Ironburg Inventions Ltd. v. Valve Corporation

Filing 384

MINUTE ORDER: Having reviewed the parties' joint statement of objections, docket no. 374 ,to the Court's proposed jury instructions circulated to counsel via email on April 29, 2020, as well as the supplemental authorities submitted b y the parties, docket nos. 380 and 382 , the Court has made revisions to the jury instructions as indicated in the redlined version attached hereto as Appendix A. Any objections to the current draft of the jury instructions shall be filed by January 20, 2021. Authorized by Judge Thomas S. Zilly. (MW)

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UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF WASHINGTON
AT SEATTLE

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IRONBURG INVENTIONS LTD.,

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Plaintiff,
C17-1182 TSZ
v.
MINUTE ORDER
VALVE CORPORATION,

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Defendant.

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The following Minute Order is made by direction of the Court, the Honorable
13 Thomas S. Zilly, United States District Judge:
(1)
Having reviewed the parties’ joint statement of objections, docket no. 374,
to the Court’s proposed jury instructions circulated to counsel via email on April 29,
2020, as well as the supplemental authorities submitted by the parties, docket nos. 380
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and 382, the Court has made revisions to the jury instructions as indicated in the redlined
version attached hereto as Appendix A. Any objections to the current draft of the jury
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instructions shall be filed by January 20, 2021.
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(2)
record.

The Clerk is directed to send a copy of this Minute Order to all counsel of

Dated this 14th day of January, 2021.
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William M. McCool
Clerk

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s/Gail Glass
Deputy Clerk

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MINUTE ORDER - 1

DISCUSSION DRAFT
11 March 2020
29 April 2020
14 January 2021

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Appendix A

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UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF WASHINGTON
AT SEATTLE

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IRONBURG INVENTIONS LTD.,

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Plaintiff,
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v.
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VALVE CORPORATION,
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Defendant.
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___________________________________ )

NO. C17-1182 TSZ

COURT’S JURY INSTRUCTIONS

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DATED this ___ day of ______________, 20210.

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_________________________
THOMAS S. ZILLY
United States District Judge

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COURT’S JURY INSTRUCTIONS

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INSTRUCTION NO. 1

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Duty of Jury

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Members of the Jury: Now that you have heard all the evidence, it is my duty to
instruct you on the law that applies to this case. These instructions will be in three parts:
first, the instructions on general rules that define and control the jury’s duties; second, the

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instructions that state the rules of law you must apply, i.e., what each party must prove to make
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its case; and third, some rules for your deliberations.
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It is your duty to find the facts from all the evidence in the case. To those facts you
must apply the law as I give it to you. You must follow the law as I give it to you whether
you agree with it or not. And you must not be influenced by any personal likes or dislikes,

13 opinions, prejudices, or sympathy. That means that you must decide the case solely on the
14 evidence before you and according to the law. You will recall that you took an oath
15 promising to do so at the beginning of the case.
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In following my instructions, you must follow all of them and not single out some and

17 ignore others; they are all equally important. And you must not read into these instructions or
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anything I might have said or done that I have an opinion regarding the evidence or what
verdict you should return. That is a matter entirely for you to decide.

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SOURCE: 9th Cir. Model Instr. 1.4 (modified).

COURT’S JURY INSTRUCTIONS

01

INSTRUCTION NO. 2

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Conscious and Unconscious Bias

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It is important that you discharge your duties without discrimination, meaning that bias
regarding race, color, religious beliefs, national origin, sexual orientation, gender, or any

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disability of a party, a witness, or a lawyer should play no part in the exercise of your judgment
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throughout the trial. These are called “conscious biases.”
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There is, however, another more subtle tendency at work about which we must all be
aware. This part of human nature is understandable but must play no role in your service as

11 jurors. In our daily lives, there are many issues that require us to make quick decisions and
12 then move on. In making these daily decisions, we may well rely upon generalities, even what
13 might be called biases or prejudices. That may be appropriate as a coping mechanism in our
14 busy daily lives but bias and prejudice can play no part in any decisions you might make as a
15 juror. Your decisions as jurors must be based solely upon an open-minded, fair consideration
16 of the evidence that comes before you during trial.
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SOURCE: WPI 1.01 (modified); see https://www.wawd.uscourts.gov/jury/unconscious-bias.

COURT’S JURY INSTRUCTIONS

01

INSTRUCTION NO. 3

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Burden of Proof

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When a party has the burden of proof on any claim or affirmative defense by a
preponderance of the evidence, it means you must be persuaded by the evidence that the claim

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or affirmative defense is more probably true than not true. You should base your decision on
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all of the evidence, regardless of which party presented it.
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SOURCE: 9th Cir. Model Instr. 1.6.

