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

Filing 704

Defendants' Proposed Pre-Trial Jury Instructions Proposed Jury Instructions by AOL Inc., Gannett Company, Inc., Google Inc., IAC Search & Media, Inc., Target Corporation. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2)(Noona, Stephen)

Exhibit 1

1.1

OPENING INSTRUCTION 1

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.
THESE INSTRUCTIONS ARE PRELIMINARY INSTRUCTIONS TO HELP YOU
UNDERSTAND THE PRINCIPLES THAT APPLY TO CIVIL TRIALS AND TO HELP YOU
UNDERSTAND THE EVIDENCE AS YOU LISTEN TO IT. AT THE END OF THE TRIAL, I
WILL GIVE YOU A FINAL SET OF INSTRUCTIONS. IT IS THE FINAL SET OF
INSTRUCTIONS WHICH WILL GOVERN YOUR DELIBERATIONS.
YOU MUST NOT INFER FROM THESE INSTRUCTIONS OR FROM ANYTHING I
MAY SAY OR DO AS INDICATING THAT I HAVE AN OPINION REGARDING THE
EVIDENCE OR WHAT YOUR VERDICT SHOULD BE.
IN FOLLOWING MY INSTRUCTIONS, YOU MUST FOLLOW ALL OF THEM AND
NOT SINGLE OUT SOME AND IGNORE OTHERS. THEY ARE ALL IMPORTANT.

1

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); Ninth Circuit Model Civil Jury
Instructions - 1.1A (2007 Edition).

1.2

ROLES OF THE JUDGE AND JURY2

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.
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 DELIBERATIONS AT THE CLOSE OF THE CASE, I WILL INSTRUCT
YOU IN MORE DETAIL ON THE LAW THAT YOU MUST FOLLOW AND APPLY. YOU
ARE REQUIRED TO FOLLOW THE LAW AS I GIVE IT TO YOU WHETHER YOU
AGREE WITH IT OR NOT.
BECAUSE YOU WILL BE ASKED TO DECIDE THE FACTS OF THIS CASE, YOU
SHOULD GIVE CAREFUL ATTENTION TO THE TESTIMONY AND EVIDENCE
PRESENTED. DURING 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.

2

Adapted from 3 Kevin F. O’Malley, Jay E. Grenig, & Hon. William C. Lee, Federal
Jury Practice and Instructions – Civil §§ 101.01, 101.10 (5th ed. 2000).

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2

1.3

JURY CONDUCT3

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.
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

MAKE ANY INVESTIGATION ABOUT THE CASE ON YOUR OWN.
3

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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3

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.

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4

1.4

WHAT IS EVIDENCE4

THE EVIDENCE IN THIS CASE WILL CONSIST OF THE FOLLOWING:
1.

THE SWORN TESTIMONY OF THE WITNESSES;

2.

THE EXHIBITS THAT HAVE BEEN RECEIVED IN EVIDENCE; AND

3.

ANY STIPULATED FACTS BY THE PARTIES.

4

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); Ninth Circuit Model
Civil Jury Instructions - 1.6 (2007 Edition); 2006 Fifth Circuit Civil Pattern Jury Instructions.

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5

1.5

WHAT IS NOT EVIDENCE5

IN REACHING YOUR VERDICT, YOU MAY CONSIDER ONLY THE TESTIMONY
AND EXHIBITS RECEIVED INTO EVIDENCE. CERTAIN THINGS ARE NOT
EVIDENCE, AND YOU MAY NOT CONSIDER THEM IN DECIDING WHAT THE FACTS
ARE.
1.

ARGUMENTS AND STATEMENTS BY LAWYERS ARE NOT EVIDENCE.

THE LAWYERS ARE NOT WITNESSES. WHAT THEY WILL SAY IN THEIR OPENING
STATEMENTS, IN THEIR CLOSING ARGUMENTS, AND AT OTHER TIMES IS
INTENDED TO HELP YOU INTERPRET THE EVIDENCE, BUT IT IS NOT EVIDENCE. IF
THE FACTS AS YOU REMEMBER THEM DIFFER FROM THE WAY THE LAWYERS
HAVE STATED THEM, YOUR MEMORY OF THEM CONTROLS.
2.

