From DOC 297

The Prosecution History
In addition to consulting the specification, a court can also consider the patent’s
prosecution history because the prosecution history can provide evidence of how the Patent
Office and the inventor understood the patent. Phillips, 415 F.3d at 1317. “Yet because the
prosecution history represents an ongoing negotiation between the PTO and the Applicant, rather
than the final product of that negotiation, it often lacks the clarity of the specification and thus is
less useful for claim construction purposes.” Id. In consideration of the negotiation during the
prosecution history, a patentee’s statements during prosecution history cannot create a disclaimer
of claim scope, unless the statements convey a clear and unambiguous intent to narrow the
claim’s scope. Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371-72 (Fed. Cir.
2007) (prosecution disclaimer applies only where alleged disavowal of claim scope is “clear and
unmistakable” to one of ordinary skill in the art) (emphasis added); see also Abbott Labs. v.
Sandoz, Inc., 566 F.3d 1282, 1289 (Fed. Cir. 2009) (owing to the “inherent ambiguities” of
prosecution history, doctrine of prosecution disclaimer only applies to “unambiguous
disavowals” of claim scope); Omega Engineering v. Raytek Corporation, 334 F.3d 1314, 1324
(Fed. Cir. 2003) (finding that ambiguous statements made during prosecution history “were ‘far
too slender a reed to support the judicial narrowing of a clear claim term’”); Northern Telecom v.
Samsung Electronics Co., Ltd., 215 F.3d 1281, 1293-94 (Fed. Cir. 2000) (finding that
prosecution history fails to conclusively prove patentee’s intent to limit claim scope).

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In apparent reliance on the view that the prosecuting attorney
acted as his own lexicographer, Defendants’ expert has opined that “the Applicants expressly
defined the ‘flash memory’ of the claimed devices as ‘main memory’ of the system during the
prosecution of the ‘774 and ‘737 patents, i.e. as a functional replacement for what would
otherwise conventionally comprise RAM.” (Exh. 7 (Mihran Report) at ¶ 47). Needless to say,
there is a fundamental tension in flip-flopping from a position that the limitation “flash memory”
is so clear it does not need to be construed to a position that “flash memory” has been expressly
defined in a manner contrary to anyone’s understanding of “flash memory” in 1993, particularly
to a person of ordinary skill in the art.
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.
10 Defendants have relied on events in the prior litigation in Texas between e.Digital and
other defendants. (See e.g., Exhibit 1 to Proposed Scheduling Order (D.I. 250-1, Joint Claim
Construction Chart from Texas litigation referenced by Defendants in Proposed Scheduling
Order (D.I. 240)) at pp. 14-15)). Although the Court never decided any claim construction issues
in that case, it is noteworthy that the defendants in that case contended that flash memory should
be construed as “a memory that holds its contents without the need for ongoing power support,”
i.e., non-volatile memory. (Id.). In other words, those defendants also did not perceive the
Applicant’s statements as a clear and unmistakable disclaimer.