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 B

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

EOLAS TECHNOLOGIES
INCORPORATED and
THE REGENTS OF THE
UNIVERSITY OF CALIFORNIA,
Plaintiff,
v.
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.

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CASE NO. 6:09-CV-00446-LED

JURY TRIAL

JOINT PROPOSED FINAL JURY INSTRUCTIONS
FOR THE INVALIDITY TRIAL1,

1

Plaintiffs and Defendants reserve the right to modify or amend these proposed instructions prior to
the Court’s charge conference if so warranted.
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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1.

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 the question from the facts as you find them. Do not decide who you
think should win and then answer the question accordingly. Your answer 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.

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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 CONTENTIONS6
I will first give you a summary of each side’s contentions in this case. I will then tell you

what must be proved to win on the issues.

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Adapted from the Court’s Final Jury Instructions in Fractus S.A. v. Samsung Electronics Co., Civil
Action No. 6:09-CV-203 (E.D. Tex. May 23, 2011).
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Your job is to decide whether any of the asserted claims of the ’906 and ’985 patents are
invalid.

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3.

INSTRUCTION ON THE BURDENS OF PROOF

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4.

MEANING OF THE CLAIM TERMS12

4.1

PATENT CLAIMS
At the beginning of the trial, I gave you some general information about patents and the

patent system and a brief overview of the patent laws relevant to this case. I will now give you more
detailed instructions about the patent laws that specifically relate to this case. If you would like to
review my instructions at any time during your deliberations, they will be available to you in the jury
room.
As I told you at the beginning of trial, the claims of a patent are the numbered sentences at
the end of the patent. The claims describe the invention made by the inventor and describe what the
patent owner owns and what the patent owner may prevent others from doing. Claims may describe
products or systems, or methods for using a product or system.
Claims are usually divided into parts or steps, called “limitations” or “elements” or
“requirements.” For example, a claim that covers the invention of a table may recite the tabletop,
four legs, and the glue that secures the legs to the tabletop. The tabletop, legs, and glue are each a
separate limitation or requirement of the claim.

12

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 CLAIMS13
In deciding whether or not an asserted claim is invalid, 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 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.

13

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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4.3

OPEN-ENDED OR “COMPRISING” CLAIMS14

“Comprising” and “comprise” mean “including” or “containing but not limited to.”

14

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.

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For example, claim 3 of the ’906 Patent is not at issue here, but it is a dependent claim of
independent claim 1. Because dependent claim 3 includes all of the limitations of claim 1, if claim
1 is not anticipated, then claim 3 is not anticipated either.

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4.5

INTERPRETATION OF CLAIMS19
In deciding 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.

19

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 B to this charge.

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5.

INVALIDITY

5.1

INVALIDITY GENERALLY

]
Even though the PTO examiner has allowed the
claims of a patent, you have the ultimate responsibility for deciding whether the claims of the patent
are valid. 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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5.3

ANTICIPATION–PUBLICLY USED OR KNOWN, OR PREVIOUSLY PUBLISHED34
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.

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34

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).
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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.
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 Defendants can show that a patent claim was not new:

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5.5

ANTICIPATION–MADE OR INVENTED BY SOMEONE ELSE43
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
and

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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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5.6

ANTICIPATION–STATUTORY BARS47
Defendants may prove that the asserted claims of the ’906 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 filing 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:
1.

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, which effective filing dates are both 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.

2.

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,

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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 5.7 (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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3.

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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5.7

CORROBORATION OF ORAL TESTIMONY

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

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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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5.8

OBVIOUSNESS56
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

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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 5.9 (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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to arrive at the claimed invention before the time of the claimed invention, although proof of this
is not a requirement to prove obviousness. Teachings, suggestions, and motivations may also be
found within the knowledge of a person with ordinary skill in the art including inferences and
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:
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1.

You must decide the scope and content of the prior art. In determining the scope and
content of the prior art,

you must decide whether a reference is pertinent, or analogous, to the
claimed invention. Pertinent, or analogous, prior art includes prior art in the same
field of endeavor as the claimed invention, regardless of the problems addressed by
the reference, and prior art from different fields reasonably pertinent 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.
2.

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.

2.

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

3.

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

unexpected and superior results from the claimed invention;

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5.

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; and

6.

other evidence tending to show non-obviousness.

You may consider the present of any of the list factors A.1-6 as an indication that the claimed
invention would not have been obvious at the time the claimed invention was made.
B.

Factors tending to show obviousness
1.

2.

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independent invention of the claimed invention by others before or at about
the same time as the named inventor thought of it.
other evidence tending to show obviousness.

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You may consider the presence of the factor B.1 and 2 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

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invention would have been obvious is up to you. The Defendants must prove by clear and
convincing evidence that a claimed invention was obvious.
If you find that a claimed invention was obvious as explained above, you must find that
claim invalid.

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5.8

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

the invention.59
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

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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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WRITTEN DESCRIPTION60
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.

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.

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Adapted from THE NATIONAL JURY INSTRUCTION PROJECT MODEL PATENT JURY INSTRUCTIONS
§ 7.10 (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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6.

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

not permit you to be controlled by sympathy, prejudice, or public opinion. All parties expect that
you will carefully and impartially consider all the evidence, follow the law as it is now being given
to you, and reach a just verdict, regardless of the consequences.
It is your sworn duty as a juror to discuss the case with one another in an effort to reach
agreement if you can do so. Each of you must decide the case for yourself, but only after full
consideration of the evidence with the other members of the jury. While you 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.66
When you retire to the jury room to deliberate on your verdict, you may take this charge with
you as well as exhibits which the Court as admitted into evidence. Select your Foreperson and

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

Adapted from the Court’s Final Jury Instructions in 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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