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 B

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

EOLAS TECHNOLOGIES
INCORPORATED
Plaintiff,
v.
ADOBE SYSTEMS INC., et al.,
Defendants.

§
§
§
§
§ CIVIL ACTION NO. 6:09-CV-00446-LED
§
§
JURY TRIAL
§
§
§

JOINT PROPOSED FINAL JURY INSTRUCTIONS1,

1

Plaintiffs and Defendants reserve the right to modify or amend these proposed instructions prior to
the Court’s charge conference if so warranted. The parties, except CDW, Go Daddy and JCP, agree
that for patent exhaustion, any license defense and related issues, proposing meaningfully tailored
instructions–in the event all or portions of these issues are tried to a jury–requires further
development of the record, including judicial guidance. Accordingly the parties, except for
Defendants CDW, Go Daddy and JCP, have not included instructions on such issues here and by
agreement reserve all rights to propose or oppose such instructions as the case evolves.
2

While not every defendant requests every aspect of the proposed set of instructions contained
herein, Defendants submit these group instructions at this stage of the case.
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INITIAL INSTRUCTIONS3

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.
1.1

GENERAL INSTRUCTIONS
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.

3

From the Court’s Final Jury Instructions in Alcatel-Lucent USA Inc. v. Amazon.com, Inc., No. 6:09CV-422 (E.D. Tex. Oct. 2011) (Dkt. No. 482); Bedrock Computer Technologies LLC v. Google,
Inc., Civil Action No. 6:09-CV-269 LED (E.D. Tex. April 15, 2011); 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. 6:07CV-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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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.

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1.2

CONSIDERING WITNESS TESTIMONY4
You the jurors are the sole judges of the credibility of all witnesses and the weight and effect

of all evidence. 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.
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

4

Verbatim 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); see also Bedrock Computer Technologies
LLC v. Google, Inc., Civil Action No. 6:09-CV-269 LED (E.D. Tex. April 15, 2011).

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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.

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1.3

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 and
otherwise considered by you insofar as possible the same as if the witness had been present and had
testified from the witness stand in court. In addition, neither party is required to call every possible
witness to the stand.
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.

5

From the Court’s Final Jury Instructions in Alcatel-Lucent USA Inc. v. Amazon.com, Inc., No. 6:09CV-422 (E.D. Tex. Oct. 2011) (Dkt. No. 482); Mirror Worlds, LLC v. Apple, Inc., Civil Action No.
6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010); see also Bedrock Computer Technologies LLC v.
Google, Inc., Civil Action No. 6:09-CV-269 LED (E.D. Tex. April 15, 2011).
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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.
The parties have stipulated, or agreed, to some facts in this case. When the lawyers on both
sides stipulate to the existence of a fact, you must, unless otherwise instructed, accept the stipulation
as evidence, and regard that fact as proved.

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1.4

EXPERT WITNESSES
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.

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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.
Plaintiffs, The Regents of The University of California, referred to as “The University of
California,” and Eolas Technologies Incorporated, referred to as “Eolas,” [
contend that the Defendants Adobe Systems Inc. (“Adobe”),
Amazon.com, Inc. (“Amazon”), CDW Corp. (“CDW”), Citigroup Inc. (“Citigroup”), The Go Daddy
Group, Inc. (“Go Daddy”), Google Inc. (“Google”), YouTube LLC (“YouTube”), J. C. Penney
Company, Inc. (“J.C. Penney”), Staples, Inc. (“Staples”) and Yahoo! Inc. (“Yahoo”) (collectively,
“Defendants”) have in the past and/or continue to directly and/or indirectly infringe, by way of
inducement and/or contributory infringement of certain claims of U.S. Patent No. 5,838,906 (“the
’906 patent”) and U.S. Patent No. 7,599,985 (“the ’985 patent”), by providing the embedded
interactive functionalities on their accused websites, listed on Appendix B attached to these
instructions.

The Regents of the University of California and Eolas assert also that Adobe’s,

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Amazon’s, Citigroup’s, Google’s and Yahoo’s infringement is willful. The University of California
and Eolas are seeking damages for Defendants’ alleged infringement.
Defendants contend that they do not directly infringe any claim of the patents-in-suit.
Defendants also contend that they have not indirectly infringed the patents-in-suit by either inducing
others to infringe and/or contributorily infringing the patents-in-suit. Furthermore, Defendants deny
that they have willfully infringed. You must determine infringement separately with respect to each
Defendant. Defendants also contend that the Asserted Claims of the patents-in-suit are invalid.10
Invalidity is a defense to infringement. Generally, Defendants contend that the ’906 and ’985
patents are invalid because the claimed inventions were not new, would have been obvious to one
of ordinary skill in the art and fail to have an adequate written description.

