Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1245

Proposed Jury Instructions by Eolas Technologies Incorporated, The Regents of the University of California. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Appendix A, # 4 Appendix B, # 5 Appendix C, # 6 Exhibit C, # 7 Exhibit D, # 8 Exhibit E, # 9 Exhibit F, # 10 Exhibit G, # 11 Exhibit H, # 12 Exhibit I, # 13 Exhibit J, # 14 Exhibit K)(McKool, Mike)

EXHIBIT A

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
TYLER DIVISION

)
Eolas Technologies Incorporated and The Regents of )
)
the University of California,
)
)
Plaintiffs and Counterdefendants,
)
)
vs.
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Adobe Systems Inc.; Amazon.com, Inc.; Apple Inc.; )
)
CDW Corp.; Citigroup Inc.; eBay Inc.; Frito-Lay,
)
Inc.; The Go Daddy Group, Inc.; Google Inc.; J.C.
)
Penney Corporation, Inc.; JPMorgan Chase & Co.;
New Frontier Media, Inc.; Office Depot, Inc.; Perot )
)
Systems Corp.; Playboy Enterprises International,
)
Inc.; Rent-A-Center, Inc.; Staples, Inc.; Sun
Microsystems, Inc.; Texas Instruments Inc.; Yahoo! )
)
Inc.; and YouTube, LLC,
)
)
Defendants and Counterclaimants.

Civil Action No. 6:09-CV-446-LED

JURY TRIAL DEMANDED

JOINT PROPOSED PRELIMINARY JURY INSTRUCTIONS1,2

1

The Parties reserve the right to amend, supplement, or modify these proposed Jury Instructions
as the case proceeds. Additionally, the Parties do not waive any objection to instructions on issues
that are currently the subject of pending or resolved motions. Such objections are hereby reasserted.
2

While not every defendant requests every aspect of the proposed set of instructions contained
herein, Defendants submit these instructions at this stage of the case as a basis for the parties’ meet
and confer process.

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I.

PRELIMINARY INSTRUCTIONS3

Duty of the Jury and Issues to be Decided

MEMBERS OF THE JURY:
I am now giving you some preliminary instructions. Your role as the jury is going to be
to decide all disputed questions of fact. And it is my role as the Judge to decide all questions of
law and procedure. I will provide you with instructions on the rules of law and procedure that
you must follow in making your decision in this case. At the end of the trial, I will give you
more detailed, final instructions on the law and procedure you must follow in reaching a verdict
in this case.
Today, we are beginning the actual trial of the case.

After I have completed my

preliminary instructions, you will then hear the attorneys’ opening statements. An opening
statement is an overview of what each side expects the evidence will show, but, remember, what
the attorneys say is not evidence. It is only intended as a roadmap to help you understand the
evidence as you hear it during the course of the trial.
The evidence that you will actually decide the case on is not what the attorneys say in
opening statement or closing argument but the testimony you hear from that witness stand and
the exhibits that are admitted into evidence.
After the opening statements, the Plaintiffs will then present their evidence; then the
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Source: Adapted from the Joint Proposed Preliminary Instructions in Alacatel-Lucent USA Inc. v.
Amazon.com, Inc., No. 6:09-CV-422 (E.D. Tex. Oct. 2011) (Dkt. No. 466); transcript of the Court’s
Preliminary Jury Instructions in Cheetah Omni LLC v. Verizon Services Corp., et al, No. 6:09-CV260 (E.D. Tex. March 2011) (Dkt. No. 447).

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Defendants will present their evidence; and finally, the Plaintiffs will present what we call any
rebuttal evidence.
Once all of the evidence is in, I will then give you my final instructions, after which time
both sides will present their closing arguments. And, finally and only then will you retire to the
jury room and for the first time begin to discuss the case among yourselves, and in your
collective wisdom, reach a verdict in this case.
During the course of the trial, you should keep an open mind until you have heard all of
the evidence, my final instructions, which is called the Court’s Charge, and the attorneys’
closing arguments. Be sure to pay close attention to all of the testimony and evidence. To help
you, you may take notes during the trial, if you wish. A juror notebook has been provided for
your convenience.
If you would, write your name on the front cover of your juror notebook. On the left, you
will see a steno notebook. Take that notebook out, if you would, and write your name on the
front cover of the notebook. That will be your notebook to keep during the course of the trial.
You can keep it on the inside of the black juror notebook, which has the copy of the patents in it.
These will be turned in each day and then will be returned to you the following day.
Everything you write in your notebook will be kept confidential and will be shredded at the end
of the case.
You do not have to take notes; but if you do, don't get so involved in your note-taking
that you become distracted and miss part of the testimony. Your notes are to be used as an aid to

