VirnetX Inc. v. Cisco Systems, Inc. et al

Filing 597

Jury Instructions. (cwk)

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

VIRNETX INC.,

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Plaintiff,
vs.
APPLE, INC.,
Defendant.

Civil Action No. 6:10-cv-417

FINAL JURY INSTRUCTIONS
1.

Introduction

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 argument of the attorneys are not

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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 Instruction
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 on the verdict form from the facts as you find them.
Do not decide who you think should win and then answer the questions
accordingly. A corporation and all other persons are equal before the law and must
be treated as equals in a court of justice.

With respect to each question asked,

your answers and your verdict must be unanimous.
In determining whether any fact has been proved in this case, you may,
unless otherwise instructed, consider the testimony of all witnesses, regardless of
who may have called them, and all exhibits received in evidence, regardless of who
may have produced them.
1.2

Considering witness testimony
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

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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
another time the witness said or did something, or failed to say or do something,
that was different from the testimony the witness gave before you during the trial.
You should keep in mind, of course, that a simple mistake by a witness does
not necessarily mean that the witness was not telling the truth as he or she
remembers it, because people may forget some things or remember other things
inaccurately. So, if a witness has made a misstatement, you need to consider
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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.
1.3

Instruction Regarding Juror Questions
As I told you in the preliminary instructions, I have given you the

opportunity to give me written questions anonymously after a witness testified
when you had an important question of the witness that was strictly limited to the
substance of the witness’s testimony.

Remember that I asked you not to be

offended if I did not present your question to be answered by the witness. That has
happened in this case, and so I want to instruct you further that I have entered
orders in this case that prohibit the parties from presenting evidence to the jury that
is not relevant to the infringement, invalidity and damages questions that you will
be answering in this case. You should not speculate on the answer to any unasked
question and you should not speculate on or consider any facts or events outside
the testimony and exhibits you have heard and seen in this courtroom.
1.4

How to examine the evidence
Certain testimony in this case was presented to you through a deposition. A

deposition is the sworn, recorded answers to questions asked a witness in advance
of the trial. This deposition testimony is entitled to the same consideration and is
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to be judged by you as to credibility and weight as if the witness had been present
and had testified from the witness stand in court.
While you should consider only the evidence in this case, you are permitted
to draw such reasonable inferences from the testimony and exhibits as you feel are
justified in the light of common experience. In other words, you may make
deductions and reach conclusions that reason and common sense lead you to draw
from the facts that have been established by the testimony and evidence in the case.
The testimony of a single witness may be sufficient to prove any fact, even if
a greater number of witnesses may have testified to the contrary, if after
considering all the other evidence you believe that single witness.
There are two types of evidence that you may consider in properly finding
the truth as to the facts in the case. One is direct evidence such as testimony of an
eyewitness. The other is indirect or circumstantial evidence—the proof of a chain
of circumstances that indicates the existence or nonexistence of certain other facts.
As a general rule, the law makes no distinction between direct and circumstantial
evidence, but simply requires that you find the facts from a preponderance of all
the evidence, both direct and circumstantial.

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1.5

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 he or she is
called an expert witness 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 the witness’ testimony is believable or
not, whether it is supported by the evidence, and whether to rely upon it. In
deciding whether to accept or rely upon the opinion of an expert witness, you may
consider any bias of the witness.
2.

Summary of Contentions
I will first give you a summary of each side’s contentions in this case. I will

then tell you what each side must prove to win on these issues.
Plaintiff VirnetX Inc. contends that the Defendant Apple Inc. (“Apple”)
makes, uses, sells, offers to sell, or imports products into the United States —
specifically Virtual Private Network (“VPN”) and security-capable communication
products — that infringe claims 1, 3, 7, and 8 of United States Patent No.
6,502,135 (“the ’135 patent”); claims 1, 2, 5, 16, 21, and 27 of United States Patent
No. 7,418,504 (“the ’504 patent”); claims 1, and 13 of United States Patent No.
7,490,151 (“the ’151 patent”); and claims 36, 37, 47, and 51 of United States
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Patent No. 7,921,211 (“the ’211 patent”). These claims have been referred to as
the “Asserted Claims,” and these patents have been referred to as the “patents-insuit.”
VirnetX also contends that Apple is inducing direct infringement of these
claims of the patents-in-suit.