As such, Defendants contend that
Plaintiffs are not entitled to any damages.]
Your job is to decide whether the asserted claims of the ’906 Patent and the ’985 Patent have
been infringed, by when they have been infringed, and whether any of the asserted claims of those
patents are invalid

10

.

AIPLA’s Model Patent Jury Instructions at § II.

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3.

INSTRUCTION ON THE BURDENS OF PROOF

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]

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)
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4.

MEANING OF THE CLAIM TERMS18

4.1

PATENT CLAIMS

As I told you at the beginning of trial,

18

Adapted from the Court’s Final Jury Instructions in Alcatel-Lucent USA Inc. v. Amazon.com, Inc.,
No. 6:09-CV-422 (E.D. Tex. Oct. 2011) (Dkt. No. 482); Cheetah Omni LLC v. Verizon Services
Corp., No. 6:09-CV-260 (E.D. Tex. March 2011); Bedrock Computer Technologies LLC v. Google,
Inc., Civil Action No. 6:09-CV-269 LED (E.D. Tex. April 15, 2011); Mirror Worlds, LLC v. Apple,
Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010).

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4.2

INSTRUCTIONS ON CONSTRUCTION OF THE CLAIMS19
In deciding whether or not an accused
infringes a patent, the first step is to understand

the meaning of the words used in the patent claims.
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. Before I instruct you about the meaning of the words of the
claims, I will explain to you the different types of claims that are at issue in this case. It may be
helpful to refer to the copies of the patents that you have been given as I discuss the claims at issue
here.

19

Adapted from the Court’s Final Jury Instructions in Bedrock Computer Technologies LLC v.
Google, Inc., Civil Action No. 6:09-CV-269 LED (E.D. Tex. April 15, 2011); Mirror Worlds, LLC
v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010).
20

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4.3

OPEN-ENDED OR “COMPRISING” CLAIMS21

“Comprising” and “comprise” mean “including” or “containing but not limited to.” That is, if you
decide that an accused product or the use of an accused product includes all the requirements or
steps in that claim, the claim is infringed. This is true even if the accused method includes
components or steps 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.22

21

Adapted from the Court’s Final Jury Instructions in Bedrock Computer Technologies LLC v.
Google, Inc., Civil Action No. 6:09-CV-269 LED (E.D. Tex. April 15, 2011); Mirror Worlds, LLC
v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010)
22

Adapted from the Court’s Final Jury Instructions in Bedrock Computer Technologies LLC v.
Google, Inc., Civil Action No. 6:09-CV-269 LED (E.D. Tex. April 15, 2011); Mirror Worlds, LLC
v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010)
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4.4

INDEPENDENT AND DEPENDENT CLAIMS
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.
In this case, Claims 1 and 6 of the ’906 patent and claims 1, 16, 20, 36, and 40 of the ’985 patent are
independent claims.
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. In this way, the claim “depends” on another claim. To
determine what a dependent claim covers, it is necessary to look at both the dependent claim and
any other claim or claims to which it refers. Claims 3, 10, 18, 22, 38, and 42 of the ’985 patent are
dependent claims.
In order to find infringement of a dependent claim, you must first determine whether the
independent claim to which it refers has been infringed. Thus, you must consider all limitations of
both the dependent claim and independent claim from which it depends. If you decide that the
independent claim has not been infringed, then the dependent claim cannot have been infringed. If
you decide that the independent claim has been infringed, you must then separately determine
whether each additional requirement of the dependent claim has also been included in the accused
product. If each additional requirement has been included, then the dependent claim has been
infringed.

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4.5

INTERPRETATION OF CLAIMS24
In deciding whether or not the accused technology does or does not infringe a patent claim,

or whether the asserted prior art does or does not invalidate a patent claim, the first step is to
understand the meaning of the words used in the patent claims. The meaning given to the words in
the patent claims must be the same for all issues in the case.
As I stated earlier, it is my job as Judge to determine what the patent claims mean and to
instruct you about that meaning. In accordance with that duty, I have interpreted the meaning of
some of the language in the patent claims involved in this case. My interpretation of those claims
appears in Appendix A to this Charge. You must accept the interpretations contained in Appendix
A as correct. The claim language I have not interpreted for you in Appendix A is to be given its
ordinary and accustomed meaning as understood by one of ordinary skill in the field of technology.

