France Telecom S.A. v. Marvell Semiconductor, Inc.
Filing
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ORDER Regarding Tentative Verdict Form re 181 Proposed Form of Verdict filed by France Telecom S.A., 182 Proposed Form of Verdict filed by Marvell Semiconductor Inc. (wholc1S, COURT STAFF) (Filed on 9/11/2014)
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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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FRANCE TELECOM S.A.,
Case No. 12-cv-04967-WHO
Plaintiff,
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v.
ORDER REGARDING TENTATIVE
VERDICT FORM
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MARVELL SEMICONDUCTOR INC.,
Re: Dkt. Nos. 181, 182
Defendant.
United States District Court
Northern District of California
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The parties have filed proposed verdict forms. Dkt. Nos. 181, 182. Having considered
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those proposals, and subject to arguments presented at the final pretrial conference, the Court
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tentatively adopts the following verdict form.
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VERDICT FORM
When answering the following questions and filling out this Verdict Form, please follow
the directions provided throughout the form. Your answer to each question must be unanimous.
Some of the questions contain legal terms that are defined and explained in detail in the Jury
Instructions. Please refer to the Jury Instructions if you are unsure about the meaning or usage of
any legal term that appears in the questions below.
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We, the jury, unanimously agree to the answers to the following questions and return them under
the instructions of this court as our verdict in this case.
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FINDINGS ON INFRINGEMENT CLAIMS1
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(The questions regarding infringement should be answered regardless of your findings with
respect to the validity or invalidity of the patent.)
United States District Court
Northern District of California
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A. Direct Infringement2
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1. Has France Telecom proven that it is more likely than not that Marvell
Semiconductor, while acting within the United States, used a method that was identical to the
method described in claim 1 of the ‘747 patent?
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Yes
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(for France Telecom)
No _____ (for Marvell Semiconductor)
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France Telecom’s proposed special interrogatories regarding products that embody the accused
method are not warranted since, as discussed in my order on the parties’ motions in limine, a
method patent is not infringed by the mere sale of a product that “substantially embodies” that
method.
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Marvell’s proposed verdict form requires the jury to answer infringement questions with regard
to each of 31 different accused products. That is unnecessary as the jury is presumed to have
made the necessary underlying factual determinations to support a general verdict. See, e.g.,
SynQor, Inc. v. Artesyn Technologies, Inc., 2011 WL 3625036 (E.D. Tex. Aug. 17, 2011)
(rejecting argument that verdict form was deficient where it did not separately address the accused
products) aff'd, 709 F.3d 1365 (Fed. Cir. 2013); cf Agrizap, Inc. v. Woodstream Corp., 520 F.3d
1337, 1343 (Fed. Cir. 2008) (“when the jury is given an essentially black box verdict form—that
is, a form that merely asks the jury to answer “yes” or “no” as to whether a claim is obvious, such
as was done in this case3—we presume all factual disputes were resolved in favor of the verdict.”).
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2. Has France Telecom proven that it is more likely than not that Marvell
Semiconductor, while acting within the United States, used a method that was identical to the
method described in claim 10 of the ‘747 patent?
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Yes
(for France Telecom)
No _____ (for Marvell Semiconductor)
B. Inducing Infringement
3. Has France Telecom proven that it is more likely than not: (i) that a third party
infringed claim 1 of the ‘747 patent; (ii) that Marvell Semiconductor took action that actually
induced that infringement by the third party; and (iii) that Marvell Semiconductor was aware
of the patent and believed that its actions would encourage infringement of a valid patent, or
alternatively that it was willfully blind as to whether its actions would encourage infringement
of the patent?
United States District Court
Northern District of California
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Yes
(for France Telecom)
No _____ (for Marvell Semiconductor)
4. Has France Telecom proven that it is more likely than not: (i) that a third party
infringed claim 10 of the ‘747 patent; (ii) that Marvell Semiconductor took action that actually
induced that infringement by the third party; and (iii) that Marvell Semiconductor was aware
of the patent and believed that its actions would encourage infringement of a valid patent, or
alternatively that it was willfully blind as to whether its actions would encourage infringement
of the patent?
Yes
(for France Telecom)
No _____ (for Marvell Semiconductor)
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C. Contributory Infringement
5. Has France Telecom proven that it is more likely than not: (i) that a third party
infringed claim 1 of the ‘747 patent; (ii) that Marvell Semiconductor supplied an important
component of the infringing part of the accused method; (iii) that the component was not a
common component suitable for non-infringing use; and (iv) that Marvell Semiconductor
supplied the component with knowledge of the ‘747 patent and knowledge that the component
was especially made or adapted for use in an infringing manner?
Yes
(for France Telecom)
No _____ (for Marvell Semiconductor)
6. Has France Telecom proven that it is more likely than not: (i) that a third party
infringed claim 10 of the ‘747 patent; (ii) that Marvell Semiconductor supplied an important
component of the infringing part of the accused method; (iii) that the component was not a
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common component suitable for non-infringing use; and (iv) that Marvell Semiconductor
supplied the component with knowledge of the ‘747 patent and knowledge that the component
was especially made or adapted for use in an infringing manner?
