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Supreme Court Ruling Seen as a Win for Patent Trolls
By Nancy Gohring, IDG News Jun 9, 2011 5:50 pm
The Supreme Court's decision on Thursday in the Microsoft vs. i4i case was anticlimactic and likely a disappointment to most technology companies, legal experts said.
The court didn't make it any easier for accused infringers to prove that a patent is invalid, as Microsoft had hoped. It did, however, make a minor change to the way patent cases proceed that could slightly benefit defendants.
The case began in 2007 when i4i sued Microsoft for infringing a patent covering a technology that lets users manipulate the architecture and content of a document. It said Microsoft infringed the patent by allowing Word users to create custom XML documents. In 2009, the U.S. District Court for the Eastern District of Texas ruled in i4i's favor and ordered Microsoft to stop selling Word products in the U.S. in their current form. Microsoft removed the feature in order to keep selling its software.
The suit eventually made it to the Supreme Court over the issue of burden of proof. Currently, when a patent holder accuses someone of infringing a patent, the burden is on the infringer to prove with "clear and convincing evidence" that the patent is invalid, said Sarah Columbia, head of the intellectual-property litigation practice at McDermott Will & Emery LLP.
Microsoft argued that when new evidence is presented that could invalidate a patent, the burden of proof should be lowered to a preponderance of the evidence, considered a less strict burden than clear and convincing evidence, she said.
The Supreme Court, however, upheld the lower court decisions that the burden of proof should continue to be applied.
Microsoft and others in the technology sector are likely to be unhappy with the ruling, said Paul Ackerman, a partner at Dorsey & Whitney LLP. While such companies have plenty of their own patents, they are more likely to be the subject of lawsuits, often lodged by so-called patent trolls, than to be defending their own patents. Patent trolls are companies that buy patents with the primary goal of asserting them for financial gain.
Organizations including Apple, Google, EMC, Cisco Systems and the Electronic Frontier Foundation had all filed documents with the court in support of Microsoft's argument.
Pharmaceutical companies, however, are likely to applaud the decision, Ackerman said. "They haven't seen these troll suits and they rely very heavily on patent protection to keep [generic brands] out," he said. "They invest lots of money and want their patents to be strong."
The Supreme Court did make one subtle change that could have an impact on patent cases, said Benjamin Hsing, an attorney at Kaye Scholer. It said that defendants can inform juries that they are looking at evidence that the patent office did not consider when it initially issued the patent. "That could have an influence on the jury," he said.
"Jury instructions will be the next battleground," he said.
The Supreme Court also said that it didn't have the power to make such a significant change to patent law and that companies such as Microsoft will have to take the issue to Congress if they want change.
If they do, they are unlikely to succeed, some experts said.
"It's been the way of litigating patent cases for 50 years. It's not changing," Ackerman said.
Companies across many industries were closely watching the case, which many expected to be one of the most important cases of the year. "It was anticlimactic," Hsing said. "People were expecting something big, a drastic sea change that didn't happen."
Nancy Gohring covers mobile phones and cloud computing for The IDG News Service. Follow Nancy on Twitter at @idgnancy. Nancy's e-mail address is Nancy_Gohring@idg.com
Supreme Court Ruling Seen as a Win for Patent Trolls
By Nancy Gohring, IDG News Jun 9, 2011 5:50 pm
The Supreme Court's decision on Thursday in the Microsoft vs. i4i case was anticlimactic and likely a disappointment to most technology companies, legal experts said.
The court didn't make it any easier for accused infringers to prove that a patent is invalid, as Microsoft had hoped. It did, however, make a minor change to the way patent cases proceed that could slightly benefit defendants.
The case began in 2007 when i4i sued Microsoft for infringing a patent covering a technology that lets users manipulate the architecture and content of a document. It said Microsoft infringed the patent by allowing Word users to create custom XML documents. In 2009, the U.S. District Court for the Eastern District of Texas ruled in i4i's favor and ordered Microsoft to stop selling Word products in the U.S. in their current form. Microsoft removed the feature in order to keep selling its software.
The suit eventually made it to the Supreme Court over the issue of burden of proof. Currently, when a patent holder accuses someone of infringing a patent, the burden is on the infringer to prove with "clear and convincing evidence" that the patent is invalid, said Sarah Columbia, head of the intellectual-property litigation practice at McDermott Will & Emery LLP.
Microsoft argued that when new evidence is presented that could invalidate a patent, the burden of proof should be lowered to a preponderance of the evidence, considered a less strict burden than clear and convincing evidence, she said.
The Supreme Court, however, upheld the lower court decisions that the burden of proof should continue to be applied.
Microsoft and others in the technology sector are likely to be unhappy with the ruling, said Paul Ackerman, a partner at Dorsey & Whitney LLP. While such companies have plenty of their own patents, they are more likely to be the subject of lawsuits, often lodged by so-called patent trolls, than to be defending their own patents. Patent trolls are companies that buy patents with the primary goal of asserting them for financial gain.
Organizations including Apple, Google, EMC, Cisco Systems and the Electronic Frontier Foundation had all filed documents with the court in support of Microsoft's argument.
Pharmaceutical companies, however, are likely to applaud the decision, Ackerman said. "They haven't seen these troll suits and they rely very heavily on patent protection to keep [generic brands] out," he said. "They invest lots of money and want their patents to be strong."
The Supreme Court did make one subtle change that could have an impact on patent cases, said Benjamin Hsing, an attorney at Kaye Scholer. It said that defendants can inform juries that they are looking at evidence that the patent office did not consider when it initially issued the patent. "That could have an influence on the jury," he said.
"Jury instructions will be the next battleground," he said.
The Supreme Court also said that it didn't have the power to make such a significant change to patent law and that companies such as Microsoft will have to take the issue to Congress if they want change.
If they do, they are unlikely to succeed, some experts said.
"It's been the way of litigating patent cases for 50 years. It's not changing," Ackerman said.
Companies across many industries were closely watching the case, which many expected to be one of the most important cases of the year. "It was anticlimactic," Hsing said. "People were expecting something big, a drastic sea change that didn't happen."
Nancy Gohring covers mobile phones and cloud computing for The IDG News Service. Follow Nancy on Twitter at @idgnancy. Nancy's e-mail address is Nancy_Gohring@idg.com
Is Apple's "icloud" and i4i's HUGE victory today over Microsoft good for WiLAN?
It "could" bode well for WiLAN that WiFi networks will be the delivery system for Apple's iCloud, that will store mobile apps, documents and other information in the cloud and share it across multiple iOS devices...More
http://www.fiercebroadbandwireless.com/story/apples-icloud-accelerate-wi-fi-offload/2011-06-09?utm_medium=nl&utm_source=internal
__________________________________________________________________
It "could" also bode well for WiLAN that the U.S. Supreme Court ruled against Microsoft Corp on Thursday in its appeal of a record $290-million (U.S.) jury verdict for infringing a small Canadian software firm’s patent.The justices unanimously upheld a U.S. appeals court’s ruling that went against the world’s largest software company in its legal battle with Toronto-based i4i.More:
http://www.theglobeandmail.com/report-on-business/microsoft-must-pay-torontos-i4i-in-patent-suit/article2053417/
The high court rejected Microsoft's argument to adopt a lower standard to replace the long-standing requirement that a defendant in a patent infringement case prove by clear and convincing evidence that a plaintiff’s patent is invalid.This is a key part that could affect WiLAN's motions in their V-Chip litigation.
Now that i4i has won its case against Microsoft, a huge cloud of doubt has disappeared. That's a risk that many big institutional investors would want to stay away from, because it could have been a game changer.
The next major catalyst depends on WiLAN's V-chip case with LG. If the analysts are right, and Wi-Lan wins a settlement, this could provide a windfall between 140M and 200M.
Given a 30%(+/-?) contingent fee, that would average between 98M (140M x 70%) and 140M (200M x 70%) in revenue for Wi-LAN.
Take another 15% off for overhead (this percentage reduced because of the contingent fee) and suddenly there's between 83.3M and 119M in earnings.
Divide that out by a 6 year contract, and it comes to between 14M and 20M in earnings per year and an EPS between .13 and .18.
Given a P/E of 15, this alone should bump up the share price by $1.95 to $2.70. On top of the price target of $10.00, it could mean close to a value of $13 by year end, on top of potential layering of revenues in the next couple years through newpatent licensing agreements through Gladios and dividend increases.
BTW,the CIBC report from Feburary has an estimated value of remaining V-Chip deals to worth $18.48 million in annual revenues. That means not only LG but Sony, Samsung & Sharp as well. It list's the estimated value of current V-Chip deals to be $37.78 million.
FYI...Calix vs. WiLAN dismissed June 8th
June 08, 2011 00:00
Order Dismissing Case
Document: 96
ORDER OF DISMISSAL WITH PREJUDICE. Signed by Judge Charles R. Breyer on 6/7/2011. (beS, COURT STAFF) (Filed on 6/8/2011)
http://www.law360.com/cases/4d89096cfa708c7ff3000002/dockets
Per AP..At 1PM Today,WILN was #7 of the Top 10 Gainers on Nasdaq today...nice!
NEW YORK (AP) --
A look at the 10 biggest percentage gainers on Nasdaq at 1 p.m.:Coffee Holding Co. rose 40.1 percent to $11.91.ImmuCell Corp. rose 20.3 percent to $5.75.ChipMOS Technologies Ltd. rose 13.9 percent to $10.02.Synutra International Inc. rose 11.6 percent to $10.20.Double Eagle Petroleum Co. rose 10.9 percent to $7.73.Hollysys Automation Technologies Ltd. rose 9.9 percent to $8.42.Wi-LAN Inc. rose 9.5 percent to $7.28.Amerco Inc. rose 9.5 percent to $94.51.BGC Partners rose 9.4 percent to $8.05.DNB Financial Corp. rose 8.8 percent to $10.17.
CEO Jim Skippen on BNN June 9 at 9:50AM/Here's the link to the interview...Enjoy !
http://watch.bnn.ca/#clip481799
Removable wireless expansion card patent with reference for patents 774 & 108
This patent published in Nov, 2009 and it points to application of e.DIGITAL patents in regard to all kind of REMOVABLE MEMORY in portable / wearable media player and closed - case removable expansion card at the highest level of functionality . Please look at the bolded paragraphs.
http://www.freshpatents.com/-dt20091119ptan20090287870.php
Removable wireless expansion card having a removable subscriber information module
Abstract: The utility and operation of portable hosts, such as PDAs and other portable computers, is enhanced by methods and devices employing a first-level removable module adapted to receive a second-level removable module with subscriber services information. The first-level removable module processes received messages and services based at least in part on the contents of the subscriber services module.?Agent: Patentventures - Sckt - Georgetown, TX, US?Inventors: Kevin J. Mills , Michael L. Gifford USPTO Applicaton #:20090287870
Class - 71301 USPTO
Removable wireless expansion card having a removable subscriber information module description/claims
?The Patent Description & Claims data below is from USPTO Patent Application 20090287870, Removable wireless expansion card having a removable subscriber information module.
CROSS REFERENCE TO RELATED APPLICATIONS
This application is a continuation of U.S. Non-Provisional patent application Ser. No. 10/774,760 (Docket No. SC. 2002.11, filed Feb. 9, 2004, now U.S. Pat. No. 7,454,541) entitled REMOVABLE WIRELESS EXPANSION CARD HAVING A REMOVABLE SUBSCRIBER INFORMATION MODULE, which is a continuation of U.S. Non-Provisional patent application Ser. No. 10/036,048 (Docket No. SC. 2002.01, filed Jan. 7, 2002, now U.S. Pat. No. 6,691,196) entitled FIRST-LEVEL REMOVABLE MODULE HAVING BAR CODE I/O AND SECOND-LEVEL REMOVABLE MEMORY and a continuation of U.S. Non-Provisional patent application Ser. No. 09/309,373 (Docket No. SC. 1999.1, filed May 11, 1999, now U.S. Pat. No. 6,353,870) entitled CLOSED CASE REMOVABLE EXPANSION CARD HAVING INTERCONNECT AND ADAPTER CIRCUITRY FOR BOTH I/O AND REMOVABLE MEMORY.
FIELD
The invention is related to closed-case removable expansion cards for computer hosts, such cards having particular application to portable computer hosts such as handheld computing devices.
BACKGROUND
The broad use of portable host computers, including Personal Digital Assistants (PDAs), has been severely hampered by limited capabilities for expansion or customization. Expansion and application customization has been performed via only one, or at most two, slots for removable expansion cards for I/O, I/O adapters, memories, and memory adapters. Memory expansion cards have included DRAM, SRAM, ROM, and Flash technologies. I/O expansion cards have included dedicated peripherals, networking, modems, wireless communications, serial I/O, and bar-code and other scanners.
Having only one slot meant choosing between memory or peripheral expansion. In two-slot implementations, one of the slots is generally used for peripheral expansion, and the other for memory expansion. As market forces and consumer demand are pushing future PDAs to be ever smaller, allocating packaging volume for two-slots will be increasingly viewed as a costly and nonviable solution.
Memory and Expansion Card Standards
Two of the most popular industry standards for the slots and removable cards are the PC Card and the CompactFlash Card. The PC Card has a 16-bit variant, previously known as a PCMCIA card, and a newer 32-bit variant, also known as a Card-Bus card. U.S. Pat. No. 5,815,426 (\'426), ADAPTER FOR INTERFACING AN INSERTABLE/REMOVABLE DIGITAL MEMORY APPARATUS TO A HOST DATA PART, assigned to Nexcom Technology, and hereby incorporated by reference, describes these and other removable expansion card and memory types suitable for PDAs. In addition to the PC Card and CompactFlash Card formats, the \'426 patent includes discussions of and references to Miniature Cards, Sold State Floppy Disk Cards (SSFDCs), MultiMediaCards (MMC), Integrated Circuit (IC) Cards (also known as Smart Cards), and Subscriber Identification Module (SIM) Cards.
CompactFlash Card
FIGS. 1A, 1B, and 1C are different views of a prior art Type II CompactFlash Card. The CompactFlash physical, electrical, and software interface architecture is taught in the CompactFlash Specification Revision 1.3, Copyright 1998, by the CompactFlash Association, P.O. Box 51537, Palo Alto, Calif. 94303, which is hereby incorporated by reference. FIGS. 1A, 1B, 1C, part of 6A, and part of 6B are reproduced or derived from the CompactFlash Specification document.
U.S. Pat. No. 5,887,145 (\'145), REMOVABLE MOTHER/DAUGHTER PERIPHERAL CARD, assigned to SanDisk Corporation, and hereby incorporated by reference, describes the required features of host systems for CompactFlash Cards, including controllers required by CompactFlash memory cards (CF cards) and comprehensive controllers required by CompactFlash memory and I/O cards (CF+ cards).
