingly not indefinite.
Court’s Preliminary Construction

Not indefinite.

Function: Automatically transforming the numerical values of at least one of the first markup
document and the second markup document, so that the numerical values of the first markup
document and the second markup document have a common format
Structure: RDML data viewer (’816 Patent fig.10, col. 25 l. 65–col. 31 l. 3) and the X-value
transformer (id. fig.11, col. 30 l. 46–col. 33 l. 8)
2.

The Court’s Final Construction

The Court’s final construction requires assessing two questions: (1) whether the function
of Term 3 is limited by its “so that” clause, see Lockheed, 324 F.3d at 1319; and (2) whether the
specification discloses sufficient structure to support the claimed functionality, see EON Corp.
IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 622–23 (Fed. Cir. 2015) (quoting In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011)).
i.

Whether the “so that clause” limits the term’s function

To determine whether Term 3 is indefinite, the Court first assesses whether the term’s “so
that” clause limits the claimed function. Plaintiffs argue the “so that” clause should not be
included as part of the function because it is “contrary to controlling Federal Circuit precedent.”
Pls.’ Indef. Br. at 18. Plaintiffs assert the language of the “so that” clause is “analogous” to an
excluded whereby clause in Lockheed “that merely states the result of the limitations in the claim
[and] adds nothing to the substance of the claim.” Id. (quoting Lockheed, 324 F.3d at 1324).
The government, in response, argues excluding the “so that” clause “improperly broadens the
function” and asserts Lockheed “suggests no differently.” Gov’t’s Resp. Indef. Br. at 12. The
government argues “[t]he language e-Numerate seeks to exclude does not merely state the result
of the limitations in the claim, but rather serves to identify and define the recited ‘automatically
transforming’ function.” Id. at 13. The government continued to argue at oral argument for the
“so that” clause to be included. Tr. at 39:18–40:4 (“[THE GOVERNMENT]: . . . We need the
“so that” part. . . . [Y]ou need to show that in order to define the function. You know, without it
. . .you can’t determine what the structure is or the scope of the structure.”). Plaintiffs argue
including the clause will not make a material difference for the meaning of the claim but concede
“reasonable minds could differ.” Tr. at 41:21–42:9 (“[PLAINTIFFS:] I don’t know that it makes
a material difference in the outcome and certainly reasonable minds could differ as to Term 3
and Term 4, whether those ‘so that’s’ are in.”). Plaintiffs also concede allowing the claim to
transform the documents into anything rather than into a specific result would broaden the claim,
at least conceptually. Tr. at 43:5–11 (“THE COURT: Well if you can transform into anything,
does that broaden the claim? [PLAINTIFFS]: Well, it would broaden it in a conceptual sense,
but then it has this qualifier in the claim language which would be a substantive limitation that it
ends up being in common format, as you construed the term, I think, in some of the other

- 15 -

claims.”).
According to the Federal Circuit in Lockheed, a means-plus-function claim may not “be
improperly broadened by ignoring the clear limitations contained in the claim language. The
function of a means-plus-function claim must be construed to include the limitations contained in
the claim language.” Lockheed, 324 F.3d at 1319. In Lockheed, the Federal Circuit found the
district court incorrectly broadened a claim by reducing it to only say “rotating said wheel,”
when the proper breadth of the claim should have been “rotating said wheel in accordance with a
predetermined rate schedule which varies sinusoidally over the orbit at the orbital frequency of
the satellite.” Id. The Federal Circuit, however, did not extend the claim limitation to a further
“whereby” clause “because a whereby clause that merely states the result of the limitations in the
claim adds nothing to the substance of the claim.” Id. (citing Tex. Instruments Inc. v. ITC, 988
F.2d 1165, 1172, 1023–24 (Fed. Cir. 1993)). The question from Lockheed, therefore, is whether
the “so that” clause in the means-plus-function claim “merely states the result of the limitations
in the claim [and] adds nothing to the substance of the claim” or is a “clear limitation[] contained
in the claim language . . . [and the] claim must be construed to include the limitations contained.”
Id.
In this case, the Court must consider whether the “so that” clause has a substantial effect
on the limitations of the claim or is a mere statement of the result. See id. As plaintiffs admit,
not including the “so that” clause would theoretically broaden the claim. See Tr. at 43:5–11.
The clause here requires a more limited manner of transforming; specifically, the transforming
occurs “so that the numerical values of the first markup document and the second markup
document have a common format.” ’816 Patent col. 58 ll. 1–17 (emphasis added). A means for
automatically transforming numerical values into any form is a different limitation than one for
automatically transforming numerical values into a common format. This clause goes beyond
“merely stat[ing] the result of the limitation” and adds substance to the claim. Lockheed, 324
F.3d at 1319. The Court accordingly finds the “so that” clause is a substantive limitation on the
term’s function. See id.
ii.

Whether adequate algorithmic structure supports the term’s
function

Having identified the portion of the term to limit function, the Court next turns to
structure. The parties dispute whether the function is supported by associated algorithmic
disclosure in order to not be indefinite. Both parties agree an algorithm is necessary for this
claim. Tr. at 75:23–76:4 (“[PLAINTIFFS]: The only—the only claim terms that require an
algorithm are the ‘means for automatically transforming’ elements in the two—the ’816 and the
’383 [Patents].”); Tr. at 47:21–22 (“[THE GOVERNMENT]: . . . [W]e need the algorithm that it
uses to do [the transforming]”). Plaintiffs assert “there is an algorithm—the use of the
conversion factors.” Pls.’ Indef. Br. at 18 (citing ’816 Patent col. 25, ll. 35–col. 27, ll. 45). At
oral argument, plaintiffs cited two separate portions of the specification for support, contending
the “transforming” function could take place in either: the RDML Data Viewer (including the
X-Value Transformer) and the Macros. Tr. at 50:9–51:12 (“[PLAINTIFFS]: . . . the macro is
another way to do it. . . . 760 and 758, the macro interface can also make changes further down
the line . . . .”); Tr. at 66:24–67:2 (“THE COURT: So where is the algorithm for the step of

- 16 -

numerical values for the first document and the second document having a common format?
[PLAINTIFFS]: Well, that’s taught in Figure 10”).
The government contends the support cited by e-Numerate does not include an algorithm,
but rather provides an ad hoc list of “exactly two scenarios . . . indicat[ing] what should be done
in those very specific cases” and “a statement that writing the algorithm is difficult . . . .”
Gov’t’s Resp. Indef. Br. at 15. The government additionally argues the disclosure plaintiffs cite
may be an algorithm, but it does not match the claim’s form and is missing subsets, and thus
there is no algorithm supporting the term. Tr. at 62:19–63:8 (“THE COURT: Yeah, I mean,
under case law, they’re an algorithm, right? [THE GOVERNMENT]: Yes. THE COURT: So
why are they insufficient? [THE GOVERNMENT]: Because . . . implicit in Figure 10 is that
there are substeps for some of those boxes. Those boxes are incomplete. So determin[ing] the
desired transformation, it doesn’t tell you how to do that. And select[ing the] document to be
transformed, that’s not what the claim limitation was directed to. It wasn’t automatically
convert[ed] based on a selection of a document; it’s automatically convert[ed] to documents so
that they . . . effectively . . . have common units. So this is an algorithm, but it doesn’t match the
claim term and it’s missing substeps.”); Tr. at 64:1–2 (“[THE GOVERNMENT]: This is not an
algorithm—we don’t see how this algorithm maps to the claim term. . . .”); Tr. at 64:7–11
(“[THE GOVERNMENT]: [The algorithm is] certainly insufficient, but I don’t think that [it]
maps—for example, determine desired transformation, that’s just like—it’s a black box. It’s just
like that’s the secret sauce and it’s missing that.”).
When a claim is computer-implemented, the specification must “disclose an algorithm for
performing the claimed function.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367
(Fed. Cir. 2008) (citing Aristocrat Techs. Austl. Pty Ltd. V. Int’l Game Tech., 521 F.3d 1328,
1333 (Fed. Cir. 2008)). In Noah Systems, the Federal Circuit distinguished “cases in which the
specification discloses no algorithm” from those “in which the specification . . . disclose[s] an
algorithm but a defendant contends that disclosure is inadequate.” Noah Sys., 675 F.3d at 1313;
see also Sisvel Int’l S.A. v. Sierra Wireless, Inc., 82 F.4th 1355, 1364–65 (Fed. Cir. 2023). If the
claim has no disclosed algorithm, “the inquiry is complete and the claims are indefinite pursuant
to § 112(f).” CellCast, 150 Fed. Cl. at 380 (citing EON Corp., 785 F.3d at 624). If the claim has
some disclosed algorithm, but the parties dispute the adequacy of that algorithm, “arguments
regarding the sufficiency of the disclosed algorithms must be evaluated according to expert
testimony ‘based on a skilled artisan’s perspective.’” Id. (quoting EON Corp., 785 F.3d at 624).
For a software-based claim, “[t]he algorithmic structure need not be the operative source code
itself.” Id. (citing Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1385–86 (Fed. Cir.
2011)). In CellCast, this court decided when “expert discovery has not yet been conducted . . .
[and] [t]he parties have not been afforded the opportunity to present evidence regarding how a
person of ordinary skill in the art would view the disclosure of the asserted patents[,]” evaluation
of the sufficiency of algorithms is “best left for summary judgment . . . .” Id.
For Term 3, the Court preliminarily decided the specification did contain an algorithm,
supported in part by two figures, Figure 10 and Figure 11, and the associated written description,
which describes the process taken to transform the numerical values. See ’816 Patent fig.10,
fig.11, col. 25 ll. 36–64, col. 25 l. 65–col. 26 l. 28. Consistent with the preliminary construction,
the RDML Data Viewer and X-value transformer describe the steps taken to transform the

- 17 -

values. Id. The specification explains “[t]he data viewer 100 accesses the unit, magnitude,
modifier, scale, measure and adjustment attributes of the document or line item to be transformed
(step 1010). Using these attributes, the data viewer 100 determines the conversion factors, if
any, for each (step 1012). . . . The data viewer 100 then multiplies the conversion factors to
transform the numerical data into the desired display (step 1014) and displays the transformed
line item or document (step 1016).” ’816 Patent col. 26 l. 11–20. The specification also
provides an example of how the transformation would take place by explaining how the RDML
Data Viewer 100 would transform U.S. Dollars (in thousands) per hour, adjusted for inflation,
into Italian Lira (in billions) per day, in nominal Lira. See ’816 Patent col. 25 l. 36–col. 25 l. 64.
Figure 11 and its related description in the specification also describe the steps taking place
within the X-value transformer and the transformation of the document’s values. See ’816 Patent
fig.11, col. 30 l. 46–col. 33 l. 8. These lines describe transforming one document’s data set to
match another document’s and include examples of changing months to years or altering the date
format. Id. The specification directly discusses the steps taken to perform the function as
constructed and therefore contains an algorithm for the claims at issue. See id.; ’816 Patent
fig.10, col. 25 ll. 65–col. 26 l. 28; Net MoneyIN, 545 F.3d at 1367. Insofar as any of the
government’s arguments are directed towards the sufficiency of these algorithms, the Court does
not make any decisions regarding enablement at this stage. Based on the specification, however,
the Court finds algorithmic disclosure sufficient for a PHOSITA to “recognize the structure in
the specification and associate it with the corresponding function in the claim.” 11, 12 Noah Sys.,
675 F.3d at 1312.
Plaintiffs additionally argued at oral argument the macros of step 758 and 760 were
capable of performing the transformation function. Tr. at 50:9–51:12 (“[PLAINTIFFS]: . . .
[T]he macro is another way to do it. . . . 760 and 758 the macro interface can also make changes
further down the line . . . . [F]or example, Column 9, around—starting around line 28.”). This
argument was not in the parties’ briefing, nor were these steps included as part of the structure in
their proposed construction. Nevertheless, the column and line numbers plaintiffs cited at oral
argument in support of this function do not reference the macro steps and do not provide any
additional algorithmic structure to support this claim term. See id.; ’816 Patent col. 9 ll. 26–38.
The specification does not contain any disclosure describing an algorithm for a macro
transforming numerical values. In fact, the only potential “transforming” discussed in the cited
Plaintiffs further argue “disputes as to the adequacy of a disclosed algorithm cannot be resolved as part of the
claim construction process.” Pls.’ Indef. Br. at 18–19 (citing CellCast Techs., LLC v. United States, 150 Fed. Cl.
353, 380 (2020)). While the Court determines the disclosed structural support is adequate to find a PHOSITA
would “recognize the structure in the specification and associate it with the corresponding function in the claim,” the
Court makes no finding on whether the algorithms are enabling. See Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302,
1312 (Fed. Cir. 2012) (citation omitted). The Court’s previous decision in CellCast is not inapposite, as “the parties
[had not been] afforded the opportunity to submit expert evidence regarding a person having ordinary skill in the
art.” CellCast, 150 Fed. Cl. at 388.
12
Both parties notably submitted expert declarations and, unsurprisingly, the experts presented opposite conclusions
on algorithmic support. In a claim construction dispute like the present, a battle of experts, often presenting—as
here—conclusory opinions rarely provides much assistance in determining claim scope. See Tr. at 70:16–19 (“[THE
GOVERNMENT]: [The government’s expert] agrees that it discusses using conversion factors and . . . [that the
patent] recognizes the problem, it says it needs to do this, but it doesn’t explain how to do it.”); Tr. at 71:9–72:1
(“THE COURT: Does your expert agree with the government’s expert? [PLAINTIFFS]: No. . . . He’s also said . .
. it teaches an algorithm to transform. . . . THE COURT: So two experts disagree? [PLAINTIFFS]: Yeah, so it’s a
conflict in fact . . . .”).
11

- 18 -

portions is a description of macros “evaluat[ing] the transformation string, and updat[ing] the
various titles and legends.” ’816 Patent col. 53 ll. 31–32. These macros do not specify
transforming numerical values as discussed in the function, but only transforming “titles and
legends.” Id. The macro portions cited by plaintiffs accordingly provide no additional
algorithmic structure to the claim term. See id. Accordingly, the macros of step 758 and 760 are
not included within the structure of the Court’s final construction of this claim.
Plaintiffs’ Proposed Construction
To be construed under § 112, ¶ 6.

