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

Filing 816

Proposed Jury Instructions by Yahoo! Inc.. (Attachments: #1 Exhibit Second Amended Joint Proposed Jury Instructions)(Bright, Christopher)

EXHIBIT A

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

BEDROCK COMPUTER
TECHNOLOGIES LLC,
Plaintiff,
v.
YAHOO! INC.,
Defendant.

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

JURY TRIAL DEMANDED

SECOND AMENDED JOINT PROPOSED FINAL JURY INSTRUCTIONS1

1

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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1.

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.

2

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.
You should keep in mind, of course, that a simple mistake by a witness does not necessarily
mean that the witness was not telling the truth as he or she remembers it, because people may forget
some things or remember other things inaccurately. So, if a witness has made a misstatement, you
need to consider whether that misstatement was an intentional falsehood or simply an innocent lapse
of memory; and the significance of that may depend on whether it has to do with an important fact
or with only an unimportant detail.4

3

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).
4

Id.

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

5

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).

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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.

6

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).
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2.

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
Defendant Yahoo! Inc. has in the past and presently infringes 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
2.4.29, 2.4.31, 2.6.9, 2.6.18, 2.6.22, 2.6.27, and 2.6.29. Bedrock contends the infringement was
willful. Bedrock is seeking damages for Yahoo’s alleged infringement. Bedrock bears the burden
of proving infringement, willfulness, and damages.
Yahoo! denies that its Linux servers infringe claims 1 and 2 of the ’120 patent. In addition,
Yahoo! contends that Bedrock’s patent is invalid. In particular, Yahoo! contends that certain prior
art that existed before the filing of the ’120 patent renders the ’120 patent invalid [Yahoo! proposes:
“as being either not new or obvious to a person of ordinary skill in the relevant field”]. Invalid
patents cannot be infringed. Yahoo! bears 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
the claims of Bedrock’s ’120 Patent, you, the jury, must decide whether the claims of the patents are
invalid.

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3.

INSTRUCTION ON THE BURDEN OF PROOF7
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.” In this patent case there are two
different burdens of proof that are used. The first is the preponderance of the evidence standard and
the second is the clear and convincing standard. The burden of proof in this case is on Bedrock for
some issues and on Yahoo! for others.
The “preponderance of the evidence” standard means that the evidence persuades you that
a claim or defense is more likely true than not true.
The clear and convincing standard means that the evidence produces in your mind a firm
belief or conviction as to the matter at issue. The clear and convincing standard requires greater
proof than is necessary for the preponderance of the evidence standard.
Bedrock has the burden of proving infringement and damages by a preponderance of the
evidence. Yahoo! has the burden of proving invalidity by a preponderance of the evidence. Bedrock
has the burden of proving willfulness by clear and convincing evidence. Infringement and validity
determinations are made on a claim-by-claim basis. As an issued United States patent, Bedrock’s
’120 Patent is presumed to be valid.
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.

7

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. 6:09CV-148 (E.D. Tex. Feb. 23, 2011); VirnetX, Inc. v. Microsoft Corp., Civil Action No. 6:07-CV80; 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.

MEANING OF THE CLAIM TERMS8

4.1

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 or apparatus [Yahoo!
proposes: system], such as a machine or processes for making or using a product. In this case,
Bedrock has asserted apparatus [Yahoo! proposes: system] 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. [Yahoo! proposes: To infringe such a claim, an infringing table must
include each element or limitation– that is, the tabletop, legs and glue. Similarly, to invalidate
such a claim, a prior art table must include each element or limitation.]9

8

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).
Bedrock notes that Yahoo!’s proposal does not appear in Mirror Worlds, LLC v. Apple,
Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010).
9

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4.2

INSTRUCTIONS ON CONSTRUCTION OF THE CLAIMS10
In deciding whether or not an accused product or apparatus [Yahoo! proposes: system] 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 your juror notebook. The claim language I have not interpreted for you
in your juror notebook is to be given its ordinary and accustomed meaning as understood by one of
ordinary skill in the field of technology.

10

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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4.3

OPEN-ENDED OR “COMPRISING” CLAIMS
The beginning, or preamble, of Claim 1 of the ’120 Patent uses the word “comprising.”

“Comprising” means “including but not limited to” or “containing but not limited to.”11 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 [Yahoo! proposes: system] 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.12
[Yahoo! proposes: Similarly, if you decide that a prior art product includes all the
requirements in that claim, the claim is invalid. This is true even if the prior art product
includes components in addition to those requirements. For example, a claim to a table
comprising a tabletop, legs, and glue would be invalidated by a prior art table that includes
a tabletop, legs and glue, even if the table also includes wheels on the table’s legs.]13

11

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).
12

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).
Bedrock notes that Yahoo!’s proposal was not included in the jury instructions in Mirror
Worlds, LLC v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010) or
Bedrock v. Google., Civil Action No. 6:09-CV-269 LED (E.D. Tex. April 15, 2011).
13

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4.4

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. Claim 1 of the ’120 patent
is an independent claim.
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. Claim 2 of the ’120 patent is a dependent claim.
When analyzing the alleged infringement of any dependent claim asserted by Bedrock, you
must consider all limitations of both the dependant claim and the independent claim from which it
depends. If you find that claim 1 is not infringed, then you must also find that dependant claim 2 is
not infringed. If you find that independent claim 1 is infringed, then you must separately determine
whether dependent claim 2 is also infringed.
[Yahoo! proposes: Bedrock must prove by a preponderance of the evidence that both
independent and dependent claims have been infringed.]1516

14

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).
Mirror Worlds, LLC v. Apple, Inc., Civil Action No. 6:08-CV-88 LED, at *8 (E.D. Tex. Oct.
1, 2010)(adapted)
15

16

Bedrock objects to this instruction as being an inaccurate or incomplete statement of law.

