UNIVERSITY OF PITTSBURGH OF THE COMMONWEALTH SYSTEM OF HIGHER EDUCTION v. VARIAN MEDICAL SYSTEMS, INC.

Filing 486

FINAL JURY INSTRUCTIONS. Signed by Judge Arthur J. Schwab on 1-17-12. (Moschetta, Nicole)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
UNIVERSITY OF PITTSBURGH OF THE
COMMONWEALTH SYSTEM OF HIGHER
EDUCATION,

08CV1307
ELECTRONICALLY FILED

PLAINTIFF,
V.
VARIAN MEDICAL SYSTEMS, INC.,
DEFENDANT.

FINAL JURY INSTRUCTIONS
I. GENERAL INSTRUCTIONS
NOW THAT YOU HAVE HEARD THE EVIDENCE AND THE
ARGUMENT, IT IS MY DUTY TO INSTRUCT YOU ON THE LAW.
WE HAVE GIVEN YOU COPIES OF THE SPECIAL VERDICT
FORM ON WHICH YOU WILL ANSWER SPECIFIC QUESTIONS.
PLEASE TAKE A FEW MINUTES TO READ THE VERDICT FORM,
BECAUSE THE INSTRUCTIONS I AM ABOUT TO GIVE YOU
WILL HELP YOU ANSWER THOSE QUESTIONS.

1

WHEN YOU RETIRE TO THE JURY ROOM TO DELIBERATE,
YOU MAY TAKE THESE INSTRUCTIONS WITH YOU, ALONG
WITH YOUR NOTES, THE EXHIBITS THAT THE COURT HAS
ADMITTED INTO EVIDENCE, AND THE VERDICT FORM. YOU
SHOULD SELECT ONE MEMBER OF THE JURY AS YOUR
FOREPERSON. THAT PERSON WILL PRESIDE OVER THE
DELIBERATIONS AND SPEAK FOR YOU HERE IN OPEN COURT.
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 IF, UNDER THE
2

APPROPRIATE BURDEN OF PROOF, PLAINTIFF HAS
ESTABLISHED ITS CLAIMS. IN OTHER WORDS, IT IS YOUR
DUTY TO DETERMINE FROM THE EVIDENCE WHAT
ACTUALLY HAPPENED IN THIS CASE, APPLYING THE LAW AS
I NOW EXPLAIN IT.
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;
DO NOT DISREGARD OR GIVE SPECIAL ATTENTION TO ANY
ONE INSTRUCTION; AND DO NOT QUESTION THE WISDOM OF
ANY RULE OF LAW OR RULE OF EVIDENCE I STATE. IN
3

OTHER WORDS, DO NOT SUBSTITUTE YOUR OWN NOTION OR
OPINION AS TO WHAT THE LAW IS OR OUGHT TO BE.
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.
AS JURORS, YOU HAVE A DUTY TO CONSULT WITH EACH
OTHER AND TO DELIBERATE WITH THE INTENTION OF
REACHING A VERDICT. EACH OF YOU MUST DECIDE THE
CASE FOR YOURSELF, BUT ONLY AFTER A FULL AND
IMPARTIAL CONSIDERATION OF ALL OF THE EVIDENCE WITH
YOUR FELLOW JURORS. LISTEN TO EACH OTHER
CAREFULLY. IN THE COURSE OF YOUR DELIBERATIONS, YOU
SHOULD FEEL FREE TO RE-EXAMINE YOUR OWN VIEWS AND
TO CHANGE YOUR OPINION BASED UPON THE EVIDENCE.
BUT YOU SHOULD NOT GIVE UP YOUR HONEST CONVICTIONS
4

ABOUT THE EVIDENCE JUST BECAUSE OF THE OPINIONS OF
YOUR FELLOW JURORS. NOR SHOULD YOU CHANGE YOUR
MIND JUST FOR THE PURPOSE OF OBTAINING ENOUGH VOTES
FOR A VERDICT.
WHEN YOU START DELIBERATING, DO NOT TALK TO
THE JURY OFFICER, TO ME, OR TO ANYONE BUT EACH OTHER
ABOUT THE CASE. 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 A CELL PHONE, A SMART PHONE LIKE
BLACKBERRIES, DROIDS, OR IPHONES, OR A COMPUTER OF
ANY KIND; THE INTERNET, ANY INTERNET SERVICE, OR ANY
TEXT OR INSTANT MESSAGING SERVICE LIKE TWITTER; OR
ANY INTERNET CHAT ROOM, BLOG, WEBSITE, OR SOCIAL
NETWORKING SERVICE SUCH AS FACEBOOK, MYSPACE,
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LINKEDIN, OR YOUTUBE, TO COMMUNICATE TO ANYONE
ANY INFORMATION ABOUT THIS CASE OR TO CONDUCT ANY
RESEARCH ABOUT THIS CASE UNTIL I ACCEPT YOUR
VERDICT.
IF YOU HAVE ANY QUESTIONS OR MESSAGES FOR ME,
YOU MUST WRITE THEM DOWN ON A PIECE OF PAPER, HAVE
THE FOREPERSON SIGN THEM, AND 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
SOME TIME TO GET BACK TO YOU.
ONE MORE THING ABOUT MESSAGES: NEVER WRITE
DOWN OR TELL ANYONE HOW YOU STAND ON YOUR VOTES.
FOR EXAMPLE, DO NOT WRITE DOWN OR TELL ANYONE
THAT A CERTAIN NUMBER IS VOTING ONE WAY OR

6

ANOTHER. YOUR VOTES SHOULD STAY SECRET UNTIL YOU
ARE FINISHED.
YOUR VERDICT MUST REPRESENT THE CONSIDERED
JUDGMENT OF EACH JUROR. IN ORDER FOR YOU AS A JURY
TO RETURN A VERDICT, EACH JUROR MUST AGREE TO THE
VERDICT. YOUR VERDICT MUST BE UNANIMOUS.
A VERDICT FORM HAS BEEN PREPARED FOR YOU. IT
HAS A SERIES OF QUESTIONS FOR YOU TO ANSWER. YOU
WILL TAKE THIS FORM TO THE JURY ROOM AND WHEN YOU
HAVE REACHED UNANIMOUS AGREEMENT AS TO YOUR
VERDICT, YOU WILL FILL IT IN, AND HAVE YOUR
FOREPERSON DATE AND SIGN THE FORM. YOU WILL THEN
RETURN TO THE COURTROOM AND YOUR FOREPERSON WILL
GIVE YOUR VERDICT. UNLESS I DIRECT YOU OTHERWISE, DO
NOT REVEAL YOUR ANSWERS UNTIL YOU ARE DISCHARGED.
AFTER YOU HAVE REACHED A VERDICT, YOU ARE NOT
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REQUIRED TO TALK WITH ANYONE ABOUT THE CASE
UNLESS I ORDER YOU TO DO SO.
ONCE AGAIN, I WANT TO REMIND YOU THAT NOTHING
ABOUT MY INSTRUCTIONS AND NOTHING ABOUT THE FORM
OF VERDICT IS INTENDED TO SUGGEST OR CONVEY IN ANY
WAY OR MANNER WHAT I THINK YOUR VERDICT SHOULD
BE. IT IS YOUR SOLE AND EXCLUSIVE DUTY AND
RESPONSIBILITY TO DETERMINE THE VERDICT.
II. EVIDENCE
WHAT IS EVIDENCE
I HAVE MENTIONED THE WORD “EVIDENCE.” THE
“EVIDENCE” IN THIS CASE CONSISTS OF THE TESTIMONY OF
WITNESSES, THE DOCUMENTS AND OTHER PHYSICAL ITEMS,
IF ANY, RECEIVED AS EXHIBITS, AND ANY FACTS
STIPULATED BY THE PARTIES.

8

EXHIBITS
COUNSEL FOR PLAINTIFF AND DEFENDANT HAVE
AGREED TO THE LEGAL ADMISSIBILITY OF VARIOUS
EXHIBITS. THIS MEANS THAT THESE EXHIBITS MEET THE
REQUIREMENTS OF THE RULES OF EVIDENCE AND
THEREFORE HAVE BEEN ADMITTED FOR YOUR
CONSIDERATION. THIS DOES NOT MEAN THAT THE PARTIES
AGREE AS TO THE INFERENCES OR CONCLUSIONS THAT YOU
SHOULD OR MAY DRAW FROM ANY EXHIBIT.
STIPULATIONS OF FACT
THE PARTIES HAVE AGREED, OR STIPULATED, TO
CERTAIN FACTS AS BEING TRUE AND THOSE STIPULATIONS
HAVE BEEN PLACED ON THE RECORD IN THIS TRIAL. YOU
MUST TREAT ANY STIPULATIONS OF FACT AS HAVING BEEN
PROVED FOR THE PURPOSES OF THIS CASE.