Defendant’s Proposed Construction
To be construed under § 112, ¶ 6.

Function: Automatically transforming the
numerical values of at least one of the first
markup document and the second markup
document.

Function: Automatically transforming the
numerical values of at least one of the first
markup document and the second markup
document, so that the numerical values of the
first markup document and the second
markup document have a common format.

Structure: X-value transformer employing
conversion factors. Fig.7A, block 710; fig.8,
block 808; fig.10, blocks 1012 & 1014;
Structure: Undisclosed.
fig.11; col. 19 l. 49–col. 20 l. 3; col. 23, ll.
47–59; col. 30, l. 46–col. 33 l. 33; col. 25, l.
Term is indefinite.
45–col. 27 l. 45.
Court’s Final Construction
Not indefinite.

Function: Automatically transforming the numerical values of at least one of the first markup
document and the second markup document, so that the numerical values of the first markup
document and the second markup document have a common format
Structure: RDML data viewer (’816 Patent fig.10, col. 25 l. 65–col. 31 l. 3) and the X-value
transformer (’816 Patent fig.11, col. 30 l. 46–col. 33 l. 8)
VI.

Disputed Claim Term #4: “means for automatically transforming at least a portion
of the first or second numerical values of at least one of the first markup document
or the second markup document, so that at least some of the first numerical values
of the first markup document and at least some of the second numerical values of
the second markup document have a common unit of measure”

Plaintiffs’ Proposed Construction
To be construed under § 112, ¶ 6.

Defendant’s Proposed Construction
To be construed under § 112, ¶ 6.

Function: Automatically transforming at least
a portion of the first or second numerical
values of at least one of the first markup
document or the second markup document

Function: Automatically transforming at least
a portion of the first or second numerical
values of at least one of the first markup
document or the second markup document, so
that at least some of the first numerical values
of the first markup document and at least

Structure: X-value transformer employing

- 19 -

conversion factors. Fig.7A, block 710; fig.8,
block 808; fig.10, blocks 1012 & 1014;
fig.11; col. 18, ll. 8–30; col. 22, ll. 17–29; col.
29, l. 13–col. 31, l. 29; col. 24, l. 9–col. 26, l.
10

some of the second numerical values of the
second markup document have a common
unit of measure.
Structure: Undisclosed.
Term is indefinite.

The government disputes the construction of this claim term in claim 18 of the ’383
Patent. Rev. J. Cl. Constr. at 39.
The following claim limitation highlights selected usage of the term in context:
An apparatus, comprising: means for automatically transforming at least a portion
of the first or second numerical values of at least one of the first markup document
or the second markup document, so that at least some of the first numerical values
of the first markup document and at least some of the second numerical values of
the second markup document have a common unit of measure;
’383 Patent col. 146 ll. 34–41 (emphasis added).
A.

Parties’ Arguments

Plaintiffs argue the “so that” clause included by the government is legally incorrect, and
citing Lockheed, the government’s interpretation is contrary to Federal Circuit precedent. Pls.’
Indef. Br. at 23–24 (citing Lockheed Martin Corp v. Space Systems/Loral, Inc., 324 F.3d 1308,
1324 (Fed. Cir. 2003)). Plaintiffs also contend the specification contains “conversion factors,”
which are sufficient algorithmic support at this stage, and submits the Court should not resolve
the dispute over the sufficiency of the algorithm at this stage. Id. at 24. The government
contends plaintiffs’ omission of the “so that” clause improperly broadens the function, and no
structural support exists in the specification. Gov’t’s Resp. Indef. Br. at 26–27. The government
argues a PHOSITA would recognize the “so that” clause as a necessary part of the function
under this claim term. Id. at 26–27.
B.

Analysis

At the Markman hearing, both parties conceded the arguments for Term 4 are identical to
the arguments for Term 3, and the claims should rise or fall together. Tr. at 73:14–74:1 (“[THE
COURT:] [B]etween the ’383 patent and the ’816 patent, do you agree that the arguments for
‘means for automatically transforming[’] in the ’383 patent[] overlap with ‘means for
automatically transforming’ in the ’816 patent? . . . [THE GOVERNMENT]: The arguments are
the same, yes. THE COURT: [Plaintiffs], would you agree with that as well? [PLAINTIFFS]:
Yeah, the arguments are the same.”); Tr. at 74:9–14 (“THE COURT: And [do you agree] the
two terms would likely rise and fall together, so if structural support is found in 3, it would likely
be found in 4? [THE GOVERNMENT]: Right. THE COURT: [PLAINTIFFS], you would
agree? [PLAINTIFFS]: Yes, Your Honor.”). Consistent with the parties’ agreement Terms 3

- 20 -

and 4 rise or fall together, the Court also finds Term 4’s “so that” clause limits its function, and
the term has sufficient algorithmic structural support. Tr. at 73:14–74:14; see id.; see also supra
note 12.
Plaintiffs’ Proposed Construction
To be construed under § 112, ¶ 6.

Defendant’s Proposed Construction
To be construed under § 112, ¶ 6.

Function: Automatically transforming at least
a portion of the first or second numerical
values of at least one of the first markup
document or the second markup document

Function: Automatically transforming at least
a portion of the first or second numerical
values of at least one of the first markup
document or the second markup document, so
that at least some of the first numerical values
of the first markup document and at least
some of the second numerical values of the
second markup document have a common
unit of measure

Structure: X-value transformer employing
conversion factors. Fig.7A, block 710; fig.8,
block 808; fig.10, blocks 1012 & 1014;
fig.11; col. 18 ll. 8–30; col. 22 ll. 17–29; col.
29 l. 13–col. 31 l. 29; col. 24 l. 9–col. 26 l. 10

Not indefinite.

Structure: Undisclosed

Term is indefinite.
Court’s Preliminary Construction

Function: “automatically transforming at least a portion of the first or second numerical
values of at least one of the first markup document or the second markup document, so that at
least some of the first numerical values of the first markup document and at least some of the
second numerical values of the second markup document have a common unit of measure”
Structure: RDML data viewer (support at ’383 Patent fig.10, col. 25 ll. 9–12, col. 24 ll. 30–
62) and the X-value transformer (support at id. fig.11, col. 29 l. 12–col. 31 l. 29)
Court’s Final Construction
Not indefinite.
Function: “automatically transforming at least a portion of the first or second numerical
values of at least one of the first markup document or the second markup document, so that at
least some of the first numerical values of the first markup document and at least some of the
second numerical values of the second markup document have a common unit of measure”
Structure: RDML data viewer (’383 Patent fig.10, col. 25 ll. 9–12, col. 24 ll. 30–62) and the
X-value transformer (id. fig.11, col. 29 l. 12–col. 31 l. 29)
VII.

Disputed Claim Term #5: “means for combining the first markup document and
the second markup document into a single data”

Plaintiffs’ Proposed Construction
To be construed under § 112, ¶ 6.

Defendant’s Proposed Construction
To be construed under § 112, ¶ 6
- 21 -

Function: Combining the first markup
document and the second markup document.
Structure: Primary data store; fig.7, Box 712;
fig.8, line 810; fig.11; fig.13; col. 19 l. 66–
col. 20 l. 3; col. 31 ll. 4–30; col. 33 ll. 9–59;
col. 35, l. 50–col. 36, l. 40.

Function: Combining the first markup
document and the second markup document
into a single data. 13
Structure: Undisclosed.
Term is indefinite

The government disputes the construction of this claim term in claim 26 of the ’816
Patent. Rev. J. Cl. Constr. at 15.
The following claim limitation highlights selected usage of the term in context:
A data processing system comprising: means for automatically transforming the
numerical values of at least one of the first markup document and the second
markup document, so that the numerical values of the first markup document and
the second markup document have a common format; means for combining the first
markup document and the second markup document into a single data; and means
for displaying the single data set.
’816 Patent col. 58 ll. 1–17 (emphasis added).
A.

Parties’ Arguments

Plaintiffs first assert the government’s improper inclusion of “into a single data” runs
counter to Lockheed because the phrase recites a result of the process. Pls.’ Reply Indef. Br. at 6
(citing Lockheed Martin Corp v. Space Systems/Loral, Inc., 324 F.3d 1308, 1319 (Fed. Cir.
2003) (excluding a “whereby” clause from a term’s function)). Plaintiffs then assert the
government erroneously relies on the absence of an algorithm to argue the claim is indefinite.
Pls.’ Indef. Br. at 19. Plaintiffs argue the absence of an algorithm is not dispositive because
“combining” is an exception under Katz. Id. (citing In re Katz Interactive Call Processing
Patent Litig., 639 F.3d 1303 (Fed. Cir. 2011)). Plaintiffs further contend categorizing
“combining” as a Katz exception is correct, based on its expert’s testimony, because a PHOSITA
would “understand that a data store that combines documents is operable using a general-purpose
computer without any special programming.” Smith Decl. at ¶¶ 48–54; see Pls.’ Indef. Br. at 19.
The government alleges the appropriate function of the term is “combining the first
markup document and the second markup document into a single data.” Gov’t’s Resp. Indef. Br.
at 17–18. According to the government, excluding the phrase “into a single data” would
“eviscerate[]” the nature of “combining,” failing to capture each of the necessary functions of the
term. Id. at 18. The government contends omitting “into a single data” is exactly what the
Federal Circuit rejected in Lockheed. Id. (citing Lockheed, 324 F.3d at 1324).
In an earlier proposed claim construction, the government “mistakenly stated the function” of this claim term was
indefinite. Def.’s Resp. Indef. Br. at 18, n.5; see also App. to Pl.’s Indef. Br. Ex. B at 8, ECF No. 80-3 (stating the
function is “Indefinite”). The government subsequently corrected its error. See Rev. J. Cl. Constr. at 15.
13

- 22 -

The government next argues the term is indefinite because the specification fails to
provide a required algorithm. Id. Assessing plaintiffs’ cited structural support, the government
alleges the specification’s recitation of “vectors” and “hash table or collection data structure”
both indicate the plaintiffs’ alleged structure—the “primary data store” (PDS)—differentiates
rather than combines the documents it holds, thereby failing to support “combining.” Id. at 19
(citing ’816 Patent at col. 33 ll. 26–33). The government further contends “‘storing’ separate and
distinct documents in a ‘collection data structure’ so the documents may be separately retrieved,
is not the same as . . . combining two documents into a single data [set].” Gov. Sur-Reply Indef.
Br. at 9 (alteration in original).
Contrary to plaintiffs’ position, the government says Katz is inapplicable, asserting Katz
only applies in rare circumstances where a general-purpose computer can perform the function.
See Gov’t’s Resp. Indef. Br. at 20 (citing Ergo Licensing, LLC v. Carefusion 303, Inc., 673 F.3d
1361 (Fed. Cir. 2012)). The government admits storing a document may be considered a
standard function for a general-purpose computer but contends combining first and second
markup documents into a single data is not. Id. The government argues, accordingly, an
algorithm is required, plaintiffs have failed to provide an algorithm, and—as a result—the term is
indefinite. Id.
B.

Analysis
1.

The Court’s Preliminary Construction

Before the Markman hearing, the Court considered the parties’ claim construction briefs
and all referenced materials in full in reaching a preliminary construction. The Court provided
the parties with the preliminary construction reproduced below. The Court determined,
preliminarily, a general-purpose computer could not perform the functionality without
specialized programming, and the specification did not disclose adequate algorithmic structure to
support the term’s means-plus-function limitation. See EON Corp. IP Holdings v. AT&T
Mobility LLC, 785 F.3d 616, 622–23 (Fed. Cir. 2015) (quoting Katz, 639 F.3d at 1316). Without
adequate support for the term’s function, the Court found the means-plus-function term to be
indefinite. See id.; Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1315–16 (Fed. Cir. 2012).
The Court’s Preliminary Construction
Indefinite for lack of structure.
Function: “combining the first markup document and the second markup document into a
single dataset”
Structure: Undisclosed.
2.

The Court’s Final Construction

The parties agree “means for combining the first markup document and the second
markup document into a single data” is a means-plus-function limitation. Gov’t’s Resp. Indef.

