Ironworks Patents LLC v. Apple Inc.
Final Jury Instructions (read in open court by Judge Robinson on 12/11/12). (fms)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
MOBILEMEDIA IDEAS, LLC,
) Civ. No. 10-258-SLR
FINAL JURY INSTRUCTIONS
Dated: December 11, 2012
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. I will explain some rules that you must use in
evaluating particular testimony and evidence. I will explain the positions of the parties
and the law you will apply in this case. Last, I will explain the rules that you must follow
during your deliberations in the jury room. Please listen very carefully to everything I
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 interrogatories, or questions, that you must answer to decide this case.
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 that 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 which party should prevail on the issues presented. I will instruct you about the
burden of proof shortly. 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.
You must make your decision based only on the evidence that you saw and
heard here in the courtroom. 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, the exhibits that I allowed into evidence, and any facts that the parties
agreed to by stipulation.
Nothing else is evidence. The lawyers' statements and arguments are not
evidence. Their questions and objections are not evidence. My legal rulings are not
evidence. None of my comments or questions are evidence. The notes taken by any
juror are not evidence.
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
During the trial I may not have 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. And sometimes I may have ordered you to
disregard things that you saw or heard. You must completely ignore all of these things.
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
DIRECT AND CIRCUMSTANTIAL EVIDENCE
Some of you may have heard the terms "direct evidence" and "circumstantial
Direct evidence is simply evidence like the testimony of any 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 simply 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.
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.
USE OF NOTES
You may use notes taken during the trial to assist your memory. Remember that
your notes are for your personal use. They may not be given or read to anyone else.
Do not use your notes, or any other juror's notes, as authority to persuade fellow jurors.
Your notes are not evidence, and they are by no means a complete outline of the
proceedings or a list of the highlights of the trial. Some testimony that is considered
unimportant at the time presented and, thus, not written down, may take on greater
importance later on in the trial in light of all the evidence presented. Your notes are
valuable only as a way to refresh your memory. Your memory is what you should be
relying on when it comes time to deliberate and render your verdict in this case.
CREDIBILITY OF WITNESSES
You, the jurors, are the sole judges of the credibility, or the believability, of the
witnesses you have seen during the trial and the weight their testimony deserves.
You should carefully scrutinize all the testimony each witness has given and every
matter of evidence that tends to show whether he or she is worthy of belief. Consider
each witness's intelligence, motive, and state of mind, as well as his or her demeanor
while on the stand. Consider the witness's ability to observe the matters as to which he
or she has testified and whether he or she impresses you as having an accurate
recollection of these matters. Consider also any relation each witness may bear to each
side of the case, the manner in which each witness might be affected by the verdict, the
interest any witness may have in the verdict, and the extent to which, if at all, each
witness is either supported or contradicted by other evidence in the case.
Discrepancies in the testimony of different witnesses may, or may not, cause you
to discredit such testimony. Two or more persons witnessing an incident or transaction
may see or hear it differently. Likewise, in determining the weight to give to the
testimony of a witness, you should ask yourself whether there was 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, or inconsistent, from the testimony that he or she gave
during the trial. It is the province of the jury to determine whether a false statement or a
prior inconsistent statement discredits the witness's testimony.
You should remember that a simple mistake by a witness does not 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.
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.
When knowledge of technical subject matter might be helpful to the jury, a
person who has special training or experience in that technical field — he or she is
called an expert witness — is permitted to state his or her opinion on those technical
matters. However, you are not required to accept that opinion. As with any other
witness, it is up to you to judge the credentials and credibility of the expert witness and
decide whether to rely upon his or her testimony.
You should consider each expert opinion received in evidence in this case, and
give it such weight as you think it deserves. If you decide that the opinion of an expert
witness is not based upon sufficient education and experience, or if you conclude that
the reasons given in support of the opinion are not sound, or if you feel that the opinion
is outweighed by other evidence, you may disregard the opinion in whole or in part.
THE PARTIES AND THEIR CONTENTIONS
I will now review for you the parties in this action and the positions of the parties
that you will have to consider in reaching your verdict.
The plaintiff is MobileMedia Ideas LLC, which I will refer to as “MobileMedia.”
The defendant is Apple Inc., which I will refer to as “Apple.”