QUESTIONS AND OBJECTIONS BY LAWYERS ARE NOT EVIDENCE.

ATTORNEYS HAVE A DUTY TO THEIR CLIENTS TO OBJECT WHEN THEY BELIEVE
A QUESTION IS IMPROPER UNDER THE RULES OF EVIDENCE. YOU SHOULD NOT
BE INFLUENCED BY THE OBJECTION OR BY THE COURT’S RULING ON IT.
3.

TESTIMONY THAT HAS BEEN EXCLUDED OR STRICKEN, OR THAT

YOU HAVE BEEN INSTRUCTED TO DISREGARD, IS NOT EVIDENCE AND MUST NOT
BE CONSIDERED.
4.

ANYTHING YOU MAY HAVE SEEN OR HEARD WHEN THE COURT WAS

NOT IN SESSION IS NOT EVIDENCE. YOU ARE TO DECIDE THE CASE SOLELY ON
THE EVIDENCE RECEIVED AT THE TRIAL.

5

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); Ninth Circuit Model
Civil Jury Instructions - 1.7 (2007 Edition); 2006 Fifth Circuit Civil Pattern Jury Instructions.

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1.6

EVIDENCE FOR A LIMITED PURPOSE6

SOME EVIDENCE MAY BE 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.

6

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); Ninth Circuit Model
Civil Jury Instructions - 1.8 (2007 Edition); 2006 Fifth Circuit Civil Pattern Jury Instructions.

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1.7

DIRECT OR CIRCUMSTANTIAL EVIDENCE7

EVIDENCE MAY BE DIRECT OR CIRCUMSTANTIAL. DIRECT EVIDENCE IS
DIRECT PROOF OF A FACT, SUCH AS TESTIMONY BY A WITNESS ABOUT WHAT
THAT WITNESS PERSONALLY SAW OR HEARD OR DID. CIRCUMSTANTIAL
EVIDENCE IS PROOF OF ONE OR MORE FACTS THAT TEND TO PROVE OR
DISPROVE THE EXISTENCE OR NONEXISTENCE OF CERTAIN OTHER FACTS. YOU
SHOULD CONSIDER BOTH KINDS OF EVIDENCE. THE LAW MAKES NO
DISTINCTION BETWEEN THE WEIGHT TO BE GIVEN TO EITHER DIRECT OR
CIRCUMSTANTIAL EVIDENCE. YOU ARE TO DECIDE HOW MUCH WEIGHT TO
GIVE ANY EVIDENCE.

7

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); Ninth Circuit Model
Civil Jury Instructions - 1.9 (2007 Edition); 2006 Fifth Circuit Civil Pattern Jury Instructions.

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1.8

RULINGS ON OBJECTIONS8

THERE ARE RULES THAT CONTROL WHAT CAN BE RECEIVED INTO
EVIDENCE. WHEN A LAWYER ASKS A QUESTION OR OFFERS AN EXHIBIT INTO
EVIDENCE AND A LAWYER ON THE OTHER SIDE THINKS THAT IT IS NOT
PERMITTED BY THE RULES OF EVIDENCE, THAT LAWYER MAY OBJECT. IF I
OVERRULE THE OBJECTION, THE QUESTION MAY BE ANSWERED OR THE EXHIBIT
RECEIVED. IF I SUSTAIN THE OBJECTION, THE QUESTION CANNOT BE
ANSWERED, AND THE EXHIBIT CANNOT BE RECEIVED. WHENEVER I SUSTAIN AN
OBJECTION TO A QUESTION, YOU MUST IGNORE THE QUESTION AND MUST NOT
GUESS WHAT THE ANSWER MIGHT HAVE BEEN.

