CONSTRUCTION OF DISPUTED CLAIM TERMS
A. “primary memory”
e.Digital’s proposed constructions are consistent with the Court’s

constructions in the 1st Consolidated Cases. (See Ex. G at 10:14-12:21.) As set forth in e.Digital’s Opening Brief, the term “primary memory” is best understood in the context of the claim limitation “creating the primary memory from a non- volatile, long-term storage medium wherein the primary memory comprises a plurality of blocks in which data segments are stored.” (Dkt # 42 at 16:9-18:13.) As e.Digital explained, at the time the patent was issued, the term primary memory was typically associated with Random Access Memory (“RAM”) and other forms of volatile memory, which claim 1 at least partially teaches away from by disclosing the use of non-volatile memory to perform certain primary memory functions. (Id. at 17:10-18:10.)

For example, the specification of the ’108 patent states in pertinent part: “The present invention also includes a method of memory management for a primary memory created from non-volatile, long-term storage media, in particular flash memory.” (’108 patent (Ex. A to Opening Brief) at Abstract; 4:5-9; see also ’445 patent (Ex. B to Opening Brief) at 9:65-10:2 (“The obvious benefit of the file system, then, is avoiding the use of a large RAM resource and yet accomplishing typical file system functions as well as support features like editing that are normally performed in RAM”); 14:30-33.)

Micron argues that the term “primary memory” is a functional rather than a structural definition and, thus, they assert, the fact that primary memory and main memory were historically associated with volatile forms of memory is immaterial. (Dkt # 43 at 7:17-10:9.) e.Digital agrees that “primary memory” has a functional component. Indeed, this forms the basis for e.Digital’s position that claim 1 teaches using non-volatile flash memory to perform certain functions usually reserved for volatile primary memory such as RAM, namely the function of data manipulation.

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CASE NO. 3:13-CV-2907-H-BGS

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1. 1 (See Dkt # 42 at 17:21-25.)

2. 2 However, Micron’s construction would require that the “primary memory”

3. 3 be directly accessible by a microprocessor. Contrary to Micron’s assertion, this

4. 4 requirement is inherently structural rather than functional. Moreover, the patent

5. 5 acknowledges that “primary memory” has a structural component and takes pains

6. 6 to define a different structural limitation, e.g., a non-volatile, long-term storage

7. 7 medium comprised of a plurality of blocks in which data segments are to be stored.

8. 8 (See ’108 patent, claim 1 and Defendants’ Opening Brief (Dkt # 43) at 6:14-16.)

9. 9 Accordingly, using flash memory to perform the functions of primary memory

10. 10 indicates that the structural element of direct access by the microprocessor is not a

11. 11 necessary component of the invention.

12. 12 Micron’s argument that e.Digital’s proposed construction would improperly

13. 13 encompass cache memory has already been addressed to this Court and rejected in

14. 14 the previous claim construction proceedings. (See e.Digital’s Ex. G at 10:14-

15. 15 12:21.) No person of ordinary skill in the art would confuse e.Digital’s proposed

16. 16 construction with cache memory. First, claim 1 already has a separate requirement

17. 17 for a cache memory to which data is written before being written to the primary

18. 18 memory residing in flash. Second, claim 1 and e.Digital’s proposed construction,

19. 19 which is the construction entered by this Court in the prior Mushkin case, requires

20. 20 that the primary memory be created from a non-volatile, long term storage

21. 21 medium, which cache memory – a form of temporary memory – inherently is not.

22. 22 Finally, Micron argues that the term “primary memory” must be construed

23. 23 because the scope of the term is disputed and because the Court’s prior

24. 24 construction – e.Digital’s proposed construction here – “provides no guidance as to

25. 25 when flash memory – memory that was conventionally used as non-primary

26. 26 memory – is and is not ‘primary memory.” (Dkt # 43 at 11:1-12:6.) This guidance

27. 27 however is provided by the claim itself, which explains the specific function of

28. 28 primary memory performed by the invention in the limitations that follow.

    1. B. Disclaimer

    2. 8 In e.Digital v. Mushkin, et al., Case No. 3:13-cv-2897-H-BGS (Lead Case),

    3. 9 this Court found that the inventors of claim 1 of the ’108 patent did not clearly and

    4. 10 unmistakably disclaim the use of memory maps, including FAT, as part of the

    5. 11 invention. (See e.Digital’s Ex. G at 19:25-23:7.) Micron attempts to sidestep this

    6. 12 finding by arguing for a narrower brand of disclaimer. Specifically, Micron argues

    7. 13 that the inventors disclaimed the use of FAT “that is stored on the primary

    8. 14 memory.” (Dkt # 43 at 21:9-11, 23:12-15, 24:18-21.) Micron’s arguments do not

    9. 15 warrant disturbing the Court’s earlier finding.

    10. 16 First, Micron is arguing out of both sides of its mouth. In arguing for its

    11. 17 proposed construction of “primary memory,” Micron argues that primary memory

    12. 18 is defined by function, not structure. Here, however, they argue that the invention

    13. 19 cannot utilize a FAT “that is stored on the primary memory.” This construction

    14. 20 implies a structural “primary memory” on which a FAT can be stored. To this end,

    15. 21 Micron’s proposed constructions cannot be reconciled.