MultiMediaCard
FIGS. 2A and 2B represent a prior art MultiMediaCard form factor and its pad definitions. FIG. 3A and 3B represent the prior art internal architecture of a generic MultiMediaCard and its registers. FIG. 4A illustrates the prior art functional partitioning of a generic MultiMediaCard system. FIG. 5 illustrates the prior art physical partitioning of a generic MultiMediaCard system.
The MMC and MMC related system issues are taught in the MultimediaCard System Summary Version 2.0, Copyright January 1999, by the MultiMediaCard Association, 19672 Stevens Creek Blvd., #404, Cupertino, Calif. 95014-2465, which is hereby incorporated by reference. FIGS. 2A, 2B, 3A, 3B, 4, 5, and part of 6A are reproduced or derived from the MultimediaCard System Summary document.
FIGS. 6A and 6B are different views comparing the form factors of the prior art CompactFlash Card (top) and MultiMediaCard (bottom). In each of 6A and 6B, the CompactFlash Card and the MultiMediaCard are both roughly to equal scale.
Adapters for Removable Memories
Adapters exist or have been prophetically disclosed for physically and electrically coupling a removable memory on a slide, or stick, to a portable host via a removable expansion card of either the PCMCIA Card or CompactFlash Card form factors. The previously mentioned \'426 patent describes such removable memory adapters. The focus of these existing memory adapters has been limited to merely providing an interface adapter, or bridge, between a first interface type (the host to removable-expansion-card interface) and a second interface type (the removable memory stick).
PC Card Mother and CompactFlash Card Daughter Combinations
Adapters exist or have been prophetically disclosed that comprise a special mother PC Card designed to accept one or more daughter CompactFlash Cards of one or more types. The previously \'145 patent describes such CompactFlash adapters. The focus of these existing mother/daughter combinations has also been limited. First, the daughters have been used for memory expansion for the host platform, primarily in the form of flash-memory-based mass-storage-like devices. In this first approach, the mother card provides the requisite mass-storage controller functionality. Second, the daughters have been used for dedicated peripheral, I/O, or communication functions. In this second approach, the mother card has a so-called comprehensive controller that augments the mass-storage controller functionality with functions commonly required or useful to multiple daughter cards. Third, in a variation of either of the first two paradigms, functions of the general-purpose host may be relocated to the mother card.
Background for PC-Card Based I/O Functions
Techniques are known in the art for making and using systems that perform such I/O functions in a PC card. For example, see U.S. Pat. No. 5,671,374 (\'374), PCMCIA INTERFACE CARD COUPLING INPUT DEVICES SUCH AS BARCODE SCANNING ENGINES TO PERSONAL DIGITAL ASSISTANTS AND PALMTOP COMPUTERS, assigned to TPS Electronics, which is hereby incorporated by reference. The \'374 patent teaches the use of PDAs and similar hosts equipped with PC card interfaces for I/O devices including portable laser-scanners, magnetic stripe and ink readers, keyboards and keypads, OCR devices, and trackballs.
Techniques are also known in the art for making and using PC Card-based radios for applications based in a portable host. For example, see U.S. Pat. No. 5,519,577 (\'577), SPREAD SPECTRUM RADIO INCORPORATED IN A PCMCIA TYPE II CARD HOLDER, assigned to Symbol Technologies, and hereby incorporated by reference.
Techniques are also known in the art for making and using disk emulation devices based on flash memory. For example, see U.S. Pat. No. 5,291,584 (\'584), METHODS AND APPARATUS FOR HARD DISK EMULATION, assigned to Nexcom Technology, and hereby incorporated by reference.
Background for Relevant Application Specific Functions
Techniques are known in the art for making and using systems that download or capture compressed digital audio for storage and later playback using dedicated removable media. For example, U.S. Pat. No. 5,676,734 (\'734), SYSTEM FOR TRANSMITTING DESIRED DIGITAL VIDEO OR AUDIO SIGNALS, assigned to Parsec Sight/Sound, and hereby incorporated by reference, teaches a system for transmitting digital video or audio signals over a telecommunications link from a first to a second party. In addition, U.S. Pat. No. 5,579,430 (\'430), DIGITAL ENCODING PROCESS, assigned to Fraunhofer Gesellschaft zur Foerderung der angewandten Forschung e.V., and hereby incorporated by reference, teaches processes for encoding digitized analog signals. Such processes are useful for insuring high-quality reproduction while reducing transmission bandwidth and data storage requirements.
Techniques are also known in the art for making and using record and playback portable host devices based on a dedicated flash memory. For example, see U.S. Pat. No. 5,491,774 (\'774), HANDHELD RECORD AND PLAYBACK DEVICE WITH FLASH MEMORY, assigned to Comp General Corporation, and hereby incorporated by reference, and U.S. Pat. No. 5,839,108 (\'108), FLASH MEMORY FILE SYSTEM IN A HANDHELD RECORD AND PLAYBACK DEVICE, assigned to Norris Communications, also hereby incorporated by reference.
Limitations of Previous Approaches
In general purpose portable hosts, populating an expansion slot has meant choosing one of either removable memory or peripheral expansion for that slot. When used for memory expansion, the removable memory has been limited to use for the system or application software running on the host. In essence, the removable memory has only been used as host-dedicated memory. This was done either directly, e.g., as some portion of the main-memory of the host, or indirectly as an emulation substitute for host mass-storage (i.e., disk drives).
When used for I/O expansion, the expansion I/O-cards have not had access to a private removable media/memory. This has prevented portable computer hosts, such as PDAS, from being used as a customizable platform for many application-specific functions that require a removable memory dedicated to the application.
SUMMARY
The utility of portable computer hosts, such as PDAS, is enhanced by methods and apparatus for closed-case removable expansion cards having a removable memory in both a first and second embodiment. In both the first and second embodiments the closed-case removable expansion cards preferably use a Type II CompactFlash form factor. In the first embodiment the removable memory is in combination with an external-I/O connector or permanently attached external-I/O device, providing both I/O and memory functions in a single closed-case removable expansion card. This increases the expansion functional density for portable computer hosts, such as PDAS. That is, it increases the amount of functionality that can be accommodated within a given volume allocation for expansion devices. It also provides a viable alternative to 2-slot implementations.
In the second embodiment the removable memory is a private memory for application specific circuitry within the closed-case-removable expansion card. This enhances the utility of portable computer hosts, such as PDAS, as universal chassises for application specific uses. The standard CompactFlash physical and electrical interface couples the application specific card to the host, which provides user interface functions for the application. The cards include a top located slot and an internal connector for accepting a MultiMediaCard as the private removable memory. In addition, the application specific card will generally have some manner of I/O to required external devices, such as scanning devices, sensors, or transducers. Otherwise, all functionality for the application specific function is self-contained within the application specific card.
Particular application specific cards for customizing general purpose PDAs via the instant invention include a media-player card for digitized media stored on removable memory and a bar-code-scanner card having scanning data stored on removable memory.
BRIEF DESCRIPTION OF DRAWINGS
FIGS. 1A, 1B, and 1C are different views of a prior art Type II CompactFlash card.
FIGS. 2A and 2B represent a prior art MultiMediaCard form factor and its pad definitions.
FIGS. 3A and 3B represent the prior art internal architecture of a generic MultiMediaCard and its registers.
FIG. 4A illustrates the prior art functional partitioning of a generic MultiMediaCard system.
FIG. 5 illustrates the prior art physical partitioning of a generic MultiMediaCard system.
FIGS. 6A and 6B compares the form factors of the prior art CompactFlash card (top) and MultiMediaCard (bottom).
FIG. 7 illustrates a PDA equipped with a removable expansion card having both I/O and removable memory in accordance with the present invention.
FIG. 8 illustrates some of the various types of I/O for which the PDA and removable expansion card of FIG. 7 may be equipped.
FIG. 9 is an abstract drawing representing the removable expansion card of FIG. 7 separate from the PDA, and with the I/O and memory disengaged from the removable expansion card.
FIG. 10 is an abstract drawing representing the construction detail of the upper and lower frame of the removable expansion card of FIG. 7.
FIG. 11 is an abstract drawing representing an exploded view of the removable expansion card of FIG. 7, including the outer frame, inner PCB, and connectors.
FIG. 12A is an abstract drawing representing a view of the removable expansion card of FIG. 7, with the outer frame removed, and a removable memory roughly aligned with the contact fingers to which it mates within the removable expansion card.
FIG. 12B is an abstract drawing representing a cut away side view of the removable expansion card of FIG. 7, with the removable memory inserted into the removable expansion card.
FIG. 13A is an abstract drawing representing an end view silhouette of the removable expansion card of FIG. 7.
FIG. 13B is an abstract drawing representing a cross-sectional view silhouette of the upper frame member of the removable expansion card of FIG. 7.
DETAILED DESCRIPTION
Components of the Expansion Card
FIG. 9 is an abstract drawing representing a closed-case removable expansion card 100, i.e., an expansion card that may be inserted into and removed out of a closed-case computer host. The card is especially suitable for use in a portable host, such as a PDA. In accordance with the present invention, the expansion card of FIG. 9 includes a connector 141 for I/O interconnect and a slot 121 for a removable memory. FIG. 9 shows the I/O interconnect 140 and removable memory 120 disengaged from the removable expansion card.
FIG. 10 is an abstract drawing representing the construction detail of the upper 105 and lower 110 frame members of the removable expansion card 100 of FIG. 9. An opening 111 is provided in the lower frame 110 for receiving the connector 141 for I/O interconnect.
FIG. 11 is an abstract drawing representing an exploded view of the removable expansion card 100 of FIG. 9, including the outer frame, inner PCB 115, and connectors. Visible for the first time in the view of FIG. 11, a second opening 113 is provided in the lower frame 110 for receiving the connector 150 for host interconnect. Additionally, a slot 112 is provided on both sides of the opening 111 to aid in the alignment and retention of the connector 141, and a slot 114 is provided on both sides of opening 113 to aid in the alignment and retention of the connector 150. An opening 116 is provided in the PCB for receiving the connector 141.
FIG. 12A is an abstract drawing representing a view of the removable expansion card 100 of FIG. 9, with the outer frame members removed, and a removable memory 120 roughly aligned with the contact fingers 180 to which it mates within the removable expansion card. Circuitry 160 is provided, including I/O adapter circuitry, removable memory adapter circuitry, and application-specific circuitry. A support shelf 170 supports, aligns, separates, and isolates the underside of the contact fingers 180 from the circuitry 160.
FIG. 12B is an abstract drawing representing a cut away side view of the removable expansion card 100 of FIG. 9, with the removable memory 120 inserted into the removable expansion card.
FIG. 13A is an abstract drawing representing an end view silhouette of the removable expansion card 100 of FIG. 9. FIG. 13B is an abstract drawing representing a cross-sectional view silhouette of the upper frame member 105 of the removable expansion card 100 of FIG. 9. Guides 190 provide alignment and support for removable memory inserted via slot 121.
In a preferred embodiment, the expansion card 100 and associated host connector 150 are compatible with the Type II CompactFlash Card as described in the previously referenced CompactFlash Specification. The I/O connector 141 is compatible with a PC-Card industry standard Honda-style 15-pin connector. The slot 121, removable memory 120, and removable memory adapter circuitry of circuitry 160, are compatible with the MultiMediaCard as described in the previously referenced MultiMediaCard System Summary.
Circuitry on the Expansion Card
In a first embodiment of the invention, circuitry 160 includes I/O adapter circuitry and removable memory adapter circuitry. The I/O adapter functionality may include one or more of, but is not limited to, Ethernet, serial port, audio, telephone, antenna, and special-function interfaces such as bar code and other scanners. The removable memory adapter functionality may include one or more of, but is not limited to, main memory expansion, mass-media emulation, and other host-based special-purpose memory applications.
In accordance with a second embodiment, circuitry 160 further includes application-specific circuitry for which the management of the removable memory is an ancillary function to the primary function of the specific application. Specific examples of such application-specific expansion cards having both I/O and removable memory are provided in later sections.
In preferred implementations of both of the first and second embodiments mentioned above, the functions performed by the removable memory are those of a MultiMediaCard adapter as illustrated in the MultiMediaCard adapter section of the MultiMediaCard system architecture diagram of FIG. 4. If the removable memory is being used to provide host-base memory expansion, such as described for the first embodiment, then the host must provide the functionality illustrated by the Application and Application Adapter sections of FIG. 4. If the removable memory is being used at least sometimes as an ancillary memory (at least sometimes private) to the application-specific circuitry contained on the expansion card, such as for the second embodiment, then the application-specific circuitry must provide the Application and Application Adapter section functionality, or else the application-specific circuitry must call on host services for such functionality.
Examples of known techniques for making and using other types of memory adapter circuitry for closed-case expansion cards or with flash memory are found in the previously referenced \'145, \'426, \'584, \'774, and \'108 patents, among others. Examples of known techniques for making and using I/O adapter and application-specific circuitry for functions implemented in closed-case expansion cards and with flash memory are found in the previously referenced \'374, \'577, \'774, and \'108 patents, among others.
Frame Kit Assembly
The top and bottom frames may be composed of metal or plastic. In a preferred embodiment, the top and bottom frame portions each have a plastic base augmented with an outer metal plate over much of the interior region of the large panel surface of each portion. The metal plate extends to the edges of the panel at the connector ends of each portion and is attached to both connectors. In addition, smaller metal strips, or ears, on both sides at the finger-grip end (opposite to the host connector) extend from the plate to the edges of the panel and continue onto the sides. The frame kit is assembled and the side strips are sonically welded together on both sides of the casings. The welded strips and plates form a single continuous metal band around the top and bottom frames that permanently physically retains the assembled kit.
I/O Interconnect Options
I/O devices may be interconnected with the expansion card via three different embodiments. First, a PC-Card industry-standard Honda-style 15-pin connector may be used with a mating detachable cable. Detachable cables are preferred for light-duty applications where a continuous I/O device connection is neither needed nor desired. Second, a fully integrated fixed cable, having a molded strain relief may be used. Such a fixed cable maintains solid contact in high vibration environments, is protected against lateral stress, and seals out dust. Fixed cables are preferred for dedicated industrial or field applications. Third, at least a portion of the I/O device may be abutted and attached (often via a snap-in-place mechanism) directly to the expansion card, obviating the need for either a detachable or fixed cable. Cableless snap-on I/O devices are preferred for small mostly self-contained I/O devices that permit a compact PDA, expansion-card, I/O-device combination that handles physically as a single piece of equipment. In the instant invention, such snap-on I/O devices must make allowance for the removable memory.