- 23 -

Br. at 17; Pls.’ Indef. Br. at 19. The Court’s final construction therefore requires assessing three
questions: (1) whether the function of Term 5 includes “combining . . . into a single data [set],”
see Lockheed, 324 F.3d at 1319; (2) whether a general purpose computer can perform the
function and the specification need not disclose an algorithm; and (3) if the function cannot be
performed by a general purpose computer, whether the specification discloses sufficient structure
to support the claimed functionality, see EON, 785 F.3d at 622–23 (quoting Katz, 639 F.3d at
1316).
i.

Whether the term’s function includes “combining . . . into a
single data [set]”

The Court first addresses whether the scope of the claimed function includes
“combining” alone or “combining . . . into a single data.” At the Markman hearing, both parties
agreed to construe “singe data” as “single data set,” acknowledging the discrepancy as
attributable to a typographical error. Tr. at 75:7–11 (“[THE GOVERNMENT]: We think it’s
indefinite under either whether the function is into a single data or a single data set. THE
COURT: But for the purposes of construing, is it fair to assume that the lack of the word “data
set” was typographical and the Court can read that into it? [THE GOVERNMENT]: We agree
with such a modification.”); Tr. at 74:23–75:1: (“THE COURT: . . . Mr. O’Rourke, you asked
the Court to construe single data as single data set as it was just a typographical error?
[PLAINTIFFS]: Yes, [y]our Honor.”). Substantively, plaintiffs contend the government’s
proposal to include “into a single data” in the “means for combining” term is improperly narrow
because the term recites a result of the limitation, rather than the function. Pls’ Indef. Reply at 6
(citing Lockheed, 324 F.3d at 1319). In Lockheed, the Federal Circuit construed a means-plusfunction claim which recited in part:
means for rotating said wheel in accordance with a predetermined rate schedule
which varies sinusoidally over the orbit at the orbital frequency of the satellite
whereby the attitude of said satellite is offset in response to the effect of said
rotating wheel by the direction of the pitch axis being changed with respect to said
momentum vector, the direction of said pitch axis with respect to the inclined orbit
normal varying sinusoidally at the orbital frequency to null said roll pointing error
due to said orbit inclination, the momentum vector being maintained perpendicular
to the plane of the geo-synchronous orbit to null said yaw pointing error due to said
orbit inclination . . . .
Lockheed, 324 F.3d at 1315 (quoting U.S. Pat. No. 4,084,772 at col. 10 ll. 14–30 (filed Jan 28,
1976)). The Federal Circuit found the “whereby clause” “merely state[d] the result of the
limitations in the claim and add[ed] nothing to the substance of the claim.” Id. at 1319 (citing
Tex. Instruments, 988 F.2d at 1172). The Federal Circuit further found, however, the district
court erred by construing the function as merely “rotating said wheel,” instead determining the
claim’s function properly included “rotating said wheel in accordance with a predetermined rate
schedule which varies sinusoidally over the orbit at the orbital frequency of the satellite.” Id.
Term 5’s clause similarly is not limited to merely “combining the first markup document with
the second markup document” alone. Like “predetermined rate schedule” in Lockheed,
“combining . . . into a single data [set]” does not disclose a byproduct of the function; rather it

- 24 -

discloses a manner of combining. See id. Plaintiffs acknowledge there are “many different ways
to combine.” Tr. at 83:10–12. Term 5’s combination of markup documents “into a single data
set” is one of these “many different ways.” Id. Like the expanded functionality in Lockheed, the
term’s function is not merely “combining” but “combining . . . into a single data [set].” Term 5’s
function is accordingly limited by the clause “into a single data [set].” 14 See Lockheed, 324 F.3d
at 1319.
ii.

Whether a general purpose computer can perform the term’s
function

Having defined the term’s function, the Court next turns to whether the term is supported
by sufficient structure, beginning with whether a Katz exception applies. Plaintiffs assert the
“means for combining” limitation is definite because a general-purpose computer is capable of
performing the “combining” functionality, and therefore no algorithmic support is necessary
under Katz. Tr. at 75:23–25. In Katz, the Federal Circuit instructed a specification does not need
to disclose an algorithm if a general-purpose computer is capable of performing the claimed
functionality without “special programming.” See Katz, 639 F.3d at 1315–16 (finding “the
functions of ‘processing,’ ‘receiving,’ and ‘storing’ [were] coextensive with the structure
disclosed, i.e., a general purpose processor”). According to plaintiffs, “[i]t’s a very basic thing to
put two data sets together.” Tr. at 103:11–12. In EON, however, the Federal Circuit explained
“special programming” as denoted in Katz “does not denote a level of complexity,” rather it
instead “includes any functionality that is not ‘coextensive’ with a microprocessor or general
purpose computer.” EON, 785 F.3d at 623 (citing Katz, 639 F.3d at 1316). Under EON,
disclosing very basic technology alone is therefore not sufficient to qualify for a Katz exception.
Indeed, as plaintiffs acknowledged, there are “many different ways to combine.” Tr. at 83:10–
12. Even a brief review of the specification indicates the patent recites multiple ways of
“combining” which require specialized programming. For example, plaintiffs cite column 36,
lines 9–40 as structural support. See Rev. J. Cl. Constr. at 15. This section describes an
embodiment wherein:
[a] “chart view” transforms, formats, manipulates, and displays data stored in
[multiple] markup documents using the attributes describing the meaning of the
data. . . .
As an example, the chart view automatically determines when a first series
is in the “U.S. dollars” and the second series is in “French francs”; it may
automatically place them on separate axes or automatically translate the units.
’816 Patent at col. 36 ll. 9–40. Even assuming, arguendo, this passage supports combining
markup documents including U.S. dollars and French francs into a single data set, the
combination of dollars and francs so as to “transform[], format[], manipulate[], and display[]”
14
In cases where the Federal Circuit has found a function was not limited by terms in a means-plus function claim,
the terms have typically appeared within a separate clause, such as a “wherein” clause. See e.g., Lockheed Martin
Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1315 (Fed. Cir. 2003) (analyzing a “whereby” clause); BBA
Nonwovens Simpsonville, Inc. v. Superior Nonwovens, LLC., 303 F.3d 1332 (Fed. Cir. 2002) (analyzing a “so that”
clause). The absence of a similar clause in this case, while not dispositive, supports a close connection between the
elements “combining” and the “into a single data [set].” See ’816 Patent col. 58 ll. 1–17.

- 25 -

the data via “attributes describing the meaning of the data,” id., requires special programming
beyond the functions of a general-purpose computer under the narrow Katz exception. See EON,
785 F.3d at 621–23. Specialized programming is accordingly necessary to dictate which of the
“many different ways to combine” is invoked here. See Tr. at 83:10–12. Term 5 is accordingly
not subject to a Katz exception and must be supported by sufficient algorithmic structure in the
specification. 15 See EON, 785 F.3d at 621–23.
iii.

Whether adequate algorithmic structure supports the term’s
function

The Court next assesses whether Term 5’s “combining” functionality is supported by
adequate algorithmic structure. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367
(Fed. Cir. 2008). “[A] means-plus-function clause is indefinite if a person of ordinary skill in the
art would be unable to recognize the structure in the specification and associate it with the
corresponding function in the claim.” Noah Sys., 675 F.3d at 1312 (quoting AllVoice Computing
PLC v. Nuance Commc’ns., Inc., 504 F.3d 1236, 1241 (Fed.Cir.2007)). The specification may
disclose the algorithm “in any understandable terms including as a mathematical formula, in
prose, . . . or as a flow chart, or in any other manner that provides sufficient structure.” Finisar
Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal citation omitted).
Simply disclosing software, however, “without providing some detail about the means to
accomplish the function[,] is not enough.” Id. at 1340–41 (citation omitted). A specification
disclosing only a partial algorithm—one failing to disclose all of the functions—will be treated
as not providing an algorithm at all. Noah Sys., 675 F.3d at 1318 (“Given the purpose for
requiring disclosure of an algorithm . . . . [when] the specification discloses an algorithm for only
one, or less than all, of those functions, we must analyze the disclosures as we do when no
algorithm is disclosed.”). If there is no disclosed algorithm, “the inquiry is complete and the
claims are indefinite pursuant to [35 U.S.C.] § 112(f).” CellCast Techs., LLC v. United States,
150 Fed. Cl. 353, 380 (2020) (citing EON Corp., 785 F.3d at 624). Absent a Katz exception,
plaintiffs’ lack of algorithm supporting the recited “combining” renders Term 5 indefinite. Katz,
639 F.3d at 1315.
Plaintiffs agree the specification does not provide a mathematical formula for
“combining.” Tr. at 94:16–18 (“[PLAINTIFFS]: If an algorithm is a mathematical formula for
these steps, the patent doesn’t teach [a] mathematical formula for doing these steps.”). Despite
the lack of a mathematical formula, plaintiffs assert the specification discloses a “series of steps”
sufficient to act as an algorithm. Tr. at 79:11–16 (“[PLAINTIFFS:] [I]f you say . . . what is an
algorithm, . . . [it’s] a series of steps, . . . [and] that’s disclosed very clearly in the specification
and the figures.”). At oral argument, the Court asked plaintiffs “where does it talk about
At the Markman hearing, plaintiffs suggested the Court’s assessment for adequate algorithmic structure should be
“an equities issue,” because the “patents were . . . written and filed going back to 1998,” which was before WMS
Gaming, Katz, and EON. Tr. at 114:11–23; see WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339 (Fed. Cir.
1999); In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303 (Fed. Cir. 2011); EON Corp. IP Holdings
LLC v. AT&T Mobility LLC, 785 F.3d 616 (Fed. Cir. 2015). It is unclear what plaintiffs mean by an “equities issue,”
as sufficient disclosure is not a question of equity. Further, the Court applies caselaw currently binding on the
Court, rather than precedent at the time of filing. Fresnius USA, Inc. v. Baxter Int’l, Inc., 721 F.3d 1330, 1345 (Fed.
Cir. 2013) (“[T]he general rule . . . [is a] court must apply the law in effect at the time it renders its decision . . . .”
(quoting Thorpe v. Hous. Auth., 393 U.S. 268, 281 (1969)).
15

- 26 -

processing and combining to create [a] single document?” Tr. at 88:2–4. After looking through
the patent, plaintiffs cited Figure 7A and column 30, lines 46–55 for support. Tr. at 90:21–91:7.
This section of the specification states in part:
When more than one data document is input, their data fields must be correlated
before they can be presented together in a common view. The X-value transformer
710 determines what adjustments have to be made, and then accomplishes them.
’816 Patent col. 30, ll. 53–57. Plaintiffs allege the passage discloses “putting the documents
together . . . in a view.” Tr. at 91:7. Plaintiffs describe the algorithmic support from this
passage, however, as “just [disclosing] off-the-shelf software that says, [‘]okay, sort it this way,
sort it that way.[’]” Tr. at 91:23–24. The Federal Circuit has clarified even off the shelf
software requires algorithmic support. See EON, 785 F.3d at 623 (“[T]he district court erred in
holding that ‘special programming’ does not encompass commercially available off-the-shelf
software. . . . [A] general purpose computer becomes a special purpose computer when loaded
with the special programming, so a general purpose computer or microprocessor no longer lends
sufficient structure to the claim.”); Tr. at 106:1–6 (“[THE COURT:] [Do] plaintiff[s] have any
case where there was off-the-shelf software utilized and no algorithm required? [PLAINTIFFS]:
I don’t believe we’ve cited anything beyond Katz and EON, the cases in our brief. THE
COURT: So you’re not aware of any? [PLAINTIFFS]: Sitting here now, no.”); see also supra
Section VII.B.2.ii (finding Term 5 is not subject to a Katz exception). Term 5 therefore requires
more than off-the-shelf software as structural support for “combining [a] first markup document
and [a] second markup document into a single [data set].” Noah Sys., 675 F.3d at 1312, 1318.
Plaintiffs ask the Court to view column 30 in conjunction with Figure 10 as an example
of presenting changed numbers in a common view. Tr. at 92:23–93:19. Figure 10 is reproduced
below:

- 27 -

’816 Patent fig.10. Additionally, column 30 states:
When more than one data document is input, their data fields must be correlated
before they can be presented together in a common view. The X-value transformer
710 determines what adjustments have to be made, and then accomplishes them.
Id. col. 30 ll. 53–57. Plaintiffs contend the specification’s disclosure of “data fields [which]
must be correlated before they can present together in a common view” and the “X value
transformer determin[ing] what adjustments have to be made, and then accomplish[ing] them.”
are equivalent to Figure 10’s step 1016: “display transformed document on line item.” Tr. at
92:23–93:19. While these sections disclose examples of “determin[ing] what adjustments have
to be made,” “accomplish[ing] [the changes],” and “present[ing] [documents],” ’816 Patent col.
30 ll. 53–57, the examples are described, at best, at the same level of generality as the word
“combining” itself—the specification includes no algorithmic disclosure indicating how the
combining occurs.
Plaintiffs lastly cite to Figures 11 and 12 as support for the “combining” functionality.
Tr. at 93:22–25, 96:23:97–12. Figure 11 is reproduced below:

