Personalized User Model LLP v. Google Inc.

Filing 663

Final Jury Instructions. (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
PERSONALIZED USER MODEL, L.L.P., )
)
Plaintiff/Counterclaim-Defendants,
)
)
v.
)
)
GOOGLE, INC.,
)
)
Defendant/Counter claimant.
)

Civ. No. 09-525-LPS

FINAL JURY INSTRUCTIONS

TABLE OF CONTENTS
Page

Section

1

INTRODUCTION

1

1.2

DUTY OF THE JURY

2

1.3

BURDENS OF PROOF

3

1.4

EVIDENCE DEFINED

5

1.5

DIRECT AND CIRCUMSTANTIAL EVIDENCE

6

1.6

CONSIDERATION OF EVIDENCE

7

1.7

STATEMENTS OF COUNSEL

8

1.8

CREDIBILITY OF WITNESSES

9

1.9

EXPERT WITNESSES

11

1.10

DEPOSITION TESTIMONY

12

1.11

DEMONSTRATIVE EXHIBITS

13

1.12

USE OF NOTES

14

1.13
2.

GENERAL INSTRUCTIONS

1.1

1.

NUMBER OF WITNESSES

15
16

2.1

SUMMARY OF ISSUES

18

2.2

3.

THE PARTIES AND THEIR CONTENTIONS

THE PATENT LAWS

19

PATENT INFRINGEMENT

20

3.1

INFRINGEMENT OF PATENT CLAIMS

20

3.2

CLAIM CONSTRUCTION FOR THE CASE

21

3.3

ORDER OF STEPS IS NOT A REQUIREMENT

24

3.4

25

3.5

OPEN ENDED OR "COMPRISING" CLAIMS

26

3.6

DIRECT INFRINGEMENT: LITERAL INFRINGEMENT

27

3.7
4.

INDEPENDENT AND DEPENDENT CLAIMS

DIRECT INFRINGEMENT: DOCTRINE OF EQUIVALENTS

29

INVALIDITY

31

4.1

INVALIDITY-GENERALLY

31

4.2

PRESUMPTION OF VALIDITY

32

4.3

ANTICIPATION

33

4.4

OBVIOUSNESS

35

4.4.1

38

4.4.2

OBVIOUSNESS: LEVEL OF ORDINARY SKILL

39

4.4.3
5.

OBVIOUSNESS: SCOPE AND CONTENT OF THE PRIOR
ART

OBVIOUSNESS: DIFFERENCES OVER THE PRIOR ART

40

BREACH OF CONTRACT COUNTERCLAIM

42

5.1

STATUTE OF LIMITATIONS

44

5.2

BREACH OF CONTRACT

46

5.2.1

ASSIGNMENT OF CONTRACT RIGHTS

46

5.2.2

BREACH OF CONTRACT ELEMENTS

47

5.3

48

5.4

6.

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

49

DELIBERATION AND VERDICT

50

6.1

INTRODUCTION

50

6.2

UNANIMOUS VERDICT

51

6.3

DUTY TO DELIBERATE

52

6.4

SOCIAL MEDIA

53

6.5

COURT HAS NO OPINION

54

1.

GENERAL INSTRUCTIONS
1.1

INTRODUCTION

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, 1 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.

1

1.2

DUTYOFTHEJURY

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
instruct 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.

2

l
1.3

BURDENS OF PROOF

In any legal action, facts must be proven by a required standard of evidence, known as the

"burden of proof." In a case such as this, there are two different burdens of proof. The first is
called "preponderance of the evidence." The second is called "clear and convincing evidence."
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. Google has the burden of proving that the Asserted Patents are
invalid by clear and convincing evidence.
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 tum must prove by a preponderance of the evidence its defenses to that
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

3

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.

I

4

1.4

EVIDENCE DEFINED

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, and any stipulations that the lawyers may have 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 - called demonstrative
exhibits - 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.

5

1.5

DIRECT AND CIRCUMSTANTIAL EVIDENCE

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.

6

1.6

CONSIDERATION OF EVIDENCE

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.

7

1.7

STATEMENTS OF COUNSEL

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.

8

1.8

CREDIBILITY OF WITNESSES

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 a 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 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.

9

1.9

EXPERT WITNESSES

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
expenence.
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.

10

1.10

DEPOSITION TESTIMONY

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 entitled to
the same consideration you would give it had the witness testified in person here in the
courtroom.

l
11

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. As I have already mentioned, during the course of this case you have also 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, and you will not have them in the jury room with you.
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.