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4.5

MEANS-PLUS-FUNCTION CLAIMS17
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 and 2 of
the ’120 Patent and identified the structures corresponding to the means-plus-function limitations.
My interpretation of the means-plus-function limitations can be found in your juror notebook.

17

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

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5.

INFRINGEMENT

5.1

DETERMINING INFRINGEMENT18
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. [Bedrock proposes: As I previously told you, a patent owner may bring a
suit like this to protect the patent owner from infringement of its patent. The law does not
require that a patent owner give notice to a defendant before filing suit.]19 In this case, Bedrock
asserts that Yahoo! 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 Yahoo!’s accused Linux
servers, and determine whether or not there is infringement. In order to prove infringement, Bedrock
must prove that Yahoo!’s Linux servers include or perform each and every limitation of the claim.
[Yahoo! proposes: If any one of Yahoo!’s Linux servers do not include or perform even a
single limitation recited in a claim, then you must find that the device does not infringe that
claim.]
[Bedrock proposes: This case involves claims written to cover an apparatus that is
capable of performing certain recited functions. An apparatus may be found to infringe if it
includes the means for performing the recited functions regardless whether that means is

18

Court’s Charge given in Soverain Software LLC v. Newegg Inc., Case No. 6:07-CV-00511-LED
(E.D. Tex. April 30, 2010) (Dkt. No. 436) (adapted).
Yahoo! objects to Bedrock’s proposed instruction as being duplicative and irrelevant to
the determination of infringement.
19

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activated or utilized by the Defendant in any way.20]21 [Yahoo! proposes: In addition, when a
patentee defines a claim term by reference to functional characteristics as opposed to mere
capability, the patentee must show that the accused product actually performs the operation
set forth in the claim and not merely that the accused product is capable of performing the
operation.22 In this case, Bedrock must show that Yahoo!’s Linux servers actually have “linked
lists” with at least one record and that at least one record “automatically expires” in Yahoo!’s
systems. Bedrock must also show that Yahoo!’s Linux servers actually perform the steps of
“utilizing,” “identifying,” “accessing,” and “removing.”]23

20

Fantasy Sports Properties, Inc. vs. SportsLine.com, Inc., 287 F.3d 1108, 1118 (Fed. Cir.
2002).
21

Yahoo! objects to Bedrock’s instruction as being an inaccurate or an incomplete
statement of law under the facts of this case.
22

ACCO Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307 (Fed. Cir. 2007); Typhoon Touch
Techs. v. Dell, Inc., et al., No. 6:07-CV-00546, Dkt. No. 437 (E.D. Tex. 2009) (Davis, J.): see
also Finjin, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1204 (Fed. Cir. 2010);
Authentex, Inc. v. EMC Corp., et al., 2:10-CV-01251 (C.D. Cal. Feb. 16, 2011).
23

Bedrock objects to Defendant’s proposed instructions as inaccurate or incomplete
statements of law under the facts of this case.
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5.2

DIRECT INFRINGEMENT – LITERAL INFRINGEMENT24
You must decide whether Yahoo! has made, used, sold or offered for sale within the United

States apparatus or instrumentalities [Yahoo! proposes: systems] covered by one or more of claims
1 and 2 of Bedrock’s ’120 Patent.

You must compare each claim to Yahoo!’s accused

instrumentalities [Yahoo! proposes: Linux servers] to determine whether every requirement of the
claim is included in the accused instrumentality [Yahoo! proposes: Linux servers].
To prove literal infringement, Bedrock must prove by a preponderance of the evidence that
Yahoo!’s accused instrumentality [Yahoo! proposes: Linux servers] includes every requirement
in a single claim of Bedrock’s ’120 Patent. If Yahoo!’s product or instrumentality [Yahoo!
proposes: Linux servers] omits any requirement recited in a claim of Bedrock’s ’120 Patent,
Yahoo! does not infringe that claim. In making your determination, you must consider each claim
separately, and each accused instrumentality [Yahoo! proposes: version of the Linux servers]
separately.
For literal infringement, Bedrock is not required to prove that Yahoo! intended to infringe
or knew of the ’120 Patent.
[Yahoo! proposes: Claims 1 and 2 of the ’120 patent are claims directed to systems. For
a patented system to be considered infringed because it is being used under the patent laws,
Yahoo! must put the system as a whole into service. In determining that Yahoo! puts the
patented system into service, you must find that Yahoo! exercised control over the system and
benefitted from the use of the system.2526
24

Adapted from the Court’s Final Jury Instructions in Acqis LLC v. IBM, Civil Action No. 6:09CV-148 (E.D. Tex. Feb. 23, 2011); Mirror Worlds, LLC v. Apple, Inc., Civil Action No. 6:08CV-88 LED (E.D. Tex. Oct. 1, 2010); The National Jury Instruction Project, MODEL PATENT
JURY INSTRUCTIONS, Instruction 3.2 (June 17, 2009).
25

Centillion Data Sys., LLC v. Qwest Commu’ns Int’l, Inc., 631 F.3d 1279, 1284-85 (Fed. Cir.
2011).
Bedrock objects to Yahoo!’s proposed instruction as an inaccurate and/or incomplete
statement of law.
26

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For you to find that Yahoo! infringes the ’120 patent by using the patented systems, you
must find that Yahoo! put the patented system as a whole into service, and controlled the
system and benefitted from the use of the system obtained.]27
In order to infringe a patent claim under the patent laws by making an article or a
system, the article or system must be manufactured in the United States.28 Therefore, you
should consider whether Yahoo! has manufactured the system that is accused in this case.29