PDA having Application Specific Card with Removable Media
FIG. 7 illustrates a PDA 200 equipped with a removable expansion card 100 having both I/O interconnect 140 and removable memory 120 in accordance with the present invention. The application specific circuitry of the expansion card may be used in conjunction with application specific software running on the PDA. This permits the application specific circuitry of the expansion card to make use of the output (e.g., display, sound) and input (e.g., tablet, buttons, any I/O ports) capabilities of the PDA for user interface functions associated with the specific application. In particular the PDA\'s display/input-tablet provides for virtual controls and visual indicators for the application. FIG. 8 illustrates some of the various types of I/O for which the PDA and removable expansion card of FIG. 7 may be equipped. Application-specific functions may include special-function mixed-signal electronics, special-function I/O, special-function data-pumps, and special-function accelerators.
Application Specific Embodiments Generic Removable Media Applications
The present invention enables general-purpose portable hosts to perform application-specific functions requiring dedicated ROM. A first large ROM-based application category is that of prerecorded media, such as music, audio, video, and text (for books, newspapers, and other publications). A second large ROM-based application category is customization for programmable devices, such as games, language translators, and other devices having “personality” modules.
The present invention also enables general-purpose portable hosts to perform application-specific functions requiring non-volatile read/write memory for data-capture, data-logging, data-checkpoints or backups, transaction logging, and data-transport.
In the illustrated embodiments the non-volatile read/write memory is flash memory in accordance with the standard MultiMediaCard. Such removable flash-memory-based application-specific functions have particular utility to medical and other data acquisition, secure commerce, financial and personal productivity devices making use of unique removable memories for each of multiple individuals, projects, or accounts.
The removable flash-based memory is also well suited where “sneaker-net” is a viable data transport. Provided manual/user intervention is acceptable, and depending on the speed of data link I/O incorporated into the expansion card, the physical transport of a removable memory device between a PDA-based expansion card and an external system may provide the best solution to fast local transport of large data-sets. For similar reasons, the use of removable memory devices may provide the best solution to rapidly reconfiguring an application-specific expansion card to initiate a large program or use a large data sets. The use of labeled, color-coded, or otherwise distinctive, removable memory devices also may provide the best solution for ease of use for users needing to select a particular program or data set from many for reconfiguring an application specific expansion card.
Specific Application Examples Media Player Application
The present invention permits a general purpose PDA to be customized (specially adapted) for use as a portable/wearable media player, at the highest-level of functionality not unlike a portable Compact Disk player. Such a player uses the removable memory to store and playback digitally encoded media such as music, audio, or video. In a preferred embodiment the player makes use of the MPEG Layer 3 standard for digital audio encoding, generally known as MP3. Another embodiment makes use of the Microsoft Digital Audio standard. Other aspects of a preferred embodiment include an integral AM/FM receiver, a connector for a headset with an integral antenna for the receiver, and an auto-start on insert feature that initiates the media playback upon insertion of the removable memory. The PDA\'s display/input-tablet provides the virtual controls and visual indicators for the media player.
Module For Subscriber Services
In accordance with the present invention, an expansion card having I/O and removable memory is inserted into a computer host. The I/O is coupled to a receiver capable of receiving a large number of broadcast messages and services. The removable memory contains subscriber services information for each individual user. The expansion card uses the subscriber services information to filter out messages and services not applicable to the present status of the subscriber. The PDA\'s display/input-tablet provides the virtual controls and visual indicators for the display and access of captured messages and services.
Bar-Code Scanning Application (a backup storage example)
In accordance with the present invention, an expansion card having I/O and removable memory is inserted into a computer host, a bar-coding peripheral is connected to the I/O portion of the card, and a removable memory card is inserted into the memory slot of the card. After each scan the scanned information is transferred through the I/O connection to the host computer for processing. Additionally, a backup copy of the scanned information is stored on the removable memory. Should the computer host fail or should the operator need to verify scans, the backup can be interrogated with the same or a different host.
Personal Environmental and Medical Monitoring Devices
The present invention permits a general purpose PDA to be customized as a portable/wearable personal environmental monitor. Equipped with the appropriate sensors and application-specific circuitry for sensor signal processing, such a device performs time-stamped data logging of environmental attributes such as ionizing radiation, temperature, and humidity. Similarly, a portable/wearable personal medial monitor data logs health-related attributes such as pulse, temperature, respiration, and blood pressure. The PDA\'s display/input-tablet provides the virtual controls and visual indicators for the monitoring devices.
Automotive and Industrial Diagnostic Monitoring and Control
The combined I/O interconnect and removable memory of the present invention also permits a general purpose PDA to be customized (specially adapted) for use as a data logging diagnostic monitor or time-based control device. It is known that the diagnostic connectors of certain vehicles can be adapted to interface with PDAs for real-time monitoring of critical vehicle subsystems. The present invention permits such diagnostic monitoring data to be communicated via the I/O interconnect and logged to the removable memory. Such a tool facilitates tracking subsystem performance over extended periods of time, and permits real-time and deferred graphics of time-varying system performance attributes. The PDA\'s display/input-tablet provides the virtual controls and visual indicators for the diagnostic monitor.
CONCLUSION
Although the present invention has been described using particular illustrative embodiments, it will be understood that many variations in construction, arrangement and use are possible within the scope of the invention. For example the number of I/O interconnects, removable memories, contact fingers, number and type of application-specific circuits, and the size, speed, and type of technology used may generally be varied in each component of the invention. The invention is not limited to the standard CompactFlash form factor, but other closed-case removable expansion card form factors are equally applicable. Nor is the invention limited to use of the standard MultiMediaCard, as other types of removable memory or media may also be employed. Functionally equivalent techniques known to those skilled in the art may be employed instead of those illustrated to implement various components. The present invention is thus to be construed as including all possible modification and variations encompassed within the scope of the appended claims.
More from Barry Richards of Paradigm Capital.a compelling comparison...
As Barry Richards' report points out.....WiLAN's peer group P/E multiples for 2012 are as follows:
Mosaid............. 11.5x
Qualcomm........ 16.9x
Interdigital....... 14.3x
RPX.................. 35.7x
Acacia.............. 20.8x
Average......... 19.8x
FYI/FWIW/JMHO....
P/E based on today's closing share price/ projected 2012 eps of .80 is 8.6x.
Given WiLAN's "significant"pending settlements/litigation and anticipated reduced litigation costs in light of recent court actions, it might be rational to conclude that revenues will be 10% higher than the existing 2012 projection and expenses may be 10% lower.
The above would mean an eps of 1.00 rather than .80 (JMHO)
1.00 x 19.8 (Peer group multiple) = $19.80 share price.
Furthermore, as Jim Skippen pointed out at the 5/25 Investor's meeting in Santa Monica recently, unlike several of our competitors whose revenues are "lumpy",...
WiLAN's revenues/earnings are "more predictable" given our "quarterly" licensing revenue stream business model.
Come what may, WILN/WIN appears to be grossly underpriced. (JMHO)
Still lots of Juice Left
The company reported Q1 results which were in line with our expectations.
Highlights from the conference call and outlook are:
? Regarding on-going litigation matters LG? V-Chip will likely be the first out of the gate. LG is reneging on an agreement which they had previously signed. Given LG? market share we expect the figure will be in the US$50-$55M range. The case may be decided on a „ummary judgement?basis, given its merits. In turn the decision may come sooner, thus avoiding the costs and time delays associated with a trial.
? We expect the LG settlement will likely trigger the top TV OEMs (who are in a wait and watch mode) to license V-chip technology. We expect this cumulative settlement to be in the range of US$120- $150M.
? The bluetooth trial against TexasInstruments has a discovery conference scheduled next month, although the trial (if both parties go through all the 15 rounds of the bout) could take ~2 years. We see a significant probability of an earlier settlement, given that several top tier names in the Texas case already settled with WiLAN in January/February.
? Potential revenue exists with companies such as Apple, Sanyo and Kyocera who have yet to sign licenses. WIN? portfolio has grown to 1300 patents, including 320 patents acquired from Motorola. A deeper portfolio means the demonstrability of multiple breaches by the plaintiff (WIN), increasing the possibility of a win and pressure for the defendants to settle.
? WIN is flush with cash of US$193M at quarter? close. We expect another ~US$50M prior to the end of 2011 due to the dramatic decrease in litigation expenses from a US$11M+ level, per quarter, to US$3M level. Needing only US$100M to demonstrate balance sheet strength, WIN will have US$150M to play with in making acquisitions – a square in which the company is active. They are evaluating several opportunities and we expect that any acquisition to have „icenses and cash earnings?thus making it near accretive and strategic in nature. Given WIN? acquisition philosophy, at least US$250M in future settlement potential would be a very conservative assumption.
Conclusion and Recommendation
? WIN? management has delivered a string of successes and has executed consistently thereby surpassing street expectations. By following a low risk approach to growth they have essentially protected investors equity for the past 5 years, since its IP incarnation. There is significant runway left before the company matures on the growth path. The bottom line looks set to inflect just based on the dramatic decrease in litigation expenses as described above. We expect this growth alone to deliver additional EPS in Q2 FY 2011 onward. We are still working on an organic growth model despite that fact that a significant acquisition, of a portfolio or a company, is evident. With our organic model, and using an ultra-conservative multiple of ~12.0x 2011 adjusted EPS estimates of ~US
.70, adding ~US$1.60 in cash, one easily reaches a $10/share. Our comparison is even more compelling at 2012 adjusted EPS levels of US$1.02. Investors should note that with modest fixed opex and ability to scale much higher with the current headcount, WIN only has to add additional revenues of ~US$38M (net of litigation expenses) over 2011 levels. This level can be easily achieved with any one settlement, such as LG. We reiterate our Strong Buy and $10.00 per share target price.
WiLAN bulking up with cash
Sales to double in 2011 after 300 patents added in quarter
By James Bagnall, Ottawa Citizen June 7, 2011
Ottawa-based WiLAN Inc. appears well on track toward meeting its projected sales target this year of $110 million to $115 million (all figures U.S.). The patent licensing firm Monday reported record revenues of $26.3 million for its first quarter ended March 31, up 66 per cent compared with the same period a year earlier.
Earnings soared to $19.8 million, compared with just $1.1 million in the first quarter of 2010.
WiLAN chief executive Jim Skippen reminded analysts Monday he had long predicted that his willingness to sue technology heavyweights for using WiLAN patents would one day pay off. "The first quarter marks the start of that return to WiLAN and its shareholders," he said.
WiLAN not only added more than 300 technology patents to its portfolio during the quarter - bringing the total to 1,300 plus - it also scored several major legal victories south of the border.
The result: WiLAN signed a series of patent licensing deals with key wireless firms such as Cisco Systems, Intel Corp. and Motorola Mobility. The stream of royalties and other payments arising from these deals began in earnest in the first quarter and are expected to increase in years to come.
There may be more on the way. WiLAN is pursuing four more big court cases including: LG Electronics of South Korea (V-chip technology patents), HTC of China (CMDA and OFDM patents), TexasInstruments (Bluetooth technology) and Ericsson, Sony-Ericsson, Alcatel-Lucent and HTC (3GPP wireless base station technology).
Given WiLAN's impressive legal wins earlier this year, the odds of pre-trial settlements in all or most of these cases are likely good.
Even assuming no contribution from these ongoing suits, WiLAN is expected to more than double revenues in 2011 compared with the $50.7 million in sales it recorded last year.
The consensus estimate by analysts surveyed just prior to the release of first quarter earnings called for a revenue jump of 127 per cent in 2011, followed by a further 25 per cent rise in 2012, according to Thomson Reuters.
At the same time, WiLAN is looking at reduced legal bills. In part this is because the big cases settled to date this year were immensely complicated proceedings, which meant that preparing for trial consumed a lot of cash.
First quarter litigation costs for the company were $11.4 million compared to just $3.8 million in the same period a year earlier.
Although WiLAN faces the possibility of new trials, the company says the issues involved are more straightforward and therefore less expensive to litigate.
Despite heavy legal expenses, WiLAN generated $11 million in cash from company operations in the first quarter.
Combined with $72 million in net proceeds from the sale of common shares, the company substantially boosted its cash position to $192.9 million at the end of March, more than double where it was just three months earlier.
This naturally prompts questions about what Skippen plans to do with his war chest.
He hinted there may be some interesting developments in the near future.
"More players with significant patents are coming to us," he has stated.
Skippen explained that the holders of these patents were seeking WiLAN's expertise in extracting royalties from those who were using the patents.
"They're asking us if it would be possible for us to work together," Skippen said.
"And we're looking at that."
Skippen also noted he was "working hard on a number of possible acquisitions" of patents, as well as purchases of firms that owned patents.
Despite the first-quarter results, which were slightly better than analysts had forecast, not to mention a newly acquired listing on New York's Nasdaq exchange, WiLAN's share price slipped seven per cent Monday to close at $6.76 on the TSX.
A possible explanation: against the backdrop of a declining stock market generally, investors may not have liked Skippen's unwillingness to once again bump up the firm's revenue and earnings guidance for 2011.
© Copyright (c) The Ottawa Citizen
Read more: http://www.ottawacitizen.com/WiLAN+bulking+with+cash/4903389/story.html#ixzz1ObH81FLa
Conjecture on Patent Portfolio, Share Price Rationale, and U.S Analysts Coverage
1) A conjecture on Patent Portfolio...
WiLAN states that they have 40 "families" of patents within their existing portfolio, and it appears that the highly successful attempted and/or finalized enforcement has only involved 7-8 of those families'. The vast majority of the remaining families (32-33 of them) have yet to be asserted.
The conference call and analysts questions seemed to only be concerned with current litigations and new acquisitions and not on future litigations coming out of the vast "pre-2011 portfolio".
It could be argued that some of the low-hanging fruit may have already been picked, but even without the a) new Motorola patents, b) the new acquisitions,c) Gladious, d) pending acquisitions of other firms... there is still extraordinary room for growth from those untapped "families" waiting to be enforced.
2) A conjecture on Share Price Rationale...
The "not too distant future" acquisition plan has been clearly stated by Jim Skippen. In the conference call, he reiterated that WiLAN was seriously looking at "several" acquisitions. Even if just one of those "deals" is already in "advanced" mode, then the share/cash ratio may well have been "already set".
A runnaway WiLAN share price makes such a deal less palatable to the company being acquired, so it would not be unusual to see WiLAN's shares trade in a narrow range (near the deal price prior to the announcement). Therefore, if a deal is looming, it would price WiLAN at just above the "Bought Deal"price. Bottom line, WiLAN's "run" to 8.00+ may have been unexpected, and therefore the "push back down".
3) A conjecture on U.S. Analysts' Coverage...
