Personalized User Model LLP v. Google Inc.

Filing 635

Preliminary Jury Instructions. (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
PERSONALIZED USER MODEL, L.L.P.,
)
)
)
)
v.
)
)
)
GOOGLE, INC.,
)
Defendant.
)
_____________ )
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GOOGLE, INC.,
)
)
Counterclaimant,
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v.
)
)
PERSONALIZED USER MODEL, L.L.P.
)
and YOCHAI KONIG,
)
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Counterclaim-Defendants.
)

Plaintiff,

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

JOINT PROPOSED PRELIMINARY JURY INSTRUCTIONS
INTRODUCTION
Members of the jury: Now that you have been sworn in, I am going to give you some
preliminary instructions for guidance on your role as jurors in this case.
These instructions are intended to introduce you to the case and the law that you will apply
to the evidence that you will hear. I will give you more detailed instructions on the law at the end
of the trial. Also, because this case involves patents, which will deal with subject matter that is
not within the everyday experience of most of us, I will also give you some preliminary
instructions regarding patents to assist you in discharging your duties as jurors.

THE PARTIES AND THEIR CONTENTIONS
Before I begin with those instructions, however, allow me to give you an overview of who
the parties are and what each contends.
You may recall that during the process that led to your selection as jurors, I advised you
that this is a civil action for patent infringement arising under the patent laws of the United
States.
I will now review for you the parties in this action and the positions that you will have to
consider in reaching your verdict. The Plaintiff in this case is Personalized User Model or PUM
for short. The Defendant in this case is Google.
The two 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

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patent" and "the '276 patent." A copy of each of these patents has been given to you along with
these preliminary instructions. Collectively, I will refer to these patents as the "Asserted Patents"
or the "Patents-in-Suit." Sometimes, patents are referred to by the name of one of the inventors
followed by the last three digits of their patent number. So, for example, you may hear the
attorneys and witnesses in this case refer to the '040 patent as the Konig '040 patent.
PUM contends that Google infringes six claims of the patents-in-suit. These may be
referred to as the "asserted claims," and are as follows: claims 1 and 22 of the '040 Patent and
claims 1, 3, 7, and 21 of the '276 Patent. Each asserted claim must be considered separately to
determine infringement.
PUM contends that Google infringes the Asserted Claims of the Patents-in-Suit because
Google makes, uses, sells or offers for sale the certain products without PUM's authorization.
These products, which I will refer to as the "Accused Products," are Google Search, Google's

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Search Ads, and Google's Content Ads (including YouTube).
Google denies that the Accused Products infringe the asserted claims of the Patents-in-Suit.
Google also contends that the Patents-in-Suit are invalid because they are anticipated, or rendered
obvious by, the prior art. Non-infringement and invalidity are defenses to a charge of
infringement. Google denies that it has infringed the patents-in-suit. Google further alleges that
the asserted claims of the patents-in-suit are invalid because the patents in suit are anticipated by
prior art publications, patents, and products that existed at the time of the invention or were
obvious in view of the state of the art at that time. Google also asserts that named inventor of the
patents-in-suit Yochai Konig breached his employment agreement with his former employer.
PUM and Konig deny these claims, and assert that the inventions do not fall within the scope of
Konig's employment agreement and that Google's claims are untimely.
I will also instruct you as on these claims and defenses in my instructions to you at the
close of the evidence.

DUTIES OF THE JURY
Let me now tum to the general rules that will govern the discharge of your duties as jurors
in this case. It will be your duty to find what the facts are based on the evidence as presented at
trial. You and you alone will be the judges of the facts. In judging the facts, it will be up to you
to decide which witnesses to believe, which witnesses not to believe, and how much of any
witness's testimony to accept or reject. I will decide which rules oflaw apply to this case as I
will instruct you both during these preliminary instructions and at the close of the evidence. You
must follow that law whether you agree with it or not. In addition to instructing you about the
law, I will provide you with instructions as to what the claims of the patents mean. You are

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bound by your oath as jurors to follow these and all the instructions that I give you, even if you
personally disagree with them. All the instructions are important, and you should consider them
together as a whole. You will then apply the law to the facts as you find them.
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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. Also, do not let anything that I
may say or do during the course of the trial influence you. Nothing that I may say or do is
intended to indicate, or should be taken by you as indicating, what your verdict should be.