- 28 -

’816 Patent fig.11. Figure 11, according to plaintiffs, “could [show combining] toward
the bottom step . . . [b]ecause there’s talk about receiving new documents and inserting the new
document as a standby object.”. Tr. at 96:23–97:3. Figure 11 provides the steps of “insert new
document as standby object” (step 1122), “store new document” (step 1120), and “add to
currently active document” (step 1108) as alternative last steps. See ’816 Patent fig.11. None of
these three steps provides clarity regarding how “combining” two documents could occur.
Similarly, Figures 12A–C provide snapshots of a user interface providing, at best, a graph with
multiple data sets already combined. See ’816 Patent Figs. 12A–12C. The corresponding
disclosure for these figures provides no additional clarity: “As shown on FIG. 12A, the X-Y plot
1202 displays the selected line item 1206, and the legend 1204 changes as the line item selection
changes. The FIGS. 12B and 12C show the X-Y plots 1202 resulting from the selection of
different line items 1206 in the tree view 720.” ’816 Patent col. 33 ll. 3–8. This section only
discloses displaying data on an X-Y plot and does not describe any combining functionality. The
outputs of the “combining” function in Figures 12A–C highlight the issue—there are “many
different ways to combine,” Tr. at 83:10–12, which could potentially permit display of a user
interface with various plotted data sets, yet neither the term nor the specification discloses an
algorithm for doing so. Plaintiffs have not identified any algorithmic disclosure supporting the
“combining” function as claimed. The specification recites all steps at the same level of
- 29 -

generality as “combine” without further detail, and the term therefore lacks adequate algorithmic
structure. See Net MoneyIN, Inc, 545 F.3d at 1367 (“[A] means-plus-function claim element for
which the only disclosed structure is a general purpose computer is invalid if the specification
fails to disclose an algorithm for performing the claimed function.”).
The Court finds “means for combining the first markup document and the second markup
document into a single data” is indefinite for lacking sufficient algorithmic structure. Noah Sys.,
675 F.3d at 1312. A PHOSITA “would be unable to recognize the structure in the specification
and associate it with the corresponding function in the claim.” Id. (citing AllVoice Computing
PLC, 504 F.3d at 1241). The Court accordingly adopts the following final construction:
“Indefinite.”
Plaintiffs’ Proposed Construction
To be construed under § 112 ¶ 6.

Defendant’s Proposed Construction
To be construed under § 112, ¶ 6.

Function: Combining the first markup
document and the second markup document.

Function: Combining the first markup
document and the second markup document
into a single data.

Structure: Primary data store; fig.7, box 712;
fig.8, line 810; fig.11; fig.13; col. 19 l. 66–
Structure: Undisclosed.
col. 20 l. 3; col. 31 ll. 4–30; col. 33 ll. 9–59;
col. 35 l. 50–col. 36 l. 40.
Term is indefinite.
Court’s Final Construction
Indefinite for lack of structure.

Function: “combining the first markup document and the second markup document into a
single dataset”
Structure: Undisclosed.
VIII. Disputed Claim Term #6: “means for processing at least a part of the first markup
document and at least a part of the second markup document, resulting in a single
markup document”
Plaintiffs’ Proposed Construction
To be construed under § 112, ¶ 6.

Defendant’s Proposed Construction
To be construed under § 112, ¶ 6.

Function: Processing at least a part of the
first markup document and at least a part of
the second markup document, resulting in a
single markup document.

Function: Processing at least a part of the first
markup document and at least a part of the
second markup document, resulting in a
single markup document.

Structure: Primary data store; fig.7, box 712;
fig.8, line 810; fig.11; fig.13; col. 18 ll. 25–
30; col. 29 ll. 37–63; col. 31 l. 45–col. 32 l.
25.

Structure: Undisclosed.
Term is indefinite.

- 30 -

The government disputes the construction of this claim term in claim 18 of the ’383
Patent. Rev. J. Cl. Constr. at 40.
The following claim limitation highlights selected usage of the term in context:
An apparatus, comprising: means for processing at least a part of the first markup
document and at least a part of the second markup document,
resulting in a single markup document;
’383 Patent col. 146 ll. 42–44 (emphasis added).
At the Markman hearing, both parties agreed “means for processing” and “means for
combining” should be construed similarly. Tr. at 108:3–10 (“THE COURT: And would you
agree then that the means for processing should be construed similarly to the means for
combining, that the terms should be construed the same? [PLAINTIFFS]: Yes, very much, very
similar. . . . [THE GOVERNMENT]: We agree that Terms 5 and 6 should be construed in the
same fashion.”). Consistent with the parties’ agreement Terms 5 and 6 should be construed
similarly, the Court finds “means for processing at least a part of the first markup document and
at least a part of the second markup document, resulting in a single markup document” is
indefinite for lacking sufficient algorithmic structure. See supra Section VII. The Court
accordingly adopts the following final construction: “Indefinite.”
Plaintiffs’ Proposed Construction
To be construed under § 112, ¶ 6.

Defendant’s Proposed Construction
To be construed under § 112, ¶ 6.

Function: Processing at least a part of the
first markup document and at least a part of
the second markup document, resulting in a
single markup document.

Function: Processing at least a part of the
first markup document and at least a part of
the second markup document, resulting in a
single markup document.

Structure: Primary data store; fig.7, box 712; Structure: Undisclosed.
fig.8, line 810; fig.11; fig.13; col. 18 ll. 25–
30; col. 29 ll. 37–63; col. 31 l. 45–col. 32 l.
Term is indefinite.
25.
Court’s Preliminary Construction
Indefinite for lack of structure.
Function: “[p]rocessing at least a part of the first markup document and at least a part of the
second markup document, resulting in a single markup document”
Structure: Undisclosed.
Indefinite for lack of structure.

Court’s Final Construction

- 31 -

Function: “[p]rocessing at least a part of the first markup document and at least a part of the
second markup document, resulting in a single markup document”
Structure: Undisclosed.
IX.

Disputed Claim Term #7: “means for identifying a first markup document
including first numerical values and first tags reflecting first characteristics of the
first numerical values associated with a first unit of measure, and a second markup
document including second numerical values and second tags reflecting second
characteristics of the second numerical values associated with a second unit of
measure, wherein the first tags and the second tags each include computer-readable
semantic tags that describe a semantic meaning of a corresponding one of at least
one of the first numerical values or the second numerical values via a computerreadable tagging association therebetween, where the first characteristics of the first
numerical values associated with the first unit of measure are different from the
second characteristics of the second numerical values associated with the second
unit of measure”

Plaintiffs’ Proposed Construction
To be construed under § 112, ¶ 6.

Defendant’s Proposed Construction
To be construed under § 112, ¶ 6.

Function: Identifying a first markup
document including first numerical values and
first tags reflecting first characteristics of the
first numerical values associated with a first
unit of measure, and a second markup
document including second numerical values
and second tags reflecting second
characteristics of the second numerical values
associated with a second unit of measure.

Function: Identifying a first markup
document including first numerical values and
first tags reflecting first characteristics of the
first numerical values associated with a first
unit of measure, and a second markup
document including second numerical values
and second tags reflecting second
characteristics of the second numerical values
associated with a second unit of measure,
wherein the first tags and the second tags each
include computer- readable semantic tags that
describe a semantic meaning of a
corresponding one of at least one of the first
numerical values or the second numerical
values, via a computer- readable tagging
association therebetween, where the first
characteristics of the first numerical values
associated with the first unit of measure are
different from the second characteristics of
the second numerical values associated with
the second unit of measure.

Structure: Reader. See, e.g., Fig.7A box 704;
Fig.8, step 802; col. 17, l. 27–col. 18, l.7; col.
28 ll. 1–31; col. 29 ll. 3–11.

Structure: Undisclosed.
Term is indefinite.

- 32 -

The government disputes the construction of this claim term in claim 18 of the ’383
Patent. Rev. J. Cl. Constr. at 37–38.
The following claim limitation highlights selected usage of the term in context:
An apparatus, comprising: means for identifying a first markup document including
first numerical values and first tags reflecting first characteristics of the first
numerical values associated with a first unit of measure, and a second markup
document including second numerical values and second tags reflecting second
characteristics of the second numerical values associated with a second unit of
measure wherein the first tags and the second tags each include computer-readable
semantic tags that describe a semantic meaning of a corresponding one of at least
one of the first numerical values or the second numerical values via a computerreadable tagging association there between, where the first characteristics of the
first numerical values associated with the first unit of measure are different from
the second characteristics of the second numerical values associated with the
second unit of measure;
’383 Patent col. 146 ll. 16–33 (emphasis added).
A.

Parties’ Arguments

Plaintiffs again assert the government’s arguments are contrary to Lockheed, contending
the “wherein” clause merely states a result of the claimed function. Pls.’ Indef. Br. at 22 (citing
Lockheed Martin Corp v. Space Systems/Loral, Inc., 324 F.3d 1308, 1324 (Fed. Cir. 2003)).
Additionally, plaintiffs underline the government’s assertion of invalidity based on algorithm and
argue “no algorithm is required for a claim term like ‘identifying’ under the Katz decision.” Id.
(citing In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir.
2011)). e-Numerate’s expert contends a PHOSITA would understand “a reader or other
component used to receive a document is operable using a general-purpose computer without
any special programming,” and therefore no algorithm is necessary. Smith Decl. ¶ 51.
The government contends the relevant function of this term includes the full clause after
the “means for” language of the term. Gov’t’s Resp. Indef. Br. at 21. The government argues
Lockheed cautions against inappropriately broadening a term by omitting limitations. Id. at 22
(citing Lockheed Martin, 324 F.3d at 1324). In contrast to plaintiffs’ position, the government
contends, for there to be a need to “‘automatically transform[]’ to ‘have a common unit of
measure[,]’ the ‘means for identifying’ would first need to identify or recognize the different
characteristics of the values of the two markup documents and[,] therefore, [the government’s]
interpretation is . . . appropriate.” Id. The government’s expert contends plaintiffs’ proposed
function is insufficient, and a PHOSITA would define “identifying” in this term as “‘identifying’
the markup documents by determining that they have the recited values, characteristic tags,
semantic tags, and requiring different characteristics of the values.” Martin Decl. ¶¶ 113–14.
Additionally, the expert states: “e-Numerate has not provided a basis for a person of ordinary
skill to credit the ‘including’ clauses imposing constraints on the two markup documents

- 33 -

(namely, that they include numerical values and tags reflecting characteristics of the numerical
values associated with a unit of measure) while omitting the ‘wherein’ clauses that impose
further constraints on the two markup documents (namely, that of the semantic tags and
requiring different characteristics of the values).” Id. at 114.
The government next alleges plaintiffs’ alleged structural support via Document Type
Definition (DTD) conformance and subsequent error checking is insufficient, contending a DTD
conformance “cannot enforce a requirement that tags be ‘semantic’ tags.” Gov’t’s Resp. Indef.
Br. at 24. The government accordingly argues the specification fails to disclose an algorithm for
performing the term’s function. Id. at 25. The government further rejects plaintiffs’ reliance on
a “reader.” Gov. Sur-Reply Indef. Br. at 10. According to the government, “[t]he reader
[likewise] cannot enforce the claim’s requirement that the tags are ‘semantic tags.’” Id. The
government asserts plaintiffs are proposing a “black box” to perform the function without
providing any algorithmic support. Id. Accordingly, the government argues this term is
indefinite. Id.
B.

Analysis
1.

The Court’s Preliminary Construction

Before oral argument, the Court provided the Court’s preliminary construction below.
The Court determined, preliminarily, the term’s “wherein” clause limited the term’s function.
See Lockheed, 324 F.3d at 1319. The specification did not disclose adequate algorithmic
structure to support the term’s means-plus-function limitation, and a general-purpose computer
could not perform the functionality without specialized programming. See EON Corp. IP
Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 622–23 (Fed. Cir. 2015) (quoting Katz, 639
F.3d at 1316). Without adequate support for the term’s function, the Court found the meansplus-function term to be indefinite. See id.; Noah Sys., Inc. v. Intuit Inc, 675 F.3d 1302, 1312
Fed. Cir. 2012).
Court’s Preliminary Construction
Indefinite for lack of structure.
Function: “means for identifying a first markup document including first numerical values
and first tags reflecting first characteristics of the first numerical values associated with a first
unit of measure, and a second markup document including second numerical values and
second tags reflecting second characteristics of the second numerical values associated with a
second unit of measure, wherein the first tags and the second tags each include computerreadable semantic tags that describe a semantic meaning of a corresponding one of at least one
of the first numerical values or the second numerical values via a computer-readable tagging
association therebetween, where the first characteristics of the first numerical values
associated with the first unit of measure are different from the second characteristics of the
second numerical values associated with the second unit of measure”
Structure: Undisclosed.

- 34 -

2.

The Court’s Final Construction

The Court’s final construction requires assessing three questions: (1) whether the
function of Term 7 is limited by its “wherein” clause, see Lockheed, 324 F.3d at 1319; (2)
whether a general purpose computer can perform the function and the specification need not
disclose an algorithm; and (3) if the function cannot be performed by a general purpose
computer, whether the specification discloses sufficient structure to support the claimed
functionality, see EON, 785 F.3d at 622–23 (quoting Katz, 639 F.3d at 1316).
i.