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your memory, and if your memory should later be different than your notes, then you should rely
on your memory and not your notes. Just because something gets written down on the notepad
doesn’t make it anymore important than your recollection or another juror’s recollection. So
don’t be unduly influenced by the notes that others may take.
Until this trial is over, do not discuss this case with anyone and do not permit anyone to
discuss this case in your presence. This includes your family, friends, and even your fellow
jurors. So when you take a break or when we break for lunch or when you’re walking to the car,
there might be a natural tendency, if you’re walking and chatting with one of your fellow jurors,
to say something about the case. Again, please don’t. The reason for that is, as the jury, you’re
working as a unit, and it would be improper and could jeopardize the case if two or three of you
started discussing the case among yourselves. You shouldn’t discuss it at all until the end of the
case when you begin your deliberations, and then you should only discuss it with all eight of you
present.
So, for example, if someone has to go to the bathroom during your final deliberations,
you should stop discussing the case until that person comes back. The reason for that is simple:
So that all of you will hear everything that is said in reaching your collective decision as to the
verdict in this case.
If anyone should attempt to discuss this case with you or approach you concerning this
case, you should inform me immediately through my court staff.

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During this trial, you should hold yourself completely apart from the people involved in
the case; the parties, the witnesses, and the attorneys and the persons associated with them. It is
important not only that you be fair and impartial but also that you appear to be fair and impartial.
And that is why you should not have any contact with any of the persons involved in the case.
And they understand that. They’re not going to be talking to you in the hallway or
elevators. They’re not being rude, and they know you're not being rude by not chatting with them
as well.
Also, if any of you happen to use a social networking internet site or tool, such as
Facebook, MySpace, or Twitter, you should not discuss, mention, or post updates in any manner
about this trial or your involvement in it or the case. Likewise, do not send or receive text
messages about the case.
You should also not make any independent investigation of any fact or matter in this
case. Do not learn anything about the case from any other outside source. Do not watch
television or read the newspaper about this case. Do not use the internet or Google to find out
more information about the case, the parties, or the attorneys in this case.
For example, if you have a home computer, during this case, do not go home and start
trying to figure things out on your own. You are to be guided solely by the evidence in this case,
only by what you see and hear here in this courtroom, not by anything outside the courtroom.
Again, that’s why that would be improper to do any searches or investigation. It would not be
legally admissible evidence. So please refrain from that.

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During trial it may be necessary for me to confer with the lawyers out of your hearing or
to conduct a part of the trial out of your presence. I will handle these matters as briefly and as
conveniently for you as I can, but you should remember that they are a necessary part of any
trial.
The Parties and Nature of the Case
This is a patent case that involves two patents. Plaintiffs Eolas Technologies, Inc. and
the Regents of the University of California are asserting certain claims of two patents. Those
patents are U.S. Patent No. 5,838,906 and U.S. Patent No. 7,599,985. Patents are often referred
to by their last three digits, such as the ’906 Patent and the ’985 Patent. These patents will also
be collectively referred to as the “patents-in-suit.”

Plaintiffs allege that

and that Plaintiffs are entitled to damages for such infringement. Plaintiffs must
prove their infringement claims by a preponderance of the evidence. We'll discuss what that term

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means in a minute. Defendants deny such infringement and damages. Defendants also allege
that the ’906 and’985 Patents are invalid as being either anticipated by or obvious in light of
what is called prior art and not supported by written description in the patent.

Generally, for the ’906 and’985 Patents, there are three questions you will be called upon to
answer at the end of the case.
No. 1: Is one or more of the claims of the patent infringed?
No. 2: Are any of the claims of the patents invalid?

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And No. 4. If a patent claim is infringed, valid,
what are the damages for the infringement?

Patent Protection
Now, let me visit with you about our patent system. You've seen the video. You saw
that prior to jury selection about how the U.S. patent system works.
The United States Constitution empowers the United States Congress to enact patent laws
and issue patents to protect inventions. The purpose of the patent system is to help advance
science and technology.

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The patent system achieves this purpose by granting to the owner of a patent the right, for
the life of the patent, to exclude any other person from making, using, offering for sale, or selling
anywhere in the United States the invention covered by the patent.
A patent has a life for a limited amount of time, which, for the patents involved in this
case, have not yet ended.

Once a patent expires, the invention then becomes part of what we call the public
domain, which means that anyone is then free to use it and the patent owner may no longer
exclude anyone from making use of the invention claimed in the patent.
However, during the term of the patent, if another person, without the patent owner'’s
permission, makes, uses, sells, or offers to sell something that is covered by the claims of the
patent, then that person is said to infringe the patent.
The patent owner may enforce a patent against persons or companies believed to be
infringers in a lawsuit in federal court.
Everyone, however, has the right to use existing knowledge and principles. A patent
cannot remove from the public the ability to use what was known or obvious before the
invention was made or patent protection was sought.
Thus, to be entitled to patent protection, an invention must be new, useful, and nonobvious.