24

Adapted from Alacatel-Lucent USA Inc. v. Amazon.com, Inc., No. 6:09-CV-422 (E.D. Tex. Oct.
2011) (Dkt. No. 482); Cheetah Omni, LLC v. Verizon Services Corp., et al., No. 6:09-CV-260 (E.D.
Tex. March 2011) (Dkt. No. 437).
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4.6

GLOSSARY OF PATENT TERMS
A glossary of patent terms is also contained in Appendix C to this charge.

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5.

INFRINGEMENT

5.1

DETERMINING INFRINGEMENT26
Any person or business entity that, without the patent owner’s permission, makes, uses, sells,

or offers to sell
that is covered by at least one claim of a patent, before the patent
expires, infringes the patent. In this case, The Regents of the University of California and Eolas
assert that Defendants have infringed certain claims of the ’906 Patent and the ’985 Patent.
Plaintiffs have the burden of proving infringement by a preponderance of the evidence.
Only the claims of a patent can be infringed. You must consider each claim individually.
You must compare each of the asserted claims, as I have defined them, to each of Defendants’
accused
and determine whether or not there is infringement. There may be
infringement as to one claim but no infringement as to another. You must decide infringement as
to each Defendant separately, and you must also consider each accused product individually.
In order to prove infringement, Plaintiffs must prove that by a preponderance of the evidence
that Defendants’ accused
and methods include each and every requirement or limitation of the claims. If
Defendants’ accused systems or methods omit any requirement recited in the asserted patent claims,
then there is no infringement for that claim.

26

Bedrock Computer Technologies LLC v. Google, Inc., Civil Action No. 6:09-CV-269 LED (E.D.
Tex. April 15, 2011).

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5.2

DIRECT INFRINGEMENT – LITERAL INFRINGEMENT27
You must decide whether Defendants have made, used, sold or offered for sale within the

United States apparatuses, instrumentalities or methods covered by one or more of the asserted
claims of the ’906 Patent and the ’985 Patent. You must compare each claim to the Defendants’
accused
to determine whether every requirement of the claim is included in the
accused
.
To prove literal infringement, Plaintiffs must prove
that
a Defendant’s accused
includes every requirement or step in a single claim of the ’906
Patent and the ’985 Patent.

If a Defendant’s
omit
any limitations or requirement in Plaintiffs’ patent claims, the Defendant does not infringe that

27

Adapted from the Court’s Final Jury Instructions in Bedrock Computer Technologies LLC v.
Google, Inc., Civil Action No. 6:09-CV-269 LED (E.D. Tex. April 15, 2011); Mirror Worlds, LLC
v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010); The National Jury
Instruction Project, MODEL PATENT JURY INSTRUCTIONS, Instruction 3.2 (June 17, 2009).
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claim. In making your determination, you must consider each claim separately, and each accused
instrumentality and method of use separately.
For direct infringement, the Plaintiffs are not required to prove that a Defendant intended to
infringe or knew of the ’906 Patent and ’985 Patent.29

29

In Court’s Final Jury Instructions in Bedrock Computer Technologies LLC v. Google, Inc., Civil
Action No. 6:09-CV-269 LED (E.D. Tex. April 15, 2011); Mirror Worlds, LLC v. Apple, Inc., Civil
Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010); The National Jury Instruction Project,
MODEL PATENT JURY INSTRUCTIONS, Instruction 3.2 (June 17, 2009).
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5.4

INDIRECT INFRINGEMENT
Plaintiffs allege that Defendants indirectly infringed the patent. There are two types of

indirect infringement: inducing infringement and contributory infringement. The act of encouraging
or inducing others to infringe a patent is called “inducing infringement.” The act of contributing to
the infringement of others by, for example, supplying them with components for use in the patented
invention, is called “contributory infringement.”32

32

Sources: THE NATIONAL JURY INSTRUCTION PROJECT’S MODEL PATENT JURY INSTRUCTIONS, at
3.10 (2009) (citing 35 U.S.C. §§ 271(b), (c)).
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33

Adapted from VirnetX, Inc. v. Microsoft Corp., Civil Action No. 6-07-CV-80 LED (E.D. Tex.
March 15, 2010).
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The parties will continue to meet and confer to narrow their disagreements with respect to the
instruction on inducing infringement.
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The parties will continue to meet and confer to narrow their differences with respect to the
instruction on contributory infringement.
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6.