COURT’S JURY INSTRUCTIONS

01

INSTRUCTION NO. 4

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Evidence

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The evidence you are to consider in deciding what the facts are consists of (1) the sworn
testimony of witnesses; (2) the exhibits that are admitted into evidence; and (3) any facts to

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which all the lawyers have agreed.
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SOURCE: 9th Cir. Model Instr. 1.9.

COURT’S JURY INSTRUCTIONS

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INSTRUCTION NO. 5

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Stipulated Facts

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The parties have agreed, or stipulated, to the following facts. You must therefore treat
these facts as having been proved. You should consider these facts in addition to those facts

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that were proved to you at trial.
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1.

The United States Patent and Trademark Office issued United States

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Patent No. 8,641,525 (the “’525 Patent”) on February 4, 2014.

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2.

February 4, 2014, the owner and assignee of record of the ’525 Patent.

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Plaintiff Ironburg Inventions Ltd. is, and has been at all times since

3.

As part of its business, plaintiff licenses the ’525 Patent to other

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companies, including to Scuf Gaming International LLC (“Scuf

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Gaming”), Microsoft Corporation, and others.

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4.

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and sells gaming software, hardware, and related devices and accessories,

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Defendant Valve Corporation is a video gaming company that develops

and that provides an on-line gaming platform.
5.

At least as early as 2013, defendant announced its intention to enter the

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video game controller market.
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6.

Plaintiff, through its counsel, sent defendant a letter dated March 7, 2014,

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and provided defendant with notice of the ’525 Patent.

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Defendant began to sell its “Steam Controller” product in 2015.

COURT’S JURY INSTRUCTIONS

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INSTRUCTION NO. 5 (page 2)

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In connection with its design of the Steam Controller, defendant made no
attempt to design around the ’525 Patent.

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None of the design changes that defendant made to the Steam Controller

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were made in response to plaintiff’s March 7, 2014, letter notifying
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defendant of the ‘525 Patent.
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States at all times from June 2015 through December 2019.

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Defendant continued to sell its Steam Controller product in the United

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Between June 1, 2015, and December 31, 2019, defendant sold

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approximately 1,612,136 Steam Controllers, all of which were

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manufactured in the United States.

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COURT’S JURY INSTRUCTIONS

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INSTRUCTION NO. 6

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What is Not Evidence

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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

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the facts are. I will list them for you:
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1.

Arguments and statements by lawyers are not evidence. The lawyers are not

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witnesses. What they say in their opening statements, closing arguments and at other times is
intended to help you interpret the evidence, but it is not evidence. If the facts as you

11 remember them differ from the way the lawyers have stated them, your memory of them
12 controls.

2.

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Objections by lawyers are not evidence. Attorneys have a duty to their clients to

14 object when they believe a question is improper under the rules of evidence. You should not
15 be influenced by the objection or by the Court’s ruling on it.
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3.

Testimony that has been excluded or stricken, or that you have been instructed to

disregard, is not evidence and must not be considered. In addition, if testimony or exhibits
have been received only for a limited purpose, you must follow the limiting instructions I have

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given.
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4.

Anything you may have seen or heard when the court was not in session is not

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evidence. You are to decide the case solely on the evidence received at the trial.
SOURCE: 9th Cir. Model Instr. 1.10 (modified).

COURT’S JURY INSTRUCTIONS

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INSTRUCTION NO. 7

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Direct and Circumstantial Evidence

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Evidence may be direct or circumstantial. Direct evidence is direct proof of a fact,
such as testimony by a witness about what the witness personally saw or heard or did.

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Circumstantial evidence is proof of one or more facts from which you could find another fact.
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You should consider both kinds of evidence. The law makes no distinction between the
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weight to be given to either direct or circumstantial evidence. It is for you to decide how
much weight to give to any evidence.

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SOURCE: 9th Cir. Model Instr. 1.12.

COURT’S JURY INSTRUCTIONS

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INSTRUCTION NO. 8

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Credibility of Witnesses

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In deciding the facts in this case, you might have to decide which testimony to believe
and which testimony not to believe. You may believe everything a witness says, or part of it,

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or none of it.
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In considering the testimony of any witness, you may take into account:
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the opportunity and ability of the witness to see or hear or know the things

testified to;

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2.

the witness’s memory;

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3.

the witness’s manner while testifying;

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4.

the witness’s interest in the outcome of the case and any bias or prejudice;

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5.

whether other evidence contradicted the witness’s testimony;

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6.

the reasonableness of the witness’s testimony in light of all the evidence; and

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7.

any other factors that bear on believability.

