Bedrock Computer Technologies, LLC v. Softlayer Technologies, Inc. et al

Filing 599

Proposed Jury Instructions by Bedrock Computer Technologies, LLC. (Attachments: #1 Exhibit A, #2 Exhibit B, #3 Appendix A to Exhibit B, #4 Appendix B to Exhibit B, #5 Exhibit C, #6 Exhibit D, #7 Exhibit E, #8 Exhibit F)(Cawley, Douglas)

Bedrock Computer Technologies, LLC v. Softlayer Technologies, Inc. et al

Doc. 599 Att. 2

EXHIBIT B

Dockets.Justia.com

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION

BEDROCK COMPUTER TECHNOLOGIES LLC,

§ § § Plaintiff, § § v. § § SOFTLAYER TECHNOLOGIES, INC., § CITIWARE TECHNOLOGY § SOLUTIONS, LLC, GOOGLE INC., § YAHOO! INC., MYSPACE INC., § AMAZON.COM INC., PAYPAL INC., § MATCH.COM, LLC., AOL LLC, AND § CME GROUP INC., § § Defendants. §

CASE NO. 6:09-CV-269-LED

JURY TRIAL DEMANDED

JOINT PROPOSED FINAL JURY INSTRUCTIONS FOR SECOND TRIAL1

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The Parties reserve the right to modify or amend these proposed instructions prior to the Court's charge conference if so warranted.
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INITIAL INSTRUCTIONS2

MEMBERS OF THE JURY: You have heard the evidence in this case. I will now instruct you on the law that you must apply. It is your duty to follow the law as I give it to you. On the other hand, you the jury are the judges of the facts. Do not consider any statement that I have made during the trial or make in these instructions as an indication that I have any opinion about the facts of this case. After I instruct you on the law, the attorneys will have an opportunity to make their closing arguments. Statements and arguments of the attorneys are not evidence and are not instructions on the law. They are intended only to assist you in understanding the evidence and the parties contentions. A verdict form 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. Answer each question from the facts as you find them. Do not decide who you think should win and then answer the questions accordingly. Your answers and your verdict must be unanimous. In determining whether any fact has been proved in this case, you may, unless otherwise instructed, consider the testimony of all witnesses, regardless of who may have called them, and all exhibits received in evidence, regardless of who may have produced them.

From the Court's Final Jury Instructions in Mirror Worlds, LLC v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010); VirnetX, Inc. v. Microsoft Corp., Civil Action No. 6:07-CV-80; i4i Limited Partnership v. Microsoft Corp., Civil Action No. 6:07-CV-113; Mass Engineered Design, Inc. v. Ergotron, Inc., Civil Action No. 2:06-CV-272; z4 Tech., Inc. v. Microsoft Corp., et al., No. 6:06-CV-142.
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1.1

CONSIDERING WITNESS TESTIMONY3 By the Court allowing testimony or other evidence to be introduced over the objection of an

attorney, the Court did not indicate any opinion as to the weight or effect of such evidence. You the jurors are the sole judges of the credibility of all witnesses and the weight and effect of all evidence. When the Court sustained an objection to a question addressed to a witness, you must disregard the question entirely, and may draw no inference from the wording of it or speculate as to what the witness would have testified to, if he or she had been permitted to answer the question. At times during the trial it was necessary for the Court to talk with the lawyers here at the bench out of your hearing, or by calling a recess. We met because often during a trial something comes up that does not involve the jury. You should not speculate on what was discussed during such times. 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 concerning 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 the witness gave before you during the trial.

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Adapted from the Court's Final Jury Instructions in Mirror Worlds, LLC v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010). 3

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1.2

HOW TO EXAMINE THE EVIDENCE5 Certain testimony in this case has been presented to you through a deposition. A deposition

is the sworn, recorded answers to questions asked a witness in advance of the trial. Under some circumstances, if a witness cannot be present to testify from the witness stand, the witness testimony may be presented, under oath, in the form of a deposition. Some time before this trial, attorneys representing the parties in this case questioned this witness under oath. This deposition testimony is entitled to the same consideration and is to be judged by you as to credibility and weight as if the witness had been present and had testified from the witness stand in court. While you should consider only the evidence in this case, you are permitted to draw such reasonable inferences from the testimony and exhibits as you feel are justified in the light of common experience. In other words, you may make deductions and reach conclusions that reason and common sense lead you to draw from the facts that have been established by the testimony and evidence in the case. The testimony of a single witness may be sufficient to prove any fact, even if a greater number of witnesses may have testified to the contrary, if after considering all the other evidence you believe that single witness. There are two types of evidence that you may consider in properly finding the truth as to the facts in the case. One is direct evidence such as testimony of an eyewitness. The other is indirect or circumstantial evidence--the proof of a chain of circumstances that indicates the existence or nonexistence of certain other facts. As a general rule, the law makes no distinction between direct

