from Doc 304...much obliged Silver we kicked their arses right here

e.Digital contends that the Applicants’ statements regarding main memory do not amount

to a prosecution disclaimer because the Applicants did not use the phrase main memory to limit

the scope of the claims in a manner different than the claim language itself, which refers to the

flash memory module as the sole memory for storage of the sound electrical signals after they

have been processed by the control circuitry and microphone element. (

e.Digital’s

Responsive Claim Construction Brief (“e.Digital’s Responsive Brief” or “P. Resp. Br.”) at 2-11).

Furthermore, Defendants’ more narrow interpretation of the phrase “main memory,” which is at

odds with the rest of the intrinsic record, at most invites the question -- what did the Applicants

mean when they said main memory?

Defendants argue that the Applicants used main memory to refer to RAM. (D. Op. Br. at

15-16; D. Resp. Br. at 16). Because main memory is not specifically defined in the intrinsic

record, Defendants’ circuitous argument starts with the extrinsic Microsoft Dictionary definition

of “main memory,” which states “

primary storage.” (D. Op. Br. at p. 15 and 17 and

Exh. E).

And because the phrase “primary storage” does not appear anywhere in the Patentsin-

Suit, Defendants then proceed to the extrinsic Microsoft Dictionary definition of that phrase,

which is defined in the Microsoft Dictionary as,

Random access memory (RAM); the main general-purpose storage region to

which the microprocessor has direct access. A computer's other storage options,

briefs, Defendants skip the intermediary step of referring to primary

storage and incorrectly state that main memory is defined as random access memory (RAM).

(

D. Resp. Br. at 17 and 22).

). Based on these two extrinsic dictionary definitions, Defendants jump to the conclusion that

Applicants’ use of main memory was intended to mean that flash memory replaces RAM and

acts as the only memory permitted by the claims for any purpose.

(D. Op. Br. at 19).

On the other hand, e.Digital contends that the Applicants’ statements during the

prosecution history do not equate “main memory” with RAM. (P. Op. Br. at 20-21). e.Digital’s

contention is in line with the intrinsic record that describes the use of another memory system to

process the received sound electrical signals before storage. (

at 21-25 and 29-30). e.Digital

also relies on the Flashback device that uses RAM and was demonstrated for the Patent

Examiner and is otherwise referred to in the prosecution history. (

at 30-31).

The Norris Declaration reiterates these points. Among other things, it first confirms the

accuracy of the Examiner Interview Summary Record, which one of ordinary skill in the art

would assume to be correct.

Furthermore, it describes the operation and components of the

Flashback product that is a preferred embodiment of the inventions disclosed in the ‘774 Patent.

Defendants make this argument based on their constructions of the phrases “flash

memory” as “. . . the main memory of the system” and “sole memory of the received processed

sound electrical signals” as “. . . without another memory system such as RAM.” As set forth in

e.Digital’s Opening and Responsive Briefs, e.Digital does not believe that Defendants’

constructions support Defendants’ intended conclusion. (P. Op. Br. at 21-22 and 37-38; P. Resp.

Br. at 18-20).

Defendants appear to cast doubt as to the import of the Examiner Interview Summary

Record by questioning its value in light of § 713.04 of the Manual of Patent Examination

Procedure (“MPEP”). (Motion to Preclude at p. 3, fn. 3). However, the MPEP makes clear that

interview summaries that contain the level of detail of the Examiner Interview Summary Record

may satisfy the requirement that an examiner interview be documented in writing. (

MPEP at

§ 713.04, pp. 700-63 (attached as Exh. L to D. Resp. Br.) (stating that the interview summary

may be a complete and proper recordation of the interview, if certain criteria are met)).