EVIDENCE

The evidence from which you will find the facts will consist of the testimony of witnesses,
documents and other things received into the record as exhibits, and any facts that the lawyers
agree to or stipulate to or that I may instruct you to find. The testimony of witnesses consists of
the answers of the witnesses to questions posed by the attorneys or the court--you may not ask
questions.
Certain things are not evidence and must not be considered by you. I will list them for you

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now.
1.

Statements, arguments, and questions by the attorneys are not evidence.

2.

Objections to questions are not evidence. Attorneys have an obligation to their

clients to make objections when they believe evidence being offered is improper under the rules
of evidence. You should not be influenced by the objection or by the Court's ruling on it. If the
objection is sustained, ignore the question. If it is overruled, treat the answer like any other. If
you are instructed that some item of evidence is received for a limited purpose only, you must
follow that instruction. If I give a limiting instruction during trial, I will try to clarify this for you

at that time.
3.

Testimony that the court has excluded or told you to disregard is not evidence and

must not be considered.
4.

During trial, you will be shown charts and animations to help illustrate the

testimony of the witnesses. These illustrative exhibits, called "demonstrative exhibits," are not
admitted into evidence and should not be considered as evidence.
5.

Anything you may have seen or heard outside the courtroom is not evidence and

must be disregarded. You are to decide the case solely on the evidence presented here in the
courtroom.
There are two kinds of evidence: direct and circumstantial. Direct evidence is direct proof
of a fact, such as testimony of an eyewitness. If someone testifies that he saw it raining outside,
and you believe him, that is direct evidence that was raining outside. Circumstantial evidence is
indirect proof or proof of facts from which you may conclude that other facts exist. 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 infer that it was raining
outside.
As a general rule, the law makes no distinction between these two types of evidence, but
simply requires that you find facts from all the evidence in the case, whether direct,
circumstantial, or a combination of the two. In judging the facts, you should consider all the
evidence, both direct and circumstantial, and give it whatever weight you believe it deserves. It
will be up to you to decide which witnesses to believe, which witnesses not to believe, the weight
you believe the testimony deserves, and how much of any witness's testimony to accept or reject.

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CREDIBILITY OF WITNESSES - WEIGHING CONFLICTING TESTIMONY
You are the sole judges of each witness's credibility. You should consider each witness's
source of knowledge, reliability of memory and 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 interest; the witness's demeanor on the witness
stand; and all the 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. This instruction applies to the
testimony of all witnesses, including expert witnesses.

EXPERT TESTIMONY
Expert testimony is testimony from a person who has a special skill or knowledge in some
science, profession, or business. This skill or knowledge is not common to the average person
but has been acquired by the expert through special study or experience. 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.

BURDEN OF PROOF

In any legal action, facts must be proven by a required standard of evidence, known as the
"burden of proof." In a patent case such as this, there are two different burdens of proof that are
used. The first is called "preponderance of the evidence." The second is called "clear and
convincing evidence."
As I have already told you, in this case, PUM alleges that Google infringes the
Patents-in-Suit. PUM, therefore, has the burden of proving infringement by what is called a
preponderance of the evidence. That means PUM has to produce evidence which, considered in
the light of all the facts, leads you to believe that what PUM alleges is more likely true than not.
To put it differently, if you were to put PUM's and Google's evidence on opposite sides of a
scale, the evidence supporting PUM's allegations would have to make the scale tip somewhat
towards PUM's side. If PUM fails to meet this burden, your verdict must be for Google.
As I noted earlier, Google asserts that PUM's patents are invalid. A patent, however, is
presumed to be valid. Accordingly, Google has the burden of proving by clear and convincing
evidence that the patents are invalid. 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 also has to prove its breach of contract claim by a preponderance of the evidence.
PUM in turn must prove by a preponderance of the evidence its defenses to that claim.
Those of you who have sat on criminal cases will have heard the term proof beyond a
reasonable doubt. That requirement does not apply to a civil case; therefore, you should put it
out of your mind.

