Confident DM re patent examiner inquiry -Laying the ground for appeal (8)
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Message: Day 28 tic toc
First, as discussed above, the patent claims and the specification teach away from what
Defendants are trying to do. Second, the parties certainly do not even agree as to the meaning of
“main memory.” e.Digital contends that the prosecuting attorney’s use of “main memory” was a
way of describing the memory that stores the received and processed sound electrical signals,
i.e., the storage memory such as the Flashback’s SoundClip, as opposed to random access
memory (RAM) that is used to process for storage the audio data received by the microphone.
(Exh. 4 (Norris Decl.) at ¶ 13). Defendants contend that main memory means RAM as stated by
their expert. (Exh. 7 (Mihran Report) at ¶ 47). This fundamental dispute further contradicts
Defendants’ argument that the Applicant made a clear and unmistakable disclaimer.
Third, the statements during the prosecution history are not as clear cut as Defendants’
expert presents them to be. e.Digital acknowledges the prosecuting attorney stated in the
prosecution history that “an important point of novelty in the present invention uses flash
memory as main memory.” (July 20, 1995 Amendment at p. 11 (attached hereto as Exh. 10)).
But this characterization of the invention does not become the express, unmistakable disavowal
Defendants seek. Instead, the context for this statement begins with a very important in-person
meeting between the Patent Examiner, on the one hand, and the inventor Norris and the
prosecuting attorney, on the other hand.
As made clear from the July 17, 1995 Examiner Interview Summary Record -- that is part
of the prosecution history -- Mr. Norris and his counsel met with the patent examiner to discuss
the application that led to the ‘774 Patent. (See Examiner Interview Summary Record dated July
17, 1995, attached as Exhibit B to Exh. 4 (Norris Decl.)). The Examiner Interview Summary
Record indicates that Mr. Norris conducted a demonstration during which they “showed how
Defendants are trying to do. Second, the parties certainly do not even agree as to the meaning of
“main memory.” e.Digital contends that the prosecuting attorney’s use of “main memory” was a
way of describing the memory that stores the received and processed sound electrical signals,
i.e., the storage memory such as the Flashback’s SoundClip, as opposed to random access
memory (RAM) that is used to process for storage the audio data received by the microphone.
(Exh. 4 (Norris Decl.) at ¶ 13). Defendants contend that main memory means RAM as stated by
their expert. (Exh. 7 (Mihran Report) at ¶ 47). This fundamental dispute further contradicts
Defendants’ argument that the Applicant made a clear and unmistakable disclaimer.
Third, the statements during the prosecution history are not as clear cut as Defendants’
expert presents them to be. e.Digital acknowledges the prosecuting attorney stated in the
prosecution history that “an important point of novelty in the present invention uses flash
memory as main memory.” (July 20, 1995 Amendment at p. 11 (attached hereto as Exh. 10)).
But this characterization of the invention does not become the express, unmistakable disavowal
Defendants seek. Instead, the context for this statement begins with a very important in-person
meeting between the Patent Examiner, on the one hand, and the inventor Norris and the
prosecuting attorney, on the other hand.
As made clear from the July 17, 1995 Examiner Interview Summary Record -- that is part
of the prosecution history -- Mr. Norris and his counsel met with the patent examiner to discuss
the application that led to the ‘774 Patent. (See Examiner Interview Summary Record dated July
17, 1995, attached as Exhibit B to Exh. 4 (Norris Decl.)). The Examiner Interview Summary
Record indicates that Mr. Norris conducted a demonstration during which they “showed how
product worked.” (Id.). That product is the Flashback product that uses RAM to process data for
storage. (See, e.g., Exh. 10 (Amendment dated July 18, 1995) at pp. 22-25). With the benefit of
the product demonstration, the examiner agreed to issue the claims if the Applicants 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.” (Emphasis added).
storage. (See, e.g., Exh. 10 (Amendment dated July 18, 1995) at pp. 22-25). With the benefit of
the product demonstration, the examiner agreed to issue the claims if the Applicants 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.” (Emphasis added).
14 Recommendations
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