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 13of 46 - 9 - 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 46 “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 46 - 26 - 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. - -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.