    16. 22 Second, as prior defendants have done, Micron attempts to read the

    17. 23 patentee’s statements that the invention does not require “reading a FAT into cache

    18. 24 memory, erasing the FAT from primary memory, modifying the FAT in cache

    19. 25 memory, and then resaving it to primary memory each time that any data is added

    20. 26 to or deleted from primary memory” as required by the specific brand of FAT

    21. 27 taught Ban, Jeffrey and Lasker as a disclaimer of the use of any type of FAT,

    22. 28 period. (See e.Digital’s Ex. D at 6, 7.) This defies logic.

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    1. 1 By attempting to expand a distinction of a specific file system method taught

    2. 2 by Ban, Jeffrey and Lasker, Micron assumes without offering any argument or

    3. 3 evidence that all FAT is the same, including FAT as used today. However, Micron

    4. 4 completely ignores the question of what specific feature of FAT is disclaimed by

    5. 5 the inventors. FAT file systems are not uniform and, like any technology, are

    6. 6 constantly evolving. Today, there are many different types of file allocation table

    7. 7 methods, including, e.g., FAT 32, exFAT, etc. Given the different varieties of

    8. 8 FAT that have emerged since the date of the invention of claim 1, one must look at

    9. 9 what specific features of FAT were addressed by the inventors in the file history.

    10. 10 Again, the only feature of Ban, Lasker and Jeffrey discussed by the inventors is the

    11. 11 process of reading data to RAM, manipulating it in RAM and then writing it back

    12. 12 to a contiguous area of flash memory. This cannot amount to a clear and

    13. 13 unambiguous disclaimer of any and all variations of FAT.

    14. 14 Micron engages in some misdirection by arguing that Ban “teaches the use

    15. 15 of a generic ‘virtual memory map’ for file allocation, as opposed to some specific

    16. 16 feature of a FAT,” and that “Lasker with Jeffrey does not teach any ‘specific

    17. 17 feature of FAT,’ and certainly not the specific feature relied upon by Plaintiff for

    18. 18 its identification of what was disclaimed.” (Dkt # 43 at 18:22-26.) However, the

    19. 19 question is not Micron’s subjective interpretation of the prior art, but what, if

    20. 20 anything, the inventors “clearly and unmistakably” disclaimed.1 Omega Eng’g,

    21. 21 Inc. v. Raytek Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003). The only specific

    22. 22 aspect of this prior art discussed by the inventors was the inefficient operation of

        1. manipulating data in RAM and rewriting to a contiguous region of flash.2 This is

        2. 2 hardly a clear and unambiguous disavowal of using FAT in conjunction with the

        3. 3 invention. Similarly, the inventors’ distinction of Ban, Jeffrey and Lasker does not

        4. 4 mean that other variations of FAT-based file systems cannot implement the

        5. 5 teachings of claim 1 in some aspect of those systems.

        6. 6 Second, as the Court recognized in the Mushkin case, even if Micron were

        7. 7 correct that the inventors distinguished their invention from all types of FAT, one

        8. 8 cannot conclude that a FAT cannot be referred to, utilized or referenced in any way

        9. 9 in performing the method of claim 1. In other words, to say that an invention is

        10. 10 “different” from another is not to say that some aspects of the two inventions

        11. 11 cannot work in conjunction in some way. Indeed, as previously explained, a

        12. 12 significant portion of the specifications of the ’108 patent and the parent ’445

        13. 13 patent are dedicated to demonstrating how the invention can be used in conjunction

        14. 14 with memory maps and DOS-based systems that utilize FAT as well as “hybrid”

        15. 15 file systems that incorporate the invention of claim 1. (See ’108 patent at 8:56-61

        16. 16 (“Alternatively, the present invention makes possible a hybrid combination of the

        17. 17 NORRIS FLASH FILE SYSTEM and the IDE hard drive memory card interface

        18. 18 which follows more closely the conventional memory scheme of the IDE hard

        19. 19 drive memory card interface” (emphasis added); ’445 patent at Figs. 5 and 6, 5:4-6,

        20. 20 8:38-46, 8:46-49, 10:6-12, 10:45-67, 12:23-47, 20:33-22:14.)

        21. 21 Micron argues that “[m]ere compatibility with DOS does not in any way

        22. 22 indicate...that the patent contemplates using a FAT as the file system for managing

        23. 23 access to the primary memory” and “the patent never teaches that DOS FAT is part

        24. 24 of the invention.” (Dkt # 43 at 19:2-10.) Micron misses the point.the above

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PLAINTIFF’S RESPONSIVE CLAIM CONSTRUCTION BRIEF

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1. 1 Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (context in

2. 2 which a disputed term is used in the asserted claim may provide substantial

3. 3 guidance as to the meaning of the term).

4. 4 Accordingly Defendant’s proposed constructions should be rejected in favor

5. 5 the construction of the entire claim element as proposed by e.Digital and as

6. 6 previously adopted by this Court.