Personalized User Model LLP v. Google Inc.

Filing 598

Proposed Jury Instructions by Personalized User Model LLP, Konig Yochai [Personalized User Model, L.L.P.'s Proposed Final Jury Instructions]. (Murphy, Regina)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
PERSONALIZED USER MODEL, L.L.P.,

)
)
Plaintiff,
)
)
v.
)
)
GOOGLE, INC.,
)
)
Defendant.
)
)
)
)
GOOGLE, INC.
)
)
Counterclaimant,
)
)
v.
)
PERSONALIZED USER MODEL, L.L.P. and )
)
YOCHAI KONIG,
)
Counterclaim-Defendants. )

C.A. No. 09-525 (LPS)

PERSONALIZED USER MODEL, L.L.P.’S
PROPOSED FINAL JURY INSTRUCTIONS1

1

Unless otherwise specifically noted, the authority for the following Joint Proposed Final
Jury Instructions are: DePuy Synthes Products, LLC, v. Globus Medical, Inc., No. 1:11-CV00652-LPS (D. Del.) (“DePuy”) Final Jury Instructions; Power Integration, Inc. v. Fairchild
Semiconductor Int’l, Inc., No. 1:08-CV-00309-LPS (D. Del.) (“Power Integration”) Final Jury
Instructions; Tarkus Imaging, Inc. v. Adobe Sys., Inc., No. 1:10-cv-063-LPS (D. Del) (“Tarkus”)
Final Jury Instructions; Leader Techs v. Facebook, No. 1:08-cv-862-LPS (D. Del.) (“Leader”);
Final Jury Instructions; Laboratory Skin Care, Inc. v. Limited Brands, Inc., Civ. A. No. 06-601LPS (D. Del. Feb. 16, 2011) (“Laboratory Skin”) Final Jury Instructions; B. Braun Melsungen
AG v. Terumo Med. Corp., Civ. A. No. 09-347-LPS (D. Del. Nov. 18, 2010) (“Braun”) Final
Jury Instructions; ICU Medical Inc. v. Rymed Techs., No. 1:07-cv-468-LPS (D. Del.) (“ICU
Medical”); Uniform Jury Instructions for Patent Cases in the United States District Court for the
District of Delaware (March 1993) (“Delaware Uniform Instructions”); Instructions for Patent
Cases in the United States District Court for the District of Delaware (March 1993) (“Delaware
Uniform Instructions”).

PUM is separately filing instructions that have been agreed upon by both parties. Having
only this morning received Google’s proposed jury instructions, PUM was unable to include the
competing proposals in one document. Pursuant to D. Del. LR 51.1(a), PUM herewith files
PUM’s Proposed Final Jury Instructions that are contested. Where the parties have jointly
agreed to an instruction, PUM also includes that instruction here, for the Court’s convenience.

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TABLE OF CONTENTS
Page
1.

GENERAL INSTRUCTIONS ......................................................................................... 1
1.1
1.2

DUTY OF THE JURY (JOINTLY SUBMITTED)............................................... 2

1.3

BURDENS OF PROOF ....................................................................................... 3

1.4

EVIDENCE DEFINED (JOINTLY SUBMITTED) ............................................. 5

1.5

DIRECT AND CIRCUMSTANTIAL EVIDENCE (JOINTLY
SUBMITTED) ..................................................................................................... 6

1.6

CONSIDERATION OF EVIDENCE (JOINTLY SUBMITTED) ......................... 7

1.7

STATEMENTS OF COUNSEL (JOINTLY SUBMITTED)................................. 8

1.8

CREDIBILITY OF WITNESSES (JOINTLY SUBMITTED) .............................. 9

1.9

EXPERT WITNESSES (JOINTLY SUBMITTED) ........................................... 10

1.10

DEPOSITION TESTIMONY (JOINTLY SUBMITTED) .................................. 11

1.11

DEMONSTRATIVE EXHIBITS ....................................................................... 12

1.12

USE OF NOTES ................................................................................................ 13

1.13
2.

INTRODUCTION (JOINTLY SUBMITTED) ..................................................... 1

NUMBER OF WITNESSES .............................................................................. 14

THE PARTIES AND THEIR CONTENTIONS ............................................................ 15
2.1
2.2

3.

SUMMARY OF ISSUES ................................................................................... 17
THE PATENT LAWS ....................................................................................... 18

PATENT INFRINGEMENT ......................................................................................... 19
3.1

INFRINGEMENT OF PATENT CLAIMS ........................................................ 19

3.2

CLAIM CONSTRUCTION FOR THE CASE .................................................... 21

3.3

INDEPENDENT AND DEPENDENT CLAIMS ............................................... 24

3.4

OPEN ENDED OR “COMPRISING” CLAIMS ................................................ 25

3.5

PATENT INFRINGEMENT GENERALLY ...................................................... 26
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3.6
3.7

DIRECT INFRINGEMENT – LITERAL INFRINGEMENT ............................. 28

3.8

DIRECT INFRINGEMENT – DOCTRINE OF EQUIVALENTS ...................... 29

3.9

INDIRECT INFRINGEMENT – GENERALLY ................................................ 31

3.10

INDIRECT INFRINGEMENT – INDUCING PATENT
INFRINGEMENT.............................................................................................. 32

3.11
4.

DIRECT INFRINGEMENT – KNOWLEDGE OF PATENT OR
INTENT TO INFRINGE IS IMMATERIAL...................................................... 27

PRACTICING YOUR OWN PATENTS IS NOT A DEFENSE TO
INFRINGEMENT.............................................................................................. 34

INVALIDITY ............................................................................................................... 35
4.1

INVALIDITY—GENERALLY ......................................................................... 35

4.2

PRESUMPTION OF VALIDITY ...................................................................... 36

4.3

ANTICIPATION ............................................................................................... 37

4.4

OBVIOUSNESS ................................................................................................ 39
4.4.1 OBVIOUSNESS – SCOPE AND CONTENT OF THE
PRIOR ART ........................................................................................... 41
4.4.2 OBVIOUSNESS – DIFFERENCES OVER THE PRIOR
ART ....................................................................................................... 43
4.4.3 OBVIOUSNESS – RELIANCE ON HINDSIGHT
IMPROPER............................................................................................ 45
4.4.4 OBVIOUSNESS - LEVEL OF ORDINARY SKILL .............................. 46
4.4.5 OBVIOUSNESS – SECONDARY CONSIDERATIONS
CONCERNING OBVIOUSNESS .......................................................... 47

5.

GOOGLE’S BREACH OF CONTRACT COUNTERCLAIM ....................................... 49
5.1

STATUTE OF LIMITATIONS.......................................................................... 50

5.2

BREACH OF CONTRACT ............................................................................... 53

5.2.1 ASSIGNMENT OF CONTRACT RIGHTS ....................................................... 53
5.2.2 BREACH OF CONTRACT ELEMENTS .......................................................... 53

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5.3
5.4

CONTRACT INTERPRETATION .................................................................... 58

5.5
6.

CONCEPTION .................................................................................................. 55

EXCEPTION TO EMPLOYMENT AGREEMENT UNDER
SECTION 2870 OF THE CALIFORNIA LABOR CODE.................................. 60

DELIBERATION AND VERDICT ............................................................................... 62
6.1

INTRODUCTION (JOINTLY SUBMITTED) ................................................... 62

6.2

UNANIMOUS VERDICT (JOINTLY SUBMITTED) ....................................... 63

6.3

DUTY TO DELIBERATE (JOINTLY SUBMITTED) ...................................... 64

6.4

SOCIAL MEDIA (JOINTLY SUBMITTED) .................................................... 65

6.5

COURT HAS NO OPINION (JOINTLY SUBMITTED) .................................. 66

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1.

GENERAL INSTRUCTIONS
1.1

INTRODUCTION (JOINTLY SUBMITTED)

Members of the jury, now it is time for me to instruct you about the law that you must
follow in deciding this case.
I will start by explaining your duties and the general rules that apply in every civil case.
Then I will explain some rules that you must use in evaluating particular testimony and evidence.
Then I will explain the positions of the parties and the law you will apply in this case.
And last, l will explain the rules that you must follow during your deliberations in the jury room,
and the possible verdicts that you may return.
Please listen very carefully to everything I say.
You will have a written copy of these instructions with you in the jury room for your
reference during your deliberations. You will also have a verdict form, which will list the
questions that you must answer to decide this case.

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1.2

DUTY OF THE JURY (JOINTLY SUBMITTED)

You have two main duties as jurors. The first one is to decide what the facts are from the
evidence that you saw and heard here in court. Deciding what the facts are is your job, not mine,
and nothing I have said or done during this trial was meant to influence your decision about the
facts in any way.
Your second duty is to take the law that I give you, apply it to the facts, and decide, under
the appropriate burden of proof, which party should prevail on any given issue. It is my job to
instruction you about the law, and you are bound by the oath that you took at the beginning of
the trial to follow the instructions that I give you, even if you personally disagree with them. This
includes the instructions that I gave you before and during the trial, and these instructions. All
the instructions are important, and you should consider them together as a whole.
Perform these duties fairly. Do not let any bias, sympathy, or prejudice that you may feel
toward one side or the other influence your decision in any way.

