Leader Technologies Inc. v. Facebook Inc.

Filing 596

Proposed Jury Instructions by Facebook Inc.(a Delaware corporation). (Caponi, Steven)

IN THE UNITED STATES COURT
FOR THE DISTRICT OF DELAWARE
LEADER TECHNOLOGIES, INC.,
a Delaware corporation,
Plaintiff and Counterdefendant,
v.
FACEBOOK, INC.,
a Delaware corporation,
Defendant and Counterclaimant.

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CIVIL ACTION

No. 1:08-cv-00862-LPS
CONFIDENTIAL
FILED UNDER SEAL

FACEBOOK’S PROPOSED AMENDED JURY INSTRUCTIONS REGARDING CLAIM
CONSTRUCTION AND PRIOR ART

Steven L. Caponi (DE Bar #3484)
BLANK ROME LLP
1201 N. Market Street, Suite 800
Wilmington, DE 19801
302-425-6400
Fax: [phone]
Attorneys for Defendant and
Counterclaimant Facebook, Inc.
OF COUNSEL:
Heidi L. Keefe (pro hac vice)
Michael G. Rhodes (pro hac vice)
Mark R. Weinstein (pro hac vice)
Jeffrey T. Norberg (pro hac vice)
Melissa H. Keyes (pro hac vice)
Elizabeth L. Stameshkin (pro hac vice)
COOLEY LLP
3000 El Camino Real
5 Palo Alto Square, 4th Floor
Palo Alto, CA 94306
Dated: July 23, 2010

FACEBOOK’S PROPOSED AMENDED JURY INSTRUCTION NO. 3.4
CLAIM CONSTRUCTION FOR THE CASE

I will now explain to you the meaning of some of the words of the claims in this case. In
doing so, I will explain some of the requirements of the claims. You must accept my definition
of these words in the claims as correct. You should not take my definition of the language of the
claims as an indication that I have a view regarding how you should decide the issues that you
are being asked to decide, such as infringement and invalidity. These issues are yours to decide.
I instruct you that the following claim terms have the following definitions:
1.

The term “context” means “environment.” The term “context” appears in claims
1, 4, 7, 23, and 25 of the ‘761 Patent.

2.

The term “component” means “a computer-related entity, either hardware, a
combination of hardware and software, software, or software in execution.” The
term “component” appears in claims 1, 4, 7, 23, 25, 31 and 32 of the ‘761 Patent.

3.

The term “many-to-many functionality” means “two or more users able to access
two or more data files.” The term “many-to-many functionality” appears in claim
32 of the ‘761 Patent.

4.

The term “dynamically” means “automatically and in response to the preceding
event.” The term “dynamically” appears in claims 1, 9, 21 and 23 of the ‘761
Patent.

5.

The term “wherein” means “in which,” not “when.”

You must not take into consideration any argument that the prosecution history of the patent or
the specification of the patent or any other materials that may suggest a different definition of the
terms set forth in this instruction. You are not permitted to use any alternative or modified
definition in your determination of the infringement and invalidity issues in this case.

AUTHORITY:
Modified The Federal Circuit Bar Association Model Patent Jury Instructions, § 2.3 (February
2010) which cites Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996); O2 Micro Int’l
Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360-63 (Fed. Cir. 2008); Phillips v. AWH
Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc); Pitney Bowes, Inc. v. HewlettPackard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999); Cybor Corp. v. FAS Techs., 138 F.3d 1448,
1456 (Fed. Cir. 1998); Markman v. Westview Instruments, Inc., 52 F.3d 967, 977 (Fed. Cir.
1995); Court’s March 9, 2010 Claim Construction Order.
Black’s Legal Dictionary (8th ed. 2004).
O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351 (Fed. Cir. 2008).

FACEBOOK’S SUPPORT FOR ITS AMENDED JURY INSTRUCTION NO. 3.4
Facebook respectfully submits this revised jury instruction regarding claim construction
in response to Leader’s opening statement and Dr. Vigna’s direct testimony, both of which
improperly purport to construe the claim term “wherein” to mean “when.”1 For instance, in
Leader’s opening statement, they improperly argued to the jury:
You talk about tracking movement of a user from the user environment of the
web-based system and then on the second element, you dynamically update the
metadata when you access the files from the second page. That is the claim
interpretation that is in the actual claim itself.
Tr. at 232:13-19 (emphasis added). Compare Trial Tr. July 19, 2010 at 228:21-229:1 (“The
second component, the tracking component, this calls for tracking a user's movement from one
page to another, and then updating that metadata when a user accesses data from his previous
page.”) with U.S. Pat. No. 7,139,761 cl. 1 (“a computer-implemented tracking component of the
network-based system for tracking a change of the user from the first context to a second context
of the network-based system and dynamically updating the stored metadata based on the change,
wherein the user accesses the data from the second context”) (emphasis added). See also Tr. at
668:12-17, 669:13-17, 669:13-17, 687:24-688:5, 708:16-21, 746:19-24 (Dr. Vigna using “when”
instead of “wherein” in his discussion of claim language).
This Court did not construe this term during claim construction, as it is a non-technical
term to which the term’s common meaning should be applied. As claim construction in this case
has concluded, the term “wherein” should be given its plain and ordinary meaning, which
Facebook proffers to be “in which” in the context of the claim language. See, e.g., Black’s Legal
Dictionary (8th ed. 2004).
However, beginning with Dr. Vigna’s expert report and deposition, see Vigna Expert
Report at ¶¶ 92, 120, 183, 318 and Vigna Depo. at 167:19-23, and culminating in Leader’s
opening statement and Dr. Vigna’s testimony, Leader has taken the position that “wherein”
1