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Yes
(for France Telecom)
No _____ (for Marvell Semiconductor)
D. Willful Infringement
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(a)
Has France Telecom proven that it is highly probable from an objective
point of view that the defenses put forth by Marvell Semiconductor failed to raise
any substantial question with regard to infringement, validity or enforceability of
the patent claim?
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United States District Court
Northern District of California
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Yes
(for France Telecom)
No _____ (for Marvell Semiconductor)
[If the answer to question (a) is “yes,” answer question 7(b). If your answer to question
7(a) is “no,” go to question 8.]
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(b)
Has France Telecom proven that it is highly probable that Marvell
Semiconductor actually knew, or it was so obvious that Marvell Semiconductor
should have known, that its actions constituted infringement of a valid and
enforceable patent?
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Yes
(for France Telecom)
No _____ (for Marvell Semiconductor)
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FINDINGS ON INVALIDITY CLAIMS
(The questions regarding invalidity should be answered regardless of your findings with
respect to infringement.)
E. Obviousness
8. Has Marvell Semiconductor proven that it is highly probable that claim 1 of the
’747 patent would have been obvious to a person of ordinary skill in the art at the time the
application was filed?
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United States District Court
Northern District of California
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Yes
(for Marvell Semiconductor)
No _____ (for France Telecom)
9. Has Marvell Semiconductor proven that it is highly probable that claim 10 of the
’747 patent would have been obvious to a person of ordinary skill in the art at the time the
application was filed?
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Yes
(for Marvell Semiconductor)
No _____ (for France Telecom)
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F. Written Description Requirement
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10. Has Marvell Semiconductor proven that it is highly probable that the specification
of the ‘747 patent does not contain an adequate written description of the method claimed in
claim 1?
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Yes
(for Marvell Semiconductor)
No _____ (for France Telecom)
11. Has Marvell Semiconductor proven that it is highly probable that the specification
of the ‘747 patent does not contain an adequate written description of the method claimed in
claim 10?
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Yes
(for Marvell Semiconductor)
No _____ (for France Telecom)
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G. Enablement
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12. Has Marvell Semiconductor proven that it is highly probable that the specification
of the ‘747 patent does not contain a description of the invention claimed in claim 1 that is
sufficiently full and clear to enable persons of ordinary skill in the art to make and use the
invention?
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Yes
(for Marvell Semiconductor)
No _____ (for France Telecom)
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13. Has Marvell Semiconductor proven that it is highly probable that the specification
of the ‘747 patent does not contain a description of the invention claimed in claim 10 that is
sufficiently full and clear to enable persons of ordinary skill in the art to make and use the
invention?
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United States District Court
Northern District of California
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Yes
(for Marvell Semiconductor)
No _____ (for France Telecom)
H. Inventorship
14. Has Marvell Semiconductor proven that it is highly probable that the ‘747 patent
fails to meet the requirement to name all actual inventors of the invention claimed in claim 1?
Yes
(for Marvell Semiconductor)
No _____ (for France Telecom)
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15. Has Marvell Semiconductor proven that it is highly probable that the ‘747 patent
fails to meet the requirement to name all actual inventors of the invention claimed in claim 10?
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Yes
(for Marvell Semiconductor)
No _____ (for France Telecom)
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FINDINGS ON DAMAGES
If you answered question 1, 2, 3, 4, 5, or 6 “yes” and questions 8, 9, 10, 11, 12, 13, 14, 15
“no,” proceed to answer the remaining questions. If you did not so answer, do not answer the
remaining questions and proceed to check and sign the verdict form.
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I. Reasonable royalty
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16. What amount has France Telecom proven that it is more likely than not entitled to
as a reasonable royalty?
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(a)
$__________ one-time lump sum payment, or
(b)
$__________ per chip for ______ number of accused products.
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United States District Court
Northern District of California
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J. Laches
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17. Do you find that it is more likely than not that France Telecom is not entitled to
recover damages from before its filing of this lawsuit on June 26, 2012 because France
Telecom unreasonably delayed filing the lawsuit after it knew our should have known of
Marvell Semiconductor’s alleged infringement, leading to economic and/or evidentiary
prejudice to Marvell Semiconductor? Your decision regarding this question may prevent
France Telecom from collecting damages from before its filing of this lawsuit.
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Yes
(for Marvell Semiconductor)
No _____ (for France Telecom)
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You have now reached the end of the verdict form and should review it to ensure it
accurately reflects your unanimous determinations. The Presiding Juror should then sign and date
the verdict form in the spaces below and notify the Security Guard that you have reached a verdict.
The Presiding Juror should retain possession of the verdict form and bring it when the jury is
brought back into the courtroom.
Have the presiding juror sign and date this form.
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Signed:________________________________
Date:_______________________________
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PRESIDING JUROR
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IT IS SO ORDERED.
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Dated: September 11, 2014
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______________________________________
WILLIAM H. ORRICK
United States District Judge
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United States District Court
Northern District of California
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