Since WiLAN's arrival onto Nasdaq was not via an IPO or a Secondary, existing volume levels may not be conducive for large institutional investors to buy in without creating upward price volatility. However, WILN's existing share price may be so undervalued that U.S analysts coverage may begin sooner rather than later.
Obviously, analysts want to initiate coverage of a new stock at a low valuation with a "Buy" rating so that when the stock heads north, anaysts will get credit from their own firm and ultimately from those institutional investors to whom they recommend the stock.
CEO Jim Skippen on CBC News, Lang & O'Leary
Go to the link below...
Click the Lang & O'Leary Exchange Part I
June 7th. (upper right, for now)... (49:22 in duration)
The discussion on WiLAN and interview with Jim Skippen is at about 25:20-30:40
http://www.cbc.ca/video/#/News/Business/Lang_&_O'Leary_Exchange/1319430780/ID=19\
79435295
It was DM's Matthew Yungwirth who was plaintiff's attorney in the Phillips federal appeal case
MR.JAMESON:And,Your Honor, Iknow you are well versed in claim construction.
THE COURT: Not so much. Phillips was not my bestmoment.
MR. JAMESON: Actually, Your Honor, it was a good
moment 'cause it helped us a lot. And what Phillips actually
told us was, we got to start with the claims. And then we need
to look at the claims against the specification. And we might
then go to the prosecution history if it's in evidence, but the
prosecution history, we got to be real careful about that,
because it can be ambiguous at times; and so we don't hang our
hat on the prosecution history unless there is a disclaimer
that is clear, unmistakable, unambiguous, and we got all the
cases cited in the briefing.
And here's what the intrinsic record teaches us. The
patent examiner and the applicants reached an agreement that a
narrowing amendment would result in a patentable invention that
overcomes Schroder and the Microsoft Dictionary definition.
And the examiner laid out exactly what that narrowing amendment
was. And nowhere in that narrowing amendment that the patent
examiner laid out is there anything about that is the main
memory of the system or without another memory system such as
RAM. The examiner made crystal clear that if you amend the
claims, that the flash memory is the sole memory of the
received processed, past tense. Once we've gone through all
the processing, it's the sole memory for storage of the
received processed electrical signals, you've got a patentable
invention.
-----------------------------------------------------------------------
U.S. District Court
District of Colorado (Denver)
CIVIL DOCKET FOR CASE #: 1:97-cv-00212-MSK-CBS
Phillips v. AWH Corporation, et al
Assigned to: Judge Marcia S. Krieger
Referred to: Magistrate Judge Craig B. Shaffer
Demand: $0
Case in other court:
03-01269FC
03-01286FC
Cause: 35:271 Patent Infringement
Date Filed: 02/03/1997
Date Terminated: 12/20/2006
Jury Demand: Plaintiff
Nature of Suit: 830 Patent
Jurisdiction: Federal Question
Plaintiff
Edward H. Phillips
represented by
Alexander Garlin
Garlin, Driscoll & Murray, LLC
245 Century Circle
#101
Louisville , CO 80027-9439
303-926-4222
Fax: 303-926-4224
Email: agarlin@gdhlaw.com
TERMINATED: 02/14/2006
LEAD ATTORNEY
Carl F. Manthei
Carl F. Manthei, Attorney at Law
1205 Seventeenth Street
Boulder , CO 80302-6315
303-442-5496
Email: carlmanthei@comcast.net
TERMINATED: 02/14/2006
LEAD ATTORNEY
Don R. Mollick
LaRiviere, Grubman & Payne, LLP-Seattle
P.O. Box 21649
1402 3rd Avenue
#1414
Seattle , WA 98111
206-332-0743
Fax: 206-332-0746
Email: dmollick@lgpatlaw.com
TERMINATED: 11/30/2006
LEAD ATTORNEY
Douglass F. Vincent
Vincent & Cooksey
1526 Spruce Street
#210
Boulder , CO 80302
303-442-2000
TERMINATED: 03/02/1999
LEAD ATTORNEY
F. David LaRiviere
LaRiviere, Grubman & Payne, LLP-Monterey
P.O. Box 3140
19 Upper Ragsdale Drive
#200
Monterey , CA 93942-3140
831-649-8800
Fax: 831-649-8835
Email: fdlariviere@lgpatlaw.com
TERMINATED: 11/30/2006
LEAD ATTORNEY
Micheal Shane Edgington
M. Shane Edgington, P.C.
10606 Clarke Farms Drive
Parker , CO 80134
303-668-4607
Fax: 303-805-5629
Email: mselaw@comcast.net
TERMINATED: 10/12/2007
LEAD ATTORNEY
Robert W. Payne
LaRiviere, Grubman & Payne, LLP-Monterey
P.O. Box 3140
19 Upper Ragsdale Drive
#200
Monterey , CA 93942-3140
831-649-8800
Fax: 831-649-8835
Email: rpayne@lgpatlaw.com
TERMINATED: 11/30/2006
LEAD ATTORNEY
Allen L. Greenberg
Duane Morris LLP-Atlanta
1180 West Peachtree Street
#700
Atlanta , GA 30309
404-253-6900
Fax: 404-253-6901
Email: algreenberg@duanemorris.com
TERMINATED: 04/16/2008
Brent Antoni Capehart
LaRiviere, Grubman & Payne, LLP-Monterey
P.O. Box 3140
19 Upper Ragsdale Drive
#200
Monterey , CA 93942-3140
831-649-8800
Fax: 831-649-8835
Email: bcapehart@lgpatlaw.com
TERMINATED: 11/30/2006
James Christopher Schroeder
LaRiviere, Grubman & Payne, LLP-Seattle
P.O. Box 21649
1402 3rd Avenue
#1414
Seattle , WA 98111
206-332-0743
Fax: 206-332-0746
Email: jschroeder@lgpatlaw.com
TERMINATED: 09/11/2006
John C. Herman
Coughlin Stoia Geller Rudman & Robbins LLP-Atlanta
3424 Peachtree Road
#1650
Atlanta , GA 30326
404-873-3900
Fax: 404-876-4476
Email: jherman@csgrr.com
TERMINATED: 04/16/2008
Mark Enger Saliman
Don, Galleher & Saliman, P.C.
1737 Gaylord Street
Denver , CO 80206
303-572-1668
Fax: 303-572-0900
Email: dgs@dgslegal.com
ATTORNEY TO BE NOTICED
Matthew S. Yungwirth
Duane Morris LLP-Atlanta
1180 West Peachtree Street
#700
Atlanta , GA 30309
404-253-6900
Fax: 404-253-6901
Email: msyungwirth@duanemorris.com
TERMINATED: 04/16/2008
Michael A. Ruderman
Michael A. Ruderman, LLC
4331 Snowberry Court
Boulder , CO 80304
303-939-8998
Fax: 303-939-8747
Email: mike@mikeruderman.com
TERMINATED: 02/13/2006
Michelle A. Pinkowski
Hensley Kim & Holzer, LLC
1660 Lincoln Street
#3000
Denver , CO 80264
720-377-0770
Fax: 720-377-0777
Email: mpinkowski@hkh-law.com
TERMINATED: 10/12/2007
Shelley B. Don
Don, Galleher & Saliman, P.C.
1737 Gaylord Street
Denver , CO 80206
303-572-1668
Email: dgs@dgslegal.com
ATTORNEY TO BE NOTICED
Watson Wheelwright Galleher
Don, Galleher & Saliman, P.C.
1737 Gaylord Street
Denver , CO 80206
303-572-1668
Fax: 303-572-0900
Email: dgs@dgslegal.com
ATTORNEY TO BE NOTICED
V.
Defendant
AWH Corporation
a Delaware corporation
Link and subsequent full text to latest MH filing..FWIW/FYI....
Doc 385 (26 pages) uploaded to box.net.
http://www.box.net/shared/bz4d8bjeok
06/02/2011 385 MOTION for Protective Order - Stipulated Motion for Entry of Stipulated Supplemental Protective Order for Source Code by Plaintiff e.Digital Corporation. (Yungwirth, Matthew) (Entered: 06/02/2011)
Judicial vacancies in Colorado
February 7, 2011
DPCC Fact Sheet: Judicial Vacancy Crisis
Judicial vacancies in our federal courts are reaching historic highs. There are currently 104 vacancies on federal district and circuit courts, forty-nine of which are determined to be judicial emergencies by the non-partisan Administrative Office of the U.S. Courts, which means there are simply not enough judges on the bench to do the work of the district or the circuit. This means justice and fairness is delayed-and often denied- for those in need, from working mothers seeking timely compensation for their employment discrimination claims to communities hoping for swift injunction of corporate environmental polluters to small business owners seeking protection from unfair and anti-competitive practices.
In Colorado, Vacancies Impact Businesses Waiting for Civil Rulings, As Well as Rural and Tribal Communities. Describing judicial vacancies in Colorado last year, Sen. Mark Udall said, “Judicial understaffing in Colorado has a real impact on the residents and businesses in our state. As the caseload increases for each judge, more and more time must be devoted to criminal cases - this is because of the Constitutional guarantee of a speedy trial. But as time and energy shifts to clearing the criminal docket, the civil docket suffers. It continues to become increasingly difficult to schedule a trial in Colorado as the backup grows longer. This increased caseload has a significant impact on our rural and tribal communities around the state as well.” [Udall Press Release, 7/29/10]
http://democrats.senate.gov/newsroom/record.cfm?id=330943
06/02/2011 385 MOTION for Protective Order - Stipulated Motion for Entry of Stipulated Supplemental Protective Order for Source Code by Plaintiff e.Digital Corporation. (Yungwirth, Matthew) (Entered: 06/02/2011)
Plaintiff e.Digital Corporation (“e.Digital”) and Defendants Pentax of America, Inc.;
Hoya Corporation; Hoya Corporation USA; Canon USA, Inc.; Canon, Inc.; Coby Electronics
Corp.; DXG Technology (U.S.A.), Inc.; DXG Technology Corporation; HTC America, Inc.;
HTC Corporation; Imation Corporation; Kyocera Communications, Inc.; Kyocera Wireless
Corporation; Kyocera International, Inc.; Kyocera Corporation; Leica Camera, Inc.; Marantz
America, Inc.; D&M Holdings U.S. Inc.; D&M Holdings, Inc.; Nokia, Inc.; Nokia Corporation;
Panasonic Corporation Of North America; Panasonic Corporation; Sakar International, Inc.;
Samson Technologies Corp.; and Vtech Electronics North America, LLC (the “Moving
Defendants”) hereby submit the following Stipulated Motion for Entry Of Stipulated
Supplemental Protective Order For Source Code. In support of this Motion, e.Digital and the
Moving Defendants state as follows:
CERTIFICATE OF CONSULTATION
Pursuant to D.C.COLO.LCivR 7.1(A), e.Digital initiated the meet and confer process
regarding the subject matter of this Motion. On May 6, 2011, e.Digital and the Moving
Defendants agreed to jointly seek the relief requested herein.
MOTION
1. Fed.R.Civ.P. 26 (c) authorizes the Court to provide protection against public
disclosure of confidential or trade secret information.
2. Plaintiff has requested the production of source code. By stipulating to this
motion, Defendants do not concede that source code is relevant to any issue in this case.
3. Source code is considered by at least some Defendants or non-parties to be highly confidential. Because source code is difficult to create, but easy to copy, the provisions of the........(more)
From DOC 328 , Dec 14 , 2010
Statement summarizing the parties' discussions regarding the possibilities for promptly settling or resolving the case.
The parties certify that, as required by Fed. R. Civ. P. 26(f), they have discussed the possibilities for a prompt settlement or resolution of the case by alternative dispute resolution.
Plaintiff contends that mediation following an initial round of discovery may be productive.Defendants contend that mediation following the
Markman Order may be productiveDefendants assert that a Markman Order from the Court will not only clarify and narrow the
issues in dispute, it will significantly improve the likelihood that the parties can settle or otherwise resolve the case.
Defendants therefore believe that the earlier a Markman Order is
issued, the quicker this case will be settled or resolved.
Objective thoughts from a thoughtful poster on another board...
"...Eeveryone (even judges) tends to look for ways to cut corners or streamline their workload. Consider the discovery decision that is also still pending. Unless or until the case moves forward, I doubt there will be a ruling on that one.
I just had a thought as to another way to look at this... If the first two claims WERE dispositive (favorable to the defendants), one would think that the judge would want to get that ruling out ASAP so that the case might be cleared from the docket that much quicker. My only fear is that the judge hasn’t even begun to review our case yet, although the longer it goes, the less likely that is.
I consider averages for ‘complex’ cases to be meaningless since we really have no way of knowing whether our case would merit that designation. I can think of many things that would be much more complex than whether or not there is another memory system in the device for example. I think we’re well into the realm of "any day now" for the ruling.
Plus we can reasonably expect the 10K in the next couple weeks. That should show the TEAC settlement. Hopefully we also hear a lot more regarding new technology/business and the Innovations Group soon.
Never(sorry,not "Nose")you have private mail...
Nose.Yu have private mail on IHUB from me...John/jtdiii
WILN goes on Nasdaq tomorrow 6/1/2011...
postyle...
The WILIF trading and symbol on OTC:Pink sheets will "fade to black"
And CEO Jim Skippen will be ringing the Nasdaq bell tomorrow morning....Yes...your shares will be moved accordingly...no worries.
It should be a VERY interesting day...6/1/2011...record volume..with the combination of (WIN:TSX) and (WILN:Nasdaq)
I'm in for the long haul...styln' with wiln...
John/jtdiii
Go ahead and laugh...I can take it...
I see a triple here from Mid May 2011 to Mid May 2012...my own personal 1 year exit point ..at $20.00 USD
Interesting day...WIN up 4.52% and WILIF up 5.18%...
Symbol.........BID...........ASK..........LAST..........HIGH........VOLUME...........MKT CAP (CAD/USD)
WIN............7.87..........7.88..........7.87..........7.98.........2,638,485........974,358,000 (CAD)
WILIF.........8.05..........8.10..........8.09...........8.16...........143,650.........996,580,200 (USD)
As mentioned in my earlier post today...
It would be beneficial to Wi-lan's.(WILN:Nasdaq) emergence onto Nasdaq (next week?),if the company(WILN:Nasdaq) entered Nasdaq with at least a $1 billion USD market cap...
This may provide more robust access to a wider scope of U.S. investment fund interest.(JMHO)
WAGs....With Apple/Dell/HP/etal settlements still pending and with the recent filing by McKool Smith on the Texas Roickert Docket back in 4th qtr 2010 against Comcast/Time Warner...and still more to come from Wilan's extensive patent arsenal, I think that we'll be in for some extraordinary gains.(JMHO)
FWIW...It will be "interesting" to see to what extent a clever interprter of public filings will be able to "calculate" the specific value of the recent Cisco renewal...and others.