MobileMedia manages intellectual property rights originally developed by Sony
and Nokia. MobileMedia is the current owner of the following three patents:
U.S. Patent No. 6,427,078 (“the ’078 patent”);
U.S. Patent No. 6,253,075 (“the ’075 patent”); and
U.S. Patent No. 6,070,068 (“the ’068 patent”).
I may refer to these patents collectively as “the patents-in-suit.”
Apple designs, manufactures, and markets mobile communication and media
devices, personal computers, and portable digital music players.
MobileMedia contends that certain versions of Apple’s iPhone products infringe
the following claims of the patents-in-suit:
Claim 73 of the ’078 patent;
Claims 5, 6, and 10 of the ’075 patent; and
Claims 23 and 24 of the ’068 patent.
These claims may be referred to collectively as the “asserted claims.” Apple
contends it does not infringe any of the asserted claims of the patents-in-suit. Apple
further contends that each of the asserted claims is invalid due to anticipation and/or
You will be asked to determine the issues of infringement and validity according
to instructions I will give you in a moment.
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 patent case such as this, there are two different
burdens of proof that you must consider.
The first burden of proof is called “preponderance of the evidence.” MobileMedia
must prove its claims of patent infringement by a preponderance of the evidence. When
a party has the burden of proof by a preponderance of the evidence, it means that you
must be persuaded that what the party seeks to prove is more probably true than not
true. To put it differently, if you were to put MobileMedia’s evidence of infringement and
Apple’s evidence of non-infringement on opposite sides of a scale, the evidence
supporting MobileMedia’s assertions would have to make the scale tip somewhat to
The second burden of proof is called “clear and convincing” evidence. Clear and
convincing evidence is a higher burden of proof than a preponderance of the evidence.
Apple has the burden of proving that each one of the asserted claims of the patents-insuit is invalid by clear and convincing evidence. Clear and convincing evidence is
evidence that produces an abiding conviction that the truth of a fact is highly probable.
You must decide, as to each of the asserted claims, whether Apple has proven, by clear
and convincing evidence, that the claim is invalid by reason of anticipation and/or
obviousness in light of the prior art and the ordinary skill of one in the art. I will explain
these concepts to you further in a moment.
Those of you who are familiar with criminal cases will have heard the term “proof
beyond a reasonable doubt.” That burden does not apply in a civil case, such as this
one, and you, therefore, should put it out of your mind in considering whether or not
MobileMedia has met its “more likely than not” burden of proof or Apple has met its
“clear and convincing” burden of proof.
THE PATENT CLAIMS
PATENT CLAIMS GENERALLY
Before you can decide whether or not any of the asserted claims are infringed or
invalid, you will have to understand what patent “claims” are. Patent claims are the
numbered paragraphs at the end of a patent.
The purpose of the claims is to provide notice to the public of what a patent
covers and does not cover. The claims are “word pictures” intended to define, in words,
the boundaries of the invention described and illustrated in the patent.
Claims are usually divided into parts, called “limitations.” For example, a claim
that covers the invention of a table may recite the tabletop, four legs, and the glue that
secures the legs to the tabletop. The tabletop, legs and glue are each a separate
limitation of the claim.
A claim covering the invention of a table is called an apparatus
claim. A claim describing the steps required to make a table is called a method claim.
DEPENDENT AND INDEPENDENT CLAIMS
There are two different types of claims in a patent. The first type is called an
“independent” claim. An independent claim does not refer to any other claim of the patent.
An independent claim is read alone to determine its scope.
For example, claim 5 of the ’075 patent is an independent claim. You know this
because claim 5 does not refer to any other claims. Accordingly, the words of this claim
are read by themselves in order to determine what the claim covers.
The second type, a “dependent” claim, refers to at least one other claim in the patent
and, thus, incorporates whatever that other claim says. Accordingly, to determine what a
dependent claim covers, you must read both the dependent claim and the claim or claims
to which it refers.
For example, claim 6 of the ’075 patent is a dependent claim. If you look at claim
6, it refers to claim 5. Therefore, to determine what claim 6 covers, you must consider both
the words of claims 5 and 6 together.
OPEN-ENDED OR "COMPRISING" CLAIMS
Several claims of the patents-in-suit use the transitional term “comprising.”
“Comprising” is interpreted the same as “including” or “containing.” In patent claims,
comprising means that the claims are open-ended, that is, the claims are not limited to
products that include only what is in the claim and nothing else.
