FROM DM LEGAL TEAM: CLAIM 1 &19 OF PATENT "774" REMOVABLE FLASH MEMORY

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FROM DM LEGAL TEAM: CLAIM 1 &19 OF PATENT "774" REMOVABLE FLASH MEMORY

in response to

Re: ANTICIPATION-Thanks a lot-

jonthezman

posted on May 03, 2011 12:09PM

Excerpts from Doc 303

In any case, the prosecution history excerpts on which Defendants rely do not support the

limitation Defendants now propose. The fundamental problem with Defendants’ argument is

that it is based on mischaracterizations of the Applicant’s use of the phrase “main memory.” The

Applicant used main memory to refer to the memory for storing sound electrical signals that

have been received and processed (i.e., as another way of describing the “sole memory”

limitation to which the Applicant and Examiner reached agreement during the in-person

interview); not the RAM used for processing the audio signal. (See July 20, 1995 Amendment

(attached to Pl. Op. Br. as Exh. 10) at p. 11).

This understanding also is confirmed by the design of the Flashback product itself that

was available for purchase by one of ordinary skill in the art from the issuance of the patent

through at least July 7, 2010 and demonstrated to the Patent Examiner. (See Exh. 4 (Norris

Case 1:09-cv-02578-MSK-MJW Document 303 Filed 07/14/10 USDC Colorado Page 13 of

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Decl.) (attached to Pl. Op. Br.) at ¶¶ 13-16 and Exhs. C-F; Exh. 6 (Maltiel Decl.) (attached to Pl.

Op. Br.) at ¶¶ 53 and 54 (all depicting structure of Flashback product); Exh. 11 (attached hereto)

(showing example of product offered for sale on www.ebay.com as of July 7, 2010)).

Likewise, it is clear that the Examiner understood Applicant’s references to main

memory as storage memory as evidenced by her statement in the Examiner Interview Summary:

“the flash memory is the sole memory to store the received processed sound electrical signal.”

(See Examiner Interview Summary Record dated July 17, 1995, attached as Exhibit B to Exh. 4

(Norris Decl.)). The Examiner’s statement conveys the understanding that the flash memory is

the sole memory that stores the already received and processed sound electrical signals; as

opposed to the sole memory for both processing and storage. If the Patent Examiner agreed with

Defendants that flash memory was used in lieu of RAM to process the audio data, the proposed

amendment would not have referred to “received processed sound electrical signal.” In short,

Defendants’ interpretation of “main memory” as RAM memory for processing data simply

cannot be reconciled with this written statement by the Examiner, and even if accepted,

Defendants’ argument creates a claim construction dispute within a claim construction dispute,

i.e., what does main memory mean in the context of the ‘774 Patent?

Furthermore, the prosecution disclaimer cases cited by Defendants are distinguishable

given the context in which the Applicant’s statements were made in this case. In the instant case,

Applicant’s statements at issue followed an agreement between the Applicant and the Examiner

as to an amendment, based on which the Examiner agreed the claims would overcome the prior

art. Indeed, as of the conclusion of the Examiner Interview, an agreement already existed as to

exactly what needed to be done to bring the claim 1 into allowance. As the Examiner Interview

Case 1:09-cv-02578-MSK-MJW Document 303 Filed 07/14/10 USDC Colorado Page 14 of

“Removable” comes directly from the claim language and should be

included in the claim construction as advocated by e.Digital.

As explained in e.Digital’s Opening Brief, the phrase proposed for construction “a flash

memory module . . . for storage in nonvolatile form,” describes a single limitation, i.e., “a flash

memory module” that satisfies two necessary functionalities. It (i) “operates as sole memory of

the received processed sound electrical signals” and (ii) “is capable of retaining recorded digital

information for storage in nonvolatile form.” (Exh. 1 (‘774 Patent) at cls. 1 and 19). As

Defendants concede based on their proposed definition of “flash memory module,” the flash

memory module is “removable.” This is clearly the case based on the language in claims 1 and

19 that begins by describing a device for use with removable, interchangeable flash memory and

later describes the features of the flash memory that can be coupled to the socket that receives

the flash memory module. Accordingly, defining the flash memory module limitation as being

removable should be beyond dispute.

Nevertheless, Defendants take issue with e.Digital’s use of the phrase removable as part

of the construction of a particular aspect of the flash memory module: “which operates as sole

memory of the received processed sound electrical signals.” Defendants’ argument, however, is

based on the mistaken assumption that the single flash memory module limitation should be

carved up into separate limitations, an assumption they fail to support with any argument in their

Opening Brief. In other words, Defendants invite the Court to ignore the inherent structure of

claims 1 and 19 that make clear that the removable flash memory module be defined based on

two functionalities: (1) that it is the only removable memory storage device that receives for

storage the processed sound electrical signals, and (2) that it is capable of retaining for storage

digital information without the need for ongoing power support. These two functionalities define

Case 1:09-cv-02578-MSK-MJW Document 303 Filed 07/14/10 USDC Colorado Page 30 of

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the claimed and admittedly removable flash memory module that is to be coupled to the

receiving socket. The second reference to “removable” in e.Digital’s proposed construction does

nothing more than repeat the parties’ agreed limitation that the flash memory module “which

operates as sole memory of the received processed sound electrical signals” be removable.