9

WHAT IS NOT EVIDENCE
THE FOLLOWING THINGS ARE NOT EVIDENCE:
1. STATEMENTS, ARGUMENTS, QUESTIONS AND
COMMENTS BY THE LAWYERS ARE NOT EVIDENCE.
2. LIKEWISE, OBJECTIONS ARE NOT EVIDENCE.
LAWYERS HAVE EVERY RIGHT TO OBJECT WHEN THEY
BELIEVE SOMETHING IS IMPROPER. YOU SHOULD NOT BE
INFLUENCED BY THE OBJECTION. IF I SUSTAINED AN
OBJECTION TO A QUESTION, YOU MUST IGNORE THE
QUESTION AND MUST NOT TRY TO GUESS WHAT THE
ANSWER MIGHT HAVE BEEN.
3. ANY TESTIMONY THAT I ORDERED STRICKEN FROM
THE RECORD, OR TOLD YOU TO DISREGARD, IS NOT
EVIDENCE AND YOU MUST NOT CONSIDER ANY SUCH
MATTER.

10

4. ANYTHING YOU SAW OR HEARD ABOUT THIS CASE
OUTSIDE THE COURTROOM IS NOT EVIDENCE. YOU MUST
DECIDE THE CASE ONLY ON THE EVIDENCE PRESENTED
HERE IN THE COURTROOM. DO NOT LET RUMORS,
SUSPICIONS, OR ANYTHING ELSE THAT YOU MAY SEE OR
HEAR OUTSIDE OF COURT INFLUENCE YOUR DECISION IN
ANY WAY.
EVIDENCE, INFERENCES, AND COMMON SENSE
WHILE YOU MAY CONSIDER ONLY THE EVIDENCE IN
THE CASE IN ARRIVING AT YOUR VERDICT, YOU ARE
PERMITTED TO DRAW SUCH REASONABLE INFERENCES
FROM THE TESTIMONY AND EXHIBITS YOU FEEL ARE
JUSTIFIED IN THE LIGHT OF YOUR COMMON EXPERIENCE,
REASON AND COMMON SENSE.

11

DIRECT AND CIRCUMSTANTIAL EVIDENCE
IN THIS REGARD, YOU MAY CONSIDER EITHER DIRECT
OR CIRCUMSTANTIAL EVIDENCE. “DIRECT EVIDENCE” IS
THE TESTIMONY OF SOMEONE WHO ASSERTS ACTUAL
KNOWLEDGE OF A FACT, SUCH AS AN EYEWITNESS.
“CIRCUMSTANTIAL EVIDENCE” IS PROOF OF A CHAIN OF
FACTS AND CIRCUMSTANCES FROM WHICH YOU MAY INFER
THAT SOMETHING EITHER DID OR DID NOT HAPPEN. THE
LAW MAKES NO DISTINCTION BETWEEN THE WEIGHT TO BE
GIVEN TO EITHER DIRECT OR CIRCUMSTANTIAL EVIDENCE.
IT REQUIRES ONLY THAT YOU WEIGH ALL OF THE EVIDENCE
AND BE CONVINCED THAT PLAINTIFF HAS MET THE BURDEN
OF PROOF BY CLEAR AND CONVINCING EVIDENCE BEFORE
YOU RETURN A VERDICT FOR THAT PARTY.

12

BIAS, SYMPATHY AND PREJUDICE
YOU MAY NOT ALLOW SYMPATHY OR PERSONAL
FEELINGS TO INFLUENCE YOUR DETERMINATION. YOUR
DUTY IS TO DECIDE THE CASE SOLELY ON THE BASIS OF THE
EVIDENCE OR LACK OF EVIDENCE AND THE LAW AS I HAVE
INSTRUCTED YOU, WITHOUT BIAS, PREJUDICE, OR
SYMPATHY FOR OR AGAINST THE PARTIES OR THEIR
COUNSEL. BOTH THE PARTIES AND THE PUBLIC EXPECT
THAT YOU WILL CAREFULLY AND IMPARTIALLY CONSIDER
ALL OF THE EVIDENCE IN THE CASE, FOLLOW THE LAW AS
STATED BY THE COURT, AND REACH A JUST VERDICT
REGARDLESS OF THE CONSEQUENCES.
EVIDENCE ADMITTED FOR A LIMITED PURPOSE
IN CERTAIN INSTANCES EVIDENCE MAY BE ADMITTED
ONLY FOR A PARTICULAR PURPOSE AND NOT GENERALLY
FOR ALL PURPOSES. WHENEVER EVIDENCE WAS ADMITTED
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FOR A LIMITED PURPOSE, CONSIDER IT ONLY FOR THAT
PURPOSE, AND NO OTHER PURPOSE.
NOT REQUIRED TO ACCEPT UNCONTRADICTED
TESTIMONY
YOU ARE NOT REQUIRED TO ACCEPT ANY TESTIMONY,
EVEN THOUGH THE TESTIMONY IS NOT CONTRADICTED AND
THE WITNESS IS NOT IMPEACHED. YOU MAY DECIDE,
BECAUSE OF THE WITNESS’ BEARING AND DEMEANOR,
BECAUSE OF THE INHERENT IMPROBABILITY OF HIS OR HER
TESTIMONY, OR BECAUSE OF OTHER REASONS SUFFICIENT
TO YOU, THAT SUCH TESTIMONY IS NOT WORTHY OF BELIEF.
JURORS’ NOTES
YOUR NOTES ARE NOT EVIDENCE IN THE CASE AND
MUST NOT TAKE PRECEDENCE OVER YOUR INDEPENDENT
RECOLLECTION OF THE EVIDENCE. NOTES ARE ONLY AN AID
TO YOUR RECOLLECTION AND ARE NOT ENTITLED TO
GREATER WEIGHT THAN YOUR RECOLLECTION OF WHAT
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THE EVIDENCE ACTUALLY IS. YOU SHOULD NOT DISCLOSE
ANY NOTES TAKEN TO ANYONE OTHER THAN A FELLOW
JUROR.
YOU WERE NOT OBLIGATED TO TAKE NOTES. IF YOU
DID NOT TAKE NOTES YOU SHOULD NOT BE INFLUENCED BY
THE NOTES OF ANOTHER JUROR, BUT INSTEAD SHOULD
RELY UPON YOUR OWN RECOLLECTION OF THE EVIDENCE.
III. CREDIBILITY OF WITNESSES / WEIGHT OF TESTIMONY
IN GENERAL
YOU MUST CONSIDER ALL OF THE EVIDENCE, BUT THIS
DOES NOT MEAN YOU MUST ACCEPT ALL OF THE EVIDENCE
AS TRUE OR ACCURATE. YOU ARE THE SOLE JUDGES OF THE
CREDIBILITY OF THE WITNESSES AND THE WEIGHT THEIR
TESTIMONY DESERVES.
YOU MAY BE GUIDED BY THE APPEARANCE AND
CONDUCT OF THE WITNESS, BY THE MANNER IN WHICH THE
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WITNESS TESTIFIES, BY THE CHARACTER OF THE TESTIMONY
GIVEN AND BY EVIDENCE OR TESTIMONY TO THE
CONTRARY.
YOU SHOULD CAREFULLY SCRUTINIZE ALL THE
TESTIMONY GIVEN, THE CIRCUMSTANCES UNDER WHICH
EACH WITNESS HAS TESTIFIED, AND EVERY MATTER IN
EVIDENCE WHICH TENDS TO SHOW WHETHER A WITNESS IS
WORTHY OF BELIEF. CONSIDER EACH WITNESS’S
INTELLIGENCE, MOTIVE, STATE OF MIND, AND DEMEANOR
OR MANNER WHILE ON THE STAND. CONSIDER THE
WITNESS’S ABILITY TO HAVE OBSERVED 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 ANY
BUSINESS, PERSONAL OR OTHER RELATIONSHIP A WITNESS
MIGHT HAVE WITH EITHER SIDE OF THE CASE; THE MANNER
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IN WHICH EACH WITNESS MIGHT BE AFFECTED BY THE
VERDICT; AND THE EXTENT TO WHICH, IF AT ALL, EACH
WITNESS IS EITHER SUPPORTED OR CONTRADICTED BY
OTHER EVIDENCE IN THE CASE.
INCONSISTENCIES OR DISCREPANCIES
CONSIDER INCONSISTENCIES OR DISCREPANCIES IN THE
TESTIMONY OF A WITNESS OR BETWEEN DIFFERENT
WITNESSES, WHICH MAY OR MAY NOT CAUSE YOU TO
DISCREDIT SUCH TESTIMONY. TWO OR MORE PERSONS
WITNESSING AN INCIDENT OR A TRANSACTION MAY SEE OR
HEAR IT DIFFERENTLY, AND INNOCENT MIS-RECOLLECTION,
LIKE FAILURE OF RECOLLECTION, IS NOT AN UNCOMMON
EXPERIENCE. IN WEIGHING THE EFFECT OF A DISCREPANCY,
ALWAYS CONSIDER WHETHER IT PERTAINS TO A MATTER OF
IMPORTANCE OR AN UNIMPORTANT DETAIL, AND WHETHER