Facebook has repeatedly raised this issue in the time between Leader’s submission of Dr.
Vigna’s report and this amended jury instruction. See Facebook Daubert Brief, D.I. 416 at 5-6;
see generally Facebook’s Brief ISO Its Motion for Summary Judgment No. 3, D.I. 391.

means “when.” This construction of the word “wherein” is not the plain and ordinary meaning
of the word, and Leader has provided no support for its construction.

Further, Leader is

improperly attempting to argue claim construction to the jury, which, if allowed to continue
without intervention from the Court, is cause for reversible error. In O2 Micro Int’l Ltd. v.
Beyond Innovation Tech. Co., 521 F.3d 1351 (Fed. Cir. 2008), the Federal Circuit vacated a jury
verdict when the Court failed to construe a term in dispute between the parties and submitted the
dispute to the jury. In O2 Micro, the Federal Circuit stated:
When the district court failed to adjudicate the parties’ dispute regarding the
proper scope of ‘only if,’ the parties presented their arguments to the jury. By
failing to construe this term, the district court left the jury free to consider these
arguments. . . . [T]he parties’ arguments regarding the meaning and legal
significance of the “only if” limitation were improperly submitted to the jury.
Id. at 1362. Similarly, in American Patent Development Corp. v. Movielink, LLC, 637 F. Supp.
2d 224, 230 (D. Del. 2009) (Farnan J.), the Court found that as a dispute between the parties
regarding claim construction had “sharpened” since the Markman hearing, it could not allow the
parties to submit expert testimony regarding such claim construction to the jury. Where as here
it is clear that the parties dispute the construction of the term “wherein,” the dispute is a legal
issue for the Court to decide. Submitting this case to the jury without construing the claim term
“wherein” would be submission of claim construction to the jury, and would constitute reversible
error. See O2 Micro, 521 F.3d at 1362.
Finally, Leader is attempting to use the prosecution history and specification of the ’761
patent, as well as inventor testimony, to reargue the definition of “dynamically.” For example,
Leader insisted on counter-designating testimony from Mr. Lamb to the following:
Q.
The term "dynamic association",
what does that mean to you?
MS. KOBIALKA: Objection. Form.
THE WITNESS: Now?
BY MR. WEINSTEIN:
Q. Sure.
A.
Now, those two words together
would mean -- "dynamic" would be an automatic

and nonpredetermined step; and "association"
would be the creation of a relationship.
See Lamb Depo. at 159:19-160:3. Leader’s apparent motive of insisting on the presentation of
this testimony to the jury is to argue that the jury should adopt Mr. Lamb’s definition of the term
“dynamically” as opposed to the one they are required to apply by virtue of the Court’s claim
construction order. In addition, Leader asked questions about the prosecution history to and
solicited testimony regarding claim construction from Dr. Kearns, and incorporated arguments
regarding the prosecution history into its opening statement. See Tr. at 230:18-232:8, 10851096. This is improper argument of claim construction to the jury, particularly as the Court has
already construed the term “dynamically.” Thus, Facebook proposes a limiting instruction to the
jury that they are to ignore these arguments.

FACEBOOK’S PROPOSED AMENDED JURY INSTRUCTION NO. 4.2
PRIOR ART
Under the patent laws, a person is entitled to a patent only if the invention claims in the patent is
new and nonobvious in light of what came before. That which came before is referred to as
“prior art.” Prior art includes any of the following items received into evidence during trial:
1. any patent that issued more than one year before the effective filing date of the ’761 Patent;
2. any printed publication that was published more than one year before the effective filing date
of the ’761 Patent;
3. any product or method that was in public use or on sale in the United States more than one
year before the effective filing date of the ’761 Patent;
4. any published United States patent application or issued United States patent with a filing date
that predates the invention date of the ’761 Patent.
In this case, Facebook contends that the following are invalidating prior art:
(1) European Patent Application No. EP 1087306 (“Hubert ’306”) and U.S.
Patent No. 7,590,934 (“Hubert ’934”) (which contains the same disclosures)
(2) U.S. Patent No. 6,236,994 (“Swartz ’994”)
(3) U.S. Patent No. 6,434,403 B1 (“Ausems ’403”)
(4) The iManage DeskSite 6.0 User Reference Manual, July 26, 2001 (“iManage
Manual”)
(5) iManage 6.0, based on the disclosures of the iManage Manual
(6) Leader’s product, Leader2Leader powered by Digital Leaderboard
(“Leader2Leader”)

AUTHORITY:
Modified AIPLA Model Jury Instructions § 5 (March 2008).