I woke up today to find not 1, but 2 emails from friends asking me to review a recent post from a known basher. I declined going to the website and suggested they not visit there anymore either. So, both of them emailed me the post, not knowing the other had. LOL

After reading, it’s painfully apparent the basher either hasn’t read the Applicant’s Argument and the PACER docs, doesn’t understand them, or perhaps a combination of both. Please understand that I am a layman with absolutely no legal training; with that said, I will attempt to address each argument the basher makes in his post regarding the strength of our case and then will be done with this matter. No rebuttals, no back and forth. That is what a basher wants…to cause people to doubt their investment and I’ll not be drawn in.

As a reference, I’ve pasted the basher’s post below between the lines:

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silversurfer except the truth is Edigital made the claims of main memory and flash instead of RAM. You keep trying to make it look like the defendants are just making this up to confuse the court but it was in FACT edig that claimed they used FLASH as MAIN MEMORY. from a document you have posted on your box site here is what it says inspite of how you claim the defendants are just making this [s]tuff up..

from the Applicants(EDIG) Arguments located in silversurfers boxnet under miscellaneous ...this was during the prosecution history which is part of evidence for the claims hearing and referenced by the defendants and not made up.

1) from page 8...."The combination of references and teachings is being applied against claims defining a hand-geld dictation device (approximately the size of a credit card), which uses flash memory as main memory"

2) from page 8 also....Furthermore, this reference teaches the use of floppy or hard disks as a storage medium, when the present invention is directed toward the use of flash memory as the main memory of the system.

3) from page 10....Applicant is unaware of any prior art teaching which uses flash memory without another memory system such as RAM.(this is a key claim as edig is claiming they are different and not obvious because they don't use RAM in the Flashback device)

4) from page 11.... As now defined, an important point of novelty of the present invention is the use of flash memory as the main memory of the system. (again Edig here is saying they are NOVEL because they use Flash as Main memory, this is their words folks)

5) from page 11....Microsoft denies being able to use flash memory in the manner used by the present invention because "it cannot be practically used as main memory (RAM)"

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Now, my comments. Yes, the Applicant (Mr. Norris) on several occasions stated flash memory is the main memory of the system in the Applicant’s Argument document located on my box.net page. What the basher doesn’t understand is that during the patent prosecution, Mr. Norris defines main memory as the flash memory used to store the received processed (past tense) sound electrical signals (see EDIG’s Claim Construction Brief, Doc 296, page 20, last paragraph). This definition is consistent with ‘774 patent claims 1 and 19. Mr. Norris NEVER defined main memory as RAM in the prosecution history. Mr. Norris NEVER stated his invention doesn’t use RAM. The only reference to equating main memory as RAM is found in the Microsoft Dictionary. So, Norris’ statements in the prosecution history that the ‘774 flash memory is main memory makes perfect sense. Once again, Norris’ meaning of flash memory in the ‘774 patent (and ‘737 patent) is the flash memory used to store the received processed signals.Past tense; storage of the data after it has been processed.

Then when the Examiner required Norris, “to include limitation that will expressly state that the flash memory is the sole memory to store the received processed sound electrical signals”, Norris agreed because he correctly understood this to mean the flash memory is the only (sole) memory used to store the received processed signals. This “sole” limitation required by the Examiner in no way disclaims the fact that the ‘774 patent requires RAM to perform the processing of the received signals into data and anyone of ordinary skill in the art would understand RAM is needed for processing.

Now, I’ll make comments in bold of each of the basher’s 5 excerpts above:

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1) from page 8...."The combination of references and teachings is being applied against claims defining a hand-geld dictation device (approximately the size of a credit card), which uses flash memory as main memory". Of course flash memory is main memory because flash memory and main memory mean the same thing. The memory used to store the received processed signals.

2) from page 8 also....Furthermore, this reference teaches the use of floppy or hard disks as a storage medium, when the present invention is directed toward the use of flash memory as the main memory of the system. Of course flash memory is main memory because flash memory and main memory mean the same thing. The memory used to store the received processed signals.

3) from page 10....Applicant is unaware of any prior art teaching which uses flash memory without another memory system such as RAM. (this is a key claim as edig is claiming they are different and not obvious because they don't use RAM in the Flashback device) Basher is wrong due to taking the statement out of context. In Doc 296, EDIG acknowledges the patent prosecuting attorneys statement, “…Applicant is unaware of any prior art teaching which uses flash memory without another memory system such as RAM” but argue this statement must be taken in context. Taken out of context this appears to mean the Applicant’s invention doesn’t use RAM at all (but the defendants own expert testified it did). Taken in context, the Applicant was talking about not using RAM to store the received processed signals, not in the processing of the sound electrical signals into data.

The context for the statement began during the in-person meeting between the inventor Mr. Norris, the Examiner and the prosecuting attorney. Mr. Norris demonstrated the Flashback product and the Examiner agreed to issue the patent if Mr. Norris 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.” Clearly the context of the statement “…Applicant is unaware of any prior art teaching which uses flash memory without another memory system such as RAM” is referring to not using RAM to store the received processed (past tense) sound electrical signals.

4) from page 11.... As now defined, an important point of novelty of the present invention is the use of flash memory as the main memory of the system. (again Edig here is saying they are NOVEL because they use Flash as Main memory, this is their words folks) Of course flash memory is main memory because flash memory and main memory mean the same thing.The memory used to store the received processed signals. The novelty is using flash memory instead of prior art storage methods such as tape cassettes, microcassettes, CD’s, floppy disks, hard disks, etc., to store the received processed signals in a handheld dictation device.

5) from page 11....Microsoft denies being able to use flash memory in the manner used by the present invention because "it cannot be practically used as main memory (RAM)". The part cited by the basher in quotation marks was stated by Microsoft, not by Mr. Norris. Norris is simply quoting the Microsoft Dictionary here. Norris is not saying main memory is RAM. Nor is he stating his invention doesn’t use RAM. Duh…LOL.

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The basher should re-read the Applicant’s Argument with the understanding that main memory simply means the flash memory module used to store the received processed signals (sheesh, did I beat that horse to death or what?). Perhaps then, he’ll have a better understanding of the issues at hand.

I remember during the Markman when defense expert Dr. Mihran put up a Powerpoint slide of a computer and how it functions.During cross-examination, Mr. Yungwirth asked him where in the slide RAM was shown. Mihran said it wasn’t explicitly shown in the diagram but the computer must have RAM to operate. Yungwirth said likewise in the ‘774 patent, RAM isn’t explicitly identified but it’s also a requirement. I almost busted out in laughter seeing that harpoon hit Mihran in his blowhole.

One more point I’d like to make. In the defenses’ Claim Construction Brief (Doc 297), they rely almost exclusively on the patent prosecution history to make their arguments. In Doc 296, DM cites the Phillips case which stresses that because the prosecution history is an ongoing negotiation between the Examiner and the Applicant, it lacks clarity and is less useful for claim construction.

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.