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Patent Prosecution
To obtain a patent, the applicant must file a patent application with the United States
Patent Office.
After
the applicant files a patent application, a Patent Examiner examines the application to determine
whether the invention described in the patent application meets the requirements of the patent
laws for patentable inventions.
In examining a patent application, the Patent Examiner makes a search in the Patent
Office records for prior art pertinent to the claims of the patent application. The Patent Office
records may or may not contain all of the prior art pertinent to the claims of the patent
application.
The prior art is defined by statute, and I will give specific instructions, after the close of
evidence, as to what constitutes prior art. But, generally, prior art is technical information, such
as journals, publications and patents, products and knowledge that was already known to the
public prior to the time the person named as the inventor on the patent came up with his or her
invention.

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If the Examiner concludes that the legal requirements for a patent have all been satisfied,
then the Patent Examiner allows the claims, and the application then issues as a United States
patent.
This process, from the filing of the patent application to the issuance of the patent, is
what is called the patent's prosecution.
The record of papers relating to the patent prosecution is referred to as the prosecution
history, or the file history. In other words, it’s the written history of what happened during the
prosecution of the patent before the Patent Office.

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Parts of a Patent
You have been provided with copies of the two patents-in-suit in your notebook. As an
example, please refer to the ’906 patent in your binder. It's at Tab ____.
Look at the first page of the ’906 patent. It provides identifying information. You’ll
notice up in the right-hand corner, you'll see Patent Number 5,838,906. That is the patent
number for the ’906 patent, which is identified by the last three digits.
Next, you’ll see the date of the patent, November 17, 1998. That’s the date that the patent
issued.
In the left-hand column, you'll see the inventors’ names. And then you'll see the next
line, Assignee – that’s who the patent was assigned to – The Regents of the University of
California, one of the Plaintiffs in this case.
You will then see down near the bottom, prior art publication data. And you will see
several references of prior art publications that were considered by the Patent Office when
deciding to issue the patent.
Next, you will see the abstract. On the right-hand column near the middle, you will see a
paragraph titled abstract. The abstract is a brief statement about the subject matter of the
invention.
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On the next several pages are drawings, which appear as Figures 1 through 10. The
drawings depict various aspects or features of the invention. They are described in words later in
the patent.
So flip on over past the drawings. Then you'll see a typewritten page with two columns, a
Column 1 and 2. This begins what’s called the written description. In this portion of the patent,
each page is divided into two columns, which are numbered at the top.
See the Column 1 and Column 2. You'll also see down the margin between the two
columns in the middle of the page are numbers. These are line numbers: 5, 10, 15, 20, and so
forth. And the reason for this is it’s for ease of reference.

For example, if you wanted to look at Column 1, Line 18, you would find what’s called
the background of the invention. So at any point in the testimony, if someone’s testifying about
the specification or you see a reference to the specification in some of the documents, it will be
referred to by Column and Line numbers. If you’ll notice on the next page, it continues with
Columns 3, 4, et cetera.
Now, let me step through the written description with you. You will see a number of
paragraphs beginning in Column 1.

As I mentioned, you will see the background of the

invention. Then in Column 6, there's a summary of the invention in column 7, a brief description

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of the drawings, and in Column 8 a detailed description of example embodiments of the
invention.
Then flipping all the way over to Column 16, you’ll find that the written description in
the patent ends with numbered paragraphs that are called claims.
If you'll look in Column 16, Line 62, it says:
What is claimed is; and then No. 1, A method for running an application program in a
computer network environment … And then it lists a number of elements of that claim.
You'll see that the claims continue on through the next page through Column 18, Claim
No. 10 at the end. So this patent has 10 different claims in it. Not all of those claims are asserted
in this case, and the attorneys will visit with you about which claims are.
Significance of Patent Claims
Let me visit with you about the significance of the patent claims. The claims of a patent
are a main focus of a patent case, because the claims are what define the patent owner’s rights
under the law; that is, the claims define what the patent owner may exclude others from doing
during the term of the patent.
The claims of a patent serve two purposes. First, they set the boundaries of the invention
covered by the patent.
Second, they provide notice to the public of those boundaries. The claims of the patent
are what are infringed when patent infringement occurs, because the claims define what the
patent is.