12

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.
This instruction applies both to notes you have taken on the blank paper the Court has
given you, as well as any notes you may have taken on any exhibits given to you by the attorneys.

13

1.13

NUMBER OF WITNESSES

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.

14

2.

THE PARTIES AND THEIR CONTENTIONS
As I previously advised you, 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 patent" and "the '276 patent." A copy of each of these patents has been given to you; they
have also been admitted as evidence. Collectively, I will refer to these patents as the "Asserted
Patents" or the "Patents-in-Suit."
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
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

15

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 and patents 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 a named
inventor of the patents-in-suit, Y ochai Konig, breached his employment agreement with his
former employer. PUM and Konig deny these claims, and assert that SRI did not assign to
Google its right to assert a breach of contract claim against Konig, that the inventions do not fall
within the scope of Konig's employment agreement, and that Google's claims are untimely.

16

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 issues:
1. Whether PUM has proven by a preponderance of the evidence that Google's Accused

Products infringe or have 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 have not heard evidence of any such changes that occurred
after that date.

17

2.2

THE PATENT LAWS

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.

18

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.
Before you can decide many of the issues in this case, you will need to understand the
role of patent "claims." The patent claims involved here are claims 1 and 22 of the '040 patent
and claims 1, 3, 7, and 21 of the '276 patent. I will refer to these claims collectively as the
"asserted claims."
The claims of a patent are the numbered sentences 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. Only the claims of
the patent can be infringed. Neither the specification, which is the written description of the
invention, nor the drawings of a patent can be infringed.
Infringement must be assessed on a product-by-product and claim-by-claim basis. Each
of the accused systems and services must be individually compared with each and every claim
being asserted against that product. You should not compare the accused systems and services to
either the patent specification or any figures in the patent. In making the comparison for any
given claim, each of the limitations of that claim must be compared to the product to determine
19

whether each of the limitations of that claim are present in the product.
Each claim is effectively treated as if it were a separate patent, and each claim may cover
more or less than another claim.
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
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.

20

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 the words of the claims in this
case. As I have previously instructed you, you must accept my definition of these words in the
claims as correct. You must use the definitions that I give you for each patent claim to make
your decisions as to whether the claim is infringed or invalid. You must ignore any different
definitions used or suggested 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 invalidity.
Those issues are yours to decide.
I will now read to you certain claim terms that I have construed and provide you with my
constructions of those terms.
"user" and "user u"

"a person operating a computer or the associated representation
of the user"

"user specific data files"

"the monitored user interactions with the data and a set of
documents associated with the user"

"monitored user interactions
with the data"

"the collected information about the user's interactions with the
data"

"parameters"

"values or weights"

"estimating parameters of a
learning machine"

"estimating values or weights of the variables of a learning
machine"

"learning machine"

"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"

21

"User Model specific to the
user"

"an implementation of a learning machine updated in part by
data specific to the user"

"user-specific learning
machine"

"a learning machine [as construed] specific to the user"

"document"

"an electronic file including text or any type of media"

"estimating"

"approximating or roughly calculating"

"probability"

"numerical degree of belief or likelihood"

"unseen document"

"document not previously seen by the user"

"estimating a probability
P(u/d) that an unseen
document d is of interest to
the user u"

"approximating or roughly calculating a numerical degree of
belief or likelihood that an unseen document d is of interest to
the user u given the information that is known about the unseen
document"

"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"

"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"

"present" and "presenting"

"to provide or make available"

"documents of interest to
the user"

"documents [i.e., electronic files (including text or any type of
media)] for which the user has a positive response"

"documents not of interest
to the user"

"documents [i.e., electronic files (including text or any type of
media)] for which the user has a negative response or has
ignored"

"user interest information
derived from the User
Model"

"interests or other information inferred from the User Model"

"set"

"group or collection"

"set of documents
associated with the user"

"group or collection of documents associated with the user"

"automatic"

"without human intervention"

"central computer"

"computer on the server side of a client-server relationship"

22

For any words in the claim for which I have not provided you with a definition, you
should apply their common meaning.

23

3.3

ORDER OF STEPS IS NOT A REQUIREMENT

The steps of each claim do not need to be performed in the order in which they are listed
in the claim unless the language of the claim so specifies. If the claim does not explicitly or
implicitly require that the steps be performed in a certain order, then the steps may be performed
in any order.

l
24

3.4

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.
Here, for example, claim 22 of the '040 patent is a dependent claim. It depends on claim
1 of the '040 patent. As another example, Claim 3 of the '276 patent is another dependent claim.
It depends on claim lof the '276 patent.