27

Bedrock objects to Yahoo!’s proposed instruction as an inaccurate and/or incomplete
statement of law.
Bayer v. Housey, 340 F.3d 1367, 1372-76, 1377-78 (Fed. Cir. 2003) (explaining the Court’s
conclusion that “made” means “manufactured” and “Congress was solely concerned with
physical goods that had undergone manufacture.”); MIT v. Abacus, 5:01-CV-344, 2004 WL
5268128, at *20 (E.D. Tex. Aug. 24, 2004) (finding that an accused infringer is liable for
“making” a patented invention according to 35 U.S.C. section 271 (a)).
28

Bedrock objects to Yahoo!’s proposed instruction as an inaccurate and/or incomplete
statement of law and because it duplicates previous instructions.
29

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THE PARTIES HAVE COMPETING PROPOSALS FOR SECTION 5.3 AS SET FORTH
BELOW.
BEDROCK PROPOSES:
5.3

DIRECT INFRINGEMENT BY “LITERAL INFRINGEMENT” OF SECTION 112,
PARAGRAPH 6 CLAIM REQUIREMENTS30
Claims 1 and 2 include requirements that are in means-plus-function form.
A product or instrumentality [Yahoo! proposes: system] meets a means-plus function

requirement of a claim if: (1) it has a structure or a set of structures that performs the identical
function recited in the claim, and (2) that structure or set of structures is either identical or
“equivalent” to one or more of the described sets of structures that are defined on the claim
chart as performing the function of the functional limitation. If the product or instrumentality
[Yahoo! proposes: system] does not perform the specific function recited in the claim, the
“means-plus-function” requirement is not met, and the product or instrumentality [Yahoo!
proposes: system] does not literally infringe the claim. Alternatively, even if the product or
instrumentality [Yahoo! proposes: system] has a structure or set of structures that performs
the function recited in the claim but the structure or set of structures is not identical or
“equivalent” to one or more of the sets of structures that I defined for you on the chart as
being described in the ‘120 Patent and performing this function, the product or
instrumentality [Yahoo! proposes: system] does not literally infringe the asserted claim.
Two structures are equivalent if a person of ordinary skill in the art would consider the
differences between them to be insubstantial for performing the required function. One way
to determine this is to look at whether or not the accused structure performs the identical
function in substantially the same way to achieve substantially the same result. Another way
is to consider whether people of ordinary skill in the art believed that the structure of the
accused product [Yahoo! proposes: system] and the structure in the patent were
Bedrock v. Google, Civil Action No. 6:09-cv-269-LED, (E.D. Tex. Apr. 15, 2011) (Dkt. No.
745)
30

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interchangeable at the time the patent was issued by the PTO.31 In order to prove direct
infringement by literal infringement of a means-plus-function limitation, Bedrock must prove
the above requirements are met by a preponderance of the evidence.
YAHOO! PROPOSES:
5.3

INFRINGEMENT OF MEANS-PLUS-FUNCTION CLAIMS32
If any person makes, uses, sells, or offers to sell what is covered by the claims of a

patent without the patent owner’s permission, that person is said to infringe the patent. This
type of infringement is called direct infringement. A patent claim is directly infringed only if
the accused system or method includes each and every element in that patent claim. If you find
that the accused system includes each element or step of the claim, then that system infringes
the claim even if such system contains additional elements or steps that are not recited in the
claim. If the accused system does not contain one or more of the limitations recited in the
claim, then that system or method does not directly infringe that claim.
As I mentioned earlier, Bedrock has asserted Claims 1 and 2 of the ’120 patent against
Yahoo!. Claim 1 is a means-plus-function claim. To directly infringe a means-plus-function
claim, Bedrock must show that Yahoo!’s accused Linux servers meet each and every limitation
of those claims. To establish literal infringement of a claim that includes means-plus-function
requirements, Bedrock must prove two things:
1.

the relevant structure in the accused device performs the identical function I
identified; and

31

National Model Jury Instruction Project, MODEL PATENT JURY INSTRUCTIONS 3.9
(June17, 2009).
32

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).
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2.

the accused device performs the recited function through structure that is the
same as or equivalent to the corresponding structure disclosed in the
specification.33

A structure or set of structures may be found to be “equivalent” to one of the sets of
structures I have defined as being described in the ’120 Patent if a person having ordinary skill
in the field of technology of the ’120 Patent either would have considered the differences
between them to be insubstantial at the time the ’120 Patent issued or if that person would
have found the structures performed the function in substantially the same way to accomplish
substantially the same result. In deciding whether the differences would be “insubstantial,”
you may consider whether a person having an ordinary level of skill in the field of technology
of the patent would have known of the interchangeability of the two structures or sets of
structures. Interchangeability itself is not sufficient; in order for the structures to be
considered to be interchangeable, the interchangeability of the two structures must have been
known to persons of ordinary skill in that art at the time the patent issued. The structure or
set of structures must also have been available at the time the ’120 Patent issued. Structures
are substantially different, not interchangeable, and cannot be equivalents if they are opposites
of one another.34]35 The fact that a structure or a set of structures is known now and is
33

Baran v. Medical Device Technologies, Inc., 2010-1058 (Fed. Cir.) (Aug. 12, 2010).