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Sometimes a witness may say something that is not consistent with something else he or
she said. Sometimes different witnesses will give different versions of what happened. People

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often forget things or make mistakes in what they remember. Also, two people may see the
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same event but remember it differently. You may consider these differences, but do not
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decide that testimony is untrue just because it differs from other testimony.

COURT’S JURY INSTRUCTIONS

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INSTRUCTION NO. 8 (page 2)

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If you decide, however, that a witness has deliberately testified untruthfully about
something important, you may choose not to believe anything that witness said. On the other
hand, if you think the witness testified untruthfully about some things but told the truth about

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others, you may accept the part you think is true and ignore the rest.
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The weight of the evidence presented by each side does not necessarily depend on the
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number of witnesses who testify. What is important is how believable the witnesses were, and
how much weight you think their testimony deserves.

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SOURCE: 9th Cir. Model Instr. 1.14.

COURT’S JURY INSTRUCTIONS

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INSTRUCTION NO. 9

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Opinion Evidence

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You have heard testimony from persons who, because of education or experience, are
permitted to state opinions and the reasons for their opinions.

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Opinion testimony should be judged just like any other testimony. You may accept it
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or reject it, and give it as much weight as you think it deserves, considering the witness’s
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education and experience, the reasons given for the opinion, and all the other evidence in the
case.

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SOURCE: 9th Cir. Model Instr. 2.13 (modified).

COURT’S JURY INSTRUCTIONS

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INSTRUCTION NO. 10

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Charts and Summaries

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Certain charts and summaries not admitted into evidence have been shown to you to
help explain the contents of books, records, documents, or other evidence in the case. Other

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charts and summaries have been received into evidence to illustrate information brought out in
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the trial. Charts and summaries are only as good as the underlying evidence that supports
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them. You should, therefore, give them only such weight as you think the underlying
evidence deserves.

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SOURCE: 9th Cir. Model Instr. 2.14 & 2.15 (modified).

COURT’S JURY INSTRUCTIONS

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INSTRUCTION NO. 11

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Notes

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Whether or not you took notes during the trial, you should rely on your own memory of
the evidence. Notes are only to assist your memory. You should not be overly influenced by

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your notes or those of other jurors.
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SOURCE: 9th Cir. Model Instr. 1.18 (modified).

COURT’S JURY INSTRUCTIONS

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INSTRUCTION NO. 12

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Fair Treatment

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Under the law, a business entity is considered to be a person, but it can act only through
its employees, agents, directors, officers, members, and/or managers. A business entity is

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responsible for the acts of its employees, agents, directors, officers, and managers, provided
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that such acts are performed within the scope of authority. Plaintiff Ironburg Inventions Ltd.
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(“Ironburg”) is United Kingdom limited company, and defendant Valve Corporation (“Valve”)
is a Washington corporation. The fact that these parties are business entities, organized under

11 United Kingdom or Washington law, should not affect your decision. All parties are equal
12 before the law, and these business entities are entitled to the same fair and conscientious
13 consideration by you as any other party.
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Source: 9th Cir. Model Instr. 4.1 & 4.2 (modified).

COURT’S JURY INSTRUCTIONS

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INSTRUCTION NO. 13

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Patents

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This case involves a dispute relating to a United States patent. Before summarizing the
positions of the parties and the legal issues involved in the dispute, let me take a moment to

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explain what a patent is and how one is obtained.
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Patents are granted by the United States Patent and Trademark Office (sometimes called
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“the PTO”). A valid United States patent gives the patent holder the right to prevent others
from making, using, offering to sell, or selling the patented invention within the United States,

11 without the patent holder’s permission, during the term of the patent, which is usually 17 years
12 from the date when the patent issued. A violation of the patent holder’s rights is called
13 infringement. The patent holder may try to enforce a patent against persons believed to be
14 infringers by means of a lawsuit filed in federal court.
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To obtain a patent one must file an application with the PTO. The process of obtaining

16 a patent is called patent prosecution. The PTO is an agency of the federal government and
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employs trained patent examiners who review applications for patents. The application
includes what is called a “specification,” which must contain a written description of the

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claimed invention telling what the invention is, how it works, how to make it, and how to use
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it, so others skilled in the field will know how to make or use it. The specification concludes
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with one or more numbered sentences. These are the patent “claims.” When the patent is

COURT’S JURY INSTRUCTIONS

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INSTRUCTION NO. 13 (page 2)

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03 eventually granted by the PTO, the claims define the boundaries of its protection and give
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notice to the public of those boundaries.
After the applicant files the application, a PTO patent examiner reviews the patent

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application to determine whether the claims are patentable and whether the specification
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adequately describes the invention claimed. In examining a patent application, the patent
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examiner reviews information about the state of the technology at the time the application was
filed. As part of that effort, the patent examiner searches for and reviews information that is