8

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); Ninth Circuit Model
Civil Jury Instructions - 1.10 (2007 Edition); 2006 Fifth Circuit Civil Pattern Jury Instructions.

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1.9

CREDIBILITY OF WITNESSES9

YOU, AS JURORS, ARE THE SOLE JUDGES OF THE CREDIBILITY OF THE
WITNESSES AND THE WEIGHT THEIR TESTIMONY DESERVES. YOU MAY BE
GUIDED BY THE APPEARANCE AND THE CONDUCT OF THE WITNESS, OR BY THE
MANNER IN WHICH THE WITNESSES TESTIFY, OR BY THE CHARACTER OF THE
TESTIMONY GIVEN, OR BY EVIDENCE TO THE CONTRARY OF THE TESTIMONY
GIVEN. YOU SHOULD CAREFULLY SCRUTINIZE ALL THE TESTIMONY GIVEN, THE
CIRCUMSTANCES UNDER WHICH EACH WITNESS HAS TESTIFIED, AND EVERY
MATTER IN EVIDENCE WHICH TENDS TO SHOW WHETHER THE WITNESS WAS
WORTHY OF BELIEF. CONSIDER EACH WITNESS’ INTELLIGENCE, MOTIVE AND
STATE OF MIND, THEIR DEMEANOR OR MANNER WHILE ON THE STAND.
CONSIDER THE WITNESS’S ABILITY TO OBSERVE THE MATTERS AS TO WHICH HE
OR SHE HAS TESTIFIED, AND WHETHER HE OR SHE IMPRESSES YOU AS HAVING
AN ACCURATE RECOLLECTION OF THESE MATTERS. CONSIDER ALSO ANY
RELATION EACH WITNESS MAY BEAR TO EITHER SIDE OF THE CASE; THE
MANNER IN WHICH EACH WITNESS MIGHT BE AFFECTED BY THE JURY; AND THE
EXTENT TO WHICH, IF AT ALL, EACH WITNESS IS EITHER SUPPORTED OR
CONTRADICTED BY OTHER EVIDENCE IN THE CASE.
INCONSISTENCIES OR DISCREPANCIES IN THE TESTIMONY OF A WITNESS,
OR BETWEEN THE TESTIMONY OF DIFFERENT WITNESSES, MAY OR MAY NOT
CAUSE YOU, AS A JUROR, TO DISCREDIT SUCH TESTIMONY. TWO OR MORE
PERSONS WITNESSING AN INCIDENT OR TRANSACTION MAY SEE IT OR HEAR IT

9

Active Video Networks, Inc. v. Verizon Comm., Inc., No. 2:10cv248 (E.D. Va.).

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10

DIFFERENTLY. AN INNOCENT MISRECOLLECTION, LIKE A FAILURE OF
RECOLLECTION, IS NOT AN UNCOMMON EXPERIENCE. IN WEIGHING THE EFFECT
OF A DISCREPANCY, ALWAYS CONSIDER WHETHER IT PERTAINS TO A MATTER
OF IMPORTANCE OR AN UNIMPORTANT DETAIL AND WHETHER THE
DISCREPANCY RESULTS FROM INNOCENT ERROR OR INTENTIONAL FALSEHOOD.
A WITNESS MAY BE DISCREDITED OR IMPEACHED BY CONTRADICTORY
EVIDENCE, OR BY EVIDENCE THAT AT SOME OTHER TIME THE WITNESS HAD
SAID OR DONE SOMETHING, OR HAS FAILED TO SAY OR DO SOMETHING WHICH
IS INCONSISTENT WITH THE WITNESS’ TESTIMONY HERE IN COURT, HIS PRESENT
TESTIMONY. IF YOU BELIEVE ANY WITNESS HAS BEEN IMPEACHED AND, THUS,
DISCREDITED, IT IS YOUR EXCLUSIVE DECISION TO GIVE THE TESTIMONY OF
THAT WITNESS SUCH CREDIBILITY AS YOU THINK IT DESERVES.
IF A WITNESS IS SHOWN KNOWINGLY TO HAVE TESTIFIED FALSELY TO
ANY MATERIAL MATTER, YOU HAVE A RIGHT TO DISTRUST SUCH WITNESS’
TESTIMONY IN OTHER PARTICULARS AND YOU MAY REJECT ALL THE
TESTIMONY OF THAT WITNESS OR GIVE IT SUCH CREDIBILITY AS YOU THINK IT
DESERVES.
ALSO, THE WEIGHT OF THE EVIDENCE IS NOT NECESSARILY DETERMINED
BY THE NUMBER OF WITNESSES TESTIFYING TO THE EXISTENCE OR THE
NONEXISTENCE OF ANY FACT. YOU MAY FIND THAT THE TESTIMONY OF A
SMALL NUMBER OF WITNESSES AS TO ANY FACT IS MORE CREDIBLE THAN THE
TESTIMONY OF A LARGER NUMBER OF WITNESSES TO THE CONTRARY.