34

See Planet Bingo v. GameTech, Int’l, 472 F.3d 1338, 1344 (Fed. Cir. 2006) (holding that
under the doctrine of equivalents, “before” can never be equivalent to “after”); Wleklinski
v. Targus, Inc., 258 Fed. Appx. 325, 329-330 (Fed. Cir. 2007) (unpublished) (“As the district
court found, the Targus strap, which has an auxiliary strap means composed of a single
unitary material made of the same fabric, is the fundamental opposite of the claimed
invention, in which the auxiliary strap means requires separate sections made of different
materials. Likewise, a finding of infringement under the doctrine of equivalents would
impermissibly vitiate claim limitations.” (citing Freedom Seating Co. v. Am. Seating Co., 420
F.3d 1350, 1358 (Fed. Cir. 2005) (“[A]n element of an accused product or process is not, as
a matter of law, equivalent to a limitation of the claimed invention if such a finding would
entirely vitiate the limitation.”)); Asyst Techs., Inc. v. Emtrak, Inc., 402 F.3d 1188, 1195
(Fed. Cir. 2005) (“To hold that “unmounted” is equivalent to “mounted” would effectively
read the “mounted on” limitation out of the patent.”); Zodiac Pool Care v. Hoffinger Indus.,
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“equivalent” is not enough. The structure or set of structures must also have been available
at the time the ‘120 Patent issued.
In order to prove direct infringement by literal infringement of a means-plus-function
limitation, Bedrock must prove the above requirements are met by a preponderance of the
evidence.

206 F.3d 1408, 1416 (Fed. Cir. 2000) (“In sum, we agree with the district court that no
reasonable jury could find that a stop which extends to the peripheral edge of a disk is
equivalent to one that is “substantially inward” of the very same disk. To use the words of
our decision in Ethicon Endo-Surgery, 149 F.3d at 1319, 47 U.S.P.Q. 2d (BNA) at 1278, we
agree that the two stops are “not even close.”).
35

Bedrock objects to this instruction as an inaccurate statement of law.

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5.4

INFRINGEMENT WITHIN THE UNITED STATES36
The patent laws apply to conduct within the United States, so Yahoo! can only be found

to be liable if it makes, uses, offers to sell or sells the accused systems within the United States.
For each asserted claim of the ’120 Patent, Bedrock must prove by a preponderance of the
evidence that the accused systems are made, used, sold, or offered for sale within the United
States.37

36

35 U.S.C. § 271; The National Jury Instruction Project, MODEL PATENT JURY
INSTRUCTIONS 3.2 (June 17, 2009).
37

Bedrock objects to this instruction because it duplicates previous instructions.

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6.

WILLFUL INFRINGEMENT38
In this case, Bedrock argues that Yahoo! willfully infringed the claims of Bedrock’s ’120

Patent.
The issue of willful infringement relates to the amount of damages Bedrock is entitled to
recover in this lawsuit if Yahoo! is found to infringe. If you decide that Yahoo! willfully infringed
the claims of Bedrock’s patent, then it is my job to decide whether or not to award increased
damages to Bedrock. [Bedrock proposes: You should not take this factor into account in
assessing the damages, if any, to be awarded to Bedrock.39]
To prove willful infringement, Bedrock must persuade you by clear and convincing evidence
that Yahoo! acted with [Yahoo! proposes: objectively] reckless disregard of the claims of
Bedrock’s patent.40 [Yahoo! proposes: This means that Bedrock has the burden of proving that
it is highly probable that Yahoo! willfully infringed the ’120 patent. This is a significantly
higher burden of proof than for infringement, which was proof by a preponderance of the
evidence.] To show “reckless disregard,” Bedrock must satisfy a two-part test: the first concerns
Yahoo!’s conduct, the second concerns Yahoo!’s state of mind.
When considering Yahoo!’s conduct, you must decide whether Bedrock has proven by clear
and convincing evidence that Yahoo!’s conduct was reckless; that is, that Yahoo! proceeded with
the allegedly infringing conduct with knowledge of the patent, and in the face of an objectively high
risk that it was infringing. [Bedrock proposes: the claims of a valid patent] [Yahoo! proposes:

38

Adapted from the National Jury Instruction Project MODEL PATENT JURY INSTRUCTIONS 4.1
(June 17, 2009); Mirror Worlds, LLC v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D.
Tex. Oct. 1, 2010).

39

From the National Jury Instruction Project MODEL PATENT JURY INSTRUCTIONS 4.1 (June
17, 2009); given in Mirror Worlds, LLC v. Apple, Inc., Civil Action No. 6:08-CV-88 LED
(E.D. Tex. Oct. 1, 2010).
40

In re Seagate Tech. LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007).

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the patent and that the patent was valid]. Because that is an objective issue, the state of mind of
Yahoo! is not relevant to it. [Bedrock proposes: Legitimate or credible defenses to infringement,
even if ultimately not successful, demonstrate a lack of recklessness.41] [Yahoo! proposes:
Legitimate or credible defenses, even if Yahoo! lost on those defenses at trial, demonstrate a
lack of recklessness.]
If you conclude that Bedrock has proven that a Yahoo!’s conduct was [Yahoo! proposes:
objectively] reckless, then you need to consider the second part of the test. [Yahoo! proposes: If
you found Yahoo! to be objectively reckless,] You must decide whether Bedrock proved [Bedrock
proposes: by clear and convincing evidence] [Yahoo! proposes: it is highly probable] that the
unjustifiably high [Bedrock proposes: risk] [Yahoo! proposes: likelihood] of infringement was
known or so obvious that it should have been known to Yahoo!. In deciding whether Bedrock
satisfied the state-of-mind part of the test, you should consider all facts surrounding the alleged
infringement including, but not limited to, the following:
1.

whether Yahoo! acted in a manner consistent with the standards of commerce for its
industry;

2.

whether Yahoo! intentionally copied without a reasonable basis [Bedrock proposes:
an apparatus] [Yahoo! proposes: a system] of Bedrock covered by one or more
claims of the patent, [Bedrock proposes: as distinguished from trying to “design
around” the patent by designing a product that Yahoo! believed did not infringe
those claims.]

3.