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1.3

BURDENS OF PROOF

PUM has the burden of proving patent infringement by what is called a preponderance of
the evidence. That means PUM has to produce evidence which, when considered in light of all
of the facts, leads you to believe that what PUM claims is more likely true than not. To put it
differently, if you were to put the evidence of PUM and Google concerning infringement on
opposite sides of a scale, the evidence supporting PUM’s’ claims would have to make the scales
tip somewhat on its side in each instance. If the scale should remain equal or tip in favor of
Google, you must find for Google.
In this case, in addition to denying that they have infringed, Google asserts that both of
PUM’s Patents are invalid. The Asserted Patents, however, are presumed to be valid. Google
thus has the burden of proving that the Asserted Patents are invalid by clear and convincing
evidence.2
Clear and convincing evidence is evidence that produces an abiding conviction that the
truth of a factual contention is highly probable. Proof by clear and convincing evidence is, thus,
a higher burden than proof by a preponderance of the evidence.
Google has the burden of proving by a preponderance of the evidence its breach of
contract claims. PUM in turn must prove by a preponderance of the evidence its defenses to that

2

Google requests in § 1.3 of its Proposed Final Jury Instructions that if the Court precludes
evidence of the reexamination proceedings, the Court should instruct the jury that Google need
only prove invalidity by a preponderance of the evidence. This is contrary to law. See Microsoft
Corp. v. i4i P’ship, --- U.S. ---, 131 S.Ct. 2238, 2250-51 (2011) (holding presumption of validity
and clear and convincing evidence standard apply even where defendant presents evidence of
prior art the PTO did not review). This is because “[n]othing in §282’s text suggests that
Congress meant to . . . enact a standard of proof that would rise and fall with the facts of each
case.” Id. at 2250. “Any re-calibration of the standard of proof remains in [Congress’] hands,”
id. at 2252, and while “Congress has often amended § 282” in the last 30 years, “not once . . . has
it even considered a proposal to lower the standard of proof.” Id.

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claim, namely that the claim is time-barred, and that the inventions are protected from
assignment under California law
Those of you familiar with criminal cases will have heard the term “proof beyond a
reasonable doubt.” That burden does not apply in a civil case and you should, therefore, put it
out of your mind in considering whether or not PUM or Google has met its burden of proof.

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1.4

EVIDENCE DEFINED (JOINTLY SUBMITTED)

You must make your decision based only on the evidence that you saw and heard here in
Court. Do not let rumors, suspicions, or anything else that you may have seen or heard outside of
Court influence your decision in any way.
The evidence in this case includes only what the witnesses said while they were testifying
under oath (including deposition testimony that has been played or read to you), the exhibits that
I allowed into evidence, the stipulations that the lawyers agreed to.
Certain charts and graphics have been used to illustrate testimony from witnesses. Unless
I have specifically admitted them into evidence, these charts and graphics are not themselves
evidence, even if they refer to, identify, or summarize evidence, and you will not have these
demonstratives in the jury room.
Nothing else is evidence. The lawyers’ statements and arguments are not evidence. The
arguments of the lawyers are offered solely as an aid to help you in your determination of the
facts. Their questions and objections are not evidence. My legal rulings are not evidence. Any of
my comments and questions are not evidence. The notes taken by any juror are not evidence.
During the trial I may have not let you hear the answers to some of the questions that the
lawyers asked. I also may have ruled that you could not see some of the exhibits that the lawyers
wanted you to see. You must completely ignore all of these things. Do not even think about
them. Do not speculate about what a witness might have said or what an exhibit might have
shown. These things are not evidence, and you are bound by your oath not to let them influence
your decision in any way.
Make your decision based only on the evidence, as I have defined it here, and nothing
else.
.
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1.5

DIRECT AND CIRCUMSTANTIAL EVIDENCE (JOINTLY
SUBMITTED)
Also contained in the parties’ Joint Proposed
Final Jury Instructions as Google proposal: 1.6

Now, some of you may have heard the terms “direct evidence” and “circumstantial
evidence.”
Direct evidence is simply evidence like the testimony of an eyewitness which, if you
believe it, directly proves a fact. If a witness testified that he saw it raining outside, and you
believed him, that would be direct evidence that it was raining.
Circumstantial evidence is a chain of circumstances that indirectly proves a fact. If
someone walked into the courtroom wearing a raincoat covered with drops of water and carrying
a wet umbrella, that would be circumstantial evidence from which you could conclude that it was
raining.
It is your job to decide how much weight to give the direct and circumstantial evidence.
The law makes no distinction between the weight that you should give to either one, nor does it
say that one is any better evidence than the other. You should consider all the evidence, both
direct and circumstantial, and give it whatever weight you believe it deserves.

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1.6

CONSIDERATION OF EVIDENCE (JOINTLY SUBMITTED)
Also contained in the parties’ Joint Proposed
Final Jury Instructions as Google proposal: 1.5

You should use your common sense in weighing the evidence. Consider it in light of your
everyday experience with people and events, and give it whatever weight you believe it deserves.
If your experience tells you that certain evidence reasonably leads to a conclusion, you are free
to reach that conclusion.

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1.7

STATEMENTS OF COUNSEL (JOINTLY SUBMITTED)

A further word about statements and arguments of counsel. The attorneys’ statements and
arguments are not evidence. Instead, their statements and arguments are intended to help you
review the evidence presented. If you remember the evidence differently from the attorneys, you
should rely on your own recollection.
[Google proposal: The role of attorneys is to zealously and effectively advance the
claims of the parties they represent within the bounds of the law. An attorney may argue
all reasonable conclusions from evidence in the record. It is not proper, however, for an
attorney to state an opinion as to the truth or falsity of any testimony or evidence. What an
attorney personally thinks or believes about the testimony or evidence in a case is not
relevant, and you are instructed to disregard any personal opinion or belief concerning
testimony or evidence that an attorney has offered during opening or closing statements, or
at any other time during the course of the trial.]

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1.8

CREDIBILITY OF WITNESSES (JOINTLY SUBMITTED)

You are the sole judges of each witness’s credibility. You should consider each witness’s
means of knowledge; strength of memory; opportunity to observe; how reasonable or
unreasonable the testimony is; whether it is consistent or inconsistent; whether it has been
contradicted; the witness’s biases, prejudices, or interests; the witness’s manner or demeanor on
the witness stand; and all circumstances that, according to the evidence, could affect the
credibility of the testimony.
If you find the testimony to be contradictory, you must try to reconcile it, if reasonably
possible, so as to make one harmonious story of it all. But if you can’t do this, then it is your
duty and privilege to believe the testimony that, in your judgment, is most believable and
disregard any testimony that, in your judgment, is not believable.
In determining the weight to give to the testimony of a witness, you should ask yourself
whether there is evidence tending to prove that the witness testified falsely about some important
fact, or, whether there was evidence that at some other time the witness said or did something, or
failed to say or do something, that was different from the testimony he or she gave at trial. You
have the right to distrust such witness’s testimony in other particulars and you may reject all or
some of the testimony of that witness or give it such credibility as you may think it deserves.
You should remember that a simple mistake by a witness does not necessarily mean that
the witness was not telling the truth. People may tend to forget some things or remember other
things inaccurately. If a witness has made a misstatement, you must consider whether it was
simply an innocent lapse of memory or an intentional falsehood, and that may depend upon
whether it concerns an important fact or an unimportant detail.
This instruction applies to all witnesses.

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1.9

EXPERT WITNESSES (JOINTLY SUBMITTED)
Also contained in the parties’ Joint Proposed
Final Jury Instructions as Google proposal: 1.10

When knowledge of technical subject matter may be helpful to the jury, a person who has
special training or experience in that technical field – a person called an expert witness – is
permitted to state his or her opinion on those technical matters. This skill or knowledge is not
common to the average person, but has been acquired by the expert through special study or
experience. [Google proposal: However, you are not required to accept an expert witness’s
opinion. As with any other witness, it is up to you to decide whether to rely on an expert
witness.]
In weighing expert testimony, you may consider the expert’s qualifications, the reasons
for the expert’s opinions, and the reliability of the information supporting the expert’s opinions,
as well as the factors I have previously mentioned for weighing testimony of any other witness.
Expert testimony should receive whatever weight and credit you think appropriate, given all the
other evidence in the case. You are free to accept or reject the testimony of experts, just as with
any other witness.

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1.10

DEPOSITION TESTIMONY (JOINTLY SUBMITTED)
Also contained in the parties’ Joint Proposed
Final Jury Instructions as Google proposal: 1.11

A deposition is the sworn testimony of a witness taken before trial. The witness is placed
under oath and swears to tell the truth, and lawyers for each party may ask questions. A court
reporter is present and records the questions and answers. The deposition may also be recorded
on videotape.
During the trial, certain testimony was presented to you from the playing of video
excerpts or the reading of written excerpts from depositions. Deposition testimony is out of
court testimony given under oath and is entitled to the same consideration you would give it had
the witness testified in person here in the courtroom.

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1.11

DEMONSTRATIVE EXHIBITS

During the course of the trial, you have seen many exhibits. Many of these exhibits were
admitted as evidence.

You will have these admitted exhibits in the jury room for your

deliberations. During the course of this case you have seen some exhibits (including charts and
animations) that the parties used to help illustrate the testimony of the various witnesses. These
illustrative exhibits, called “demonstrative exhibits,” may not have been offered and admitted as
evidence in this case. If they have not been admitted, they should not be considered as evidence.
Rather, it is the underlying testimony of the witness that you heard or the exhibits that
have been entered into evidence when you saw the demonstrative exhibits that is the evidence in
this case.
In some instances, certain charts and summaries may have been received into evidence to
illustrate information brought out in the trial. You may use these charts and summaries as
evidence, even though the underlying documents and records are not here. You should give
them only such weight as you think they deserve.

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1.12

USE OF NOTES

You may use notes taken during trial to assist your memory. However, you should use
caution in consulting your notes. There is always a tendency to attach undue importance to
matters that you have written down. Some testimony that is considered unimportant at the time
presented, and thus not written down, takes on greater importance later on in the trial in light of
all the evidence presented. Therefore, you are instructed that your notes are only a tool to aid
your own individual memory, and you should not compare notes with other jurors in determining
the content of any testimony or in evaluating the importance of any evidence. Your notes are not
evidence, and are by no means a complete outline of the proceedings or a list of the highlights of
the trial. You should not be overly influenced by your notes or those of your fellow jurors.
Above all, your memory should be the greatest asset when it comes time to deliberate and
render a decision in this case.