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Adapted from the Court's Final Jury Instructions in Mirror Worlds, LLC v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010); Soverain Software LLC v. Newegg Inc., Civil Action No. 6:07-CV-511 (E.D. Tex. April 30, 2010) (Dkt. No. 436) (adapted). 5

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and circumstantial evidence, but simply requires that you find the facts from a preponderance of all the evidence, both direct and circumstantial.

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1.3

EXPERT WITNESSES6 When knowledge of a technical subject matter may be helpful to the jury, a person who has

special training or experience in that technical field is called an expert witness and 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 decide whether to rely upon it. In deciding whether to accept or rely upon the opinion of an expert witness, you may consider any bias of the witness, including any bias you may infer from evidence that the expert witness has been or will be paid for reviewing the case and testifying, or from evidence that he or she testifies regularly as an expert witness and that income from such testimony represents a significant portion of the expert's income.

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Adapted from the Court's Final Jury Instructions in Mirror Worlds, LLC v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010); Soverain Software LLC v. Newegg Inc., Civil Action No. 6:07-CV-511 (E.D. Tex. April 30, 2010) (Dkt. No. 436) (adapted). 7

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PROPOSED SUMMARY OF CONTENTIONS I will first give you a summary of each side's contentions in this case. I will then tell you

what each side must prove to win on these issues. Plaintiff Bedrock Computer Technologies LLC, referred to as "Bedrock," contends that the Defendants, Softlayer Technologies, Inc., Yahoo! Inc., MySpace, Inc., Amazon.com Inc., and AOL LLC, have in the past and continue to infringe Bedrock's United States patent, Patent No. 5,893,120, known as the '120 Patent, by making, using, selling, and/or offering for sale in the United States computer equipment configured with or utilizing software based on Linux version 2.4.22 and every version thereafter and/or computer equipment configured with or utilizing software based on Linux version 2.6.25 and every version thereafter. Bedrock is seeking damages for Defendants' alleged infringement. Bedrock bears the burden of proving infringement and damages. Defendants deny that their Linux servers infringe claims 1, 2, 5 or 6 of the '120 patent. In addition, Defendants contend that Bedrock's patent is invalid. In particular, Defendants contend that certain prior art that existed before the filing of the '120 patent renders the '120 patent invalid. Invalid patents cannot be infringed. The Defendants bear the burden of proving that the asserted claims of the patent are invalid.

Your job is to decide whether the asserted claims of Bedrock's '120 Patent have been infringed and whether any of the asserted claims of those patents are invalid. Invalidity is a defense to infringement. Therefore, even though the United States Patent and Trademark Office has allowed

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the claims of Bedrock's '120 Patent, you, the jury, must decide whether the claims of the patents are invalid.

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INSTRUCTION ON THE BURDEN OF PROOF8 As I told you at the beginning of the trial, in any legal action, facts must be proved by a

required amount of evidence, known as the "burden of proof." The burden of proof you will use in this case is the "preponderance of the evidence" standard. The "preponderance of the evidence" standard means that the evidence persuades you that a claim is more likely true than not true. Bedrock has the burden of proving infringement by a preponderance of the evidence.

In determining whether any fact has been proved by a preponderance of the evidence, you may, unless otherwise instructed, consider the stipulations, the testimony of all witnesses regardless of who may have called them, and all exhibits received in evidence regardless of who may have produced them. If the proof establishes that all parts of Bedrock's

infringement claims are more likely true than not true, then you should find for Bedrock as to these claims.