VirnetX is seeking damages for the alleged

infringement of Apple.
In response to VirnetX’s contentions, Apple contends that neither Apple nor
its customers have infringed the patents-in-suit. Apple further contends that it has
not induced direct infringement of the Asserted Claims. Apple also contends that
the Asserted Claims of the ’135, ’504, ’151, and ’211 patents are invalid because
they are anticipated by a reference in the prior art. Apple also contends that
VirnetX is not entitled to damages for any infringement.
3.

Burdens of Proof
In any legal action, facts must be proved by a required amount of evidence,

known as the “burden of proof.” The burden of proof in this case is on VirnetX for
some issues and on Apple for other issues. VirnetX has the burden of proving
infringement and damages by a preponderance of the evidence. Preponderance of
the evidence means the evidence that persuades you that a claim is more likely true
than not true. If the proof establishes that all parts of VirnetX’s infringement
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claims are more likely true than not true, then you should find for VirnetX as to
that claim.
Apple has the burden of proving invalidity by clear and convincing
evidence. Clear and convincing evidence means evidence that produces in your
mind a firm belief or conviction as to the matter at issue. Although proof to an
absolute certainty is not required, the clear and convincing evidence standard
requires a greater degree of persuasion than is necessary for the preponderance of
the evidence standard. If the proof establishes in your mind a firm belief or
conviction, then the standard has been met.
In determining whether any fact has been proved by the preponderance of
the evidence or by clear and convincing evidence, you may, unless otherwise
instructed, consider the stipulations, the testimony of all witnesses regardless of
who may have called them, and all exhibits received in evidence regardless of who
may have produced them.
4.

Claims of the Patents-in-Suit
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.

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Claims may describe products, such as machines or chemical compounds,
methods, apparatuses or processes for making or using a product.
Claims are usually divided into parts or steps, called limitations or elements.
For example, a claim that covers the invention of a table may recite the tabletop,
four legs and the glue that secures the legs on the tabletop. The tabletop, legs and
glue are each a separate limitation of the claim.
4.1

Independent and Dependent Claims
This case involves two types of patent claims: independent claims and

dependent claims.
An “independent claim” sets forth all of the requirements that must be met in
order to be covered by that claim. Thus, it is not necessary to look at any other
claim to determine what an independent claim covers. In this case, for example,
claim 1 of the ’135 patent; claim 1 of the ’504 patent; claim 36 of the ’211 patent;
and claims 1 and 13 of the ’151 patent, are each independent claims.
The rest of the claims being asserted in this case are “dependent claims.” A
dependent claim refers to another claim and includes all the requirements or parts
of the claims to which it refers. In this way the claim “depends” on another claim.
The dependent claim then adds its own, additional requirements. To determine
what a dependent claim covers, it is necessary to look at both the dependent claim
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and any other claims to which it refers. A product or method that meets all of the
requirements of both the dependent claim and the claims to which it refers is
covered by that dependent claim.
4.2

Construction of the Claims
In deciding whether or not the accused products and methods infringe an

Asserted Claim, and whether or not the 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 infringed,
and whether or not they are invalid. I have interpreted the meaning of some of the
language in the patent claims involved in this case. My interpretation of those
claims appears in your notebook on the last tab. The claim language I have not
interpreted for you in your notebook is to be given its ordinary and accustomed
meaning as understood by one of ordinary skill in the art.
4.3

Open–Ended or “Comprising” Claims
The beginning portion, or preamble, to some of the Asserted Claims use the

word “comprising.”

“Comprising” and “comprises” mean “including but not

limited to” or “containing but not limited to.” Thus, if you decide that an accused
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product includes all the requirements in that claim, the claim is infringed. This is
true even if the accused instrumentality includes components in addition to those
requirements.
For example, a claim to a table comprising a tabletop, legs, and glue would
be infringed by a table that includes a tabletop, legs, and glue, even if the table also
includes wheels on the table’s legs.
5.

