I/P Engine, Inc. v. AOL, Inc. et al
Filing
695
Proposed Jury Instructions by I/P Engine, Inc.. (Snow, W. Ryan)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION
__________________________________________
)
)
)
Plaintiff,
)
v.
)
)
AOL, INC. et al.,
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)
Defendants.
)
__________________________________________)
I/P ENGINE, INC.,
Civ. Action No. 2:11-cv-512
PLAINTIFF I/P ENGINE, INC.’S PROPOSED JURY INSTRUCTIONS
Pursuant to the Court’s February 15, 2012 Scheduling Order (Dkt. No. 90) and Local
Civil Rule 51, Plaintiff I/P Engine, Inc. (“I/P Engine”) hereby submits its Proposed Jury
Instructions. I/P Engine reserves the right to modify and/or supplement its Proposed Jury
Instructions based upon the evidence and theories presented at trial, and/or resolution of any
outstanding motions.
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TABLE OF CONTENTS
PRELIMINARY JURY INSTRUCTIONS .................................................................................1
NO 1. OPENING INSTRUCTIONS ...............................................................................2
NO 2. PROVINCE OF JUDGE AND JURY ..................................................................4
NO 3. JURY CONDUCT..................................................................................................5
NO 4. EVIDENCE ............................................................................................................7
NO 5. EVIDENCE—CREDIBILITY OF WITNESSES .............................................10
NO 6. WHAT A PATENT IS AND HOW ONE IS OBTAINED ...............................12
NO 7. SUMMARY OF CONTENTIONS .....................................................................16
NO 8. PATENTS AT ISSUE ..........................................................................................18
NO 9. PATENTS AT ISSUE—CLAIM CONSTRUCTION.......................................19
NO 10. OVERVIEW OF APPLICABLE LAW ...........................................................20
NO 11. GLOSSARY OF PATENT TERMS.................................................................23
NO 12. OUTLINE OF TRIAL .......................................................................................29
FINAL JURY INSTRUCTIONS ................................................................................................32
NO 13. THE ROLE OF THE CLAIMS OF A PATENT ............................................35
NO 14. HOW A CLAIM DEFINES WHAT IT COVERS ..........................................37
NO 15. INDEPENDENT AND DEPENDENT CLAIMS ............................................39
NO 16. INFRINGEMENT GENERALLY ...................................................................40
NO 17. DIRECT INFRINGEMENT BY “LITERAL INFRINGEMENT” ..............42
NO 18. DIRECT INFRINGEMENT “UNDER THE DOCTRINE OF
EQUIVALENTS” ................................................................................................44
NO 19. INDIRECT INFRINGEMENT—ACTIVE INDUCEMENT ........................46
NO 20. WILLFUL INFRINGEMENT..........................................................................47
NO 21. INVALIDITY—BURDEN OF PROOF...........................................................49
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NO 22. PRIOR ART .......................................................................................................50
NO 23. INVALIDITY-PRIOR ART-ANTICIPATION ..............................................51
NO 24. OBVIOUSNESS .................................................................................................53
NO 25. SCOPE AND CONTENT OF THE PRIOR ART ..........................................57
NO 26. LEVEL OF ORDINARY SKILL .....................................................................58
NO 27. PRIOR ART – ORAL TESTIMONY ..............................................................59
NO 28. DAMAGES – INTRODUCTION .....................................................................60
NO 29. REASONABLE ROYALTY - ENTITLEMENT ............................................62
NO 30. REASONABLE ROYALTY – DEFINITION .................................................63
NO 31. REASONABLE ROYALTY – RELEVANT FACTORS ...............................65
NO 32. DATE OF COMMENCEMENT OF DAMAGES ..........................................69
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PRELIMINARY JURY INSTRUCTIONS
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INSTRUCTION NO. 1
OPENING INSTRUCTIONS
WE ARE ABOUT TO BEGIN THE TRIAL OF THE CASE YOU HEARD ABOUT
DURING THE JURY SELECTION. BEFORE THE TRIAL BEGINS, I AM GOING TO GIVE
YOU A BRIEF OVERVIEW OF THIS CASE AND INSTRUCTIONS THAT WILL HELP
YOU UNDERSTAND WHAT WILL BE PRESENTED TO YOU AND HOW YOU SHOULD
CONDUCT YOURSELF DURING THE TRIAL.
LET ME BEGIN BY EXPLAINING SOME OF THE TERMS YOU WILL HEAR
DURING THE TRIAL. YOU WILL SOMETIMES HEAR ME REFER TO “COUNSEL.”
“COUNSEL” IS ANOTHER WAY OF SAYING “LAWYER” OR “ATTORNEY.” I WILL
SOMETIMES REFER TO MYSELF AS THE “COURT.” WHEN I “SUSTAIN” AN
OBJECTION, I AM EXCLUDING THAT EVIDENCE FROM THIS TRIAL FOR A GOOD
REASON. WHEN I “OVERRULE” AN OBJECTION, I AM PERMITTING THAT
EVIDENCE TO BE ADMITTED. WHEN I SAY “ADMITTED INTO EVIDENCE” OR
“RECEIVED INTO EVIDENCE,” I MEAN THAT THE PARTICULAR STATEMENT OR
THE PARTICULAR EXHIBIT MAY BE CONSIDERED BY YOU IN MAKING THE
DECISIONS YOU MUST MAKE AT THE END OF THE CASE.
BY YOUR VERDICT, YOU WILL DECIDE DISPUTED ISSUES OF FACT. I WILL
DECIDE ALL QUESTIONS OF LAW THAT ARISE DURING THE TRIAL. BEFORE YOU
BEGIN YOUR DELIBERATION AT THE CLOSE OF THE CASE, I WILL INSTRUCT YOU
IN MORE DETAIL ON THE LAW THAT YOU MUST FOLLOW AND APPLY. BECAUSE
YOU WILL BE ASKED TO DECIDE THE FACTS OF THIS CASE, YOU SHOULD GIVE
CAREFUL ATTENTION TO THE TESTIMONY AND EVIDENCE PRESENTED. DURING
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THE TRIAL YOU SHOULD KEEP AN OPEN MIND AND SHOULD NOT FORM OR
EXPRESS ANY OPINION ABOUT THE CASE UNTIL YOU HAVE HEARD ALL OF THE
TESTIMONY AND EVIDENCE, THE LAWYERS’ CLOSING ARGUMENTS, AND MY
INSTRUCTIONS TO YOU ON THE LAW.
FROM TIME-TO-TIME DURING THE TRIAL, I MAY MAKE RULINGS ON
OBJECTIONS OR MOTIONS MADE BY THE LAWYERS. IT IS A LAWYER’S DUTY TO
OBJECT WHEN THE OTHER SIDE OFFERS TESTIMONY OR OTHER EVIDENCE THAT
THE LAWYER BELIEVES IS NOT ADMISSIBLE. YOU SHOULD NOT BE UNFAIR OR
PARTIAL AGAINST A LAWYER OR THE LAWYER’S CLIENT BECAUSE THE LAWYER
HAS MADE OBJECTIONS. IF I SUSTAIN OR UPHOLD AN OBJECTION TO A
QUESTION THAT GOES UNANSWERED BY THE WITNESS, YOU SHOULD NOT
DRAW ANY INFERENCES OR CONCLUSIONS FROM THE QUESTION. YOU SHOULD
NOT INFER OR CONCLUDE FROM ANY RULING OR OTHER COMMENT I MAY
MAKE THAT I HAVE ANY OPINIONS ON THE MERITS OF THE CASE FAVORING ONE
SIDE OR THE OTHER. I DO NOT FAVOR ONE SIDE OR THE OTHER.
DURING THE TRIAL, IT MAY BE NECESSARY FOR ME TO TALK WITH THE
LAWYERS OUT OF YOUR HEARING ABOUT QUESTIONS OF LAW OR PROCEDURE.
SOMETIMES, YOU MAY BE EXCUSED FROM THE COURTROOM DURING THESE
DISCUSSIONS. I WILL TRY TO LIMIT THESE INTERRUPTIONS AS MUCH AS
POSSIBLE, BUT YOU SHOULD REMEMBER THE IMPORTANCE OF THE MATTER
YOU ARE HERE TO DETERMINE AND SHOULD BE PATIENT EVEN THOUGH
THE CASE MAY SEEM TO GO SLOWLY.
Authority: Adapted from 3 Kevin F. O’Malley, Jay E. Grenig, & Hon. William C. Lee, Federal
Jury Practice and Instructions – Civil § 101.01 (5th ed. 2000).
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INSTRUCTION NO. 2
PROVINCE OF JUDGE AND JURY
AFTER ALL THE EVIDENCE HAS BEEN HEARD AND ARGUMENTS AND
INSTRUCTIONS ARE FINISHED, YOU WILL MEET TO MAKE YOUR DECISION. YOU
WILL DETERMINE THE FACTS FROM ALL THE TESTIMONY AND OTHER EVIDENCE
THAT IS PRESENTED. YOU ARE THE SOLE AND EXCLUSIVE JUDGE OF THE FACTS.
I MUST STRESS THAT YOU ARE REQUIRED TO ACCEPT THE RULES OF LAW THAT I
GIVE YOU, WHETHER OR NOT YOU AGREE WITH THEM.
THE LAW PERMITS ME TO COMMENT ON THE EVIDENCE IN THE CASE
DURING THE TRIAL OR WHILE INSTRUCTING THE JURY. SUCH COMMENTS ARE
ONLY EXPRESSIONS OF MY OPINION AS TO THE FACTS. YOU MAY DISREGARD
THESE COMMENTS ENTIRELY, BECAUSE YOU ARE TO DETERMINE FOR
YOURSELF THE WEIGHT OF THE EVIDENCE AND THE CREDIBILITY OF EACH OF
THE WITNESSES.
Authority: Adapted from 3 Kevin F. O’Malley, Jay E. Grenig, & Hon. William C. Lee, Federal
Jury Practice and Instructions – Civil § 101.10 (5th ed. 2000).
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INSTRUCTION NO. 3
JURY CONDUCT
TO ENSURE FAIRNESS, YOU MUST OBEY THE FOLLOWING RULES:
1. DO NOT TALK TO EACH OTHER ABOUT THIS CASE OR ABOUT
ANYONE INVOLVED WITH THIS CASE UNTIL THE END OF THE TRIAL WHEN YOU
GO TO THE JURY ROOM TO DECIDE ON YOUR VERDICT.
2. DO NOT TALK WITH ANYONE ELSE ABOUT THIS CASE OR ABOUT
ANYONE INVOLVED WITH THIS CASE UNTIL THE TRIAL HAS ENDED AND YOU
HAVE BEEN DISCHARGED AS JURORS. “ANYONE ELSE” INCLUDES MEMBERS OF
YOUR FAMILY AND YOUR FRIENDS. YOU MAY TELL PEOPLE YOU ARE A JUROR,
BUT DO NOT TELL THEM ANYTHING ELSE ABOUT THE CASE.
3. OUTSIDE THE COURTROOM, DO NOT LET ANYONE TELL YOU
ANYTHING ABOUT THE CASE, OR ABOUT ANYONE INVOLVED WITH IT UNTIL THE
TRIAL HAS ENDED. IF SOMEONE SHOULD TRY TO TALK TO YOU ABOUT THE
CASE DURING THE TRIAL, PLEASE REPORT IT TO ME IMMEDIATELY.
4. DURING THE TRIAL YOU SHOULD NOT TALK WITH OR SPEAK TO
ANY OF THE PARTIES, LAWYERS OR WITNESSES INVOLVED IN THIS CASE—YOU
SHOULD NOT EVEN PASS THE TIME OF DAY WITH ANY OF THEM. IT IS
IMPORTANT NOT ONLY THAT YOU DO JUSTICE IN THIS CASE, BUT THAT YOU
ALSO GIVE THE APPEARANCE OF DOING JUSTICE.
5. DO NOT READ ANY NEWS STORIES OR ARTICLES ABOUT THE CASE,
OR ABOUT ANYONE INVOLVED WITH IT, OR LISTEN TO ANY RADIO OR
TELEVISION REPORTS ABOUT THE CASE OR ABOUT ANYONE INVOLVED WITH IT.
6. DO NOT DO ANY RESEARCH, SUCH AS CHECKING DICTIONARIES, OR
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MAKE ANY INVESTIGATION ABOUT THE CASE ON YOUR OWN.
7. DO NOT MAKE UP YOUR MIND DURING THE TRIAL ABOUT WHAT
THE VERDICT SHOULD BE. KEEP AN OPEN MIND UNTIL AFTER YOU HAVE GONE
TO THE JURY ROOM TO DECIDE THE CASE AND YOU AND THE OTHER JURORS
HAVE DISCUSSED ALL THE EVIDENCE.
8. IF YOU NEED TO TELL ME SOMETHING, SIMPLY GIVE A SIGNED NOTE TO
THE MARSHAL TO GIVE TO ME.
Authority: Adapted from 3 Kevin F. O’Malley, Jay E. Grenig, & Hon. William C. Lee, Federal
Jury Practice and Instructions – Civil § 101.11 (5th ed. 2000).
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INSTRUCTION NO. 4
EVIDENCE
THE EVIDENCE IN THIS CASE WILL CONSIST OF THE FOLLOWING:
1. THE SWORN TESTIMONY OF THE WITNESSES, NO MATTER WHO CALLED
A WITNESS.
2. ALL EXHIBITS RECEIVED IN EVIDENCE, REGARDLESS OF WHO MAY
HAVE PRODUCED THE EXHIBITS.
3. ALL FACTS THAT ARE JUDICIALLY NOTICED, YOU MUST TAKE THEM AS
TRUE FOR PURPOSES OF THIS CASE.
DEPOSITIONS MAY ALSO BE RECEIVED IN EVIDENCE. DEPOSITIONS
CONTAIN SWORN TESTIMONY, WITH THE LAWYERS FOR EACH PARTY BEING
ENTITLED TO ASK QUESTIONS. IN SOME CASES, ALL OR PART OF A DEPOSITION
MAY BE PLAYED FOR YOU ON VIDEOTAPE. DEPOSITION TESTIMONY MAY BE
ACCEPTED BY YOU, SUBJECT TO THE SAME INSTRUCTIONS THAT APPLY TO
WITNESSES TESTIFYING IN OPEN COURT.
