Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1316

Proposed Jury Instructions by Eolas Technologies Incorporated, The Regents of the University of California. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C)(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.
)
)
Adobe Systems Inc.; Amazon.com, Inc.; CDW
)
Corporation; Citigroup Inc.; The Go Daddy
)
Group, Inc.; Google Inc.; J.C. Penney Corporation, )
Inc.; Staples, Inc.; Yahoo! Inc.; and YouTube,
)
LLC,
)
)
Defendants and Counterclaimants.
)
)
)
)
)

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

JURY TRIAL DEMANDED

JOINT PROPOSED PRELIMINARY JURY INSTRUCTIONS
FOR THE INVALIDITY TRIAL1,2

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.

McKool 408689v1

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.

3

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).

McKool 408689v1

2

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

McKool 408689v1

3

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
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

McKool 408689v1

4

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.
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

McKool 408689v1

5

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.
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, have asserted that Defendants infringe certain claims
of two patents. Those patents are U.S. Patent No. 5,838,906 and U.S. Patent No. 7,599,985.

McKool 408689v1

6

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.”

4

McKool 408689v1

7

Patent Protection
5

6

7

8

McKool 408689v1

8

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.
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.

9

10

McKool 408689v1

9

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 and the patent must include a proper written description of the invention.
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 publicly known

11

McKool 408689v1

10

or available to the public prior to the time the person named as the inventor on the patent came
up with his or her invention.

If the Patent 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 is the written history of what happened during the
prosecution of the patent before the Patent Office.

12

McKool 408689v1

11

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.

13

14

McKool 408689v1

12

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.
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. The written description includes a
background section, a summary of the invention and a detailed description of the invention
including some specific examples. For example, if you wanted to look at Column 1, Line 18,

McKool 408689v1

13

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
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

McKool 408689v1

14

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 define what
the patent is. The claims are at issue when the validity of a patent is challenged.
The patent claims are compared to the prior art to determine whether the claims are
invalid.
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 prior
art.
In reaching your determination with respect to 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.
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.

McKool 408689v1

15

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.

15

McKool 408689v1

16

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.

16

17

McKool 408689v1

17

You, the attorneys, the parties, and the experts will all be guided by the construction I
have given to these terms. The claims constructions appear in your notebook at Tab ___.

You

must use these meanings when you decide the issues of invalidity in the case.

Burden of Proof

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
case.

18

McKool 408689v1

18

19

20

McKool 408689v1

19

21

22

McKool 408689v1

20

23

24
25

McKool 408689v1

21

26

27

McKool 408689v1

22

28

29

McKool 408689v1

23

McKool 408689v1

24

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

.
By the time you get to that question, 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.
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.

McKool 408689v1

25

It is now time for opening statements and the Court will recognize counsel for purposes
of opening statements.

McKool 408689v1

26