Closing argument by Mr Jameson
in response to
by
Message: Markman Transcript
MR. JAMESON: Your Honor, I just want to touch on
three or four points.
I want to begin with some cross-examination that
defendants undertook of Mr. Norris, and in that
cross-examination, they directed Mr. Norris to claims 10 and
claims 11 of the '774 patent. And the record will obviously
reflect what those claims state, but when you take a look at
them, you will see that the claims call out memory circuitry.
They also call out a DSP. Things of that nature.
And the reason why I bring that to your attention is
because what I heard the defendants suggesting is somehow or
another because those elements were perhaps called out in
claims 10 or 11, which are in dependent form working back to
claim 1, somehow or another that had an impact on this case in
a way that was favorable to them. And so I just wanted, as
part of my closing remarks, I wanted to make sure that there's
no mistake about this on the record, that the law is crystal
clear that the, the independent claim, claim 1, has to be broad
enough to encompass everything that might be tacked on through
the dependent claim.
So to the extent that the defendants are trying to
exclude from the scope of claim 1 something that is later
expressly called out in claims 10 or 11, that just doesn't
work. So I just wanted to make that point.
The other thing that, that I want to focus on is we
spent a lot of time today talking about the prosecution
history. And perhaps stating the obvious -- and, Your Honor, I
know you are well versed in claim construction --
THE COURT: Not so much. Phillips was not my best
moment.
MR. JAMESON: Actually, Your Honor, it was a good
moment 'cause it helped us a lot. And what Phillips actually
told us was, we got to start with the claims. And then we need
to look at the claims against the specification. And we might
then go to the prosecution history if it's in evidence, but the
prosecution history, we got to be real careful about that,
because it can be ambiguous at times; and so we don't hang our
hat on the prosecution history unless there is a disclaimer
that is clear, unmistakable, unambiguous, and we got all the
cases cited in the briefing.
And here's what the intrinsic record teaches us. The
patent examiner and the applicants reached an agreement that a
narrowing amendment would result in a patentable invention that
overcomes Schroder and the Microsoft Dictionary definition.
And the examiner laid out exactly what that narrowing amendment
was. And nowhere in that narrowing amendment that the patent
examiner laid out is there anything about that is the main
memory of the system or without another memory system such as
RAM. The examiner made crystal clear that if you amend the
claims, that the flash memory is the sole memory of the
received processed, past tense. Once we've gone through all
the processing, it's the sole memory for storage of the
received processed electrical signals, you've got a patentable
invention.
And there is an agreement on that. And what we have
in this litigation is we have the defendant seizing onto the
word "main memory" that's in an amendment that is not defined
in that amendment but instead we go to extrinsic Microsoft
Dictionary definition that is nowhere in the intrinsic record;
and the argument goes, because that's how Microsoft defines
main memory, that's clearly what one of ordinary skill in the
art would have understood main memory to be and we don't really
care about the specification, the figures, and the claims and
the context of the entire invention. Quite frankly, we're
going to ignore it.
So we've got an expert, very knowledgeable, very
smart, who has read the entire intrinsic record, and when he
reads the intrinsic record, he finds out that in no
unmistakable terms that the Flashback product is stated as
being an embodiment. It's not the preferred embodiment, but an
embodiment of the invention. I don't want to know how it
operates. Instead, I'm going to hang my hat on the Microsoft
Dictionary.
And simply put, Your Honor, that does not rise to the
level of clear and unmistakable. What that does is that
creates, at the very best, a good-faith debate about what were
these people talking about when they said that the flash is the
main memory of the system. And when you look at that
prosecution history, and it always begins with the amendment by
the examiner, it begins with the, the sole memory of the
received processed electrical signal, you can't just forget
about where we started. They provide some context, and in that
context, what you have is you've got a prosecuting attorney
saying, listen, this is the main memory for storage. Nothing
more. This is the main memory for storage.
And if you go back and look at Schroder, which is what
we were distinguishing over, and you read Schroder, what
Schroder tells you is, this signal's being processed, it's
stored in the computer, and then it's moved to a secondary
memory. That's not the word that's used, but it's moved to a
floppy disk or permanent storage.
And what we were saying is, you don't have to do that.
You don't have to move something into that storage in the
computer once you've processed it. Once you've processed it,
you move it directly to the flash.