If you find that the accused products include all of the limitations in any of the
asserted claims that use the term “comprising,” the fact that the accused products may
also include additional elements or features is irrelevant. The presence of additional
elements or features in an accused product does not mean that the product does not
infringe a patent claim.
Similarly, if you find that the prior art includes all of the limitations in any of the
asserted claims that use the word “comprising,” the fact that it may also include
additional elements or features is irrelevant. The presence of additional elements or
features does not mean that the prior art does not invalidate a patent claim.
It is my duty under the law to define what the patent claims mean and to instruct you
about that meaning. You must accept the meanings I give you and use the meaning of
each claim for your decisions on infringement and validity.
You must ignore any different interpretation given to these terms by the witnesses
or by attorneys.
I instruct you that the following claim terms have the following definitions:
Definition: a data
collection apparatus for
Definition: The function is ‘078 Patent, claim 73
to transmit a picture
captured by the camera
and processed by the
processing unit to another
location using a radio
The structure is cellular
mobile phone unit or
Definition: The function is ‘078 Patent, claim 73
to process an image
captured by the camera unit
and to store at least a
portion of the processed
image information in said at
least one memory unit of
said camera unit for later
The structure is the image
processing unit and
memory unit or equivalents
means . . . for transmitting
processed by said
microprocessor to another
location using a radio
means for processing and
for storing at least a
portion of the image
information obtained by
the camera unit for later
recall and processing
Patent and Claim(s)
Where Term Appears
‘078 Patent, claim 73
Definition: a single
communication sufficient to
cause the base station to
“immediately release the
the wireless system is to
Definition: the wireless
immediately release the
system must, without
incoming call on the
requiring any additional
action by or communication
between the mobile phone from the mobile phone,
and the remote transceiver “release the incoming call
on the communication
channel between the
mobile phone and remote
element that controls the
flow of energy.
processing items available Definition: actions
to the user
available to the user for
controlling a call into a
desired connecting state.
listing said processing
Definition: the processing
items are grouped together
in an orderly fashion.
displaying said processing Definition: processing
items on said display when items are displayed in
Patent and Claim(s)
Where Term Appears
‘075 Patent, claims 5, 6 and
‘075 Patent, claims 5, 6 and
‘075 Patent, claim 6
‘068 Patent, claims 23 and
‘068 Patent, claims 23 and
‘068 Patent, claims 23 and
If I have not provided a specific definition for a given term, you are to use the
ordinary meaning of that term.
MEANS-PLUS-FUNCTION CLAIM LIMITATIONS
Claim 73 of the ’078 patent uses the phrase “means for . . . .” This “means for”
phrase has a special meaning in patent law. It is called a “means-plus-function”
limitation. It does not cover all of the structures that could perform the function set forth
in the claim. Instead, it covers a structure or set of structures that performs the function
and that is either identical or “equivalent” to at least one of the structures described in
the patent for performing that function.
When I read you my definitions for certain claim terms a few moments ago, I
identified the structures described in the ’078 patent for performing the corresponding
functions. You should apply my definition of the functions and the structures described
in the ’078 patent as you would apply my definition of any other claim term.
A patent owner has the right to stop others from using the invention covered by
its patent claims during the life of the patent. If any person makes, uses, sells (within
the United States), offers to sell (within the United States), or imports what is covered by
the patent claims without the patent owner's permission, that person is said to infringe
In this case, MobileMedia alleges that Apple’s accused products directly infringe
the asserted claims. MobileMedia also asserts that Apple induces its customers to
infringe the asserted claims.
You must decide whether or not MobileMedia has proven, by a preponderance of
the evidence, that Apple has made, used, sold (within the United States), or offered for
sale (within the United States) a product covered by any of the claims at issue in this
case. If Apple infringes one claim of any patent-in-suit, then Apple infringes that patent.
Apple’s knowledge or intent to infringe is not relevant to whether Apple directly infringes
the asserted claims, but is relevant to whether Apple indirectly infringes by inducing
customers to infringe.
DIRECT INFRINGEMENT BY LITERAL INFRINGEMENT
In order to prove direct infringement, MobileMedia must prove that each limitation
of the asserted claims is present in the accused product. A claim limitation may be
present in an accused product in one of two ways: either literally or under the “doctrine
of equivalents.” In this case, the only issue is whether the limitations of the asserted
claims are literally in the accused products.
A claim limitation is literally present if it exists in the accused product just as it is
described in the claim language, either as I have explained that language to you or, if I
did not explain it, as you understand its plain and ordinary meaning.