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1.13

NUMBER OF WITNESSES
Also contained in the parties’ Joint Proposed
Final Jury Instructions as Google proposal: 1.9

One more point about the witnesses.

Sometimes jurors wonder if the number of

witnesses who testified makes any difference.
Do not make any decisions based only on the number of witnesses who testified. What is
more important is how believable the witnesses were, and how much weight you think their
testimony deserves. Concentrate on that, not the numbers.

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2.

THE PARTIES AND THEIR CONTENTIONS 3
I will now review for you the parties in this action, and the positions that you will have to

consider in reaching your verdict.
As I previously told you, and as you well know by now, the Plaintiff in this case is
Personalized User Model or P-U-M for short. The Defendant in this case is Google. Google is
also a counter-claimant on its breach of contract claim against Dr. Yochai Konig, one of the
inventors of the patents in suit.
The United States Patents at issue in this case are: U.S. Patent Numbers 6,981,040, and
7,685,276. For simplicity, I will refer to these patents by their last three numbers, as “the ’040
patent” and “the ’276 patent.”

A copy of each of these patents has been given to you.

Collectively, I will refer to these patents as the “Asserted Patents” or the “Patents-in-Suit.”
PUM contends that the following Google products infringe the Asserted Patents: Google
Search, Google’s Search Ads System (Adwords); Google’s Content Ads System (Adsense,
including advertising on YouTube); and Google’s YouTube Video Recommendations.
Collectively, I will refer to these products as the Google “Accused Products.”
PUM asserts that Google Search infringes claims 1, 11, 22, 32, or 34 of the ’040 patent
and claims 1, 3, 6, 21, or 22 of the ’276 patent; that Google’s Search Ads System (Adwords)
infringes claims 1, 11, 22, 32, or 34 of the ’040 patent and claims 1, 3, 5, 6, 7, or 21 of the ’276
patent; that Google’s Content Ads System (Adsense, including advertising on YouTube)
3

PUM has presented its understanding of the issues to be tried to the jury in this action,
based on its understanding that the parties agree that Google’s counterclaims seeking a
declaration of co-ownership, and for constructive trust and lack of standing by PUM are issues
for the Court rather than the jury to decide, as is Google’s claim for conversion. See Ex. 12 to the
Proposed Final Pretrial Order (PUM’s Motion In Limine To Exclude Argument Or Evidence
That Google Is An Owner of the Patents-In-Suit Or Other Related Legal Or Equitable Issues). In
the event the Court determines that the jury should decide any of these issues, PUM will
supplement to provide proposed instructions.

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infringes claims 1, 11, 22, 32, or 34 of the ’040 patent and claims 1, 3, 6, 7, or 22 of the ’276
patent; and that Google’s YouTube Video Recommendations infringes claims 1, 22, 32, or 34 of
the ʼ040 Patent. I will refer to these claims collectively as the “Asserted Claims.”
Google denies that the Accused Products infringe the Asserted Claims. Google also
contends that the Asserted Patents are invalid because they are anticipated or rendered obvious
by the prior art.
Google also asserts a breach of contract claim against Dr. Konig and alleges that Dr.
Konig breached his employment agreement with SRI by assigning his inventions to Utopy rather
than SRI.4 PUM and Dr. Konig deny that Google has standing to bring such a claim and deny
that there was any breach. They further assert that Google’s claims are barred as untimely, and
that Dr. Konig’s inventions were protected from assignment by the California Labor Code.

4

Google proposes that the jury be instructed that Google claims that “because of this
breach claim, Google is a rightful owner of the patents-in-suit.” First, it is undisputed that
ownership is an issue for the Court, not the jury, and there is no dispute that Google is not now
“a rightful owner.” See Archnid. Inc. v. Merit Indus., Inc., 939 F.2d 1574, 1579 (Fed. Cir. 1991);
Bd. Of Trustees of Leland Stanford v. Roche, 583 F.3d 832, 841-42 (Fed. Cir. 2009); IpVenture,
Inc. v. Prostar Computer, Inc., 503 F.3d 1324, 1327 (Fed. Cir. 2007); United States v. Bailey,
288 F. Supp. 2d 1261, 1270 (M.D. Fla. 2003); McCafferty v. Gilbank, 249 Cal. App. 2d 569,
574-76 (Cal. Ct. App. 1967). Further, Google must do more than prove breach of contract to be
declared an owner. See, e.g., PUM’s Motion in limine (Ex. 12 to the Proposed Final Pretrial
Order). It must establish that it has standing to assert SRI’s breach claim, that the claim is not
barred by the statute of limitations, that Dr. Konig’s assignment to Utopy and its assigns does not
prevent the Court from declaring Google an owner, and that PUM and its predecessors are not
good faith purchasers for value pursuant to 35 U.S.C. § 261.  

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2.1

SUMMARY OF ISSUES

I will now summarize the issues that you must decide and for which I will provide
instructions to guide your deliberations. You must decide the following main issues:
1.

Whether PUM has proven by a preponderance of the evidence that the

Google Accused Products infringe or have infringed or whether Google has actively induced
infringement of any of the Asserted Claims of the Patents-in-Suit.
2.

Whether Google has proven by clear and convincing evidence that any of

the Asserted Claims of the Patents-in-Suit are is invalid due to anticipation or obviousness over
the prior art. Google has the burden of proving the invalidity of each patent claim, and the
validity of each claim must be separately evaluated.
3.

Whether Google has proven by a preponderance of the evidence that Dr.

Konig breached his employment agreement with SRI by assigning his patent rights to Utopy
rather than SRI.
4.

Whether PUM has proven by a preponderance of the evidence that

Google’s breach of contract claim is barred as untimely under the statute of limitations.
5.

Whether PUM has proven by a preponderance of the evidence that Dr.

Konig’s inventions were protected from assignment by the California Labor Code.
I will provide instructions concerning all of these claims and defenses shortly.

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2.2

THE PATENT LAWS
Also contained in the parties’ Joint Proposed
Final Jury Instructions as Google proposal: 1.18

At the beginning of the trial, I gave you some general information about patents and the
patent system and a brief overview of the patent laws relevant to this case. I will now give you
more detailed instructions about the patent laws that specifically relate to this case. If you would
like to review my instructions at any time during your deliberations, you will have your copy
available to you in the jury room.

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3.

PATENT INFRINGEMENT
3.1

INFRINGEMENT OF PATENT CLAIMS

I will now instruct you on the rules you must follow when deciding whether PUM has
proven by a preponderance of the evidence that Google infringes the Asserted Claims of the
Patents in Suit.
Patent law gives the owner of a valid patent the right to keep others from using a patented
product or method within the United States during the term of the patent. Before you can decide
many of the issues in this case, you will need to understand the role of patent “claims.”
The claims of a patent are the numbered paragraphs at the end of the patent. The claims
are important because it is the words of the claims that define what a patent covers. The text in
the rest of the patent provides a description and/or examples of the invention and provides a
context for the claims, but it is the claims that define the breadth of the patent’s coverage. The
claims are intended to define, in words, the boundaries of the invention that constitute the patent
owner’s property rights. Infringement is the act of trespassing on those rights.
Each claim is effectively treated as if it were a separate patent, and each claim may cover
more or less than another claim. To show patent infringement by Google, PUM need only
establish that one claim of either the ’040 or ’276 patents has been infringed by Google.
In patent law, the requirements of a claim are often referred to as “claim elements” or
“claim limitations.” When a thing (such as a product) meets each and every requirement of a
claim, the claim is said to “cover” that thing, and that thing is said to “fall” within the scope of
that claim.
The law says that it is my role to define the terms of the claims and it is your role to apply
my definitions to the issues that you are asked to decide in this case. Therefore, I will explain to
you the meaning of some of the words of the claims in this case. In doing so, I will explain some
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of the requirements of the claims and you must accept my definition of these words in the claims
as correct.
It is your job to take these definitions and apply them to the issues you are deciding, such
as infringement and validity.5
-

5

Tarkus, ¶¶ 3.1, 3.5; Power Integration, § 3.1; Leader Technologies, ¶ 3.2.

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3.2

CLAIM CONSTRUCTION FOR THE CASE

It is the Court’s duty under the law to define what the patent claims mean. I have made
my determinations and I will now instruct you on the meaning of claim terms. You must use the
meaning that I give you for each claim term to make your decision as to whether the claim is
infringed or invalid, and you must apply the same meaning for purposes of both your
infringement and your invalidity analyses. You must ignore any different definitions used by the
witnesses or the attorneys. 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 validity.
I instruct you that the following claim terms have the following definitions:
1.

The term “automatic, personalized information services to the user” means

“without human intervention.”
2.

The term “central computer” means “computer on the server side of a client-

server relationship.”
3.

The terms “user” and “user u” as used in claim 1 of the ’040 patent means “a

person operating a computer or the associated representation of the user.”
4.

The term “user-specific data files” as used in claim 1(b) of the ’040 patent means

“the monitored user interactions with data and a set of documents associated with the user.”
5.

The term “monitored user interactions with the data” as used in claim 1(b) of the

’040 patent means “the collected information about the user’s interactions with data.”
6.

The term “parameters” as used in claim 1(c) of the ’040 patent means “values or

weights.”

- 21 -

7.

The term “estimating parameters of a learning machine” as used in claim 1(c) of

the ’040 patent means “estimating values or weights of the variables of a learning machine.”
8.