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Summary Record clearly shows, the Examiner checked the box reflecting “Agreement was

reached with respect to some or all of the claims in question.” (See Examiner Interview

Summary Record dated July 17, 1995, attached as Exhibit B to Exh. 4 (Norris Decl.)). The

Examiner then expressly referenced claim 1 -- the very claim at issue in this case -- and stated

the agreement, which does not make any reference to main memory or RAM:

APPLICANT WILL AMEND CLAIMS TO INCLUDE LIMITATION THAT

WILL EXPRESSLY STATE THAT THE FLASH MEMORY IS THE SOLE

MEMORY TO STORE THE RECEIVED PROCESSED SOUND ELECTRICAL

SIGNAL. EXAMINER AGREED THAT SUCH A LIMITATION WOULD

OVERCOME SCHRODER AND SHE WOULD UPDATE SEARCH

ACCORDINGLY.

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If one of ordinary skill in the art would have purchased a Flashback product, he or she

would have had access to the technical information disclosed in Mr. Norris’s Declaration. One

of ordinary skill in the art could have easily disassembled the Flashback and identified the

components of the product that are depicted in the picture of the disassembled Flashback

attached as Exhibit D to the Norris Declaration. And just as Messrs. Maltiel and Norris declared,

those pictures depict components that in fact use RAM to process the audio signal for storage on

the flash memory module, which could have been confirmed by simply investigating the

identified component model numbers. (Exh. 4 (Norris Decl.) at Exh. D thereto; see also, Exh. 4

(Norris Decl.) at ¶¶ 15 & 16 and Exh. F; Exh. 6 (Maltiel Decl.) at ¶ 54). In other words, the

Flashback product uses RAM, in addition to flash memory, and this rather unremarkable fact

could have been readily investigated by a person of ordinary skill in the art, or quite frankly,

readily appreciated based on a person of ordinary skill in art’s well known understanding of how

the processing audio information occurred back at the time of the invention and still occurs

today. (Exh. 4 (Norris Decl.) at ¶ 17). Moreover, one of ordinary skill in the art, who is trying to

understand the ‘774 Patent, would have been just as likely, if not more likely, to search out a

Flashback product (a product form of the preferred embodiment) than to look for a dictionary

definition of “main memory” that is nowhere cited in the prosecution history, particularly when

Case 1:09-cv-02578-MSK-MJW Document 303 Filed 07/14/10 USDC Colorado Page 19 of

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the Flashback product is specifically called out in the prosecution history as an embodiment of

the invention as claimed.8 (See, e.g., Exh. 10 (Amendment dated July 18, 1995) at pp. 22-25).

In short, Defendants ask the Court to read into the flash memory element of claims 1, 2

and 19 of the ‘774 Patent and claim 5 of the ‘737 Patent a “main memory” limitation based on

their interpretation of main memory (i.e., main memory means RAM) that conflicts with:

(1) the claims themselves,

(2) the multiple teachings of the specification,

(3) the Patent Examiner’s statement following the Examiner’s Interview,

(4) inventor Norris’ understanding of how “main memory” was being used in the

prosecution history, and

(5) how the actual Flashback product worked.

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Although

claim 1 and 19 clearly state that flash memory module is the sole memory for storage of the

received processed sound signal, Dr. Mihran previews Defendants’ argument that the flash

memory module is the sole memory used by all processing elements of the claim that follow the

microphone element, i.e., the control circuitry.

If the Court accepts Defendants’ argument, Dr. Mihran’s Declaration indicates that

Defendants will later argue that the flash memory module construction further limits claims 1

and 19 so as to preclude the use of other memory systems for processing data by the control

circuitry. Such a result would be directly contrary to the relevant claim language of claims 1 and

19 as discussed above, as well as Figs. 1 and 2 discussed in e.Digital’s Opening Brief at pages

23-26 and columns 5 and 6 discussed in Section II.A.1., supra. As the claims and specification

make clear, the flash memory module is the sole memory storage device that receives for storage

the processed sound electrical signals; not the sole memory for data processing by the control

circuitry. In short, Defendants’ extreme argument, if accepted, flies in the face of the claim

language, multiple teachings and figures in the specification, and the Flashback device discussed

during the very prosecution history on which Defendants rely.

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