From EDIG v APPLE Doc 34:

Having been shown the above-referenced figures in person and as part of e.Digital’s office action response, and with knowledge of Judge Krieger’s claim construction order, the PTO allowed the amendment of the independent claims of the ’774 patent to incorporate, among other things, the addition of the microprocessor of Fig. 5 shown above. (See Exhibit 3 to Hedrick Decl. at 3:3.) A person of ordinary skill in the art at the time of the invention, having the benefit of reviewing the amended claims and the prosecution history containing the above referenced figures, would therefore clearly understand that the invention of amended claims 33 and 34 requires the presence of RAM to support, among other things, microprocessor applications; a conclusion that contradicts that reached by Judge Krieger. Judge Krieger did not have the benefit of these additional references from the reexamination history to consider in connection with her claim construction order, which standing alone, renders the claim construction issues presented to her fundamentally different than those presented here.

Defendants would appear to suggest that the amended claims, the prosecution file and discussion with the examiner are irrelevant since the originally disputed claim terms are still present in new claims 33 and 34. They are incorrect.Indeed, Judge Krieger held that “[t]he phrase received processed sound electrical signals” refers to the electrical signals that are generated by the microphone and passed through the amplifier and gain control circuits, but have yet to be converted by the CODEC.” (Defendants’ Exhibit 5 at p. 16.) She then concludes, “[t]he remainder of the disputed language requires that the device use only flash memory, not RAM or any other memory system, while engaging the CODEC, DSP (as applicable), and the memory control functions, as well as storing the fullymanipulated data.” (Id.)
However, the reexamination history, which was not available to Judge Krieger, clearly shows that the microprocessor of the new claim 33 utilizes RAM.(See Exhibit 5 to Hedrick Decl. and Exhibits D through H thereto.) Consistent therewith, the specifications of the ’774 patent disclose that the microprocessor of the claimed invention of the ’774 patent “drive[s] all system components.” (Id. At 5:58-59.) (Emphasis added.) Therefore, at least one possible interpretation of the reexamination history shown above is that the microprocessor utilizes RAM while engaging the CODEC, DSP, memory control functions, and storing data. (See also Defendants’ Exhibit 1 (’774 patent) at 5:33-39 (disclosing the DSP and CODEC are coupled to control circuitry 21, which also contains the microprocessor), 5:58-6:15 (CODEC and DSP are coupled to the microprocessor), Figs. 1-2 (control circuitry 21 includes analog-to-digital conversion (CODEC), memory circuitry, control logic, signal processing circuitry, playback circuitry and microprocessor.)

Thus, the explicit introduction of RAM on reexamination requires new consideration of the very heart of Judge Krieger’s analysis. Judge Krieger, however, simply did not have this reexamination history and therefore could not have considered it in making her determinations – something that this court has the obligation to do if it undertakes to construe the claims. Accordingly, the Defendants’ Motion must be denied since new claims, reexamination history and other evidence now exists that Judge Krieger did not have the opportunity to consider when she construed the terms of old claims 1 and 19.