An accused product or process is only covered by a dependent claim if the accused

product or process meets all of the requirements of both the dependent claim and the claims to
which the dependent claims refers.

25

3.5

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.

26

3.6

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. If you find that a claim on which other claims
depend is not infringed, there cannot be infringement of any dependent claim that refers directly
or indirectly to that independent claim.
If you find that an independent claim has been infringed, you must still decide, separately,

whether Google's accused systems and services or methods meets additional requirements of any
claims that depend from the independent claim, thus whether those claim have also been
infringed. A dependent claim includes all the requirements of any of the claims to which it refers
plus additional requirements of its own.
PUM contends that the following Google systems and services directly infringe the
following asserted claims of each of the patents in suit:

27

Patent

Accused Google System or Service

Asserted Claims

'040 patent

Google Search

claims 1 and 22

'276 patent

Google Search

claims 1, 3, and 21

'040 patent

Search Ads System

claims 1 and 22

'276 patent

Search Ads System

claims 1, 3, 7, and 21

'040 patent

AdSense for Content

claims 1 and 22

'276 patent

AdSense for Content

claims 1, 3, and 7

'040 patent

YouTubeAds

claims 1 and 22

'276 patent

YouTubeAds

claims 1, 3, and 7

The asserted claims cover methods. Offering a system or service does not itself infringe a
method claim. In order for a method claim to be infringed, PUM must prove that each step of the
claimed method is actually performed, not merely that a system or service has been offered that is
capable of performing the claimed method.

28

3.7

DIRECT INFRINGEMENT- DOCTRINE OF EQUIVALENTS

If you do not find literal infringement, you may consider infringement under the "doctrine
of equivalents."
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

l
I

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

l

I

l

29

an equivalent for each element of the claim that is not literally present in the Accused 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.

30

4.

INVALIDITY
4.1

INVALIDITY-GENERALLY

Patent invalidity is a defense to patent infringement. Even though the Patent Office
examiner has allowed the claims of a patent, an accused infringer has the right to argue here in
Federal Court that the claims of the patent are invalid, and you have the ultimate responsibility
for deciding whether the claims of the patent are invalid. The Patent Office may not have had
available to it all of the prior art that has been presented to you. Therefore, in making your
decision whether Google has met its burden as to a particular patent claim, you may consider
whether you have heard prior art references that the Patent Office had no opportunity to evaluate
before granting the patents. It is your job to consider the evidence presented by the parties and
determine independently whether or not Google has proven that the claims of the patents in suit

l
I

are invalid.
I will now instruct you in more detail on the invalidity issues you should consider.

I
I

31

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.

32

I

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. The disclosure in the prior art reference does not have to be in the same words as the
claim, but all of the requirements of the claim must be there, either stated or necessarily implied
so that someone of ordinary skill in the relevant field looking at that one reference would be able
to make and use at least one embodiment of the claimed invention.
Anticipation also occurs when the claimed invention inherently or necessarily results
from the practice of what is disclosed in the written reference, even if the inherent disclosure was
unrecognized or unappreciated by one of ordinary skill in the field of the invention.

33

Google asserts in this action that the following references anticipate the Asserted Claims:
Asserted Claim

Allegedly Anticipating Reference

Claim 1 of the '040 patent

"Personal Web Watcher: design and implementation" by
Dunja Mladenic ("Mladenic")

Claim 1 of the '040 patent

"Collecting User Access Patterns for Building User Profiles
and Collaborative Filtering" by Ahmad M. Ahmad Wasfi
("Wasfi")

Claim 1 of the '040 patent
Claim 1 of the '276 patent

"A Personal Evolvable Advisor for WWW KnowledgeBased Systems" by M. Montebello, W.A. Gray, and S.
Hurley ("Montebello")

34

4.4

OBVIOUSNESS

Even though an invention may not have been identically disclosed or described in the
prior art before it was made by an inventor, in order to be patentable, the invention must also not
have been obvious to a person of ordinary skill in the art to which the claimed invention pertains
at the time the invention was made.
Google contends that the asserted claims are invalid for obviousness. A patent claim is
invalid if the claimed invention, as a whole, would have been obvious to a person of ordinary
skill in the field of the invention at the time the application was filed. This means that even if all
the requirements of the claim cannot be found in a single prior art reference that would anticipate
the claim, a person of ordinary skill in the field of the invention who knew about all of the prior
art would have come up with the claimed invention.
The ultimate conclusion of whether a claim is obvious should be based on your
determination of several factual issues:
1.