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THE DISCREPANCY RESULTS FROM INNOCENT ERROR OR
INTENTIONAL FALSEHOOD.
AFTER MAKING YOUR OWN JUDGMENT, GIVE THE
TESTIMONY OF EACH WITNESS THE WEIGHT YOU THINK IT
DESERVES. YOU MAY, IN SHORT, ACCEPT OR REJECT THE
TESTIMONY OF ANY WITNESS IN WHOLE OR IN PART.
FALSE IN ONE, FALSE IN ALL
IF YOU FIND THAT A WITNESS HAS LIED TO YOU IN ANY
MATERIAL PORTION OF HIS OR HER TESTIMONY, YOU MAY
DISREGARD THAT WITNESS’S TESTIMONY IN ITS ENTIRETY. I
SAY THAT YOU MAY DISREGARD SUCH TESTIMONY, NOT
THAT YOU MUST. HOWEVER, YOU SHOULD CONSIDER
WHETHER THE UNTRUE PART OF THE TESTIMONY WAS THE
RESULT OF A MISTAKE OR INADVERTENCE, OR WAS,
RATHER, WILLFUL AND STATED WITH A DESIGN OR INTENT
TO DECEIVE.
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NUMBER OF WITNESSES NOT IMPORTANT
THE WEIGHT OF THE EVIDENCE IS NOT DETERMINED BY
THE NUMBER OF WITNESSES TESTIFYING FOR EITHER SIDE.
YOU MAY FIND THAT THE TESTIMONY OF A SMALL NUMBER
OF WITNESSES AS TO ANY FACT IS MORE CREDIBLE THAN
THAT OF A LARGER NUMBER OF WITNESSES TO THE
CONTRARY. IN SHORT, WHAT IS MOST IMPORTANT IS HOW
BELIEVABLE THE WITNESSES WERE, AND HOW MUCH
WEIGHT YOU THINK THEIR TESTIMONY DESERVES.
DEPOSITIONS - USE AS EVIDENCE
CERTAIN OUT-OF-COURT TESTIMONY OF WITNESSES
HAS BEEN PRESENTED TO YOU. SUCH TESTIMONY WAS
GIVEN UNDER OATH PRIOR TO THIS TRIAL, DURING
DEPOSITIONS OF THE WITNESSES. THIS METHOD IS
PERMITTED IN ORDER TO SIMPLIFY THE PRESENTATION OF
THE EVIDENCE, AND YOU SHOULD NOT REGARD EVIDENCE
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PRESENTED IN THIS WAY AS ANY DIFFERENT FROM ANY
OTHER ORAL TESTIMONY. YOU MAY ASSESS THE
CREDIBILITY OF WITNESSES WHO HAVE TESTIFIED BY
DEPOSITION IN THE SAME MANNER AS YOU DO WITNESSES
WHO TESTIFY DIRECTLY IN OPEN COURT.
EXPERT WITNESS TESTIMONY
THE RULES OF EVIDENCE ORDINARILY DO NOT PERMIT
WITNESSES TO TESTIFY AS TO OPINIONS OR CONCLUSIONS.
AN EXCEPTION TO THIS RULE EXISTS FOR "EXPERT
WITNESSES." AN EXPERT WITNESS IS A PERSON WHO, BY
EDUCATION AND EXPERIENCE HAS BECOME ANEXPERT IN
SOME ART, SCIENCE, PROFESSION, OR CALLING. EXPERT
WITNESSES MAY STATE THEIR OPINIONS AS TO MATTERS IN
WHICH THEY PROFESS TO BE EXPERT, AND MAY ALSO STATE
THEIR REASONS FOR THEIR OPINIONS.

20

YOU SHOULD CONSIDER EACH EXPERT OPINION
RECEIVED IN EVIDENCE IN THIS CASE, AND GIVE IT SUCH
WEIGHT AS YOU THINK IT DESERVES. IF YOU SHOULD
DECIDE THAT THE OPINION OF AN EXPERT WITNESS IS NOT
BASED UPON SUFFICIENT EDUCATION AND EXPERIENCE, OR
IF YOU SHOULD CONCLUDE THAT THE REASONS GIVEN IN
SUPPORT OF THE OPINION ARE NOT SOUND, OR IF YOU FEEL
THAT IT IS OUTWEIGHED BY OTHER EVIDENCE, YOU MAY
DISREGARD THE OPINION ENTIRELY.
DEFENDANTS’ STATUS DOES NOT INFER LIABILITY
SIMPLY BECAUSE A DEFENDANT IS SUED DOES NOT
MEAN THAT THE DEFENDANT IS LIABLE. ANYONE CAN FILE
A LAWSUIT. THE FACT THAT PLAINTIFF FILED THIS LAWSUIT
DOES NOT, IN ITSELF, MEAN THAT DEFENDANT HAS DONE
ANYTHING THAT THE LAW PROHIBITS. THAT IS FOR YOU TO
DECIDE ON THE BASIS OF THE EVIDENCE.
21

BURDEN OF PROOF – CLEAR AND CONVINCING
WHEN I SAY THAT A PARTICULAR PARTY, IN THIS CASE,
PLAINTIFF, MUST PROVE SOMETHING BY “CLEAR AND
CONVINCING EVIDENCE,” THIS IS WHAT I MEAN: WHEN YOU
HAVE CONSIDERED ALL OF THE EVIDENCE, YOU ARE
CONVINCED THAT IT IS HIGHLY PROBABLE THAT IT IS TRUE.
THIS IS A HIGHER BURDEN OF PROOF THAN “MORE
PROBABLY TRUE THAN NOT TRUE.” CLEAR AND
CONVINCING EVIDENCE MUST PERSUADE YOU THAT IT IS
“HIGHLY PROBABLY TRUE.”
AS I STATED AT THE BEGINNING OF THIS TRIAL, THIS
STANDARD IS DIFFERENT FROM WHAT YOU MAY HAVE
HEARD ABOUT IN CRIMINAL PROCEEDINGS, WHERE A FACT
MUST BE PROVEN BEYOND A REASONABLE DOUBT. THE
“CLEAR AND CONVINCING” STANDARD OF PROOF IS LOWER