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Adapted from the Court's Final Jury Instructions in Mirror Worlds, LLC v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010); Acqis LLC v. IBM, Civil Action No. 6:09-CV-148 (E.D. Tex. Feb. 23, 2011); VirnetX, Inc. v. Microsoft Corp., Civil Action No. 6:07CV-80; i4i Limited Partnership v. Microsoft Corp., Civil Action No. 6:07-CV-113; Mass Engineered Design, Inc. v. Ergotron, Inc., Civil Action No. 2:06-CV-272; z4 Tech., Inc. v. Microsoft Corp., et al., No. 6:06-CV-142.

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4. 4.1

MEANING OF THE CLAIM TERMS10 PATENT CLAIMS At the beginning of the trial, I gave you some general information about patents and the

patent system and a brief overview of the patent laws relevant to this case. I will now give you more detailed instructions about the patent laws that specifically relate to this case. If you would like to review my instructions at any time during your deliberations, they will be available to you in the jury room. The claims of a patent are the numbered sentences at the end of the patent. The claims describe the invention made by the inventor and describe what the patent owner owns and what the patent owner may prevent others from doing. Claims may describe products such as a machine or processes for making or using a product. In this case, Bedrock has asserted claims in the '120 Patent. Claims are usually divided into parts or steps, called "limitations" or "elements." 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. In this example, the tabletop, legs, and glue are each a separate limitation of the claim.

Adapted from the Court's Final Jury Instructions in Mirror Worlds, LLC v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010).
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INSTRUCTIONS ON CONSTRUCTION OF THE CLAIMS11 In deciding whether or not an accused product or apparatus does or does not infringe a patent

claim, the first step is to understand the meaning of the words used in the patent claims. The meaning of the words in the patent claim is the same for both the infringement and the validity determinations. It is my job as Judge to determine what the patent claims mean and to instruct you about that meaning. You must accept the meanings I give you and use those meanings when you decide whether or not the patent claims are infringed, and whether or not they are invalid. I have interpreted the meaning of some of the language in the patent claims involved in this case. My interpretation of those claims appears in Appendix A to this charge. The claim language I have not interpreted for you in Appendix A is to be given its ordinary and accustomed meaning as understood by one of ordinary skill in the field of technology.

Adapted from the Court's Final Jury Instructions in Mirror Worlds, LLC v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010).
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OPEN-ENDED OR "COMPRISING" CLAIMS The beginning, or preamble, of Claims 1 and 5 of the '120 Patent use the word `comprising."

"Comprising" means "including but not limited to" or "containing but not limited to."12 Thus, if you decide that an accused product includes all the requirements in that claim, the claim is infringed. This is true even if the accused instrumentality includes components in addition to those requirements. For example, a claim to a table comprising a tabletop, legs, and glue would be infringed by a table that includes a tabletop, legs, and glue, even if the table also includes wheels on the table's legs.13

Adapted from the Court's Final Jury Instructions in Mirror Worlds, LLC v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010). Adapted from the Court's Final Jury Instructions in Mirror Worlds, LLC v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010).
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INDEPENDENT AND DEPENDENT CLAIMS14 Patent claims may exist in two forms, referred to as independent claims and dependent

claims. An independent claim does not refer to any other claim of the patent. It is not necessary to look at any other claim to determine what an independent claim covers. Claims 1 and 5 of the '120 patent are independent claims. A dependent claim refers to at least one other claim in the patent. A dependent claim includes each of the elements of the other claim to which it refers, as well as the additional elements recited in the dependent claim itself. In this way, the claim `depends" on another claim. To determine what a dependent claim covers, it is necessary to look both at the dependent claim and the other claim or claims to which it refers. Claims 2 and 6 of the '120 patent are dependent claims.

Adapted from the Court's Final Jury Instructions in Soverain Software LLC v. Newegg Inc., Civil Action No. 6:07-CV-511 (E.D. Tex. April 30, 2010) (Dkt. No. 436) (adapted); Mirror Worlds, LLC v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010).
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MEANS-PLUS-FUNCTION CLAIMS15 All of the asserted claims in this case include "means-plus-function" limitations. These