STATEMENTS AND ARGUMENTS OF THE LAWYERS ARE NOT EVIDENCE IN
THE CASE, UNLESS MADE AS AN ADMISSION OR STIPULATION OF FACT. A
“STIPULATION” IS AN AGREEMENT BETWEEN BOTH SIDES THAT CERTAIN FACTS
ARE TRUE. WHEN THE LAWYERS ON BOTH SIDES STIPULATE OR AGREE TO THE
EXISTENCE OF A FACT, YOU MUST, UNLESS OTHERWISE INSTRUCTED, ACCEPT
THE STIPULATION AS EVIDENCE, AND REGARD THAT FACT AS PROVED.
I MAY TAKE JUDICIAL NOTICE OF CERTAIN FACTS OR EVENTS. WHEN I
DECLARE THAT I WILL TAKE JUDICIAL NOTICE OF SOME FACT OR EVENT, YOU
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MUST ACCEPT THAT FACT AS TRUE.
IF I SUSTAIN AN OBJECTION TO ANY EVIDENCE OR IF I ORDER EVIDENCE
STRICKEN, THAT EVIDENCE MUST BE ENTIRELY IGNORED. SOME EVIDENCE IS
ADMITTED FOR A LIMITED PURPOSE ONLY.
WHEN I INSTRUCT YOU THAT AN ITEM OF EVIDENCE HAS BEEN ADMITTED
FOR A LIMITED PURPOSE, YOU MUST CONSIDER IT ONLY FOR THAT LIMITED
PURPOSE AND FOR NO OTHER PURPOSE.
YOU ARE TO CONSIDER ONLY THE EVIDENCE IN THE CASE. BUT IN YOUR
CONSIDERATION OF THE EVIDENCE YOU ARE NOT LIMITED TO THE STATEMENTS
OF THE WITNESS. IN OTHER WORDS, YOU ARE NOT LIMITED SOLELY TO WHAT
YOU SEE AND HEAR AS THE WITNESSES TESTIFIED. YOU MAY DRAW FROM THE
FACTS THAT YOU FIND HAVE BEEN PROVED, SUCH REASONABLE INFERENCES
OR CONCLUSIONS AS YOU FEEL ARE JUSTIFIED IN LIGHT OF YOUR EXPERIENCE.
AT THE END OF THE TRIAL YOU WILL HAVE TO MAKE YOUR DECISION
BASED ON WHAT YOU RECALL OF THE EVIDENCE.
YOU WILL NOT HAVE A WRITTEN TRANSCRIPT TO CONSULT, AND IT IS
DIFFICULT AND TIME CONSUMING FOR THE REPORTER TO READ BACK LENGTHY
TESTIMONY. I URGE YOU TO PAY CLOSE ATTENTION TO THE TESTIMONY AS IT
IS GIVEN.
THE EVIDENCE IN THIS CASE MAY BE EITHER OF TWO TYPES: “DIRECT
EVIDENCE” AND “CIRCUMSTANTIAL EVIDENCE.” “DIRECT EVIDENCE” IS DIRECT
PROOF OF A FACT, SUCH AS TESTIMONY BY A WITNESS ABOUT WHAT THE
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WITNESS SAID OR HEARD OR DID. “CIRCUMSTANTIAL EVIDENCE” IS PROOF OF
ONE OR MORE FACTS FROM WHICH YOU COULD FIND ANOTHER FACT. YOU
SHOULD CONSIDER BOTH KINDS OF EVIDENCE. THE LAW MAKES NO
DISTINCTION BETWEEN THE WEIGHTS TO BE GIVEN TO EITHER DIRECT OR
CIRCUMSTANTIAL EVIDENCE. YOU ARE TO DECIDE HOW MUCH WEIGHT TO
GIVE ANY EVIDENCE.
Authority: Adapted from 3 Kevin F. O’Malley, Jay E. Grenig, & Hon. William C. Lee, Federal
Jury Practice and Instructions – Civil §§ 101.40 & 101.42 (5th ed. 2000).
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INSTRUCTION NO. 5
EVIDENCE—CREDIBILITY OF WITNESSES
IN DECIDING THE FACTS, YOU MAY HAVE TO DECIDE WHICH TESTIMONY
TO BELIEVE AND WHICH TESTIMONY NOT TO BELIEVE. YOU MAY BELIEVE
EVERYTHING A WITNESS SAYS, PART OF IT, OR NONE OF IT. IN CONSIDERING
THE TESTIMONY OF ANY WITNESS, YOU MAY TAKE INTO ACCOUNT MANY
FACTORS, INCLUDING THE WITNESS’ OPPORTUNITY AND ABILITY TO SEE AND
HEAR OR KNOW THE THINGS THE WITNESS TESTIFIED ABOUT; THE QUALITY OF
THE WITNESS’ MEMORY; THE WITNESS’ APPEARANCE AND MANNER WHILE
TESTIFYING; THE WITNESS’ INTEREST IN THE OUTCOME OF THE CASE; ANY BIAS
OR PREJUDICE THE WITNESS MAY HAVE; OTHER EVIDENCE THAT MAY HAVE
CONTRADICTED THE WITNESS’ TESTIMONY; AND THE REASONABLENESS OF THE
WITNESS’ TESTIMONY IN LIGHT OF ALL THE EVIDENCE. THE WEIGHT OF THE
EVIDENCE DOES NOT NECESSARILY DEPEND UPON THE NUMBER OF WITNESSES
WHO TESTIFY.
A WITNESS MAY BE DISCREDITED OR IMPEACHED BY CONTRADICTORY
EVIDENCE OR BY EVIDENCE THAT AT SOME OTHER TIME THE WITNESS HAS SAID
OR DONE SOMETHING, OR HAS FAILED TO SAY OR DO SOMETHING THAT IS
INCONSISTENT WITH THE WITNESS’ PRESENT TESTIMONY. IF YOU BELIEVE ANY
WITNESS HAS BEEN IMPEACHED AND THUS DISCREDITED, YOU MAY GIVE THE
TESTIMONY OF THAT WITNESS SUCH CREDIBILITY, IF ANY, YOU THINK IT
DESERVES.
IF A WITNESS IS SHOWN KNOWINGLY TO HAVE TESTIFIED FALSELY
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ABOUT ANY MATERIAL MATTER, YOU HAVE A RIGHT TO DISTRUST SUCH
WITNESS’ OTHER TESTIMONY AND YOU MAY REJECT ALL THE TESTIMONY OF
THAT WITNESS OR GIVE IT SUCH CREDIBILITY AS YOU MAY THINK IT DESERVES.
AN ACT OR OMISSION IS “KNOWINGLY” DONE, IF VOLUNTARY AND
INTENTIONALLY, AND NOT BECAUSE OF MISTAKE OR ACCIDENT OR OTHER
INNOCENT REASON.
Authority: Adapted from 3 Kevin F. O’Malley, Jay E. Grenig, & Hon. William C. Lee, Federal
Jury Practice and Instructions – Civil §§ 101.43 & 105.04 (5th ed. 2000).
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JURY INSTRUCTION NO. 6
WHAT A PATENT IS AND HOW ONE IS OBTAINED
THIS CASE INVOLVES A DISPUTE RELATING TO TWO UNITED STATES
PATENTS. BEFORE SUMMARIZING THE POSITIONS OF THE PARTIES AND THE
ISSUES INVOLVED IN THE DISPUTE, LET ME TAKE A MOMENT TO EXPLAIN WHAT
A PATENT IS AND HOW ONE IS OBTAINED.
THE UNITED STATES CONSTITUTION GRANTS CONGRESS THE POWERS TO
ENACT LAWS “TO PROMOTE THE PROGRESS OF SCIENCE AND USEFUL ARTS, BY
SECURING FOR LIMITED TIMES TO AUTHORS AND INVENTORS THE EXCLUSIVE
RIGHT TO THEIR RESPECTIVE WRITINGS AND DISCOVERIES.” USING THIS
POWER, CONGRESS ENACTED THE PATENT LAWS.
PATENTS ARE GRANTED BY THE UNITED STATES PATENT AND
TRADEMARK OFFICE (SOMETIMES CALLED “THE PATENT OFFICE” OR “PTO”). A
UNITED STATES PATENT GIVES THE PATENT OWNER THE RIGHT, FOR UP TO
TWENTY YEARS FROM THE DATE THAT THE PATENT APPLICATION WAS FILED,
TO PREVENT OTHERS FROM MAKING, USING, OFFERING TO SELL, OR SELLING
THE PATENTED INVENTION WITHIN THE UNITED STATES WITHOUT THE PATENT
OWNER’S PERMISSION. A VIOLATION OF THE PATENT OWNER’S RIGHTS IS
CALLED INFRINGEMENT. THE PATENT OWNER ENFORCES A PATENT AGAINST
PERSONS BELIEVED TO BE INFRINGERS BY A LAWSUIT FILED IN FEDERAL
COURT, LIKE THIS COURT.
THE PROCESS OF OBTAINING A PATENT IS CALLED PATENT PROSECUTION.
TO OBTAIN A PATENT ONE MUST FILE AN APPLICATION WITH THE PTO. THE PTO
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IS AN AGENCY OF THE FEDERAL GOVERNMENT AND EMPLOYS TRAINED
EXAMINERS WHO REVIEW APPLICATIONS FOR PATENTS. THE APPLICATION
INCLUDES WHAT IS CALLED A “SPECIFICATION,” WHICH CONTAINS A WRITTEN
DESCRIPTION OF THE CLAIMED INVENTION TELLING WHAT THE INVENTION IS,
HOW IT WORKS, HOW TO MAKE IT AND HOW TO USE IT SO THAT SOMEONE WITH
SKILL IN THAT FIELD WILL KNOW HOW TO MAKE OR USE IT. THE SPECIFICATION
CONCLUDES WITH ONE OR MORE NUMBERED SENTENCES. THESE ARE THE
PATENT “CLAIMS.” WHEN THE PATENT IS EVENTUALLY GRANTED BY THE PTO,
THE CLAIMS DEFINE THE BOUNDARIES OF ITS PROTECTION AND GIVE NOTICE TO
THE PUBLIC OF THOSE BOUNDARIES.
CLAIMS CAN BE INDEPENDENT OR DEPENDENT. AN INDEPENDENT CLAIM
IS SELF-CONTAINED. A DEPENDENT CLAIM INCLUDES ITS OWN REQUIREMENTS
AND THE REQUIREMENTS OF THE INDEPENDENT CLAIM THAT IT REFERS BACK
TO.
AFTER THE APPLICANT FILES THE APPLICATION, AN EXAMINER REVIEWS
THE APPLICATION TO DETERMINE WHETHER THE CLAIMS ARE PATENTABLE
(APPROPRIATE FOR PATENT PROTECTION) AND WHETHER THE SPECIFICATION
ADEQUATELY DESCRIBES THE INVENTION CLAIMED. IN EXAMINING A PATENT
APPLICATION, THE EXAMINER REVIEWS CERTAIN INFORMATION ABOUT THE
STATE OF THE TECHNOLOGY AT THE TIME THE APPLICATION WAS FILED. THE
PTO SEARCHES FOR AND REVIEWS INFORMATION THAT IS PUBLICLY AVAILABLE
OR THAT IS SUBMITTED BY THE APPLICANT; THIS INFORMATION IS CALLED
“PRIOR ART.” THE EXAMINER REVIEWS THIS PRIOR ART TO DETERMINE
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WHETHER OR NOT THE INVENTION IS TRULY AN ADVANCE OVER THAT OF THE
ART AT THE TIME. PRIOR ART IS DEFINED BY LAW, AND I WILL GIVE YOU, AT A
LATER TIME SPECIFIC INSTRUCTIONS AS TO WHAT CONSTITUTES PRIOR ART.
HOWEVER, IN GENERAL, PRIOR ART INCLUDES INFORMATION THAT
DEMONSTRATES THE STATE OF TECHNOLOGY THAT EXISTED BEFORE THE
CLAIMED INVENTION WAS MADE OR BEFORE THE APPLICATION WAS FILED. A
PATENT LISTS THE PRIOR ART THAT THE EXAMINER CONSIDERED; THIS LIST IS
CALLED THE “CITED REFERENCES.”
AFTER THE PRIOR ART SEARCH AND EXAMINATION OF THE APPLICATION,
THE EXAMINER INFORMS THE APPLICANT IN WRITING OF WHAT THE EXAMINER
HAS FOUND AND WHETHER THE EXAMINER CONSIDERS ANY CLAIM TO BE
PATENTABLE, AND THUS, WILL BE “ALLOWED.” THIS WRITING FROM THE
EXAMINER IS CALLED AN “OFFICE ACTION.” IF THE EXAMINER REJECTS THE
CLAIMS, THE APPLICANT HAS AN OPPORTUNITY TO RESPOND TO THE EXAMINER
TO TRY TO PERSUADE THE EXAMINER TO ALLOW THE CLAIMS, AND TO CHANGE
THE CLAIMS. THIS PROCESS MAY GO BACK AND FORTH FOR SOME TIME UNTIL
THE EXAMINER IS SATISFIED THAT THE APPLICATION MEETS THE
REQUIREMENTS FOR A PATENT AND THE APPLICATION ISSUES AS A PATENT, OR
THAT THE APPLICATION SHOULD BE REJECTED AND NO PATENT SHOULD ISSUE.
SOMETIMES, PATENTS ARE ISSUED AFTER APPEALS WITHIN THE PTO OR TO A
COURT. THE PAPERS GENERATED DURING THESE COMMUNICATIONS BETWEEN
THE EXAMINER AND THE APPLICANT ARE CALLED THE “PROSECUTION
HISTORY.”
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ONCE ISSUED, A PATENT IS PRESUMED TO BE VALID BECAUSE THE PTO, AS
A GOVERNMENTAL AGENCY, IS PRESUMED TO HAVE PROPERLY DONE ITS JOB IN
EXAMINING PATENT APPLICATIONS. BUT THE FACT THAT THE PTO GRANTS A
PATENT DOES NOT NECESSARILY MEAN THAT ANY INVENTION CLAIMED IN THE
PATENT, IN FACT, DESERVES THE PROTECTION OF A PATENT. ONE OR MORE
CLAIMS MAY, IN FACT, NOT BE PATENTABLE UNDER LAW. A PERSON ACCUSED
OF INFRINGEMENT HAS THE RIGHT TO ARGUE HERE IN FEDERAL COURT THAT A
CLAIMED INVENTION IN THE PATENT IS INVALID BECAUSE IT DOES NOT IN FACT
MEET THE REQUIREMENTS FOR A PATENT.
Authority: Adapted from Model Patent Jury Instructions § A.1, Federal Circuit Bar Association
(February 2012).