[whether or not Yahoo! had pre-suit notice of the ’120 Patent.42]43

41

From the National Jury Instruction Project MODEL PATENT JURY INSTRUCTIONS 4.1 (June
17, 2009); given in Mirror Worlds, LLC v. Apple, Inc., Civil Action No. 6:08-CV-88 LED
(E.D. Tex. Oct. 1, 2010).
In re Seagate, 497 F.3d 1367, 1374 (Fed. Cir. 2007) (“...in ordinary circumstances,
willfulness will depend on an infringer’s prelitigation conduct.”)
42

Bedrock objects to this instruction because it duplicates the language “with knowledge of
the patent” on the preceding page.
43

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4.

whether or not Yahoo! had a reasonable basis to believe that it did not infringe or had
a reasonable defense, such as the patent was not valid.44

From the Court’s Final Jury Instructions in Mirror Worlds, LLC v. Apple, Inc., Civil Action No.
6:08-cv-88-LED, at *12 (E.D. Tex. Oct. 1, 2010).
44

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7.

INVALIDITY

7.1

INVALIDITY – GENERALLY45
Patent invalidity is a defense to patent infringement. Even though the Patent Office examiner

has allowed the claims of a patent, you have the ultimate responsibility for deciding whether the
claims of the patent are valid.
The issuance of a patent by the Patent Office provides a presumption that the patent is valid.
From the issuance of the patent, it is presumed that a claimed invention is “novel,” “useful,” “not
obvious,” and satisfies the other legal requirements for a valid U.S. patent. Each claim of a patent
is presumed valid independently of the validity of the other claims.
In making your determination as to whether a patent claim is valid or invalid, you must
consider each patent and each of the claims of a patent separately and individually, as you did when
you considered whether the claim was infringed or not. If a preponderance of the evidence
demonstrates that a claim in a given patent fails to meet the requirements of the patent laws, then that
patent is invalid. However, if you find that one or more claims of a patent fails to meet the
requirements of the patent laws, it does not necessarily mean that the remaining claims of that patent
are also deficient or invalid.
The presumption of validity remains intact and the burden of proof remains on the party
challenging validity, throughout this litigation. In other words, the burden of proof never shifts to
the patent owner to prove that its patents are valid.46
I will now instruct you on the invalidity issues you should consider.

45

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).

46

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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7.2

ANTICIPATION–PUBLICLY USED OR KNOWN, OR PREVIOUSLY
PUBLISHED47
Yahoo! contends that the asserted claims of the ’120 Patent are invalid because the claimed

invention is not new [Yahoo! proposes: or lacks novelty.]48
For a claim to be invalid because it is not new, all of its requirements must have existed in
a single device or method that predates the claimed invention, or must have been described in a
single previous publication or patent that predates the claimed invention. [Bedrock proposes: You
may not combine two or more items of prior art to prove an invention is not new.]49
In patent law, such previous device, publication or patent is called a “prior art reference.”
If a patent claim is not new we say it is “anticipated” by a prior art reference. Yahoo! must prove
by a preponderance of the evidence that the claim was anticipated. [Yahoo! proposes: Prior art
references must exist before the priority date of the patent. The effective filing date of a patent
application is generally the date that the application was actually filed at the PTO. Here, the
effective filing date of the ’120 Patent is January 2, 1997. Thus, systems, publications and
patents that existed before January 2, 1997 qualify as prior art.]
The disclosure in the prior art reference does not have to be in the same words as the claim,
but all of the requirements of the claim must be there, either stated or necessarily implied, so that
someone of ordinary skill in the relevant field looking at that one reference would be able to make
and use at least one embodiment of the claimed invention.

47

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 5.6 (June 17, 2009).
Adapted from the Court’s Final Jury Instructions in Soverain Software LLC v. Newegg
Inc., No. 6:07-CV-511-LED (E.D. Tex. Apr. 30, 2010).
48

Adapted from the Court’s Final Jury Instructions in Soverain Software LLC v. Newegg
Inc., No. 6:07-CV-511-LED (E.D. Tex. Apr. 30, 2010).
49

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Anticipation also occurs when the claimed invention inherently (necessarily) results from the
practice of what is disclosed in the written reference, even if the inherent disclosure was
unrecognized or unappreciated by one of ordinary skill in the field of the invention.
Here is a list of the ways that Yahoo! can show that a patent claim was not new:

A

if the claimed invention was already publicly known or publicly used by others in the
United States before the date of invention of the ’120 Patent [Yahoo! proposes using
actual date of January 2, 1997].

A

if the claimed invention was already patented or described in a printed publication
anywhere in the world before the date of invention [Yahoo! proposes using actual
date of January 2, 1997]. To qualify as a prior art reference, a “printed publication”
must be at least reasonably accessible to those interested in the field, even if it is
difficult to find.

An electronic publication, including an on-line 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; or

A

if the claimed invention was already described in another published U.S. patent
application or issued U.S. patent that was based on a patent application filed before
the patent holder’s filing date of date of invention [Yahoo! proposes using actual
date of January 2, 1997].

If a patent claim is not new as explained above, you must find that claim invalid.

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7.3

ANTICIPATION–MADE OR INVENTED BY SOMEONE ELSE50
Yahoo! contends that all asserted claims of the ’120 Patent are invalid as anticipated because

the invention was first made or invented by someone else.
If someone other than the named inventor made or invented the invention described in one
or more such patent claims involved in this lawsuit, then each such claim was “anticipated” by the
other invention, and each such claim is invalid. Yahoo! must prove by a preponderance of the
evidence that each such claim was anticipated by the other invention.
Here are two ways that Yahoo! can show that a patent claim was not new because the
invention described in such claim was first made by someone else:
First, if the claimed invention was already made by someone else in the United States before
the date of invention of the ’120 Patent [Yahoo! proposes using actual date of January 2, 1997]
if that other person had not abandoned the invention or kept it secret; and
Second, if Bedrock and Yahoo! dispute who is a first inventor, the person who first conceived
of the claimed invention and who first reduced it to practice is the first inventor; if one person
conceived of the claimed invention first, but reduced it to practice second, that person is the first
inventor only if that person (a) began to reduce the claimed invention to practice before the other
party conceived of it and (b) continued to work with reasonable diligence to reduce it to practice
from a time just before the other party’s conception.
If the invention of a patent claim was first made or invented by someone else as explained
above, you must find the patent claim invalid.