Whether the term’s function includes the “wherein” clause

To determine whether Term 7 is indefinite, the Court first assesses whether the term’s
“wherein” clause limits the claimed function. In a means-plus-function term, a “wherein” clause
narrows a recited function only if it substantively limits the term, rather than “merely stat[ing]
the result of the limitations in the claim.” Lockheed, 324 F.3d at 1319 (citing Tex. Instruments
Inc. v. ITC, 988 F.3d 1165, 1172 (Fed. Cir. 1993)). The government contends the “wherein”
clause is “essential as a description of [the term’s] function.” Gov’t’s Resp. Indef. Br. at 22.
Specifically, the government alleges the function of “identification” is limited by the “wherein”
clause’s disclosure of (1) “semantic tags” and (2) values with “different characteristics.” Id.
Although e-Numerate’s brief does not include a technical response to the government’s position,
at oral argument, plaintiffs stated the “wherein” clause is not “part of a claim function . . . [but
only] describes the tags themselves.” Tr. at 123:3–4. Plaintiffs contend the “wherein” clause
“should not be included in the function . . . [b]ecause it’s talking about the tags themselves and
not the means for identifying.” Tr. at 121:20–24.
In order for the “wherein” clause to limit the term’s function, the terms must not merely
state a result of the function. The parties agree the term’s primary function is “identifying.” See
Tr. at 130:7–13; Rev. J. Cl. Constr. at 37–38. In their proposed constructions, however, both
parties agree additional elements in the term limit the “identifying” function:
identifying a first markup document including first numerical values and first tags
reflecting first characteristics of the first numerical values associated with a first
unit of measure, and a second markup document including second numerical values
and second tags reflecting second characteristics of the second numerical values
associated with a second unit of measure
Rev. Joint Cl. Constr. Statement Ex. A at 36. As both parties propose constructions including
the above language, the emphasized terms above therefore undisputedly limit the term’s
“identifying” functionality. Without “first tags,” “first characteristics,” and “first unit of
measure,” the identification would not occur as claimed—i.e., identifying a markup document
with the claimed elements. Similarly, the terms following “wherein” also affect the claim’s
manner of identification. The claimed terms require identification of a markup document
including: (1) “first tags and . . . second tags each includ[ing] computer-readable semantic tags
that describe a semantic meaning”; and (2) “the first characteristics of the first numerical values
associated with the first unit of measure [that] are different from the second characteristics of the
second numerical values associated with the second unit of measure.” ’383 Patent col. 146 ll.

- 35 -

25–34. The manner in which the claim identifies a markup document is therefore dependent
upon the “wherein” clause, and the terms following the clause do not merely state a result.
Instead, the manner of “identifying” in Term 7 is itself limited by the “semantic tags” and
“different characteristics” following the “wherein” clause. See Lockheed, 324 F.3d at 1319.
Plaintiffs’ response to the Court’s questions at oral argument confirm the Court’s
identified function supra. The Court asked “[h]ow can the apparatus transform a common unit
of measure if it first does not identify the data is not in a common unit of data?” Tr. at 123:12–
14. Plaintiffs responded “it could do it, but the issue is really does that have to be in the function
or is it the structure[?]” Tr. at 123:15–18. Plaintiffs’ admission the claim “could do it,”
however, implies the “wherein” clause describes function, rather than—as plaintiffs propose—
structure. Id. (emphasis added). If the “wherein” clause merely described structure alone, it
would not describe an apparatus doing anything—it would only describe structural elements.
See Lockheed, 324 F.3d at 1319 (cautioning a claim’s function may not “be improperly
broadened by ignoring the clear limitations contained in the claim language.”). Structure itself
does not necessarily provide function. The “wherein” clause therefore appropriately limits the
“identifying” function. See id.
Plaintiffs contend Lockheed and BBA Nonwovens counsel against construing “wherein”
clauses to limit a claim’s function. As discussed supra the Federal Circuit also construed a
means-plus-function claim in Lockheed. Lockheed, 324 F.3d at 1315 (quoting U.S. Pat. No.
4,084,772 col. 10 ll. 14–30 (filed Jan 28, 1976)); see supra Section VII.B.2.i. The Federal
Circuit found the “whereby clause” there “merely state[d] the result of the limitations in the
claim [and] add[ed] nothing to the substance of the claim.” Id. at 1319 (citing Tex. Instruments,
988 F.2d at 1172). In Lockheed, the “whereby” clause described the result of the “rotating”
function: a satellite’s attitude “is offset in response to the effect of said rotating wheel.” See id.
As the government noted at oral argument, the “whereby” clause in Lockheed “just tells a
byproduct of what [the function’s] doing.” Tr. at 128:1–2. The “wherein” clause in Term 7, on
the other hand, does not describe a result—it limits the function. The “wherein” clause in Term
7 describes the manner in which a markup document is identified—by using semantic tags that
describe semantic meaning and first characteristics different from second characteristics. ’383
Patent col. 146 ll. 17–34 (“[I]dentifying . . . wherein the first tags and the second tags each
include computer-readable semantic tags that describe a semantic meaning . . . where the first
characteristics . . . are different from the second characteristics . . . .”)
In BBA Nonwovens the Federal Circuit similarly assessed a means-plus-function claim
which recited:
d) corona means cooperating with said attenuator and positioned for
electrostatically charging the filaments so that repelling forces are induced in the
filaments to more uniformly spread the filaments before they are deposited on said
collection surface to form a web.
BBA Nonwovens Simpsonville, Inc. v. Superior Nonwovens, LLC, 303 F.3d 1332, 1343 (Fed. Cir.
2002) (emphasis added) (quoting U.S. Pat. No. 5,397,413 col. 9 ll. 32–37 (filed Apr. 10, 1992)).
The Federal Circuit interpreted the claim’s function as not including the “so that” limitation:

- 36 -

“for electrostatically charging the filaments . . . before they are deposited on said collection
surface to form a web.” Id. at 1344. “[T]he [whole] expression following the word
‘positioned,’” according to the Federal Circuit, “describes where the corona means is located and
is a separate limitation not subject to section 112, paragraph 6[,] [because] [w]hat the ‘corona
means’ is and where it is located are two different things.” Id. In BBA Nonwovens, the language
“before [the filaments] are deposited . . . to form a web” described the result of the “corona
means” and therefore did not limit the function, see BBA Nonwovens, 303 F.3d at 1343–44,
while the “wherein” of Term 7 does not state a result but instead describes the functionality of
“identifying.” Lockheed, 324 F.3d at 1315.
ii.

Whether a general purpose computer can perform the term’s
function

Next, having determined the “wherein” portion of the term limits the “identifying”
function, the Court turns to structure. Plaintiffs again allege a Katz exception, contending “no
algorithm is required for a claim term like ‘identifying.’” Pl.’s Indef. Br. at 22; Tr. at 144:14–19.
The government implies the term “identifying” can never fall under a Katz exception. Tr. at
150:15–151:10 (“THE COURT: Generally speaking, is there usage of the word ‘identifying’
that would fall under the Katz exception? . . . [THE GOVERNMENT:] Identifying something,
you need to read something, you need to look for something that you know beforehand and then
you have to check if it’s there. I don’t see how you could get around having those steps.”). The
Court does not need to reach the government’s broad conclusion, however. In this case, the term
requires more than simple identification or reading of a markup document. Plaintiffs’ own
proposed construction includes identification of a markup document including elements such as
“first numerical values” and “tags reflecting first characteristics of . . . numerical values
associated with a . . . unit of measure.” Rev. J. Cl. Constr. at 37–38. The “wherein” clause of
the term further requires identification based on “semantic tags that describe a semantic
meaning” and “the first characteristics of the first numerical values associated with the first unit
of measure . . . different from the second characteristics of the second numerical values
associated with the second unit of measure.” ’383 Patent col. 146 ll. 16–33. As identified above,
these additional elements indicate the “identifying” is not “functionality . . . ‘coextensive’ with a
microprocessor or general purpose computer.” EON, 785 F.3d at 623 (quoting Katz, 639 F.3d at
1316). Term 7 therefore is not subject to a Katz exception and must be supported by disclosed
structure. Id.
iii.

Whether adequate algorithmic structure supports the term’s
function

For Term 7 to be definite, the specification must describe an algorithm supporting the
“wherein” clause. See id. Plaintiffs allege the specification discloses structure for a “reader,”
which plaintiffs contend support the “identifying” functionality of Term 7. Tr. at 140:12–15
(“[THE COURT:] [I]s it fair to say that plaintiffs argue that the structure is the reader?
[PLAINTIFFS:] Yes.”). At oral argument, plaintiffs cited Figures 7A, 8, and 10 as supporting
the reader’s “identifying” algorithms. See Tr. at 140:21–141:7, 144:3–13. Figure 7A is
reproduced below:

- 37 -

According to plaintiffs, the RDML reader (704) of Figure 7A “identifies” documents by
“import[ing] [a markup document] and send[ing] it on down to the parser for further processing.”
Tr. at 141:5–7. When pressed to identify where the specification discloses functionality
addressing “units of measure,” plaintiffs alleged, “[t]hat would be in other figures.” Tr. at
143:22. The other figures, however, similarly fail to identify any steps of identification. Figures
8 and 10 are reproduced below:

- 38 -

Plaintiffs described these figures at oral argument:
Figure 8, first of all, shows the reader finds and receives the document and then
passes it on to the parser. . . . That’s in Step 802. But Figure 10 [says] . . . “locate
documents” in the portal with step 1002. Select . . . document to be transformed.
That would be both of them . . . . Access [Unit] as one of the attributes in step 1010.
Conversion factor for each attribute, and then it just goes right there, it goes down
to the line.
Tr. at 144:4–13. Although Figure 10 and the corresponding description broadly disclose
“determin[ing] desired transformations,” none of plaintiffs’ citations disclose “identifying” as
claimed in Term 7. The ’383 Patent specification includes no discussion of “tags” with
“characteristics of . . . numerical values associated with [a] . . . unit of measure.” ’383 Patent
col. 146 ll. 16–33. Step 1010 of Figure 10 discloses “Access[ing] Unit, Magnitude, Modifier,

- 39 -

Scale, Measure, and Adjustment Attribute,” but there is no illustration or description equivalent
to identifying “tags reflecting . . . characteristics . . . associated with . . . unit[s] of measure.”
’383 Patent fig.10. These “access[ing]” functions are insufficient to “clearly link[] or associate[]
[the] structure to the function recited in the claim.” Noah Sys., 675 F.3d at 1311 (quoting B.
Braun Med., 124 F.3d at 1424). The specification must disclose “an algorithm for performing
the claimed function,” and the “access[ing]” functions merely “disclos[e] software . . . ‘without
providing some detail about the means to accomplish the function.’” Id. at 1312 (quoting
Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340–41 (Fed. Cir. 2008)).
The corresponding description does not provide any additional clarity. The ’816 Patent
specification discloses:
FIG. 10 illustrates steps used by the data viewer 100 to manipulate the numerical
information in an RDML document 102 to produce a desired transformed
display. . . . First, the data viewer 100 locates the RDML document 102 (step
1002). The document may be located either locally or online using a URL, the
search engine 224 or any other technique. Next, the data viewer 100 selects and
accesses the desired document 102 (step 1004). The data viewer 100 then accesses
the line item that needs to be transformed (step 1006) and determines the desired
transformations (step 1008). The desired transformations may be received from a
user or may be determined by the data viewer 100 automatically to, for example,
accommodate the addition of a new document 102 to a display of a current one.
The data viewer accesses the unit, magnitude, modifier, scale, measure and
adjustment attributes of the document or line item to be transformed (step 1010).
Using these attributes, the data viewer 100 determines the conversion factors, if
any, for each (step 1012).
’383 Patent col. 24 ll. 30–47. This passage, however, merely indicates “accessing” rather than
the “identifying” functionality of Term 7. The data viewer’s accessing “unit, magnitude,
modifier, scale, measure and adjustment attributes,” id., does not support identifying based on
“tags reflecting . . . characteristics of . . . numerical values associated with [a] . . . unit of
measure.” ’383 Patent col. 146 ll. 16–33. The specification, in fact, describes “locat[ing]” a
document first and then “access[ing]” the document second, where the accessing—rather than
the locating—is the only functionality related to “measure[ment] . . . attributes.” ’383 Patent col.
24 ll. 30–47. Accessing the disclosed variables, however, does not provide an algorithm with
“some detail about the means to accomplish” the identification. See Noah Sys., 675 F.3d at 1312
(quoting Finisar Corp., 523 F.3d at 1340–41).
Even if the specification did describe basic identifying features, however, there is
likewise no support for Term 7’s “wherein” clause limitations. The ’383 Patent, for example,
discloses the term “semantic” three times, but none of these describe “identifying” based on
semantic tags. See ‘383 Patent col. 46 ll. 24–52; see also Gov’t’s Resp. Indef. Br. at 23–24 (“[A]
DTD cannot enforce a requirement that tags be ‘semantic’ tags according to the construction that
e-Numerate has proposed . . . . A DTD cannot enforce a requirement that an attribute ‘explains
the meaning of the numerical values.’” (quoting App. to Pl.’s Indef. Br. Ex. B at 12–13, ECF
No. 80-3 (’383 Patent Term 5))). Where the specification discloses “accessing” functionality,

- 40 -

these functions do not describe semantic “identif[ication].” See ’383 Patent col. 24 ll. 30–47
(“The data viewer accesses the unit, magnitude, modifier, scale, measure and adjustment
attributes of the document . . . .”). Without any disclosed algorithm, a PHOSITA would not
recognize any structure supporting the means-plus-function term’s claimed functionality. The
disclosure therefore fails to provide an algorithm describing how the “means for . . .
identif[ication]” occurs in Term 7. See Noah Sys., 675 F.3d at 1313.
As Term 7 is a means-plus-function term and is limited by its “wherein” clause, the term
must be supported by disclosed structure or meet the requirements for a Katz exception. See
Lockheed, 324 F.3d at 1315; EON, 785 F.3d at 623 (quoting Katz, 639 F.3d at 1316). It does not
meet the requirements for a Katz exception. See supra Section IX.B.2.ii. Further, Term 7’s
“identifying” functions are “specialized functions which cannot be accomplished absent
specialized programing,” requiring the specification to provide adequate algorithmic disclosure.
See Noah Sys., 675 F.3d at 1315. The term’s specification fails to disclose structure sufficient to
inform a PHOSITA of the “structure . . . associate[d] . . . with the corresponding function in the
claim.” Id. at 1312. The Court therefore finds Term 7 is indefinite. Id. (“[A] means-plusfunction clause is indefinite if a [PHOSITA] would be unable to recognize the structure in the
specification and associate it with the corresponding function in the claim.”) (citation omitted).
Plaintiffs’ Proposed Construction
To be construed under § 112, ¶ 6.