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JURY INSTRUCTION NO. 7
SUMMARY OF CONTENTIONS
TO HELP YOU FOLLOW THE EVIDENCE, I WILL NOW GIVE YOU A
SUMMARY OF THE POSITIONS OF THE PARTIES.
THE PARTIES IN THIS CASE ARE THE PLAINTIFF, I/P ENGINE, INC., WHICH
MAY BE REFERRED TO AS “I/P ENGINE,” AND AOL INC., GOOGLE INC., IAC
SEARCH & MEDIA, INC., TARGET CORPORATION, AND GANNETT COMPANY, INC.,
WHICH MAY BE REFERRED TO COLLECTIVELY AS “DEFENDANTS.”
THIS IS A PATENT CASE. IT INVOLVES TWO U.S. PATENTS, UNITED STATES
PATENT NOS. 6,314,420 AND 6,775,664. FOR CONVENIENCE, THE PARTIES AND I
WILL OFTEN REFER TO PATENT NUMBERS 6,314,420 AND 6,775,664 BY THEIR LAST
THREE NUMBERS, NAMELY, THE ‘420 PATENT AND THE ‘664 PATENT. THESE
PATENTS GENERALLY INVOLVE SYSTEMS THAT COMBINE CONTENT AND
COLLABORATIVE FEEDBACK DATA IN FILTERING FOR RELEVANCE TO A USER’S
QUERY. DURING THE TRIAL, THE PARTIES WILL OFFER TESTIMONY TO
FAMILIARIZE YOU WITH THE HISTORY AND DEVELOPMENT OF THE SYSTEMS,
WHICH ARE THE SUBJECT OF THIS CASE.
I/P ENGINE FILED SUIT IN THIS COURT SEEKING MONEY DAMAGES FROM
DEFENDANTS FOR ALLEGEDLY INFRINGING, DIRECTLY AND/OR INDIRECTLY,
THE ‘420 PATENT AND THE ‘664 PATENT BY MAKING, USING, SELLING, AND
OFFERING FOR SALE IN THE UNITED STATES SYSTEMS THAT I/P ENGINE ASSERTS
ARE COVERED BY CLAIMS 10, 14, 15, 25, 27, AND 28 OF THE ‘420 PATENT AND
CLAIMS 1, 5, 6, 21, 22, 26, 28, AND 38 OF THE ‘664 PATENT. THE SYSTEMS THAT ARE
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ALLEGED TO INFRINGE ARE GOOGLE’S ADWORDS, ADSENSE FOR SEARCH, AND
ADSENSE FOR MOBILE SEARCH SYSTEMS, AND AOL’S SEARCH MARKETPLACE
SYSTEM.
DEFENDANTS DENY THAT THEY HAVE INFRINGED ANY OF THE ASSERTED
CLAIMS OF THE ‘420 OR ‘664 PATENTS. DEFENDANTS ALSO ARGUE THAT THE
ASSERTED CLAIMS ARE INVALID. I WILL INSTRUCT YOU LATER AS TO THE
WAYS IN WHICH A PATENT MAY BE INVALID. IN GENERAL, A PATENT IS
INVALID IF IT IS NOT NEW OR IS OBVIOUS IN VIEW OF THE STATE OF THE ART AT
THE RELEVANT TIME, OR IF THE DESCRIPTION IN THE PATENT DOES NOT MEET
CERTAIN REQUIREMENTS.
YOUR JOB WILL BE TO DECIDE WHETHER OR NOT THE DEFENDANTS HAVE
BEEN INFRINGING ANY OF THE CLAIMS OF THE PATENTS-IN-SUIT, AND WHETHER
OR NOT THOSE CLAIMS ARE INVALID. IF YOU DECIDE THAT ANY CLAIM OF THE
‘420 OR ‘664 PATENTS IS VALID AND INFRINGED, YOU MUST THEN DECIDE THE
MONEY DAMAGES TO BE AWARDED TO I/P ENGINE TO COMPENSATE IT FOR THE
INFRINGEMENT. I WILL INSTRUCT YOU LATER AS TO HOW YOU DETERMINE
DAMAGES. IN GENERAL, THE DAMAGES MUST BE ADEQUATE TO COMPENSATE
I/P ENGINE FOR THE INFRINGEMENT.
YOU WILL ALSO NEED TO MAKE A FINDING AS TO WHETHER THE
INFRINGEMENT WAS WILLFUL. IF YOU DECIDE THAT ANY INFRINGEMENT WAS
WILLFUL, THAT DECISION SHOULD NOT AFFECT ANY DAMAGES AWARD YOU
GIVE. I WILL TAKE WILLFULNESS INTO ACCOUNT LATER.
Authority: Adapted From Model Patent Jury Instructions §§ A.2, B.5.2, Federal Circuit Bar
Association (February 2012).
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INSTRUCTION NO. 8
PATENTS AT ISSUE
[THE COURT SHOWS THE JURY ONE OR MORE OF THE PATENTS-IN-SUIT
AND POINTS OUT THE PARTS, WHICH INCLUDE THE SPECIFICATION, DRAWINGS,
AND CLAIMS, INCLUDING CLAIMS AT ISSUE.]
LET’S TAKE A MOMENT TO LOOK AT THE TWO PATENTS INVOLVED IN
THIS CASE. THE FIRST PAGE OF EACH PATENT IDENTIFIES THE DATE THE
PATENT WAS GRANTED AND PATENT NUMBER ALONG THE TOP, AS WELL AS THE
NAMES OF THE INVENTORS, THE FILING DATE, AND A LIST OF THE REFERENCES
CONSIDERED IN THE PTO.
THE SPECIFICATION OF THE PATENT BEGINS WITH AN ABSTRACT, ALSO
FOUND ON THE FIRST PAGE. THE ABSTRACT IS A BRIEF STATEMENT ABOUT THE
SUBJECT MATTER OF THE INVENTION. NEXT ARE THE DRAWINGS. THE
DRAWINGS ILLUSTRATE VARIOUS ASPECTS OR FEATURES OF THE INVENTION.
THE WRITTEN DESCRIPTION OF THE INVENTION APPEARS NEXT AND IS
ORGANIZED INTO TWO COLUMNS ON EACH PAGE. THE SPECIFICATION ENDS
WITH NUMBERED PARAGRAPHS; AS I INDICATED, THESE ARE THE PATENT
CLAIMS, WHICH DEFINE THE SCOPE OF THE INVENTION AND THE PATENT
OWNER’S RIGHT TO EXCLUDE OTHERS FROM MAKING, USING, SELLING OR
OFFERING TO SELL THAT INVENTION.
Authority: Adapted from Adapted from Patent Jury Instructions, The National Patent Jury
Instruction Project § 1.2 (June 17, 2009).
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INSTRUCTION NO. 9
PATENTS AT ISSUE—CLAIM CONSTRUCTION
[THE COURT HANDS OUT ITS CLAIM CONSTRUCTIONS AT THIS TIME. THE
FOLLOWING INSTRUCTION SHOULD BE READ:]
I HAVE ALREADY DETERMINED THE MEANING OF SOME OF THE TERMS OF
THE ASSERTED CLAIMS. YOU HAVE BEEN GIVEN A DOCUMENT REFLECTING
THOSE MEANINGS. FOR ANY CLAIM TERM FOR WHICH I HAVE NOT PROVIDED
YOU WITH A DEFINITION, YOU SHOULD APPLY ITS ORDINARY MEANING. YOU
ARE TO APPLY MY DEFINITIONS OF THESE TERMS THROUGHOUT THIS CASE.
HOWEVER, MY INTERPRETATION OF THE LANGUAGE OF THE CLAIMS
SHOULD NOT BE TAKEN AS AN INDICATION THAT I HAVE A VIEW REGARDING
ISSUES SUCH AS INFRINGEMENT OR INVALIDITY. THOSE ISSUES ARE YOURS TO
DECIDE. I WILL PROVIDE YOU WITH MORE DETAILED INSTRUCTIONS ON THE
MEANING OF THE CLAIMS BEFORE YOU RETIRE TO DELIBERATE YOUR VERDICT.
Authority: Adapted from Model Patent Jury Instructions § A.3, Federal Circuit Bar Association
(February 2012).
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INSTRUCTION NO. 10
OVERVIEW OF APPLICABLE LAW
IN DECIDING THE ISSUES I JUST DISCUSSED, YOU WILL BE ASKED TO
CONSIDER SPECIFIC LEGAL STANDARDS. I WILL GIVE YOU AN OVERVIEW OF
THOSE STANDARDS NOW AND WILL REVIEW THEM IN MORE DETAIL BEFORE
THE CASE IS SUBMITTED TO YOU FOR YOUR VERDICT.
THE FIRST ISSUE YOU WILL BE ASKED TO DECIDE IS WHETHER
DEFENDANTS HAVE INFRINGED ANY OF THE CLAIMS OF THE PATENTS-IN-SUIT.
INFRINGEMENT IS ASSESSED ON A CLAIM-BY-CLAIM BASIS. THEREFORE, THERE
MAY BE INFRINGEMENT AS TO ONE CLAIM BUT NOT INFRINGEMENT AS TO
ANOTHER. THERE ARE A FEW DIFFERENT WAYS THAT A PATENT MAY BE
INFRINGED. I WILL EXPLAIN THE REQUIREMENTS FOR EACH OF THESE TYPES OF
INFRINGEMENT TO YOU IN DETAIL AT THE CONCLUSION OF THE CASE. IN
GENERAL, HOWEVER, AN ACCUSED INFRINGER MAY INFRINGE THE ASSERTED
PATENTS BY MAKING, USING, SELLING, OR OFFERING FOR SALE IN THE UNITED
STATES, A PRODUCT OR BY USING A METHOD MEETING ALL THE REQUIREMENTS
OF A CLAIM OF THE ASSERTED PATENT. AN ACCUSED INFRINGER MAY ALSO
INDIRECTLY INFRINGE THE ASSERTED PATENTS BY CONTRIBUTING TO
INFRINGEMENT BY ANOTHER ENTITY, OR BY INDUCING ANOTHER PERSON OR
ENTITY TO INFRINGE. I WILL PROVIDE YOU WITH MORE DETAILED
INSTRUCTIONS ON THE REQUIREMENTS FOR EACH OF THESE TYPES OF
INFRINGEMENT AT THE CONCLUSION OF THE CASE.
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ANOTHER ISSUE YOU WILL BE ASKED TO DECIDE IS WHETHER I/P
ENGINE’S PATENTS IN SUIT ARE INVALID. A PATENT MAY BE INVALID FOR A
NUMBER OF REASONS, INCLUDING BECAUSE IT CLAIMS SUBJECT MATTER THAT
IS NOT NEW OR IS OBVIOUS. FOR A CLAIM TO BE INVALID BECAUSE IT IS NOT
NEW, DEFENDANTS MUST SHOW, BY CLEAR AND CONVINCING EVIDENCE, THAT
ALL OF THE ELEMENTS OF A CLAIM ARE PRESENT IN A SINGLE PREVIOUS
DEVICE OR METHOD, OR SUFFICIENTLY DESCRIBED IN A SINGLE PREVIOUS
PRINTED PUBLICATION OR PATENT. WE CALL THESE “PRIOR ART.” IF A CLAIM IS
NOT NEW, IT IS SAID TO BE ANTICIPATED.
ANOTHER WAY THAT A CLAIM MAY BE INVALID IS THAT IT MAY HAVE
BEEN OBVIOUS. EVEN THOUGH EVERY ELEMENT OF A CLAIM IS NOT SHOWN OR
SUFFICIENTLY DESCRIBED IN A SINGLE PIECE OF “PRIOR ART,” THE CLAIM MAY
STILL BE INVALID IF IT WOULD HAVE BEEN OBVIOUS TO A PERSON OF
ORDINARY SKILL IN THE FIELD OF TECHNOLOGY OF THE PATENT AT THE
RELEVANT TIME. YOU WILL NEED TO CONSIDER A NUMBER OF QUESTIONS IN
DECIDING WHETHER THE INVENTION(S) CLAIMED IN THE ASSERTED PATENTS
ARE OBVIOUS. I WILL PROVIDE YOU DETAILED INSTRUCTIONS ON THESE
QUESTIONS AT THE CONCLUSION OF THE CASE.
IF YOU DECIDE THAT ANY CLAIM OF THE PATENTS-IN-SUIT HAS BEEN
INFRINGED AND IS NOT INVALID, YOU WILL THEN NEED TO DECIDE
ANY MONEY DAMAGES TO BE AWARDED TO I/P ENGINE TO COMPENSATE IT FOR
THE INFRINGEMENT. A DAMAGES AWARD MUST BE ADEQUATE TO
COMPENSATE I/P ENGINE FOR THE INFRINGEMENT, BUT IN NO EVENT MAY THE
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DAMAGES AWARD BE LESS THAN WHAT I/P ENGINE WOULD HAVE RECEIVED
HAD IT BEEN PAID A REASONABLE ROYALTY. I WILL INSTRUCT YOU LATER ON
THE MEANING OF A REASONABLE ROYALTY. THE DAMAGES YOU AWARD ARE
MEANT TO COMPENSATE I/P ENGINE AND NOT TO PUNISH DEFENDANTS. YOU
MAY NOT INCLUDE IN YOUR AWARD ANY ADDITIONAL AMOUNT AS A FINE OR
PENALTY, ABOVE WHAT IS NECESSARY TO COMPENSATE I/P ENGINE FOR THE
INFRINGEMENT. I WILL GIVE YOU MORE DETAILED INSTRUCTIONS ON THE
CALCULATION OF DAMAGES AT THE CONCLUSION OF THE CASE.
Authority: Adapted from Model Patent Jury Instructions § A.4, Federal Circuit Bar Association
(Feb. 2012).
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INSTRUCTION NO. 11
GLOSSARY OF PATENT TERMS
TO ASSIST YOU IN YOUR DELIBERATION, I HAVE ATTACHED A GLOSSARY
OF PATENT TERMS THAT IDENTIFIES TERMS USED IN PATENT MATTERS AND
GIVES YOU A DEFINITION OF THOSE TERMS.
ABSTRACT: A BRIEF SUMMARY OF THE TECHNICAL DISCLOSURE IN A
PATENT TO ENABLE THE U.S. PATENT AND TRADEMARK OFFICE AND THE
PUBLIC TO DETERMINE QUICKLY THE NATURE AND GIST OF THE TECHNICAL
DISCLOSURE IN THE PATENT.
AMENDMENT: A PATENT APPLICANT’S CHANGE TO ONE OR MORE OF THE
CLAIMS OR TO THE SPECIFICATION EITHER IN RESPONSE TO AN OFFICE ACTION
TAKEN BY AN EXAMINER OR INDEPENDENTLY BY THE PATENT APPLICANT
DURING THE PATENT APPLICATION EXAMINATION PROCESS.