And, Your Honor, turning to Dr. Mihran's testimony, he
made it crystal clear, and he said it in the last question on
direct, and then he said to Mr. Yungwirth on cross, when you
read these claims, I can read these claims and I can find
memory in the claims other than just the flash memory. And I
raise that because when you, you know, when you go back and you
probably reread these briefs again, page 2, opening brief of
defendants in this case, they state, During prosecution the
applicants distinguished their claims over the prior art by
arguing that the flash memory in their handheld dictation
device was the sole memory in the device. Sole memory in the
device.
Then they go on to state, comma, without another
memory system such as RAM. Okay. Well, even Dr. Mihran
conceded that we've got ROM. That could be a memory system.
We got buffers, we got registers. Maybe that's a memory
system. And they use such as RAM as an example.
And so that's, that was their launching point.
Let me tell you where the defendants actually got right. And it's on page 4 of their opening brief. They're
talking about what happened in the prosecution history, and
what they tell us is, quote, Instead they -- being e.Digital or
the applicants -- narrowed -- very important -- narrowed those
claims to require that the claimed device have a flash memory
module which operates as the sole memory of the received
processed sound electrical signals.
And the reason why I go to that statement is because
that is what happened. We did have to narrow the claims in
order to get the patent to issue. But now we're in claim
construction, and they're wanting to narrow them even more.
And what's interesting is they actually in the
briefing, they accuse us of being the one trying to broaden the
claims. And I don't know what they're talking about. We're
not trying to broaden any claims. We're trying for the claims
to get their plain and ordinary meaning as issued, and the only
party that's trying to narrow anything in this case, by
definition when you start lopping or glomming on new claim
limitations to claim terms, you are narrowing the claims. And
so when they accuse us of broadening the claims in this case in
order to come up with an infringement argument, it's lost on
me.
And the argument that they make -- and, Your Honor,
this is document 362. This is the filing that came in
yesterday afternoon. It's at page 4. And they state at
page 4, Accordingly, the intrinsic record clearly establishes
that the '774 patent claims exclude any record/playback device
that uses a memory system such as RAM in addition to a flash
memory module.
RAM's just the example.
three or four points.
I want to begin with some cross-examination that
defendants undertook of Mr. Norris, and in that
cross-examination, they directed Mr. Norris to claims 10 and
claims 11 of the '774 patent. And the record will obviously
reflect what those claims state, but when you take a look at
them, you will see that the claims call out memory circuitry.
They also call out a DSP. Things of that nature.
And the reason why I bring that to your attention is
because what I heard the defendants suggesting is somehow or
another because those elements were perhaps called out in
claims 10 or 11, which are in dependent form working back to
claim 1, somehow or another that had an impact on this case in
a way that was favorable to them. And so I just wanted, as
part of my closing remarks, I wanted to make sure that there's
no mistake about this on the record, that the law is crystal
clear that the, the independent claim, claim 1, has to be broad
enough to encompass everything that might be tacked on through
the dependent claim.
So to the extent that the defendants are trying to
exclude from the scope of claim 1 something that is later
expressly called out in claims 10 or 11, that just doesn't
work. So I just wanted to make that point.
The other thing that, that I want to focus on is we
spent a lot of time today talking about the prosecution
history. And perhaps stating the obvious -- and, Your Honor, I
know you are well versed in claim construction --
THE COURT: Not so much. Phillips was not my best
moment.
MR. JAMESON: Actually, Your Honor, it was a good
moment 'cause it helped us a lot. And what Phillips actually
told us was, we got to start with the claims. And then we need
to look at the claims against the specification. And we might
then go to the prosecution history if it's in evidence, but the
prosecution history, we got to be real careful about that,
because it can be ambiguous at times; and so we don't hang our
hat on the prosecution history unless there is a disclaimer
that is clear, unmistakable, unambiguous, and we got all the
cases cited in the briefing.
And here's what the intrinsic record teaches us. The
patent examiner and the applicants reached an agreement that a
narrowing amendment would result in a patentable invention that
overcomes Schroder and the Microsoft Dictionary definition.