Upcoming events/guesstimated dates..(JMHO)
2011 First Qtr conference call on Monday 6/6/2011
2011 Nasdaq entry should happen no later than Thursday 6/9/2011 (JMHO)
2011 Second Qtr conference call on Tueday 9/6/2011 (JMHO)
2011 Third Qtr conference call on Monday 12/5/2011 (JMHO)
2011 EOY Guidance should occur on Thursday 2/9/2012 (JMHO)
2011 Fiscal report should be announced Monday 3/5/2012.(JMHO)
Share price advances almost always arrive in advance of news, and JMHO... there's a lot more 'stealth' news out there.
AND....Think about THIS.....
WILIF:OTC Pink Sheets..Avg 10 day volume 95,000+/- (gone no later than 6/9/11(JMHO)
WIN:TO..........................Avg 10 day volume 1,800,000 +/-
WILN:nasdaq.................Avg 10 day volume...???? (begins no later than 6/9/2011(JMHO)
SOMETHING has to give. There'll be Canadian WIN profit taking in June (big surprise)as a result of the new Nasdaq demand source, but (WILN:Nasdaq) buying pressure will obviously be "substantially" more than with (WILIF :OTC Pink Sheets).
Wild Arse Guesses......End of Month shareprice CAN/USD.(JMHO)...
It's okay to laugh...Go ahead...I'm an American (with really thick skin)...I can take it.(LOL)
End of Month
.5/11....6/11....7/11....8/11....9/11....10/11....11/11....12/11...1/12....2/12.....3/12
.7.97....9.00...10.15...11.35..12.50...13.70....14.85.....16.00...17.25..18.40..19.50....(WIN:TO)
8.15....9.20...10.40...11.60..12.80...14.00....15.20.....16.40...17.60..18.80...20.00...(WILN:Nasdaq)
It's nice to be aboard...and I'm hopeful that we'll be able to lookforward to seeing Jim Skippen's smiling face at the Nasdaq opening bell...
I'm in for the long haul...I see astounding near, intermediate and long range growth ahead...(JMHO)
Stay strong....
John/jtdiii
Investment Summary – High margin business model with large revenue potential promises strong future earnings growth.
Business Overview – Elements of WiLAN's business that should be understood by investors include:
WiLAN generates revenues from licensing technology intellectual property.
Inventions in our portfolio are licensed by companies that manufacture or sell a wide range of communication and consumer electronics products including 3G cellular handsets, Wi-Fi-enabled laptops, Wi-Fi/DSL routers, xDSL infrastructure, WiMAX base stations, Bluetooth-enabled devices and digital television receivers.
Over 250 companies, including Cisco, Nokia, Panasonic, Samsung, RIM, Infineon, Fujitsu, Sharp, Sony and Toshiba, have licensed WiLAN technologies.
The amount paid by a licensee generally depends on the volume of products sold by the licensee and the royalty rate applicable to each product.
Most license agreements call for the payment of quarterly running royalties which generate long-term recurring revenue. Agreement terms typically vary from 5 - 10 yrs.
WiLAN provides annual revenue, operating expense and pro forma earnings guidance.
Revenue guidance considers revenue that is expected to be collected in the fiscal year from both signed agreements and agreements that are expected to be signed during the fiscal year.
WiLAN will, from time-to-time, use litigation to pursue compensation from companies that profit from the use of our technologies but which refuse to negotiate a reasonable license agreement.
Investment in a given litigation, which typically spans multiple years, can generate a considerable return, however, as in all litigation there are risks. These risks are described in WiLAN’s current Annual Information Form which is available at www.sedar.com.
Cash generated by operations typically funds the required investment in litigation.
WiLAN believes that maintaining a strong balance sheet, is desirable to fund technology acquisitions and as an insurance that WiLAN can defend its rights in court, if necessary.
Investment Highlights
Dividend paying growth stock: $0.10 annual eligible dividend.
Solid business growth: Cash revenue increased from $2.1M in FY06 to $50.7M in FY10 (184% CAGR); Over 250 companies licensed.
High margin business model: Low overhead business can enjoy high margins; Operations can generate significant cash flow (FY08: $26.6M in revenue, $12.2M generated by operations).
Significant future revenue potential: Large markets to be licensed; 4 patent families have generated the majority of revenues to date, Over 35 families have recently been added to licensing program.
Valuable and growing patent portfolio: Over 1300 issued and pending patents covering technologies in large markets, portfolio has grown more than 20X since the beginning of FY07.
Robust growth strategy: Examine portfolio to identify new licensing programs; Generate additional revenues through licensing partnerships, acquire patent portfolios with existing revenue streams or ones capable of generating revenue in short-term; Broker non-strategic assets; Research and development supports future licensing programs.
All financial amounts in Canadian dollars, unless otherwise specified.
From a respected/thoughtful poster on another board...
"Waiting for other people to catch up to what we already know and putting their investment dollars on the line"
"Exactly"....
"If we get a favorable Markman ruling, I think the word will get out and investors will begin to catch up. Even if settlements don’t happen for months afterward, our stock in the meantime will have become much less risky... and for many investors, a real tipping point between just watching from the sidelines and taking the plunge themselves."
"DM taking our case on contingency told people something. Settlements told them a little more but (since they were regarded as "nuisance") not quite enough. A judgment in our favor tells the world that there is something here of real value in more certain terms."
"For some investors, it will still not be enough until/unless we see 8-figure settlements. For others it will."
I like just about everything about this company.
Streetstylz...
I revved up my due diligence several weeks ago and have been adding to my position ever since. The more I learned about this little company, the more appealing it became.
I look forward to listening (via remote) to CEO Jim Skippen's speech tomorrow on 5/25 at the B. Riley & Co Investor Conference in Santa Monica, which coincidentally begins right after the bell (4PM EDT/1PM Pacific). Who knows?
The recent run-up has been impressive and I'm assuming this has been due in part to the upcoming Nasdaq listing in late May/early June as well as significant pending IP settlements. It appears that "no one" wants to go to trial with us, even the big boys. (JMHO)
The fortunate timing of the conference (by invitation only to both institutional investors and individual whale investors ) together with the Nasdaq listing should make for some interesting times ahead...(JMHO)
If the company discloses a few more major settlements via McKool Smith, then Wall Street should finally take notice of what appears to be enormous near, intermediate, and long term upside potential. (JMHO)
It's nice to be aboard
John/jtdiii
"MR. JAMESON: Your Honor, e.Digital is willing to
proceed with the plain, ordinary meaning of the remainder of
the claim terms as would be understood by one of ordinary skill
in the art." .
Now if you look at latest USPTO ( united states patent and trademark office) in the section 2111.01
( at the bottom of this page ) in regard to Plain Meaning and Patentability you will appreciate following paragraphs
" "[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Phillips v. AWH Corp., *>415 F.3d 1303, 1313<, 75 USPQ2d 1321>, 1326< (Fed. Cir. 2005) (en banc).
You will find two important items in these paragraphs , The ordinary skill in the art at the time of the invention,
i.e.,as of effective filing date of the patent application, also this reference was from Phillips v. AWH Corp (2005) en banc ruling.
As e.DIGITAL attorney emphasized the patent and its intent stands because of its intrinsic definition you will appreciate following paragraphs ;
In construing claim terms, the general meanings gleaned from reference sources, such as dictionaries, must always be compared against the use of the terms in context, and the intrinsic record must always be consulted to identify which of the different possible dictionary meanings is most consistent with the use of the words by the inventor.
in the specification, the term should be given its broadest reasonable interpretation >consistent with the intrinsic record< and take on the ordinary and customary meaning attributed to it by those of ordinary skill in the art.
The ordinary and customary meaning of a term may be evidenced by a variety of sources, >including "the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art."< Phillips v. AWH Corp., If extrinsic reference sources, such as dictionaries, evidence more than one definition for the term, the intrinsic record must be consulted to identify which of the different possible definitions is most consistent with applicant's use of the terms.
As you review this guideline they are expressing for example if there is no explicit definition given for the term in the specification, then the term should be given its ordinary meaning and broadest reasonable interpretation ( Both intrinsic evidence and the Plain meaning of the term).
Based on above, my layman opinion is, we should get favorable Markman ruling if not all but at least on couple of key claims issues. All depends on judge krieger opinion , Again she needs to follow and abide the guideline !
United States Patent and Trademark Office
2111.01 Plain Meaning [R-5] - 2100 Patentability
III. < "PLAIN MEANING" REFERS TO THE ORDINARY AND CUSTOMARY MEAN-ING GIVEN TO THE TERM BY THOSE OF ORDINARY SKILL IN THE ART
"[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Phillips v. AWH Corp., *>415 F.3d 1303, 1313<, 75 USPQ2d 1321>, 1326< (Fed. Cir. 2005) (en banc). Sunrace Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298, 1302, 67 USPQ2d 1438, 1441 (Fed. Cir. 2003); Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 67 USPQ2d 1132, 1136 (Fed. Cir. 2003)("In the absence of an express intent to impart a novel meaning to the claim terms, the words are presumed to take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art."). It is the use of the words in the context of the written description and customarily by those skilled in the relevant art that accurately reflects both the "ordinary" and the "customary" meaning of the terms in the claims. Ferguson Beauregard/Logic Controls v. Mega Systems, 350 F.3d 1327, 1338, 69 USPQ2d 1001, 1009 (Fed. Cir. 2003) (Dictionary definitions were used to determine the ordinary and customary meaning of the words "normal" and "predetermine" to those skilled in the art. In construing claim terms, the general meanings gleaned from reference sources, such as dictionaries, must always be compared against the use of the terms in context, and the intrinsic record must always be consulted to identify which of the different possible dictionary meanings is most consistent with the use of the words by the inventor.); ACTV, Inc. v. The Walt Disney Company, 346 F.3d 1082, 1092, 68 USPQ2d 1516, 1524 (Fed. Cir. 2003) (Since there was no >express< definition given for the term "URL" in the specification, the term should be given its broadest reasonable interpretation >consistent with the intrinsic record< and take on the ordinary and customary meaning attributed to it by those of ordinary skill in the art; thus, the term "URL" was held to encompass both relative and absolute URLs.); and E-Pass Technologies, Inc. v. 3Com Corporation, 343 F.3d 1364, 1368, 67 USPQ2d 1947, 1949 (Fed. Cir. 2003) (Where no explicit definition for the term "electronic multi-function card" was given in the specification, this term should be given its ordinary meaning and broadest reasonable interpretation; the term should not be limited to the industry standard definition of credit card where there is no suggestion that this definition applies to the electronic multi-function card as claimed, and should not be limited to preferred embodiments in the specification.).
The ordinary and customary meaning of a term may be evidenced by a variety of sources, >including "the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art."< Phillips v. AWH Corp., *>415 F.3d at 1314<, 75 USPQ2d **>at 1327.< If extrinsic reference sources, such as dictionaries, evidence more than one definition for the term, the intrinsic record must be consulted to identify which of the different possible definitions is most consistent with applicant's use of the terms. Brookhill-Wilk 1, 334 F. 3d at 1300, 67 USPQ2d at 1137; see also Renishaw PLC v. Marposs Societa" per Azioni, 158 F.3d 1243, 1250, 48 USPQ2d 1117, 1122 (Fed. Cir. 1998) ("Where there are several common meanings for a claim term, the patent disclosure serves to point away from the improper meanings and toward the proper meanings.") and Vitronics Corp. v. Conceptronic Inc., 90 F.3d 1576, 1583, 39 USPQ2d 1573, 1577 (Fed. Cir. 1996) (construing the term "solder reflow temperature" to mean "peak reflow temperature" of solder rather than the "liquidus temperature" of solder in order to remain consistent with the specification.). If more than one extrinsic definition is consistent with the use of the words in the intrinsic record, the claim terms may be construed to encompass all consistent meanings. ** See *>e.g.,< Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342, 60 USPQ2d 1851, 1854 (Fed. Cir. 2001)(explaining the court's analytical process for determining the meaning of disputed claim terms); Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999)("[W]ords in patent claims are given their ordinary meaning in the usage of the field of the invention, unless the text of the patent makes clear that a word was used with a special meaning."). Compare MSM Investments Co. v. Carolwood Corp., 259 F.3d 1335, 1339-40, 59 USPQ2d 1856, 1859-60 (Fed. Cir. 2001) (Claims directed to a method of feeding an animal a beneficial amount of methylsulfonylmethane (MSM) to enhance the animal's diet were held anticipated by prior oral administration of MSM to human patients to relieve pain. Although the ordinary meaning of "feeding" is limited to provision of food or nourishment, the broad definition of "food" in the written description warranted finding that the claimed method encompasses the use of MSM for both nutritional and pharmacological purposes.); and Rapoport v. Dement, 254 F.3d 1053, 1059-60, 59 USPQ2d 1215, 1219-20 (Fed. Cir. 2001) (Both intrinsic evidence and the plain meaning of the term "method for treatment of sleep apneas" supported construction of the term as being limited to treatment of the underlying sleep apnea disorder itself, and not encompassing treatment of anxiety and other secondary symptoms related to sleep apnea.).
report violation 9 recommendations
'774 Patent figure 2(I like our chances)
The defendants are trying to narrow the scope of our '774 patent by stating that since it describes "flash memory module" as “the sole memory of the received processed sound electrical signals”, then there must not be any other type of memory used. The key to the phrase is the word "processed" which clearly means the flash memory module stores the data after the electrical signals are processed (past tense). If the court should agree with the defense’s limitation, the defendants will then file a motion for case dismissal since their products contain ROM and RAM, along with flash memory.
The defendants are relying almost exclusively on the prosecution history to make their case. They are citing statements such as “without another memory system such as RAM” to argue there must not be any other memory involved with our patent. The problem is they are taking that phrase grossly out of context. The patent examiner and Mr. Norris understood that phrase to mean no other memory to store the received processed sound electrical signals. Mr. Norris didn’t mean the ‘774 patent doesn’t require other memory to process the sound electrical signals and he testified to this during the Markman hearing. That’s ridiculous, and even Dr. Mihran could not give any examples of devices in 1994 that used DSP’s without RAM. When Mr. Yungwirth repeatedly asked him for any example, he just hem-hawed his way out of the questions. At best, the phrase is vague when taken in context with the patent claims and specifications and does not convey a clear and unambiguous intent to narrow the claim’s scope. (See Phillips, 415 F.3d at 1317 quote at bottom).