APPLICATION: THE INITIAL PAPERS FILED BY THE APPLICANT IN THE
UNITED STATES PATENT AND TRADEMARK OFFICE SEEKING ISSUANCE OF A
PATENT.
ANTICIPATION: A SITUATION IN WHICH A CLAIMED INVENTION
DESCRIBES AN EARLIER INVENTION AND, THEREFORE, IS NOT CONSIDERED NEW
AND IS NOT ENTITLED TO BE PATENTED.
ASSIGNMENT: A TRANSFER OF PATENT RIGHTS TO ANOTHER CALLED AN
“ASSIGNEE” WHO, UPON TRANSFER, BECOMES THE OWNER OF THE RIGHTS
ASSIGNED.
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CLAIMS: THE NUMBERED SENTENCES APPEARING AT THE END OF THE
PATENT THAT DEFINE THE INVENTION. THE WORDS OF THE CLAIMS DEFINE THE
SCOPE OF THE PATENT OWNER’S EXCLUSIVE RIGHTS DURING THE LIFE OF THE
PATENT. CLAIMS CAN BE INDEPENDENT OR DEPENDENT. AN INDEPENDENT
CLAIM IS SELF-CONTAINED. A DEPENDENT CLAIM REFERS BACK TO AN EARLIER
CLAIM AND INCLUDES THE REQUIREMENTS OF THE EARLIER CLAIM.
CRITICAL DATE: THIS REFERS TO THE DATE OF THE INITIAL PLACING ON
SALE, PUBLICATION, OR PUBLIC OR COMMERCIAL USE OF AN INVENTION. AT
THE END OF THE ONE-YEAR PERIOD, A U.S. PATENT APPLICATION CANNOT BE
FILED BECAUSE THE STATUTE BARS SUCH FILING.
DEPENDENT CLAIM: THIS IS A CLAIM THAT MAKES EXPRESS REFERENCE
TO AND DEPENDS ON A PRIOR CLAIM AND, THEREBY, INCORPORATES BY
REFERENCE ALL OF THE ELEMENTS OF THE PRIOR CLAIM. THIS CLAIM MUST BE
READ AS IF IT CONTAINED ITS OWN EXPRESS ELEMENTS PLUS THE ELEMENTS OF
EVERY CLAIM OR CLAIMS FROM WHICH IT DEPENDS. CLAIMS THAT DO NOT
DEPEND FROM ANOTHER ARE REFERRED TO AS INDEPENDENT CLAIMS.
DRAWINGS: THE DRAWINGS ARE VISUAL REPRESENTATIONS OF THE
CLAIMED INVENTION CONTAINED IN A PATENT APPLICATION AND ISSUED
PATENT, AND USUALLY INCLUDE SEVERAL FIGURES ILLUSTRATING VARIOUS
ASPECTS OF THE CLAIMED INVENTION.
ELEMENTS: THE REQUIRED PARTS OF A DEVICE OR THE REQUIRED STEPS
OF A METHOD. A DEVICE OR METHOD INFRINGES A PATENT CLAIM IF IT
CONTAINS EACH AND EVERY REQUIREMENT OF THE CLAIM.
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EMBODIMENT: A PRODUCT OR METHOD THAT CONTAINS THE CLAIMED
INVENTION.
EXAMINATION: PROCEDURE BEFORE THE U.S. PATENT AND TRADEMARK
OFFICE WHEREBY AN EXAMINER REVIEWS THE FILED PATENT APPLICATION TO
DETERMINE IF THE CLAIMED INVENTION IS PATENTABLE.
FILE WRAPPER: ANOTHER TERM FOR “PROSECUTION HISTORY” WHICH I
WILL DEFINE SOON.
FILING DATE: DATE A PATENT APPLICATION, WITH ALL THE REQUIRED
SECTIONS, HAS BEEN SUBMITTED TO THE PTO.
INDEPENDENT CLAIM: THIS IS A CLAIM THAT STANDS BY ITSELF AND
MUST BE SO READ IN TERMS OF INFRINGEMENT AND VALIDITY
DETERMINATION. THIS IS CONTRASTED WITH A DEPENDENT CLAIM.
INFRINGEMENT: VIOLATION OF A PATENT OCCURRING WHEN SOMEONE
MAKES, USES, OR SELLS A PATENTED INVENTION WITHIN THE UNITED STATES,
OR IMPORTS A PATENTED INVENTION INTO THE UNITED STATES, WITHOUT
PERMISSION OF THE PATENT HOLDER, DURING THE TERM OF THE PATENT.
INFRINGEMENT MAY BE DIRECT, BY INDUCEMENT, OR CONTRIBUTORY. DIRECT
INFRINGEMENT IS MAKING, USING, OR SELLING THE PATENTED INVENTION IN
THE UNITED STATES, OR IMPORTING THE PATENTED INVENTION INTO THE
UNITED STATES, WITHOUT PERMISSION. INDUCING INFRINGEMENT IS
INTENTIONALLY CAUSING ANOTHER TO DIRECTLY INFRINGE A PATENT.
CONTRIBUTORY INFRINGEMENT IS OFFERING TO SELL OR SELLING A
COMPONENT THAT IS A SIGNIFICANT PART OF THE INVENTION, SO THAT THE
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BUYER DIRECTLY INFRINGES THE PATENT. TO BE A CONTRIBUTORY INFRINGER,
ONE MUST KNOW THAT THE PART BEING OFFERED OR SOLD IS DESIGNED
SPECIFICALLY FOR INFRINGING THE PATENTED INVENTION AND IS NOT A
COMMON OBJECT SUITABLE FOR SUBSTANTIAL NON-INFRINGING USES.
LIMITATION: A REQUIRED PART OR STEP OF AN INVENTION SET FORTH
IN A PATENT CLAIM. THE WORD “ELEMENT” IS OFTEN USED INTERCHANGEABLY
WITH THE WORD “LIMITATION.”
NON-OBVIOUSNESS: ONE OF THE REQUIREMENTS FOR SECURING A
PATENT. TO BE VALID, THE SUBJECT MATTER OF THE INVENTION MUST NOT
HAVE BEEN OBVIOUS TO A PERSON OF ORDINARY SKILL IN THE ART AT THE
TIME OF THE EARLIER OF THE FILING DATE OF THE PATENT APPLICATION OR
THE DATE OF INVENTION.
OFFICE ACTION: COMMUNICATION FROM THE PATENT EXAMINER
REGARDING THE SPECIFICATION OF THE PATENT APPLICATION AND/OR THE
CLAIMS PENDING IN THE PATENT APPLICATION.
ORDINARY SKILL IN THE ART: THE LEVEL OF EXPERIENCE, EDUCATION,
AND/OR TRAINING THAT THOSE INDIVIDUALS WHO WORKED IN THE FIELD OF
THE INVENTION ORDINARILY POSSESSED AT THE TIME THE CLAIMED
INVENTION WAS MADE.
PATENT: A PATENT IS AN EXCLUSIVE RIGHT GRANTED BY THE U.S.
PATENT AND TRADEMARK OFFICE TO AN INVENTOR TO PREVENT OTHERS FROM
MAKING, USING, OR SELLING AN INVENTION FOR A TERM OF 20 YEARS FROM
THE DATE THE PATENT APPLICATION WAS FILED (OR 17 YEARS FROM THE DATE
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THE PATENT ISSUED). WHEN THE PATENT EXPIRES, THE RIGHT TO MAKE, USE,
OR SELL THE INVENTION IS DEDICATED TO THE PUBLIC. THE PATENT HAS
THREE PARTS, WHICH ARE A SPECIFICATION, DRAWINGS AND CLAIMS. THE
PATENT IS GRANTED AFTER EXAMINATION BY THE U.S. PATENT AND
TRADEMARK OFFICE OF A PATENT APPLICATION FILED BY THE INVENTOR
WHICH HAS THESE PARTS, AND THIS EXAMINATION IS CALLED THE
PROSECUTION HISTORY.
PATENT EXAMINERS: PROFESSIONAL PERSONNEL EMPLOYED BY THE
PTO WHO REVIEW OR EXAMINE PATENT APPLICATIONS, EACH WITH EDUCATION
AND/OR EXPERIENCE IN A SPECIFIC TECHNICAL FIELD, TO DETERMINE WHETHER
THE CLAIMS OF A PATENT APPLICATION ARE PATENTABLE AND WHETHER THE
DISCLOSURE ADEQUATELY DESCRIBES THE INVENTION.
PATENT AND TRADEMARK OFFICE (PTO): AN ADMINISTRATIVE BRANCH
OF THE U.S. DEPARTMENT OF COMMERCE THAT IS CHARGED WITH OVERSEEING
AND IMPLEMENTING THE FEDERAL LAWS OF PATENTS AND TRADEMARKS. IT IS
RESPONSIBLE FOR EXAMINING ALL PATENT APPLICATIONS AND ISSUING ALL
PATENTS IN THE UNITED STATES.
PRIOR ART: PRIOR ART IS NOT “ART” AS ONE MIGHT GENERALLY
UNDERSTAND THE WORD ART. RATHER, PRIOR ART IS A TECHNICAL TERM
RELATING TO PATENTS. IN GENERAL, IT INCLUDES THINGS THAT EXISTED
BEFORE, OR “PRIOR” TO, THE CLAIMED INVENTION. PRIOR ART TYPICALLY
MIGHT INCLUDE THINGS LIKE A PATENT OR A PRINTED PUBLICATION. I WILL
GIVE YOU A MORE SPECIFIC DEFINITION OF PRIOR ART LATER.
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PROSECUTION HISTORY: THE WRITTEN RECORD OF PROCEEDINGS IN
THE PTO BETWEEN THE APPLICANT AND THE PTO, INCLUDING THE ORIGINAL
PATENT APPLICATION AND LATER COMMUNICATIONS BETWEEN THE PTO AND
THE APPLICANT. THE PROSECUTION HISTORY MAY ALSO BE REFERRED TO AS
THE “FILE WRAPPER” OF THE PATENT DURING THE COURSE OF THIS TRIAL.
REQUIREMENT: A REQUIRED PART OR STEP OF AN INVENTION SET
FORTH IN A PATENT CLAIM. THE WORD “REQUIREMENT” IS OFTEN USED
INTERCHANGEABLY WITH THE WORDS “ELEMENT” OR “LIMITATION.”
ROYALTY: A ROYALTY IS A PAYMENT MADE TO THE OWNER OF A
PATENT BY A NON-OWNER IN EXCHANGE FOR RIGHTS TO MAKE, USE, OR SELL
THE CLAIMED INVENTION.
SPECIFICATION: THE INFORMATION THAT APPEARS IN THE PATENT AND
CONCLUDES WITH ONE OR MORE CLAIMS. THE SPECIFICATION INCLUDES THE
WRITTEN TEXT AND THE DRAWINGS (IF ANY). IN THE SPECIFICATION, THE
INVENTOR SETS FORTH A DESCRIPTION TELLING WHAT THE INVENTION IS, HOW
IT WORKS, AND HOW TO MAKE AND USE IT SO AS TO ENABLE OTHERS SKILLED
IN THE ART TO DO SO.
Authority: Adapted from Model Patent Jury Instructions, The National Patent Jury Instruction
Project §1.6 (June 17, 2009) and Model Patent Jury Instructions § C, Federal Circuit Bar
Association (Feb. 2012).
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INSTRUCTION NO. 12
OUTLINE OF TRIAL
THE TRIAL WILL NOW BEGIN. FIRST, EACH SIDE MAY MAKE AN OPENING
STATEMENT. AN OPENING STATEMENT IS NOT EVIDENCE. IT IS SIMPLY AN
OPPORTUNITY FOR THE LAWYERS TO EXPLAIN WHAT THEY EXPECT THE
EVIDENCE WILL SHOW.
THERE ARE TWO STANDARDS OF PROOF THAT YOU WILL APPLY TO THE
EVIDENCE, DEPENDING ON THE ISSUE YOU ARE DECIDING. ON SOME ISSUES,
YOU MUST DECIDE WHETHER CERTAIN FACTS HAVE BEEN PROVEN BY A
PREPONDERANCE OF THE EVIDENCE. PREPONDERANCE OF THE EVIDENCE
MEANS THAT THE FACT THAT IS TO BE PROVEN IS MORE LIKELY TRUE THAN
NOT. IN OTHER WORDS, THE EVIDENCE IN FAVOR OF THAT FACT BEING TRUE IS
SUFFICIENT TO TIP THE SCALE, EVEN IF SLIGHTLY, IN ITS FAVOR.
ON OTHER ISSUES THAT I WILL IDENTIFY FOR YOU, YOU MUST USE A
HIGHER STANDARD AND DECIDE WHETHER THE FACT HAS BEEN PROVEN BY
CLEAR AND CONVINCING EVIDENCE. IN OTHER WORDS, YOU HAVE BEEN LEFT
WITH A CLEAR CONVICTION THAT THE FACT HAS BEEN PROVEN.
THESE STANDARDS ARE DIFFERENT FROM WHAT YOU MAY HAVE HEARD
ABOUT IN CRIMINAL PROCEEDINGS WHERE A FACT MUST BE PROVEN BEYOND A
REASONABLE DOUBT. ON A SCALE OF THESE VARIOUS STANDARDS OF PROOF,
AS YOU MOVE FROM PREPONDERANCE OF THE EVIDENCE, WHERE THE PROOF
NEED ONLY BE SUFFICIENT TO TIP THE SCALE IN FAVOR OF THE PARTY PROVING
THE FACT, TO BEYOND A REASONABLE DOUBT, WHERE THE FACT MUST BE
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PROVEN TO A VERY HIGH DEGREE OF CERTAINTY, YOU MAY THINK OF CLEAR
AND CONVINCING EVIDENCE AS BEING BETWEEN THE TWO STANDARDS.
AFTER THE OPENING STATEMENTS, I/P ENGINE WILL PRESENT ITS
EVIDENCE IN SUPPORT OF ITS CONTENTION THAT SOME OF THE CLAIMS OF THE
PATENTS-IN-SUIT HAVE BEEN AND CONTINUE TO BE INFRINGED BY
DEFENDANTS AND THAT THE INFRINGEMENT HAS BEEN AND CONTINUES TO BE
WILLFUL. TO PROVE INFRINGEMENT OF ANY CLAIM, I/P ENGINE MUST
PERSUADE YOU UNDER THE PREPONDERANCE OF THE EVIDENCE STANDARD
THAT IT IS MORE LIKELY THAN NOT THAT DEFENDANTS HAVE INFRINGED THAT
CLAIM. TO PERSUADE YOU THAT ANY INFRINGEMENT WAS WILLFUL, I/P ENGINE
MUST PROVE THAT THE INFRINGEMENT WAS WILLFUL BY CLEAR AND
CONVINCING EVIDENCE.
