I/P Engine, Inc. v. AOL, Inc. et al

Filing 694

NOTICE by AOL Inc., Gannett Company, Inc., Google Inc., IAC Search & Media, Inc., Target Corporation of Filing Defendants' Proposed Verdict Form (Attachments: # 1 Exhibit 1)(Noona, Stephen)

Exhibit 1

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION
I/P ENGINE, INC.
Plaintiff,
v.

Civil Action No. 2:11-cv-512

AOL, INC., et al.,
Defendants.

DEFENDANTS’ PROPOSED VERDICT FORM
Defendants Google, Inc., AOL Inc., IAC Search & Media, Inc., Gannett Co., Inc., and
Target Corp. (“Defendants”) propose the following verdict form. Defendants’ proposed verdict
form is made without waiver of Defendants’ pending motions, which if granted, may render
portions of the following unnecessary. Defendants further reserve the right to amend,
supplement, or modify this proposed verdict form in light of further developments, including any
remaining fact or expert discovery, and based on the evidence and arguments presented at trial.
Defendants expect that the parties will meet and confer to refine the proposed verdict form as
events continue to narrow the issues.

This is the verdict form. It contains all of the questions set forth in the Jury Instructions.
Once you have reached unanimous agreement on a verdict, the foreperson must fill in this verdict
form, sign and date it, and advise the court that you have reached a verdict.

QUESTION NO. 1.
Has Plaintiff I/P Engine proven, by a preponderance of the evidence, that Google’s
AdWords directly infringes claims 10, 14, 15, 25, 27 and 28 of U.S. Patent No. 6,314,420 (“the
‘420 patent”)?
Answer “Yes” or “No” for each claim.
Claim 10: ____________
Claim 14: ____________
Claim 15: ____________
Claim 25: ____________
Claim 27: ____________
Claim 28: ____________

1

QUESTION NO. 2.
Has Plaintiff I/P Engine proven, by a preponderance of the evidence, that Google’s
AdSense for Search directly infringes claims 10, 14, 15, 25, 27 and 28 of U.S. Patent No.
6,314,420 (“the ‘420 patent”)?
Answer “Yes” or “No” for each claim.
Claim 10: ____________
Claim 14: ____________
Claim 15: ____________
Claim 25: ____________
Claim 27: ____________
Claim 28: ____________

2

QUESTION NO. 3.
Has Plaintiff I/P Engine proven, by a preponderance of the evidence, that Google’s
AdSense for Mobile Search directly infringes claims 10, 14, 15, 25, 27 and 28 of U.S. Patent No.
6,314,420 (“the ‘420 patent”)?
Answer “Yes” or “No” for each claim.
Claim 10: ____________
Claim 14: ____________
Claim 15: ____________
Claim 25: ____________
Claim 27: ____________
Claim 28: ____________

3

QUESTION NO. 4.
Has Plaintiff I/P Engine proven, by a preponderance of the evidence, that Google’s
AdWords directly infringes claims 1, 5, 6, 21, 22, 26, 28 and 38 of U.S. Patent No. 6,775,664
(“the ‘664 patent”)?
Answer “Yes” or “No” for each claim.
Claim 1: ____________
Claim 5: ____________
Claim 6: ____________
Claim 21: ____________
Claim 22: ____________
Claim 26: ____________
Claim 28: ____________
Claim 38: ____________

4

QUESTION NO. 5.
Has Plaintiff I/P Engine proven, by a preponderance of the evidence, that Google’s
AdSense for Search directly infringes claims 1, 5, 6, 21, 22, 26, 28 and 38 of U.S. Patent No.
6,775,664 (“the ‘664 patent”)?
Answer “Yes” or “No” for each claim.
Claim 1: ____________
Claim 5: ____________
Claim 6: ____________
Claim 21: ____________
Claim 22: ____________
Claim 26: ____________
Claim 28: ____________
Claim 38: ____________

5

QUESTION NO. 6.
Has Plaintiff I/P Engine proven, by a preponderance of the evidence, that Google’s
AdSense for Mobile Search directly infringes claims 1, 5, 6, 21, 22, 26, 28 and 38 of U.S. Patent
No. 6,775,664 (“the ‘664 patent”)?
Answer “Yes” or “No” for each claim.
Claim 1: ____________
Claim 5: ____________
Claim 6: ____________
Claim 21: ____________
Claim 22: ____________
Claim 26: ____________
Claim 28: ____________
Claim 38: ____________

6

QUESTION NO. 7.
Do you find that Defendants have proven, by clear and convincing evidence, that any of
the following claims of the ‘420 patent are invalid for the following reasons?
“Yes” means the claim is invalid.
“No” means the claim is not invalid.
A.

Because it is anticipated by the prior art?

Answer “Yes” or “No” for each claim.
Claim 10: ____________
Claim 14: ____________
Claim 15: ____________
Claim 25: ____________
Claim 27: ____________
Claim 28: ____________

B.

Because it is rendered obvious by the prior art?

Answer “Yes” or “No” for each claim.
Claim 10: ____________
Claim 14: ____________
Claim 15: ____________
Claim 25: ____________
Claim 27: ____________
Claim 28: ____________

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C.

Because it lacks an adequate written description?

Answer “Yes” or “No” for each claim.
Claim 10: ____________
Claim 14: ____________
Claim 15: ____________
Claim 25: ____________
Claim 27: ____________
Claim 28: ____________

8

QUESTION NO. 8.
Do you find that Defendants have proven, by clear and convincing evidence, that any of
the following claims of the ‘664 patent are invalid for the following reasons?
“Yes” means the claim is invalid.
“No” means the claim is not invalid.
A.

Because it is anticipated by the prior art?