WILLFUL INFRINGEMENT48
In this case, The Regents of the University of California and Eolas argue that the Defendants

Adobe, Amazon, Citigroup, Google and Yahoo willfully infringed the claims of the ’906 Patent and
the ’985 Patent.
The issue of willful infringement relates to the amount of damages Plaintiffs are entitled to
recover in this lawsuit. If you decide that a Defendant willfully infringed the claims of an asserted
patent, then it is my job to decide whether or not to award increased damages to the Plaintiffs. You
should not take this factor into account in assessing the damages, if any, to be awarded to the
Plaintiffs.
To prove willful infringement, Plaintiffs must persuade you by clear and convincing evidence
that a Defendant acted with

or reckless disregard of the claims

of the ’906 Patent or the ’985 Patent. To show “reckless disregard,” Plaintiffs must satisfy a two-part
test: the first concerns the Defendant’s conduct, the second concerns the Defendant’s state of mind.
When considering the Defendants’ conduct, you must decide whether Plaintiffs have proven
by clear and convincing evidence that the Defendant’s conduct was reckless; that is, that the
Defendant proceeded with the allegedly infringing conduct with knowledge of the patent, and in the
face of an unjustifiably high risk that it was infringing the claims of a valid
patent. Because that is an objective issue, the state of mind of the Defendant is

48

Adapted from the National Jury Instruction Project Model Patent Jury Instructions § 4.1 (June 17,
2009).
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not relevant to it. Legitimate or credible defenses to infringement, even if ultimately not successful,
demonstrate a lack of recklessness.
If you conclude that Plaintiffs have proven that a Defendant’s conduct was reckless, then you
need to consider the second part of the test. You must determine whether Plaintiffs proved by clear
and convincing evidence that the unjustifiably high risk of infringement was known or so obvious
that it should have been known to the Defendant. In deciding whether Plaintiffs satisfied the state-ofmind part of the test, you should consider all facts surrounding the alleged infringement including,
but not limited to, the following:

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7.

INVALIDITY

7.1

INVALIDITY GENERALLY
Patent invalidity is a defense to patent infringement.

Claims are construed the same way for the purposes of
determining infringement as for determining invalidity.54 In this case, Defendants contend that the
asserted claims of the ’906 and ’985 patents are invalid as anticipated or obvious, and not supported
by the written description in the patent.

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53

54

AIPLA's Model Patent Jury Instructions at § II.
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7.3

ANTICIPATION–PUBLICLY USED OR KNOWN, OR PREVIOUSLY PUBLISHED60
Defendants contend that the asserted claims of the ’906 Patent and the ’985 Patent are invalid

because the claimed inventions are not new.
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. [

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. The Defendants must
prove by clear and convincing evidence that the claim was anticipated.
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.

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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 the alleged infringer can show that a patent claim was not new:
•

•

if the claimed invention were already publicly known or publicly used by others in the
United States before the date of invention of the ’906 Patent or the ’985 Patent.

•

if the claimed invention was already patented or described in a printed publication
anywhere in the world

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•

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 date of invention.

•

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

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7.5

ANTICIPATION–MADE OR INVENTED BY SOMEONE ELSE66
Defendants contend that all asserted claims of the ’906 Patent and the ’985 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. The Defendants must prove by clear and convincing
evidence that each such claim was anticipated by the other invention.
Here are two ways that the Defendants 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 ’906 Patent and the ’985 Patent unless that other person had abandoned
the invention or kept it secret; and
Second,
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 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.

66

Adapted from Bedrock Computer Technologies LLC v. Google, Inc., Civil Action No. 6:09-CV269 LED (E.D. Tex. April 15, 2011); The National Jury Instruction Project, MODEL PATENT JURY
INSTRUCTIONS, Instruction 5.6 (June 17, 2009).
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7.6

ANTICIPATION–STATUTORY BARS67
Defendants may prove that the asserted claims of the ’960 Patent and the ’985 Patent are

invalid by showing by clear and convincing evidence that each such claim failed to meet one of
several statutory provisions in the patent laws. These provisions are called “statutory bars.” For a
patent claim to be invalid because of a statutory bar, all of its requirements must have been present
in one prior art reference dated more than one year before the effective date of the patent application.
Here is a list of ways Defendants can show that a particular patent application was not timely
filed, that is, filed within one year of the occurrence of any of the following events:
•

if the asserted claims were already patented or described in a printed publication
anywhere in the world one year before the effective filing dates of the ’906 Patent and
the ’985 Patent, on October 17, 1994.
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.