The term “learning machine” as used in claims 1 and 32 of the ’040 patent and

claims 1, 5, and 23 of the ’276 patent means “a mathematical function and/or model used to
make a prediction, that attempts to improve its predictive ability over time by altering the
values/weights given to its variables, depending on a variety of knowledge sources, including
monitored user interactions with data and a set of documents associated with the user.”
9.

The term “User Model specific to the user” as used in claims 1, 21, and 32 of the

’040 patent means “an implementation of a learning machine updated in part by data specific to
the user.”
10.

The term “user-specific learning machine” as used in the ’276 patent means “a

learning machine [as construed] specific to the user.”
11.

The term “document” as used in claims 1, 11, and 34 of the ’040 patent and

claims 1, 5-7, 14, 21-24 of the ’276 patent means “an electronic file including text or any type of
media.”
12.

The term “estimating” as used in claim 1(e) in the ’040 patent means

“approximating or roughly calculating.”
13.

The term “probability” as used in claim 1(e) of the ’040 patent means “numerical

degree of belief or likelihood.”
14.

The term “unseen document” as used in claim 1(e) of the ’040 patent means

“document not previously seen by the user.”
15.

The term “estimating a posterior probability P(u/d,q) that a document d is of

interest to the user u given a query q submitted by the user” as used in claim 11 of the ’040

- 22 -

patent means “approximating or roughly calculating a numerical degree of belief or likelihood
that a document d is of interest to the user u given the information that is known about the
document, and given a query q.”
16.

The terms “present” and “presenting” as used in claim 1 of the ’276 patent mean

“to provide or make available.”
17.

The term “documents of interest” as used in claim 1 of the ’276 patent means

“documents [i.e., electronic files (including text or any type of media)] for which the user has a
positive response.” The term “documents not of interest” as used in claim 1 of the ’276 patent
means “documents [i.e., electronic files (including text or any type of media] for which the user
has a negative response or has ignored.”
18.

The term “document” as used in claim 1(d) of the ’040 patent refers to the unseen

document recited in the same limitation. The term “document” as used in claim 1(e), however,
does not necessarily refer to the same document in claim 1(e).
19.

The term “estimated probability” as used in claim 1(f) of the ’040 patent refers to

the probability that was estimated in the previous claim 1(e).
As I have mentioned, you should give the rest of the words in the claims their plain and
ordinary meaning in the context of the patent specification and prosecution history. In doing so,
you should be mindful that a product need not match the specification and examples in order to
infringe a patent. As I stated earlier, to infringe a product need only meet all the elements of a
single claim. The claim language as I have construed it defines the scope of the patents for
purposes of infringement and validity. 6

6

Opinion on Claim Construction, D.I. 347 (Jan. 25, 2012).

- 23 -

3.3

INDEPENDENT AND DEPENDENT CLAIMS

This case involves two types of patent claims: independent claims and dependent claims.
An independent claim sets forth all of the requirements that must be met in order to be covered
by that claim. Thus, it is not necessary to look at any other claim to determine what an
independent claim covers. In this case, the independent claims are claim 1 of the ’040 patent and
claim 1 of the ’276 patent. The remaining Asserted Claims in both patents are dependent claims.
A dependent claim does not itself recite all of the requirements of the claim but refers to
another claim or claims for some of its requirements. In this way, the claim “depends” on
another claim or claims. A dependent claim incorporates all of the requirements of the claims to
which it refers. The dependent claim then adds its own additional requirements. To determine
what a dependent claim covers, it is necessary to look at both the dependent claim and any other
claims to which it refers.

- 24 -

3.4

OPEN ENDED OR “COMPRISING” CLAIMS

The beginning portion, or preamble, of several of the Asserted Claims has the word
“comprising.”

The word “comprising” means “including the following but not excluding

others.” A claim that uses the word “comprising” or “including” is not limited to products
having only the elements that are recited in the claim, but also covers products that have
additional elements.
If you find, for example, that Google Search includes all of the elements of a particular
claim, the fact that Google Search might include additional elements does not avoid infringement
of a claim that uses “comprising” language.

- 25 -

3.5

PATENT INFRINGEMENT GENERALLY

I will now instruct you on the rules you must follow when deciding whether Google has
infringed the Asserted Claims. As I said before, infringement is assessed on a claim-by-claim
basis. Patent law gives the owner of a valid patent the right to keep others from making, using,
selling, or offering to sell a patented product within the United States during the term of the
patent. Any business entity that has made, used, sold, or offered to sell a patented product
without the patent owner’ s permission, infringes the patent. And this is so whether the infringer
saw or knew about the patent, or even if the defendant later made the same invention.
To prove infringement, PUM must meet its burden of proof by a preponderance of the
evidence, i.e., that it is more likely than not that all of the requirements for infringement have
been proven.7

7

Leader, ¶ 3.6.

- 26 -

3.6

DIRECT INFRINGEMENT – KNOWLEDGE OF PATENT OR INTENT
TO INFRINGE IS IMMATERIAL

Google will be liable for directly infringing an Asserted Patent if you find that PUM has
proven by a preponderance of the evidence that Google has made, used, sold or offered for sale,
or imported the invention defined in at least one claim of a patent.
One may directly infringe a patent without knowledge that what one is doing is an
infringement of the patent. One may also infringe while believing in good faith that a particular
action is not an infringement of any patent.8

8

Power Integration, ¶ 4.1.2.

- 27 -

3.7

DIRECT INFRINGEMENT – LITERAL INFRINGEMENT

There are two ways in which a patent claim may be directly infringed. First, a claim may
be literally infringed. Second, a claim may be infringed under what is called the “doctrine of
equivalents,” which I will address shortly.
To prove literal infringement, PUM must prove by a preponderance of the evidence that
one of Google’s Accused Products include every element or requirement in at least one of the
Asserted Claims.

The presence of other elements beyond those claimed does not avoid

infringement, as long as each and every claimed element is present in the Accused Product.
However, if an Accused Product omits a requirement recited in one of the Asserted Claims, then
that product does not literally infringe that claim.9

9

DePuy, ¶ 3.6

- 28 -

3.8

DIRECT INFRINGEMENT – DOCTRINE OF EQUIVALENTS

If you do not find literal infringement, you may consider infringement under the
“doctrine of equivalents.” I have referred to the “doctrine of equivalents” before. Now it is time
to explain this term.
You may find that Google’s Accused Products infringe one or more of the Asserted
Claims, even if not all of the requirements of the claim are literally present in the Accused
Products. You may find infringement in such circumstances if the components or features of the
Accused Products are equivalent to those claimed in at least one of the Asserted Claims. This is
called the doctrine of equivalents. To prevail on this allegation of infringement, PUM must
prove that it is more probable than not that the Accused Products contain components or features
that are the same or equivalent to each claimed requirement of the patented invention.
A claim element is present in an Accused Product under the doctrine of equivalents if the
differences between the claim element and a corresponding aspect of the Accused Product are
insubstantial. One way to determine this is to look at whether or not the corresponding aspect of
the Accused Product performs substantially the same function, in substantially the same way, to
achieve substantially the same result as the element in the claimed invention. An Accused
Product may infringe under the doctrine of equivalents even if the component or feature of the
Accused Product has additional components or features or if the Accused Product also has
additional ways of performing those functions.
Application of the doctrine of equivalents is on an element-by-element basis, meaning
that for a product or the use of a product to infringe an asserted claim under the doctrine of
equivalents, the element of the asserted claim which is not literally found in the Accused Product
must be present by equivalence.

Therefore, the question is whether the Accused Product

contains an equivalent for each element of the claim that is not literally present in the Accused
- 29 -

Product. The question is not whether the Accused Product as a whole is equivalent to the
claimed invention as a whole.
There does not need to be a one-to-one correlation between a structure in the Accused
Product and a corresponding claim requirement for there to be infringement under the doctrine of
equivalents.

For example, one structure in the Accused Product may satisfy two claim

requirements under the doctrine of equivalents so long as the claim language does not
specifically require more than one structure. In addition, the components or features of the
Accused Products can be part of an integral structure and still be equivalent to a claimed
component or feature.
It is not a requirement under doctrine of equivalents infringement that those of ordinary
skill in the art knew of the equivalent when the patent application was filed or when the patent
issued. The question of whether a product and its components are equivalent to what is defined
in an asserted patent claim is to be determined as of the time of the alleged infringement.10

10

DePuy, ¶ 3.7.

- 30 -

3.9

INDIRECT INFRINGEMENT – GENERALLY

In addition to stopping infringement by those who are directly infringing, a patent owner
like PUM also has the right to stop those who are known as “indirect infringers.” There are
those who encourage or induce others to infringe a patent; this is known as “inducing
infringement.”11

11

Power Integration, ¶ 4.4

- 31 -

3.10

INDIRECT INFRINGEMENT – INDUCING PATENT INFRINGEMENT

A party induces patent infringement if it causes, urges or encourages another to infringe a
patent of which it is aware or should have been aware. Inducement to infringe a claim cannot
occur unintentionally. This is different from direct infringement, which, as I have told you, can
occur unintentionally.
PUM alleges that Google is liable for infringement by actively inducing its customers to
infringe the Asserted Patents. To be liable for inducement to infringe, Google must have known
of the patent and encouraged or instructed another person how to use a product or perform a
method in a manner that you, the jury, find infringes the asserted claims. Willful blindness to the
existence of an infringed patent is not a defense.
As with direct infringement, you must determine whether there has been active
inducement on a claim-by-claim basis. Google is liable for active inducement of infringement of
a claim if PUM proves by a preponderance of the evidence that:
1.

Google’s customers complete the act of direct infringement of an Asserted

Claim by implementing or using the Accused Products; 12
2.

Google took action during the time the Asserted Patents were in force

intending to cause the infringing acts by its customers; and
3.