Infringement

Any person or business entity who makes, uses, sells, offers to sell, or
imports into the United States a product or practices a method that is covered by at
least one claim of a patent infringes the patent.
A patent owner has the right to stop others from making, using, selling and
offering for sale, and importing into the United States the invention covered by the
patent claims during the life of the patent.
In this case, there are two possible ways that a claim may be infringed. I
will explain the requirements for each of these two types of infringement to you.
The two types of infringement are called: (1) direct infringement; and (2) active
inducement.
Only the claims of a patent can be infringed. You must compare each of the
Asserted Claims, as I have defined them, to the accused acts of infringement and
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determine whether or not there is infringement.

You must not compare the

accused products or methods with any specific example set out in the patents. The
only correct comparison is with the language of the claim itself, with the meanings
I have given you.
In order to prove infringement, VirnetX must prove that the requirements for
one or more of these types of infringement are met by a preponderance of the
evidence, i.e., that it is more likely true than not that all of the requirements of one
or more of each of these types of infringement have been proved.
You must consider each Asserted Claim of the Patents-in-Suit individually
and must reach your decision as to each assertion of infringement based on my
instructions about the meaning and scope of the claims, the legal requirements for
infringement, and the evidence presented to you by the parties.
I will now explain each of the types of infringement in more detail.
5.1

Direct Infringement
If any person makes, uses, or offers to sell, sells in the United States or

imports into the United States what is covered by the claims of a patent without the
patent owner’s permission, that person is said to infringe the patent. This type of
infringement is called direct infringement. To determine direct infringement, you
must compare the accused products or methods with each of the Asserted Claims
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of the Asserted Patents, using my instructions as to the meaning of the patent
claims.
A patent claim is directly infringed only if the accused product or method
includes each and every element (or its equivalent, as I will instruct you shortly) in
that patent claim. If the accused product or method does not contain one or more
of the limitations recited in a claim, then that product or method does not directly
infringe that claim. If you find that the accused product or method includes each
element or step of the claim, then that product or method infringes the claim even
if such product or use contains additional elements or steps that are not recited in
the claim.
A person may directly infringe a patent even though in good faith it believes
that what it is doing is not an infringement of any patent and even if it did not
know of the patent. Direct infringement does not require proof that the person
copied a product or the patent.
You must consider each of the asserted claims of the patents-in-suit
individually. You must be certain to compare the accused product or method with
each claim that such product or method is alleged to infringe. Such accused
product or method should be compared to the limitations recited in the patent
claims, not to any preferred or commercial embodiment of the claimed invention.
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Taking each asserted claim of the Asserted Patents separately, if you find
that VirnetX has proved by a preponderance of the evidence that each and every
limitation of that claim is present in the accused product or method, then you must
find that such product or method infringes that claim.
A claim limitation or element may be directly infringed in one of two ways:
either literally or under the doctrine of equivalents.
5.2

Direct Infringement – Literal Infringement
A claim limitation is literally met if it exists in the accused product or

method just as it is described in the claim language, either as I have explained that
language to you or, if I did not explain it, as it would be understood by one of skill
in the art.
5.3

Direct Infringement – Doctrine of Equivalents
A claim limitation is present in an accused product or method under the

doctrine of equivalents if the differences between the claim limitation and a
comparable element of the accused product are insubstantial.
One way to determine whether a difference is insubstantial is to look at
whether the accused product or method performs substantially the same function in
substantially the same way to achieve substantially the same result as the claimed
invention.
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You may also consider whether, at the time of the alleged infringement, a
person having ordinary skill in the field of technology of the patent would have
known of the interchangeability of the alternative feature and the unmet
requirement of the claim.
Interchangeability at the present time is not sufficient. In order for the
structures to be considered to be interchangeable, the interchangeability of the two
structures must have been known to persons of ordinary skill in the field of
technology at the time the infringement began.
Thus, the inventor need not have foreseen and the patent need not describe
all potential equivalents to the invention covered by the claims. Also, slight
changes in technique or improvements made possible by technology developed
after the patent application is filed may still be considered equivalent for the
purposes of the doctrine of equivalents.
In order to prove direct infringement by the doctrine of equivalents, VirnetX
must prove the requirements are met by a preponderance of the evidence.
5.4

Active Inducement of Infringement
VirnetX alleges that Apple is also liable for infringement by actively

inducing others to directly infringe the Asserted Claims.