DEFENDANTS WILL THEN PRESENT THEIR EVIDENCE THAT THE ASSERTED
CLAIMS OF THE PATENTS-IN-SUIT ARE INVALID. TO PROVE INVALIDITY OF ANY
CLAIM, DEFENDANTS MUST PERSUADE YOU BY CLEAR AND CONVINCING
EVIDENCE THAT THE CLAIM IS INVALID. IN ADDITION TO PRESENTING ITS
EVIDENCE OF INVALIDITY, DEFENDANTS WILL PUT ON EVIDENCE RESPONDING
TO I/P ENGINE’S PROOF OF INFRINGEMENT AND WILLFULNESS.
I/P ENGINE MAY THEN PUT ON ADDITIONAL EVIDENCE RESPONDING TO
DEFENDANTS EVIDENCE THAT THE CLAIMS OF THE PATENTS-IN-SUIT ARE
INVALID, AND TO OFFER ANY ADDITIONAL EVIDENCE OF INFRINGEMENT AND
WILLFULNESS. THIS IS REFERRED TO AS “REBUTTAL” EVIDENCE. I/P ENGINE’S
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“REBUTTAL” EVIDENCE MAY RESPOND TO ANY EVIDENCE OFFERED BY
DEFENDANTS.
DURING THE PRESENTATION OF THE EVIDENCE, THE ATTORNEYS WILL BE
ALLOWED BRIEF OPPORTUNITIES TO EXPLAIN WHAT THEY BELIEVE THE
EVIDENCE HAS SHOWN OR WHAT THEY BELIEVE UPCOMING EVIDENCE WILL
SHOW. THE ATTORNEYS’ COMMENTS ARE NOT EVIDENCE AND THE ATTORNEYS
ARE BEING ALLOWED TO COMMENT SOLELY FOR THE PURPOSE OF HELPING
YOU TO UNDERSTAND THE EVIDENCE.
AFTER THE EVIDENCE HAS BEEN PRESENTED, THE ATTORNEYS WILL
MAKE CLOSING ARGUMENTS AND I WILL GIVE YOU FINAL INSTRUCTIONS ON
THE LAW THAT APPLIES TO THE CASE. THESE CLOSING ARGUMENTS BY THE
ATTORNEYS ARE NOT EVIDENCE. AFTER THE CLOSING ARGUMENTS AND
INSTRUCTIONS, YOU WILL THEN DECIDE THE CASE.
Authority: Adapted from Model Patent Jury Instructions § A.5, Federal Circuit Bar Association
(Feb. 2012).
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FINAL JURY INSTRUCTIONS
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INSTRUCTION NO. 13
SUMMARY OF CONTENTIONS
AS I DID AT THE START OF THE TRIAL, I WILL FIRST GIVE YOU A SUMMARY
OF EACH SIDE’S CONTENTIONS IN THIS CASE. I WILL THEN PROVIDE YOU WITH
DETAILED INSTRUCTIONS ON WHAT EACH SIDE MUST PROVE TO WIN ON EACH
OF ITS CONTENTIONS.
AS I PREVIOUSLY TOLD YOU, I/P ENGINE SEEKS MONEY DAMAGES
FROM DEFENDANTS FOR ALLEGEDLY INFRINGING, DIRECTLY AND/OR
INDIRECTLY, THE ‘420 AND ‘664 PATENTS BY MAKING, USING, SELLING AND
OFFERING FOR SALE IN THE UNITED STATES SYSTEMS THAT I/P ENGINE
ARGUES ARE COVERED BY CLAIMS 10, 14, 15, 25, 27, AND 28 OF THE ‘420 PATENT
AND CLAIMS 1, 5, 6, 21, 22, 26, 28, AND 38 OF THE ‘664 PATENT. THESE ARE THE
ASSERTED CLAIMS OF I/P ENGINE’S PATENTS.
THE SYSTEMS THAT ARE ALLEGED TO INFRINGE ARE GOOGLE’S
ADWORDS, ADSENSE FOR SEARCH, AND ADSENSE FOR MOBILE SEARCH
SYSTEMS, AND THE AOL SEARCH MARKETPLACE SYSTEM. I/P ENGINE ALSO
ARGUES THAT GOOGLE HAS ACTIVELY INDUCED AND CONTRIBUTED TO
INFRINGEMENT OF THESE CLAIMS BY THE OTHER DEFENDANTS.
DEFENDANTS DENY THAT THEY HAVE INFRINGED ANY OF THE ASSERTED
CLAIMS OF THE ‘420 PATENT AND OR THE ‘664 PATENT. DEFENDANTS ALSO
ARGUE THAT THE ASSERTED CLAIMS ARE INVALID. GOOGLE ALSO DENIES THAT
IT HAS ACTIVELY INDUCED THE OTHER DEFENDANTS TO INFRINGE THE
PATENTS IN SUIT.
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YOUR JOB WILL BE TO DECIDE WHETHER OR NOT THE DEFENDANTS HAVE
BEEN INFRINGING ANY OF THE ASSERTED CLAIMS OF THE PATENTS-IN-SUIT,
AND WHETHER OR NOT THOSE CLAIMS ARE INVALID. IF YOU DECIDE THAT ANY
CLAIM OF THE ‘420 PATENT OR THE ‘664 PATENT IS INFRINGED AND NOT
INVALID, YOU MUST THEN DECIDE THE MONEY DAMAGES TO BE AWARDED TO
I/P ENGINE TO COMPENSATE IT FOR THE INFRINGEMENT. I WILL INSTRUCT YOU
LATER AS TO HOW YOU DETERMINE DAMAGES. IN GENERAL, THE DAMAGES
MUST BE ADEQUATE TO COMPENSATE I/P ENGINE FOR THE INFRINGEMENT.
IF YOU DETERMINE THAT INFRINGEMENT HAS OCCURRED, YOU WILL
ALSO NEED TO MAKE A FINDING AS TO WHETHER THE INFRINGEMENT WAS
WILLFUL. IF YOU DECIDE THAT ANY INFRINGEMENT WAS WILLFUL, THAT
DECISION SHOULD NOT AFFECT ANY DAMAGES AWARD YOU GIVE. I WILL TAKE
WILLFULNESS INTO ACCOUNT LATER.
Authority: Video Networks, Inc. v. Verizon Commc’ns, Inc., No. 2:10-cv-248 (E.D. Va. Aug. 23,
2011) (Dkt. No. 1002) (Adapted from Model Patent Jury Instructions § B.1, Federal Circuit Bar
Association (Nov. 12, 2009)).
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INSTRUCTION NO. 12
THE ROLE OF THE CLAIMS OF A PATENT
BEFORE YOU CAN DECIDE MANY OF THE ISSUES IN THIS CASE, YOU WILL
NEED TO UNDERSTAND THE ROLE OF PATENT “CLAIMS.” THE PATENT CLAIMS
ARE THE NUMBERED SENTENCES AT THE END OF EACH PATENT. THE CLAIMS
ARE IMPORTANT BECAUSE IT IS THE WORDS OF THE CLAIMS THAT DEFINE WHAT
A PATENT COVERS. THE FIGURES AND TEXT IN THE REST OF THE PATENT
PROVIDE A DESCRIPTION AND/OR EXAMPLES OF THE INVENTION AND PROVIDE
A CONTEXT FOR THE CLAIMS, BUT IT IS THE CLAIMS THAT DEFINE THE BREADTH
OF THE PATENT’S COVERAGE. EACH CLAIM IS EFFECTIVELY TREATED AS IF IT
WERE A SEPARATE PATENT, AND EACH CLAIM MAY COVER MORE OR LESS THAN
ANOTHER CLAIM. THEREFORE, WHAT A PATENT COVERS DEPENDS, IN TURN, ON
WHAT EACH OF ITS CLAIMS COVERS.
YOU WILL FIRST NEED TO UNDERSTAND WHAT EACH CLAIM COVERS IN
ORDER TO DECIDE WHETHER OR NOT THERE IS INFRINGEMENT OF THE CLAIM
AND TO DECIDE WHETHER OR NOT THE CLAIM IS INVALID. THE LAW SAYS THAT
IT IS MY ROLE TO DEFINE THE TERMS OF THE CLAIMS AND IT IS YOUR ROLE TO
APPLY MY DEFINITIONS TO THE ISSUES THAT YOU ARE ASKED TO DECIDE IN
THIS CASE.
THEREFORE, AS I EXPLAINED TO YOU AT THE START OF THE CASE, I
HAVE DETERMINED THE MEANING OF SOME OF THE CLAIM TERMS, WHICH HAVE
BEEN PROVIDED TO YOU. YOU MUST ACCEPT MY DEFINITIONS OF THESE
WORDS IN THE CLAIMS AS BEING CORRECT. IT IS YOUR JOB TO TAKE THESE
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DEFINITIONS AND APPLY THEM TO THE ISSUES THAT YOU ARE DECIDING,
INCLUDING THE ISSUES OF INFRINGEMENT AND VALIDITY.
Authority: ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., No. 2:10-cv-248 (E.D. Va.
Aug. 23, 2011) (Dkt. No. 1002) (Adapted from Model Patent Jury Instructions § B.2.1, Federal
Circuit Bar Association (Nov. 12, 2009)); Model Patent Jury Instructions § B.2.1, Federal Circuit
Bar Association (Feb. 2012).
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INSTRUCTION NO. 13
HOW A CLAIM DEFINES WHAT IT COVERS
I WILL NOW EXPLAIN HOW A CLAIM DEFINES WHAT IT COVERS.
A CLAIM SETS FORTH, IN WORDS, A SET OF REQUIREMENTS. EACH CLAIM SETS
FORTH ITS REQUIREMENTS IN A SINGLE SENTENCE. IF A SYSTEM OR A METHOD
SATISFIES EACH OF THESE REQUIREMENTS, THEN IT IS COVERED BY THE CLAIM.
THERE CAN BE SEVERAL CLAIMS IN A PATENT. EACH CLAIM MAY BE
NARROWER OR BROADER THAN ANOTHER CLAIM BY SETTING FORTH MORE OR
FEWER REQUIREMENTS. THE COVERAGE OF A PATENT IS ASSESSED CLAIM-BY
CLAIM.
IN PATENT LAW, THE REQUIREMENTS OF A CLAIM ARE OFTEN REFERRED
TO AS “CLAIM ELEMENTS” OR “CLAIM LIMITATIONS.” WHEN A THING (SUCH AS
A SYSTEM OR A PROCESS) MEETS ALL OF THE REQUIREMENTS OF A CLAIM, THE
CLAIM IS SAID TO “COVER” THAT THING, AND THAT THING IS SAID TO “FALL”
WITHIN THE SCOPE OF THAT CLAIM. IN OTHER WORDS, A CLAIM COVERS A
SYSTEM OR PROCESS WHERE EACH OF THE CLAIM ELEMENTS OR LIMITATIONS
IS PRESENT IN THAT SYSTEM OR PROCESS.
SOMETIMES THE WORDS IN A PATENT CLAIM ARE DIFFICULT TO
UNDERSTAND, AND THEREFORE IT IS DIFFICULT TO UNDERSTAND WHAT
REQUIREMENTS THESE WORDS IMPOSE. IT IS MY JOB TO EXPLAIN TO YOU THE
MEANING OF THE WORDS IN THE CLAIMS AND THE REQUIREMENTS THESE
WORDS IMPOSE.
AS I JUST INSTRUCTED YOU, THERE ARE CERTAIN SPECIFIC TERMS THAT I
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HAVE DEFINED AND YOU ARE TO APPLY THE DEFINITIONS THAT I PROVIDE TO
YOU. BY UNDERSTANDING THE MEANING OF THE WORDS IN A CLAIM AND BY
UNDERSTANDING THAT THE WORDS IN A CLAIM SET FORTH THE REQUIREMENTS
THAT A SYSTEM OR PROCESS MUST MEET TO BE COVERED BY THAT CLAIM, YOU
WILL BE ABLE TO UNDERSTAND THE SCOPE OF COVERAGE FOR EACH CLAIM.
ONCE YOU UNDERSTAND WHAT EACH CLAIM COVERS, THEN YOU ARE
PREPARED TO DECIDE THE ISSUES THAT YOU WILL BE ASKED TO DECIDE, SUCH
AS INFRINGEMENT AND INVALIDITY.
Authority: ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., No. 2:10-cv-248 (E.D. Va.
Aug. 23, 2011) (Dkt. No. 1002) (Adapted from Model Patent Jury Instructions § B.2.2, Federal
Circuit Bar Association (Nov. 12, 2009) (and cases cited therein)); Model Patent Jury
Instructions § B.2.2, Federal Circuit Bar Association (Feb. 2012).
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INSTRUCTION NO. 14
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 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, CLAIMS 10 AND 25 OF
THE ‘420 PATENT, AND 1 AND 26 OF THE ‘664 PATENT ARE EACH INDEPENDENT
CLAIMS. THE REMAINDER OF THE ASSERTED CLAIMS ARE “DEPENDENT
CLAIMS.”
A DEPENDENT CLAIM DOES NOT ITSELF RECITE ALL OF THE
REQUIREMENTS OF THE CLAIM BUT REFERS TO ANOTHER CLAIM FOR SOME OF
ITS REQUIREMENTS. IN THIS WAY, THE CLAIM “DEPENDS” ON ANOTHER CLAIM.
A DEPENDENT CLAIM INCORPORATES ALL OF THE REQUIREMENTS OF THE
CLAIM(S) TO WHICH IT REFERS. 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 AND ANY
OTHER CLAIM(S) TO WHICH IT REFERS. A SYSTEM OR PROCESS THAT MEETS ALL
OF THE REQUIREMENTS OF BOTH THE DEPENDENT CLAIM AND THE CLAIM(S) TO
WHICH IT REFERS IS COVERED BY THAT DEPENDENT CLAIM.
Authority: ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., No. 2:10-cv-248 (E.D. Va.
Aug. 23, 2011) (Dkt. No. 1002) (Adapted from Model Patent Jury Instructions § B.2.2a, Federal
Circuit Bar Association (Nov. 12, 2009)); Model Patent Jury Instructions § B.2.2a, Federal
Circuit Bar Association (Feb. 2012).