And the examiner laid out exactly what that narrowing amendment
was. And nowhere in that narrowing amendment that the patent
examiner laid out is there anything about that is the main
memory of the system or without another memory system such as
RAM. The examiner made crystal clear that if you amend the
claims, that the flash memory is the sole memory of the
received processed, past tense. Once we've gone through all
the processing, it's the sole memory for storage of the
received processed electrical signals, you've got a patentable
invention.
And there is an agreement on that. And what we have
in this litigation is we have the defendant seizing onto the
word "main memory" that's in an amendment that is not defined
in that amendment but instead we go to extrinsic Microsoft
Dictionary definition that is nowhere in the intrinsic record;
and the argument goes, because that's how Microsoft defines
main memory, that's clearly what one of ordinary skill in the
art would have understood main memory to be and we don't really
care about the specification, the figures, and the claims and
the context of the entire invention. Quite frankly, we're
going to ignore it.
So we've got an expert, very knowledgeable, very
smart, who has read the entire intrinsic record, and when he
reads the intrinsic record, he finds out that in no
unmistakable terms that the Flashback product is stated as
being an embodiment. It's not the preferred embodiment, but an
embodiment of the invention. I don't want to know how it
operates. Instead, I'm going to hang my hat on the Microsoft
Dictionary.
And simply put, Your Honor, that does not rise to the
level of clear and unmistakable. What that does is that
creates, at the very best, a good-faith debate about what were
these people talking about when they said that the flash is the
main memory of the system. And when you look at that
prosecution history, and it always begins with the amendment by
the examiner, it begins with the, the sole memory of the
received processed electrical signal, you can't just forget
about where we started. They provide some context, and in that
context, what you have is you've got a prosecuting attorney
saying, listen, this is the main memory for storage. Nothing
more. This is the main memory for storage.
And if you go back and look at Schroder, which is what
we were distinguishing over, and you read Schroder, what
Schroder tells you is, this signal's being processed, it's
stored in the computer, and then it's moved to a secondary
memory. That's not the word that's used, but it's moved to a
floppy disk or permanent storage.
And what we were saying is, you don't have to do that.
You don't have to move something into that storage in the
computer once you've processed it. Once you've processed it,
you move it directly to the flash.
And, Your Honor, turning to Dr. Mihran's testimony, he
made it crystal clear, and he said it in the last question on
direct, and then he said to Mr. Yungwirth on cross, when you
read these claims, I can read these claims and I can find
memory in the claims other than just the flash memory. And I
raise that because when you, you know, when you go back and you
probably reread these briefs again, page 2, opening brief of
defendants in this case, they state, During prosecution the
applicants distinguished their claims over the prior art by
arguing that the flash memory in their handheld dictation
device was the sole memory in the device. Sole memory in the
device.
Then they go on to state, comma, without another
memory system such as RAM. Okay. Well, even Dr. Mihran
conceded that we've got ROM. That could be a memory system.
We got buffers, we got registers. Maybe that's a memory
system. And they use such as RAM as an example.
And so that's, that was their launching point.
Let me tell you where the defendants actually got right. And it's on page 4 of their opening brief. They're
talking about what happened in the prosecution history, and
what they tell us is, quote, Instead they -- being e.Digital or
the applicants -- narrowed -- very important -- narrowed those
claims to require that the claimed device have a flash memory
module which operates as the sole memory of the received
processed sound electrical signals.
And the reason why I go to that statement is because
that is what happened. We did have to narrow the claims in
order to get the patent to issue. But now we're in claim
construction, and they're wanting to narrow them even more.
And what's interesting is they actually in the
briefing, they accuse us of being the one trying to broaden the
claims. And I don't know what they're talking about. We're
not trying to broaden any claims. We're trying for the claims
to get their plain and ordinary meaning as issued, and the only
party that's trying to narrow anything in this case, by
definition when you start lopping or glomming on new claim
limitations to claim terms, you are narrowing the claims. And
so when they accuse us of broadening the claims in this case in
order to come up with an infringement argument, it's lost on
me.
And the argument that they make -- and, Your Honor,
this is document 362. This is the filing that came in
yesterday afternoon. It's at page 4. And they state at
page 4, Accordingly, the intrinsic record clearly establishes
that the '774 patent claims exclude any record/playback device
that uses a memory system such as RAM in addition to a flash
memory module.
RAM's just the example.
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