You must decide the scope and content of the prior art.

2.

You must decide the level of ordinary skill in the field of the invention that
someone would have had at the time the claimed invention was made.

3.

You should consider any difference or differences between the prior art and the
claim requirements.

I will provide more details on how you should make these factual determinations shortly.
You should also consider any of the following factors that you find have been shown by
the evidence:
A.

Factors tending to show non-obviousness:
1.

commercial success of a product due to the merits of the claimed

35

invention;
2.

a long-felt, but unsolved, need for the solution provided by the claimed
invention;

3.

unsuccessful attempts by others to find the solution provided by the
claimed invention;

4.

copying of the claimed invention by others;

5.

unexpected and superior results from the claimed invention;

6.

acceptance by others of the claimed invention as shown by praise from
others in the field of the invention or from the licensing of the claimed
invention;

7.

disclosures in the prior art that criticize, discredit, or otherwise
discourage the claimed invention and would therefore tend to show that
the invention was not obvious; and

8.

other evidence tending to show non-obviousness.

You may consider the presence of any of the listed factors A.1-8 as an indication that the
claimed invention would not have been obvious at the time the claimed invention was made.
There must be a nexus, or connection, between the evidence showing any of these factors
and 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 is due to advertising,
promotion, salesmanship or the like, or is due to features of the product other than those claimed
in the patents in suit, then any commercial success may have no relation to the issue of
obviousness.
B.

Factors tending to show obviousness
1.

independent invention of the claimed invention by others before or at
about the same time as the named inventor thought of it; and

36

2.

other evidence tending to show obviousness.

You may consider the presence of the listed factors B.1-2 as an indication that the
claimed invention would have been obvious at such time.
Although you should consider any evidence of these factors, the relevance and
importance of them to your decision on whether the claimed invention would have been obvious
is up to you.
Further, you must be careful not to determine obviousness using hindsight; many true
inventions can seem obvious after the fact. You should put yourself in the position of a person of
ordinary skill in the field of the invention at the time the claimed invention was made, and you
should not consider what is known today or what is learned from the teaching of the patent.

If you find that a claimed invention was obvious as explained above, you must find that
claim invalid.

37

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 either before the date of invention or 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; and

2.

publications having a date either before the date of invention or more than one
year before the earliest effective filing date of the patent.

38

4.4.2

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.
It is up to you to decide the level of ordinary skill in the field of the invention. In
deciding what the level of ordinary skill in the field of the invention is, you should consider all
the evidence introduced at trial, including but not limited to: (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; (3) the solutions found to those problems; (4) the prior art patents,
products or devices, and publications; and (5) the sophistication of the technology in the field at
the time of the invention, including how rapidly innovations were made in the art at the time of
the invention.

39

4.4.3

OBVIOUSNESS - DIFFERENCES OVER THE PRIOR ART

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. In considering whether a claimed invention is obvious, you may but are not
required to find obviousness if you find that at the time of the claimed invention there was a
reason that would have prompted a person having ordinary skill in the field of the invention to
combine the known elements in a way the claimed invention does, taking into account such
factors as:
1.

whether the claimed invention was merely the predictable result of using prior art
elements according to their known functions;

2.

whether the claimed invention provides an obvious solution to a known problem
in the relevant field;

3.

whether the prior art teaches or suggests the desirability of combining elements
claimed in the invention;

4.

whether the prior art teaches away from combining elements in the claimed
invention;

5.

whether it would have been obvious to try the combinations of elements, such as
when there is a design need or market pressure to solve a problem and there are a
finite number of identified, predictable solutions; and

6.

whether the change resulted more from design incentives or other market forces.

Accordingly, you 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. To find that it rendered the invention
obvious, you must find that the prior art provided a reasonable expectation of success. Obvious

40

to try is not sufficient in unpredictable technologies. 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.

41

5.

GOOGLE'S BREACH OF CONTRACT COUNTERCLAIM
I will now give you instructions on Google's breach of contract counterclaim. Google

asserts that Y ochai Konig entered into an employment contract with SRI on or about April 8,
1996 that obliged him to assign to SRI any inventions conceived during his employment with
SRI. Google asserts that Dr. Konig conceived the inventions in the patents-in-suit during his
employment with SRI and that Dr. Konig breached his employment contract because he failed to
assign the inventions in the patents-in-suit to SRI as required by his employment contract.
Google asserts that Dr. Konig's breach of his employment contract causes Google harm by
denying it acknowledgment as a rightful co-owner of the patents-in-suit.
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 multiple 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 oflimitations.
Second, if not barred by the statute of limitations, you must decide whether Google has
proven by a preponderence of the evidence that 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.
Fourth, 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

42

California Labor Law which protects certain inventions from assignment to employers.
I will now instruct you on the law that governs these issues.