Here’s a HUGE problem for the defense IMO. Figure 2 of our '774 patent clearly shows a box labeled "Program ROM". This is part of the patent itself and a GINORMOUS piece of intrinsic evidence. I just don't see how the court can ignore this irrefutable INTRINSIC evidence that clearly shows other memory as a necessary component of our '774 patent. And don’t forget that Dr. Mihran, the defendants own expert, also agreed during his Markman testimony that he believed there was DRAM inside our Flashback device (the Flashback is the embodiment of our '774 patent).
For a picture of Figure 2 of our ‘774 patent, click here: http://agoracom.com/ir/edigital/forums/discussion/topics/476661-claim-a/messages/1536190#message
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.
I really like our chances here.
Thought from a rational poster on another board
Why don’t we wait and see what actually is?... It’s only a matter of time before we’ll know one way or another. My own thoughts:
1. I believe I clearly understand the key issues surrounding our patents/claims: RAM vs. Flash, Main vs. Sole, Recording vs. Storage, etc., and I have read and re-read all the information provided here from PACERs, reports of the Markman hearing proceedings, and informational articles. Given all of this, I think it is most likely that the decision will go our way for the most part.
2. I doubt that defendants will appeal the decision. Again, it seems more likely they would settle as the cost to either appeal or continue to trial would increase substantially. Remember that DM’s stated preference is to settle. Remember also how much defendants have so far resisted discovery in this case. It appears that DM has completely backed off on this pending the decision. However if the decision is favorable, you can bet that DM will again be aggressively pressuring the defendants to comply with discovery requests in preparation for trial.
3. Even if defendants were to appeal the Markman ruling, I very much doubt it would be reversed. The issues in this case are not really all that complex (at least to anyone who understands fundamental computer technology) and I’m certain we would be among the 50-60% of rulings that are NOT reversed on appeal.
4. If it happens that we receive an UN-favorable ruling, I think that DM would quite likely have grounds for appeal... either on the basis of the technology being completely mis-understood and the claims mis-construed, or on the basis of adding limitations and thus not staying within the four corners of the patent (intrinsic evidence). In my opinion, DM has all the angles covered and has already prepared their next move come what may.
Questions regarding interlocutory appeals after claim construction
Claim construction is the first step in a patent infringement analysis, and is often the crucial issue in patent litigation. Following the Supreme Court's and Federal Circuit's decisions in Markman v. Westview Instruments, Inc.2 and Cybor Corp. v. FAS Technologies, Inc.3, it is clear that claim construction is a question of law reviewed de novo. It is also clear that claim construction is not "final" when completed by the district court, but is "final" only when the Federal Circuit provides its construction on appeal. Earlier this year, one Federal Circuit judge noted that since Markman the Federal Circuit has reversed 33-50% of decisions involving claim construction.4 The Federal Circuit sometimes finds that the district court's claim construction is incorrect and remands the case to the district court for another trial or other proceedings. Such action results in greatly increased expense and further extends the time for resolution of the case.
Many district courts hold "Markman hearings" and render claim construction early in the litigation (and at least before trial). If the district court's claim construction could be appealed immediately to the Federal Circuit for "final" claim construction, the expense and time of a trial may be saved, and the risk of the Federal Circuit ordering a new trial after a trial based on an erroneous claim construction would be greatly reduced or eliminated.
It is too early in the post-Markman era to make a final decision as to whether early, interlocutory appeals to the Federal Circuit regarding claim construction should be accepted or rejected. This article discusses the current state of this issue and raises some questions and possible solutions.
Section 1292(b) of title 28 of the United States Code governs certified interlocutory appeals. It provides: "When a district judge, in making in a civil action an order not otherwise appealable under this section, shall be of the opinion that such order involves a controlling question of law as to which there is substantial ground for difference of opinion and that an immediate appeal from the order may materially advance the ultimate termination of the litigation, he shall so state in writing in such order. The Court of Appeals which would have jurisdiction of an appeal of such action may thereupon, in its discretion, permit an appeal to be taken from such order, if application is made to it within ten days after the entry of the order: Provided, however, That application for an appeal hereunder shall not stay proceedings in the district court unless the district judge or the Court of Appeals or a judge thereof shall so order."
Thus, the district court judge may certify an appeal of claim construction after a Markman hearing when the judge finds (a) the claim construction reached involves a controlling question of law, (b) there is substantial ground for difference of opinion about that construction, and (c) an immediate appeal to the Federal Circuit regarding claim construction may materially advance the ultimate termination of the litigation. The district judge must make these findings in a written order.
Since claim construction is a question of law and is central to analysis of patent infringement and validity, finding (a) seems easy to meet in most cases. Finding (b) is more difficult, in that after a district court judge decides any issue of law, it may be difficult to convince the court that there is "substantial" ground for difference of opinion about the court's ruling. This difficulty may be tempered somewhat by the general recognition that claim construction is a difficult task and by the Federal Circuit's reversal of 33-50% of decisions involving claim construction.
Finding (c) is open to much debate. It is important first to remember that the statute does not ask whether an immediate appeal would materially advance the litigation. In nearly all cases, early and "final" claim construction by the Federal Circuit would materially advance the litigation. For example, such construction would bring more certainty and finality to further rulings by the district court. Instead, the statute asks whether an immediate appeal would materially advance the ultimate termination of the litigation. For example, the statute asks whether an immediate appeal is likely to allow all proceedings in the matter to end much sooner than if the matter is allowed to continue in the district court without an appeal. Evaluation of finding (c) will be case and fact specific. Questions to ask include: Is the claim construction issue so well defined that a ruling favorable to the plaintiff would cause the defendant's defenses to wither and a ruling favorable to the defendant would give the plaintiff no reasonable room to argue infringement under the doctrine of equivalents? Does the defendant have other defenses that are usually not claim-construction driven, such as license and laches, that would require trial (and possibly appeal) even if the Federal Circuit's claim construction was unfavorable to the defendant? One important factor in this inquiry is a factor about which I found no empirical data: how likely is settlement before trial? The vast majority of patent infringement cases settle before trial. How should the district court balance the general high likelihood of pre-trial settlement with the cost and time involved in an interlocutory appeal of claim construction to the Federal Circuit?
The Federal Circuit may elect to accept or reject the certified issue for immediate appeal. This decision is completely discretionary. So far, as explained further below, the Federal Circuit has elected to reject certified issues of claim construction following Markman hearings.
There are many questions for consideration in deciding the appropriate role for certified appeals of claim construction after Markman hearings. The first question is whether the status quo is acceptable. In examining this question, we should consider whether patent cases would in fact be resolved faster and cheaper with increased use of certified appeals of claim construction. Would the time delay for an appeal and the cost of an appeal justify such appeals? Would not allowing appeals from Markman hearings give rise to the risk of multiple appeals in the same case, thus creating delay and increased cost? Since impending trial encourages settlement, would the availability of an immediate appeal after a Markman hearing reduce settlement incentives?
The Federal Circuit judges should consider publicly announcing a policy regarding certified appeals after Markman hearings. They should ask themselves whether the increased efficiency is worth them spending their time considering such appeals in light of their present work-load and the possible benefits. They should also ask themselves whether allowing regular interlocutory appeals regarding claim construction obviates the role of the district court.
One "solution," of course, is the status quo. Parties seeking an early claim construction will have to pursue such construction through much less satisfying and rewarding means, such as appeals of preliminary injunctions (which provides much less "final" construction than the interlocutory review option) and appeals of summary judgment rulings when final. Other solutions include the announcement by the Federal Circuit of a policy regarding interlocutory appeals of claim construction or an amendment to Section 1292 specifying situations in which the Federal Circuit should/must accept certified appeals regarding claim construction. Another possible solution is a national board to construe patent claims involved in litigation.
It will take some time for the Federal Circuit and the bar to consider all the ramifications of Markman, Cybor, and their progeny. Appropriate policy regarding certified interlocutory appeals of claim construction after a Markman hearing is one important facet of our consideration.
(excerpts from American bar association)
GOVERNING STATUTE: 28 USC Section 1292(b)
The Process of Claim Construction
The peripheral-claiming system seeks to define the outer boundaries
of the invention. In theory, the process works as follows: The applicant
and the PTO examiner negotiate over the scope of the invention,
limiting it in view of the prior art and the range of examples that
the applicant has enabled. The resulting claims define the scope of
the patent. Competitors can then read the patent claims and know
whether their actions will infringe the patent, and therefore whether
they need to avoid the patent or take a license. If they decide to infringe,
the patentee sues, and courts determine validity and infringement
by comparing those claims to the prior art or the defendant’s
product, respectively.
Every stage of this theoretical story depends critically on the ability
of participants in the process—patentees, examiners, competitors,
judges, and juries—to understand what the patent claims cover. Further,
at several critical points, the story depends on different parties
(applicant and examiner, patentee and competitor) having a shared
understanding of the meaning of the patent claims. If the applicant
and the examiner agree that a patent should issue, but disagree about
what the patent actually means, something is wrong. Similarly, if a
competitor thinks that a patent means one thing and the patentee
thinks it means something different, they are unlikely to be able to
conclude a licensing transaction efficiently.
In fact, disagreements over the meanings of patent claims are
pandemic. Lawyers are paid to interpret language—whether in statutes,
contracts, or patent claims—in ways that serve their clients’ interests.
And they are, as a general matter, quite good at it. Before
1995, disputes over what the patent covered were folded into general
disputes about patent validity and infringement. Those disputes ultimately
went to the jury, which presumably made an implicit determination
of claim scope in finding the patent valid or not and infringed
or not. Judges periodically determined the meaning of patent claims,
usually in the context of bench trials or summary judgment motions
requiring resolution of a claim-construction dispute. But claim construction
before 1995 was not a separate inquiry in a patent case. It
was a part of the overall determination of either validity or infringement.
That changed in 1995 with the Federal Circuit’s Markman decision,
affirmed by the Supreme Court the following year. In Markman,
the Court held that the construction of patent documents, like
the construction of other legal documents, was to be done as a matter
of law by judges, not juries. The result was the so-called “Markman
hearing,” a pretrial proceeding in which judges hear argument on the
meaning of disputed patent claims, sometimes hear evidence, and issue
a written ruling defining the words of the claims in other, theoretically
more precise, words. Courts are to construe patent claims
based on some combination of their “plain meaning,” the description
of the invention in the specification, the prosecution history of the
patent, technical treatises and dictionaries, expert testimony, and a series
of legal canons of claim interpretation. Virtually every judge in
the country conducts Markman hearings sooner or later in the trial
process, though a few judges defer claim construction until shortly before
trial when jury instructions are written..The creation of the Markman hearing has made the process of peripheral
claiming more transparent. Because judges now hold hearings
on claim-construction disputes and have to issue written rulings
interpreting disputed claims, the nature and extent of those disputes
is now clearer than it was before 1995. And the results are quite
alarming. First, there is essentially always a dispute over the meaning
of the patent claims. Patent suits normally include Markman hearings,
and every district that has local patent rules provides for them. Indeed,
there is rarely just one dispute in a patent claim; patent lawsuits
frequently involve fights over ten or more claim terms. The Federal
Circuit has held that courts must resolve every dispute over the scope
of the patent claims as a matter of claim construction, issuing a written
ruling that “interprets” even simple patent claim terms that jurors can
understand. And district court judges regularly issue orders limiting
Markman hearings to only ten or so claim terms. Without demanding
agreement from the parties, judges might well face arguments over
the meaning of every word in a patent claim.
These disputes turn out to be surprisingly hard to resolve. Even
after a district court issues its claim-construction order, the meaning
of the claims is uncertain. The Federal Circuit reverses more than
one-third of the claim-construction cases presented to it on appeal, a
far larger percentage than its general reversal rate. These reversals
aren’t just a problem of lack of education; David Schwartz has found
that the most experienced district court judges and ITC administrative
law judges who specialize in patents have their claim-construction de
cisions reversed just as often as district judges without patent experience.
And despite agreement by the Federal Circuit in Phillips on
the criteria for interpreting patent claims, Federal Circuit judges cannot
agree on how to apply those criteria: the rate of dissents in claim construction
appeals tripled after Phillips was decided, and the overall
reversal rate remained high. In short, claim-construction disputes
aren’t just make-work; they seem harder for courts to resolve consistently
than other types of patent disputes.
Why are there so many disputes over the meaning of patent-claim
terms? One possibility is that patents cover new scientific terminology
that doesn’t have a fixed meaning in the art, so that scientists in the
field can reasonably disagree over the meaning of those terms. No
doubt this does happen from time to time. But it is by no means a full
or even primary explanation for claim-construction disputes. At least
four more structural problems make certainty in patent boundary drawing
unlikely.
First, lawyers are paid to create, identify, and exploit ambiguities
in language. And lawyers are good at their jobs. The problem begins
with the patent applicant. Many claim-construction disputes are
over the meaning of terms that are well understood in the art, but
which are insufficiently specified in the claim itself.
Determining the meaning of patent claims necessarily requires a judge
to break the text of a claim into discrete “elements” or units of text corresponding
to the elements or units that comprise the claimed invention,
essentially organizing the language of the claims into “chunks” or
“quanta” of text. Define an element narrowly—limit it to a single word,
say—and you will tend to narrow the resulting patent. By contrast, defining
an element broadly tends to broaden the patent.
For each discrete packet identified, the courts must determine the
meaning of the constituent words. They can assign those words definitions
that range from narrow, specific meanings to broad, general meanings.
In determining the meaning of terms within a particular element,
judges practicing patent claim interpretation are engaged in an exercise
that to some degree resembles the famous “levels of abstraction test” articulated
by Judge Learned Hand for analysis of infringement under
copyright law’s “idea/expression” doctrine.
There are no hard and fast standards in the law by which to make the
“right” decision as to either the size of the textual element or the level of
abstraction at which it will be evaluated. Indeed, the indeterminacy is so
acute that courts generally don’t even acknowledge that they are engaging
in either inquiry. They define an element almost arbitrarily, and
even when judges disagree as to the proper definition they offer no
principled basis for doing so.
At the same time, not all claim construction occurs in the context
of infringement. Claims are also construed in the context of invalidity,
against the prior art. Some prior art references do constitute actual
devices or practices, such as anticipatory prior art known or used
in the United States before the date of invention But most references
will be textual, and even those that are not textual must typically
be reduced to a text before they can be evaluated by a court. For
that matter, even infringement analysis can require evaluation of textual
prior art—for example, to determine whether a range of equivalents
is precluded by the prior art or by foreseeable technologies.Thus, patent law frequently requires the mapping of text onto
text, construing claims against the prior art references. Courts ask
whether every element in a patent claim is found in an anticipatory
reference but have no explicit method for determining how to parse
the prior-art text to determine the presence of the invention’s elements.