Answer “Yes” or “No” for each claim.
Claim 1: ____________
Claim 5: ____________
Claim 6: ____________
Claim 21: ____________
Claim 22: ____________
Claim 26: ____________
Claim 28: ____________
Claim 38: ____________

B.

Because it is rendered obvious by the prior art?

Answer “Yes” or “No” for each claim.
Claim 1: ____________
Claim 5: ____________
Claim 6: ____________
Claim 21: ____________
Claim 22: ____________
Claim 26: ____________

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Claim 28: ____________
Claim 38: ____________

C.

Because it lacks an adequate written description?

Answer “Yes” or “No” for each claim.
Claim 1: ____________
Claim 5: ____________
Claim 6: ____________
Claim 21: ____________
Claim 22: ____________
Claim 26: ____________
Claim 28: ____________
Claim 38: ____________

10

If you have found that any of the claims were infringed by Google and are valid (i.e., you have
answered “yes” to any of the claims in Question 1, Question 2, or Question 3 and “no” to all
sections of Question 7 for the corresponding claim OR you have answered “yes” to any of the
claims in Question 4, Question 5, or Question 6 and “no” to all sections of Question 8 for the
corresponding claim), then answer Question 9, Question 10, Question 11, Question 12, and
Question 13. Otherwise, do not answer the following questions.

QUESTION NO. 9.
If you have found any claim of the ‘420 patent or the ‘664 patent to be both valid and
infringed by Google, have Defendants proven by a preponderance of the evidence that Plaintiff
I/P Engine forfeited its right to recover damages for activities occurring before September 15,
2011 under the doctrine of laches?
A “yes” is a finding for Defendants. A “no” is a finding for I/P Engine.
Answer (check one):
__________ Yes.
__________ No.

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QUESTION NO. 10.
You have heard testimony that the hypothetical negotiation to determine the reasonable
royalty would have occurred in 2004. You also have heard testimony that the hypothetical
negotiation to determine a reasonable royalty would have occurred in 2010. If you have found
any claim of the ‘420 patent or the ‘664 patent to be both valid and infringed by Google, is your
damages analysis based on a hypothetical negotiation in 2004 or a hypothetical negotiation in
2010?
Answer (check one):
2004 _____; or 2010 _____.

12

QUESTION NO. 11.
You have heard testimony regarding a “lump sum paid up royalty,” which is a fixed
amount paid to the patent holder regardless of the amount of use of the purported invention over
time. You also have heard testimony regarding a “running royalty,” which is a royalty
determined by the amount of use of the purported invention over time. If you have found any
claim of the ‘420 patent or the ‘664 patent to be both valid and infringed by Google, should
reasonable royalty damages be based on a “lump sum paid up royalty” or a “running royalty”?
Answer (check one):
“lump sum paid up royalty” _____; or “running royalty” _____.

13

QUESTION NO. 12.
If you have found that damages should be based on a “running royalty,” what should be
the rate for that running royalty?

Answer as a percentage.
Running Royalty Rate: ____________________

14

QUESTION NO. 13.
If you have found any claim of the ‘420 patent or the ‘664 patent to be both valid and
infringed by Google, what sum of money, if any, if paid now in cash, would fairly and
reasonably compensate I/P Engine as a reasonable royalty for any infringement by Google that
you have found?

Answer in dollars and cents, if any.
Answer: ____________________

Signed this _____ day of October, 2012.

___________________________________
JURY FOREPERSON

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DATED: October 9, 2012

/s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
[e-mail]
David Bilsker
David A. Perlson
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, California 94111
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
Counsel for Google Inc., Target Corporation,
IAC Search & Media, Inc., and Gannett Co., Inc.

By: /s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 W. Main Street, Suite 2100
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
[e-mail]
Robert L. Burns
FINNEGAN, HENDERSON, FARABOW, GARRETT &
DUNNER, LLP
Two Freedom Square
11955 Freedom Drive
Reston, VA 20190
Telephone: [phone]
Facsimile: [phone]
Cortney S. Alexander
FINNEGAN, HENDERSON, FARABOW, GARRETT &
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DUNNER, LLP
3500 SunTrust Plaza
303 Peachtree Street, NE
Atlanta, GA 94111
Telephone: [phone]
Facsimile: [phone]
Counsel for Defendant AOL Inc.

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CERTIFICATE OF SERVICE
I hereby certify that on October 9, 2012, I will electronically file the foregoing with the
Clerk of Court using the CM/ECF system, which will send a notification of such filing (NEF) to
the following:
Jeffrey K. Sherwood
Kenneth W. Brothers
DICKSTEIN SHAPIRO LLP
1825 Eye Street NW
Washington, DC 20006
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
Donald C. Schultz
W. Ryan Snow
Steven Stancliff
CRENSHAW, WARE & MARTIN, P.L.C.
150 West Main Street, Suite 1500
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
[e-mail]
Counsel for Plaintiff, I/P Engine, Inc.
Craig C. Reilly Esq.
Law Office of Craig C. Reilly
111 Oronoco Street
Alexandria, VA 22314
Telephone: [phone]
Facsimile: [phone]
[e-mail]
Craig T. Merritt
Christian & Barton, LLP
909 E. Main Street, Suite 1200
Richmond VA 23219-3095
Telephone: [phone]
Facsimile: [phone]
[e-mail]

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Roderick G. Dorman (pro hac vice)
Jeanne Irving (pro hac vice)
Alan P. Block (pro hac vice)
Jeffrey Huang (pro hac vice)
McKool Smith Hennigan P.C.
865 South Figueroa Street, Suite 2900
Los Angeles, CA 90017
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
Douglas A. Cawley (pro hac vice)
McKool Smith P.C.
300 Crescent Court, Suite 1500
Dallas, TX 75201
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
Counsel for Plaintiff Suffolk Technologies, LLC

/s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
[e-mail]

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