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1.10

DEPOSITION TESTIMONY10

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.

10

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); Ninth Circuit Model
Civil Jury Instructions – 2.4 (2007 Edition); 2006 Fifth Circuit Civil Pattern Jury Instructions.

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1.11

BENCH CONFERENCES AND RECESSES11

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. THE PURPOSE OF THESE CONFERENCES IS NOT TO KEEP
RELEVANT INFORMATION FROM YOU, BUT TO DECIDE HOW CERTAIN EVIDENCE
IS TO BE TREATED UNDER THE RULES OF EVIDENCE AND TO AVOID CONFUSION
AND ERROR. I WILL TRY TO LIMIT THESE INTERRUPTIONS AS MUCH AS
POSSIBLE.

11

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); Ninth Circuit Model Civil Jury
Instructions - 1.18 (2007 Edition).

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1.12

NO TRANSCRIPT AVAILABLE/TAKING NOTES12

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.
IF AT ANY TIME YOU CANNOT HEAR OR SEE THE TESTIMONY, EVIDENCE,
QUESTIONS OR ARGUMENTS, LET ME KNOW SO THAT I CAN CORRECT THE
PROBLEM.
IF YOU WISH, YOU MAY TAKE NOTES TO HELP YOU REMEMBER THE
EVIDENCE. IF YOU DO TAKE NOTES, PLEASE KEEP THEM TO YOURSELF UNTIL
YOU AND YOUR FELLOW JURORS GO TO THE JURY ROOM TO DECIDE THE CASE.
DO NOT LET NOTE-TAKING DISTRACT YOU. WHEN YOU LEAVE, YOUR NOTES
SHOULD BE LEFT IN THE JURY ROOM. NO ONE WILL READ YOUR NOTES. THEY
WILL BE DESTROYED AT THE CONCLUSION OF THE CASE.
WHETHER OR NOT YOU TAKE NOTES, YOU SHOULD RELY ON YOUR OWN
MEMORY OF THE EVIDENCE. NOTES ARE ONLY TO ASSIST YOUR MEMORY. YOU
SHOULD NOT BE OVERLY INFLUENCED BY YOUR NOTES OR THOSE OF YOUR
FELLOW JURORS.

12

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); Ninth Circuit Model
Civil Jury Instructions - 1.13, 1.14 (2007 Edition); 2006 Fifth Circuit Civil Pattern Jury
Instructions.