Indeed, under the statutory-bar provisions of section 102(b),
the standard is one of substantial similarity—a classic statement of
central-claiming analysis. Where obviousness is concerned, courts
measure the claimed invention against the knowledge of the person
having ordinary skill in the art—the PHOSITA. The PHOSITA is in
some sense a composite of relevant prior-art references as of the date
of invention. But again, there are no explicit interpretive rules to determine
how such prior art is to be read, either individually or in the
aggregate. The result is that while we construe patent claims, theoretically
providing certainty in meaning, we proceed to undermine
that certainty in the subset of cases that involve comparing those
claims not to devices but to other, unconstrued documents.
Finally, and perhaps most fundamentally, is the problem of what
we might call metaconstruction. Peripheral claiming presumes that
the claims set out boundaries. The process of claim construction itself
presumes that the words of the claims are insufficiently precise to delineate
those boundaries. The solution that claim construction offers
is to substitute theoretically clearer words for the unclear words of the
patent claim. But what happens when—as seems inevitable—the parties
dispute the meaning of those new words? We should be skeptical
that the substitution of litigation-driven claim constructions for
equally well-understood terms that were not written with particular
litigation in mind will advance the understanding or clarity of patent
scope. It may end up resolving particular cases—indeed, it normally
will, at least if the lawyers advocating those claim constructions are
good at their jobs—but there is no reason to think these other words
will be less ambiguous or more likely to help a jury.
How great these problems are depends, to a large extent, on the
industry in which the patent exists. A patent claim that covers a DNA
sequence—a list of As, Ts, Cs, and Gs—is perfectly clear to a biotechnologist.
Similarly, a chemical formula is perfectly clear to a chemist.By contrast, we have a much harder time defining machines in words,
and a still harder time writing words that clearly delineate the scope of
software inventions. Not surprisingly, therefore, disputed claim constructions
are more likely in the latter sorts of industries. Similarly,
David Schwartz has found significant differences in the claim construction
reversal rates in different industries, suggesting that
resolution of those disputes is also harder in some industries than it is
in others. Our point is not that no one can ever understand patent
claims. Rather, it is that, in the industries that account for the overwhelming
majority of patents, figuring out the boundaries of a peripheral
claim is difficult, if not impossible. And it is certainly not
something on which the relevant audiences—patentees, examiners,
competitors, and judges—can often agree.
University of Pennsylvania Law Review(Excerpts)
"Determining the meaning of patent claims necessarily requires a judge to break the text of a claim into discrete “elements” or units of text corresponding to the elements or units that comprise the claimed invention, essentially organizing the language of the claims into “chunks” or “quanta” of text. Define an element narrowly—limit it to a single word, say—and you will tend to narrow the resulting patent. By contrast, defining an element broadly tends to broaden the patent."
A. “flash memory” (Claims 1, 2 and 19 of the ‘774 Patent and Claim 5 of the ‘737 Patent)
e.Digital’s Proposed Construction: "block erasable non-volatile memory"
Defendants’ Proposed Construction: "block erasable non-volatile memory that is the main memory of the system "
................
The defendants consideration of "main memory" must/should match that of what the inventor considered....that being a storage element as sole memory....and not a RAM component. This does not seem a hard determination of what the inventor considered. IMO...the judge needs to determine what "main memory" is here.
========================
B. “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” (Claims 1 and 19 of the ‘774 Patent)
e.Digital’s Proposed Construction: “a removable, interchangeable flash memory storage device that (1) is the only removable memory storage device that receives for storage the processed sound electrical signals, and (2){e.Digital original} sole memory of the received processed sound electrical signals: is capable of retaining for storage digital information without the need for ongoing power support”
Defendants’ Proposed Constructions: (1) flash memory module: “a removable, interchangeable flash memory recording medium” and (2) {e.Digital original} sole memory of the received processed sound electrical signals: “the only memory of the received processed sound electrical signals, without another memory system such as RAM”
..........
edig:...“a removable, interchangeable flash memory storage device"
defendants:...“a removable, interchangeable flash memory recording medium”
judge to consider...sort the difference between storage and recording....storage would indicate any type data, or a more broad meaning. Recording indicates a specific data having a narrow consideration . A determination of recording needs to be determined and is it being considered to muzzle the inventors intent? Is it a storage element or a specific element?....See claim A determination for " main"(sole) memory.
............
edig:..." is the only removable memory storage device that receives for storage the processed sound electrical signals," (does not preclude the use of other memory)
defendants:...."sole memory of the received processed sound electrical signals: the only memory of the received processed sound electrical signals," (precludes the use of other memory)
judge to consider ... defendants do not consider "sole memory" as storage, yet they want to use e.Digital verbiage "sole" where they should be using "main"? They also confuse by utilizing received processed sound electrical signals where their considered argument is that RAM is not utilized for the processing of the sound electrical signals, yet it's pre processed somewhere then received in their consideration. Again...for answer see claim A, determination " main" (sole) memory to be considered.
With regard to "the only" issues, the focus for e.Digital "removable", IMO, leaves the question of other memory types...ie; embedded, open , or having a broad meaning, where defendants want a narrow meaning "the only memory".
............
IMO, the above issues come down to the determination of main(sole) memory of Claim A.
................
edig:..."is capable of retaining for storage digital information without the need for ongoing power support”
defendants:..."without another memory system such as RAM”
defendants phrase implemented to support the definition of "main memory" in the context of RAM and how the flash is to be recognized.....the flash considered to be a RAM component.
It all comes down to claim A and a determination of "main (sole) memory"....Will she consider as the inventor considered...storage, or as the defendants do in the context of RAM?
FWIW
PART III Excerpts from Doc #303 before coming Markman ruling(3)
in response to : Another look at excerpts from Doc #303 before coming Markman ruling(2)
“Removable” comes directly from the claim language and should be included in the claim construction as advocated by e.Digital.
As explained in e.Digital’s Opening Brief, the phrase proposed for construction “a flash
memory module . . . for storage in nonvolatile form,” describes a single limitation, i.e., “a flash
memory module” that satisfies two necessary functionalities. It (i) “operates as sole memory of
the received processed sound electrical signals” and (ii) “is capable of retaining recorded digital
information for storage in nonvolatile form.” (Exh. 1 (‘774 Patent) at cls. 1 and 19). As
Defendants concede based on their proposed definition of “flash memory module,” the flash
memory module is “removable.” This is clearly the case based on the language in claims 1 and
19 that begins by describing a device for use with removable, interchangeable flash memory and
later describes the features of the flash memory that can be coupled to the socket that receives
the flash memory module.
Accordingly, defining the flash memory module limitation as being
removable should be beyond dispute
.
(Excerpts from Doc303)
PART II...Ecerpts from Doc #303 before coming Markman ruling(2)
in response to Another look at excerpts from Doc #303 before coming Markman ruling(1) by sman998
Likewise, it is clear that the Examiner understood Applicant’s references to main
memory as storage memory as evidenced by her statement in the Examiner Interview Summary:
“the flash memory is the sole memory to store the received processed sound electrical signal.”
(See Examiner Interview Summary Record dated July 17, 1995, attached as Exhibit B to Exh. 4
(Norris Decl.)). The Examiner’s statement conveys the understanding that the flash memory is
the sole memory that stores the already received and processed sound electrical signals; as
opposed to the sole memory for both processing and storage. If the Patent Examiner agreed with
Defendants that flash memory was used in lieu of RAM to process the audio data, the proposed
amendment would not have referred to “received processed sound electrical signal.” In short,
Defendants’ interpretation of “main memory” as RAM memory for processing data simply cannot be reconciled with this written statement by the Examiner, and even if ,
accepted Defendants’ argument creates a claim construction dispute within a claim construction dispute,
i.e., what does main memory mean in the context of the ‘774 Patent?
(Excerpts from Doc 303)
PART I Excerpts from Doc #303 before coming Markman ruling(1)
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
FROM DM LEGAL TEAM: CLAIM 1 &19 OF PATENT "774" REMOVABLE FLASH MEMORY
in response to Re: ANTICIPATION-Thanks a lot- by jonthezman
posted on May 03, 11 12:09PM Use the IP Check tool [?]
Excerpts from Doc 303
In any case, the prosecution history excerpts on which Defendants rely do not support the
limitation Defendants now propose. The fundamental problem with Defendants’ argument is
that it is based on mischaracterizations of the Applicant’s use of the phrase “main memory.” The
Applicant used main memory to refer to the memory for storing sound electrical signals that
have been received and processed (i.e., as another way of describing the “sole memory”
limitation to which the Applicant and Examiner reached agreement during the in-person
interview); not the RAM used for processing the audio signal. (See July 20, 1995 Amendment
(attached to Pl. Op. Br. as Exh. 10) at p. 11).
This understanding also is confirmed by the design of the Flashback product itself that
was available for purchase by one of ordinary skill in the art from the issuance of the patent
through at least July 7, 2010 and demonstrated to the Patent Examiner. (See Exh. 4 (Norris
Case 1:09-cv-02578-MSK-MJW Document 303 Filed 07/14/10 USDC Colorado Page 13 of
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Decl.) (attached to Pl. Op. Br.) at ¶¶ 13-16 and Exhs. C-F; Exh. 6 (Maltiel Decl.) (attached to Pl.
Op. Br.) at ¶¶ 53 and 54 (all depicting structure of Flashback product); Exh. 11 (attached hereto)
(showing example of product offered for sale on www.ebay.com as of July 7, 2010)).
Likewise, it is clear that the Examiner understood Applicant’s references to main
memory as storage memory as evidenced by her statement in the Examiner Interview Summary:
“the flash memory is the sole memory to store the received processed sound electrical signal.”
(See Examiner Interview Summary Record dated July 17, 1995, attached as Exhibit B to Exh. 4
(Norris Decl.)). The Examiner’s statement conveys the understanding that the flash memory is
the sole memory that stores the already received and processed sound electrical signals; as
opposed to the sole memory for both processing and storage. If the Patent Examiner agreed with
Defendants that flash memory was used in lieu of RAM to process the audio data, the proposed
amendment would not have referred to “received processed sound electrical signal.” In short,
Defendants’ interpretation of “main memory” as RAM memory for processing data simply
cannot be reconciled with this written statement by the Examiner, and even if accepted,
Defendants’ argument creates a claim construction dispute within a claim construction dispute,
i.e., what does main memory mean in the context of the ‘774 Patent?
Furthermore, the prosecution disclaimer cases cited by Defendants are distinguishable
given the context in which the Applicant’s statements were made in this case. In the instant case,
Applicant’s statements at issue followed an agreement between the Applicant and the Examiner
as to an amendment, based on which the Examiner agreed the claims would overcome the prior
art. Indeed, as of the conclusion of the Examiner Interview, an agreement already existed as to
exactly what needed to be done to bring the claim 1 into allowance. As the Examiner Interview
Case 1:09-cv-02578-MSK-MJW Document 303 Filed 07/14/10 USDC Colorado Page 14 of
46
“Removable” comes directly from the claim language and should be
included in the claim construction as advocated by e.Digital.
As explained in e.Digital’s Opening Brief, the phrase proposed for construction “a flash
memory module . . . for storage in nonvolatile form,” describes a single limitation, i.e., “a flash
memory module” that satisfies two necessary functionalities. It (i) “operates as sole memory of
the received processed sound electrical signals” and (ii) “is capable of retaining recorded digital
information for storage in nonvolatile form.” (Exh. 1 (‘774 Patent) at cls. 1 and 19). As
Defendants concede based on their proposed definition of “flash memory module,” the flash
memory module is “removable.” This is clearly the case based on the language in claims 1 and
19 that begins by describing a device for use with removable, interchangeable flash memory and
later describes the features of the flash memory that can be coupled to the socket that receives
the flash memory module. Accordingly, defining the flash memory module limitation as being
removable should be beyond dispute.
Nevertheless, Defendants take issue with e.Digital’s use of the phrase removable as part
of the construction of a particular aspect of the flash memory module: “which operates as sole
memory of the received processed sound electrical signals.” Defendants’ argument, however, is
based on the mistaken assumption that the single flash memory module limitation should be
carved up into separate limitations, an assumption they fail to support with any argument in their
Opening Brief. In other words, Defendants invite the Court to ignore the inherent structure of
claims 1 and 19 that make clear that the removable flash memory module be defined based on
two functionalities: (1) that it is the only removable memory storage device that receives for
storage the processed sound electrical signals, and (2) that it is capable of retaining for storage
digital information without the need for ongoing power support. These two functionalities define
Case 1:09-cv-02578-MSK-MJW Document 303 Filed 07/14/10 USDC Colorado Page 30 of
46
- 26 -
the claimed and admittedly removable flash memory module that is to be coupled to the
receiving socket. The second reference to “removable” in e.Digital’s proposed construction does
nothing more than repeat the parties’ agreed limitation that the flash memory module “which
operates as sole memory of the received processed sound electrical signals” be removable.
- 10 -
Summary Record clearly shows, the Examiner checked the box reflecting “Agreement was
reached with respect to some or all of the claims in question.” (See Examiner Interview
Summary Record dated July 17, 1995, attached as Exhibit B to Exh. 4 (Norris Decl.)). The
Examiner then expressly referenced claim 1 -- the very claim at issue in this case -- and stated
the agreement, which does not make any reference to main memory or RAM:
APPLICANT WILL AMEND CLAIMS TO INCLUDE LIMITATION THAT
WILL EXPRESSLY STATE THAT THE FLASH MEMORY IS THE SOLE
MEMORY TO STORE THE RECEIVED PROCESSED SOUND ELECTRICAL
SIGNAL. EXAMINER AGREED THAT SUCH A LIMITATION WOULD
OVERCOME SCHRODER AND SHE WOULD UPDATE SEARCH
ACCORDINGLY.
------------------------------------------------------------------------------------------------------------------------------------
If one of ordinary skill in the art would have purchased a Flashback product, he or she
would have had access to the technical information disclosed in Mr. Norris’s Declaration. One
of ordinary skill in the art could have easily disassembled the Flashback and identified the
components of the product that are depicted in the picture of the disassembled Flashback
attached as Exhibit D to the Norris Declaration. And just as Messrs. Maltiel and Norris declared,
those pictures depict components that in fact use RAM to process the audio signal for storage on
the flash memory module, which could have been confirmed by simply investigating the
identified component model numbers. (Exh. 4 (Norris Decl.) at Exh. D thereto; see also, Exh. 4
(Norris Decl.) at ¶¶ 15 & 16 and Exh. F; Exh. 6 (Maltiel Decl.) at ¶ 54). In other words, the
Flashback product uses RAM, in addition to flash memory, and this rather unremarkable fact
could have been readily investigated by a person of ordinary skill in the art, or quite frankly,
readily appreciated based on a person of ordinary skill in art’s well known understanding of how
the processing audio information occurred back at the time of the invention and still occurs
today. (Exh. 4 (Norris Decl.) at ¶ 17). Moreover, one of ordinary skill in the art, who is trying to
understand the ‘774 Patent, would have been just as likely, if not more likely, to search out a
Flashback product (a product form of the preferred embodiment) than to look for a dictionary
definition of “main memory” that is nowhere cited in the prosecution history, particularly when
Case 1:09-cv-02578-MSK-MJW Document 303 Filed 07/14/10 USDC Colorado Page 19 of
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the Flashback product is specifically called out in the prosecution history as an embodiment of
the invention as claimed.8 (See, e.g., Exh. 10 (Amendment dated July 18, 1995) at pp. 22-25).