Google was aware of the Asserted Patents and: (i) knew that the acts, if

taken, would constitute infringement of that patent; or (ii) Google believed there was a high
probability that the acts, if taken, would constitute infringement of the Asserted Patents but
deliberately avoided confirming that belief.

12

2012).

Akamai Technologies Inc. v. Limelight Networks Inc., 692 F.3d 1301 (Fed. Cir. Aug. 31,

- 32 -

In order to establish active inducement of infringement, you must find that Google
specifically intended that its users infringe the Asserted Patents or that Google believed there
was a high probability its users would infringe the Asserted Patents, but remained willfully blind
to the infringing nature of their users' acts. To show inducement, however, the customer who
directly infringes need not be aware of the patent or its infringement.
As with all other matters, the intent to cause infringement may be shown by direct or
circumstantial evidence. The law does not make any distinction between the weight that you
should give to either one; nor does it say that one is better than another.
For example—assuming all of the other requirements are satisfied—Google may be
found to induce infringement of the Asserted Patents

by instructing its customers to use the

product as claimed in the patent, because it is inferred that end-users follow those instructions
with respect to the accused product.
When considering whether Google knew or should have known that the induced actions
would constitute infringement, you may consider all of the circumstances, including whether or
not Google obtained the advice of a competent lawyer. There is no affirmative duty to seek
opinion of counsel regarding infringement. However, opinion of counsel evidence - or lack of
such evidence - may be probative of whether Google knew or should have known that its actions
would cause direct infringement. While the decision not to obtain an opinion of counsel may be
probative circumstantial evidence that a defendant knew or should have known that its action
would cause direct infringement, that fact cannot replace any of the requirements to prove
inducement.13

13

Tarkus, ¶ 3.9.

- 33 -

3.11

PRACTICING YOUR OWN PATENTS IS NOT A DEFENSE TO
INFRINGEMENT

You may have heard or seen evidence that Google has obtained patents relating to its
Accused Products. However, you are not permitted to assume that these facts mean that Google
cannot infringe PUM’s patent claims.

As long as an Accused Product includes all of the

elements of at least one of the patent claims, or if an Accused Product is found to be equivalent
under the doctrine of equivalents, the PUM’s patent claims are infringed by the Accused Product
even if Google improved upon the patents and despite Google’s patents relating to the Accused
Products.14

14

Power Integration, ¶ 4.7.

- 34 -

4.

INVALIDITY
4.1

INVALIDITY—GENERALLY

Patent invalidity is a defense to patent infringement. Even though the Patent Office
allowed the claims of a patent, you have the ultimate responsibility for deciding whether or not
the claims of the Asserted Patents are proven to be invalid.15

15

Power Integration, ¶ 5; Tarkus, ¶ 4.1.

- 35 -

4.2

PRESUMPTION OF VALIDITY

The granting of a patent by the Patent Office carries with it the presumption that the
patent’s subject matter is new, useful, and constitutes an advance that was not, at the time the
invention was made, obvious to one of ordinary skill in the art. The law presumes that the Patent
Office acted correctly in issuing the patent.
This presumption of validity puts the burden of proving invalidity on the challenger.
While this presumption can be rebutted, the burden is on the challenger to do so. This burden
requires that Google prove by clear and convincing evidence that in this case, each of the
asserted claims is invalid. This burden always remains with Google and never shifts to PUM.
Clear and convincing evidence is evidence that produces an abiding conviction that the truth of
the factual contention is highly probable.
Each of the asserted claims is presumed valid independently of the validity of each other
claim, and you must determine validity separately for each Asserted Claim. Therefore, even if
you find one claim of a patent invalid, other claims of the same patent may still be valid.16

16

Power Integration, ¶ 5.1; B. Braun, ¶ 5.1; Google’s proposed instruction that it need only
prove invalidity by a preponderance of the evidence is contrary to law. See Microsoft Corp. v.
i4i P’ship, --- U.S. ---, 131 S.Ct. 2238, 2250-51 (2011)

- 36 -

4.3

ANTICIPATION

A person cannot obtain a patent on an invention if someone else has already made the
same invention. If the invention is not new, we say that it was “anticipated” by prior art. Prior
art is the legal term used to describe what others had done in the field before the invention was
made. Prior art is the general body of knowledge in the public domain, such as articles or other
patents before the invention was made. It is not necessary that the prior art has been available to
every member of the public. It must have been available, without restriction, to that segment of
the public most likely to avail itself of the prior art’s contents.
An invention that is “anticipated” by the prior art is not entitled to patent protection. In
order to prove that an invention is “anticipated,” a party must prove by clear and convincing
evidence that a single piece of prior art describes or discloses each and every element of an
Asserted Patent. A single prior art reference must also disclose those elements as arranged in the
claim.
For purposes of anticipation, you should consider that which is expressly stated or present
in the item of prior art, and also that which is inherently present. Anticipation by inherent
disclosure is appropriate only when the reference discloses prior art that must necessarily include
the unstated limitation. Inherency may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is not sufficient.17
Google asserts in this action that the following references anticipate the Asserted Claims:
1.

“Personal WebWatcher: design and implementation” by Dunja Mladenic

(“Mladenic”);
17

PUM includes an instruction on inherent disclosure because Google included such an
instruction despite that it never disclosed this theory or indicated it intended to prove inherent
disclosure at trial. PUM objects to the inclusion of such an instruction.

- 37 -

2.

“Collecting User Access Patterns for Building User Profiles and Collaborative

Filtering” by Ahmad M. Ahmad Wasfi (“Wasfi”);
3.

"A Personal Evolvable Advisor for WWW Knowledge-Based Systems” by M.

Montebello, W.A. Gray, and S. Hurley (“Montebello”);
4.

Autonomy Agentware (“Autonomy”);

5.

U.S. Patent No. 7,631,032 to Refuah (“Refuah”);

6.

"WebWatcher: A Tour Guide for the World Wide Web" by Joachims, Freitag, and

Mitchell ("Joachims");
You must determine whether Google has proven anticipation by clear and convincing
evidence for each reference and each Asserted Claim.18

18

Power Integration, ¶ 5.2; Leader, ¶ 4.5; Laboratory Skin, ¶ 3.4.

- 38 -

4.4

OBVIOUSNESS

In order to be patentable, an invention must not have been obvious to a person of
ordinary skill in the art at the time the invention was made. A claimed invention is invalid as
obvious if it would have been obvious to a person of ordinary skill in the field of the invention at
the time the invention was made. In this case, it is undisputed that the invention in the ’040
patent was invented in 1999.
Obviousness must be shown by clear and convincing evidence considering one or more
items of prior art. Obviousness is determined from the perspective of a person of ordinary skill
in the field of the invention. The issue is not whether the claimed invention would be obvious to
you as layman, to me as a judge, or to a genius in the art, but whether it would have been obvious
to one of ordinary skill in the art at the time it was made. Thus, the question is, would it have
been obvious for a skilled person who knew of the prior art to make the claimed invention? If
the answer to that question is yes, then the patent claims are invalid. Google has the burden of
proving obviousness by the clear and convincing evidence standard.
Google contends that the Asserted Claims are invalid because the claimed inventions are
obvious.
Keep in mind that although Google must prove the existence of each and every element
of the claimed invention in the prior art, this alone does not itself prove obviousness. Most, if
not all, inventions rely on building blocks of prior art. Accordingly, you must be careful not to
determine obviousness using hindsight to reconstruct or piece together the invention; many true
inventions can be seen as obvious after the fact. You should not consider what is known today
or what was learned from the teachings of the patent. You should not use the patent as a road
map for selecting and combining items of prior art. You must put yourself in the place of a
person of ordinary skill at the time the invention was made.
- 39 -

You must also keep in mind that the test for obviousness is not whether or not it would
have been obvious to try to make the invention, but rather, whether or not the invention would
have been obvious to a person of ordinary skill in the inventor’s field at the time the invention
was made. In determining whether or not these claims would have been obvious, you should
make the following determinations:
First, what is the scope and content of the prior art?
Second, what differences, if any, are there between each asserted claim and the prior art?
Third, what was the level of ordinary skill in the art at the time the invention of the patent
was made?
Fourth, are there any objective indications of non-obviousness?
In addition, you may consider whether there was an apparent reason to combine or
modify the prior art references in the fashion claimed by the patent at issue, but in doing so, you
must guard against slipping into the use of hindsight.
I will explain each of these factors in more detail in a moment. Against this background,
you will then decide whether the subject matter of each asserted claim would have been obvious
or non-obvious to a person of ordinary skill in the pertinent art.19

19

DePuy, ¶ 4.3; Power Integration, ¶ 5.3; Tarkus, ¶ 4.5.

- 40 -

4.4.1 OBVIOUSNESS – SCOPE AND CONTENT OF THE PRIOR ART
As I have just instructed you, in arriving at your decision on the issue of whether or not
the claimed inventions were obvious to one of ordinary skill in the art, you must first determine
the scope and content of the prior art. This means that you must determine what prior art is
reasonably pertinent to the particular problem that the inventors faced. Prior art is reasonably
pertinent if it is in the same field as the claimed invention or is from another field that a person of
ordinary skill would look to in trying to solve the problem the claimed invention was trying to
solve. The prior art may include any of the following items if received into evidence:
1.

patents that issued more than one year before the earliest effective filing date of

the patents, which is December 28, 1999 for the ’040 patent, and January 8, 2008 for the ’276
patent;
2.

publications having a date more than one year before the earliest effective filing

date of the patent;
Google has asserted that the following prior art combinations allegedly render the
Asserted Patents obvious in this action:
1.

Mladenic and Wasfi and Montebello

2.

Mladenic and Wasfi and Montebello and Joachims

3.

Mladenic and Wasfi and Montebello and Refuah

4.

Mladenic and Wasfi and Montebello and Joachims and Refuah

5.