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As with direct

infringement, you must determine whether there has been active inducement on a
claim-by-claim basis.
To show induced infringement, VirnetX must prove by a preponderance of
the evidence that customers or end-users of Apple have directly infringed the
asserted patent claims, and that Apple has actively and knowingly aided and
abetted that direct infringement.
A defendant is liable for active inducement of a claim only if:
(1)

the defendant takes action during the time the patent is in force which
encourages acts by someone else;

(2)

the encouraged acts constitute direct infringement of that claim;

(3)

the defendant (a) is aware of the patent, and knows that the
encouraged acts constitute infringement of the patent; or (b) is
willfully blind to the infringement of the patent. Willful blindness
requires that the defendant subjectively believed there was a high
probability that the encouraged acts constituted infringement of the
patent and the defendant took deliberate actions to avoid learning of
the infringement;

(4)

the defendant has the intent to encourage infringement by someone
else; and
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(5)

the encouraged acts are actually carried out by someone else.

In order to prove active inducement, VirnetX must prove that each of the
above requirements is met by a preponderance of the evidence, i.e., that it is more
likely true than not that each of the above requirements has been met.
In considering whether Apple has induced infringement by others, you may
consider all the circumstances, including whether or not Apple obtained the advice
of a competent lawyer, whether or not it knew of the patents or was willfully blind
to the patents when designing and manufacturing its products and whether or not it
removed or diminished the allegedly infringing features. You may not assume that
merely because Apple did not obtain an opinion of counsel, the opinion would
have been unfavorable.
Evidence of active steps taken to encourage direct infringement, such as
advertising an infringing use or instructing how to engage in an infringing use may
be considered in light of all the circumstances in determining whether Apple had
specific intent to cause others to infringe. In order to establish active inducement of
infringement, it is not sufficient that Apple was aware of the act(s) that allegedly
constitute the direct infringement. Rather, you must find that Apple specifically
intended to cause the acts that constitute the direct infringement and must have
known or was willfully blind that the action would cause the direct infringement.
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If you do not find that the accused infringer meets these specific intent
requirements by a preponderance of the evidence, then you must find that the
accused infringer has not actively induced the alleged infringement.
6.

Invalidity
Patent invalidity is a defense to patent infringement. Even though the Patent

Office examiner has allowed the claims of a patent, you have the ultimate
responsibility for deciding whether the claims of the patent are valid.
Apple has challenged the validity of the Asserted Patent Claims. Apple
must prove that a patent claim is invalid by clear and convincing evidence.
Evidence of prior art which was not reviewed by the PTO may be more probative
of meeting this standard, than prior art which was reviewed by the PTO. An issued
patent is accorded a presumption of validity based on the presumption that the
United States Patent and Trademark Office acted correctly in issuing a patent.
From the issuance of the patent, it is presumed that a claimed invention is novel,
useful and not obvious and satisfies the other legal requirements for a valid U.S.
patent. Each claim of a patent is presumed valid independently of the validity of
the other claims. The presumption of validity remains intact and the burden of
proof remains on the party, Apple, who is challenging validity throughout this

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litigation. In other words, the burden never shifts to VirnetX to prove that its
patents are valid.
For a patent to be valid, the invention claimed in the patent must be new,
useful, and not obvious. A patent cannot take away from people their right to use
what was known or what would have been obvious when the invention was made.
In addition, the patent must comply with certain statutory requirements of
disclosure.
I will now explain to you Apple’s ground for invalidity in detail. In making
your determination as to invalidity, you should consider each claim separately.
6.1

