e.DIGITAL responsive claim construction briefs
As explained in e.Digital Corporation’s Opening Claim Construction Brief (“e.Digital’s
Opening Brief” or “Pl. Op. Br.”) (D.I. 296), the Federal Circuit in Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) and later in Phillips v. AWH Corp., 415
F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) established a well-defined framework for conducting
claim construction. As this Court explained in A Major Difference, Inc. v. Erchonia Medical,
Inc.,1 a court first must consider the intrinsic record that includes the claim language, the
specification, and the prosecution history before the U.S. Patent and Trademark Office. A Major
Difference at 3. Then, if the intrinsic evidence does not resolve all ambiguity as to the meaning
of the claim language, a court may also consider extrinsic evidence. Id. at 4.
Although Defendants pay lip service to this framework in Defendants’ Opening Claim
Construction Brief (“Defendants’ Opening Brief” or “D. Op. Br.”) (D.I. 297), they then proceed
to ignore most of the intrinsic record -- namely, the claims and specification – and, instead, for a
majority of their constructions, they focus only on one discrete part of the intrinsic record -- the
prosecution histories of the Patents-in-Suit. And even then, the foundation of their prosecution
history-based arguments are dictionary definitions that cannot be found within the four corners
of the prosecution history and were never considered by the Patent Office. Lacking the clear,
unequivocal intrinsic record support from the prosecution history to achieve their intended
purpose, Defendants’ attempt to use the only dictionary definition actually discussed in the
prosecution history -- “flash memory” -- as the launching point for a series of extrapolations
from other dictionary definitions to try to narrow the scope of the key terms in the ‘774 Patent
beyond anything ever agreed upon between the Applicant and the Patent Office. In doing so,
Defendants really have no answer to the crystal clear meeting of the minds that occurred during
the Examiner Interview, as subsequently confirmed in writing by the Patent Examiner. In short,
Defendants’ Opening Brief is a thin first attempt at an analysis of the terms and phrases in
dispute, and accordingly, Defendants have failed to carry their burden with respect to each and
every construction they propose.
(Excerpts from Doc 303