Defendant’s Proposed Construction
To be construed under § 112, ¶ 6.

Function: Identifying a first markup
document including first numerical values and
first tags reflecting first characteristics of the
first numerical values associated with a first
unit of measure, and a second markup
document including second numerical values
and second tags reflecting second
characteristics of the second numerical values
associated with a second unit of measure.

Function: Identifying a first markup
document including first numerical values and
first tags reflecting first characteristics of the
first numerical values associated with a first
unit of measure, and a second markup
document including second numerical values
and second tags reflecting second
characteristics of the second numerical values
associated with a second unit of measure,
wherein the first tags and the second tags each
include computer- readable semantic tags that
describe a semantic meaning of a
corresponding one of at least one of the first
numerical values or the second numerical
values, via a computer- readable tagging
association therebetween, where the first
characteristics of the first numerical values
associated with the first unit of measure are
different from the second characteristics of
the second numerical values associated with
the second unit of measure.

Structure: Reader. See, e.g., Fig.7A box 704;
Fig.8, step 802; col. 17, l. 27–col. 18, l.7; col.
28 ll. 1–31; col. 29 ll. 3–11.

Structure: Undisclosed.

- 41 -

Indefinite for lack of structure.

Term is indefinite.
Court’s Final Construction

Function: “means for identifying a first markup document including first numerical values
and first tags reflecting first characteristics of the first numerical values associated with a first
unit of measure, and a second markup document including second numerical values and
second tags reflecting second characteristics of the second numerical values associated with a
second unit of measure, wherein the first tags and the second tags each include computerreadable semantic tags that describe a semantic meaning of a corresponding one of at least one
of the first numerical values or the second numerical values via a computer-readable tagging
association therebetween, where the first characteristics of the first numerical values
associated with the first unit of measure are different from the second characteristics of the
second numerical values associated with the second unit of measure”
Structure: Undisclosed
X.

Dispute Claim Term #8: “code for causing automatic transformation of at least a
portion of the first or second numerical values of at least one of the first markup
document or the second markup document, so that at least some of the first
numerical values of the first markup document and at least some of the second
numerical values of the second markup document have a common unit of measure”

Plaintiffs’ Proposed Construction
Not construed under § 112, ¶ 6.

Defendant’s Proposed Construction
This term is indefinite under 35 U.S.C. § 112,
¶ 6 because it claims a function but the
specification fails to disclose definite
structure for performing the claimed function.

The government disputes the construction of this claim term in claim 1 of the ’383 Patent.
Gov’t’s Suppl. Indef. Br. at 7
The following claim limitation highlights selected usage of the term in context:
A computer program product embodied on a non-transitory computer-readable
medium comprising: . . . code for causing automatic transformation of at least a
portion of the first or second numerical values of at least one of the first markup
document or the second markup document, so that at least some of the first
numerical values of the first markup document and at least some of the second
numerical values of the second markup document have a common unit of measure;
’383 Patent col. 143 ll. 21–27 (emphasis added).
A.

Parties’ Arguments

The preliminary dispute for Terms 8–16 is whether a term reciting “code for” invokes
- 42 -

means-plus-function interpretation under 35 U.S.C. § 112, paragraph 6. In briefing these terms,
the parties addressed the “code for” language in the ’748 Patent collectively and then, assuming
means-plus-function applied, provided additional arguments on each term’s function and
structure. See, e.g., Pls.’ Indef. Br. at 26–34; Gov’t’s Resp. Indef. Br. at 29–32. The parties
included additional arguments for “code for” terms appearing in the ’383 Patent via
supplemental briefing. See Gov’t’s Suppl. Indef. Br.; Pls.’ Suppl. Indef. Br. The arguments for
applying § 112, paragraph 6 overlap for the ’383 and ’784 Patents, and the Court accordingly
addresses both in this section. See Pls.’ Suppl. Indef. Br. at 4–6; Gov’t’s Suppl. Indef. Br. at 7
(“A PHOSITA would understand that this term does not refer to any known structures . . . .”
(footnote omitted)). The government’s indefiniteness arguments rely solely on Terms 8–16
being means-plus function; because the Court finds § 112, paragraph 6 does not apply, infra, it is
unnecessary to repeat the parties’ arguments on function and structural support.
Plaintiffs allege “code for” “is used in its normal, conventional sense” rather than as a
“nonce word,” which would give rise to means-plus function interpretation. Pls.’ Indef. Br. at
31. A term not using the word “means” creates a rebuttable presumption the term is not meansplus-function, Zeroclick, LLC v. Apple, Inc., 891 F.3d 1003, 1007 (Fed. Cir. 2018), and plaintiffs
allege the government has not met its burden to prove otherwise. Id. (citing Zeroclick,, 891 F.3d
at 1007). For support, plaintiffs cite Zeroclick, where the Federal Circuit found a term reciting
“user interface code” was not a means-plus-function term. Id. (citing Zeroclick, 891 F.3d at
1007). In this case, plaintiffs contend “[a] person of skill in the art . . . would conclude that the
claimed inventions could be practiced using conventional programming languages available in
the art at the time of the invention.” Id. at 32. Plaintiffs specifically point to the ’748 Patent’s
appendices, which include code written in Microsoft Excel Visual Basic. Id. (citing ’748 Patent
App. F–G). Lastly, plaintiffs contend because the ’816 and ’383 Patents explicitly include
means-plus-function terms and the ’748 Patent instead uses “code for,” the doctrine of claim
differentiation counsels in favor of finding the term is not means-plus-function. Id. at 33 (citing
Karlin Tech. Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971–72 (Fed. Cir. 1999)
(“[D]ifferent words or phrases used in separate claims are presumed to indicate that the claims
have different meanings and scope.”).
The government, in contrast, alleges the presumption against means-plus-function is
overcome by intrinsic and extrinsic evidence. The government contends “code for” is a black
box term absent of structure to perform the recited functions. Gov’t’s Resp. Indef. Br. at 30–31.
According to the government, Zeroclick does not support plaintiffs’ position, as the Federal
Circuit found “user interface code” references “specific . . . conventional graphical user interface
programs or code.” Id. (quoting Zeroclick, 891 F.3d at 1008). The government states, if
plaintiffs’ position is correct, “mere disclosure of the language used to write any particular code
would be sufficient to avoid application of means-plus-function for any ‘code for’ claim element
regardless of the nature of the code at issue.” Id. at 30. Instead, the government claims Egenera
supports its position, wherein the Federal Circuit held the term “logic to” invoked means-plusfunction because “‘logic’ meant only ‘a ‘general category of whatever may perform’ the
function.’” Id. at 32 (quoting Egenera, Inc. v. Cisco Sys., Inc., 972 F.3d 1367, 1374 (Fed. Cir.
2020)). The “code for” provision in Term 8, the government argues, is similar to the “logic to”
term in Egenera because it “fail[s] to describe any definite structure or algorithm to perform the
recited functions.” Id. at 31–32. The government lastly contests plaintiffs’ claim differentiation

- 43 -

argument, stating claims in other patents “say[] nothing about whether the instant claims
including ‘code for’ ought to be treated as means-plus-function claiming,” and contending
whether a claim is means-plus-function “is a question of law” which plaintiffs cannot opt-out of
“by stating [their] ‘intent’ to bypass this framework.” Id. at 32 (citing Howmedica Osteonics
Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1347 (Fed. Cir. 2008)).
B.

Analysis
1.

The Court’s Preliminary Construction

Before oral argument, the Court provided the Court’s preliminary construction below.
The Court determined, preliminarily, the term’s “code for” language results in a presumption
§ 112, paragraph 6 does not apply. See Zeroclick, 891 F.3d at 1007. The Court preliminarily
found the government failed to present evidence and arguments sufficient to overcome the
presumption. See id. As the government’s briefs provided little more than conclusory
statements of indefiniteness, the Court found the claim was not indefinite. See id.; Dyfan, LLC v.
Target Corp., 28 F.4th 1360, 1368–69 (Fed. Cir. 2022) (“In determining whether software
limitations . . . recite sufficient structure, we can look beyond the initial ‘code’ or ‘application’
term to the functional language to see if a [PHOSITA] would have understood the claim
limitation as a whole to connote sufficiently definite structure.”).
Court’s Preliminary Construction
Not construed pursuant to § 112, ¶ 6.
In the alternative, similar to claim Term #3, not indefinite.
Function: “automatically transforming at least a portion of the first or second numerical
values of at least one of the first markup document or the second markup document, so that at
least some of the first numerical values of the first markup document and at least some of the
second numerical values of the second markup document have a common unit of measure”
Structure: RDML data viewer (’748 Patent fig.10, col. 23 l. 61–col. 28 l. 67) and the X-value
transformer (support at id. fig.11, col. 28 l. 43–col. 31 l. 5).
2.

The Court’s Final Construction

To assess whether Term 8 is indefinite, the Court must first consider whether the “code
for” provision invokes a means-plus-function construction under § 112, paragraph 6. The
government acknowledges “a claim that does not use the words ‘means for’ is presumptively not
in means-plus-function format.” Gov’t’s Resp. Indef. Br. at 29 (citing Williamson v. Citrix
Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015)). At oral argument, the government also
recognized “whether [§ 112, paragraph 6] is invoked is a question of law, and it’s a mere
preponderance [standard].” Tr. at 187:5–13. In this case, the term’s “code for” language results
in a presumption § 112, paragraph 6 does not apply. Zeroclick, 891 F.3d at 1007–08. The
government can overcome this presumption only by showing, by a preponderance of the
evidence, a PHOSITA would understand the term “to have a sufficiently definite meaning as the

- 44 -

name for structure.” Id. at 1007 (quoting Williamson, 792 F.4d at 1348); Dyfan, 28 F.4th at
1365–66; Tr. at 174:1–4 (“THE COURT: Well, . . . Dyfan reiterates that it’s the burden of the
government in this case to rebut the presumption. [THE GOVERNMENT]: Correct.”). The
government acknowledged “code for” does not always invoke means-plus-function, but “the
inquiry is on a case-by-case basis.” Tr. at 173:24–25. The Court reviews both intrinsic and
extrinsic evidence to assess whether the government has provided evidence sufficient to
overcome the presumption Term 8 does not invoke § 112, paragraph 6. See Zeroclick, 891 F.3d
at 1007 (“[T]he essential inquiry [is] ‘whether the words of the claim are understood by persons
of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.’”
(quoting Williamson, 792 F.3d at 1348))
i.

Whether Intrinsic Evidence Indicates “Code For” Invokes
§ 112, paragraph 6

Starting with the claim language, the government argues “code for” is a “black-box term”
which “fails to recite any structure for performing [the claimed function].” Gov’t’s Resp. Indef.
Br. at 30. The government analogizes this case to Egenera, id. at 31–32, where the Federal
Circuit found the term “logic to modify” invoked § 112, paragraph 6 because the term provided
no more than a “black box recitation of structure.” Egenera, 972 F.3d at 1375 (quoting
Williamson, 792 F.3d at 1350). There, the Federal Circuit found the plaintiff “[did] not explain
how its ‘logic’ . . . amounts to ‘sufficient structure for performing [the modification] function.’”
Id. at 1374 (second alteration in original) (quoting Williamson, 792 F.3d at 1348). The court
found the term invoked § 112, paragraph 6 because “logic” conveyed “only a ‘general category
of whatever may perform’ the [claim’s] function.” Id. (citation omitted). In the present case,
however, “code for” is not merely a “general category of whatever may perform” the claimed
function. Id. The term “code for” recites specific structure—computer code—which is
“sufficient . . . to perform the claimed functions.” See id. at 1375. Although computer code is
based on logic, it is not logic alone. Term 8 is not limited to “whatever may perform” the
“automatic transformation” functionality. See id. at 1374. Unlike in Egenera, where “logic for
modifying” did not provide sufficient structure, id., Term 8 is limited to computer code. The
government has not sufficiently shown how computer code is insufficient to perform the function
of “automatic transformation.” Zeroclick, 891 F.3d at 1007.
Plaintiffs contend the term is not subject to means-plus-function interpretation because
the claimed function is available as off-the-shelf software, similar to the claim in Dyfan. Tr. at
168:19–21; see Dyfan, 28 F.4th at 1368. In Dyfan, the Federal Circuit assessed the limitation
below by assessing the claimed functionality in light of expert testimony:
said code, when executed, further configured to: . . . after the first visual
information is caused to be output based on the first location-relevant information;
after the at least one mobile device is moved in the building; and in response to the
receipt, from the at least one server and via the second wireless communications
protocol, of the second response message including the second location-relevant
information: cause to be output, via the at least one mobile device, the second visual
information based on the second location-relevant information . . . .