Anticipation
Apple contends that all of the Asserted Claims of the ’135, ’504, ’151 and

’211 patents are invalid for being anticipated by prior art. Apple bears the burden
of establishing anticipation by clear and convincing evidence.
A patent claim is invalid if the claimed invention is not new. For a claim to
be invalid on the basis of anticipation because it is not new, all of its requirements
must be present in a single previous device or method, or described in a single
previous publication or patent. We call these things prior art. Apple must prove
by clear and convincing evidence that an item is prior art. The description in a
reference does not have to be in the same words as the claim, but all the
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requirements of the claim must be there, either stated expressly or necessarily
implied or inherent in the level of ordinary skill in the field of technology of the
patent at the time of the invention, so that someone of ordinary skill in the field of
technology of the patent looking at that one reference would be able to make and
use the claimed invention.
Something is inherent in an item of prior art if it is always present in the
prior art or always results from the practice of the prior art and if a skilled person
would understand that to be the case.

Inherency may not be established by

probabilities or possibilities. The mere fact that a certain thing may coincidentally
result from a given set of circumstances is not sufficient.

A party claiming

anticipation by inherency must show that the elements of the claim are always
present in the prior art or always result from the practice of the prior art. You may
not combine two or more items of prior art to make out an anticipation.
6.2

Anticipation by a Printed Publication
A patent claim is invalid if the invention defined by that claim was described

in a printed publication anywhere in the world before it was invented by the patent
applicant, or more than one year prior to the filing date of the United States patent
application.

VirnetX contends that the priority date for the ’135 patent is

September 23, 1999, rather than the effective filing date of February 15, 2000, and
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Apple contends that the effective filing date, February 15, 2000, is the priority
date. The effective filing date of the application for the ’151 Patent is February 15,
2000. The effective filing date of the’504 and ’211 Patents is April 26, 2000.
Printed publications may include issued patents as well as articles, treatises,
and other written materials. A printed publication or patent will not anticipate
unless it contains a description of the invention covered by the patent claims that is
sufficiently detailed to teach a skilled person how to make and use the invention
without undue experimentation. Factors to be considered in determining whether a
disclosure would require undue experimentation include: (1) the quantity of
experimentation necessary; (2) the amount of direction or guidance disclosed in the
printed publication or patent; (3) the presence or absence of working examples in
the printed publication or patent; (4) the nature of the invention; (5) the state of the
prior art; (6) the relative skill of those in the art; (7) the predictability of the art;
and (8) the breadth of the claims.
A printed publication must be reasonably accessible to those members of the
public who would be interested in its contents. It is not necessary that the printed
publication be available to every member of the public. The date that a printed
publication becomes prior art is the date that it becomes available to the public.

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So long as the printed publication was available to the public, the form in
which the information was recorded is unimportant.

The information must,

however, have been maintained in some permanent form, such as printed or
typewritten pages, magnetic tape, microfilm, photographs, or photocopies.
6.3

Level of Ordinary Skill
Several times in my instructions I have referred to a person of ordinary skill

in the field of the invention.
The parties agree that a person of ordinary skill in the art would have a
Master’s degree in computer science or computer engineering, or in a related field,
as well as approximately two years of experience in computer networking and in
security with respect to computer networks, including actual experience with
networking protocols as well as the security of those protocols.
7.

Damages
I will now instruct you about the measure of damages. By instructing you

on damages, I am not suggesting which party should win this case, on any issue.
However, for purposes of answering this question, you should assume the patents
are valid.
VirnetX seeks patent damages in the form of a reasonable royalty.
Generally, a reasonable royalty is defined by the patent laws as the reasonable
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amount that someone wanting to use the patented invention should expect to pay to
the patent owner and the owner should expect to receive.
A damages award should put the patent owner in approximately the financial
position it would have been in had the infringement not occurred. You may not
add anything to the amount of damages to punish the infringer, or to set an
example.
VirnetX has the burden to persuade you by a preponderance of the evidence
that it suffered the damages it seeks. While VirnetX is not required to prove
damages with mathematical precision, it must prove them with reasonable
certainty.