22

THAN THE “REASONABLE DOUBT” STANDARD USED IN
CRIMINAL PROCEEDINGS.
IV. SUBSTANTIVE LAW
SUMMARY OF CONTENTIONS
AS I DID AT THE START OF THE CASE, I WILL FIRST GIVE
YOU A SUMMARY OF EACH SIDE’S CONTENTIONS IN THIS
CASE. I WILL THEN PROVIDE YOU WITH DETAILED
INSTRUCTIONS ON WHAT EACH SIDE MUST PROVE TO WIN
ON EACH OF ITS CONTENTIONS.
AS I PREVIOUSLY TOLD YOU, I HAVE ALREADY DECIDED
THAT VARIAN’S PRODUCTS DO INFRINGE CLAIMS 20, 21, 22,
25, 26, 36 AND 38 OF THE ‘554 PATENT. THESE ARE THE
ASSERTED CLAIMS OF THE ‘554 PATENT. THE PRODUCTS
THAT INFRINGE ARE VARIAN’S RPM RESPIRATORY GATING
SYSTEM ALONE AND IN COMBINATION WITH VARIAN’S
CLINAC AND TRILOGY LINEAR ACCELERATORS.
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I HAVE ALREADY CONSIDERED VARIAN’S ARGUMENTS
AS TO WHY ITS PRODUCTS ALLEGEDLY DO NOT INFRINGE
THE ‘554 PATENT, AND I HAVE DETERMINED THAT THOSE
ARGUMENTS ARE UNREASONABLE.
VARIAN ARGUES THAT THE ASSERTED CLAIMS OF THE
‘554 PATENT ARE INVALID.
YOUR JOB IS TO DECIDE WHETHER PITT HAS PROVEN
THAT VARIAN’S INVALIDITY DEFENSES ARE
UNREASONABLE. IF YOU DECIDE THESE DEFENSES ARE
UNREASONABLE, YOU MUST THEN MAKE A FINDING AS TO
WHETHER VARIAN’S INFRINGEMENT WAS WILLFUL. LATER
IN THE CASE, I WILL TAKE INTO ACCOUNT YOUR DECISION
ON WHETHER OR NOT THERE WAS WILLFUL INFRINGEMENT.
THE ROLE OF THE CLAIMS OF A PATENT
BEFORE YOU CAN DECIDE MANY OF THE ISSUES IN THIS
CASE, YOU WILL NEED TO UNDERSTAND THE ROLE OF
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PATENT “CLAIMS.” THE PATENT CLAIMS ARE THE
NUMBERED SENTENCES AT THE END OF EACH PATENT. THE
CLAIMS ARE IMPORTANT BECAUSE IT IS THE WORDS OF THE
CLAIMS THAT DEFINE WHAT A PATENT COVERS. THE
FIGURES AND TEXT IN THE REST OF THE PATENT PROVIDE A
DESCRIPTION AND/OR EXAMPLES OF THE INVENTION AND
PROVIDE A CONTEXT FOR THE CLAIMS, BUT IT IS THE
CLAIMS THAT DEFINE THE BREADTH OF THE PATENT’S
COVERAGE. EACH CLAIM IS EFFECTIVELY TREATED AS IF IT
WAS A SEPARATE PATENT, AND EACH CLAIM MAY COVER
MORE OR LESS THAN ANOTHER CLAIM. THEREFORE, WHAT A
PATENT COVERS DEPENDS, IN TURN, ON WHAT EACH OF ITS
CLAIMS COVERS.
YOU WILL FIRST NEED TO UNDERSTAND WHAT EACH
CLAIM COVERS IN ORDER TO DECIDE WHETHER OR NOT PITT
HAS PROVEN THAT VARIAN’S INVALIDITY DEFENSES ARE
25

UNREASONABLE. 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, AS I
EXPLAINED TO YOU AT THE START OF THE CASE, I HAVE
DETERMINED THE MEANING OF THE CLAIMS AND I WILL
PROVIDE TO YOU MY DEFINITIONS OF CERTAIN CLAIM
TERMS. YOU MUST ACCEPT MY DEFINITIONS OF THESE
WORDS IN THE CLAIMS AS BEING CORRECT. IT IS YOUR JOB
TO TAKE THESE DEFINITIONS AND APPLY THEM TO THE
ISSUES THAT YOU ARE DECIDING.
HOW A CLAIM DEFINES WHAT IT COVERS
I WILL NOW EXPLAIN HOW A CLAIM DEFINES WHAT IT
COVERS. A CLAIM SETS FORTH, IN WORDS, A SET OF
REQUIREMENTS. EACH CLAIM SETS FORTH ITS
REQUIREMENTS IN A SINGLE SENTENCE. IF A DEVICE
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SATISFIES EACH OF THESE REQUIREMENTS, THEN IT IS
COVERED BY THE CLAIM.
THERE CAN BE SEVERAL CLAIMS IN A PATENT. EACH
CLAIM MAY BE NARROWER OR BROADER THAN ANOTHER
CLAIM BY SETTING FORTH MORE OR FEWER REQUIREMENTS.
THE COVERAGE OF A PATENT IS ASSESSED CLAIM-BY-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
ALL OF THE REQUIREMENTS OF A CLAIM, THE CLAIM IS SAID
TO “COVER” THAT THING, AND THAT THING IS SAID TO
“FALL” WITHIN THE SCOPE OF THAT CLAIM. IN OTHER
WORDS, A CLAIM COVERS A PRODUCT WHERE EACH OF THE
CLAIM ELEMENTS OR LIMITATIONS ARE PRESENT IN THAT
PRODUCT.

27

SOMETIMES THE WORDS IN A PATENT CLAIM ARE
DIFFICULT TO UNDERSTAND, AND THEREFORE IT IS
DIFFICULT TO UNDERSTAND WHAT REQUIREMENTS THESE
WORDS IMPOSE. IT IS MY JOB TO EXPLAIN TO YOU THE
MEANING OF THE WORDS IN THE CLAIMS AND THE
REQUIREMENTS THESE WORDS IMPOSE. AS I JUST
INSTRUCTED YOU, THERE ARE CERTAIN SPECIFIC TERMS
THAT I HAVE DEFINED AND YOU ARE TO APPLY THE
DEFINITIONS THAT I PROVIDE TO YOU.
BY UNDERSTANDING THE MEANING OF THE WORDS IN A
CLAIM AND BY UNDERSTANDING THAT THE WORDS IN A
CLAIM SET FORTH THE REQUIREMENTS THAT A PRODUCT OR
PROCESS MUST MEET IN ORDER TO BE COVERED BY THAT
CLAIM, YOU WILL BE ABLE TO UNDERSTAND THE SCOPE OF
COVERAGE FOR EACH CLAIM. ONCE YOU UNDERSTAND
WHAT EACH CLAIM COVERS, THEN YOU ARE PREPARED TO
28

DECIDE THE ISSUES THAT YOU WILL BE ASKED TO DECIDE,
SUCH AS WHETHER VARIAN’S INVALIDITY DEFENSES ARE
REASONABLE
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, CLAIM 20 OF
THE ‘554 PATENT IS AN INDEPENDENT CLAIM.
THE REMAINDER OF THE CLAIMS IN THE ‘554 PATENT
ARE “DEPENDENT CLAIMS.” A DEPENDENT CLAIM DOES NOT
ITSELF RECITE ALL OF THE REQUIREMENTS OF THE CLAIM
BUT REFERS TO ANOTHER CLAIM FOR SOME OF ITS
29

REQUIREMENTS. IN THIS WAY, THE CLAIM “DEPENDS” ON
ANOTHER CLAIM. A DEPENDENT CLAIM INCORPORATES ALL
OF THE REQUIREMENTS OF THE CLAIM(S) 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 CLAIM(S) TO
WHICH IT REFERS. A PRODUCT THAT MEETS ALL OF THE
REQUIREMENTS OF BOTH THE DEPENDENT CLAIM AND THE
CLAIM(S) TO WHICH IT REFERS IS COVERED BY THAT
DEPENDENT CLAIM.
CLAIM INTERPRETATION
I WILL NOW EXPLAIN TO YOU THE MEANING OF SOME
OF THE WORDS OF THE CLAIMS IN THIS CASE. IN DOING SO, I
WILL EXPLAIN SOME OF THE REQUIREMENTS OF THE
CLAIMS. AS I HAVE PREVIOUSLY INSTRUCTED YOU, YOU
30

MUST ACCEPT MY DEFINITION OF THESE WORDS IN THE
CLAIMS AS CORRECT. FOR ANY WORDS IN THE CLAIM FOR
WHICH I HAVE NOT PROVIDED YOU WITH A DEFINITION, YOU
SHOULD APPLY THEIR COMMON MEANING. 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 WHETHER
VARIAN’S INVALIDITY DEFENSES ARE REASONABLE. THESE
ISSUES ARE YOURS TO DECIDE.
SECTION 112, PARAGRAPH 6
THE CLAIMS USE THE PHRASE “MEANS FOR”
DETERMINING CERTAIN FUNCTIONS. THESE “MEANS FOR”
PHRASES HAVE A SPECIAL MEANING IN PATENT LAW. THEY
ARE CALLED “MEANS-PLUS-FUNCTION” REQUIREMENTS.
SUCH A REQUIREMENT DOES NOT COVER ALL OF THE
31

STRUCTURES THAT COULD PERFORM THE FUNCTION SET
FORTH IN THE CLAIM. INSTEAD, IT COVERS A STRUCTURE OR
A SET OF STRUCTURES THAT PERFORMS THAT FUNCTION
AND THAT IS EITHER IDENTICAL OR “EQUIVALENT” TO THE
STRUCTURE DESCRIBED IN THE ‘554 PATENT FOR
PERFORMING THAT FUNCTION. THE ISSUE OF WHETHER
TWO STRUCTURES ARE IDENTICAL OR EQUIVALENT IS FOR
YOU TO DECIDE. WHEN I READ YOU MY DEFINITIONS FOR
CERTAIN CLAIM TERMS A FEW MOMENTS AGO, I IDENTIFIED
THE STRUCTURES DESCRIBED IN THE ‘554 PATENT FOR
PERFORMING THE RELEVANT FUNCTIONS. YOU SHOULD
APPLY MY DEFINITION OF THE FUNCTION AND THE
STRUCTURES DESCRIBED IN THE ‘554 PATENT FOR
PERFORMING IT AS YOU WOULD APPLY MY DEFINITION OF
ANY OTHER CLAIM TERM.