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Thus, when a product or method is accused of infringing the patent, the patent claims are
compared to the accused product or method to determine whether there is infringement.
And you’ll see this in the testimony. You'll hear experts from both sides that will take
each of the claims that are asserted in this case; they will list the elements of each of the claims;
and they will have testimony about whether each of these elements is or is not met by the
accused products.
The claims are also at issue when the validity of a patent is challenged. In reaching your
determination with respect to infringement and validity, you must consider each claim
separately.
Independent and Dependent Patent Claims
Patent claims 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. In other words, it’s not
necessary to look at any other claim to determine what an independent claim covers.
For example, in the ’906 patent, if you'll look at Claim No. 1, which is in Column 16,
Line 62, you’ll see Claim No. 1, which starts with, “A method for running an application
program in a computer network environment …”

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Now, a dependent claim refers to at least one other claim in the patent. A dependent
claim includes each of the limitations of the other claim to which it refers as well as the
additional limitations recited in the dependent claim itself.
Therefore, to determine what a dependent claim covers, it is necessary to look at both the
dependent claim and the other claims to which it refers.
For example, turning now to Column 17, Line 29, Claim 2 is a dependent claim. Claim 2
is not at issue in this case, but is presented as an example only. Claim 2 says: “The method of
claim 1, wherein said executable application is a controllable application and further comprising
the step of:”
That is the wording of a dependent claim. As you can see, it refers back to Claim 1. To
determine what the Dependent Claim 2 covers, it must satisfy all of the elements of not only
Claim 2 but Claim 1 as well, the independent claim to which it refers.
If an independent claim is not infringed, then
dependent claims depending from that independent claim cannot be infringed. If an independent
claim is infringed, then you still have to determine if the additional limitation or limitations of
the

dependent claim are met.

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Source: Adapted from the Joint Proposed Preliminary Instructions in Alcatel-Lucent USA Inc. v.
Amazon.com, Inc., 6:09-CV-422 (E.D. Tex. Oct. 2011) (Dkt. No. 466).

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I know that all sounds complicated. There's complicated terminology. You’re going to
have a lot of good experts in helping you understand all of this as we work through it.
Meaning of Patent Claims
While the claims define the inventions, sometimes there is a disagreement between the
parties as to what certain words or terms in the claims mean. When this happens, the parties ask
the Court to interpret these terms in light of the patent as a whole. This is to help resolve their
disagreement and to give you, the jury, guidance in applying the claims to the facts of the case.
This happened in this case, and at some point prior to trial, we had a hearing where both
sides came in and said: Your Honor, we have a disagreement as to what these words in the claim
mean. Plaintiffs would say we think it means X. Defendants would say we think it means Y.
And they would submit it to me, and I would then interpret those words in light of the
specification, and gave them a claim construction of those terms.
And they and you are bound by the construction that I have given to those terms.

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You, the attorneys, the parties, and the experts will all be guided by the construction I
have given to these terms. You must use these meanings when you decide the issues of
infringement and invalidity in the case.
Burden of Proof
Now, the issues to be decided by you, as I mentioned earlier, there are really three
questions or issues that you will be asked to resolve by the verdict you return in this case.
Those issues are, No. 1, infringement; No. 2, invalidity;

and, No. 4, damages.
Plaintiffs have the burden of proof on the issues of infringement and damages.
Defendants have the burden of proof on the issue of invalidity

In any legal action, facts must be proved by a required standard of evidence known as the
burden of proof. You have probably heard of the “beyond a reasonable doubt” burden of proof
required in criminal cases. This is the very highest burden of proof. It is not involved in this
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case. In a patent case such as this, there are two different burdens of proof that are used. The
first is called preponderance of the evidence.

The second is called clear and convincing

evidence.
The preponderance of the evidence burden of proof means that you must be persuaded
that what the party seeks to prove is more probably true than not true. Put another way, if you
were to put the evidence for and against the party who must prove the fact on the opposite sides
of the scale, the preponderance of the evidence standard requires that the scale tip at least
somewhat toward the party that has the burden of proof.
In this case, Plaintiffs have the burden of proving infringement and damages by the
preponderance of the evidence standard.
Defendants’ burden of proof for invalidity however, is clear and convincing evidence.

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Duty of the Jury
I want to discuss your duties as jurors. Really, you have two duties. Your first duty is to
decide the facts from the evidence in this case. That is your job and yours alone. Your second
duty is to apply the law that I give you to the facts. You must follow the instructions I give you
even if you disagree with them.
This just about concludes my preliminary instructions. Do not be concerned if you feel a
little bit lost at this point.
I will be giving you much more detailed, written final instructions at the end of the case
that will have all of these instructions in much greater detail, accompanied by a verdict form that
will ask you some very simple questions dealing with these three issues of infringement,
invalidity, and damages.
By the time you get to those questions, you will have a much greater understanding and
confidence in answering them than you probably do today before you have heard any of the
evidence.
Also, let me reassure you, you do not have to be an expert on patent law or the field of
the invention. We have very fine attorneys on both sides who will do a good job of simplifying
and explaining all of this to you, and they will call very capable experts who will help you to
understand the issues and facts of this case.

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I have tried many of these cases, and almost always by the end of the case, the jury feels
very comfortable and confident in deciding the issues in the case. I’m sure your experience will
be no different.
It is now time for opening statements and the Court will recognize counsel for the
Plaintiffs for purposes of opening statement.

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