Literal infringement must be determined with respect to each asserted claim
individually by comparing the elements or features of the accused product to each of
that claim’s limitations. For an apparatus claim, MobileMedia must prove that each and
every component is present in the accused product. For a method claim, MobileMedia
must prove that Apple practices each and every step of the claimed method. If the
accused product omits any single limitation recited in a given claim, then you must find
that Apple has not infringed that claim. You must determine infringement with respect
to each asserted claim and each accused product individually.
In determining whether any accused product literally infringes any asserted
claim, you should take the following steps:
First, you should determine the meaning of the asserted claim by reading the
claim language, limitation by limitation, as those limitations have been construed by the
court or, if they have not been specifically construed by the Court, according to their
ordinary meaning; and
Second, you should compare the accused product, element by element or
feature by feature, to each of the limitations of the asserted claim.
If you find each and every limitation of the asserted claim in the accused product,
you must return a verdict of literal infringement as to that claim.
If you did not find each and every limitation of the asserted claim in the accused
product, you must not return a verdict of literal infringement as to that claim.
You must repeat the above analysis with every asserted claim. There is one
exception to this rule. If you find that an independent claim is not infringed, there cannot
be infringement of any dependent claim that refers directly or indirectly to that
independent claim. On the other hand, if you find that an independent claim has been
infringed, you must still decide, separately, whether the product or method meets the
additional requirements of any claims that depend from the independent claim, thus,
whether those dependent claims have also been infringed.
DIRECT INFRINGEMENT BY LITERAL INFRINGEMENT
OF MEANS-PLUS-FUNCTION CLAIMS
As I have previously explained, claim 73 of the ’078 patent includes requirements
that are written in means-plus-function form.
In order to prove direct infringement of a means-plus-function limitation of an
asserted claim, MobileMedia must prove that: (1) the accused product has a structure or
a set of structures that performs the identical function recited in the claim; and (2)
consistent with the court’s claim constructions, that structure or set of structures is identical
or equivalent to the described structure that I defined as performing the functional limitation.
If the accused product does not perform the specific function recited in the claim, the
“means-plus-function” requirement is not met, and the product does not literally infringe the
INDIRECT INFRINGEMENT – INDUCING PATENT INFRINGEMENT
In addition to direct infringement, MobileMedia asserts that Apple induces the
infringement of certain asserted claims.
Apple induces patent infringement if it purposefully causes, urges or encourages
another to infringe a patent. Inducing infringement cannot occur unintentionally. This is
different from direct infringement which, as I have told you, can occur unintentionally. To
have a specific intent to infringe, Apple must know that the acts it encourages constitute
patent infringement. In order to prove inducement, MobileMedia must prove four things by
a preponderance of the evidence:
First, that Apple encouraged or instructed one or more of its customers on how to
use the accused products in a manner that you, the jury, find infringes the asserted claims.
Second, that Apple knew of the patents-in-suit at that time.
Third, that Apple knew at that time that its encouragement or instructions would
result in its customers infringing the patents-in-suit.
Fourth, that at least one of Apple’s customers infringed the patents-in-suit.
You may find that Apple induced patent infringement only if you are persuaded that
each of these four factors is met.
As I stated previously, Apple contends that the asserted claims are invalid. I will now
explain to you each of the grounds for invalidity that were presented by Apple at trial. Apple
must meet its burden of proof on only one ground in order to invalidate a claim. In making
your determination as to invalidity, you should consider each claim separately.
AFFIRMATIVE DEFENSE OF INVALIDITY GENERALLY
For a patent to be valid, the invention claimed in the patent must be new, useful, and
nonobvious. The terms "new," "useful," and "nonobvious" have special meanings under
the patent laws. I will explain these terms to you as we discuss Apple’s grounds for
Apple has challenged the validity of the asserted claims on a number of grounds.
The patents-in-suit were granted by the Patent and Trademark Office or “PTO,” and Apple
bears the burden of overcoming the assumption that the PTO has correctly done its job.
In this regard, you may consider such factors as whether the prior art references relied on
by Apple for its invalidity defenses were considered by the PTO and whether the patent
claim was reexamined by the PTO. Keep in mind, however, that you have an independent
duty to examine the evidence presented at trial to determine whether Apple has met its
burden of proving, by clear and convincing evidence, that the legal requirements for
patentability were not met.
