e.Digital

Nice backhand DM! I think Samsung just got itch-bay slapped.

-------------------

e.DIGITAL CORPORATION’S SUR-REPLY IN FURTHER OPPOSITION TO SAMSUNG’S MOTION TO STRIKE e.DIGITAL’S INFRINGEMENT CONTENTIONS WITH RESPECT TO 20 ACCUSED SAMSUNG MOBILE PHONES

As established in e.Digital Corporation’s Opposition to Samsung’s Motion to Strike e.Digital’s Infringement Contentions With Respect To 20 Accused Samsung Mobile Phones (“Opposition Brief”), the factual premises on which Samsung bases its Motion to Strike are flawed. Samsung contends in its Motion to Strike that e.Digital changed its infringement theory as allegedly evidenced by:

(1) e.Digital’s substitution of the SCH-A990 for the SGH-D900 as the

representative charted product for the 20 mobile phones, which purportedly

resulted in a necessary change of theory; and

(2) e.Digital’s references to various forms of audio data, as opposed to just

voice memos, that allegedly were included only in e.Digital’s latest

infringement contentions.

(Motion to Strike at 2). e.Digital’s Opposition Brief, however, exposes the flaws in Samsung’s arguments and Samsung’s mischaracterizations of the evidence, i.e.:

(1) the representative product substitution was made because the old

representative product was dismissed with respect to the ‘774 Patent; and

because the new representative product functions as described in e.Digital’s

contentions, the product substitution was simply that -- a product

substitution; not a change of infringement theory (Opposition Brief at pp. 5-

7); and

(2) e.Digital’s infringement contentions have not been limited to the

recording of only voice notes; they have related to the ability of the accused

mobile phones to record and playback various forms of audio including, among

other things, multimedia files such as video clips that include audio. (Id. at pp.

7-9).

Faced with the fact that the e.Digital’s infringement contentions themselves contradict Samsung’s arguments, Samsung now argues in its Reply Brief that:

(1) e.Digital must have changed its infringement theory because a product

substitution would not be necessary if e.Digital’s theory did not change, and

(2) the references to recording various forms of audio in e.Digital’s earlier

infringement contentions are purportedly irrelevant.

Both of Samsung’s new arguments again are misplaced.

1. The Representative Product Substitution Was Necessary so that the Infringement Contentions Conformed to the Evidence and Issues in Dispute.

e.Digital agreed to drop its claim that the SGH-D900 infringed the ‘774 Patent because that single mobile phone did not operate as e.Digital had thought and contended in its infringement contentions. Accordingly, e.Digital’s only reasonable course of action was to replace the SGH-D900 product with a different but previously-identified product that operates as e.Digital had contended in its contentions; and it did so. Nevertheless, Samsung now argues that under those circumstances, e.Digital did not need to make a product substitution -- “there would have been no need for e.Digital to identify a new representative product or to submit new ICs, because its prior disclosure allegedly sufficed.” (Samsung’s Reply Brief at 2). In other words, Samsung would have preferred that the parties and the Court move forward with infringement contentions that referred to a product that the parties agree does not infringe and was no longer accused with respect to the ‘774 Patent. Such an approach does not make sense and is not encouraged by the Court’s Patent Local Rules. e.Digital should not be punished for its willingness to streamline the issues in dispute in this case by making a timely representative product substitution.

2. e.Digital’s References to Various Forms of Audio Data Cannot Be Ignored.

In its Motion to Strike, Samsung argues that e.Digital’s infringement theory was limited to the recording and playback of voice memos until e.Digital changed that theory in its Third or Fourth Amended Infringement Contentions. (Motion to Strike at pp. 2, 7, and 10 and fn 4 (referring to different contentions in different instances). Samsung repeats this argument with emphasis and unequivocal statements such as, “prior to its Third Amended ICs, none of e.Digital’s [infringement contentions] included the above cite or otherwise alleged infringement involving ‘multimedia file storage.’” (Id. at p. 10, fn 4 (emphasis in original)). Samsung unequivocal statements, however, are simply wrong, as explained in e.Digital’s Opposition Brief at pp. 7-9.

Samsung now retreats from its earlier argument and contends that the evidence cited by e.Digital to disprove Samsung’s unequivocal statements is irrelevant. In other words, Samsung now admits that e.Digital’s Second Amended Disclosures of Asserted Claims and Preliminary Contentions to Samsung served in February did in fact reference the functionality of the accused Samsung mobile phones that permits the recording, storage, and play back of various forms of audio data; but Samsung contends that those references should be disregarded by the Court as not relevant.

Samsung’s new argument, again, simply does not make sense because the infringement contentions make clear that e.Digital is accusing functionality related to various forms of audio data. Samsung’s attempt to distinguish what it characterizes as the claim limitations “at issue” versus the claim limitations referred to in the passages cited by e.Digital is nothing more than a red herring. Samsung does not cite any factual or legal basis to argue that e.Digital’s references to video recording and playback functionality in the “control circuitry” limitations should be ignored or given any less weight than the other claim limitations. To the contrary, Samsung’s claims that the “control circuitry” limitations were deficient is one of the pillars of Samsung’s previously-filed Motion to Compel. (See, e.g., Motion to Compel (DI 139) at pp. 10, 11 and 13). For Samsung now to argue that those same limitations should be ignored for the purpose of the instant Motion to Strike is disingenuous at best.

3. Conclusion

The linchpin of Samsung’s Motion to Strike remains its contention that e.Digital recently identified for the first time a new theory of infringement related to the 20 mobile phones. Yet Samsung has failed to show that e.Digital recently changed its infringement theory or that any alleged changes could have prejudiced Samsung. Samsung’s factual assertions in its Motion and Reply Brief simply do not conform to the actual evidence. There is no factual basis on which Samsung’s Motion to Strike should be granted.

Respectfully submitted this 6th day of August, 2009,

Michael C. Smith

Siebman, Reynolds, Burg, Phillips

& Smith, LLP – Marshall

713 South Washington Avenue

Marshall, Texas 75670

Tel.: 903.938.8900

Fax: 972.767.4620

michaelsmith@siebman.com

/s/ Matthew S. Yungwirth

L. Norwood Jameson

Matthew S. Yungwirth

Duane Morris LLP

1180 West Peachtree St., # 700

Atlanta GA 30309-3448

Tel: 404.253.6900

Fax: 404.253.6901

wjameson@duanemorris.com

msyungwirth@duanemorris.com

Gary R. Maze

Wesley W. Yuan

Duane Morris LLP

3200 Southwest Freeway, Ste 3150

Houston, TX 77027-7534

Tel.: 713.402.3900

Fax: 713.402.3901

grmaze@duanemorris.com

wwyuan@duanemorris.com

Attorneys for Plaintiff

e.Digital Corporation