1. cited excerpts from the specification make clear that the invention can work in

2. 2 conjunction with or be used by other systems, such as DOS-based systems that use

3. 3 FAT.

4. 4 Aside from attempting to narrow the scope of the alleged disclaimer, Micron

5. 5 presents no new arguments that were not already considered and rejected by this

6. 6 Court in the Mushkin case. For the same reasons previously given in its Claim

7. 7 Construction Order entered in that case, e.Digital respectfully requests that

8. 8 Micron’s disclaimer arguments be rejected. The inventors did not clearly and

9. 9 unambiguously disclaim the use of FAT, whether stored in primary memory or

10. 10 otherwise. See Omega Eng’g at 1325.

Micron argues that two terms render the preamble limiting: “direct manipulation of contiguous and non-contiguous discrete data segments” and “file system.” (Dkt # 43 at 19:20-22:6.) Micron’s arguments, however, do not warrant disturbing this Court’s previous finding that the preamble is not limiting. (See e.Digital Ex. G at 9:13-10:2.)

As set forth in e.Digital’s Opening Brief, the key inquiry in determining whether a preamble is limiting is whether “a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.” Symantec v. Computer Associates Int'l, Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008) (internal quotations omitted). As this Court has already found, the body of claim 1 defines the requisite components of the claimed invention and is thus a self-contained description of the invention. (e.Digital’s Ex. G at 9:13-10:2.) Without the preamble, the invention remains functionally complete. (Id.)

Defendants first argue that the term “direct manipulation of contiguous and non-contiguous discrete data segments” as contained in the preamble is limiting.

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1. 1 (Dkt # 43 at 20:14-21:7.) They assert that because the exact words “direct

2. 2 manipulation” and “contiguous and non-contiguous” are not explicitly contained in

3. 3 the body of the claims, they necessarily “breathe life into the claim.” (Id.)

4. 4 However, the use of these claim terms in the preamble does not render the

5. 5 preamble limiting.

6. 6 Claim elements (b) and (c)(1) describe the steps of “direct manipulation”

7. 7 taught by the patent. (’108 patent at claim 1.) In addition, it is clear from the

8. 8 claim elements that the invention applies to either contiguous or non-contiguous

9. 9 data segments. The body of the claim consistently refers to linking logically-

10. 10 related data segments, which were known in the art at the time to include both

11. 11 contiguous and non-contiguous file data. (Id.; see also e.Digital Ex. E at 243

12. 12 (“logical file”.) Most importantly, claim element (c)(5) teaches “creating

13. 13 additional serial and logical links as subsequent new data segments are written to

14. 14 primary memory, said logical links providing the path for serially accessing the

15. 15 data segments regardless of contiguity of the data segments relative to each other

16. 16 within the primary memory.” (’108 patent at claim 1.) Accordingly, the use of

17. 17 the phrase “direct manipulation of contiguous and non-contiguous discrete data

18. 18 segments” merely summarizes the claim and does not “breath life” into the claims

19. 19 as Micron argues.

20. 20 Defendants next argue that the term “file system” as contained in the

21. 21 preamble is limiting. (Dkt # 43 at 21:8-22:6.) First, they argue that the term is

22. 22 limiting “in view of the patentee’s disclaimer of systems that access data in

23. 23 primary memory with FAT that is stored on the primary memory.” (Id. at 21:12-

24. 24 26.) The issue of disclaimer is discussed in the previous section. To the extent the

25. 25 Court finds there has been no disclaimer, Defendants’ argument that the use of the

26. 26 term “file system” in the preamble is limiting must similarly be rejected.

27. 27 Next, Micron confusingly argues that the term “file system” as contained in

28. 28 the preamble of claim 1 of the ’445 patent is limiting because it provides the only

Case 3:13-cv-02907-H-BGS Document 45 Filed 01/26/15 Page 9 of 12

1. 1 antecedent basis for the term “file system” as contained in dependent claims 3, 5, 7

2. 2 and 8 of the ’445 patent. (Id. at 21:27-22:6.) Again, this does not render the

3. 3 preamble of the ’108 patent limiting. First, e.Digital is not asserting the ’445

4. 4 patent in this case. Second, none of the dependent claims of the ’108 patent, which

5. 5 is the only patent asserted in this case, contain the term “file system.” Thus,

6. 6 Micron’s argument must be rejected.

7. 7 Even if Micron’s attempt to import its “antecedent basis” argument from the

8. 8 parent ’445 patent to the ’108 patent were proper, it does not lead to the automatic

9. 9 conclusion that the preamble is limiting. Catalina Mktg. Int’l v. Coolsavings.com,

10. 10 Inc., 289 F.3d 801 (Fed. Cir. 2002), which is relied upon by Micron, only states

11. 11 that “dependence on a particular disputed preamble phrase for antecedent basis

12. 12 may limit claim scope because it indicates a reliance on both the preamble and

13. 13 claim body to define the claimed invention.” Id. at 808. However, the Court still

14. 14 noted that, a preamble generally is not limiting when the claim body describes a

15. 15 structurally complete invention such that deletion of the preamble phrase does not

16. 16 affect the structure or steps of the claimed invention.” Id. at 809. Defendants have

17. 17 presented nothing in their brief to support a finding that the claim body does not a

18. 18 structurally complete invention as this Court has previously found.

