eDigital Corp. v. Futurewei Tech., Inc., No. 14-1019 (Fed. Cir. 2014)
Annotate this CaseIn a Colorado district court, e.Digital asserted claims 1 and 19 of the 774 patent, disclosing a device with a microphone and a removable, interchangeable flash memory recording medium that allows for audio recording and playback. Claims 1 and 19 recited “flash memory module which operates as sole memory of the received processed sound electrical signals.” The court construed that limitation to require “that the device use only flash memory, not RAM or any other memory system” to store processed sound electrical signals, finding that the use of RAM had been disclaimed during prosecution and that the existence of a microprocessor did not require use of RAM. The parties stipulated to dismissal with prejudice. The Patent and Trademark Office cancelled claims 1 and 19 in an ex parte reexamination, issued reexamined claim 33, which recites the limitations of the cancelled claims, including an identical sole memory limitation, and added limitations like a microprocessor. e.Digital sued in a California district court, asserting reexamined claim 33 and claims of the 108 patent. The court adopted the Colorado court’s construction. The Federal Circuit upheld the application of collateral estoppel with respect to the 774 patent, but reversed as to the unrelated 108 patent.
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