11 publicly available, submitted by the applicant, or both. That information is called “prior art.”
12 Prior art is defined by law, and includes things that existed before the claimed invention, that
13 were publicly known, or used in a publicly accessible way in this country, or that were
14 patented or described in a publication in any country. The patent examiner considers, among
15 other things, whether each claim of the patent defines an invention that is new, useful, and not
16 obvious in view of the prior art. A patent lists the prior art that the examiner considered; this
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list is called the “cited references.”
After the prior art search and examination of the application, the patent examiner then

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informs the applicant in writing what the examiner has found and whether any claim is
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patentable, and thus will be “allowed.” This writing from the patent examiner is called an
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“office action.” If the examiner rejects the claims, the applicant has an opportunity to respond
and sometimes changes the claims or submits new claims. This process, which takes

COURT’S JURY INSTRUCTIONS

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INSTRUCTION NO. 13 (page 3)

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03 place only between the examiner and the patent applicant, may go back and forth for some
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time until the examiner is satisfied that the application and claims meet the requirements for a
patent. Sometimes, patents are issued after appeals with the PTO or to a court. The papers

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generated during this time of communicating back and forth between the patent examiner and
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the applicant make up what is called the “prosecution history.” All of this material becomes
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available to the public no later than the date when the patent issues.

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SOURCE: N.D. Cal. Model Instr. A1 (modified); Fed. Cir. Bar Ass’n Model Instr. A.1.

COURT’S JURY INSTRUCTIONS

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INSTRUCTION NO. 14

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Patent Claims

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A patent claim sets forth, in words, a set of requirements. If a device satisfies each of

05 these requirements, then it is covered by the patent claim, or put another way, the patent claim
06 “reads on” the device.
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A patent may have several claims, each of which will fall into one of two categories:
independent claims and dependent claims. An independent claim sets forth all of the
requirements that must be met for a device to be covered by that claim. A dependent claim

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refers to another claim (which might be an independent or a dependent claim), and it
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incorporates the requirements of that other claim while also reciting one or more additional
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requirements. A dependent claim “reads on” a device if all of the requirements of the
dependent claim and the claim on which it depends are met.
The requirements of a patent claim are also referred to as limitations or elements.

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SOURCE: Fed. Cir. Bar Ass’n Model Instr. 2.2 & 2.2a.

COURT’S JURY INSTRUCTIONS

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INSTRUCTION NO. 15

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Summary of Contentions

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This case involves United States Patent No. 8,641,525. For convenience, the Court
will refer to this patent by the last three digits, or as “the ’525 Patent.” The ’525 Patent, titled

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“Controller for Video Game Console,” was obtained by Duncan Ironmonger and Simon
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Burgess on February 4, 2014, and was transferred by them to plaintiff Ironburg Inventions Ltd.
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The Claims of the ’525 Patent at issue in this case are Claims 2, 4, 7, 9, 10, 11, and 18. The
Court will refer to these Claims of the ’525 Patent as the “Asserted Claims.” The validity of

11 the Asserted Claims is not at issue in this trial and should not be considered by you.
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Plaintiff Ironburg Inventions Ltd. asserts the following cause of action, on which it

13 bears the burden of proof by a preponderance of the evidence: That defendant Valve
14 Corporation has infringed one or more of the Asserted Claims of the ’525 Patent. The product
15 that is alleged to infringe one or more of the Asserted Claims of the ’525 Patent is defendant’s
16 video-game controller known as the “Steam Controller.” Plaintiff further alleges that
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defendant’s infringement of the Asserted Claims of the ’525 Patent was willful.
Defendant denies that it infringed the Asserted Claims of the ’525 Patent, willfully or

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otherwise, and, further, denies the nature and extent of plaintiff’s claimed damages.
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The foregoing is merely a summary of the parties’ contentions. You are not to take the
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same as proof of a contention unless admitted by the opposing party, and you are to consider

COURT’S JURY INSTRUCTIONS

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INSTRUCTION NO. 15 (page 2)

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03 only those matters that are admitted or established by the evidence. These contentions have
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been outlined solely to aid you in understanding the issues.
Plaintiff is asserting that defendant infringed more than one Claim of the ’525 Patent,

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and you must decide as to each Asserted Claim of the ’525 Patent whether plaintiff has proven
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infringement. The fact that plaintiff has proven infringement as to one Claim of the ’525
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Patent does not mean that plaintiff has proven infringement of a different Claim of the ’525
Patent. Similarly, the fact that plaintiff has not proven infringement as to one Claim of the

11 ’525 Patent does not prevent plaintiff from proving infringement on a different Claim of the
12 ’525 Patent, except as otherwise indicated in these instructions.
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SOURCE: 9th Cir. Model Instr. 1.5 & 1.8 (modified); see N.D. Cal. Model Instr. A.3 &
B.1; Fed. Cir. Bar Ass’n Model Instr. A.2 & A.4.
COURT’S JURY INSTRUCTIONS