19. 19 D. “Creating the Primary Memory From a Non-Volatile, Long-Term

Storage Medium, Wherein the Primary Memory Comprises a Plurality of Blocks in Which the Data Segments Are to be Stored”

Though Defendants concede they “generally are amenable to Plaintiff’s proposal,” Defendants do not propose a construction for this term aside from their flawed construction of the term “primary memory,” which is addressed above. Instead, they argue that the Court’s construction in the Mushkin case, which construction is proposed here by e.Digital, is not a construction at all. (Dkt # 43 at 22:7-23:9.) They argue that the construction does not shed light on what the inventors intended by use of the term “primary memory.” (Id. at 22:18-23:2.)

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PLAINTIFF’S RESPONSIVE CLAIM CONSTRUCTION BRIEF

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750 B STREET SUITE 2510 SAN DIEGO, CA 92101 TEL: 619.544.6400 FAX: 619.696.0323

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1. 1 e.Digital disagrees. The proposed construction reflects what e.Digital has argued

2. 2 from the outset – the claim limitations define the particular function of “primary

3. 3 memory” incorporated into flash memory as part of the invention.

4. 4 Defendants further argue that e.Digital’s proposed construction “reflects a

5. 5 rejection of the Plaintiff’s original proposal that “creating” in the term should be

6. 6 construed to mean ‘causing.’” (Id. at 23:3-4.) This is not so. As an initial matter,

7. 7 Defendants have withdrawn their request for a construction of the term “creating.”

8. 8 Suggesting that e.Digital has withdrawn its responsive construction of that term is

9. 9 therefore inappropriate. To the extent Defendants are inappropriately resurrecting

10. 10 their request for construction of the term “creating,” e.Digital’s position remains

11. 11 that the plain and ordinary meaning of the term “creating,” includes “causing.”

12. 12 This is consistent with e.Digital’s previous position with respect to the construction

13. 13 of the term “creating.” (See e.Digital v. Mushkin, et al., Case No. 3:13-cv-2897-H-

14. 14 BGS, Dkt # 32 at 10:13-13:22.)

15. 15 Finally, Defendants argue that, to the extent the term “creating” can be

16. 16 construed as “causing,” the alleged disclaimer of FAT that is stored on the primary

17. 17 memory would apply to this limitation “because, under such a construction, this

18. 18 term would relate to the memory management technique that enables flash memory

19. 19 to serve as primary memory.” (Dkt # 43 at 23:5-9.) As set forth above, the

20. 20 inventors did not “clearly and unambiguously” disclaim the use of FAT, whether

21. 21 stored in primary memory or otherwise.

22. 22 E. “data storage format”

23. 23 Once again, the parties’ dispute here boils down to one of scope. The parties

24. 24 seem to be in agreement that a data storage format relates to “how data is stored,”

25. 25 but are apparently in disagreement as to what that means. As set forth in

26. 26 e.Digital’s Opening Brief, the intrinsic evidence makes clear that a “data storage

27. 27 format” as that term is used in the patent refers not to the format of the file, which

28. 28 Defendants would like the term to encompass, but to the larger system by which a

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1. 1 device organizes data for storage and retrieval. (See, e.g., Ex. A (’108 patent) at

2. 2 1:5-9, 3:19-22 (“Another object is to enable the flash memory to store data so as to

3. 3 appear readable to industry standard information storage and retrieval operating

4. 4 interfaces and operating systems”) (emphasis added), 8:52-56 (“Although the

5. 5 present invention is able in a format which is readable by the IDE hard drive

6. 6 memory card interface, the underlying data is advantageously stored in

7. 7 accordance with the NORRIS FLASH FILE SYSTEM.” (Emphasis added)),

8. 8 8:56-61 (“Alternatively, the present invention makes possible a hybrid

9. 9 combination of the NORRIS FLASH FILE SYSTEM and the IDE hard drive

10. 10 memory card interface which follows more closely the conventional memory

11. 11 scheme of the IDE hard drive memory card interface.” (Emphasis added); see also

12. 12 Ex. B (’445 patent) at 8:38-60 (referring to the “Norris Flash File System” and its

13. 13 compatibility with DOS found on personal computers).)

14. 14 Accordingly, the Court should reject Defendants’ proposed construction and

15. 15 adopt its previous construction entered in the 1st Consolidated Group.

16. 16 II. CONCLUSION

17. 17 Based on the foregoing, e.Digital respectfully requests that its constructions

18. 18 be adopted by the Court.

22 Dated: January 26, 2015

Respectfully submitted.

HANDAL & ASSOCIATES

By: /s/ Gabriel G. Hedrick Anton N. Handal

Gabriel G. Hedrick Pamela C. Chalk Attorneys for Plaintiff e.Digital Corporation