More information regarding Claim A.

A. “flash memory” (Claims 1, 2 and 19 of the ‘774 Patent and Claim 5 of the ‘737 Patent)

e.Digital’s Proposed Construction: block erasable non-volatile memory

Defendants’ Proposed Construction: block erasable non-volatile memory that is the main memory of the system

Both parties agree that flash memory is block erasable.Both parties also agree that flash memory is non-volatile memory. DM contends this agreement leads to the plain and ordinary meaning of flash memory as “block erasable non-volatile memory”. Defendants want the court to add the limitation, “…that is the main memory of the system” which is beyond the plain and ordinary meaning, even though those terms do not appear anywhere in the Patents-In-Suit. They are getting this limitation from the prosecution history however, it is unsupported by a “clear and unambiguous disclaimer by the patentee” (Doc 296).

The defendants paid expert Dr. Mihran stated he believed main memory as seen in the prosecution history meant RAM. Defendants are arguing that since flash memory means main memory, and main memory means RAM, that flash memory is a replacement for RAM in the Patents-In-Suit (RAM is used in the processing of the sound into electrical signals, not to store the processed signals). That is not what the Patent Examiner and Mr. Norris believed main memory meant. They believed main memory to mean, “the memory used to store the received processed sound electrical signals”. And there’s evidence to support their claim.

EVIDENCE 1. Claims 1 and 19 of the ‘774 patent describe the flash memory module as, “the sole memory of the received processed sound electrical signals”.

EVIDENCE 2. Figure 1 of the ‘774 patent. Both parties agree that sound is received by the microphone (item 20 in the diagram) and sent to the control circuitry (21) for processing. Defendants agree that the control circuitry (21) processes the audio signal. The control circuitry is comprised of several components, one of which is titled memory circuitry (24). Notice that memory circuitry (24) is different from the flash memory module (29). The memory circuitry (which IMO is RAM used during the processing of the sound into data) is definitely different from the flash memory module (used to store the received processed signals). This figure proves two things to me: (1) that the flash memory module is not used as a replacement for RAM, but rather to store the processed signals and (2) that there is RAM as evidenced by the memory circuitry (24) which is part of the control circuitry (21) used in the processing of sound into data.

EVIDENCE 3. Figure 2 of the ‘774 patent. This is an alternate diagram showing additional detail of the invention (Flashback). This shows the sound entering the microphone (20), then through a CODEC (42), then a DSP (41). The patent specification says the CODEC and DSP are part of the control circuitry (21) for “compressing digital signal for storage in the flash memory module”.The specification also teaches, “an additional significant feature of the device comprises the compression circuitry 41 and 42 coupled to the memory circuitry 24 (generally forming part of the control circuitry generally identified as 21) for storage in the flash memory module”.

There you have three strong, separate pieces of evidence direct from the patent itself that clearly show the flash memory module is used to store the received processed sound electrical signals, and not used in the processing of sound into data.

From Doc 296, page 26 (references omitted):

c. The prosecution histories of the Patents-in-Suit do not support the “main memory” limitation.

Defendants’ effort to import the phrase “that is the main memory of the system” into the construction of flash memory comes solely from the prosecution history. The law is crystal clear that reading from the prosecution history what is in effect an additional limitation, such as the one proposed by Defendants here, requires a clear and unmistakable intent to limit the claim, or stated differently, it must be an unambiguous disavowal of claim scope. However, the Federal Circuit has refused to apply the doctrine of prosecution disclaimer if the Applicant’s statements are “amenable to multiple reasonable interpretations” or otherwise are ambiguous.

From Doc 296, page 29 (references omitted):

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. The Examiner Interview Summary Record indicates that Mr. Norris conducted a demonstration during which they “showed how product worked.” That product is the Flashback product that uses RAM to process data for storage. 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). The operative words of this agreed amendment are “store the received processed sound electrical signal.” These words convey the understanding that the flash memory is the sole memory that receives for storage the already received and processed sound electrical signals; as opposed to the sole memory for processing and storage. If the Patent Examiner understood that claims to mean that flash memory was used as main memory in lieu of RAM to process the audio data, the proposed amendment would not have needed to refer to “memory to store the received processed sound electrical signal.” The Patent Examiner could have required a different amendment, such as the one Defendants seek to import into the claims. She did not.