Mladenic and Wasfi and Montebello and Autonomy

6.

Mladenic and Wasfi and Montebello and Joachims and Autonomy

7.

Mladenic and Refuah

8.

Mladenic and Montebello

9.

Mladenic and Autonomy
- 41 -

10.

Montebello and Refuah

11.

Montebello and Autonomy

12.

Wasfi and Montebello

13.

Wasfi and Refuah

14.

Wasfi and Autonomy

Google has the burden of proving by clear and convincing evidence that each such
combination contains each and every element of the Asserted Patents.20

20

DePuy, ¶ 4.3.1; Power Integration, ¶ 5.4; Tarkus, ¶ 4.5.1

- 42 -

4.4.2 OBVIOUSNESS – DIFFERENCES OVER THE PRIOR ART
You must next consider the differences, if any, between the prior art and the claimed
invention from the view of a person of ordinary skill in the art as of the filing date of the
applications for the Asserted Patents. Your analysis must determine the impact, if any, of such
differences on the obviousness or non-obviousness of the invention as a whole and not merely
some portion of it.
In analyzing the differences between the claimed invention and the prior art, you do not
need to look for a precise teaching in the prior art directed to the subject matter of the claimed
invention. You may take into account the inferences and creative steps that a person of ordinary
skill in the art would have employed in reviewing the prior art at the time of the invention. For
example, if the claimed invention combined elements known in the prior art and the combination
yielded results that were predictable to a person of ordinary skill in the art at the time of the
invention, then this evidence would make it more likely that the claim was obvious. On the other
hand, if the combination of known elements yielded unexpected or unpredictable results, or if the
prior art teaches away from combining the known elements, then this evidence would make it
more likely that the claim that successfully combined those elements was not obvious.
Importantly, a claim is not proved obvious merely by demonstrating that each of the
elements was independently known in the prior art. Most, if not all, inventions rely on building
blocks long since uncovered, and claimed discoveries almost of necessity will likely be
combinations of what is already known. Therefore, you should consider whether a reason
existed at the time of the invention that would have prompted a person of ordinary skill in the art
in the relevant field to combine the known elements in the way the claimed invention does. The
reason could come from the prior art, the background knowledge of one of ordinary skill in the
art, the nature of the problem to be solved, market demand, or common sense. Accordingly, you
- 43 -

may evaluate whether there was some teaching, suggestion, or motivation to arrive at the claimed
invention before the time of the claimed invention, although proof of this is not a requirement to
prove obviousness.
If you find that a reason existed at the time of the invention to combine the elements of
the prior art to arrive at the claimed invention, this evidence would make it more likely that the
claimed invention was obvious.
Again, you must undertake this analysis separately for each claim that Google contends is
obvious and for each obviousness combination that Google asserts.21

21

DePuy, ¶ 4.3.2; Tarkus, ¶ 4.5.2.

- 44 -

4.4.3 OBVIOUSNESS – RELIANCE ON HINDSIGHT IMPROPER
The question of obviousness is simple to ask but difficult to answer. A person of
ordinary skill in the art is presumed to have knowledge of the relevant prior art at the time of the
patentee’s invention. If you find the available prior art shows each of the elements of the claims
in suit, you must determine whether it would then have been obvious to a person of ordinary skill
in the art to combine or modify these elements in the same manner as the Asserted Claims.
The difficultly that attaches to all honest attempts to answer this question can be
attributed to the strong temptation to rely on hindsight while undertaking this evaluation. It is
wrong to use the patent in suit as a guide through the maze of prior art references, combining the
right references in the right way so as to achieve the result of the claims in suit. Rather, you
must cast your mind back to the time of the invention and consider only the thinking of one of
ordinary skill in the art, guided only by the prior art and what was known in the field. 22

22

Power Integration, ¶ 5.6

- 45 -

4.4.4 OBVIOUSNESS - LEVEL OF ORDINARY SKILL
Obviousness is determined from the perspective of a person of ordinary skill in the art to
which the claimed invention pertains at the time the claimed invention was made. This person is
presumed to know all the prior art that you have determined to be reasonably relevant. When
faced with a problem, this ordinary skilled person is able to apply his or her experience and
ability to the problem and also look to any available prior art to help solve the problem.
Factors to consider in determining the level of ordinary skill in the art include: (1) the
educational level and experience of people working in the field; (2) the types of problems faced
by workers in the art at the time of the invention and the solutions found to those problems;
(3) the prior art patents, products or devices, and publications; and (4) the sophistication of the
technology in the field at the time of the invention, including how rapid innovations were made
in the art at the time of the invention.23

23

DePuy, ¶ 4.3.2; Tarkus, ¶ 4.5.3

- 46 -

4.4.5 OBVIOUSNESS – SECONDARY CONSIDERATIONS
CONCERNING OBVIOUSNESS
In evaluating the issue of obviousness, you must also consider certain factors which, if
established by PUM, may indicate that the invention would not have been obvious. No factor
alone is dispositive, and you must consider the obviousness or non-obviousness of the invention
as a whole. Some of these indications are:
1.

Commercial success of products that practice the claims of the Asserted Patents;

2.

A long-felt need in the art that was satisfied by the inventions claimed in the

Asserted Patents;
3.

Failed attempts by others to make the invention;

4.

Copying of the invention by others in the field;

5.

Praise of the invention by the infringer or others in the field;

6.

Unexpected results achieved by the invention;

7.

The taking of licenses under the patents by others;

8.

Expressions of surprise by experts and those skilled in the art at the making of the

invention; and
9.

That the patentee proceeded contrary to accepted wisdom of the prior art.

There must be a connection between the evidence showing any of these factors and either the
claimed invention, or the advantages that result from practicing the claimed invention, if this
evidence is to be given weight by you in arriving at your conclusion on the obviousness issue.
For example, if commercial success of products that practice the Asserted Patents is due
to brand name recognition, company goodwill, advertising, promotion, salesmanship or the like,
or is due to features of the product other than those claimed in the Asserted Patents, then
commercial success may have no relation to the issue of obviousness. However, a relationship

- 47 -

between commercial success and the claimed invention is presumed to exist if the product that is
commercially successful is the invention disclosed and claimed.24
When a patentee such as PUM comes forward with evidence of secondary considerations,
the burden of proof that the claims were obvious in light of all the evidence remains on the
defendant such as Google by clear and convincing evidence.

24

DePuy, ¶ 4.3.4; Tarkus, ¶ 4.5.4

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5.

GOOGLE’S BREACH OF CONTRACT COUNTERCLAIM
In order to decide whether Google has proven its breach of contract claim against Dr.

Konig by a preponderance of the evidence, you need to address two issues.
First, you must decide whether PUM has proven by a preponderance of the evidence
that Google’s breach of contract counterclaim is barred by the statute of limitations.
Second, if not barred by the statute of limitations, you must decide whether SRI
assigned its rights to assert a breach of contract claim against Dr. Konig to Google.
Third, if you find such assignment, you must then decide whether Google has shown by
a preponderance of the evidence that Dr. Konig breached his employment agreement with SRI
by assigning his rights in the patents-in-suit to Utopy rather than SRI. If you find that Dr.
Konig violated the employment agreement by assigning his rights to Utopy rather than SRI,
you must then decide whether PUM has shown by a preponderance of the evidence that Dr.
Konig’s inventions were covered by Section 2870 of the California Labor Law which protects
certain inventions from assignment to employers.25
I will now instruct you on the law that governs these issues.

25

California Civil Jury Instruction 300 (Breach of Contract - Introduction); 35 U.S.C. §.
261; Filmtec Corp. v. Allied-Signal Inc., 939 F.2d 1568, 1574 (Fed. Cir. 1991); Rhone-Poulenc
Agro S.A. v. Dekalb Genetics Corp., 284 F.3d 1323 (Fed. Cir.2002).

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5.1

STATUTE OF LIMITATIONS

The law requires a party to timely file an action to pursue its alleged rights. This is called
a statute of limitations. Statutes of limitations afford plaintiffs a reasonable time to present their
claims, but protect defendants and the courts from having stale claims brought to the Court26 If a
party does not file an action within the time period set by the statute of limitations, it is timebarred.
As assignee under the agreement between SRI and Google, Google stands in shoes of the
assignor, SRI, such that if SRI’s right to bring a claim against Dr. Konig is barred by the statute
of limitations, Google’s claim is barred as well.27
The statute of limitations that applies to this case requires a party such as SRI and Google
to file a breach of contract action within three years after the breach allegedly occurred. The
statute begins to run at the time of the breach, even if SRI did not know of its claim.28 There are
only two circumstances under which the statute of limitations can be tolled. They are:
a)

if the injury was inherently unknowable and SRI is blamelessly ignorant of the

wrongful act and the injury complained of; or
b)

if Dr. Konig fraudulent concealed the facts that would have put SRI on notice of

its claim.

26

United States v. Kubrick, 444 U.S. 111, 117 (1979).

27

Madison Fund, Inc. v. Midland Glass Co., No. 394-1974, 1980 WL 332958 (Del. Super.
Ct. Aug. 11, 1980
28

Medtronic Vascular, Inc. v. Advanced Cardiovascular Sys., Inc., Civ. A. No. 98-80-SLR,
2005 WL 46553, at *4 (D. Del. Jan. 5, 2005).