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INSTRUCTION NO. 16

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Patent Infringement

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Infringement occurs when, without the patent holder’s permission, a product meeting all
of the requirements of a patent claim is made, used, sold, or offered for sale in the United

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States. To establish patent infringement in this case, plaintiff must prove by a preponderance
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of the evidence that defendant’s product meets all of the requirements of one or more of the
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Asserted Claims of the ’525 Patent, namely Claims 2, 4, 7, 9, 10, 11, and/or 18, with all of you
agreeing on which Claim or Claims.
If you find from your consideration of all of the evidence that plaintiff has not satisfied

12 this burden as to any Asserted Claim, then your verdict should be for defendant as to such
13 Asserted Claim or Claims. On the other hand, if you find that plaintiff has satisfied this
14 burden as to one or more of the Asserted Claims of the ’525 Patent, then your verdict should be
15 for plaintiff as to such Asserted Claim or Claims.
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To determine whether any Asserted Claim “reads on” defendant’s product, you must
first interpret such Asserted Claim, as further explained in Instruction No. 16A. You must
then decide, separately for each asserted Claim of the ’525 Patent, whether defendant’s product

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meets all of the requirements of the Asserted Claim. This rule is subject to one exception
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relating to dependent patent claims. Claims 2, 4, 7, 9, 10, 11, and 18 depend from Claim 1 of
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the ’525 Patent. If you find from your consideration of all of the evidence that defendant’s

COURT’S JURY INSTRUCTIONS

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INSTRUCTION NO. 16 (page 2)

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03 product does not meet all of the requirements of Claim 1, then your verdict must be for
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defendant as to all of the Asserted Claims of the ’525 Patent.
Claim 4 depends on Claim 2, and if you find that defendant’s product does not meet all

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of the requirements of Claim 2, then your verdict must be for defendant as to both Claim 2 and
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Claim 4 of the ’525 Patent.
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You have heard evidence about both defendant’s accused product and the product of
plaintiff’s affiliate Scuf Gaming. In deciding the issue of infringement, you may not compare

11 defendant’s product to Scuf Gaming’s product; rather, you must compare defendant’s product
12 to the Asserted Claims of the ’525 Patent.
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To establish patent infringement, plaintiff need not prove that defendant knew about the

14 ’525 Patent or was aware that its product infringed the ’525 Patent.
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SOURCE: Fed. Cir. Bar Ass’n Model Instr. A.4 & 3.1a (modified); see also N.D. Cal.
19 Model Instr. 3.2 & 3.3; Am. Intellectual Prop. Law Ass’n Model Instr. 3.2.
20 NOTE: The Court has omitted from this instruction the following elements of an

infringement claim, which appear to be undisputed: (1) defendant (a) made, (b) used,
21 (c) sold, and/or (d) offered for sale within the United States its “Steam Controller” device

(with all jurors agreeing on (a), (b), (c), and/or (d)); and (2) any features of the “Steam

22 Controller” covered by the ’525 Patent were incorporated in the device without plaintiff’s

permission.

COURT’S JURY INSTRUCTIONS

01

INSTRUCTION NO. 16A

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Interpretation of Patent Claims

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The words of a patent claim are generally assigned their ordinary and customary
meaning.

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In patent law, however, the word “comprising” is a term of art. By using the term
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“comprising,” rather than “consisting of,” Claim 1 and its dependent Claims define “open”
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patent claims, which means that the Claim is infringed as long as every requirement in the
Claim is present in defendant’s product. The fact that defendant’s product also includes other

11 parts will not avoid infringement, as long as defendant’s product has every requirement in the
12 Claim.
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The ’525 Patent contains certain directional words, including “top,” “bottom,” “front,”

14 “back,” “end,” “side,” “inner,” “outer,” “upper,” and “lower.” These terms do not limit the
15 respective features to a particular orientation, but merely serve to distinguish the features from
16 one another. For example, the “front” is opposite the “back,” and the “top” is opposite the
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“bottom.”
Two phrases that appear in Claim 1 of the ’525 Patent have been interpreted by the

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Court. You must accept these interpretations as correct. The phrase “substantially the full
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distance between the top edge and the bottom edge” means largely but not necessarily the
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entire distance between the top and bottom edges. The phrase “inherently resilient and
flexible,” which modifies “elongate member,” means that the member may be bent or flexed

COURT’S JURY INSTRUCTIONS

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INSTRUCTION NO. 16A (page 2)