50

From The National Jury Instruction Project, MODEL PATENT JURY INSTRUCTIONS 5.6 (June 17,
2009).
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7.4

ANTICIPATION–STATUTORY BARS51
Yahoo! may prove that claims 1 and 2 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 Yahoo! can show that the ’120 Patent is invalid due to a statutory bar:

A

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. [Yahoo! proposes using “anywhere in the world
before January 2, 1996.”52].
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.

A

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, [Yahoo! proposes using “publicly or commercially
used in the United States before January 2, 1996.”53] and that use was not
primarily an experimental use controlled by the inventor to test whether the invention
worked for its intended purpose.

A

if a device or system using the claimed invention was sold or offered for sale in the
United States, and that claimed invention was ready for patenting before January 2,
1996. The claimed invention is ready for patenting if it was actually built, or if the

51

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 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).
Actual date of one year before filing. This instruction is taken directly from: The
National Jury Instruction Project, MODEL PATENT JURY INSTRUCTIONS 5.6 (June 17, 2009).
52

Actual date of one year before filing. This instruction is taken directly from: The National
Jury Instruction Project, MODEL PATENT JURY INSTRUCTIONS 5.6 (June 17, 2009).
53

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inventor had prepared drawings or other descriptions of the claimed invention that
were sufficiently detailed to enable a person of ordinary skill in the field of the
invention to make and use the invention based on those drawings or descriptions.
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 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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7.5

OBVIOUSNESS54
In this case, Yahoo! contends 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
in written references including the prior art itself. However, teachings, suggestions, and motivations
may also be found” within the knowledge of a person with ordinary skill in the art including
inferences and creative steps that a person of ordinary skill in the art would employ. Additionally,

54

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 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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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 Yahoo! has 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.

2.

Whether the claimed invention applies a known technique that had been used to
improve a similar device or method in a similar way.

3.

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.

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.

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

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general knowledge that would have been available to one of ordinary skill in the field
of the invention.
3.

You should consider any difference or differences between the prior art and the claim
requirements.55 [Yahoo! proposes: You should consider any difference or
differences between the claimed invention and the prior art. In analyzing this
issue, do not focus solely on the differences between the prior art and the
invention because the test is not whether there are differences. Rather, the test
is whether or not the invention, as a whole, would have been obvious to one
having ordinary skill in view of all the prior art at the time the invention was
made. Differences between the claimed invention and the prior art, if any, may
have a bearing on this test.56]

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.

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

3.

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

4.

copying of the claimed invention by others;

5.

unexpected and superior results from the claimed invention;

6.

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

7.

55

commercial success of a product due to the merits 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.

National Jury Instructions Project Model Patent Jury Instructions 5.12.

Adapted from the Court’s Final Jury Instructions in VirnetX, Inc. v. Microsoft Corp.,
Civil Action No. 6:07-CV-80 LED (E.D. Tex. Mar. 15, 2010) (Dkt. No. 376); The National
Jury Instruction Project, MODEL PATENT JURY INSTRUCTIONS 5.12 (June 17, 2009)
56

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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.
Yahoo! 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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YAHOO! PROPOSES INCLUDING THE FOLLOWING TWO SECTIONS:
7.5(a) THE SCOPE AND CONTENT OF PRIOR ART57
To qualify as prior art relevant to ’120 Patent, a reference must be reasonably related
to the claimed invention of the ’120 Patent. A reference is reasonably related if it is in the same
field as the ’120 Patent or is from another field to which a person of ordinary skill in the field
would look to solve a known problem. Remember that prior art is not limited to patents and
published materials, but also includes the general knowledge that would have been available
to one of ordinary skill in the field of the invention.58

7.5(b) DIFFERENCES OVER THE PRIOR ART59
In reaching your conclusion about whether or not claims of the ’120 Patent would have
been obvious at the time the claimed invention was made, you should consider any difference
or differences between the prior art and the claimed requirements.60

Mirror Worlds, LLC v. Apple, Inc., Civil Action No. 6:08-CV-88 LED, at *19 (E.D. Tex.
Oct. 1, 2010); The National Jury Instruction Project, MODEL PATENT JURY INSTRUCTIONS
5.11 (June 17, 2009).
57

58

Bedrock objects to this instruction because it is duplicative of earlier instructions in 7.5.

Mirror Worlds, LLC v. Apple, Inc., Civil Action No. 6:08-CV-88 LED, at *20 (E.D. Tex.
Oct. 1, 2010); The National Jury Instruction Project, MODEL PATENT JURY INSTRUCTIONS
5.12 (June 17, 2009).
59

60

Bedrock objects to this instruction because it is duplicative of earlier instructions in 7.5.

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7.6

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.

the levels of education and experience of persons working in the field;

2.

the types of problems encountered in the field; and

3.

the sophistication of the technology.61

Bedrock contends that a person of ordinary skill in the art of the ’120 Patent would have a
Bachelor of Science degree in Computer Science, where the degree program requires extensive
training and practice in computer programming.
Yahoo! contends, that instead of a bachelor’s degree, one of ordinary skill in the art could
develop the requisite skill with equivalent experience. Thus, Yahoo! contends that a person of
ordinary skill in the art would have a Bachelor of Science degree in computer science or computer
engineering, or equivalent experience, including practical experience writing computer programs.
Because it is your determination to make, you need not adopt either Bedrock’s or Yahoo!’s
contention of the level of ordinary skill in the art.