32

WILLFUL INFRINGEMENT
IN THIS CASE, YOU MUST ADDRESS THE ISSUE OF
WHETHER OR NOT VARIAN’S INFRINGEMENT OF THE
'554 PATENT WAS WILLFUL. WILLFULNESS REQUIRES YOU TO
DETERMINE BY CLEAR AND CONVINCING EVIDENCE
THAT VARIAN ACTED RECKLESSLY.
TO PROVE THAT VARIAN ACTED RECKLESSLY, PITT
MUST PROVE TWO THINGS BY CLEAR AND CONVINCING
EVIDENCE: THE FIRST PART OF THE TEST IS OBJECTIVE: PITT,
THE PATENT HOLDER, MUST PERSUADE YOU THAT VARIAN
ACTED DESPITE A HIGH LIKELIHOOD THAT VARIAN’S
ACTIONS INFRINGED A VALID AND ENFORCEABLE PATENT.
IN MAKING THIS DETERMINATION, YOU MAY NOT CONSIDER
VARIAN’S STATE OF MIND. LEGITIMATE OR CREDIBLE
ARGUMENTS THAT A PATENT IS NOT VALID, EVEN IF NOT
ULTIMATELY SUCCESSFUL, DEMONSTRATE A LACK OF
33

RECKLESSNESS. IN DECIDING WHETHER VARIAN’S
CONDUCT WAS RECKLESS, YOU MUST FOCUS ON VARIAN’S
CONDUCT BEFORE IT WAS SUED BY PITT.
ONLY IF YOU CONCLUDE THAT VARIAN’S CONDUCT
WAS RECKLESS DO YOU NEED TO CONSIDER THE
SECOND PART OF THE TEST. THE SECOND PART DEPENDS ON
VARIAN’S STATE OF MIND. PITT, THE PATENT
HOLDER, MUST PERSUADE YOU THAT VARIAN ACTUALLY
KNEW OR SHOULD HAVE KNOWN THAT IT WAS TAKING A
RISK OF INFRINGING A VALID PATENT.
AFTER BEING SUED BY PITT FOR INFRINGEMENT OF THE
'554 PATENT, VARIAN ASSERTED A NUMBER OF
DEFENSES TO PITT’S CLAIM, INCLUDING THE DEFENSES
THAT ITS PRODUCTS DO NOT INFRINGE THE '554 PATENT
AND THAT THE '554 PATENT IS INVALID. AS I SAID EARLIER, I
HAVE ALREADY RULED THAT VARIAN DID INFRINGE
34

THE '554 PATENT. I HAVE ALSO RULED THAT VARIAN’S
ARGUMENTS THAT IT WAS NOT INFRINGING THE PATENT
WERE OBJECTIVELY UNREASONABLE. THEREFORE, IN
CONSIDERING WHETHER PITT HAS SATISFIED THE FIRST
PART OF THE WILLFULNESS TEST, YOU ARE NOT TO GIVE
ANY WEIGHT TO VARIAN’S ARGUMENTS THAT IT DID NOT
INFRINGE THE PATENT AND ARE TO INSTEAD ADDRESS
ONLY THE REASONABLENESS OF ITS ARGUMENTS THAT THE
'554 PATENT IS NOT VALID.
IF YOU CONCLUDE THAT PITT HAS PROVEN THAT
VARIAN’S CONDUCT WAS RECKLESS, THEN YOU NEED
TO CONSIDER THE SECOND PART OF THE TEST. IN
PARTICULAR, YOU MUST DETERMINE WHETHER PITT
PROVED THAT VARIAN KNEW OF THE HIGH RISK THAT
VARIAN WAS INFRINGING A VALID PATENT OR THAT THE
RISK WAS SO OBVIOUS TO VARIAN THAT IT SHOULD HAVE
35

KNOWN ABOUT IT. IN DECIDING WHETHER VARIAN HAD THIS
STATE OF MIND, YOU SHOULD CONSIDER ALL FACTS
SURROUNDING THE ALLEGED INFRINGEMENT INCLUDING,
BUT NOT LIMITED TO, THE FOLLOWING: (A) THE FACT THAT
VARIAN KNEW ABOUT THE '554 PATENT; (B) WHETHER
VARIAN, WHEN IT LEARNED OF THE PATENT, INVESTIGATED
THE SCOPE OF THE PATENT AND FORMED A GOOD-FAITH
BELIEF THAT THE PATENT WAS INVALID OR THAT VARIAN
WAS NOT INFRINGING A VALID PATENT; (C) WHETHER OR
NOT VARIAN ACTED IN ACCORDANCE WITH THE STANDARDS
OF COMMERCE FOR ITS INDUSTRY; (D) WHETHER OR NOT
VARIAN INTENTIONALLY COPIED A PRODUCT OF PITT THAT
IS COVERED BY THE ‘554 PATENT; (E) WHETHER OR NOT
VARIAN TRIED TO COVER UP ITS INFRINGEMENT; (F)
WHETHER OR NOT VARIAN MADE A GOOD-FAITH EFFORT TO
AVOID INFRINGING THE '554 PATENT, FOR EXAMPLE,
36

WHETHER VARIAN ATTEMPTED TO DESIGN AROUND THE
PATENT; (G) VARIAN'S BEHAVIOR AS A PARTY TO THE
LITIGATION; (H) VARIAN’S SIZE AND FINANCIAL CONDITION;
(I) THE DURATION OF VARIAN’S MISCONDUCT; (J) VARIAN’S
MOTIVATION FOR HARM; AND (K) WHETHER VARIAN
ATTEMPTED TO CONCEAL ITS MISCONDUCT. ALTHOUGH
THESE ARE THE TYPES OF FACTORS THAT YOU MAY
CONSIDER, YOU NEED NOT FIND THAT ALL OR EVEN MOST
OF THEM APPLY IN ORDER TO FIND THAT VARIAN’S
INFRINGEMENT OF THE '554 PATENT WAS WILLFUL.
INVALIDITY
I WILL NOW INSTRUCT YOU ON THE RULES YOU MUST
FOLLOW IN DECIDING WHETHER OR NOT VARIAN’S
INVALIDITY DEFENSES ARE REASONABLE.

37

ENABLEMENT
THE PATENT LAW CONTAINS CERTAIN REQUIREMENTS
FOR THE PART OF THE PATENT CALLED THE SPECIFICATION.
VARIAN CONTENDS THAT CLAIMS 20, 21, 22, 25, 26, 36 AND 38
OF PITT’S ‘554 PATENT ARE INVALID BECAUSE THE
SPECIFICATION DOES NOT CONTAIN A SUFFICIENTLY FULL
AND CLEAR DESCRIPTION OF HOW TO MAKE AND USE THE
FULL SCOPE OF THE CLAIMED INVENTION. TO SUCCEED ON
SUCH A DEFENSE, VARIAN WOULD HAVE TO SHOW THAT
THE ‘554 PATENT DOES NOT CONTAIN A SUFFICIENTLY FULL
AND CLEAR DESCRIPTION OF THE CLAIMED INVENTION. TO
BE SUFFICIENTLY FULL AND CLEAR, THE DESCRIPTION MUST
CONTAIN ENOUGH INFORMATION TO HAVE ALLOWED A
PERSON HAVING ORDINARY SKILL IN THE FIELD OF
TECHNOLOGY OF THE PATENT TO MAKE AND USE THE FULL
SCOPE OF THE CLAIMED INVENTION AT THE TIME THE
38

