e.Digital Corporation (fka EDIG)

[jtdiii]

'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.