- 45 -

Dyfan, 28 F.4th at 1367 (quoting U.S. Patent No. 10,194,292 col. 41 l. 47–col. 42 l. 6 (filed Apr.
6, 2018)). The expert in Dyfan testified a PHOSITA “would have known of off-the-shelf code
and applications” for performing the claimed functionality. Id. at 1369. According to the expert,
“wireless communication ‘protocol[s]’ were terms of art well-understood by persons of ordinary
skill, . . . and conventional off-the-shelf ‘code’ on a mobile device ‘would implement the
[communication] protocols.’” Id. (citations omitted). The Federal Circuit credited the expert’s
unrebutted testimony to conclude “because the recited functions can be performed by
conventional off-the-shelf software, a person of ordinary skill in the art would have understood
the alleged means-plus-function ‘code’ limitations in the asserted claims to connote structure.”
Id. (citing Zeroclick, 891 F.3d at 1008). According to Dyfan, a term starting with “code for” is
therefore not subject to means-plus-function interpretation if “off-the-shelf software” can
perform the claimed functions. Id.
Plaintiffs allege the function of “automatically transforming” is a novel application of
Microsoft Excel Visual Basic code and an example of “off-the-shelf” software similar to Dyfan.
Tr. at 168:15–21 (“THE COURT: So what does [the ‘code for’ language] limit [the claim] to?
[PLAINTIFFS]: Well, it limits it [to] a computer program or code that actually performs the
recited function . . . in a new way . . . . And the spec specifically teaches Microsoft Excel Visual
Basic as an example of an off-the-shelf code that existed and could be used.”); see also Gov’t’s
Resp. Indef. Br. at 29 (“In the interest of narrowing the issues before the Court, [the government]
does not contest e-Numerate’s identification of function and structure [for Term 8].”). In Dyfan,
the Federal Circuit “look[ed] beyond the initial ‘code’ . . . term to the functional language to see
if a person of ordinary skill would have understood the claim limitation as a whole to connote
sufficiently definite structure.” See Dyfan, 28 F.4th at 1368 (citing Zeroclick, 891 F.3d at 1008).
In this case, the Court finds the government has not shown why Microsoft Visual Basic functions
are insufficient off-the-shelf code to meet the structural requirements to avoid § 112, paragraph 6
interpretation. Id. As plaintiffs indicate, Appendices F and G of the ’383 Patent disclose
Microsoft Excel Visual Basic “routines” for performing various functions of the claimed
invention. See ’383 Patent col. 115–142; Tr. at 163:24–164:3 (“[PLAINTIFFS:] [Y]ou can look
to see that the presence of off-the-shelf software, that is disclosed in the patents. One of the
programs is Microsoft Excel Visual Basic, and it’s in Appendi[cies] F and G, where there are
actual code exemplars.”). The specification recites: “Appendix G provides code used in one
implementation to create an RDML document 102.” ’383 Patent col. 46 ll. 17–18. The
government contends Appendices F and G are insufficient to provide structure, alleging every
off-the-shelf software limitation must be “known code” for Dyfan’s rule to apply. Tr. at 164:20–
24 (“[THE GOVERNMENT:] [W]hat [plaintiffs] pointed to in Appendix F and G, . . . it’s got to
be known code. So it’s stuff that people knew about. . . . Appendix F and G . . . is what they
themselves wrote.”); Tr. at 173:7–12 (“[THE GOVERNMENT:] You look at . . . the term and
ask[] . . . did such software exist . . . ? Here, we have no examples of commercial off-the-shelf
products or library routines for performing any of these.”). The government, however, confuses
knowledge of every claimed function with knowledge of off-the-shelf code; the question is
whether the “structure-connoting term . . . is coupled with a description of the [term’s]
operations, [because then] sufficient structural meaning generally will be conveyed to persons of
ordinary skill in the art.” Dyfan, 28 F.4th at 1369 (quoting Linear Tech. Corp. v. Impala Linear
Corp., 379 F.3d 1311, 1320 (Fed. Cir. 2004)). No novelty analysis is required in this inquiry;
means-plus-function interpretation does not apply when the “code for” term itself, read in light

- 46 -

of the claimed function and specification, connotes sufficient structure. Id. at 1365 (“If the
limitation connotes sufficiently definite structure, it is not drafted in means-plus-function format,
and § 112[, paragraph] 6 does not apply.”). Dfyan therefore counsels in favor of finding the
government has not met its burden to prove § 112, paragraph 6 applies. Id.
The government contends its expert declaration supports finding Microsoft Visual Basic
is insufficient off-the-shelf software to permit one of ordinary skill in the art to understand the
claimed structure. Tr. at 178:6–8. The government, however, admits its expert did not directly
assess Microsoft Visual Basic. Tr. at 178:10–13 (“[THE COURT:] [W]here does your expert
say that Term 8’s specific function cannot be implemented with [V]isual [B]asic? [THE
GOVERNMENT:] He doesn’t say that specifically.”). To the extent the government’s expert
does provide any commentary from one of ordinary skill in the art, his analysis is conclusory and
not helpful in this inquiry, as discussed infra. See supra note 12.
The government argues “code for” should be assessed similar to “nonce word[s]” found
to invoke means-plus-function in various district court opinions. Gov’t’s Resp. Indef. Br. at 4
(first citing Cypress Lake Software, Inc. v. Samsung Elecs. Am., Inc., 382 F.Supp. 3d 586 (E.D.
Tex. 2019); and then citing Cypress Lake Software, Inc. v. ZTE (USA) Inc., No. 17-cv-00300,
2018 WL 4035968 (E.D. Tex. Aug. 23, 2018)). Plaintiffs correctly note the government’s
citations to two out-of-circuit district court cases are not binding on the Court; they posit instead
Zeroclick is mandatory and applicable Federal Circuit precedent. Pl.’s Reply Indef. Br. at 12.
Although the government’s briefing implies it would construe “code for” as a nonce term, see
Gov’t’s Resp. Indef. Br. at 4, the government walked this position back at oral argument. Tr. at
173:13–25 (“[THE COURT:] [T]he government seems to represent . . . that just using the words
‘code for’ necessitates mean-plus-function. [THE GOVERNMENT]: Yeah, we’re not arguing it
as a per se rule. . . . Different courts have held differently. . . . But the inquiry is a case-by-case
basis.”); Tr. at 170:15–23 (“[THE COURT:] [R]ather than treating code as a nonce term, both
Cypress Lake courts acknowledge the presumption that [§] 112, paragraph 6 does not apply,
right? [THE GOVERNMENT]: Right. THE COURT: And those courts went on to
individually analyze each ‘code for’ term and their language finding that paragraph 6 does not
apply was rebutted for some, but not others, right? [THE GOVERNMENT]: Right.”). The
Court therefore finds the Cypress Lake cases support the Court’s determination— the words
“code for” do not necessarily invoke § 112, paragraph 6, rather they must be assessed in light of
intrinsic and extrinsic evidence. In contrast, this case is similar to Zeroclick. There, the Federal
Circuit found the district court had effectively—and improperly—interpreted “user interface
code” as nonce words. Zeroclick, 891 F.3d at 1008. Correcting the district court, the Federal
Circuit instead stated, in part, “a person of ordinary skill in the art could reasonably discern from
the claim language that the words . . . ‘user interface code’ . . . are used not as generic terms or
black box recitations of structure or abstractions, but rather as specific references to conventional
graphical user interface programs or code, existing in prior art at the time of the inventions.” Id.
Likewise, in this case, in the context of the claim language (including “code for causing
automatic transformation of . . . [values of a] markup document”), the “code for” term refers to
conventional code for manipulating markup documents, which existed in prior art at the time of
the invention, including Microsoft Visual Basic. 16 See id.
Plaintiffs further argue claim differentiation supports finding Term 8 should not be construed pursuant to § 112,
paragraph 6. According to plaintiffs “the related ’816 and ’383 patents both contain claims explicitly in means-plus-

16

- 47 -

Lastly, the government contests plaintiffs’ reliance on the similarity between the “code
for” terms appearing in the system claim 11 and the functions of the method claim 19. See
Gov’t’s Resp. Indef. Br. at 30 (citing Pl.’s Indef. Br. at 26–28). According to the government,
the similarity of the system claim reciting “code for” terms and the method claim not reciting
“code for” “serves to demonstrate . . . claim 11 requires no particular structure, only ‘code.’” Id.
At oral argument, however, the government conceded a “code for” term could be definite even
though an analogous “means for” term—reciting the exact same function—was indefinite. Tr. at
161:4–9; Tr. at 161:18–162:2. If a “code for” term and an analogous means-plus-function term
can have different definiteness outcomes, however, then their similarity cannot “demonstrate [a
claim requires] . . . only ‘code.’” See Gov’t’s Resp. Indef. Br. at 30. The government has
therefore not cited any intrinsic evidence to overcome the presumption § 112, paragraph 6 does
not apply. See Zeroclick, 891 F.3d at 1007–08 (finding “a [PHOSITA] could reasonably discern
from the claim language . . . [the words at issue were used] as specific references to conventional
. . . code . . . existing in prior art at the time of the inventions”).
ii.

Whether Extrinsic Evidence Indicates “Code For” Invokes
§ 112, paragraph 6

Turning to extrinsic evidence, the government contends its expert report supports a
finding “the words ‘code for’ do not convey any definite structure.” Gov’t’s Resp. Indef. Br. at
30 (citing Martin Decl. ¶ 165). Dr. Martin’s declaration starts by reciting the full claim
language, followed by the following statement:
This term uses ‘code for’ language. In my opinion, a person of ordinary skill in the
art would understand that this claim term does not refer to known or conventional
programs or code from the time of the invention. Instead, a person of ordinary skill
in the art would understand that it describes black-box functionality and therefore
I understand it should be construed under the § 112, ¶ 6 framework.
Martin Decl. ¶ 165. The government contends Dr. Martin “provide[d] a well-reasoned opinion
as to why this term is indefinite to a P[H]OSITA.” Gov’t’s Reply Indef. Br. at 34. Dr. Martin’s
opinion may have been well-reasoned, but none of those reasons were included in his
declaration. The declaration provides little analysis to aid the Court in understanding how he
arrived at his conclusion. The Federal Circuit has noted “conclusory, unsupported assertions by
experts as to the definition of a claim term are not useful to a court.” Phillips v. AWH Corp., 415
F.3d 1303, 1318 (Fed. Cir. 2005) (“[A] court should discount any expert testimony ‘that is
clearly at odds with . . . the written record of the patent.’” (citation omitted)). The government
admits it “do[es not] know what [Dr. Martin] looked at.” Tr. at 181:6–12. According to the
government, Dr. Martin “searched for, as a thought exercise, . . . some known conventional
function format [and] [w]hen e-Numerate intended to use mean-plus function format, it clearly did so,” but it did not
do so for Term 8. Pl.’s Indef. Br. at 33. The Court does not need to determine whether claim differentiation alone
can dispositively prove the inapplicability of means-plus-function interpretation to Term 8. To the extent claim
differentiation applies here, the intrinsic and extrinsic evidence collectively indicate one of ordinary skill in the art
would understand the term “code for” connotes structure, unlike the other means-plus-function terms at issue. See
Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1367–68 (Fed. Cir. 2022).

- 48 -

software that implements this [function]. . . . And there wasn’t such a thing.” Tr. at 159:12–20.
The Martin Declaration provides no method by which the Court can follow this “thought
exercise.” The declaration therefore cannot aid the Court in reaching a similar conclusion as the
government’s expert. See Phillips, 415 F.3d at 1318.
The government has not identified intrinsic or extrinsic evidence sufficient to rebut the
presumption Term 8 does not invoke means-plus-function interpretation under § 112, paragraph
6. See Zeroclick, 891 F.3d at 1007–08 (finding “a [PHOSITA] could reasonably discern from
the claim language . . . [the words at issue were used] as specific references to conventional . . .
code . . . existing in prior art at the time of the inventions”). The Court accordingly does not
construe the term under § 112, paragraph 6. The government did not present any arguments (in
briefing or at oral argument) to suggest the “code for” terms are otherwise indefinite. See Tr. at
161:20–162:2 (“[THE GOVERNMENT:] [I]f you’ve already decided [the claim term is] not
[means-plus-function] . . . absent some other construction, it would be plain and ordinary, code
would be software . . . and software for implementing . . . . THE COURT: So it would be valid?
[THE GOVERNMENT]: Right.”). The Court therefore finds Term 8 is not indefinite for lack of
disclosed structure. See id.; Dyfan, 28 F.4th at 1367–68 (“In determining whether software
limitations . . . recite sufficient structure, we can look beyond the initial ‘code’ or ‘application’
term to the functional language to see if a [PHOSITA] would have understood the claim
limitation as a whole to connote sufficiently definite structure.”).
Plaintiffs’ Proposed Construction
Not construed under § 112, ¶ 6.