I will now explain to you Apple's grounds for invalidity in detail.
As I stated previously, under the patent laws, a person can be granted a patent
only if the invention claimed in the patent is new and not obvious in light of what came
before. That which came before is referred to as the “prior art.”
Apple must prove, by clear and convincing evidence, that these items are prior
art. In order to do so, Apple must prove that the items fall within the categories of prior
art recognized by the patent laws, which include anything that was publicly known or
used in the United States by someone other than the inventor before the inventor made
the invention, or anything that was described in a printed publication anywhere in the
world before the inventor made the invention, or more than one year before the
application for the patent was filed.
Each patent in suit was filed on a different date. Therefore, you must decide
whether the asserted claims are invalid in view of the prior art and the ordinary skill in
the art as it existed as of a certain time. The parties agree to the following priority dates
for the following patents
May 19, 1994 for the ’078 patent;
May 19, 1998 for the ’075 patent; and
March 19, 1996 for the ‘068 patent.
The prior art relevant to each of Apple’s claims will be listed for you in connection
with the instructions relating to that claim.
INVALIDITY - ANTICIPATION
In order for someone to be granted a patent, the invention must actually be
“new.” In general, inventions are new when they have not been made, used, or
disclosed before. In this case, Apple contends that each of the following asserted
claims is not new because it was anticipated by:
Claims 23 and 24 of the ’068 patent:
U.S. Patent No. 5,754,636 (“Bayless”) (Exhibit DTX 26).
Claim 73 of the ’078 patent:
Japanese Patent Publication No. H6-133081 (“Kyocera” or “Morita
‘081”) (Exhibits DTX 37 and DTX 70).
Invalidity by anticipation requires the presence in a single prior art reference of
each and every limitation of the claim, either expressly or inherently, and that a person
having ordinary skill in the art at the time of the invention could make and use the
invention without undue experimentation based on the prior art reference. You should
consider that which is expressly stated or present in the item of prior art, and also that
which is inherently present. Further, anticipation requires that the prior art limitations
themselves be arranged as in the claim; the claims cannot be treated as mere catalogs
of separate elements, in disregard of the element-to-element relationships set forth in
the claims. However, anticipation does not require the prior art reference to use the
same language or terminology as the patent claim.
To prevail on its defense of invalidity by anticipatory art, Apple must prove, by
clear and convincing evidence, that the asserted claims are anticipated by the prior art
INVALIDITY – OBVIOUSNESS
Apple contends that the asserted claims are invalid because they are obvious.
Apple contends that each of the asserted claims is obvious in view of combinations of
the following prior art with each other and/or with the knowledge of a person of ordinary
skill in the art:
Claims 5, 6, and 10 of the ’075 patent:
European Telecommunication Standard - ETS 300 557: European
Digital Cellular Telecommunications System (Phase 2); Mobile
Radio Interface Layer 3 Specification, February 1995 (GSM 04.08)
(Exhibit DTX 40);
European Telecommunication Standard - ETS 300 567: European
Digital Cellular Telecommunications System (Phase 2); Call Waiting
(CW) and Call Hold (HOLD) Supplementary Services - Stage 3,
February 1995 (GSM 04.83) (Exhibit DTX 41); or
Claims 23 and 24 of the ’068 patent:
U.S. Patent No. 6,070,068 (“’068 patent”) (Exhibit JTX 5).
Bayless (Exhibit DTX 26).
Claim 73 of the ’078 patent:
Kyocera or Morita ’081 (Exhibits DTX 37 and DTX 70); or
U.S. Patent No. 5,550,646 (“Lucent”) (Exhibit DTX 209).
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. This is because granting
patent protection to advances that would occur in the ordinary course, without real
innovation, retards progress and may deprive prior inventions of their value or utility.
The issue is not whether the claimed invention would be obvious to you as a
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 the invention was made.
In arriving at your decision on the issue of whether or not the asserted claims
would have been obvious to a person of ordinary skill in the art and, therefore, are
invalid, you should first determine, the scope and content of the prior art. This means
that you should determine what prior art was reasonably pertinent to the particular
problems the inventor faced.
Prior art must be “analogous art” to be relevant to your consideration of
obviousness. Analogous art may be art from the same field of endeavor. If the
reference is not within the field of the inventors’ endeavor, it may still be considered if
the reference is reasonably pertinent to the particular problem that the inventors faced.