claims describe one or more "means" for performing a function, rather than describing the structure that performs the function. For example, let's say that a patent describes a table in which the legs are glued to the tabletop. One way an inventor may claim the table is to require the tabletop, four legs, and glue between the legs and the tabletop. Another way to claim the table is to require the tabletop and the legs, but instead of stating "glue," the inventor states a "means for securing the legs to the tabletop." This second type of claim requirement is called a "means-plus-function" limitation. It describes a means for performing the function of securing the legs to the tabletop, rather than requiring the glue. When a claim requirement is in means-plus-function form, it covers the structures described in the patent specification for performing the function stated in the claim and also any structure equivalent to the described structures. It does not cover any other structure. In the '120 patent, structures corresponding to the means-plus-function limitations are found in the figures, the written words of the specification, and in the pseudocode. In my example, the claim covers a table using glue to secure the legs to the tabletop, as described in the patent, and any equivalent structure to glue that performs the function of securing the legs to the tabletop. I have interpreted the meaning of the means-plus-function limitations in claims 1, 2, 5 and 6 of the '120 Patent and identified the structures corresponding to the means-plus-function limitations. My interpretation of the means-plus-function limitations appears in Appendix A to this charge.

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NJIP Model Patent Jury Instructions § 3.9 (2009) (adapted) 15

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INFRINGEMENT DETERMINING INFRINGEMENT16 Any person or business entity that, without the patent owner's permission, makes, uses, sells,

or offers to sell a device that is covered by at least one claim of a patent, before the patent expires, infringes the patent. In this case, Bedrock asserts that Amazon, MySpace, Softlayer, and Yahoo! have infringed claims 1, 2, 5 and 6, and that AOL has infringed claims 1 and 2 of the '120 patent. Bedrock has the burden of proving infringement by a preponderance of the evidence. Only the claims of a patent can be infringed. You must consider each claim individually. You must compare each of the asserted claims, as I have defined them, to each Defendant's accused devices, and determine whether or not there is infringement. In order to prove infringement, Bedrock must prove that each Defendant's Linux servers include or perform each and every limitation of the claim.

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Court's Charge given in Soverain Software LLC v. Newegg Inc., Case No. 6:07-CV-00511LED (E.D. Tex. April 30, 2010) (Dkt. No. 436) (adapted). 16

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INVALIDITY

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6.6

ANTICIPATION­STATUTORY BARS39 Defendants may prove that claims 1, 2, 5 and 6 of the '120 Patent are invalid by showing by

a preponderance of evidence that each such claim failed to meet one of several statutory provisions in the patent laws. These provisions are called "statutory bars." For a patent claim to be invalid because of a statutory bar, all of its requirements must have been present in one prior art reference dated more than one year before the effective date of the patent application. Here is a list of ways Defendants can show that the '120 Patent is invalid due to a statutory bar: · if the asserted claims of the '120 Patent were already patented or described in a printed publication anywhere in the world one year before the effective filing date of the '120 Patent, January 2, 1997. A reference is a "printed publication" if it is reasonably accessible to those interested in the field, even if it is difficult to find. An electronic publication, including an online or internet publication, is a "printed publication" if it is at least reasonably accessible to those interested in the field, even if it is difficult to find. · if the asserted claims of the '120 Patent were already being publicly or commercially used in the United States one year before the effective filing date of the '120 Patent application, January 2, 1997, and that use was not primarily an experimental use controlled by the inventor to test whether the invention worked for its intended purpose.

For a claim to be invalid because of a statutory bar, all of the claimed requirements must have been either (1) disclosed in a single prior art reference or (2) implicitly disclosed in a single prior art reference as viewed by one of ordinary skill in the field of the invention. The disclosure in a reference does not have to be in the same words as the claim, but all of the requirements of the Adapted from the Court's Final Jury Instructions in Mirror Worlds, LLC v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010); The National Jury Instruction Project, MODEL PATENT JURY INSTRUCTIONS, Instruction 5.6 (June 17, 2009); 35 U.S.C. § 102(b) and (d); Pfaff v. Wells Elec. Inc., 525 U.S. 55 (1998); Schering Corp. v. Geneva Pharms., 339 F.2d 1373 (Fed. Cir. 2003).
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claim must be described in enough detail, or necessarily implied by or inherent in the reference, to enable someone of ordinary skill in the field of the invention looking at the reference to make and use at least one embodiment of the claimed invention. A prior art reference also invalidates a patent claim when the claimed invention necessarily results from practice of the subject of the prior art reference, even if the result was unrecognized and unappreciated by one of ordinary skill in the field of the invention. If you find a patent claim failed to meet a statutory bar, you must find the patent claim invalid.

