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Message: sman

Correct me if I'm wrong, but I believe the term "main memory" occurs in the amendments made to '774 patent application...

You're right, but you've missed my point by about 7 miles. Amendments to the patent application are NOT part of the patent claims or its specification. Such amendments are considered part of the patent prosecution history (i.e., describing the interaction between the inventor and the USPTO during the patent approval process). There are 22 claims in the ‘774 patent and 12 claims in the ‘737 patent. A patent’s specification is also known as a disclosure (i.e., a written description by the inventor). The patent specification is drafted both to satisfy the written requirements for patentability, as well as to define the scope of the claims. (http://www.patentlens.net/daisy/patentlens/2341.html)

As I wrote, the term “main memory” never appears in the patent claims. This is super easy to confirm by simply opening the ‘774 or ‘737 patent and conducting a word search. I suggest you re-read EDIG’s Opening Claim Construction Brief (Doc 296), specifically starting on page 20:

However, there is nothing in the claim language that requires the further limitation that “flash memory” be “the main memory of the system.” The phrase “main memory” is not used anywhere in the claims of either Patent-in-Suit. In fact, that phrase is not used anywhere in the Patents-in-Suit. While the prosecuting attorney used the phrase “main memory” in the prosecution history, there is no meaningful context that can be attributed to Defendants’ proposed importation of this additional limitation that can be found in either the patent claims or the specification. Thus, Defendants’ proposed construction invites a claim construction dispute within a claim construction dispute.

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The term “system” is also not used in any claim of the Patents-In-Suit. From Doc 296, page 22:

As stated above, “main memory” is not used anywhere in the claims of the Patents-in-Suit. Likewise, “system” is not used in any claim of the Patents-in-Suit.

Note: The plural term “systems” does appear once in claim 15 of the ‘774 patent, but not the singular term “system”, which the Defendants are trying to construe.

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Regarding the patent prosecution histories, which the Defendants are almost exclusively relying on, re-read Doc 296 starting on page 26. Here are some excerpts:

“The law is crystal clear that reading from the prosecution history what is in effect an additional limitation, such as the one proposed by Defendants here, requires a clear and unmistakable intent to limit the claim, or stated differently, it must be an unambiguous disavowal of claim scope. Federal Circuit has refused to apply the doctrine of prosecution disclaimer if the Applicant’s statements are “amenable to multiple reasonable interpretations” or otherwise are ambiguous. Defendants’ own actions in this case demonstrate that that standard cannot be met for the simple reason that Defendants did not even believe this claim term needed to be construed until recently. Yet, they now must argue that the prosecution history is so clear cut that the Court should import language from the prosecution history into this claim limitation. Defendants’ additional limitation (“that is the main memory of the system”) did not appear in Defendants’ construction until the day before the Joint Claim Construction Statement was filed with the Court. For the several preceding weeks, Defendants had contended that the phrase “flash memory” did not need to be construed and should be given its plain and ordinary meaning. That contention was set forth in Defendants’ Joint List of Proposed Terms to be Construed and Proposed Constructions to be construed should be given their plain and ordinary meaning and excluding flash memory from the list of terms to be construed)). Then, on the eve of the filing of the Joint Claim Construction Statement, Defendants proposed a construction that materially diverted from the plain and ordinary meaning of flash memory by also requiring that the flash memory be “the main memory of the system.” If the prosecution history was as clear cut as Defendants must argue, it is inconceivable that a team of lawyers for twenty-eight Defendants could only have discovered this so-called “clear and unmistakable disclaimer” the day before the parties’ final positions were due to be submitted to the Court.

The record in this case, as well as the prosecution history itself, confirms that the Applicant did not make any such clear and unmistakable disclaimer. Indeed, Defendants’ effort to read this requirement into the claims is at odds with multiple sources of intrinsic and extrinsic evidence that should be considered.

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