“activating a memory integrity test” (Claim 5 of ‘737 Patent)

e.Digital’s Proposed Construction “activating a test to verify whether memory is defective”

Defendants’ Proposed Construction

“starting a test, performed by the recording

device, of all memory segments in the flash

memory to determine whether one or more

segments of the flash memory is defective”

Defendants’ arguments are based on and require the introduction of the limitations of

claim 6 limitations into claim 5, which is the claim actually being construed. Both the claims

As set forth in e.Digital’s Opening Brief, Defendants have not explained why they

believe the term “operable” lacks sufficient clarity to be understood by one of ordinary skill in

the art and should be given a meaning that diverts from the plain and ordinary meaning. (Pl. Op.

Br. at 49). Because they did not provide any explanation, it would be prejudicial and unfair to

provide such an explanation for the first time in their Responsive Claim Construction Brief.

starts with the basic memory integrity test to simply verify whether the memory is defective.

((Exh. 2 (‘737 Patent) (attached to Pl. Op. Br.) at cl. 5). As described in the specification, “it

would be another improvement over the prior art if before recording a message, the recording

media could be tested to verify that it is non defective” and “Fig. 3A is a flowchart of the steps

for determining whether recording media is defective.” (Id. at 2:10-12 and 5:23-24 (emphasis

added)). Then, claim 6 adds additional steps to the basic memory integrity test including

specifically,

a) testing memory segments of the flash memory to determine whether said

segments can record and play a voice message, or are defective; and

b) marking defective memory segments so that the recording device will not

record to said segments.

(Id. at cl. 6). These two additional steps of testing specific memory segments and marking

defective memory segments are not found in claim 5. If they were, there would be no

differentiation between claims 5 and 6. Nevertheless, Defendants mistakenly propose that they

be read into claim 5.

Furthermore, claim 5 specifically requires that both the flash memory recording chip and

a hand held recording device take part in the memory integrity test. As the claim language itself

makes clear, the test starts when the flash memory recording chip is inserted into the hand held

recording device. (Id. at cl. 5). Defendants’ construction, which can be read to imply that the

memory integrity test is performed only by the recording device (i.e., without such insertion),

creates an unnecessary ambiguity .Finally, Defendants argue that e.Digital’s construction is unclear with respect towhat memory is being tested, i.e., the flash memory or the ROM. (D. Op. Br. at 36). The answer to this question is self-evident from the claim that states, “A method of testing the integrity of

memory on a removable flash memory recording medium chip . . . .” In light of this statement

in the claim, one of ordinary skill in the art would clearly understand that the memory integrity

test is a test of flash memory and not ROM. Defendants’ argument is a red herring for the

purpose of drawing attention away from the other deficiencies in their proposed construction.

Defendants’ original proposal for this construction included the word “only” --

“performed only by the recording device.” (Exh. 9 (attached to Pl. Op. Br.) at 5 (emphasis

added)). It is unclear whether Defendants have given up this argument or are preserving the

argument for another day. In any case, this issue should be resolved by simply refusing to adopt

Defendants’ ambiguous terminology that is contradicted by the claim itself.

(DOC 303)