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INSTRUCTION NO. 16
INFRINGEMENT GENERALLY
I WILL NOW INSTRUCT YOU ON HOW TO DECIDE WHETHER OR NOT
DEFENDANTS HAVE INFRINGED ANY OF THE ASSERTED CLAIMS OF THE
PATENTS-IN-SUIT. INFRINGEMENT IS ASSESSED ON A CLAIM-BY-CLAIM BASIS.
THEREFORE, THERE MAY BE INFRINGEMENT AS TO ONE CLAIM BUT NO
INFRINGEMENT AS TO ANOTHER. IN THIS CASE, THERE ARE TWO POSSIBLE
WAYS THAT A CLAIM MAY BE INFRINGED. ONE, IS DIRECT INFRINGEMENT; AND
THE OTHER IS INDIRECT INFRINGEMENT. INDIRECT INFRINGEMENT IS REFERRED
TO AS ACTIVE INDUCEMENT OR CONTRIBUTORY INDUCEMENT. THERE CANNOT
BE INDIRECT INFRINGEMENT WITHOUT SOMEONE ELSE ENGAGING IN DIRECT
INFRINGEMENT. TO PROVE INDIRECT INFRINGEMENT, THE PATENT HOLDER
MUST ALSO PROVE THAT THE ACCUSED INFRINGER’S INDIRECT INFRINGEMENT
CAUSED DIRECT INFRINGEMENT.
IN THIS CASE, I/P ENGINE ALLEGES THAT DEFENDANTS DIRECTLY
INFRINGE THE PATENTS-IN-SUIT. I/P ENGINE ALSO ALLEGES THAT GOOGLE IS
LIABLE FOR ACTIVELY INDUCING THE DIRECT INFRINGEMENT OF THE OTHER
DEFENDANTS IN THIS CASE.
TO PROVE INFRINGEMENT, I/P ENGINE MUST PROVE THAT THE
REQUIREMENTS FOR ONE OR MORE OF THESE TYPES OF INFRINGEMENT ARE
MET BY A PREPONDERANCE OF THE EVIDENCE. IN OTHER WORDS, IT IS MORE
LIKELY THAN NOT THAT ALL OF THE REQUIREMENTS OF ONE OR MORE OF EACH
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OF THESE TYPES OF INFRINGEMENT HAVE BEEN PROVED. I WILL NOW EXPLAIN
EACH OF THESE TYPES OF INFRINGEMENT IN MORE DETAIL.
Authority: ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., No. 2:10-cv-248 (E.D. Va.
Aug. 23, 2011) (Dkt. No. 1002) (Adapted from Model Patent Jury Instructions § B.3.1, Federal
Circuit Bar Association (Nov. 12, 2009) (and cases cited therein)); Model Patent Jury
Instructions § B.3.1, Federal Circuit Bar Association (Feb. 2012).
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INSTRUCTION NO. 17
DIRECT INFRINGEMENT BY “LITERAL INFRINGEMENT”
THERE ARE TWO TYPES OF “DIRECT INFRINGEMENT”: (1) “LITERAL
INFRINGEMENT” AND (2) “INFRINGEMENT UNDER THE DOCTRINE OF
EQUIVALENTS.” I/P ENGINE IS ASSERTING BOTH TYPES OF DIRECT
INFRINGEMENT IN THIS CASE.
TO PROVE DIRECT INFRINGEMENT BY LITERAL INFRINGEMENT, I/P ENGINE
MUST PROVE BY A PREPONDERANCE OF THE EVIDENCE. IN OTHER WORDS, IT IS
MORE LIKELY THAN NOT, THAT THE DEFENDANTS MADE, USED, SOLD, OR
OFFERED FOR SALE IN THE U.S., A SYSTEM OR PROCESS THAT MEETS ALL OF THE
REQUIREMENTS OF ONE OF THE ASSERTED CLAIMS, WITHOUT I/P ENGINE’S
PERMISSION.
YOU MUST COMPARE THE ACCUSED SYSTEMS OR PROCESSES WITH EACH
AND EVERY ONE OF THE REQUIREMENTS OF A CLAIM TO DETERMINE WHETHER
ALL OF THE REQUIREMENTS OF THAT CLAIM ARE MET.
YOU MUST DETERMINE, SEPARATELY FOR EACH ASSERTED CLAIM,
WHETHER OR NOT THERE IS INFRINGEMENT. IF YOU FIND THAT AN
INDEPENDENT CLAIM IS INFRINGED, THAT CLAIM INFRINGES. TO FIND THAT A
DEPENDENT CLAIM INFRINGES REQUIRES AN ADDITIONAL STEP.
IF YOU FIND THAT AN INDEPENDENT CLAIM IS NOT INFRINGED, THEN ANY
CLAIM DEPENDENT UPON THAT INDEPENDENT CLAIM ALSO MUST BE FOUND
NOT TO INFRINGE. ON THE OTHER HAND, IF YOU FIND THAT AN INDEPENDENT
CLAIM HAS BEEN INFRINGED, YOU MUST STILL DECIDE, SEPARATELY, WHETHER
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THE SYSTEM OR PROCESS MEETS THE ADDITIONAL REQUIREMENTS OF ANY
DEPENDENT CLAIMS THAT DEPEND FROM THE INDEPENDENT CLAIM; THUS,
WHETHER THOSE CLAIMS HAVE ALSO BEEN INFRINGED. AGAIN, A DEPENDENT
CLAIM INCLUDES ALL OF THE REQUIREMENTS OF ANY OF THE CLAIMS TO
WHICH IT REFERS PLUS THE ADDITIONAL REQUIREMENTS OF ITS OWN.
Authority: Adapted from Model Patent Jury Instructions § B.3.1a, Federal Circuit Bar
Association (Feb. 2012) (and cases cited therein).
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INSTRUCTION NO. 18
DIRECT INFRINGEMENT “UNDER THE DOCTRINE OF EQUIVALENTS”
IF A COMPANY MAKES, USES, SELLS, OR OFFERS TO SELL WITHIN THE
UNITED STATES A SYSTEM OR PROCESS THAT DOES NOT MEET ALL OF THE
REQUIREMENTS OF A CLAIM AND THUS DOES NOT LITERALLY INFRINGE THAT
CLAIM, THERE CAN STILL BE DIRECT INFRINGEMENT IF THAT SYSTEM OR
PROCESS SATISFIES THAT CLAIM “UNDER THE DOCTRINE OF EQUIVALENTS.”
UNDER THE DOCTRINE OF EQUIVALENTS, A SYSTEM OR PROCESS
INFRINGES A CLAIM IF THE ACCUSED SYSTEM OR PROCESS CONTAINS
ELEMENTS OR PERFORMS STEPS CORRESPONDING TO EACH AND EVERY
REQUIREMENT OF THE CLAIM THAT IS EQUIVALENT TO, EVEN THOUGH NOT
LITERALLY MET BY, THE ACCUSED SYSTEM OR PROCESS.
YOU MAY FIND THAT AN ELEMENT OR STEP IS EQUIVALENT TO A
REQUIREMENT OF A CLAIM THAT IS NOT MET LITERALLY IF A PERSON HAVING
ORDINARY SKILL IN THE FIELD OF TECHNOLOGY OF THE PATENT WOULD HAVE
CONSIDERED THE DIFFERENCES BETWEEN THEM TO BE “INSUBSTANTIAL” OR
WOULD HAVE FOUND THAT THE STRUCTURE OR ACTION: (1) PERFORMS
SUBSTANTIALLY THE SAME FUNCTION AND (2) WORKS IN SUBSTANTIALLY THE
SAME WAY (3) TO ACHIEVE SUBSTANTIALLY THE SAME RESULT AS THE
REQUIREMENT OF THE CLAIM.
FOR THE STRUCTURE OR ACTION TO BE CONSIDERED INTERCHANGEABLE,
THE STRUCTURE OR ACTION MUST HAVE BEEN KNOWN AT THE TIME OF THE
ALLEGED INFRINGEMENT TO A PERSON HAVING ORDINARY SKILL IN THE FIELD
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OF TECHNOLOGY OF THE PATENT. INTERCHANGEABILITY AT THE PRESENT
TIME IS NOT SUFFICIENT. TO PROVE INFRINGEMENT BY “EQUIVALENTS,” I/P
ENGINE MUST PROVE THE EQUIVALENCY OF THE STRUCTURE OR ACTIONS TO A
CLAIM ELEMENT BY A PREPONDERANCE OF THE EVIDENCE.
Authority: Adapted from Model Patent Jury Instructions § B.3.1c, Federal Circuit Bar
Association (Feb. 2012) (and cases cited therein).
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INSTRUCTION NO. 19
INDIRECT INFRINGEMENT—ACTIVE INDUCEMENT
I/P ENGINE ALSO ACCUSES GOOGLE OF INDIRECT INFRINGEMENT. ONE
TYPE OF INDIRECT INFRINGEMENT IS ACTIVE INDUCEMENT. GOOGLE IS LIABLE
FOR ACTIVE INDUCEMENT OF INFRINGEMENT OF A CLAIM IF I/P ENGINE PROVES
BY A PREPONDERANCE OF THE EVIDENCE THAT:
1) GOOGLE TOOK ACTION DURING THE TIME THAT THE PATENTS IN SUIT
WERE IN FORCE INTENDING TO CAUSE ACTS BY THE OTHER DEFENDANTS;
2) GOOGLE WAS AWARE OF THE PATENTS-IN-SUIT AND KNEW OR SHOULD
HAVE KNOWN THAT THE ACTS, IF TAKEN, WOULD CONSTITUTE INFRINGEMENT
OF THOSE PATENTS; AND
3) THE ACTS ARE ACTUALLY CARRIED OUT BY THE OTHER DEFENDANTS
AND DIRECTLY INFRINGE THAT CLAIM.
TO ESTABLISH ACTIVE INDUCEMENT OF INFRINGEMENT, IT IS NOT
SUFFICIENT THAT THE OTHER DEFENDANTS THEMSELVES DIRECTLY INFRINGE
THE CLAIM. NOR IS IT SUFFICIENT THAT GOOGLE WAS AWARE OF THE
ALLEGEDLY INFRINGING ACTS BY THEM. RATHER, YOU MUST FIND THAT
GOOGLE SPECIFICALLY INTENDED THE OTHER DEFENDANTS TO INFRINGE THE
PATENT.
Authority: ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., No. 2:10-cv-248 (E.D. Va.
Aug. 23, 2011) (Dkt. No. 1002) (Adapted from Model Patent Jury Instructions § B.3.2, Federal
Circuit Bar Association (Nov. 12, 2009) (and cases cited therein)); Model Patent Jury
Instructions § B.3.2, Federal Circuit Bar Association (Feb. 2012).
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INSTRUCTION NO. 20
WILLFUL INFRINGEMENT
I/P ENGINE ARGUES BOTH THAT GOOGLE INFRINGES AND, FURTHER, THAT
GOOGLE INFRINGES WILLFULLY. IF YOU HAVE DECIDED THAT GOOGLE HAS
INFRINGED, YOU MUST GO ON AND ADDRESS THE ADDITIONAL ISSUE OF
WHETHER OR NOT THIS INFRINGEMENT WAS WILLFUL. WILLFULNESS REQUIRES
YOU TO FIND BY CLEAR AND CONVINCING EVIDENCE THAT GOOGLE ACTED
RECKLESSLY.
TO PROVE THAT GOOGLE ACTED WILLFULLY, I/P ENGINE MUST PROVE
TWO THINGS BY CLEAR AND CONVINCING EVIDENCE. THE FIRST PART OF THE
TEST IS OBJECTIVE. YOU DO NOT CONSIDER GOOGLE’S STATE OF MIND. I/P
ENGINE MUST PERSUADE YOU THAT GOOGLE ACTED DESPITE A HIGH
LIKELIHOOD THAT ITS ACTIONS INFRINGED A VALID PATENT. IN DETERMINING
THIS, YOU MAY CONSIDER LEGITIMATE OR CREDIBLE DEFENSES TO
INFRINGEMENT, EVEN IF NOT ULTIMATELY SUCCESSFUL, THAT DEMONSTRATE
A LACK OF RECKLESSNESS.
IF YOU FIND THE FIRST THRESHOLD IS MET, THEN YOU MUST CONSIDER
THE SUBJECTIVE PART OF THE TEST. HERE, YOU DO CONSIDER GOOGLE’S STATE
OF MIND. I/P ENGINE MUST PERSUADE YOU THAT GOOGLE KNEW OR SHOULD
HAVE KNOWN THAT ITS ACTIONS CONSTITUTED AN UNJUSTIFIABLY HIGH RISK
OF INFRINGEMENT OF A VALID PATENT.
IN DETERMINING GOOGLE’S STATE OF MIND, YOU MAY CONSIDER MANY
FACTORS. AN EXAMPLE OF SEVERAL INCLUDE:
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(1) WHETHER OR NOT GOOGLE ACTED IN ACCORDANCE WITH THE
STANDARDS OF COMMERCE FOR ITS INDUSTRY;
(2) WHETHER OR NOT THERE IS A REASONABLE BASIS TO BELIEVE THAT
GOOGLE DID NOT INFRINGE OR HAD A REASONABLE DEFENSE TO
INFRINGEMENT;
(3) WHETHER OR NOT GOOGLE MADE A GOOD-FAITH EFFORT TO AVOID
INFRINGING THE PATENTS-IN-SUIT. FOR EXAMPLE, WHETHER GOOGLE
ATTEMPTED TO DESIGN AROUND THESE PATENTS; AND
(4) WHETHER OR NOT GOOGLE TRIED TO COVER UP ITS INFRINGEMENT.
Authority: ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., No. 2:10-cv-248 (E.D. Va.
Aug. 23, 2011) (Dkt. No. 1002) (Adapted from Model Patent Jury Instructions § B.3.8, Federal
Circuit Bar Association (Nov. 12, 2009)); Model Patent Jury Instructions § B.3.8, Federal Circuit
Bar Association (Feb. 2012).
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INSTRUCTION NO. 21
INVALIDITY—BURDEN OF PROOF
I WILL NOW INSTRUCT YOU ON THE RULES YOU MUST FOLLOW IN
DECIDING WHETHER OR NOT DEFENDANTS HAVE PROVEN THAT CERTAIN
CLAIMS OF THE PATENTS-IN-SUIT ARE INVALID. TO PROVE THAT ANY CLAIM OF
THE PATENTS-IN-SUIT IS INVALID, DEFENDANTS MUST PERSUADE YOU BY
CLEAR AND CONVINCING EVIDENCE. IN OTHER WORDS, YOU MUST BE LEFT
WITH A CLEAR CONVICTION THAT THE CLAIM IS INVALID. INVALIDITY MUST BE
ASSESSED SEPARATELY FOR EACH CLAIM.