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1.13

WHAT A PATENT IS AND HOW ONE IS OBTAINED13

[THIS INSTRUCTION SUMMARIZES INFORMATION ABOUT PATENTS THAT IS
DISCUSSED IN THE FEDERAL JUDICIAL CENTER’S VIDEO, “AN INTRODUCTION TO
THE PATENT SYSTEM.” DEFENDANTS UNDERSTAND THAT THE COURT WILL
PLAY THE PATENT VIDEO FOR THE JURY, IN WHICH CASE, THIS INSTRUCTION
NEED NOT BE READ.]
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.
PATENTS ARE GRANTED BY THE UNITED STATES PATENT AND
TRADEMARK OFFICE (SOMETIMES CALLED “THE PATENT OFFICE” OR “PTO”). A
VALID UNITED STATES PATENT GIVES THE PATENT OWNER THE RIGHT TO
PREVENT OTHERS FROM MAKING, USING, OFFERING TO SELL, OR SELLING THE
PATENTED INVENTION WITHIN THE UNITED STATES DURING THE TERM OF THE
PATENT WITHOUT THE PATENT OWNER’S PERMISSION. A VIOLATION OF THE
PATENT OWNER’S RIGHTS IS CALLED INFRINGEMENT. THE PATENT OWNER MAY
TRY TO ENFORCE A PATENT AGAINST PERSONS BELIEVED TO BE INFRINGERS BY
A LAWSUIT FILED IN FEDERAL COURT, LIKE THIS COURT.
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
13

Adapted from Model Patent Jury Instructions prepared by the Federal Circuit Bar
Association (Feb. 2012).

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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.
THE PROCESS OF OBTAINING A PATENT IS CALLED PATENT PROSECUTION.
TO OBTAIN A PATENT ONE MUST FILE AN APPLICATION WITH THE PTO. THE PTO
IS AN AGENCY OF THE FEDERAL GOVERNMENT AND EMPLOYS TRAINED
EXAMINERS WHO REVIEW APPLICATIONS FOR PATENTS. 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 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

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16

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, WHICH TAKES PLACE ONLY BETWEEN THE
EXAMINER AND THE PATENT APPLICANT, MAY GO BACK AND FORTH FOR SOME
TIME UNTIL THE EXAMINER IS SATISFIED THAT THE APPLICATION MEETS THE
REQUIREMENTS FOR A PATENT, OR THAT THE APPLICATION SHOULD BE
REJECTED AND NO PATENT SHOULD ISSUE. THE PAPERS GENERATED DURING
THESE COMMUNICATIONS BETWEEN THE EXAMINER AND THE APPLICANT ARE
CALLED THE “PROSECUTION HISTORY.”
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. FOR EXAMPLE, THE PTO MAY NOT HAVE HAD
AVAILABLE TO IT ALL OTHER PRIOR ART AND OTHER INFORMATION THAT WILL
BE PRESENTED TO YOU. A PERSON ACCUSED OF INFRINGEMENT HAS THE RIGHT
TO ARGUE HERE IN FEDERAL COURT THAT A CLAIMED INVENTION IN THE

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PATENT IS INVALID BECAUSE IT DOES NOT MEET THE REQUIREMENTS FOR A
PATENT. IT IS YOUR JOB TO CONSIDER THE EVIDENCE PRESENTED BY THE
PARTIES AND DETERMINE INDEPENDENTLY WHETHER OR NOT DEFENDANTS
HAVE PROVEN THAT THE PATENT IS INVALID.