61

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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7.7

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-in-suit, 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.62

62

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

8.1

DAMAGES63
I will now instruct you on damages. If you find that Yahoo! has infringed one or more valid

claims of the ’120 Patent, you must determine the amount of money damages to which Bedrock is
entitled. [Yahoo! proposes: Each of these determinations must be determined separately and
individually as you did when you considered whether the patents were infringed or invalid.64]
By instructing you on damages, I do not suggest that one or the other party should prevail. These
instructions are provided to guide you on the calculation of damages in the event you find
infringement of a valid patent claim and thus must address the damages issue.
The amount of damages must be adequate to compensate the patent holder for the
infringement, but it may not be less than a reasonable royalty.65 Your damages determination must
not include additional sums to punish Yahoo! or to set an example. You may award compensatory
damages only for the loss that Bedrock proves was more likely than not caused by Yahoo!’s
infringement.

63

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 6.1 (June 17, 2009); 35 U.S.C. § 284.
Mirror Worlds, LLC v. Apple, Inc., Civil Action No. 6:08-CV-88 LED, at *22 (E.D. Tex.
Oct. 1, 2010).
64

65

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 6.1 (June 17, 2009); 35 U.S.C. § 284.
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8.2

DAMAGES–BURDEN OF PROOF66
Where the parties dispute a matter concerning damages, it is Bedrock’s burden to prove by

a preponderance of the evidence that its version is correct. Bedrock must prove the amount of
damages with reasonable certainty, but need not prove the amount of damages with mathematical
precision. However, Bedrock is not entitled to damages that are remote or speculative.

66

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 6.1 (June 17, 2009); 35 U.S.C. § 284; Wechsler v. Macke
Intern. Trade, Inc., 486 F.3d 1286, 1293-94 (Fed. Cir. 2007); Union Carbide Chems. & Plastics
Tech. Corp. v. Shell Oil Co., 425 F.3d 1366, 1372-73 (Fed. Cir. 2005); State Contracting &
Eng’g Corp. v. Condotte Am., Inc., 346 F.3d 1057, 1072 (Fed. Cir. 2003).
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8.3

REASONABLE ROYALTY–DEFINITION67
A royalty is a payment made to a patent holder in exchange for rights to make, use, or sell

the claimed invention. A reasonable royalty is the payment that would have resulted from a
negotiation between a patent holder and Yahoo! taking place just before the time when the
infringement first began. In considering the nature of this negotiation, the focus is on what the
expectations of the patent holder and Yahoo! would have been had they entered into an agreement
at that time and acted reasonably in their negotiations. However, you must assume that both parties
believed the patent was valid and infringed. In addition, you must assume that the patent holder and
Yahoo! were willing to enter into an agreement; your role is to determine what that agreement would
have been. The test for damages is what royalty would have resulted from the hypothetical
negotiation and not simply what either party would have preferred. You may consider expert
opinions as to what the amount of reasonable royalty should be.
In determining the royalty that would have resulted from the hypothetical negotiation, you
may consider real world facts including the following to the extent they are helpful to you:

A

Licenses or offers to license the patent at issue in this case

A

Licenses involving comparable patents

A

The licensing history of the parties

A

Licensing practices in the relevant industry

A

Whether the patent owner had an established policy of refusing to license the patent
at issue

A

The relationship between the patent owner and Yahoo!, including whether or not they
were competitors

67

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 6.6 (June 17, 2009); 35 U.S.C. § 284; Georgia-Pacific
Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970).

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A

The significance of the patented technology in promoting sales of Yahoo!’s products
and earning it profit

A

Alternatives to the patented technology and advantages provided by the patented
technology relative to the alternatives

A

The portion of Yahoo!’s profit that should be credited to the invention as
distinguished from nonpatented features, improvements or contributions

A

Any other economic factor that a normally prudent businessperson would, under
similar circumstances, take into consideration in negotiating the hypothetical
license.68 69

68

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 6.6 (June 17, 2009); 35 U.S.C. §
284; Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970).
69

Yahoo! objects to this instructions as omitting a number of Georgia-Pacific factors, e.g.,
established royalty, nature and scope of licenses, duration of patent and term of
hypothetical license, and expert opinion.
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8.4

[YAHOO! PROPOSES: REASONABLE ROYALTY – FACTORS70 71
In deciding what is a reasonable royalty, you may consider the factors that Bedrock and

Yahoo! would consider in setting the amount Yahoo! should pay. I will list for you a number
of factors you may consider. This is not every possible factor, but it will give you an idea of
the kinds of things to consider in setting a reasonable royalty.
(1)

Any royalties received by Bedrock or its predecessors for the licensing of the
patents-in-suit, proving or tending to prove an established royalty.

(2)

Any rates paid by Yahoo! found to infringe for the use of other patents
comparable to the patents-in-suit.

(3)

The nature and scope of the license, as exclusive or nonexclusive; or as
restricted or unrestricted in terms of territory, or with respect to the parties to
whom the product may be sold.

(4)

Whether or not Bedrock or any of its predecessors had an established policy
and marketing program to maintain its patent exclusivity by not licensing others
to use the inventions or by granting licenses under special conditions designed
to preserve that exclusivity.

(5)

The commercial relationship between the licensor and licensee, such as whether
they are competitors in the same territory and the same line of business.

(6)

The effect of selling the patented inventions in promoting sales of other products
or inventions of Yahoo! found to infringe; the existing value of the inventions
to Bedrock as a generator of sales of its non-patented items; and the extent of
such derivative or convoyed sales.