•

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if the asserted claims were already being publicly or commercially used in the United
States one year before the effective filing dates of the ’906 Patent application and the
’985 Patent application, October 17, 1994, and that use was not primarily an
experimental use controlled by the inventor to test whether the invention worked for
its intended purpose;

Adapted from the Court’s Final Jury Instructions in Bedrock Computer Technologies LLC v.
Google, Inc., Civil Action No. 6:09-CV-269 LED (E.D. Tex. April 15, 2011); Mirror Worlds, LLC
v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010); The National Jury
Instruction Project, MODEL PATENT JURY INSTRUCTIONS, Instruction 5.6 (June 17, 2009); 35 U.S.C.
§ 102(b) and (d); Pfaff v. Wells Elec. Inc., 525 U.S. 55 (1998); Schering Corp. v. Geneva Pharms.,
339 F.2d 1373 (Fed. Cir. 2003).
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•

if a device or method using the claimed invention was sold or offered for sale in the
United States, and that claimed invention was ready for patenting one year before
October 17, 1994

.
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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that something is prior art
or that a particular event or reference occurred before the filing date of the patents-in-suit must
provide evidence that corroborates a witness’s

a witness’s

70

Adapted from the Court’s Final Jury Instructions in 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; Trovan, Ltd. v. Sokymat
SA, Irori, 299 F.3d 1292, 1303 (Fed. Cir. 2002) (“[O]ral testimony of someone other than the alleged
inventor may corroborate.”) (citing Price v. Symsek, 988 F.2d 1187, 1195-96 (Fed. cir. 1993).
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7.8

OBVIOUSNESS71
In this case, Defendants contend that the asserted claims of the ’906 Patent and the ’985

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

71

Adapted from the Court’s Final Jury Instructions in Bedrock Computer Technologies LLC v.
Google, Inc., Civil Action No. 6:09-CV-269 LED (E.D. Tex. April 15, 2011); Mirror Worlds, LLC
v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010); The National Jury
Instruction Project, MODEL PATENT JURY INSTRUCTIONS, Instruction 5.6 (June 17, 2009); 35 U.S.C.
§ 103; KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 425-28 (2007; Graham v. John Deere Co., 383
U.S. 1 (1966).
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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, teachings, suggestions, and
motivations may be found in the nature of the problem solved by the claimed invention, or any need
or problem known in the field of the invention at the time of and addressed by the invention.
Therefore, in evaluating whether such a claim would have been obvious, you should consider
a variety of factors:
1.

Whether Defendants have identified a reason that would have prompted a person of
ordinary skill in the field of the invention to combine the requirements or concepts
from the prior art in the same way as in the claimed invention. There is no single way
to define the line between true inventiveness on one hand (which is patentable) and
the application of common sense and ordinary skill to solve a problem on the other
hand (which is not patentable). For example, market forces or other design incentives
may be what produced a change, rather than true inventiveness.

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

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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 tot
the particular problem with which the claimed invention is concerned. Remember
that prior art is not limited to patents and published materials, but includes the general
knowledge that would have been available to one of ordinary skill in the field of the
invention.
3.

You should consider any difference or differences between the prior art and the claim
requirements.

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.

commercial success of a product due to the merits of the claimed invention;

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.

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.

You may consider the present of any of the list factors A.1-8 as an indication that the claimed
invention would not have been obvious at the time the claimed invention was made.
B.
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Factors tending to show obviousness
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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 these factors,
the relevance and importance of any of them to your decision on whether the claimed invention
would have been obvious is up to you. The Defendants must prove by clear and convincing evidence
that a claimed invention was obvious.

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If you find that a claimed invention was obvious as explained above, you must find that claim
invalid.