PATENT APPLICATION WAS FILED ON SEPTEMBER 19, 1996.
THIS IS KNOWN AS THE “ENABLEMENT” REQUIREMENT. IF A
PATENT CLAIM IS NOT ENABLED, IT IS INVALID.
IN ORDER TO BE ENABLING, THE PATENT MUST PERMIT
PERSONS HAVING ORDINARY SKILL IN THE FIELD OF
TECHNOLOGY OF THE PATENT TO MAKE AND USE THE FULL
SCOPE OF THE CLAIMED INVENTION AT THE TIME OF FILING
WITHOUT HAVING TO CONDUCT UNDUE EXPERIMENTATION.
HOWEVER, SOME AMOUNT OF EXPERIMENTATION TO MAKE
AND USE THE INVENTION IS ALLOWABLE. IN DECIDING
WHETHER A PERSON HAVING ORDINARY SKILL WOULD
HAVE TO EXPERIMENT UNDULY IN ORDER TO MAKE AND
USE THE INVENTION, YOU MAY CONSIDER SEVERAL
FACTORS: (1) THE TIME AND COST OF ANY NECESSARY
EXPERIMENTATION; (2) HOW ROUTINE ANY NECESSARY
EXPERIMENTATION IS IN THE FIELD OF RESPIRATORY
39

GATING/RADIOTHERAPY; (3) WHETHER THE PATENT
DISCLOSES SPECIFIC WORKING EXAMPLES OF THE CLAIMED
INVENTION; (4) THE AMOUNT OF GUIDANCE PRESENTED IN
THE PATENT; (5) THE NATURE AND PREDICTABILITY OF THE
FIELD OF RESPIRATORY GATING/RADIOTHERAPY; (6) THE
LEVEL OF ORDINARY SKILL IN THE FIELD OF RESPIRATORY
GATING/RADIOTHERAPY; AND (7) THE SCOPE OF THE
CLAIMED INVENTION.
NO ONE OR MORE OF THESE FACTORS IS ALONE
DISPOSITIVE. RATHER, IN ASSESSING THE REASONABLENESS
OF VARIAN’S ENABLEMENT DEFENSE, YOU SHOULD
CONSIDER WHETHER OR NOT THE DEGREE OF
EXPERIMENTATION REQUIRED IS UNDUE BASED UPON ALL
OF THE EVIDENCE PRESENTED TO YOU. YOU SHOULD WEIGH
THESE FACTORS AND DETERMINE WHETHER OR NOT, IN THE
CONTEXT OF THIS INVENTION AND THE STATE OF THE ART
40

AT THE TIME OF THE APPLICATION, A PERSON HAVING
ORDINARY SKILL WOULD NEED TO EXPERIMENT UNDULY TO
MAKE AND USE THE FULL SCOPE OF THE CLAIMED
INVENTION, AND YOU SHOULD ASSESS THE
REASONABLENESS OF VARIAN’S DEFENSE IN LIGHT OF THAT.
PRIOR ART
PRIOR ART MAY INCLUDE ITEMS THAT WERE PUBLICLY
KNOWN OR THAT HAVE BEEN USED OR OFFERED FOR SALE,
PUBLICATIONS, OR PATENTS THAT DISCLOSE THE CLAIMED
INVENTION OR ELEMENTS OF THE CLAIMED INVENTION. TO
BE PRIOR ART, THE ITEM OR REFERENCE MUST HAVE BEEN
MADE, KNOWN, USED, PUBLISHED, OR PATENTED EITHER
BEFORE THE INVENTION WAS MADE OR MORE THAN ONE
YEAR BEFORE THE FILING DATE OF THE PATENT
APPLICATION. HOWEVER, PRIOR ART DOES NOT INCLUDE A
PUBLICATION THAT DESCRIBES THE INVENTOR’S OWN
41

WORK AND WAS PUBLISHED LESS THAN ONE YEAR BEFORE
THE DATE OF INVENTION.
FOR THE CLAIM TO BE INVALID BECAUSE IT IS NOT
NEW, VARIAN WOULD HAVE TO SHOW THAT ALL OF THE
REQUIREMENTS OF THAT CLAIM WERE PRESENT IN A SINGLE
PREVIOUS DEVICE THAT WAS KNOWN OF, USED, OR
DESCRIBED IN A SINGLE PREVIOUS PRINTED PUBLICATION
OR PATENT. WE CALL THESE THINGS “ANTICIPATING PRIOR
ART.” TO ANTICIPATE THE INVENTION, THE PRIOR ART DOES
NOT HAVE TO USE THE SAME WORDS AS THE CLAIM, BUT
ALL OF THE REQUIREMENTS OF THE CLAIM MUST HAVE
BEEN DISCLOSED, EITHER STATED EXPRESSLY OR IMPLIED
TO A PERSON HAVING ORDINARY SKILL IN THE ART IN THE
TECHNOLOGY OF THE INVENTION, SO THAT LOOKING AT
THAT ONE REFERENCE, THAT PERSON COULD MAKE AND
USE THE CLAIMED INVENTION.
42

THE DATE OF INVENTION IS EITHER WHEN THE
INVENTION WAS REDUCED TO PRACTICE OR WHEN
CONCEIVED, PROVIDED THE INVENTOR(S) WERE DILIGENT IN
REDUCING THE INVENTION TO PRACTICE. DILIGENCE
MEANS WORKING CONTINUOUSLY, THOUGH NOT
NECESSARILY EVERY DAY. CONCEPTION IS THE MENTAL
PART OF AN INVENTIVE ACT, I.E., THE FORMATION IN THE
MIND OF THE INVENTOR OF A DEFINITE AND PERMANENT
IDEA OF THE COMPLETE AND OPERATIVE INVENTION AS IT IS
THEREAFTER TO BE APPLIED IN PRACTICE, EVEN IF THE
INVENTOR DID NOT KNOW AT THE TIME THAT THE
INVENTION WOULD WORK. CONCEPTION OF AN INVENTION
IS COMPLETE WHEN THE IDEA IS SO CLEARLY DEFINED IN
THE INVENTOR’S MIND THAT, IF THE IDEA WERE
COMMUNICATED TO A PERSON HAVING ORDINARY SKILL IN
THE FIELD OF THE TECHNOLOGY, HE OR SHE WOULD BE
43

ABLE TO REDUCE THE INVENTION TO PRACTICE WITHOUT
UNDUE RESEARCH OR EXPERIMENTATION. THIS
REQUIREMENT DOES NOT MEAN THAT THE INVENTOR HAS
TO HAVE A PROTOTYPE BUILT, OR HAVE ACTUALLY
EXPLAINED HIS OR HER INVENTION TO ANOTHER PERSON.
BUT, THERE MUST BE SOME EVIDENCE BEYOND THE
INVENTOR’S OWN TESTIMONY THAT CONFIRMS THE DATE
ON WHICH THE INVENTOR HAD THE COMPLETE IDEA.
CONCEPTION MAY BE PROVEN WHEN THE INVENTION IS
SHOWN IN ITS COMPLETE FORM BY DRAWINGS, DISCLOSURE
TO ANOTHER PERSON, OR OTHER FORMS OF EVIDENCE
PRESENTED AT TRIAL.
A CLAIMED INVENTION IS “REDUCED TO PRACTICE”
WHEN IT HAS BEEN CONSTRUCTED/USED/TESTED
SUFFICIENTLY TO SHOW THAT IT WILL WORK FOR ITS
INTENDED PURPOSE OR WHEN THE INVENTOR FILES A
44

PATENT APPLICATION. AN INVENTION MAY ALSO BE
REDUCED TO PRACTICE EVEN IF THE INVENTOR HAS NOT
MADE OR TESTED A PROTOTYPE OF THE INVENTION IF IT
HAS BEEN FULLY DESCRIBED IN A FILED PATENT
APPLICATION.
ANTICIPATION
IN ORDER FOR SOMEONE TO BE ENTITLED TO A PATENT,
THE INVENTION MUST ACTUALLY BE “NEW” AND THE
INVENTOR MUST NOT HAVE LOST HER OR HIS RIGHTS BY
DELAYING THE FILING OF AN APPLICATION CLAIMING THE
INVENTION. IN GENERAL, INVENTIONS ARE NEW WHEN THE
IDENTICAL PRODUCT HAS NOT BEEN MADE, USED, OR
DISCLOSED BEFORE. ANTICIPATION MUST BE DETERMINED
ON A CLAIM-BY-CLAIM BASIS.
VARIAN CONTENDS THAT CLAIM 20, 21, 22, 25, 26, 36 AND
38 OF THE ‘554 PATENT ARE INVALID BECAUSE THE CLAIMED
45

INVENTION IS ANTICIPATED OR BECAUSE PITT LOST THE
RIGHT TO OBTAIN A PATENT.
HERE IS A LIST OF WAYS THAT VARIAN COULD SHOW
THAT A PATENT CLAIM WAS NOT NEW OR THAT THE
PATENTEE LOST THE RIGHT TO PATENT THE ASSERTED
CLAIMS:
(1)

AN INVENTION IS NOT NEW IF IT WAS KNOWN TO
OR USED BY OTHERS IN THE UNITED STATES
BEFORE THE DATE OF INVENTION. AN INVENTION
IS KNOWN WHEN THE INFORMATION ABOUT IT WAS
REASONABLY ACCESSIBLE TO THE PUBLIC ON
THAT DATE.