PATENT VIDEO
At this time, we are going to show a 17-minute video as an introduction to the patent
system. It contains background information to help you understand what patents are, why they
are needed, the role of the Patent Office, and why disputes over patents arise. This video was
prepared by the government, not by the parties.
In addition, many of the terms you will hear during this trial are contained in the "Glossary

of Patent Terms," which you can find at the end of these preliminary instructions. Feel free to
refer to the Glossary throughout the trial.

SUMMARY OF ISSUES
In this case, you must decide several things according to the instructions that I shall give

you at the end of the trial. Those instructions will repeat this summary and will provide more
detail. One thing you will not need to decide is the meaning of the patent claims. That is one of
my jobs - to decide what the patent claims mean. In essence, you must decide:
1.

Whether PUM has proven by a preponderance of the evidence that Google's

Accused Products infringed with respect to any or all of the asserted claims of the
Patents-in-Suit.
2.

Whether Google has proven by clear and convincing evidence that the Asserted

Claims are invalid as anticipated or obvious by prior art.
3.

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

breached his employment agreement.
4.

Whether PUM has proven by a preponderance of the evidence that Google's breach

of contract claim is time-barred, and that Dr. Konig's invention is protected from assignment by

California law.
The Google products and services accused by PUM of infringement are those versions of
the products and services as they existed June 2011. There may or may not have been changes to
these products after that date. You will not be hearing evidence of any such changes that
occurred after that date. The attorneys will only be asking questions addressed to the accused
products and services as they existed in June 2011, and the witnesses will be giving answers as to
how those products and services existed in June 2011. You may see witnesses struggle to answer
these questions because they may need to put themselves back in the time frame at issue and may
need to put out of their mind any changes to Google products or services that may have occurred
after June 2011.

CONDUCT OF THE JURY
Now, a few words about your conduct as jurors.
First, I instruct you that during the trial you are not to discuss the case with anyone or
permit anyone to discuss it with you. Until you retire to the jury room at the end of the case to
deliberate on your verdict, you simply are not to talk about this case. If any lawyer, party, or
witness does not speak to you when you pass in the hall, ride the elevator, or the like, remember
it is because they are not supposed to talk with you nor you with them. In this way, any
unwarranted and unnecessary suspicion about your fairness can be avoided. If anyone should try
to talk to you about this case, bring it to the Court's attention promptly.
Second, I know that many of you use cell phones, the Internet and other tools of technology
to communicate. You must not use these tools to communicate electronically with anyone about
the case. This includes your family and friends. Just to reiterate, you may not communicate with

anyone about the case on your cell phone, through e-mail, text messaging, through any blog,
through any Internet chat room, or by way of any other social networking website, including
Twitter, Facebook, Myspace, Linkedln, and Y ouTube.
Not every judge allows jurors to have access to their cell phones and devices in the jury
room during trial. In this trial, I am going to allow you to keep those devices, but you are not
permitted to use them to do any research about this case or about the parties in the case. You are
bound by your oath to follow this instruction and I expect that if anyone violates this instruction
you will let me or my staff know promptly. If you would prefer for my staff to hold onto your
phone and other devices during trial, we will be happy to do so.
Third, except in the courtroom during trial, do not read or listen to anything touching on
this case in any way. By that I mean, if there may be a newspaper article or radio or television
report relating to this case, do not read the article or watch or listen to the report.
Fourth, do not try to do any research or make any investigation about the case on your own.
Let me elaborate. During the course of the trial, you must not conduct any independent
research about the case, the matters in the case, and the individuals or entities involved in the
case. In other words, you should not consult dictionaries or reference materials, search the
internet, websites, biogs, or any other electronic means. Also, should there happen to be a
newspaper article or radio or television report relating to this case, do not read the article or listen
to the report. It is important that you decide this case based solely on the evidence presented in
the courtroom. Please do not try to find out information from any other sources.
Finally, do not form any opinion until all the evidence is in. Keep an open mind until you
start your deliberations at the end of the case.
During the trial, you may, but are not required to, take notes regarding testimony; for

example, exhibit numbers, impressions of witnesses or other things related to the proceedings. A
word of caution is in order. There is generally a tendency to attach undue importance to matters
which one has written down. Some testimony which is considered unimportant at the time
presented, and thus not written down, takes on greater importance later 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 your 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. Also, keep in mind that you will not have a transcript of the testimony to review. So,
above all, your memory will be your greatest asset when it comes time to deliberate and render a
decision in this case.
If you do take notes, you must leave them in the jury deliberation room which is secured at

the end of each day. And, remember that they are for your own personal use.
I will give you detailed instructions on the law at the end of the case, and those instructions
will control your deliberations and decision.