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7.9

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

invention.73
The parties agree that a person of ordinary skill in the art of the ’906 Patent and the ’985
Patent would have had a Bachelor of Science degree, or its equivalent, in computer scienc

73

Adapted from the Court’s Final Jury Instructions in Bedrock Computer Technologies LLC v.
Google, Inc., Civil Action No. 6:09-CV-269 LED (E.D. Tex. April 15, 2011); Mirror Worlds, LLC
v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010).
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7.10

WRITTEN DESCRIPTION74
Defendants contend that the Asserted Claims of the ’906 Patent and ’985 Patent are invalid

for failure of the patent to provide an adequate written description of the claimed invention.
Defendants must prove by clear and convincing evidence that these claims lacked an adequate written
description.
The written description requirement is satisfied if a person of ordinary skill in the field,
reading the patent application as originally filed, would recognize that the patent application
described the invention of these claims, even though the description might not use the exact words
found in the claim. The written description is adequate if it shows that the inventor was in possession
of each claim of the invention at the time the application for the patent was filed, even though the
claim may have been changed or new claims added during prosecution of the application. It is not
necessary that each and every aspect of the claim be explicitly discussed, as long as a person of
ordinary skill would understand that any aspect not expressly discussed in implicit in the patent
application as originally filed. If you find that one or more of the claims challenged by Defendants
lacked an adequate written description, you must find each such claim invalid.

74

Adapted from THE NATIONAL JURY INSTRUCTION PROJECT MODEL PATENT JURY INSTRUCTIONS
§ 5.2 (June 17, 2009); Fractus, S.A. v. Samsung Electronics Co., Civil Action No. 6:09-CV-203 LED
(E.D. Tex. May 23, 2011).
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10.

DAMAGES

10.1

DAMAGES96
I will now instruct you on damages. If you find that Defendants have infringed one or more

valid claims of the ’906 Patent or the ’985 Patent, you must determine the amount of money damages
to which Plaintiffs are entitled. 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. Your damages determination must not
include additional sums to punish the Defendant or to set an example. You may award compensatory
damages only for the loss that Plaintiffs prove was more likely than not caused by a Defendant’s
infringement

96

Adapted from the Court’s Final Jury Instructions in Bedrock Computer Technologies LLC v.
Google, Inc., Civil Action No. 6:09-CV-269 LED (E.D. Tex. April 15, 2011); Mirror Worlds, LLC
v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010); The National Jury
Instruction Project, MODEL PATENT JURY INSTRUCTIONS, Instruction 6.1 (June 17, 2009); 35 U.S.C.
§ 284.
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10.2

DAMAGES–BURDEN OF PROOF97
Plaintiffs have the burden to prove its damages by a preponderance of the evidence. Plaintiff

is entitled to all damages that can be proven with reasonable certainty. Reasonable certainty does not
require proof of damages with mathematical precision. However, no party is entitled to damages that
are remote or speculative.

97

Adapted from the Court’s Final Jury Instructions in Alcatel-Lucent USA Inc. v. Amazon.com, Inc.,
No. 6:09-CV-422 (E.D. Tex. Oct. 2011) (Dkt. No. 482); Bedrock Computer Technologies LLC v.
Google, Inc., Civil Action No. 6:09-CV-269 LED (E.D. Tex. April 15, 2011); Mirror Worlds, LLC
v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010); The National Jury
Instruction Project, MODEL PATENT JURY INSTRUCTIONS, Instruction 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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12.1

REASONABLE ROYALTY–DEFINITION99
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 the infringer taking place
just before the time when the infringing sales first began.

In
considering the nature of this negotiation, the focus is on what the expectations of the patent holder
and infringer would have been had they entered into an agreement at that time and had they 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 patent holder and infringer 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.

99

Adapted from the Court’s Final Jury Instructions in Bedrock Computer Technologies LLC v.
Google, Inc., Civil Action No. 6:09-CV-269 LED (E.D. Tex. April 15, 2011); Mirror Worlds, LLC
v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010); the National Jury
Instruction Project, MODEL PATENT JURY INSTRUCTIONS, Instruction 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).
100

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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:
•

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

•

Licenses involving comparable patents

•

The licensing history of the parties

•

Licensing practices in the relevant industry

•

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

•

The relationship between the patent owner and alleged infringer, including whether
or not they were competitors

•

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

•

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

•

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

•

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

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102

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13.

INSTRUCTIONS FOR DELIBERATIONS104
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 re 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. A corporation is entitled to the same fair trial as a private individual. 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.105
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

104

105

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

Adapted from the Court’s Final Jury Instructions in Bedrock Computer Technologies LLC v.
Google, Inc., Civil Action No. 6:09-CV-269 LED (E.D. Tex. April 15, 2011); Mirror Worlds, LLC
v. Apple, Inc., Civil Action No. 6:08-CV-88 LED (E.D. Tex. Oct. 1, 2010).
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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
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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