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6.7

OBVIOUSNESS40 In this case, Defendants contend that all asserted claims of the '120 Patent are invalid as

obvious. A patent claim is invalid if the claimed invention 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 or constitute a statutory bar to that 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. But a patent claim composed of several requirements is not proved obvious merely by demonstrating that each of its requirements was independently known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of known requirements according to their established functions to produce a predictable result, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the requirements in the way the claimed new invention does. This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known. 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. Teachings, suggestions, and motivations may also be found within the knowledge of a person with ordinary skill in the art including inferences and Adapted from the Court's Final Jury Instructions in Mirror Worlds, LLC v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010); The National Jury Instruction Project, MODEL PATENT JURY INSTRUCTIONS, Instruction 5.6 (June 17, 2009); 35 U.S.C. § 103; KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 425-28 (2007; Graham v. John Deere Co., 383 U.S. 1 (1966).
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creative steps that a person of ordinary skill in the art would employ. Additionally, teachings, suggestions, and motivations may be found in the nature of the problem solved by the claimed invention, or any need or problem known in the field of the invention at the time of and addressed by the invention. Therefore, in evaluating whether such a claim would have been obvious, you should consider a variety of factors: 1. Whether Defendants have identified a reason that would have prompted a person of ordinary skill in the field of the invention to combine the requirements or concepts from the prior art in the same way as in the claimed invention. There is no single way to define the line between true inventiveness on one hand (which is patentable) and the application of common sense and ordinary skill to solve a problem on the other hand (which is not patentable). For example, market forces or other design incentives may be what produced a change, rather than true inventiveness. Whether the claimed invention applies a known technique that had been used to improve a similar device or method in a similar way. Whether the claimed invention would have been obvious to try, meaning that the claimed innovation was one of a relatively small number of possible approaches to the problem with a reasonable expectation of success by those skilled in the art.

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But 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. The ultimate conclusion of whether a claim is obvious should be based on your determination of several factual issues: 1. 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.

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2.

You must decide the scope and content of the prior art. In determining the scope and content of the prior art, you must decide whether a reference is pertinent, or analogous, to the claimed invention. Pertinent, or analogous, prior art includes prior art in the same field of endeavor as the claimed invention, regardless of the problems addressed by the reference, and prior art from different fields reasonably pertinent to the particular problem with which the claimed invention is concerned. Remember that prior art is not limited to patents and published materials, but includes the general knowledge that would have been available to one of ordinary skill in the field of the invention.

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Finally, you should consider any of the following factors that you find have been shown by the evidence: A. Factors tending to show non-obviousness: 1. 2. commercial success of a product due to the merits of the claimed invention; a long-felt, but unsolved, need for the solution provided by the claimed invention; unsuccessful attempts by others to find the solution provided by the claimed invention;

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4. 5. 6.

copying of the claimed invention by others; unexpected and superior results from the claimed invention; 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; 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.

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You may consider the presence of any of the list factors A.1-7 as an indication that the claimed invention would not have been obvious at the time the claimed invention was made. 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.

You may consider the presence of the factor B.1 as an indication that the claimed invention would have been obvious at such time. Although you should consider any evidence of this factor, the relevance and importance of it to your decision on whether the claimed invention would have been obvious is up to you. The Defendants must prove by a preponderance of the evidence that a claimed invention was obvious. If you find that a claimed invention was obvious as explained above, you must find that claim invalid.

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6.8

LEVEL OF ORDINARY SKILL Several times in my instructions I have referred to a person of ordinary skill in the field of

the invention. It is up to you to decide the level of ordinary skill in the field of the invention. You should consider all of the evidence introduced at trial in making this decision, including: 1. 2. 3. the levels of education and experience of persons working in the field; the types of problems encountered in the field; and the sophistication of the technology.44

Bedrock contends that a person of ordinary skill in the art of the '120 Patent would have a Bachelor of Science degree in Computing Science, where the degree program requires extensive training and practice in computer programming. Defendants contend that a person of ordinary skill in the art of the '120 Patent would have a Bachelor of Science degree in computer science or computer engineering, including practical experience writing computer programs, or the equivalent. Because it is your determination to make, you need not adopt either Bedrock's or the Defendants' contention of the level of ordinary skill in the art.