Not construed under § 112, ¶ 6.

Defendant’s Proposed Construction
This term is indefinite under 35 U.S.C. § 112,
¶ 6 because it claims a function but the
specification fails to disclose definite
structure for performing the claimed function.
Court’s Final Construction

Not indefinite for lack of disclosed structure.
XI.

Terms #9–18: Additional “Code-For” Terms

The government contends Terms 9–18 are indefinite under 35 U.S.C. § 112, paragraph 6
for failure to recite structure to perform the claimed function. See Rev. J. Cl. Constr. at 55–61;
Gov’t’s Resp. Indef. Br.; Tr. at 191:4–7 For analogous reasons to Term 8, supra, the Court finds
the term “code for” does not invoke § 112, paragraph 6. See Section X. Although the
government stated at oral argument each “code for” term should be assessed on a “term-by-term
basis,” Tr. at 153:12–13, the government’s own briefing does not follow this approach. For each
term, the government merely recites: “[f]or the reasons set forth above, this claim term is in
means-plus-function format and should be governed by § 112, ¶ 6.” See Gov’t’s Resp. Indef. Br.
at 32, 33, 35, 36, 37, 38, 41, 42. Similarly, the government’s expert provides no additional
analysis. See Martin Decl. ¶¶ 165, 172, 182, 189, 196, 203, 210 (testifying only “In my opinion,
a person of ordinary skill in the art would understand that this claim term does not refer to known
or conventional programs or code from the time of the invention. Instead, a person of ordinary
skill in the art would understand that it describes black-box functionality and therefore I

- 49 -

understand it should be construed under the § 112, ¶ 6 framework.”); accord Suppl. Decl. of Dr.
David Martin ¶ 5, ECF No. 81-8; 2d Suppl. Decl. of Dr. David Martin ¶¶ 17, 30, 49 ECF No.
111-1. The Court tends to agree with plaintiffs’ suggestion at oral argument the government’s
expert report “is a litigation driven declaration.” Tr. at 182:7. The government acknowledges
Dr. Martin “applies the same rationale for each term.” Tr. at 186:25–187:9. According to the
government, this “same rationale” is sufficient to support the expert’s individual conclusion on
each term, but the government acknowledged the declaration “could have been laid out and
presented better.” Tr. at 189:18. As indicated supra Section X.B.2.ii, Dr. Martin’s declaration
provides no rationale for the Court follow—much less consider. See Phillips v. AWH Corp., 415
F.3d 1303, 1318 (Fed. Cir. 2005) (“[A] court should discount any expert testimony ‘that is
clearly at odds with . . . the written record of the patent.’”) (citation omitted).
The government has the burden of proving by a preponderance of the evidence the term
“code for” invokes § 112, paragraph 6. See Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1007–
08 (Fed. Cir. 2018). After reviewing each of the terms individually, the Court finds the
government has not provided any argument or evidence to meet this burden. The Court
accordingly construes each term as not invoking § 112, paragraph 6. The government again did
not present any arguments either in its briefing or at oral argument to suggest the “code for”
terms are otherwise indefinite. See Tr. at 161:20–162:2 (“[THE GOVERNMENT:] [I]f you’ve
already decided [the claim term is] not [means-plus-function] . . . absent some other construction,
it would be plain and ordinary . . . . THE COURT: So it would be valid? [THE
GOVERNMENT]: Right.”). As each of the terms are not means-plus-function terms, the Court
therefore finds they are not indefinite for lack of disclosed structure. See id.; Dyfan, LLC v.
Target Corp., 28 F.4th 1360, 1367–68 (Fed. Cir. 2022); see also supra Section X.
Each term’s proposed, preliminary, and final constructions are reproduced below:
Plaintiffs’ Proposed Constructions
(Terms #9–18)
Not construed under § 112, ¶ 6. Terms
should be construed consistent with other
identified terms.

Defendant’s Proposed Constructions
(Terms #9–18)
To be construed under § 112, ¶ 6.
Function: Indefinite.
Structure: Insufficiently disclosed.

Term #9

Term is indefinite.
The Court’s Preliminary Constructions
“code for processing Not construed pursuant to § 112, ¶ 6.
at least a part of the
first markup
In the alternative, similar to claim Term #6,
document and at least indefinite for lack of structure.
a part of the second
markup document,
Function: “processing at least a part of the
resulting in a single
first markup document and at least a part of
markup document”
the second markup document, resulting in a
single markup document”

- 50 -

Term #10

“code for identifying
a first markup
document including
first numerical values
and first tags
reflecting first
characteristics of the
first numerical values
associated with a
first unit of measure,
and a second markup
document including
second numerical
values and second
tags reflecting second
characteristics of the
second numerical
values associated
with a second unit of
measure, wherein the
first tags and the
second tags each
include computerreadable semantic
tags that describe a
semantic meaning of
a corresponding one
of at least one of the
first numerical values
or the second
numerical values, via
a computer-readable
tagging association
therebetween, where
the first
characteristics of the
first numerical values
associated with the
first unit of measure
are different from the
second characteristics
of the second
numerical values
associated with the

Structure: Undisclosed
Not construed pursuant to § 112, ¶ 6
In the alternative, similar to claim Term #7,
indefinite for lack of structure.
Function: “identifying a first markup
document including first numerical values and
first tags reflecting first characteristics of the
first numerical values associated with a first
unit of measure, and a second markup
document including second numerical values
and second tags reflecting second
characteristics of the second numerical values
associated with a second unit of measure,
wherein the first tags and the second tags each
include computer-readable semantic tags that
describe a semantic meaning of a
corresponding one of at least one of the first
numerical values or the second numerical
values via a computer-readable tagging
association therebetween, where the first
characteristics of the first numerical values
associated with the first unit of measure are
different from the second characteristics of
the second numerical values associated with
the second unit of measure”
Structure: Undisclosed.

- 51 -

Term #11

Term #12

Term #13

Term #14

second unit of
measure”
“code for storing a
plurality of original
documents including
a plurality of original
values, including a
first document
including first values
and a second
document including
second values”
“code for processing
at least a part of the
first document and at
least a part of the
second document,
resulting in at least
one object including
at least one reference
to at least one of the
plurality of original
values of at least one
of the plurality of
original documents”
“code for receiving a
user selection of one
or more computerreadable semantic
tags”

“code for receiving a
user selection of one
or more of the
original values”

Not construed pursuant to § 112, ¶ 6.
In the alternative, not indefinite.
Function: “storing a plurality of original
documents including a plurality of original
values, including a first document including
first values and a second document including
second values”
Structure: The Primary Data Store (PDS)
(fig.7, box 712; fig.13; col. 31 ll. 8–57)
Not construed pursuant to § 112, ¶ 6.
In the alternative, not indefinite.
Function: “processing at least a part of the
first document and at least a part of the
second document, resulting in at least one
object including at least one reference to at
least one of the plurality of original values of
at least one of the plurality of original
documents”
Structure: The RDML Processor 708 (’748
Patent col. 28 ll. 4–33).
Not construed pursuant to § 112, ¶ 6.
In the alternative, not indefinite.
Function: “receiving a user selection of one
or more objects”
Structure: Fig.21, box 2108; fig.22B, box
2206; fig.22D box 2210; col. 45 ll. 20–48;
Appendix F.
Not construed pursuant to § 112, ¶ 6.
In the alternative, not indefinite.
Function: “receiving a user selection of one
or more options”

- 52 -

Term #15

Term #16

Term #17

“code for mapping
the one or more of
the computerreadable semantic
tags to the one or
more of the original
values”

Structure: Fig.21, box 2110; fig.22D; col. 45
ll. 20–48; Appendix F.
Not construed pursuant to § 112, ¶ 6.
In the alternative, not indefinite.
Function: “mapping the one or more of the
computer-readable semantic tags to the one or
more of the original values”

Structure: The RDML Processor 708 (’748
Patent col. 28 ll. 4–33).
“code for outputting a Not construed pursuant to § 112, ¶ 6.
presentation that is
based on at least a
In the alternative, indefinite for lack of
portion of the at least structure.
one object, the
presentation capable
Function: “outputting a presentation that is
of including at least a based on at least a portion of the at least one
portion of the original object, the presentation capable of including
values including the
at least a portion of the original values
at least one original
including the at least one original value,
where the computer program product is
value, where the
computer program
configured such that, based on the at least one
product is configured reference of the at least one object to the at
such that, based on
least one original value of the at least one
original document, a change to the at least one
the at least one
reference of the at
original value of the at least one original
least one object to the document results in a corresponding change
at least one original
in an instance of the presentation”
value of the at least
one original
Structure: Undisclosed.
document, a change
to the at least one
original value of the
at least one original
document results in a
corresponding change
in an instance of the
presentation”
“code for outputting a Not construed pursuant to § 112, ¶ 6.
report that is based on
at least a portion of
In the alternative, indefinite for lack of
the at least one
algorithm.
object, the report
capable of including

- 53 -

Term #18

at least a portion of
the original values
including the at least
one original value,
where the computer
program product is
configured such that,
based on the at least
one reference of the
at least one object to
the at least one
original value of the
at least one original
document, a change
to the at least one
original value of the
at least one original
document results in a
corresponding change
in an instance of the
report”
“code for outputting
at least one
computer-readable
Extensible Markup
Language (XML)compliant data
document that is
based on at least a
portion of the at least
one object and at
least a portion of the
mapping, the at least
one computerreadable XMLcompliant data
document capable of
including a plurality
of line items with at
least a portion of the
original values
including the at least
one original value
and at least some of
the computerreadable semantic

Function: “outputting a report that is based
on at least a portion of the at least one object,
the report capable of including at least a
portion of the original values including the at
least one original value, where the computer
program product is configured such that,
based on the at least one reference of the at
least one object to the at least one original
value of the at least one original document, a
change to the at least one original value of the
at least one original document results in a
corresponding change in an instance of the
report”
Structure: RDML data viewer 100 (’748
Patent col. 7 ll. 53–55, col. 14 ll. 31–46), but
no algorithm disclosed.

Not construed pursuant to § 112, ¶ 6.
In the alternative, indefinite for lack of
algorithm.
Function: “outputting at least one computerreadable Extensible Markup Language
(XML)-compliant data document that is based
on at least a portion of the at least one object
and at least a portion of the mapping, the at
least one computer-readable XML-compliant
data document capable of including a
plurality of line items with at least a portion
of the original values including the at least
one original value and at least some of the
computer-readable semantic tags, where the
computer program product is configured such
that, based on the at least one reference of the
at least one object to the at least one original
value of the at least one original document, a
change to the at least one original value of the
at least one original document results in a
corresponding change in an instance of the at
least one computer-readable XML-compliant
data document:, said computer program

- 54 -

tags, where the
product configured such that the at least some
computer program
of the computer-readable semantic tags are
product is configured each computer-readably coupled to the at
such that, based on
least portion of the original values of at least
the at least one
one computer-readable XML-compliant data
reference of the at
document”
least one object to the
at least one original
Structure: RDML Processor, but no
value of the at least
algorithm disclosed.
one original
document, a change
to the at least one
original value of the
at least one original
document results in a
corresponding change
in an instance of the
at least one
computer-readable
XML-compliant data
document:, said
computer program
product configured
such that the at least
some of the
computer-readable
semantic tags are
each computerreadably coupled to
the at least portion of
the original values of
at least one
computer-readable
XML-compliant data
document”
The Court’s Final Constructions (Terms #9–18)
Not construed under § 112, ¶ 6.
Not indefinite for lack of disclosed structure.
XI.

Conclusion

The disputed terms implicating indefiniteness are interpreted by the Court in this Claim
Construction Opinion and Order. The Court adopts the construction of the terms as set forth
herein. The Court finds the following claims indefinite: U.S. Patent No. 8,185,816, claim 26
(Term 5); and U.S. Patent No. 9,262,383, claim 18 (Term 6, Term 7). The parties SHALL FILE

- 55 -

a joint status report proposing a schedule for further proceedings on or before 14 March 2024.
To the extent practicable, the proposed schedule shall accord with the deadlines proposed in the
parties’ Joint Preliminary Status Report (JPSR), ECF No. 35, referencing Judge Albright’s
Standing Order governing proceedings in patent cases. The Court notes Judge Albright’s
Standing Order has been updated since the parties considered it for their original JPSR. Standing
Order Governing Proceedings (OGP) 4.4—Patent Cases (W.D. Tex. Jan. 23, 2024).
The Court further DIRECTS the Clerk to correct the caption in this case, No. 19-859, to
reflect the proper second named party, “e-Numerate, LLC,” as appears on the caption of this
Opinion and Order and the Cover Sheet of plaintiffs’ Complaint, ECF No. 1-1. 17
IT IS SO ORDERED.
s/ Ryan T. Holte
RYAN T. HOLTE
Judge

In previous orders, the Court included a caption listing “e-Numerate Solutions, LLC” as a party, aligning with this
court’s CM/ECF system.
17

- 56 -