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03 by a load, for example, the force exerted by a user’s finger, and will then return to the unloaded
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position.
The Court has also interpreted the preamble language of a patent claim is ordinarily

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interpreted as merely stating a purpose or intended use for the invention and does not usually
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state a limitation that must be found in an accused device to find infringement. This rule does
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not apply when the patent holder has indicated in a prior proceeding that the preamble or a
portion of the preamble is limiting. The preamble of the Claim 1 of the ’525 Patent, which

11 reads: “A hand held controller for a game console comprising . . . .” You must accept the
12 Court’s interpretation as correct. In a prior proceeding, plaintiff indicated that the following
13 portion of the preamble is limiting: The term “hand held controller.” is a limitation set forth
14 in Claim 1 and requires

Plaintiff further indicated that this portion of the preamble requires

15 that the controller “be held by a user in one or both hands.” In contrast, the phrase “for a
16 game console,” which also appears in the preamble, is not limiting, and you are to ignore this
17
18

intended statement of purpose or intended use in determining whether defendant’s product
infringes the asserted Claim or Claims of the ’525 Patent.

19

You should not infer from the above interpretations that the Court has any particular
20

view regarding how you should decide the issues before you. Those matters are solely for
21
22

your determination.
SOURCE: N.D. Cal. Model Instr. 3.3 (modified); Fed. Cir. Bar Ass’n Model Instr. 2.3;
see Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); see also Bio-Rad Labs., Inc. v.
COURT’S JURY INSTRUCTIONS

01 10X Genomics Inc., 967 F.3d 1353 (Fed. Cir. 2020); Shoes by Firebug LLC v. Stride Rite

Children’s Group, LLC, 962 F.3d 1362 (Fed. Cir. 2020); Aylus Networks, Inc. v. Apple Inc.,
02 856 F.3d 1353 (Fed. Cir. 2017); Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289

F.3d 801 (Fed. Cir. 2002); Valve Corp. v. Ironburg Inventions Ltd., PTAB Final Dec. in

03 IPR2016-948 (docket no. 262-11); Valve Corp. v. Ironburg Inventions Ltd., PTAB Dec.
04

Instituting IPR2016-948 (docket no. 262-5); Minute Order (docket no. 153); Pla.’s IPR
Resp., Ex. 1 to Schafer Decl. (docket no. 331-1).

05

Both sides have objected to the Court’s proposed instruction concerning the preamble of
06 Claim 1 of the ’525 Patent. Plaintiff argues that the preamble should have no limiting
effect. In contrast, defendant contends that the preamble should be construed as
07 requiring that a controller (i) “be held by a user in both hands,” and (ii) “physically
communicates with a game console and controls video output associated with a
08 videogame.” Jt. Stmt. of Objections at 27 & 36 (docket no. 374). The Court’s tentative
rulings are as follows.
09
10
11
12
13
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16
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Whether a preamble is limiting must be determined “on the facts of each case in
light of the overall form of the claim, and the invention as described in the specification
and illuminated in the prosecution history.” Bio-Rad, 967 F.3d at 1369. If a patent
claim uses the preamble only to state a purpose or intended use for the invention, then
the preamble is not limiting. Id. If, however, the preamble provides the antecedent
basis for an element of the claim, it might be limiting. Id.; see also Shoes by Firebug, 962
F.3d at 1367 (“‘No litmus test defines when a preamble limits claim scope,’ but
‘dependence on a particular disputed preamble phrase for antecedent basis may limit
claim scope because it indicates a reliance on both the preamble and claim body to define
the claimed invention.’” (citations omitted)). As explained by one set of commentators,
to avoid ambiguity, an antecedent basis must be provided for each element recited in a
patent claim, usually by introducing each element with an indefinite article (“a” or “an”),
for example, a filament or an electrode. John Gladstone Mills III, et al., PATENT LAW
BASICS § 14:12 (2020). Subsequent mention of the element can then be preceded by the
definite article (“the”) or by “said” or “such,” for example, the filament or said electrode.
See id.

The preamble in Claim 1 of the ’525 Patent provides the antecedent basis for the
term “controller.” In the preamble, “controller” is modified by the phrase “hand held”
20 and appears with an indefinite article. In the body of Claim 1, however, “controller” is
not reintroduced, but is instead preceded by the definite article on each of five different
21 occasions. Thus, the preamble defines the scope of Claim 1, which describes a “hand
hand controller.” See Shoes by Firebug, 962 F.3d at 1367-68 (distinguishing between two
22 patents, one that reintroduced “a footwear” within the body of the claim, and another
that relied on “[a]n internally illuminated textile footwear” in the preamble for
antecedent basis). In addition to being supported by recent decisions of the Federal
19

COURT’S JURY INSTRUCTIONS

01 Circuit, the conclusion that the preamble of Claim 1 requires the controller be held by a

user in one or both hands is consistent with the positions taken by plaintiff before the
02 Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office, as
03

well as the decisions of the PTAB.