Adapted from the Court's Final Jury Instructions in Mirror Worlds, LLC v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010); National Jury Instructions Project Model Patent Jury Instructions § 5.12.
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6.9

CORROBORATION OF ORAL TESTIMONY Oral testimony alone is insufficient to prove prior invention or that something is prior art or

that a particular event or reference occurred before the filing date of the patents-in-suit . A party seeking to prove prior invention or prior art also must provide evidence that corroborates any oral testimony, especially where the oral testimony comes from an interested witness, or a witness testifying on behalf of an interested party. This includes any individual or company testifying that his or its invention predates the patents-insuit, and also includes a patent owner seeking to prove an earlier date of invention than the effective filing date stated on the face of the patent. Documentary or physical evidence that is made contemporaneously with the inventive process provides the most reliable proof that the testimony has been corroborated, but corroborating evidence may also consist of testimony of a witness, other than an inventor, to the actual reduction to practice or it may consist of evidence of surrounding facts and circumstances independent of information received from the inventor. If you find that the party has not corroborated the oral testimony with other evidence, you are not permitted to find that the subject of that oral testimony qualifies as prior art or supports a prior date of invention.45

Adapted from the Court's Final Jury Instructions in Soverain Software LLC v. Newegg Inc., Case No. 6:07-CV-00511-LED (E.D. Tex. April 30, 2010) (Dkt. No. 436) (adapted); VirnetX, Inc. v. Microsoft Corp., Civil Action No. 6:07-CV-80; i4i Limited Partnership v. Microsoft Corp., Civil Action No. 6:07-CV-113; Mass Engineered Design, Inc. v. Ergotron, Inc., Civil Action No. 2:06-CV-272.
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8.

DAMAGES

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8.7

DAMAGES LIMITATION - NON-INFRINGING ALTERNATIVES In determining a reasonable royalty, you may consider whether or not the Defendant found

to infringe had commercially acceptable non-infringing alternatives to taking a license from Bedrock that were available at the time of the hypothetical negotiation and whether that would have affected the reasonable royalty the parties would have agreed upon.

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INSTRUCTIONS FOR DELIBERATIONS65 You must perform your duties as jurors without bias or prejudice to any party. The law does

not permit you to be controlled by sympathy, prejudice, or public opinion. All parties expect that you will carefully and impartially consider all the evidence, follow the law as it is now being given to you, and reach a just verdict, regardless of the consequences. It is your sworn duty as a juror to discuss the case with one another in an effort to reach agreement if you can do so. Each of you must decide the case for yourself, but only after full consideration of the evidence with the other members of the jury. While you are discussing the case, do not hesitate to re-examine your own opinion and change your mind if you become convinced that you are wrong. However, do not give up your honest beliefs solely because the others thing differently, or merely to finish the case. Remember that in a very real way you are the judges­judges of the facts. Your only interest is to seek the truth from the evidence in the case. You should consider and decide this case as a dispute between persons of equal standing in community, of equal worth, and holding the same or similar stations in life. All persons, including corporations, and other organizations stand equal before the law, regardless of size or who owns them, and are to be treated as equals.66 When you retire to the jury room to deliberate on your verdict, you may take this charge with you as well as exhibits which the Court as admitted into evidence. Select your Foreperson and conduct your deliberations. If you recess during your deliberations, follow all of the instructions that the Court has given you about/on your conduct during the trial. After you have reached your
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FIFTH CIRCUIT PATTERN JURY INSTRUCTIONS ­ CIVIL, § 3.1 General Instruction for Charge

Adapted from the Court's Final Jury Instructions in Mirror Worlds, LLC v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010).
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unanimous verdict, your Foreperson is to fill in on the form your answers to the questions. Do not reveal your answers until such time as you are discharged, unless otherwise directed by me. You must never disclose to anyone, not even to me, your numerical division on any question. Any notes that you have taken during this trial are only aids to memory. If your memory should differ from your notes, then you should rely on your memory and not on the notes. The notes are not evidence. A juror who has not taken notes should rely on his or her independent recollection of the evidence and should not be unduly influenced by the notes of other jurors. Notes are not entitled to any greater weight than the recollection or impression of each juror about the testimony. If you want to communicate with me at any time, please give a written message or question to the bailiff, who will bring it to me. I will then respond as promptly as possible either in writing or by having you brought into the courtroom so that I can address you orally. I will always first disclose to the attorneys your question and my response before I answer your question. After you have reached a verdict, you are not required to talk with anyone about the case unless the Court orders otherwise. You may now retire to the jury room to conduct your deliberations.

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