(7)

The duration of the patent and the term of the hypothetical license.

(8)

The established profitability of the inventions; their commercial success; and
their current popularity.

70

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).
71

Bedrock objects to this instruction as duplicative of the factors in the previous instruction,
which is taken from the National Jury Instruction Project MODEL PATENT JURY
INSTRUCTIONS 6.6, in the Court’s example of patent jury instruction.
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(9)

The utility and advantages of the patented inventions over the old modes or
devices, if any, that had been used for achieving similar results.

(10)

The nature of the patented inventions, the character of the commercial
embodiment of the inventions as owned and produced by Bedrock, and the
benefits to those who have used the inventions.

(11)

The extent to which Yahoo! found to infringe has made use of the patented
inventions and any evidence that shows the value of that use.

(12)

The portion of the profit or of the selling price that may be customary in the
particular business or in comparable businesses to allow for the use of the
inventions or analogous inventions.

(13)

The portion of the profits that is due to the patented inventions, as compared to
the portion of the profit due to other factors, such as unpatented elements or
unpatented manufacturing processes, or features or improvements developed
by Yahoo! found to infringe.

(14)

Expert opinions as to what a reasonable royalty would be.

(15)

The amount that a licensor such as Bedrock and a licensee such as Yahoo!
would have agreed upon if both parties had been reasonably and voluntarily
trying to reach an agreement.

In addition, it is proper for you to consider any economic or business factors that
normally prudent business people would, under similar circumstances, reasonably take into
consideration in negotiating the hypothetical license.]

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8.5

[YAHOO! PROPOSES: REASONABLE ROYALTY – EXPERT OPINION72
You may consider expert opinions as to what the amount of a reasonable royalty should

be. However, the law strictly requires that you may consider the testimony of the damages
experts only if such testimony is relevant and reliable. If you find that the testimony of any
of the damages experts is not relevant and reliable, you may not consider it in deciding the
amount of reasonable royalty.
Expert testimony is not reliable if the expert cannot connect the data upon which he
relies to his testimony in a concrete way. An expert must have “good grounds” for his opinion,
and his opinion must be closely tied to the facts in a case. Even though the law recognizes that
the damages expert may need to approximate in some instances, his testimony must be based
on sound economics and fact.
As I explained earlier, in determining a reasonable royalty, you are to consider a
hypothetical negotiation between the licensor and licensee at the time when infringement first
began. Therefore, it is important that the damages expert base his opinions on data from the
right time period. If you find that the damages experts did not base their opinions on data
from the right time period, it is not reliable, and you must not consider it.]73

72

AIPLA Guide to Model Patent Jury Instructions 21 (1998) (modified); Riles v. Shell
Exploration & Prod. Co., 298 F.3d 1302, 1311 (Fed. Cir. 2002); see also “Reasonable
Royalty (Relevant Factors) supra.
73

Bedrock objects to this instruction on the grounds that it is an anachronism and an
incorrect statement of the law. The instruction does not appear in the current version of
the AIPLA Model Patent Jury Instructions. Reliability is now determined by the Court.
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8.6

DAMAGES LIMITATION - NON-INFRINGING ALTERNATIVES
In determining a reasonable royalty, you may consider whether or not Yahoo! 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. [Yahoo! proposes: A non-infringing
alternative need not have been used to be acceptable.74 The difference in cost between a noninfringing alternative and the infringing instrumentality may serve as the basis for, or a limit
on, the reasonable royalty. Common sense dictates that if Yahoo! could avoid patent
infringement by choosing a non-infringing alternative, the amounts, if any, that it would cost
Yahoo! to choose and implement that alternative are a relevant consideration in how much
Yahoo! would be willing to pay for a royalty.75]76

74

See FCBA Model Patent Jury Instruction (Feb. 2010); Grain Processing Corp. v.
American-Maize Prod., 185 F.3d 1341, 1349 (Fed. Cir. 1999).
75

See Grain Processing Corp. v. American-Maize Prod., 185 F.3d 1341, 1349 (Fed. Cir. 1999)
(rejecting challenge to royalty where difference in cost of using the infringing process and
noninfringing alternative had “effectively capped the reasonable royalty award”); Zygo
Corp. v. Wyko Corp., 79 F.3d 1563, 1571 (Fed. Cir. 1996) (rejecting calculation of royalty
rate that did not take into account “stronger position” of alleged infringer in hypothetical
negotiation due to available non-infringing alternative); see also Lindeman
Maschinenfabrik GmbH v. American Hoist & Derrick Co., 895 F.2d 1403 (Fed. Cir. 1990)
(affirming award of nominal damages); Middleton v. Wiley, 195 F.2d 844 (8th Cir. 1952)
(ordering district court to enter award of 75 cents per day based on daily cost to use
infringing equipment).
76

Bedrock objects to this instruction as an inaccurate and/or incomplete statement of the
law.
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8.7

[YAHOO! PROPOSES: DAMAGES LIMITATION – DESIGN AROUND
In determining a reasonable royalty, you may consider whether or not Yahoo! had

available to it, could have created, or did create an alternative design that does not infringe the
patent, otherwise known as a design-around. The design around need not have been actually
created, so long as it was available to Yahoo! on the date of the hypothetical negotiation. The
cost of obtaining or making the design- around may be relevant to how much Yahoo! would
have agreed to pay in the hypothetical negotiation.]77

77

Bedrock objects to this instruction as an inaccurate or incomplete statement of the law
that is likely to mislead or confuse the jury.

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9.

INSTRUCTIONS FOR DELIBERATIONS78
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 judges–judges 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.79
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
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
78

FIFTH CIRCUIT PATTERN JURY INSTRUCTIONS – CIVIL, § 3.1 General Instruction for Charge

79

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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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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