In short, Defendants ask the Court to read into the flash memory element of claims 1, 2
and 19 of the ‘774 Patent and claim 5 of the ‘737 Patent a “main memory” limitation based on
their interpretation of main memory (i.e., main memory means RAM) that conflicts with:
(1) the claims themselves,
(2) the multiple teachings of the specification,
(3) the Patent Examiner’s statement following the Examiner’s Interview,
(4) inventor Norris’ understanding of how “main memory” was being used in the
prosecution history, and
(5) how the actual Flashback product worked.
-----------------------------------------------------------------------------------------
Although
claim 1 and 19 clearly state that flash memory module is the sole memory for storage of the
received processed sound signal, Dr. Mihran previews Defendants’ argument that the flash
memory module is the sole memory used by all processing elements of the claim that follow the
microphone element, i.e., the control circuitry.
If the Court accepts Defendants’ argument, Dr. Mihran’s Declaration indicates that
Defendants will later argue that the flash memory module construction further limits claims 1
and 19 so as to preclude the use of other memory systems for processing data by the control
circuitry. Such a result would be directly contrary to the relevant claim language of claims 1 and
19 as discussed above, as well as Figs. 1 and 2 discussed in e.Digital’s Opening Brief at pages
23-26 and columns 5 and 6 discussed in Section II.A.1., supra. As the claims and specification
make clear, the flash memory module is the sole memory storage device that receives for storage
the processed sound electrical signals; not the sole memory for data processing by the control
circuitry. In short, Defendants’ extreme argument, if accepted, flies in the face of the claim
language, multiple teachings and figures in the specification, and the Flashback device discussed
during the very prosecution history on which Defendants rely.
---------------------------------------------------------------------------------------------
“Removable” comes directly from the claim language and should be
included in the claim construction as advocated by e.Digital.
As explained in e.Digital’s Opening Brief, the phrase proposed for construction “a flash
memory module . . . for storage in nonvolatile form,” describes a single limitation, i.e., “a flash
memory module” that satisfies two necessary functionalities. It (i) “operates as sole memory of
the received processed sound electrical signals” and (ii) “is capable of retaining recorded digital
information for storage in nonvolatile form.” (Exh. 1 (‘774 Patent) at cls. 1 and 19). As
Defendants concede based on their proposed definition of “flash memory module,” the flash
memory module is “removable.” This is clearly the case based on the language in claims 1 and
19 that begins by describing a device for use with removable, interchangeable flash memory and
later describes the features of the flash memory that can be coupled to the socket that receives
the flash memory module. Accordingly, defining the flash memory module limitation as being
removable should be beyond dispute.
Nevertheless, Defendants take issue with e.Digital’s use of the phrase removable as part
of the construction of a particular aspect of the flash memory module: “which operates as sole
memory of the received processed sound electrical signals.” Defendants’ argument, however, is
based on the mistaken assumption that the single flash memory module limitation should be
carved up into separate limitations, an assumption they fail to support with any argument in their
Opening Brief. In other words, Defendants invite the Court to ignore the inherent structure of
claims 1 and 19 that make clear that the removable flash memory module be defined based on
two functionalities: (1) that it is the only removable memory storage device that receives for
storage the processed sound electrical signals, and (2) that it is capable of retaining for storage
digital information without the need for ongoing power support. These two functionalities define
Case 1:09-cv-02578-MSK-MJW Document 303 Filed 07/14/10 USDC Colorado Page 30 of
46
From a post by someone else on another board....
___________________________________________________________________
The claim construction "is the meaning that the term would have to a person of ordinary skill in the art in question AT THE TIME OF THE INVENTION, I.E. AS OF THE EFFECTIVE FILING DATE OF THE PATENT APPLICATION."
The defendants are trying to pick apart the wording of the patents with the benefit of hindsight in the context of how the industry has grown and expanded since the filing of the patents. If Judge K rules based on the Phillips case and views the patents in the context of what had transpired in the industry to that point in time, there may be some concerned large companies trying to evaluate their exposure and one very small company trying to plan for the future.
___________________________________________________________________
And an immediate response to the above post from a noted and respected attorney on that same board.....
"Bet your life that's the case. Also wouldn't be surprised if we get another settlement soon"
______________________________________________________________________
Why EDIG will prevail at the Markman Hearing
The Federal Court of Appeals ORDERED A REHEARING "en banc"(12Judges) of Judge Krieger's ruling in the Markman Hearing of Phillips v.AWH. coincidentally,Judge Krieger was the same Judge in e.Digital's case)
The Federal Court of Appeals en banc ruled to REVERSE JUDGE KRIEGER'S summary judgment of non-infringement and remanded the case.
(there's no interlocutory appeal of MH, so this ruling was post trial)
The Federal Court of Appeals RULED AS FOLLOWS and THESE RULINGS ARE IMPORTANT to e.Digital's case.(and are in e.Digital's favor/JMHO))
1)Intrinsic evidence is the primary basis for construing the terms recited in the claims of a patent.
2)The prosecution history often lacks the clarity of the specification and thus is less useful for claim construction purposes.
3)The distinction between using the specification to interpret the meaning of a claim and importing limitations from the specification into the claim can be a difficult one to apply in practice.
4)Repeated warnings in past decisions against confining claims to very specific embodiments even though such specific embodiments are described in the specification.
5)Expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.
jtdiii
Whatis critically relevant to e.Digital(the plaintiff)as it relates to the Phillips Case is with respect to construing terms in patent claims. Specifically, the issue of what should be the primary source for determining the meaning of terms used in the claims:
(1) evidence intrinsic to the patent, such as the patent specification and prosecution history, or
(2) extrinsic evidence, such as technical dictionaries and treatises.
The Federal Court of Appeals ordered a rehearing en banc in the Phillips case to broadly address claim construction and resolve this issue.
According to the majority opinion, intrinsic evidence is the primary basis for construing the terms recited in the claims of a patent. One first looks to the words of the claims themselves. Notwithstanding, the words of the claims must be read in view of the specification, which is the primary basis for construing the claims.
The prosecution history also forms part of the intrinsic evidence and should be considered in construing the claims. According to the majority opinion though, the prosecution history “often lacks the clarity of the specification and thus is less useful for claim construction purposes” because the prosecution history is the record of a negotiation between the US Patent Office and the applicant.
With respect to extrinsic evidence such as dictionaries and treatises, the majority opinion observed that such evidence can be useful in claim construction and may be considered by a trial court if the trial court deems it helpful. The majority opinion further noted though, that in their view extrinsic evidence is in general less reliable than the patent and its prosecution history.
In addition, the majority opinion recognized “that the distinction between using the specification to interpret the meaning of a claim and importing limitations from the specification into the claim can be a difficult one to apply in practice.”
In particular, the majority opinion noted repeated warnings in past decisions against confining claims to very specific embodiments even though such specific embodiments are described in the specification. The majority opinion further noted the Federal Court of Appeals has “expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.”
At issue before the Court in the Phillips case, was the proper construction for the term “baffle” as recited in the claims. The patent specification described embodiments of the invention in which there were no baffles at right angles relative to the walls of the disclosed device. Further, there was prior art showing baffles at right angles.
On this basis, the trial court and earlier appellate panel both construed the recitation of baffle in the claims as not including baffles that were at right angles to wall faces. Based on this construction, the patent owner could not prove infringement and summary judgment of non=infringement was granted and affirmed.
The majority opinion, however, did not agree. According to the majority opinion, a person of skill in the art would not interpret the disclosure and claims of the patent to mean that the term “baffle” excluded structures disposed at right angles to wall faces of the claimed device.
Accordingly, the majority opinion reversed the summary judgment of non-infringement and remanded the case.
The majority opinion additionally acknowledged that claims should be construed such that they are valid. Notwithstanding, the majority opinion stated that this should only be done where a claim term remains ambiguous after applying all other tools of claim construction.
The en banc decision is good for US patent law because it protects patent owners. Both the trial court opinion and earlier appellate opinion had a troubling construction for the term “baffle” in which it appeared that limitations from the specification were imported into the claims. The majority opinion in the en banc decision clarifies that importing limitations into the claims is improper.
In addition, the decision is useful for claim construction. It greatly clarifies the role that the intrinsic and extrinsic evidence should play in relation to one another in claim construction, and among intrinsic evidence, the relative importance of the patent specification and prosecution history.
jtdiii
Neverending.You are 100% wrong...
1) Re:Polis..If you read the SC13G, then you obviously didn't understand it.
2) Re: Putnam..Yes, after 3/14/2011, he "could' sell his 4 million +/- shares...and are you now suggesting that he would be selling his 4 million+/- shares days/weeks/month prior to the Markman Hearing Ruling...
3. Yes. a positive MH hearing is important...On this we can agree...
Over and out.
neverending,as you know,your statements are 100% false......
#1. Collectively,Jerry Polis and The Polis Family Trust have NEVER owned 25% of EDIG's outstanding shares. The family has maintained a 5% share in the company for almost a full decade. The miniscule amount of selling that was done in the past year was required by law as the shares were owned by a corporation Jerry Polis owned and later sold and the sale of the corporation excluded the EDIG shares assigned to that company.Other than this relatively miniscule amount, there has been absolutely no selling of EDIG shares by Jerry Polis,The Polis Family Trust, or any other Polis entity. Give your comment a rest. The family still has their 15 million+/- shares. Your staement is 100% false, and you know it.
#2 Robert Putnam, the long term yet "part time" EDIG Investor Relations officer of the company has over the same period also been the "part time" Investor Relations Officer at LRAD. Through EDIG's own publicly filed SEC documents, this shared function has always been disclosed as an issue that may necessitate that Mr. Putnam resign from being an Investor Relations Officer at one of these 2 companies. Newly created SEC scrutiny finally necessitated this move. Moreover, since it is also dictated by SEC guidelines that any officer of any publicly traded company must report all sales of that stock within a 90 day period from his departure from the company, it should be noted that no such SEC filing ever occured and Robert Putnam still has his 4 million +/- shares. Your statement is 100% false and you know it.
#3 There is no question that the volume has been unintersting to say the least. I believe the average over the last 10 day period has been 150,000+/- shares daily. The company's fate is in the hands of a federal judge who for the last 70 days has been deliberating on other cases (and certainly this one as well where we are the plaintiff). No one...no market maker, no company insider, no one involved on either side of the legal team has any 100% certainty as to which we this case will go. there are only 2 construction claims, and if EDIG prevails on at least one of those claims, then the volume will change rapidly. Until then, you have nobody selling, and nobody buying.
The following is a post I contributed today on the agoracom board. In full disclosure, I am obviously a long time EDIG shareholder but choose to express my feelings independently of many lock-step longs.
This would be and is my final post on agoracom or any other boarduntil the Markman Hearing ruling on the hearing that occurred on 1/28/2011.
Please feel free to read it if you'd like, but in the meantime, what purpose are you serving by spreading total lies about the company?
I would suspect that the many shareholders on the agoracom board are aware of management's shortcomings over the past decade.
In hindsight, initiating intellectual property litigation on patent '774 in 1996 rather than in 2006 would have likely been the most expeditious and profitable alternative.
It is known by only a handful of e.Digital investors that prior to 1996, had the company proactively discovered an easily repairable technical glitch with their (1993/1994) 10,000+ unit rollout of their first "portable handheld digital device using removeable flash memory"('774), it would have been a paradigm shift for both the industry and e.Digital shareholders.
For whatever reason, and in spite of sufficient funding to later litigate the construction claims of '774, management elected to sit it out while other companies profited from e.Digital's patent. It was only when it was too late, under the stewardship of Jim Collier, that the company pursued a fool's mission of again attempting to manufacture and market their own portable handheld digital device.
Later, and again instead of initiating patent litigation on '774, management chose to devise a new business model executed on the notion that another patent (MicroOS) would be the most expeditious conduit with which to profit from their intellectual property. The pollyanna notion of "our enemies becoming our partners" was to become more meaningful as future devices became more robust.
It was not until 2006, that e.Digital management came in contact with James Sze, an attorney who joined Duane Morris in 2005, and who had coincidentally been a Qualcomm Engineer from 1992-1997 while simultaneously attaining his MS in Electrical/Computer Engineering in 1994 and his JD/Law Degree in 1999.
Not unlike the young baggage handler from Alaskan Airways who introduced management to the concept of an IFE device, it was young James Sze who reintroduced management to the concept of the superior significance of patent '774.
Relatively speaking, the vindication of e.Digital's life-changing future will happen only moments from now. From the remarkable due diligence from a number of hard working shareholders on the agoracom discussion board, the forum has been blessed with an extraordinary amount of information on patent '774 and the subsequent details of the Markman Hearing filings.
The rational and likely conclusions of this due diligence indicate a strong likelihood that the company will finally prevail in either construction claim #1 or #2 or both (not to mention the remaining claims) of patent '774. What could have happened a decade ago is on the cusp of happening right now, and I believe that we will prevail at the Markman Hearing ruling and the trial itself will never transpire. I envision multiple 8 figure settlements and an immediate filing of "Round 3" to include "the real players".
Although it is sometimes understandable to dwell on the shortcomings that transpired over the past 16 years, all we can do is wait for this little company from Poway to finally be vindicated in the eyes of a federal judge. Thankfully, it is the 2 construction claims of patent '774 that are on trial, not company management.
While absolutely not suggesting that Dr. Pat Nunnaly's involvement in the newly formed E.Digital Innovations Group should be mitigated in any way, it is my own sincere wish that upon imminent victory in the Markman Hearing ruling, the EDIG Board of Directors should seek to further maximize shareholder value by commisioning a world class CEO recruitng firm to conduct an informed comprehensive search for new leadership.
Although a true dedicated long on this stock and a substantial shareholder in this company, this will be my final post until the Markman Hearing ruling. I am confident that we'll all be celebrating soon, but for now my own posting contributions will be on hold indefinitely.
Over and out....
John/jtdiii