COURSE OF THE TRIAL
The trial will now begin.
First, each side may make an opening statement outlining its case. The opening statements
are not evidence. They are intended to explain to you what each side intends to prove and are
offered to help you follow the evidence. It will be up to you to determine whether the evidence the testimony of the witnesses and the admitted documents - supports what the attorneys say in
their opening statements.

After the opening statements, PUM will present its witnesses, and Google may
cross-examine them. Then Google will present its witnesses, and PUM may cross-examine
them.
Lawyers are permitted to make transition statements whenever they call a witness to the
stand, to introduce the witness and to briefly explain the relevance of the witness's anticipated
testimony. I have already instructed you that what the attorneys say is not evidence. These
transition statements may be given only to help you follow along.
After all the evidence is presented, the attorneys will make their closing arguments. The
closing arguments are not evidence. Their purpose is to summarize and interpret the evidence for
you. I will then give you final instructions on the law and describe for you the matters you must
resolve. You will then retire to the jury room to deliberate on your verdict.
At the end of this trial and before you begin your deliberations, I will read and give you a
copy of written instructions on the law.
Please keep in mind that evidence is often introduced somewhat piecemeal. So, as the
evidence comes in, you as jurors need to keep an open mind.
We will begin shortly, but first I want to outline the anticipated schedule of the trial.

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TRIAL SCHEDULE
Though you have heard me say this during jury selection, I want to again outline the
schedule I expect to maintain during the course of this trial.
This case is expected to take up to 10 days to try. We will normally begin the day at 9
A.M. promptly. We will go until approximately 12:30 P.M. and, after a 30-minute break for
lunch, continue from 1:00 P.M. to 4:30 P.M. There will be a fifteen minute break in the morning

and another fifteen minute break in the afternoon. The only significant exception to this schedule
may occur when the case is submitted to you for your deliberations. On that day, the proceedings
might last beyond 5:00 P.M.
Finally, please understand that this is a timed trial. That means the Court has allocated to
each party a maximum number of hours in which to present all portions of its case. This allows
me to assure you that we expect to be completed with this case by a week from Friday, that is by
March 21. Of course, to keep on schedule, it is important that you be here promptly each
morning and be ready at the end of each of our scheduled breaks.

GLOSSARY OF PATENT TERMS

Applicants:

The named inventors who are applying for the patent.

Assignment:

Transfer of ownership rights in a patent or patent application from one
person or company to another.

Claims:

That part of a patent that defines the invention. These are found at the end
of the patent specification in the form of numbered paragraphs.

Embodiment:

A method that is an example of the claimed invention.

Examination:

Procedure before the U.S. Patent and Trademark Office whereby an
Examiner reviews the filed patent application to determine if the claimed
invention is patentable.

File Wrapper. File History. or Prosecution History:
The written record of proceedings in the United States Patent and
Trademark Office ("Patent Office" or "PTO"), including the original patent
application and later rejections, responses to the rejections and other
communications between the Patent Office and the applicant.
Filing Date:

Date a patent application, with all the required sections, has been submitted
to the U.S. Patent and Trademark Office.

Limitation:

A required part of an invention set forth in a patent claim. A limitation is a
requirement of the invention. The word "limitation" is often used
interchangeably with the word "requirement." The phrase "claim limitation"
is often used interchangeably with the phrase "claim element."

Patent and Trademark Office (PTO):

An administrative branch of the U.S. Department of
Commerce that is charged with overseeing and
implementing the federal laws of patents and
trademarks. It is responsible for examining all patent
applications and issuing all patents in the United
States.

Prior Art:

Any information that was publicly known (including items that have
been offered for sale, publications, or patents) that was made,
known, used, published, or patented more than one year before the
filing date of the patent application.

Prior Art References:

Any item of prior art (publication, patent, or product) used to
determine patentability.

Specification:

That part of the patent application or patent that describes the
invention, and may include drawings. The specification does not
define the invention; only the claims do.

Written Description:

That part of the patent specification which explains how the
invention works and usually includes a drawing.