In contrast, the phrase “for a game console” does not serve as the antecedent basis
for any element of Claim 1 of the ’525 Patent and merely identifies the intended use for
05 the “hand hand controller.” Defendant’s suggestion that the preamble requires the
controller to be in physical communication with a game console and control the video
06 output associated with a videogame attempts to improperly import limitations into the
patent claim, and it is unsupported by the authorities defendant has cited.
04

07
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COURT’S JURY INSTRUCTIONS

01

INSTRUCTION NO. 17

02

Willful Infringement

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04
05

If you find that defendant infringed one or more of the Asserted Claims of the ’525
Patent, then you must also determine whether or not defendant’s infringement was willful. To

06

establish willful infringement, plaintiff must prove by a preponderance of the evidence that
07

defendant intentionally ignored or recklessly disregarded the infringed Claim or Claims.
08
09
10

You must base your decision concerning willfulness on defendant’s knowledge and
actions at the time of any infringement. Evidence that defendant knew about the ’525 Patent

11 is not itself sufficient to show willfulness; rather, to conclude that defendant acted willfully,
12 you must find that defendant engaged in additional conduct manifesting deliberate or reckless
13 disregard of plaintiff’s patent rights.
14

In determining whether any infringement was willful, you should consider all of the

15 facts surrounding the infringement, including (i) whether defendant intentionally copied
16 plaintiff’s patented technology in developing the accused product, (ii) whether defendant knew
17
18

or should have known that its conduct involved an unreasonable risk of infringement, and/or
(iii) whether defendant had a reasonable belief at the time of any infringement that its product

19

did not infringe the Asserted Claims of the ’525 Patent.
20
21
22

SOURCE: N.D. Cal. Model Instr. 3.8.
COURT’S JURY INSTRUCTIONS

01

INSTRUCTION NO. 18

02

Measure of Damages

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04
05

It is the duty of the Court to instruct you as to the measure of damages. By instructing
you on damages, the Court does not mean to suggest for which party your verdict should be

06

rendered. It is for you to determine, based upon the evidence, what damages, if any, have
07

been proved. Your award of damages, if any, must be based upon evidence and not upon
08
09
10

speculation, guess, or conjecture.
If you find that defendant’s product infringed one or more of the Asserted Claims of the

11 ’525 Patent, you must determine plaintiff’s damages relating to that Claim or Claims. You
12 may not allow your decision concerning whether any infringement was or was not willful to
13 affect the amount of any damages you award to plaintiff. If you find that any infringement
14 was willful, the Court will take your decision into account later.
15

Damages are the amount of money that will reasonably and fairly compensate plaintiff

16 for any injury that you find was caused by defendant; damages are not intended to punish
17
18

defendant for any infringement.
Plaintiff has the burden of proving the amount of its damages by a preponderance of the

19

evidence. Plaintiff is not required to prove the amount of its damages with mathematical
20

precision, but it must prove the amount with reasonable certainty. An award of damages
21
22

should put plaintiff in approximately the financial position it would have occupied if the
alleged infringement had not occurred, and it must not be less than a reasonable royalty.

COURT’S JURY INSTRUCTIONS

01 SOURCE: 9th Cir. Model Instr. 5.1 (modified); N.D. Cal. Model Instr. 5.1 (modified);

see Am. Intellectual Prop. Law Ass’n Model Instr. 10.0 & 11.0; see also Fed. Cir. Bar
02 Ass’n Model Instr. A.2 & B.1.
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COURT’S JURY INSTRUCTIONS

01

INSTRUCTION NO. 18A

02

Reasonable Royalty

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04
05

A royalty is a payment made to a patent holder in exchange for the right to make, use, or
sell the claimed invention. This right is called a “license.” In the context of an infringement

06

action, a reasonable royalty is the payment for the license that would have resulted from a
07

hypothetical negotiation between plaintiff and defendant, if such negotiation had occurred at
08
09
10

the time when the infringing activity first began. In ascertaining the amount of a reasonable
royalty upon which the parties would have agreed in a considering the nature of this

11 hypothetical negotiation, you must assume that the parties would have acted reasonably and
12 would have entered into a license agreement based on mutually-held beliefs that the Claim or
13 Claims of the ’525 Patent on which plaintiff has prevailed in this litigation are valid and are
14 infringed by defendant’s product. Your role is to determine what royalty would have resulted
15 from such hypothetical negotiation, and not simply what each party might have preferred.
16
17
18

A royalty may be calculated in different ways and you must determine which way is the
most appropriate based on the evidence you have heard. A royalty might be “ongoing,”
meaning that the licensee pays, for the right to use the patented invention, either (i) a certain