43

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 oflimitations. Statutes oflimitations afford plaintiffs a reasonable time to present their
claims, but protect defendants and the courts from having stale claims brought to the Court. If a
party does not file an action within the time period set by the statute oflimitations, it is
time-barred.
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
oflimitations, Google's claim is barred as well.
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. Google
contends that the statute should be tolled, or stopped from running for a period of time, under an
exception that the injury was inherently unknowable.
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. It is Google's burden to demonstrate by a preponderance of evidence this
exception applies such that the statute of limitations should be tolled.
Google maintains that the statute oflimitations was tolled and did not begin to run until
after this lawsuit was filed and PUM provided confidential discovery concerning the conception
date of the patented inventions. The statute of limitations must be tolled if the injury was
inherently unknowable and Google and SRI were blamelessly ignorant of the wrongful act and

44

the injury they suffered. You must find that the statute oflimitations was tolled if, before PUM
produced confidential discovery in this case, it was inherently unknowable to Google and SRI
that the inventions were conceived during Dr. Konig's SRI employment, and Google and SRI
were blamelessly ignorant of this fact. You must consider whether Google or SRI were aware of
the conception date before this lawsuit was filed, whether any facts available to Google or SRI
would have caused a person of ordinary intelligence and prudence to conduct an inquiry into the
conception date, and whether such an inquiry would have led to the discovery of the conception
date. If you find that Google and SRI were unaware of the conception date before this lawsuit
and that no inquiry they reasonably should have conducted before this lawsuit would have caused
them to discover the conception date, you must find that the statute of limitations was tolled until
PUM produced confidential discovery in this lawsuit concerning the conception date.

45

5.2

BREACH OF CONTRACT
5.2.1

ASSIGNMENT OF CONTRACT RIGHTS

You must determine whether Google has proven by a preponderance of the evidence that,
under the Google/SRI Purchase Agreement, SRI assigned its right to bring a breach of contract
claim against Dr. Konig to Google. Google contends that it acquired SRI's right to assert SRl's
breach of contract claim against Dr. Konig. PUM contends that, pursuant to § 4 of the
SRI/Google Purchase Agreement, no such transfer took place.

46

5.2.2

BREACH OF CONTRACT ELEMENTS

If you decide that the statute oflimitations 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, 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
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.
I will address each of these in tum.

47

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 apply the meaning of the word "conceived" as used in
Dr. Konig's employment agreement. I instruct you that "conceived" means "the formation in the
mind of the inventor of a definite and permanent idea of the complete and operative invention,
such 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."
Google must prove by a preponderance of the evidence that Dr. Konig conceived the
inventions during his employment with SRI. If you find that Dr. Konig conceived of the
inventions after he left SRI, then the invention cannot be subject to the employment agreement.

48

5.4

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. 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.
To prove that the inventions are exempt from his transfer obligations, Konig must prove
each of the following three things:
1.

The inventions were not related to SRI's business or actual or demonstrably
anticipated research or development when the inventions were conceived or
reduced to practice. You must interpret the phrase "related to" broadly;

2.

The inventions did not result from any work performed by Konig for SRI; and

3.

Konig developed the inventions entirely on his own time without using SRl's
equipment, supplies, facilities, or trade secret information. It is undisputed that
this third requirement is satisfied.

49

6.

DELIBERATION AND VERDICT
6.1

INTRODUCTION

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 5-3 or 7-1, or
whatever your vote happens to be. That should stay secret until you are finished.

50

6.2

UNANIMOUS VERDICT

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
unammous.

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.

51

6.3

DUTY TO DELIBERATE

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 4:30 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 9 a.m.

52

6.4

SOCIAL MEDIA

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 Facebook, MySpace, Linkedin, Y ouTube, or Twitter, to communicate to anyone any
information about this case or to conduct any research about this case until I accept your verdict.

In other words, you cannot talk to anyone on the phone, correspond with anyone, or
electronically communicate with anyone about this case, or perform any research. You can only
discuss the case in the jury room with your fellow jurors during deliberations.

53

6.5

COURT HAS NO OPINION

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.

54