You must next consider the differences, if any, between the prior art and each
asserted claim. Although it is proper for you to consider differences between the
claimed invention and the prior art, you should not focus on only the differences,
because the test is whether the claimed invention as a whole would have been obvious
over all of the asserted prior art.
Next, you are to determine the level of ordinary skill in the art to which the
claimed invention pertained at the time the claimed invention was made. Factors to be
considered in determining the level of ordinary skill in the pertinent art include:
The educational level of the inventor and of others working in the field;
The types of problems encountered in the art at the time of the invention;
The prior art patents and publications;
The activities of others;
Prior art solutions to the problems encountered by the inventor; and
The sophistication of the technology.
A person of ordinary skill in the art is presumed to have knowledge of the
relevant prior art at the time of the claimed invention. If you find that the available prior
art shows each of the limitations of the asserted claims, you must determine whether it
then would have been obvious to a person of ordinary skill in the art to combine or
coordinate these limitations in the same manner as the asserted claims. This is often
referred to as “motivation to combine.” You may consider whether a person of ordinary
skill in the art would have had motivation to combine the prior art references in the same
manner as the asserted claims and would have had a reasonable expectation of
success in doing so. A teaching, motivation, or suggestion to combine references may
be a helpful insight, but it is not a requirement for demonstrating obviousness.
In determining whether the asserted claims would have been obvious to a person
of ordinary skill in the art and, therefore, are invalid, you should not apply any rigid test
or formula. Rather, you should use your common sense to determine whether the
claimed invention was truly innovative, or merely a combination of known limitations to
achieve predictable results.
In your analysis, you must be aware of the distortion caused by hindsight bias,
that is, of relying upon a hindsight combination of the prior art. Rather, you must cast
your mind back to the time of the invention and consider whether the invention as a
whole would have been obvious to a person of ordinary skill in the art, taking into
consideration any interrelated teachings of the prior art, the effects of demands known
to the design community or present in the marketplace, and the background knowledge
possessed by a person having ordinary skill in the art, all in order to determine whether
there was an apparent reason to combine any known elements in the fashion claimed
by the patents-in-suit.
To prevail on its defense of invalidity by obviousness to a person of ordinary skill
in the art at the time the inventions of the patents-in-suit were made, Apple must prove,
by clear and convincing evidence, that the asserted claims of the patents-in-suit were
obvious in view of the prior art identified above.
DELIBERATION AND VERDICT
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 will 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 the juror seated in the first seat, first row.
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 44, or 6-2, or whatever your vote happens to be. That should stay secret until you are
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
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 judges — judges of
A form of verdict has been prepared for you. The verdict form asks you a series
of questions about the parties’ claims. Unless you are directed otherwise in the form of
the verdict, you must answer all of the questions posed, and you all must agree on each
answer. When you have reached a unanimous agreement as to your verdict, you will
return your verdict to the courtroom 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 what verdict I
think you should find. What the verdict shall be is the sole and exclusive duty and
responsibility of the jury.
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 a 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 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.
If any member of the jury took notes, let me remind you that notes are not given
any greater weight than the memory or impression of each juror as to what the
testimony may have been. Whether you took notes or not, each of you must form and
express your own opinion as to the facts of the case.
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.
We generally end our business day at 4:30 p.m. If we do not hear from you by
4:30, I will be sending you a note to see whether you are close enough to a verdict to
want to deliberate after 4:30 or whether you are going to recess for the evening and
resume your deliberations on the next business day. You will need to respond in writing
to that question.
I am going to remind you now, if you go home this evening and resume your
deliberations on the next business day, you are not to talk about the case among
yourselves or with anyone else during the evening recess. You may not read or listen
to any news about the case in a newspaper, online or on television during the evening
You may talk about the case only while you are in the jury room and everyone on
the jury is present. Unless I hear from you that you have a different schedule in mind, I
will expect you all to come back the next business day at 9:30. You are not to start
deliberating until you are all present in the jury room and participating together.
Because the lawyers have to make themselves available to respond to questions
or receive the verdict, I generally give them between 12:30 and 1:30 to step away from
the phone. So whenever you are deliberating over the lunch hour, let me remind you, if
you ask a question during this time, you probably will not get an answer right away
because we are all going to be stepping away from our phones.
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.
Finally, if I have read any of these instructions inconsistently with the written text,
you are to rely on the written instructions in your deliberations.
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