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1.14

SUMMARY OF CONTENTIONS

TO HELP YOU FOLLOW THE EVIDENCE, I WILL NOW GIVE YOU A
SUMMARY OF THE POSITIONS OF THE PARTIES. PLAINTIFF I/P ENGINE. INC.
CONTENDS THAT DEFENDANTS GOOGLE, INC., AOL, INC., IAC SEARCH & MEDIA,
INC., GANNETT CO., INC., AND TARGET CORP. INFRINGE U.S. PATENT NO. 6,314,420
AND U.S. PATENT NO. 6,775,664. THESE PATENTS ARE SOMETIMES REFERRED TO
AS THE ‘420 AND THE ‘664 PATENTS. SPECIFICALLY, I/P ENGINE CONTENDS THAT
GOOGLE’S ADWORDS SYSTEM DIRECTLY INFRINGES THE ASSERTED CLAIMS,
AND THAT AOL, INC., IAC SEARCH & MEDIA, GANNETT, AND TARGET INFRINGE
THROUGH THEIR USE OF GOOGLE’S ADWORDS SYSTEM.
DEFENDANTS DENY THAT THEY INFRINGE ANY CLAIM OF THE ‘420
PATENT OR THE ‘664 PATENT. DEFENDANTS ALSO CONTEND THAT THE
ASSERTED CLAIMS OF THE ‘420 PATENT AND THE ‘664 PATENT ARE INVALID.
INVALIDITY IS A DEFENSE TO PATENT INFRINGEMENT. EVEN THOUGH THE
UNITED STATES PATENT AND TRADEMARK OFFICE HAS ALLOWED THE CLAIMS
OF THE ‘420 PATENT AND THE ‘664 PATENT, YOU, THE JURY, ARE RESPONSIBLE
FOR DECIDING WHETHER THE CLAIMS OF THE PATENT ARE VALID.
YOUR JOB IS TO DECIDE WHETHER OR NOT THE ASSERTED CLAIMS OF THE
‘420 PATENT OR THE ‘664 PATENT HAVE BEEN INFRINGED AND WHETHER OR NOT
THOSE CLAIMS ARE INVALID. IF YOU DECIDE THAT ANY CLAIM OF THE ‘420
PATENT OR THE ‘664 PATENT HAS BEEN INFRINGED AND ALSO THAT AN
INFRINGED CLAIM IS NOT INVALID, THEN YOU WILL THEN NEED TO DECIDE
MONEY DAMAGES TO BE AWARDED TO I/P ENGINE.

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1.15

PATENTS AT ISSUE14

[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.

14

Adapted from Adapted from Patent Jury Instructions, The National Patent Jury
Instruction Project § 1.2 (June 17, 2009).

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1.16

THE ROLE OF THE CLAIMS OF A PATENT15

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.

15

Patent Jury Instructions prepared by the Federal Circuit Bar Association.

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1.17

CLAIM CONSTRUCTION16

[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.

16

Adapted from Model Patent Jury Instructions § A.3, Federal Circuit Bar Association
(February 2012).

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1.18

OUTLINE OF TRIAL17

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 EACH SIDE EXPECTS THE
EVIDENCE WILL SHOW.
THE PRESENTATION OF EVIDENCE WILL THEN BEGIN. WITNESSES WILL
TAKE THE WITNESS STAND AND THE DOCUMENTS WILL BE OFFERED AND
ADMITTED INTO EVIDENCE. 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. A PREPONDERANCE OF THE
EVIDENCE MEANS THAT THE FACT THAT IS TO BE PROVEN IS MORE LIKELY
TRUE THAN NOT. ON OTHER ISSUES THAT I WILL IDENTIFY FOR YOU, YOU MUST
DECIDE WHETHER THE FACT HAS BEEN PROVEN BY CLEAR AND CONVINCING
EVIDENCE, I.E., THAT 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
17

Adapted from Model Patent Jury Instructions § A.5, Federal Circuit Bar Association
(Feb. 2012).

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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 INFRINGED BY DEFENDANTS. TO PROVE
INFRINGEMENT OF ANY CLAIM, I/P ENGINE MUST PERSUADE YOU THAT IT IS
MORE LIKELY THAN NOT THAT DEFENDANTS HAVE INFRINGED THAT CLAIM.
DEFENDANTS WILL THEN PRESENT THEIR EVIDENCE THAT THE CLAIMS OF
THE ‘420 PATENT AND THE ‘664 PATENT 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 THEIR
EVIDENCE OF INVALIDITY, DEFENDANTS WILL PUT ON EVIDENCE RESPONDING
TO I/P ENGINE’S EVIDENCE ON INFRINGEMENT.
I/P ENGINE MAY THEN PUT ON ADDITIONAL EVIDENCE RESPONDING TO
DEFENDANTS’ EVIDENCE THAT THE CLAIMS OF THE ‘420 PATENT AND THE ‘664
PATENT ARE INVALID.
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.

11981530v2

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