(2)

AN INVENTION IS NOT NEW IF IT WAS ALREADY
PATENTED OR DESCRIBED IN A PRINTED
PUBLICATION, ANYWHERE IN THE WORLD BEFORE
THE DATE OF INVENTION.
46

(3)

PITT HAS LOST ITS RIGHTS IF THE CLAIMED
INVENTION WAS ALREADY PATENTED OR
DESCRIBED IN A PRINTED PUBLICATION,
ANYWHERE IN THE WORLD BY PITT OR ANYONE
ELSE, MORE THAN A YEAR BEFORE SEPTEMBER 19,
1996 WHICH IS THE EFFECTIVE FILING DATE OF THE
APPLICATION FOR THE’554 PATENT. AN INVENTION
WAS PATENTED BY ANOTHER IF THE OTHER
PATENT DESCRIBES THE SAME INVENTION
CLAIMED BY PITT TO A PERSON HAVING ORDINARY
SKILL IN THE TECHNOLOGY.

(4)

AN INVENTION IS NOT NEW IF IT WAS DESCRIBED
IN A PUBLISHED PATENT APPLICATION FILED BY
ANOTHER IN THE UNITED STATES BEFORE THE
DATE OF INVENTION.

47

(5)

AN INVENTION IS NOT NEW IF THE CLAIMED
INVENTION WAS DESCRIBED IN A PATENT
GRANTED ON AN APPLICATION FOR PATENT BY
ANOTHER FILED IN THE UNITED STATES AND THE
APPLICATION WAS FILED BEFORE SEPTEMBER 19,
1996.

(6)

AN INVENTION IS NOT NEW IF THE INVENTION WAS
MADE BY SOMEONE ELSE IN THE UNITED STATES
BEFORE THE INVENTION WAS MADE BY PITT AND
THE OTHER PERSON DID NOT ABANDON, SUPPRESS,
OR CONCEAL THE INVENTION.

OBVIOUSNESS
EVEN THOUGH AN INVENTION MAY NOT HAVE BEEN
IDENTICALLY DISCLOSED OR DESCRIBED BEFORE IT WAS
MADE BY AN INVENTOR, IN ORDER TO BE PATENTABLE, THE
INVENTION MUST ALSO NOT HAVE BEEN OBVIOUS TO A
48

PERSON OF ORDINARY SKILL IN THE FIELD OF TECHNOLOGY
OF THE PATENT AT THE TIME THE INVENTION WAS MADE.
VARIAN COULD ESTABLISH THAT A PATENT CLAIM IS
INVALID BY SHOWING THAT THE CLAIMED INVENTION
WOULD HAVE BEEN OBVIOUS TO PERSONS HAVING
ORDINARY SKILL IN THE ART AT THE TIME THE INVENTION
WAS MADE IN THE FIELD OF RESPIRATORY GATING/
RADIOTHERAPY.
IN DETERMINING WHETHER A CLAIMED INVENTION IS
OBVIOUS, YOU MUST CONSIDER THE LEVEL OF ORDINARY
SKILL IN THE FIELD OF RESPIRATORY GATING/
RADIOTHERAPY THAT SOMEONE WOULD HAVE HAD AT THE
TIME THE CLAIMED INVENTION WAS MADE, THE SCOPE AND
CONTENT OF THE PRIOR ART, AND ANY DIFFERENCES
BETWEEN THE PRIOR ART AND THE CLAIMED INVENTION.

49

KEEP IN MIND THAT THE EXISTENCE OF EACH AND
EVERY ELEMENT OF THE CLAIMED INVENTION IN THE PRIOR
ART DOES NOT NECESSARILY PROVE OBVIOUSNESS. MOST,
IF NOT ALL, INVENTIONS RELY ON BUILDING BLOCKS OF
PRIOR ART. IN ASSESSING WHETHER A CLAIMED INVENTION
MAY BE 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 RESPIRATORY GATING/RADIOTHERAPY 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 FUNCTION(S); (2) WHETHER
THE CLAIMED INVENTION PROVIDES AN OBVIOUS SOLUTION
50

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. TO FIND IT RENDERED THE INVENTION
OBVIOUS, YOU MUST FIND THAT THE PRIOR ART PROVIDED
A REASONABLE EXPECTATION OF SUCCESS. OBVIOUS TO
TRY IS NOT SUFFICIENT IN UNPREDICTABLE TECHNOLOGIES.

51

IN DETERMINING WHETHER VARIAN’S ARGUMENTS
THAT THE CLAIMED INVENTION WAS OBVIOUS ARE
REASONABLE, CONSIDER EACH CLAIM SEPARATELY. DO
NOT USE HINDSIGHT, I.E., CONSIDER ONLY WHAT WAS
KNOWN AT THE TIME OF THE INVENTION.
IN MAKING THESE ASSESSMENTS, YOU SHOULD TAKE
INTO ACCOUNT ANY OBJECTIVE EVIDENCE (SOMETIMES
CALLED “SECONDARY CONSIDERATIONS”) THAT MAY HAVE
EXISTED AT THE TIME OF THE INVENTION AND
AFTERWARDS THAT MAY SHED LIGHT ON THE OBVIOUSNESS
OR NOT OF THE CLAIMED INVENTION, SUCH AS:
(A) WHETHER THE INVENTION WAS COMMERCIALLY
SUCCESSFUL AS A RESULT OF THE MERITS OF THE
CLAIMED INVENTION (RATHER THAN THE RESULT
OF DESIGN NEEDS OR MARKET-PRESSURE
ADVERTISING OR SIMILAR ACTIVITIES);
52

(B) WHETHER THE INVENTION SATISFIED A LONG-FELT
NEED;
(C) WHETHER OTHERS HAD TRIED AND FAILED TO
MAKE THE INVENTION;
(D) WHETHER OTHERS INVENTED THE INVENTION AT
ROUGHLY THE SAME TIME;
(E) WHETHER OTHERS COPIED THE INVENTION;
(F)

WHETHER THERE WERE CHANGES OR RELATED
TECHNOLOGIES OR MARKET NEEDS
CONTEMPORANEOUS WITH THE INVENTION;

(G) WHETHER THE INVENTION ACHIEVED UNEXPECTED
RESULTS;
(H) WHETHER OTHERS IN THE FIELD PRAISED THE
INVENTION;

53

(I)

WHETHER PERSONS HAVING ORDINARY SKILL IN
THE ART OF THE INVENTION EXPRESSED SURPRISE
OR DISBELIEF REGARDING THE INVENTION;

(J)

WHETHER OTHERS SOUGHT OR OBTAINED RIGHTS
TO THE PATENT FROM THE PATENT HOLDER; AND

(K) WHETHER THE INVENTOR PROCEEDED CONTRARY
TO ACCEPTED WISDOM IN THE FIELD.
LEVEL OF ORDINARY SKILL
IN DECIDING WHAT THE LEVEL OF ORDINARY SKILL IN
THE FIELD OF RESPIRATORY GATING/RADIOTHERAPY IS,
YOU SHOULD CONSIDER ALL THE EVIDENCE INTRODUCED
AT TRIAL, INCLUDING BUT NOT LIMITED TO: (1) THE LEVELS
OF EDUCATION AND EXPERIENCE OF THE INVENTORS AND
OTHER PERSONS ACTIVELY WORKING IN THE FIELD; (2) THE
TYPES OF PROBLEMS ENCOUNTERED IN THE FIELD; (3) PRIOR
ART SOLUTIONS TO THOSE PROBLEMS; (4) RAPIDITY WITH
54

