Posting this document by no means is indicative of positive outcome of coming re- examination announcement by USPTO , but some due diligence for better understanding of strength of our# 774 patent.
Plaintiff
e.Digital Corporation (“e.Digital”) hereby submits its Responsive Claim Construction Brief.
I. Introduction
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., 415F.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.
