As a novel replacement of typical storage media of that time. Exactly right doni.

I highly encourage everyone to take the time to read the Claim Construction Briefs by plaintiff and the defendants. They are CO 19 Docs 296 and 297 respectively and are fascinating briefs.

Doc 296 is long at 61 pages but it is such a well-written document by DM that it should be required reading for all EDIG investors. The claim language in the patent should be the single most important reference the judge uses to rule on the claim constructions. Section III. A. 1. starting on page 9 reads:

1. The Claim Language

“In construing claims, the analytical focus must begin and remain centered on the language of the claims themselves, for it is that language that the patentee chose to use to ‘particularly point[ ] out and distinctly claim[ ] the subject matter which the patentee regards as his invention.’” Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (citing 35 U.S.C. § 112, ¶ 2); see Phillips, 415 F.3d at 1312 (“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to which the patentee is entitled the right to exclude.’”) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Thus, “[t]he starting point for any claim construction must be the claims themselves.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).

Notice the Phillips case is referenced. This is what Mr. Jameson was referring to when Profundo heard him tell the judge, “But we ALL learned something important from Phillips. We learned that we have to be very careful to give priority to what is contained within the patent and NOT give undue importance to what might be contained elsewhere." What Jameson means of course is the court should put more weight on the 4 corners of the patent itself in construing claims, as opposed to any other factor. His opinion is backed up by the court cases he cites above. And the judge said, “Phillips wasn’t my finest moment” since the Federal Appeals court reversed her ruling in this case. She won’t want to make a similar mistake again. Since the term “main memory” is not included anywhere in the 774 patent claims or specifications, I’m hopeful the judge will put more weight on what’s in the 4 corners of the patent and rule for our claim construction of the term “flash memory”.

e.Digital’s construction: “block erasable non-volatile memory”

Defendants’ construction:block erasable non-volatile memory that is the main memory of the system.

(Another interesting flaw DM points out in Doc 296 is the word “system” also doesn’t appear anywhere in either the 774 or 737 patents, yet they want the claim construction to include it.)

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Another reference the judge will likely use in determining her ruling is the patent specifications. Doc 296, section III. A. 2. on page 10 reads:

Courts should also consider the specification in construing a claim. See id. (“[C]laims ‘must be read in view of the specification, of which they are a part.’”) quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).

And on page 11:

Against this backdrop, however, is perhaps the most important tenant of claim construction: “[a] basic claim construction canon is that one may not read a limitation into a claim from the written description. . . . Although one may look to the written description to define a disputed term already in a claim limitation, ‘the resulting claim interpretation must, in the end, accord with the words chosen by the patentee to stake out the boundary of the claimed property.’” RF Delaware, Inc. v. Pacific Keystone Tech., Inc., 326 F.3d 1255, 1264 (Fed. Cir. 2003)

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Prosecution history is another reference the judge may use to help her rule. Doc 296, section III, A., 3., on page 12 reads:

3. The Prosecution History

In addition to consulting the specification, a court can also consider the patent’s prosecution history because the prosecution history can provide evidence of how the Patent Office and the inventor understood the patent. Phillips, 415 F.3d at 1317. “Yet because the prosecution history represents an ongoing negotiation between the PTO and the Applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.” Id. In consideration of the negotiation during the prosecution history, a patentee’s statements during prosecution history cannot create a disclaimer of claim scope, unless the statements convey a clear and unambiguous intent to narrow the claim’s scope.

Nowhere in the 774 patent prosecution exhibits (3a, 3b, 3c) that she received as evidence does it mention “main memory”. There is some 774 prosecution history that does contain this term and it’s discussed in Doc 296 but she didn’t accept it as evidence at the Markman hearing, so I’m not sure if she’ll consider it. Regardless of whether she does or not, the cases DM cites above make it clear that the patentee’s statements to the USPTO examiner must be clear and unambiguous if they are to narrow the claim’s scope. In Mr. Norris’ sworn declaration submitted to the court, he stated that he believed “main memory” to mean the memory that stores the received processed signals as opposed to RAM that is used to process the audio data. That’s what set his Flashback invention apart from other devices of the time that used different forms of magnetic cassette tapes to record audio.

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Finally, the judge may consider extrinsic evidence, such as expert testimony, in determining her ruling. Hopefully it won’t carry much weight. ;)

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Since the two main claim construction terms in dispute are “flash memory”, and “a flash memory module which operates as sole memory of the received processed sound electrical signals and is capable of retaining recorded digital information for storage in nonvolatile form”, the following pages should be a focus of your reading:

Doc 296, pages 18-31 for flash memory arguments.

Doc 296, pages 32-39 for flash memory module arguments.

Sorry for the dissertation!LOL