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Neither of these exceptions is lightly invoked, because equitable exceptions to statutes of
limitations are narrow and designed to prevent injustice.29 It is Google’s burden to demonstrate
by a preponderance of evidence that either of these two exceptions applies such that the statute of
limitations should be tolled or stopped from running for a period of time.
In determining whether tolling applies, it is important to keep in mind that the law
requires a claimant such as SRI to exercise reasonable diligence to inquire into facts, which if
pursued, would put it on notice of a potential claim. Inquiry notice does not require actual
discovery of the reason for the injury, nor does it require SRI’s or Google’s awareness of all of
the aspects of the alleged wrongful conduct.30 Patents serve to put the world on notice with
respect to what the patentee claims to own and starts the limitations period running.31
Facts thus are not inherently unknowable if the plaintiff could have obtained access to
information that would have alerted it to the defendant’s alleged breach of contract. Just because
a review of facts or documents is laborious does not make it impossible for purposes of the
inherently unknowable injury rule.32
The fraudulently concealed exception requires that Google show that Dr. Konig actively
concealed information intending to prevent SRI from inquiring about the invention or obtaining

29

Central Mortg. Co. v. Morgan Stanley Mortg. Capital Holdings LLC, 2012 WL 3201139,
at *23 (Del. Ch. Aug. 07, 2012).
30

In re Dean Witter Partnership Litigation, 1998 WL 442456, at *7 (Del. Ch., July 17,

1998).
31

Sontag Chain Stores Co. v. National Nut Co., 310 U.S. 281, 295 (1940); Medtronic
Vascular, Inc. v. Advanced Cardiovascular Sys., Inc., Civ. A. No. 98-80-SLR, 2005 WL 388592,
at *2 n.4 (D. Del. Feb. 2, 2005).
32

Central Mortg. Co. v. Morgan Stanley Mortg. Capital Holdings LLC, 2012 WL 3201139,
at *22 n.185 (Del. Ch. August 07, 2012).

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knowledge of it.33 While the statute of limitations may not apply when the acts complained of
are fraudulently concealed from the plaintiff, such application is suspended only until his rights
are discovered by the exercise of reasonable diligence.

34

Thus, the statute begins to run again

as soon as facts exist which would put a person of ordinary intelligence and prudence on inquiry
notice such that, if pursued, they would lead to the discovery of such facts.35

33

Medtronic Vascular, Inc. v. Advanced Cardiovascular Sys., No. 98–80–SLR, 2005 WL
46553, at *4 (D. Del. Jan 5, 2005) (internal citations omitted) aff’d, 182 F. App’x 994 (Fed. Cir.
May 26, 2006).
34

Wright, 2022 WL 31357891, at *2 (citing Giordano v. Czerwinski, 216 A.2d 874, 876
(Del. 1966)); Wal-Mart Stores, Inc. v. AIG Life Ins. Co., 860 A. 2d 312, 319 (Del. Supr. 2004)
(internal quotation marks and citations omitted).
35

Lecates v. Hertrich Pontiac Buick Co., 515 A.2d 163, 176 (Del. Super. Ct. 1986); WalMart Stores, Inc. v. AIG Life Inc. Co., 860 A.2d 312, 319 (Del. 2004); Wright v. Dumizio, No.
08-292, 2002 WL 31357891, at *3 (Del. Super. Ct. Oct. 31, 2002); Medtronic Vascular, Inc. v.
Advanced Cardiovascular Sys., Inc., No. Civ. 98-80-SLR , 2005 WL 46553, at *4 (D. Del. Jan.
5, 2005), aff’d, 182 F. App’x 994 (Fed. Cir. May 26, 2006).

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5.2

BREACH OF CONTRACT

5.2.1 ASSIGNMENT OF CONTRACT RIGHTS
You must determine whether the contract assigned SRI’s breach of contract right Google
contends that it acquired SRI’s right to assert SRI’s breach of contract claim against Dr.
Konig.[1] PUM contends that, pursuant to § 4 of the SRI/Google Purchase Agreement, no such
transfer took place. Google must prove by a preponderance of the evidence that it lawfully
acquired SRI’s rights, if any, against Dr. Konig such that Google can assert SRI’s breach of
contract claim.
5.2.2 BREACH OF CONTRACT ELEMENTS
If you decide that the statute of limitations does not bar the breach of contract claim, and
that Google acquired SRI’s right to assert a breach of contract claim against Dr. Konig, to find
Dr. Konig liable for breach of contract to SRI, Google must prove all of the following by a
preponderance of the evidence:
1.

That Dr. Konig and SRI entered into a contract;

2.

That SRI did all, or substantially all, of the significant things that the contract

required it to do or that it was excused from doing those things;
3.

That Dr. Konig materially breached the contract; and

4.

That SRI was injured by that failure.

As I will now explain, in determining whether Dr. Konig materially breached his
employment agreement, you must decide whether Dr. Konig conceived of the inventions while

[1]

Google incorrectly states that the parties do not contest whether SRI assigned to Google
a right to bring a breach of contract claim against Dr. Konig. Google Proposed Final Jury
Instructions at § 3.1. This is a contested issue.

- 53 -

he was employed at SRI and, if so, whether the inventions fall within the scope of the agreement
or are otherwise protected under section 2870 of the California Labor Code. [3]
I will address each of these in turn.

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5.3

CONCEPTION

As I just mentioned, in determining whether Dr. Konig breached his employment
agreement, you must first determine whether he conceived of the inventions while he was
employed by SRI. To do this, you must you must first determine the meaning of the word
“conception” as used in Dr. Konig’s employment agreement. Once you decide the meaning that
was intended, you must then decide whether Dr. Konig conceived of the inventions while he was
employed at SRI. If you find that Dr. Konig conceived of the inventions after he left SRI, then
they cannot be subject to the employment agreement.
Google claims that the term “conceived” under the Employment Agreement was intended
by the parties to mean in the “layman’s sense,” such that Dr. Konig had to assign all inventions
he got the idea for while employed at SRI. PUM claims that the term “conceived” relates to the
technical definition of “conception” according to patent law, which I will explain to you.
Google must prove by a preponderance of the evidence that its interpretation of what the parties
intended is correct.
I will now explain the patent law definition of conception.36 Under the law, conception is
the formation in the mind of the inventor of a definite and permanent idea of the complete and
operative invention as it is thereafter to be applied in practice, even if the inventor did not know
at the time that the invention would work. Conception of an invention is complete when the idea
is so clearly defined in the inventor’s mind that, if the idea were communicated to a person
having ordinary skill in the field of the technology, he or she would be able to make the
invention without undue research or experimentation or the exercise of inventive skill. An idea
36

Late in the evening the night the instructions were due, Google inserted a lengthy footnote
seeking to re-argue its summary judgment argument on conception, already decided by the
Court. This argument is improper and should be stricken. PUM will respond to Google’s
proposed instruction, if necesasry, at an appropriate time.

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is definite and permanent when the inventor has a specific settled idea, a particular solution to
the problem at hand, not just a general goal or research plan he hopes to pursue.37 Conception
must include every feature or limitation of the claimed invention.
This requirement does not mean that the inventor has to have a prototype built, or have
actually explained the invention to another person. But, there must be some evidence beyond the
inventor’s own testimony that confirms the date on which the inventor had the complete idea.
An inventor cannot prove he or she possesses a complete mental picture of her invention until
she can describe the complete invention with particularity.38 Conception may be proven when
the invention is shown in its complete form by drawings, disclosure to another person, or other
forms of evidence presented at trial.
The rules about when conception occurs ensure that an inventor can claim rights to an
invention “only when an idea is so far developed that the inventor can point to a definite,
particular invention.39
An agreement requiring an employee to disclose all improvements, discoveries and
inventions developed by him while employed and specifying that such matter becomes the
property of the employer does not give an employer a mortgage on all thoughts occurring to the
employee, but is limited to those ideas which are not mere alternatives drawn from the
employee's general knowledge, but can in fact be deemed an improvement, discovery or
invention and are sufficiently concrete to be considered a ‘development’ or ‘conception’. Ideas
which do not meet these standards do not become the property of the employer. 40
37
38
39
40

Burroughs Wellcome Co. v. Barr Labs, Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994).
Burroughs Wellcome Co. v. Barr Labs, Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994).
Id.
Koehring Co. v. E. D. Etnyre & Co., 254 F. Supp. 334, 362 (D.C. Ill. 1966).

- 56 -

- 57 -

5.4

CONTRACT INTERPRETATION

In deciding the meaning of the term “conception,” you must determine the usage that was
intended in the context of the employment agreement at the time the contract was created. In
making this determination, you must consider the objective intent of the parties as evidenced by
the words of the contract, and the surrounding circumstances, rather than the subjective intent of
one of the parties.
A party’s undisclosed intent or understanding is irrelevant to contract interpretation.41
What is relevant is the outward manifestation of that party’s intent whether in written or spoken
words, or deeds, or from the surrounding circumstances.
In deciding what the words of a contract objectively mean, you should consider the whole
contract, not just isolated parts. You should use each part to help you interpret the others, so that
all the parts make sense when taken together. You should also consider the circumstances
surrounding the signing of the agreement.
You should assume that the parties intended technical words used in the contract to have
the meaning that is usually given to them by people who work in that technical field, unless you
decide that the parties clearly used the words in a different sense.
In determining the meaning of a term of the contract, you must first consider all of the
other instructions that I have given you. If, after considering these instructions, you still cannot
agree on the meaning of the term, then you should interpret the contract term against the party

41

Founding Members of the Newport Beach Country Club v. Newport Beach Country Club,
Inc., 135 Cal. Rptr. 2d 505, 514 (Cal. Ct. App. 2003) (internal quotation marks, alterations and
citations omitted); see also Progressive Int'l Corp. v. E.I. du Pont de Nemours & Co., 2002 WL
1558382, at *7 (Del. Ch. July 9, 2002).

- 58 -

that drafted the term. Ambiguities also should be construed against the employer in a contract to
assign inventions.42

42

California Civil Jury Instructions 303 (Breach of Contract - Essential Factual Elements),
314 (Interpretation - Disputed Term), 316 (Interpretation - Meaning of Technical Words), 317
(Interpretation - Construction of Contract as a Whole), and 320 (Interpretation - Construction
Against Drafter) and Cal Civil Code section 1654; Hercules Glue Co. v. Littooy, 25 Cal. App. 2d
182, 186 (Cal. Ct. App. 1938).