WHICH INNOVATIONS ARE MADE; AND (5) THE
SOPHISTICATION OF THE TECHNOLOGY.
SCOPE AND CONTENT OF THE PRIOR ART
IN CONSIDERING WHETHER THE CLAIMED INVENTION
WAS OBVIOUS, YOU MUST FIRST DETERMINE THE SCOPE
AND CONTENT OF THE PRIOR ART.
THE SCOPE AND CONTENT OF PRIOR ART FOR DECIDING
WHETHER THE INVENTION WAS OBVIOUS INCLUDES PRIOR
ART IN THE SAME FIELD AS THE CLAIMED INVENTION,
REGARDLESS OF THE PROBLEM ADDRESSED BY THE ITEM OR
REFERENCE, AND PRIOR ART FROM DIFFERENT FIELDS THAT
A PERSON OF ORDINARY SKILL IN THE ART USING COMMON
SENSE MIGHT COMBINE IF FAMILIAR SO AS TO SOLVE THE
PROBLEM, LIKE FITTING TOGETHER THE PIECES OF A
PUZZLE. WHEN A PARTY ATTACKING THE VALIDITY OF A
PATENT RELIES ON PRIOR ART WHICH WAS SPECIFICALLY
55

CONSIDERED BY THE EXAMINER DURING THE PROSECUTION
OF THE APPLICATION LEADING TO THE ISSUANCE OF THE
PATENT, THAT PARTY BEARS THE BURDEN OF OVERCOMING
THE DEFERENCE DUE TO A QUALIFIED GOVERNMENT
AGENCY OFFICIAL PRESUMED TO HAVE PERFORMED HIS OR
HER JOB.
V. PROCESS OF JURY DELIBERATION
YOUR VERDICT MUST REPRESENT THE CONSIDERED
JUDGMENT OF EACH JUROR. IN ORDER TO RETURN A
VERDICT, IT IS NECESSARY THAT EACH JUROR AGREE. IN
OTHER WORDS, YOUR VERDICT MUST BE UNANIMOUS.
IT IS YOUR DUTY AS JURORS TO CONSULT WITH ONE
ANOTHER AND TO DELIBERATE WITH A VIEW TO REACHING
AN AGREEMENT, IF YOU CAN DO SO, WITHOUT VIOLATION
TO INDIVIDUAL JUDGMENT. EACH OF YOU MUST DECIDE
THE CASE FOR YOURSELF, BUT ONLY AFTER AN IMPARTIAL
56

CONSIDERATION OF ALL THE EVIDENCE IN THE CASE WITH
YOUR FELLOW JURORS. IN THE COURSE OF YOUR
DELIBERATIONS, DO NOT HESITATE TO RE-EXAMINE 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 THE
EVIDENCE, SOLELY BECAUSE OF THE OPINION OF YOUR
FELLOW JURORS, OR FOR THE MERE PURPOSE OF RETURNING
A VERDICT.
REMEMBER AT ALL TIMES 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.
UPON RETIRING TO THE JURY ROOM YOU SHOULD FIRST
SELECT ONE OF YOUR NUMBER TO ACT AS YOUR
FOREPERSON WHO WILL PRESIDE OVER YOUR
57

DELIBERATIONS AND WILL BE YOUR SPOKESPERSON HERE
IN COURT. YOU CAN MAKE THIS SELECTION AND CONDUCT
YOUR DELIBERATIONS IN WHATEVER MANNER YOU THINK
BEST, BUT I OFFER SOME SUGGESTIONS THAT OTHER JURIES
HAVE FOUND HELPFUL TO ALLOW FULL PARTICIPATION BY
ALL JURORS AND TO ARRIVE AT A VERDICT THAT SATISFIES
EVERYONE.
THE FOREPERSON SHOULD ENCOURAGE OPEN
COMMUNICATION, COOPERATION AND PARTICIPATION BY
ALL JURORS, AND BE WILLING AND ABLE TO FACILITATE
DISCUSSIONS WHEN DISAGREEMENTS AND DISPUTES ARISE.
THE FOREPERSON SHOULD LET EACH OF YOU SPEAK AND BE
HEARD BEFORE EXPRESSING HER OR HIS VIEWS.
THE FOREPERSON SHOULD NEVER ATTEMPT TO PROMOTE
OR PERMIT ANYONE ELSE TO PROMOTE HIS OR HER
PERSONAL OPINIONS BY COERCION OR BULLYING.
58

THE FOREPERSON SHOULD MAKE SURE THAT
DELIBERATIONS ARE NOT RUSHED.
SOME PEOPLE ARE BETTER AT FACILITATING THAN
OTHERS, AND IF IT BECOMES CLEAR THAT SOMEONE ELSE
WOULD BE A MORE EFFECTIVE FOREPERSON, YOU MIGHT
WANT TO CONSIDER SELECTING A DIFFERENT PERSON, WITH
NO HARD FEELINGS.
YOU ALSO MAY THINK IT WISE TO SELECT A
SECRETARY TO RECORD VOTES, WHICH SHOULD PROBABLY
BE CAST BY SECRET BALLOT, AND TO KEEP TRACK OF
WHETHER EVERYONE HAS SPOKEN.
SOME JURIES THINK IT WILL BE USEFUL TO TAKE A
PRELIMINARY VOTE BEFORE DISCUSSIONS ARE STARTED,
BUT THAT HAS NOT BEEN THE EXPERIENCE AROUND HERE.
SUCH AN EARLY VOTE OFTEN PROVES COUNTERPRODUCTIVE FOR SEVERAL REASONS, INCLUDING THAT IT
59

TENDS TO ALOCK-IN@ A PARTICULAR POINT OF VIEW BEFORE
ALTERNATIVE POINTS OF VIEW ARE COVERED.
YOU SHOULD LISTEN CAREFULLY AND ATTENTIVELY
TO EACH OTHER, AND HEAR WHAT EACH OTHER PERSON IS
SAYING BEFORE RESPONDING. DON=T INTERRUPT AND DON=T
MONOPOLIZE THE DISCUSSION. SPEAK ONE AT A TIME. BE
PATIENT AND RESPECTFUL OF OTHER OPINIONS, AND DON=T
TAKE IT PERSONALLY IF SOMEONE DISAGREES WITH YOU.
A VERDICT FORM HAS BEEN PREPARED FOR YOU, AND
YOU HAVE REVIEWED A COPY. YOU WILL TAKE THE
ORIGINAL VERDICT FORM TO THE JURY ROOM AND WHEN
YOU HAVE REACHED A UNANIMOUS AGREEMENT AS TO
YOUR VERDICT, YOU WILL EACH SIGN IT, HAVE YOUR
FOREPERSON DATE IT, AND THEN SIGNAL THE BAILIFF THAT
YOU ARE PREPARED TO RETURN TO THE COURTROOM.
YOU WILL ALSO BE PROVIDED WITH COPIES OF THESE
60

INSTRUCTIONS FOR YOUR USE DURING DELIBERATIONS.
IF, DURING YOUR DELIBERATIONS, YOU SHOULD DESIRE TO
COMMUNICATE WITH THE COURT, PLEASE REDUCE YOUR
MESSAGE OR QUESTION TO WRITING SIGNED BY THE
FOREPERSON, AND PASS THE NOTE TO THE BAILIFF WHO
WILL BRING IT TO MY ATTENTION. AFTER CONSULTING
WITH THE LAWYERS, I WILL THEN RESPOND AS PROMPTLY
AS POSSIBLE, EITHER IN WRITING OR BY HAVING YOU
RETURNED TO THE COURTROOM SO THAT I CAN ADDRESS
YOU ORALLY. I CAUTION YOU, HOWEVER, WITH REGARD TO
ANY MESSAGE OR QUESTION YOU MIGHT SEND, THAT YOU
SHOULD NEVER STATE OR SPECIFY YOUR NUMERICAL
DIVISION AT THE TIME.
IT IS PROPER TO ADD THE CAUTION THAT NOTHING
SAID IN THESE INSTRUCTIONS AND NOTHING IN ANY FORM
OF VERDICT PREPARED FOR YOUR CONVENIENCE IS MEANT
61

TO SUGGEST OR HINT IN ANY WAY WHAT VERDICT I THINK
YOU SHOULD FIND. WHAT THE VERDICT SHALL BE IS YOUR
SOLE AND EXCLUSIVE DUTY AND RESPONSIBILITY.

62

YOU WILL NOTE FROM THE OATH ABOUT TO BE TAKEN
BY THE BAILIFF THAT SHE TOO, AS WELL AS ALL OTHER
PERSONS, ARE FORBIDDEN TO COMMUNICATE IN ANY WAY
OR MANNER WITH ANY MEMBER OF THE JURY ON ANY
SUBJECT TOUCHING THE MERITS OF THE CASE.
ASK COUNSEL IF THERE ARE ANY OBJECTIONS TO THE
FINAL JURY INSTRUCTIONS THAT HAVE NOT ALREADY
BEEN PLACED ON THE RECORD.
[SWEAR BAILIFF AND SEND JURY OUT]