Authority: Adapted from Model Patent Jury Instructions § B.4.1, Federal Circuit Bar
Association (Feb. 2012) (and cases cited therein).
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INSTRUCTION NO. 22
PRIOR ART
IN ADDRESSING DEFENDANTS’ INVALIDITY DEFENSES, YOU WILL HAVE
TO CONSIDER WHAT IS DISCLOSED IN THE “PRIOR ART.” AS WE DISCUSSED
BRIEFLY AT THE BEGINNING OF THE TRIAL, IN PATENT CASES, THE TERM “PRIOR
ART” GENERALLY INCLUDES ANYTHING THAT WAS PUBLICLY KNOWN BEFORE
PLAINTIFFS’ INVENTION.
PRIOR ART MAY INCLUDE ITEMS THAT WERE PUBLICLY KNOWN OR THAT
HAVE BEEN USED OR OFFERED FOR SALE, PUBLICATIONS, OR PATENTS THAT
DISCLOSE THE CLAIMED INVENTION OR ELEMENTS OF THE CLAIMED
INVENTION. TO BE PRIOR ART, THE ITEM OR REFERENCE MUST HAVE BEEN
MADE, KNOWN, USED, PUBLISHED, OR PATENTED EITHER BEFORE THE
INVENTION WAS MADE OR MORE THAN ONE YEAR BEFORE THE FILING DATE OF
THE EARLIEST PATENT APPLICATION. HOWEVER, PRIOR ART DOES NOT
INCLUDE A PUBLICATION THAT DESCRIBES THE INVENTOR’S OWN WORK OR
THAT WAS PUBLISHED LESS THAN ONE YEAR BEFORE THE DATE OF INVENTION.
IN THIS CASE, DEFENDANTS ALLEGE THAT EACH OF THE ASSERTED
CLAIMS OF THE PATENTS-IN-SUIT ARE INVALID BECAUSE THEY ARE EITHER
“ANTICIPATED” BY THE PRIOR ART AND/OR WOULD HAVE BEEN “OBVIOUS”
BECAUSE OF THE PRIOR ART.
I WILL NOW INSTRUCT YOU ON EACH OF THESE GROUNDS FOR
INVALIDITY.
Authority: Adapted from Model Patent Jury Instructions § B.4.3a, Federal Circuit Bar
Association (Feb. 2012) (and cases cited therein).
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INSTRUCTION NO. 23
INVALIDITY-PRIOR ART-ANTICIPATION
FOR SOMEONE TO BE ENTITLED TO A PATENT, THE INVENTION MUST BE
“NEW.” IN GENERAL, INVENTIONS ARE NEW WHEN THE IDENTICAL SYSTEM OR
PROCESS HAS NOT BEEN MADE, USED, OR DISCLOSED BEFORE. IF THERE IS
“PRIOR ART” THAT ALREADY SHOWS THE SAME INVENTION COVERED BY A
PATENT CLAIM, THEN THE CLAIM IS INVALID BECAUSE IT IS “ANTICIPATED” BY
THE “PRIOR ART.” ANTICIPATION MUST BE DETERMINED ON A CLAIM-BY-CLAIM
BASIS.
DEFENDANTS CONTEND THAT ALL OF THE ASSERTED CLAIMS OF THE
PATENTS-IN-SUIT ARE INVALID BECAUSE THE CLAIMED INVENTIONS ARE
ANTICIPATED. DEFENDANTS MUST CONVINCE YOU OF THIS BY CLEAR AND
CONVINCING EVIDENCE. IN OTHER WORDS, THE EVIDENCE HIGHLY PROBABLY
DEMONSTRATES THAT THE CLAIMS ARE INVALID.
THE DESCRIPTION IN A WRITTEN 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 FIELD LOOKING AT THAT ONE
REFERENCE WOULD BE ABLE TO MAKE AND USE THE CLAIMED INVENTION.
BELOW ARE TWO WAYS THAT THE DEFENDANTS MAY SHOW THAT A
CLAIM OF THE PATENTS IN SUIT IS NOT NEW:
(1) AN INVENTION IS NOT NEW IF IT WAS KNOWN TO OR USED BY OTHERS
IN THE UNITED STATES BEFORE THE DATE OF INVENTION. AN
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INVENTION IS KNOWN WHEN THE INFORMATION ABOUT IT WAS REASONABLY
ACCESSIBLE TO THE PUBLIC ON THAT DATE.
(2) AN INVENTION IS NOT NEW IF IT WAS ALREADY PATENTED OR
DESCRIBED IN A PRINTED PUBLICATION, ANYWHERE IN THE WORLD BEFORE
THE DATE OF INVENTION. A DESCRIPTION IS A “PRINTED PUBLICATION” ONLY IF
IT WAS PUBLICLY ACCESSIBLE.
Authority: Adapted from Model Patent Jury Instructions § B.4.3b, Federal Circuit Bar
Association (Feb. 2012) (and cases cited therein).
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INSTRUCTION NO. 24
OBVIOUSNESS
DEFENDANTS CONTEND THAT ALL OF THE ASSERTED CLAIMS OF THE ‘420
PATENT AND CLAIMS 5, 21 AND 22 OF THE ‘664 ARE INVALID BECAUSE THEY ARE
OBVIOUS. DEFENDANTS MUST PROVE BY CLEAR AND CONVINCING EVIDENCE
THAT A PERSON OF ORDINARY SKILL IN THE FIELD OF THE INVENTION, WHO
KNEW ABOUT ALL THE “PRIOR ART” EXISTING AT THE TIME THE INVENTION
WAS MADE, WOULD HAVE COME UP WITH THE INVENTION DISCLOSED BY THE
ASSERTED CLAIMS AT THAT TIME.
IN DETERMINING WHETHER A CLAIMED INVENTION IS OBVIOUS, YOU
MUST CONSIDER THE LEVEL OF ORDINARY SKILL IN THE FIELD OF THE
INVENTION THAT SOMEONE WOULD HAVE HAD AT THE TIME THE CLAIMED
INVENTION WAS MADE OR AT THE CRITICAL DATE, THE SCOPE AND CONTENT
OF THE PRIOR ART, AND ANY DIFFERENCES BETWEEN THE PRIOR ART AND THE
CLAIMED INVENTION.
KEEP IN MIND THAT THE EXISTENCE OF EACH AND EVERY ELEMENT OF
THE CLAIMED INVENTION IN THE PRIOR ART DOES NOT NECESSARILY PROVE
OBVIOUSNESS. MOST, IF NOT ALL, INVENTIONS RELY ON BUILDING BLOCKS OF
THE PRIOR ART.
IN CONSIDERING WHETHER A CLAIMED INVENTION IS OBVIOUS, YOU
MAY BUT ARE NOT REQUIRED TO FIND OBVIOUSNESS IF YOU FIND THAT AT THE
TIME OF THE CLAIMED INVENTION OR THE CRITICAL DATE THERE WAS A
REASON THAT WOULD HAVE PROMPTED A PERSON HAVING ORDINARY SKILL IN
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THE FIELD OF THE INVENTION TO COMBINE THE KNOWN ELEMENTS IN A WAY
THAT THE CLAIMED INVENTION DOES, TAKING INTO ACCOUNT SUCH FACTORS
AS:
(1) WHETHER THE CLAIMED INVENTION WAS MERELY THE PREDICTABLE
RESULT OF USING PRIOR ART ELEMENTS ACCORDING TO THEIR KNOWN
FUNCTION(S);
(2) WHETHER THE CLAIMED INVENTION PROVIDES AN OBVIOUS SOLUTION
TO A KNOWN PROBLEM IN THE RELEVANT FIELD;
(3) WHETHER THE PRIOR ART TEACHES OR SUGGESTS THE DESIRABILITY
OF COMBINING ELEMENTS CLAIMED IN THE INVENTION;
(4) WHETHER THE PRIOR ART TEACHES AWAY FROM COMBINING
ELEMENTS IN THE CLAIMED INVENTION;
(5) WHETHER IT WOULD HAVE BEEN OBVIOUS TO TRY THE COMBINATIONS
OF ELEMENTS, SUCH AS WHEN THERE IS A DESIGN NEED OR MARKET PRESSURE
TO SOLVE A PROBLEM AND THERE ARE A FINITE NUMBER OF IDENTIFIED,
PREDICTABLE SOLUTIONS; AND
(6) WHETHER THE CHANGE RESULTED MORE FROM DESIGN INCENTIVES
OR OTHER MARKET FORCES. TO FIND IT RENDERED THE INVENTION OBVIOUS,
YOU MUST FIND THAT THE PRIOR ART PROVIDED A REASONABLE EXPECTATION
OF SUCCESS. OBVIOUS TO TRY IS NOT SUFFICIENT IN UNPREDICTABLE
TECHNOLOGIES.
IN DETERMINING WHETHER THE CLAIMED INVENTION WAS OBVIOUS,
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CONSIDER EACH CLAIM SEPARATELY. DO NOT USE HINDSIGHT. IN OTHER
WORDS, CONSIDER ONLY WHAT WAS KNOWN AT THE TIME OF THE INVENTION
OR THE CRITICAL DATE.
IN MAKING THESE ASSESSMENTS, YOU SHOULD TAKE INTO ACCOUNT ANY
OBJECTIVE EVIDENCE (SOMETIMES CALLED “SECONDARY CONSIDERATIONS”)
THAT MAY HAVE EXISTED AT THE TIME OF THE INVENTION OR THE CRITICAL
DATE AND AFTERWARDS THAT MAY SHED LIGHT ON THE OBVIOUSNESS OR NOT
OF THE CLAIMED INVENTION, SUCH AS:
A. WHETHER THE INVENTION WAS COMMERCIALLY SUCCESSFUL AS A
RESULT OF THE MERITS OF THE CLAIMED INVENTION (RATHER THAN THE
RESULT OF DESIGN NEEDS OR MARKET-PRESSURE ADVERTISING OR SIMILAR
ACTIVITIES);
B. WHETHER THE INVENTION SATISFIED A LONG-FELT NEED;
C. WHETHER OTHERS HAD TRIED AND FAILED TO MAKE THE
INVENTION;
D. WHETHER OTHERS INVENTED THE INVENTION AT ROUGHLY THE
SAME TIME;
E. WHETHER OTHERS COPIED THE INVENTION;
F. WHETHER THERE WERE CHANGES OR RELATED TECHNOLOGIES OR
MARKET NEEDS CONTEMPORANEOUS WITH THE INVENTION;
G. WHETHER THE INVENTION ACHIEVED UNEXPECTED RESULTS;
H. WHETHER OTHERS IN THE FIELD PRAISED THE INVENTION;
I. WHETHER PERSONS HAVING ORDINARY SKILL IN THE ART OF THE
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INVENTION EXPRESSED SURPRISE OR DISBELIEF REGARDING THE INVENTION;
J. WHETHER OTHERS SOUGHT OR OBTAINED RIGHTS TO THE PATENT
FROM THE PATENT HOLDER; AND
K. WHETHER THE INVENTOR PROCEEDED CONTRARY TO ACCEPTED
WISDOM IN THE FIELD.
Authority: Adapted from Model Patent Jury Instructions § B.4.3c, Federal Circuit Bar
Association (Feb. 2012).
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INSTRUCTION NO. 25
SCOPE AND CONTENT OF THE PRIOR ART
IN CONSIDERING WHETHER THE CLAIMED INVENTION WAS OBVIOUS, YOU
MUST FIRST DETERMINE THE SCOPE AND CONTENT OF THE PRIOR ART.
THE SCOPE AND CONTENT OF PRIOR ART FOR DECIDING WHETHER THE
INVENTION WAS OBVIOUS INCLUDES PRIOR ART IN THE SAME FIELD AS THE
CLAIMED INVENTION, REGARDLESS OF THE PROBLEM ADDRESSED BY THE ITEM
OR REFERENCE, AND PRIOR ART FROM DIFFERENT FIELDS THAT A PERSON OF
ORDINARY SKILL IN THE ART USING COMMON SENSE MIGHT COMBINE IF
FAMILIAR SO AS TO SOLVE THE PROBLEM, LIKE FITTING TOGETHER THE PIECES
OF A PUZZLE.
WHEN A PARTY ATTACKING THE VALIDITY OF A PATENT RELIES
ON PRIOR ART WHICH WAS SPECIFICALLY CONSIDERED BY THE EXAMINER
DURING THE PROSECUTION OF THE APPLICATION LEADING TO THE ISSUANCE OF
THE PATENT, THAT PARTY BEARS THE BURDEN OF OVERCOMING THE
DEFERENCE DUE TO A QUALIFIED GOVERNMENT AGENCY OFFICIAL PRESUMED
TO HAVE PERFORMED HIS OR HER JOB.
Authority: Adapted from Model Patent Jury Instructions § B.4.3c(ii), Federal Circuit Bar
Association (Feb. 2012) (and cases cited therein).
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INSTRUCTION NO. 26
LEVEL OF ORDINARY SKILL
IN DECIDING WHAT THE LEVEL OF ORDINARY SKILL IN THE FIELD OF THE
INVENTION IS, YOU SHOULD CONSIDER ALL THE EVIDENCE INTRODUCED AT
TRIAL, INCLUDING BUT NOT LIMITED TO: (1) THE LEVELS OF EDUCATION AND
EXPERIENCE OF THE INVENTOR AND OTHER PERSONS ACTIVELY WORKING IN
THE FIELD; (2) THE TYPES OF PROBLEMS ENCOUNTERED IN THE FIELD; (3) PRIOR
ART SOLUTIONS TO THOSE PROBLEMS; (4) RAPIDITY WITH WHICH INNOVATIONS
ARE MADE; AND (5) THE SOPHISTICATION OF THE TECHNOLOGY.
Authority: Adapted from Model Patent Jury Instructions § B.4.3c(i), Federal Circuit Bar
Association (Feb. 2012) (and cases cited therein).
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INSTRUCTION NO. 27
PRIOR ART – ORAL TESTIMONY
IN THIS CASE, DEFENDANTS HAVE INTRODUCED ORAL TESTIMONY TO
SUPPORT DEFENSES THAT CERTAIN PATENT CLAIMS ARE INVALID. ORAL
TESTIMONY REGARDING PRIOR INVENTION MUST BE CORROBORATED.