The patent owner is not entitled to damages that are remote or

speculative.
7.1

Reasonable Royalty Definition
A royalty is the amount of money a licensee pays to a patent owner to make,

use or sell the patented invention. A reasonable royalty is the amount of money a
willing patent owner and a willing prospective licensee would have agreed upon at
the time of the infringement for a license to make the invention. It is the royalty
that would have resulted from an arms-length negotiation between a willing
licensor and a willing licensee. Unlike a real world negotiation, in the hypothetical
negotiation, all parties are presumed to know that the patent is infringed and valid.
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The reasonable royalty you determine must be a royalty that would have resulted
from the hypothetical negotiation, and not simply a royalty either party would have
preferred. Evidence of things that happened after the infringement first began can
be considered in evaluating the reasonable royalty only to the extent that the
evidence aids in assessing what royalty would have resulted from a hypothetical
negotiation.
The parties agree that the earliest date of the hypothetical negotiation
between Apple and VirnetX would have been in June of 2009.
In making your determination of the amount of a reasonable royalty, it is
important that you focus on the time period when the infringer first infringed the
patent and the facts that existed at that time. Your determination does not depend
on the actual willingness of the parties to this lawsuit to engage in such
negotiations. Your focus should be on what the parties’ expectations would have
been had they entered negotiations for royalties at the time of the infringing
activity. The infringer’s actual profits may or may not bear on the reasonableness
of an award based on a reasonable royalty.
7.2

Reasonable Royalty Factors
In deciding what is a reasonable royalty that would have resulted from the

hypothetical negotiation, you may consider the factors that the patent owner and
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the alleged infringer would consider in setting the amount the alleged infringer
should pay.
I will list for you a number of factors you may consider. This is not every
possible factor, but it will give you an idea of the kinds of things to consider in
setting a reasonable royalty.
1.

The royalties received by the patentee for licensing of the patent-insuit, proving or tending to prove an established royalty.

2.

Royalties paid for other patents comparable to the asserted patents.

3.

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

4.

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

5.

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

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6.

Whether being able to use the patented invention helps in making
sales of other products or services.

7.

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

8.

The profitability of the patented invention, and whether or not it is
commercially successful or popular.

9.

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

10.

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

11.

The extent of the licensee’s use of the patented invention and any
evidence probative of that use.

12.

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

13.

The portion of the profits that is due to the patented invention, as
compared to the portion of the profit due to other factors, such as

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unpatented elements or unpatented manufacturing processes, or
features or improvements developed by the licensee.
14.

Expert opinions as to what would be a reasonable royalty.

15.

The amount that a licensor and a licensee would have agreed upon if
both sides had been reasonably and voluntarily trying to reach an
agreement; that is, the amount which an accused infringer would have
been willing to pay as a royalty and yet be able to make a reasonable
profit and which amount would have been acceptable to a patent
owner if it would have been willing to create a license.

No one factor is dispositive and you can and should consider the evidence
that has been presented to you in this case on each of these factors.
In determining a reasonable royalty, you may also consider whether or not
Apple had a commercially acceptable non-infringing alternative to taking a license
from the patent holder that was available at the time of the hypothetical
negotiations and whether that would have affected the reasonable royalty the
parties would have agreed upon.
7.3

Royalty Base
In determining a royalty base, you should not use the value of an entire

apparatus or product unless either: (1) the patented feature creates the basis for
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customers' demand for the product, or the patented feature substantially creates the
value of the other component parts of the product; or (2) the product in question
constitutes the smallest saleable unit containing the patented feature.
8.

Instructions for Deliberations
You must perform your duties as jurors without bias or prejudice as 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.
You should consider and decide this case as a dispute between persons of
equal standing in the community, of equal worth, and holding the same or similar
stations in life.
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 has admitted into
evidence. Select your Foreperson and conduct your deliberations. If you recess
during your deliberations, follow all of the instructions that the Court has given
you about/on your conduct during trial. After you have reached your 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
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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 Court Security Officer, 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 deliberate.

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