Today is the 57th day after the Markman and still no ruling.

It may be unreasonable from a legal proceedings point of view, but as a layman I feel more confident with each week that passes and we have no ruling. This is due to what the judge said in court…that if the 2 key claims are ruled as dispositive to the case (in the defendants’ favor), then she won’t rule on the remaining 6 claims. Of course if they aren’t ruled as dispositive, she will rule on the remaining 6 claims which is what I’m hoping is the reason for the 57+ days. The 2 key claims are:

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A. “flash memory” (Claims 1, 2 and 19 of the ‘774 Patent and Claim 5 of the

‘737 Patent)

e.Digital’s Proposed Construction: block erasable non-volatile memory

Defendants’ Proposed Construction: block erasable non-volatile memory that is the main memory of the system

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B. “a flash memory module which operates as sole memory of the received processed sound electrical signals and is capable of retaining recorded digital information for storage in nonvolatile form” (Claims 1 and 19 of the ‘774 Patent)

e.Digital’s Proposed Construction: “a removable, interchangeable flash memory storage device that (1) is the only removable memory storage device that receives for storage the processed sound electrical signals, and (2) is capable of retaining for storage digital information without the need for ongoing power support”

Defendants’ Proposed Constructions: (1) flash memory module: “a removable, interchangeable flash memory recording medium” and (2) sole memory of the received processed sound electrical signals: “the only memory of the received processed sound electrical signals, without another memory system such as RAM.”

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Looking at claim A, both parties agree with the verbage, “block erasable non-volatile memory”. The contention between the parties is just the verbage, “…that is the main memory of the system.” EDIG argues that the terms “main memory” and “system” do not appear anywhere in the ‘774 patent. These terms do appear in the patent prosecution history but citing the Phillips case, DM argued that it is of key importance for the court to put more weight on what’s inside the 4 corners of the patent, as opposed to other intrinsic evidence. I think this bodes well for us and though I’m a layman, I feel confident we’ll win this claim construction. I just can’t see the court narrowing a claim with language that isn’t found inside the patent.

Claim B is the tougher one to rule on IMO and in fact, Judge Kreiger mentioned in court that she believed it was the most important claim in the case.

EDIG construes claim B by defining “a flash memory module” in two parts saying (1) it is the only removable storage device and (2) is capable of retaining for storage digital information.Both parts are defining “a flash memory module” which is the single term claim B is trying to define.

The defendants construe claim B by defining two completely separate terms. First, they define a “flash memory module” and both parties actually agree on the phrases “removable”, “interchangeable” and “flash memory” in defining flash memory module. The contention is between “storage device” (EDIG) and “recording medium” (defendants). The word “storage” actually appears toward the end of the patent claim which in my mind, could be an important point for the court to consider.

But then out of nowhere, the defendants define a second term in claim B; “sole memory”. Sole memory isn’t the object of claim B. Sole memory is there to help define a flash memory module; it is not there to be defined and in the context of the claim, doesn’t need to be defined. Webster defines “sole” as “being the only one” and anyone of ordinary skill in the art would know this. Even a layman would understand this as such. There is no legitimate reason to complicate the claim by defining sole memory and it wrongly changes the plain language in the claim.

Defendants are desperate though and are trying to convince the court that sole memory means the ‘774 patent doesn’t use RAM. This was proven wrong at the Markman hearing when the inventor and the defendants own expert testified the Flashback product contains RAM. And the Flashback [present invention] is the embodiment of the ‘774 patent which is referenced numerous times in the patent.

Defendants are trying to add this negative limitation to the claim and in Doc 296, DM cited these cases where this is discouraged by the judicial system:

“Linear Tech. Corp. v. ITC, 566 F.3d 1049, 1060 (Fed. Cir. 2009) (“Thus, because there is no basis in the patent specification for adding the negative limitation--excluding monitoring voltage--we hold that the Commission erred in construing this limitation”);”

“Omega Eng’g, 334 F.3d at 1323 (“Our independent review of the patent document reveals . . . there is no basis in the patent specification for adding the negative limitation.”

DM eloquently writes, “Many things are not a ‘flash memory module’ and giving but one example does not help one of ordinary skill in the art understand what a flash memory module is. Arguing what a flash memory module is not should be saved for the fact finder as part of the infringement analysis, not claim construction.” If I were to state a flash memory module is not a Crescent wrench, it wouldn’t help anyone understand what a flash memory module is.

And as DM points out to the court, neither the Applicant or the Examiner felt it necessary to add this negative limitation to the claim as evidenced by it not appearing in the ‘774 patent.

Here’s where the defendants are trying to pull a fast one IMO. Regarding claim A: in the rebuttal report of the defendants’ expert, Dr. Mihran suggests that main memory equates to RAM and defendants are trying to add the verbage, “main memory of the system” into claim A’s construction. Therefore the defendants are stating flash memory = RAM.

But in claim B, they are arguing that RAM is absent in the patent. DM calls them on this in Doc 296,

“Defendants are taking two bites at the same apple (i.e., (1) circuitously arguing that flash memory is main memory and therefore a replacement for RAM memory, and (2) arguing RAM is precluded from being in the system) with the hope that the Court will adopt at least one of their constructions so that Defendants can later try to create a non-infringement position to the extent any of the accused devices have RAM.”

In Doc 296, EDIG acknowledges the patent prosecuting attorneys statement, “…Applicant is unaware of any prior art teaching which uses flash memory without another memory system such as RAM” but argue this statement must be taken in context. Taken out of context this appears to mean the Applicant’s invention doesn’t use RAM at all (but the defendants own expert testified it did). Taken in context, the Applicant was talking about not using RAM to store the processed data, not in the processing of the sound electrical signal into data.

The context for the statement began during the in-person meeting between the inventor Mr. Norris, the Examiner and the prosecuting attorney. Mr. Norris demonstrated the Flashback product and the Examiner agreed to issue the patent if Mr. Norris amended the claims “to include limitation that will expressly state that the flash memory is the sole memory to store the received processed sound electrical signal.”Clearly the context of the statement “…Applicant is unaware of any prior art teaching which uses flash memory without another memory system such as RAM” is referring to not using RAM to store the received processed (past tense) sound electrical signal.

I’ll end this novel (LOL) with an excerpt from Doc 296:

“Similar to the main memory limitation proposed by Defendants, Defendants’ effort to read a new “without another memory system such as RAM” limitation into the claim is at odds with (1) the claims themselves, (2) the multiple teachings of the specification, (3) the Patent Examiner’s requirement for amendment, and (4) how the actual Flashback product worked. However, the prosecution history can be aligned with all of the foregoing, if they simply mean another memory system such as RAM is not used to store the received processed sound electrical signals. At a minimum, the statements in the prosecution history are “amenable to multiple reasonable interpretations” by one of ordinary skill in the art and do not constitute a prosecution disavowal. Omega Eng’g, 334 F.3d at 1324.”