DOCUMENTARY OR PHYSICAL EVIDENCE MADE CONTEMPORANEOUSLY WITH
THE ALLEGED PRIOR INVENTION IS THE MOST RELIABLE PROOF OF
CORROBORATION OF A WITNESS’S TESTIMONY.
AUTHORITY: Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir.
1998); Juicy Whip, Inc. v. Orange Bang, Inc., 292 F.3d 728, 741-43 (Fed. Cir. 2002); TypeRight
Keyboard Corp. v.Microsoft Corp., 374 F.3d 1151, 1159 (Fed.Cir.2004); Dow Chem. Co. v. Mee
Indus., Inc., 341 F.3d 1370, 1378 (Fed.Cir.2003); Texas Digital Sys., Inc. v. Telegenix, Inc., 308
F.3d 1193, 1217 (Fed.Cir.2002).
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INSTRUCTION NO. 28
DAMAGES – INTRODUCTION
IF YOU FIND THAT DEFENDANTS INFRINGED ANY VALID CLAIM OF THE
PATENTS-IN-SUIT, YOU MUST THEN CONSIDER WHAT AMOUNT OF DAMAGES TO
AWARD TO I/P ENGINE. 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 OR ANY ISSUE.
YOUR DAMAGES AWARD, IF YOU REACH THAT ISSUE, SHOULD
ADEQUATELY COMPENSATE I/P ENGINE FOR DEFENDANTS’ INFRINGEMENT.
THEY ARE NOT MEANT TO PUNISH THE DEFENDANTS.
I/P ENGINE HAS THE BURDEN TO ESTABLISH THE AMOUNT OF ITS
DAMAGES BY A PREPONDERANCE OF THE EVIDENCE. IN OTHER WORDS, YOU
SHOULD AWARD ONLY THOSE DAMAGES THAT I/P ENGINE ESTABLISHES THAT IT
MORE LIKELY THAN NOT SUFFERED. THERE ARE DIFFERENT TYPES OF
DAMAGES THAT A PATENT HOLDER MAY BE ENTITLED TO RECOVER. IN THIS
CASE, I/P ENGINE SEEKS A REASONABLE ROYALTY. A REASONABLE ROYALTY IS
DEFINED AS THE AMOUNT OF MONEY I/P ENGINE AND DEFENDANTS WOULD
HAVE AGREED UPON AS A FEE FOR USE OF THE INVENTION AT THE TIME
IMMEDIATELY PRIOR TO WHEN THE INFRINGEMENT BEGAN. YOU REMEMBER
ALL THE QUESTIONS ABOUT THE HYPOTHETICAL NEGOTIATIONS.
I WILL GIVE YOU MORE DETAILED INSTRUCTIONS REGARDING DAMAGES
SHORTLY, BUT NOTE, HOWEVER, THAT I/P ENGINE IS ENTITLED TO RECOVER NO
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LESS THAN A REASONABLE ROYALTY FOR EACH INFRINGING ACT. IN OTHER
WORDS, “THE USE MADE OF THE INVENTION BY THE DEFENDANTS.”
Authority: ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., No. 2:10-cv-248 (E.D. Va.
Aug. 23, 2011) (Dkt. No. 1002) (Adapted from Model Patent Jury Instructions § B.6.1, Federal
Circuit Bar Association (Nov. 12, 2009) (and cases cited therein)); Model Patent Jury
Instructions § B.6.1, Federal Circuit Bar Association (Feb. 2012); 35 U.S.C. § 284.
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INSTRUCTION NO. 29
REASONABLE ROYALTY - ENTITLEMENT
IF YOU FIND THAT I/P ENGINE HAS ESTABLISHED INFRINGEMENT, I/P
ENGINE IS ENTITLED TO AT LEAST A REASONABLE ROYALTY TO COMPENSATE
IT FOR THAT INFRINGEMENT.
Authority: ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., No. 2:10-cv-248 (E.D. Va.
Aug. 23, 2011) (Dkt. No. 1002) (Adapted from Model Patent Jury Instructions § B.6.5, Federal
Circuit Bar Association (Nov. 12, 2009) (and cases cited therein)); Model Patent Jury
Instructions § B.6.5, Federal Circuit Bar Association (Feb. 2012).
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INSTRUCTION NO. 30
REASONABLE ROYALTY – DEFINITION
A ROYALTY IS A PAYMENT MADE TO A PATENT HOLDER IN EXCHANGE
FOR THE RIGHT TO MAKE, USE, OR SELL THE CLAIMED INVENTION. A
REASONABLE ROYALTY IS THE AMOUNT OF ROYALTY PAYMENT THAT A
PATENT HOLDER AND THE INFRINGER WOULD HAVE AGREED TO IN A
HYPOTHETICAL NEGOTIATION TAKING PLACE AT A TIME JUST PRIOR TO WHEN
THE INFRINGEMENT FIRST BEGAN.
AT THE TIME OF THE HYPOTHETICAL NEGOTIATION IN THIS CASE, THE
PATENT OWNER WAS NON-PARTY LYCOS, INC (“LYCOS”). IN CONSIDERING THIS
HYPOTHETICAL NEGOTIATION, YOU SHOULD FOCUS ON WHAT THE
EXPECTATIONS OF LYCOS AND THE DEFENDANTS WOULD HAVE BEEN HAD
THEY ENTERED INTO AN AGREEMENT AT THAT TIME AND HAD THEY ACTED
REASONABLY IN THEIR NEGOTIATIONS. IN DETERMINING THIS, YOU MUST
ASSUME THAT BOTH PARTIES BELIEVED THE PATENT WAS VALID AND
INFRINGED AND LYCOS AND DEFENDANTS WERE WILLING TO ENTER INTO AN
AGREEMENT. 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 THE 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
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ROYALTY WOULD HAVE RESULTED FROM A HYPOTHETICAL NEGOTIATION.
ALTHOUGH EVIDENCE OF THE ACTUAL PROFITS AN ALLEGED INFRINGER MADE
MAY BE USED TO DETERMINE THE ANTICIPATED PROFITS AT THE TIME OF THE
HYPOTHETICAL NEGOTIATION, THE ROYALTY MAY NOT BE LIMITED OR
INCREASED BASED ON THE ACTUAL PROFITS THE ALLEGED INFRINGER MADE.
Authority: ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., No. 2:10-cv-248 (E.D. Va.
Aug. 23, 2011) (Dkt. No. 1002) (Adapted from Model Patent Jury Instructions § B.6.6, Federal
Circuit Bar Association (Nov. 12, 2009) (and cases cited therein)); Model Patent Jury
Instructions § B.6.6, Federal Circuit Bar Association (Feb. 2012).
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INSTRUCTION NO. 31
REASONABLE ROYALTY – RELEVANT FACTORS
IN DETERMINING THE REASONABLE ROYALTY, YOU SHOULD CONSIDER
ALL OF THE FACTS KNOWN AND AVAILABLE TO THE PARTIES AT THE TIME THE
INFRINGEMENT BEGAN. SOME OF THE KINDS OF FACTORS THAT YOU MAY
CONSIDER IN MAKING YOUR DETERMINATION FOLLOW. YOU MAY RECALL THE
PARTIES DISCUSSING THE “GEORGIA-PACIFIC FACTORS” DURING THE DAMAGES
PORTIONS OF THEIR CASES. THESE ARE THOSE FACTORS:
(1) THE ROYALTIES RECEIVED BY THE PATENTEE FOR THE LICENSING OF
THE PATENTS-IN-SUIT, PROVING OR TENDING TO PROVE AND ESTABLISH
ROYALTY;
(2) THE RATES PAID BY THE LICENSEE FOR THE USE OF OTHER PATENTS
COMPARABLE TO THE PATENTS-IN-SUIT;
(3) THE NATURE AND THE SCOPE OF THE LICENSE, EXCLUSIVE OR
NONEXCLUSIVE, OR AS RESTRICTED OR NON-RESTRICTED IN TERMS OF
TERRITORY OR WITH RESPECT TO WHOM THE MANUFACTURED PRODUCT MAY
BE SOLD;
(4) THE LICENSOR’S ESTABLISHED POLICY AND MARKETING PROGRAM TO
MAINTAIN HIS OR HER PATENT MONOPOLY BY NOT LICENSING OTHERS TO USE
THE INVENTION OR BY GRANTING LICENSES UNDER SPECIAL CONDITIONS
DESIGNED TO PRESERVE THAT MONOPOLY;
(5) THE COMMERCIAL RELATIONSHIP BETWEEN THE LICENSOR AND
LICENSEE. THE COMMERCIAL RELATIONSHIP BETWEEN THE LICENSOR AND
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LICENSEE, SUCH AS WHETHER THEY ARE COMPETITORS IN THE SAME
TERRITORY AND THE SAME LINE OF BUSINESS, OR WHETHER THEY ARE
INVENTOR AND PROMOTER;
(6) THE EFFECT OF SELLING THE PATENTED SPECIALTY IN PROMOTING
SALES OF OTHER PRODUCTS OF THE LICENSEE, THE EXISTING VALUE OF THE
INVENTION TO THE LICENSOR AS A GENERATOR OF SALES OF HIS NONPATENTED ITEMS AND THE EXTENT OF SUCH DERIVATIVE OR CONVOYED SALES;
(7) THE DURATION OF THE PATENT AND THE TERM OF THE LICENSE;
(8) THE ESTABLISHED PROFITABILITY OF THE PRODUCT MADE UNDER THE
PATENTS, ITS COMMERCIAL SUCCESS, AND ITS CURRENT POPULARITY;
(9) THE UTILITY AND ADVANTAGES OF THE PATENTED PROPERTY OVER
THE OLD MODES OR DEVICES, IF ANY, THAT HAD BEEN USED FOR WORKING OUT
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 TO WHICH THE INFRINGER HAS MADE USE OF THE
INVENTION AND ANY EVIDENCE PROBATIVE OF THE VALUE OF THAT USE;
(12) THE PORTION OF THE PROFIT OR THE SELLING PRICE THAT MAY BE
CUSTOMARY IN THE PARTICULAR BUSINESS OR IN COMPARABLE BUSINESSES
TO ALLOW FOR THE USE OF THE INVENTION OR THE ANALOGOUS INVENTIONS;
(13) THE PORTION OF THE REALIZABLE PROFITS THAT SHOULD BE
CREDITED TO THE INVENTION AS DISTINGUISHED FROM NON-PATENTED
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ELEMENTS, THE MANUFACTURING PROCESS, BUSINESS RISKS, OR SIGNIFICANT
FEATURES OR IMPROVEMENTS ADDED BY THE INFRINGER;
(14) THE OPINION AND TESTIMONY OF QUALIFIED EXPERTS;
(15) THE AMOUNT THAT A LICENSOR (SUCH AS THE PATENTEE) AND A
LICENSEE (SUCH AS THE INFRINGER) WOULD HAVE AGREED UPON AT THE TIME
THE INFRINGEMENT BEGAN IF BOTH HAD REASONABLY APPEARED
VOLUNTARILY TRYING TO REACH AN AGREEMENT; THAT IS, THE AMOUNT THAT
A PRUDENT LICENSEE WHO DESIRED, AS A BUSINESS PROPOSITION, TO OBTAIN A
LICENSE TO USE AND SELL A PARTICULAR ARTICLE EMBODYING THE PATENTED
INVENTION 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 BY A PROVEN PATENTEE WHO WAS WILLING TO GRANT 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.
YOU MAY ALSO CONSIDER ANY OTHER FACTORS WHICH IN YOUR MIND
WOULD HAVE INCREASED OR DECREASED THE ROYALTY THE DEFENDANTS
WOULD HAVE BEEN WILLING TO PAY AND LYCOS WOULD HAVE BEEN WILLING
TO ACCEPT, ACTING AS NORMALLY PRUDENT BUSINESS PEOPLE. THE FINAL
FACTOR ESTABLISHES THE FRAMEWORK WHICH YOU SHOULD USE IN
DETERMINING A REASONABLE ROYALTY, THAT IS, THE PAYMENT THAT WOULD
HAVE RESULTED FROM A NEGOTIATION BETWEEN I/P ENGINE AND THE
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DEFENDANTS TAKING PLACE AT A TIME PRIOR TO WHEN THE INFRINGEMENT
BEGAN.
Authority: ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., No. 2:10-cv-248 (E.D. Va.
Aug. 23, 2011) (Dkt. No. 1002) (Adapted from Model Patent Jury Instructions § B.6.7, Federal
Circuit Bar Association (Nov. 12, 2009) (and cases cited therein)); Model Patent Jury
Instructions § B.6.7, Federal Circuit Bar Association (Feb. 2012).
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INSTRUCTION NO. 32
DATE OF COMMENCEMENT OF DAMAGES
IN DETERMINING THE AMOUNT OF DAMAGES, YOU MUST DETERMINE
WHEN THE DAMAGES BEGAN. IN THIS CASE, BECAUSE THE PATENT WAS
GRANTED BEFORE THE INFRINGING ACTIVITY ALLEGEDLY BEGAN, DAMAGES
SHOULD BE CALCULATED AS OF THE DATE THAT THE INFRINGEMENT BEGAN.
I/P ENGINE AND DEFENDANTS AGREE THAT THIS DATE WAS THE FIRST
QUARTER OF 2004.
Authority: ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., No. 2:10-cv-248 (E.D. Va.
Aug. 23, 2011) (Dkt. No. 1002) (Adapted from Model Patent Jury Instructions § B.6.8, Federal
Circuit Bar Association (Nov. 12, 2009)); Model Patent Jury Instructions § B.6.8, Federal Circuit
Bar Association (Feb. 2012).
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Dated: October 9, 2012
Respectfully submitted,
By: /s/ Jeffrey K. Sherwood
Donald C. Schultz (Virginia Bar No. 30531)
W. Ryan Snow (Virginia Bar No. 47423)
CRENSHAW, WARE & MARTIN PLC
150 West Main Street
Norfolk, VA 23510
Telephone: (757) 623-3000
Facsimile: (757) 623-5735
Jeffrey K. Sherwood (Virginia Bar No. 19222)
Frank C. Cimino, Jr.
Kenneth W. Brothers
Charles J. Monterio, Jr.
DICKSTEIN SHAPIRO LLP
1825 Eye Street, NW
Washington, DC 20006
Telephone:
(202) 420-2200
Facsimile:
(202) 420-2201
Dawn Rudenko Albert
DICKSTEIN SHAPIRO LLP
1633 Broadway
New York, NY 10019
Telephone:
(212) 277-6500
Facsimile:
(212) 277-6501
Counsel for Plaintiff I/P Engine, Inc.
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