- 59 -

5.5

EXCEPTION TO EMPLOYMENT AGREEMENT UNDER SECTION 2870
OF THE CALIFORNIA LABOR CODE

PUM and Dr. Konig maintain that even if you were to find that Dr. Konig “conceived”
the inventions at issue while employed at SRI, Dr. Konig did not breach the agreement because
Section 2870 of the California Labor Code protected those inventions from assignment to SRI.
Section 2870 prohibits an employer from requiring that an employee assign his invention
rights to the employer unless certain conditions are met, and it specifically exempts from
assignment inventions that an employee develops entirely on his or her own time without using
the employer’s equipment, supplies, facilities, or trade secret information. There is no dispute
that Dr. Konig did this.
The inventions will not be exempted from an employment agreement, however, if they
either: (1) relate at the time of conception or reduction to practice of the invention to the
employer’s business, or actual or demonstrably anticipated research or development of the
employer; or (2) result from any work performed by the employee for the employer.
The purpose of this provision is to limit an employee’s duty to assign his or her
inventions under an employment agreement to those inventions that are within the subject matter
of the employment relationship.43 Any employment agreement provision which purports to
apply to an invention that is not covered by the exceptions of Section 2870 is against the public
policy of the State of California and is void and unenforceable.
An invention may be found to be not related to an employer’s business even when the
invention is in the same general field, or where the employee had expertise in the technology

43

Cal Labor Code. § 2870; Applera Corp.--Applied Bios. Grp. v. Illumina, Inc., 375 F.
App’x 12, 17 (Fed. Cir. 2010).

- 60 -

prior to working for the employer or the employer knew about the invention for many years but
did nothing to assert ownership even after the patents issue. 44
If you find that Google has proven by a preponderance of the evidence that Dr. Konig
conceived of the inventions while he was also employed by SRI, then you must decide whether
PUM has established by a preponderance of the evidence that section 2870 protects Dr. Konig’s
inventions.

44

Applera-Applied Biosys. Grp. Corp. v. Illumina, Inc., Civ. A. No. 07-2845, 2008 WL
170597, at *1-2, 4 (N. D. Cal. Jan. 17, 2008).

- 61 -

6.

DELIBERATION AND VERDICT
6.1

INTRODUCTION (JOINTLY SUBMITTED)

That concludes the part of my instructions explaining the rules for considering some of
the testimony and evidence. Now let me finish up by explaining some things about your
deliberations in the jury room, and your possible verdicts.
Once you start deliberating, do not talk to the jury officer, or to me, or to anyone else
except each other about the case. If you have any questions or messages, you must write them
down on a piece of paper, sign them, and then give them to the jury officer. The officer will give
them to me, and I will respond as soon as I can. I may have to talk to the lawyers about what
you have asked, so it may take me some time to get back to you. Any questions or messages
normally should be sent to me through your foreperson, who by custom of this Court is juror
No. 1.
One more thing about messages. Do not ever write down or tell anyone how you stand
on your votes. For example, do not write down or tell anyone that you are split 5-3or 7-1, or
whatever your vote happens to be. That should stay secret until you are finished.

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6.2

UNANIMOUS VERDICT (JOINTLY SUBMITTED)

Your verdict must represent the considered judgment of each juror. In order for you as a
jury to return a verdict, it is necessary that each juror agree to the verdict. Your verdict must be
unanimous.
It is your duty, as jurors, to consult with one another and to deliberate with a view
towards reaching an agreement, if you can do so without violence to your individual judgment.
Each of you must decide the case for yourself, but do so only after an impartial consideration of
the evidence with your fellow jurors. In the course of your deliberations, do not hesitate to
reexamine your own views and change your opinion, if you become convinced it is erroneous.
But do not surrender your honest conviction as to the weight or effect of evidence solely because
of the opinion of your fellow jurors, or for the purpose of returning a verdict. Remember at all
times that you are not partisans. You are judges — judges of the facts. Your sole interest is to
seek the truth from the evidence in the case.
A form of verdict has been prepared for you. You will take this form to the jury room and
when you have reached unanimous agreement as to your verdict, you will have your foreperson
fill in, date, and sign the form. Then each of you will sign and date the form. You will then
return to the courtroom and your verdict will be read in open Court by my deputy.
It is proper to add the caution that nothing said in these instructions and nothing in the
form of verdict is meant to suggest or convey in any way or manner any intimation as to what
verdict I think you should find. What the verdict shall be is the sole and exclusive duty and
responsibility of the jury.

- 63 -

6.3

DUTY TO DELIBERATE (JOINTLY SUBMITTED) 45

Now that all the evidence is in and the arguments are completed, you are free to talk
about the case in the jury room. In fact, it is your duty to talk with each other about the evidence,
and to make every reasonable effort you can to reach unanimous agreement. Talk with each
other, listen carefully and respectfully to each other’s views, and keep an open mind as you listen
to what your fellow jurors have to say. Try your best to work out your differences. Do not
hesitate to change your mind if you are convinced that other jurors are right and that your
original position was wrong.
But do not ever change your mind just because other jurors see things differently, or just
to get the case over with. In the end, your vote must be exactly that — your own vote. It is
important for you to reach unanimous agreement, but only if you can do so honestly and in good
conscience.
No one will be allowed to hear your discussions in the jury room, and no record will be
made of what you say. So you should all feel free to speak your minds.
Listen carefully to what the other jurors have to say, and then decide for yourself.
You might have questions about the schedule for deliberations. Generally speaking,
your deliberations will run until ___ p.m., unless you unanimously decide you wish to deliberate
until a later time. If you do not complete your deliberations today, you will return to continue
deliberating tomorrow beginning at ___ a.m.

45

Sunovion Pharmaceuticals Inc. v. Dey Pharma, L.P. et al., No. 06-113 (LPS), D.I. 571
(D. Del. Feb. 8, 2012); The Uniform Jury Instruction for Patent Cases in the United States
District Court for the District of Delaware (March 1993).

- 64 -

6.4

SOCIAL MEDIA (JOINTLY SUBMITTED) 46

During your deliberations, you must not communicate with or provide any information to
anyone by any means about this case. You may not use any electronic device or media, such as
the telephone, a cell phone, smart phone, iPhone, blackberry or computer, the internet, any
internet service, any text or instant messaging service, any internet chat room, blog, or website
such as Face book, MySpace, Linkedin, YouTube or Twitter, to communicate to anyone any
information about this case or to conduct any research about this case until I accept your verdict.
[PUM proposal: Nor should you perform any research or use any Google product to reach
your own judgments about the issues in this case.] In other words, you cannot talk to anyone
on the phone, correspond with anyone, or electronically communicate with anyone about this
case [PUM proposal: or perform any research]. You can only discuss the case in the jury
room with your fellow jurors during deliberations.

46

Sunovion Pharmaceuticals Inc. v. Dey Pharma, L.P. et al., No. 06-113 (LPS), D.I. 571
(D. Del. Feb. 8, 2012)

- 65 -

6.5

COURT HAS NO OPINION (JOINTLY SUBMITTED) 47

Let me finish up by repeating something that I said to you earlier. Nothing that I have
said or done during this trial was meant to influence your decision in any way. You must decide
the case yourselves based on the evidence presented.
MORRIS, NICHOLS, ARSHT & TUNNELL LLP

/s/ Regina Murphy

OF COUNSEL:
Marc S. Friedman
DENTONS US LLP
1221 Avenue of the Americas
New York, NY 10020-1089
[phone]
Mark C. Nelson
Steven M. Geiszler
Richard D. Salgado
DENTONS US LLP
2000 McKinney Avenue, Suite 1900
Dallas, TX 75201
[phone]

_________________________________________
Karen Jacobs (#2881)
Jeremy A. Tigan (#5239)
Regina Murphy (#5648)
1201 N. Market Street
P.O. Box 1347
Wilmington, DE 19899-1347
[phone]
[e-mail]
[e-mail]
[e-mail]
Attorneys for Personalized User Model, L.L.P. and
Yochai Konig

Jennifer D. Bennett
DENTONS US LLP
1530 Page Mill Road, Suite 200
Palo Alto, CA 94304-1125
[phone]
Andrew M. Grodin
DENTONS US LLP
101 JFK Parkway
Short Hills, NJ 07078
[phone]
47

Sunovion Pharmaceuticals Inc. v. Dey Pharma, L.P. et al., No. 06-113 (LPS), D.I. 571
(D. Del. Feb. 8, 2012); The Uniform Jury Instruction for Patent Cases in the United States
District Court for the District of Delaware (March 1993).

- 66 -

February 21, 2014

- 67 -

CERTIFICATE OF SERVICE
I hereby certify that on February 21, 2014, I caused the foregoing to be
electronically filed with the Clerk of the Court using CM/ECF which will send electronic
notification of such filing to all registered participants.
Additionally, I hereby certify that true and correct copies of the foregoing were
caused to be served on February 21, 2014, upon the following individuals in the manner
indicated:
BY E-MAIL

BY E-MAIL

Richard L. Horwitz
David E. Moore
POTTER ANDERSON & CORROON LLP
1313 N. Market St., 6th Floor
Wilmington, DE 19801

Brian C. Cannon
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
555 Twin Dolphin Dr., 5th Floor
Redwood Shores, CA 94065
Charles K. Verhoeven
David A. Perlson
Antonio R. Sistos
Andrea Pallios Roberts
Joshua Lee Sohn
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, CA 94111

/s/ Regina Murphy
___________________________
Regina Murphy (#5648)