19

percentage of the revenue generated by the licensed product, also known as the “royalty base,”
20

or (ii) a fixed amount per unit actually sold. For example, an “ongoing” royalty rate might be
21
22

1% or 5% of the royalty base, which might be $100, resulting in a royalty of $1 or $5,
respectively, or an “ongoing” royalty rate might be $1 or $5 per unit, netting a royalty of $100

COURT’S JURY INSTRUCTIONS

01

INSTRUCTION NO. 18A (page 2)

02
03 or $500, respectively, if 100 units are sold. These numbers are only illustrative and are not
04
05

intended to suggest the appropriate royalty rate.
A royalty might instead be a “lump sum,” meaning that the licensee pays one time for a

06

license to cover all sales of licensed products. The licensee pays this single price regardless of
07

whether it sells any products or generates any revenue. When a “lump sum” royalty is
08
09
10

awarded, the accused infringer pays a flat rate for the hypothetical license, which covers any
and all past and future infringing sales. Which type of royalty is appropriate in this case for

11 the life of the patent is entirely up to you to decide, based on the evidence.
12

Plaintiff has the burden of demonstrating the value that any infringing features of

13 defendant’s product add to the desirability of the product as a whole and of apportioning the
14 value of the patented contributions from the value of other features of defendant’s product.
15 [[In this case, you have heard evidence of licenses between plaintiff and other entities.
16 You may consider the royalty rates in those licenses if doing so helps you to determine the
17
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value attributable to the asserted Claim or Claims of the ’525 Patent, as distinct from the
value of other features of defendant’s product.]] Any royalty that you award must reflect

19

the value attributable to the infringing features of defendant’s product, and nothing more.
20

In determining the amount of a reasonable royalty that would have resulted from a
21
22

hypothetical negotiation, you should consider all of the facts known and available to the parties

COURT’S JURY INSTRUCTIONS

01

INSTRUCTION NO. 18A (page 3)

02
03 at the time when the infringing activity first began, including the following factors:
04

(1)

The royalties received by plaintiff for licensing the ’525 Patent;

(2)

The royalty rates paid by other entitiesdefendant for licensing patents
comparable to the ’525 patent;

(3)

The nature and scope of the license or licenses referenced in factors (1)
and (2), for example, whether they are as exclusive or nonexclusive, and
whether they are or as restricted or non-restricted in terms of territory or
with respect to whom the manufactured product may be sold;

(4)

Any policy and/or marketing program established by plaintiff to maintain
its patent monopoly, for example, 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 plaintiff and any licensees and/or
defendant, for example, whether they are competitors in the same territory
and/or in the same line of business, or whether they are inventor and
promoter;

(6)

Whether products with features covered by the ’525 Patent are sold along
with other products (“convoyed sales”) or generate sales of other products
(“derivative sales”) of either plaintiff, or any of its licensees, and/or
defendant, and the extent of such convoyed or derivative sales;

17

(7)

The duration of the ’525 Patent and the term of any licenses;

18

(8)

The established profitability of any product made under the ’525 Patent,
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 plaintiff, and the benefits
to those who have used the invention;

05
06
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16

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COURT’S JURY INSTRUCTIONS

01

INSTRUCTION NO. 18A (page 4)

02
03
04

(11)

The extent to which defendant has made use of the patented invention and
any evidence probative of the value of that use;

(12)

The portion of the profit or of the selling price that might be customary in
the particular business or in a comparable business to allow for the use of
the invention or analogous inventions;

(13)

The portion of the realizable profits that should be credited to the
invention as distinguished from non-patented elements, the manufacturing
process, business risks, or significant features or improvements added by
the infringerdefendant; and

(14)

The opinion and testimony of qualified experts.

05
06
07
08
09

10 No one factor is dispositive. You may also consider any other factor that in your mind would
11 have increased or decreased the royalty the alleged infringer would have been willing to pay
12 and the patent holder would have been willing to accept, acting as normally prudent business
13 people in a hypothetical negotiation.
14

SOURCE: N.D. Cal. Model Instr. 5.7 (modified); see Am. Intellectual Prop. Law Ass’n
Model Instr. 10.2.5.2 & 10.2.5.3; Fed. Cir. Bar Ass’n Model Instr. 6.6 & 6.7; see also Ga.Pac. Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970).
16
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NOTE: The Court previously indicated an intentds to omit the stricken language in
green. The Court will instead leave the language in green in the instruction, but and
reserves ruling on whether these words, as well as which, if any, of other the “GeorgiaPacific” factors, are relevant in light of the evidence presented to the jury. See Ericsson,
Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1230-32 (Fed. Cir. 2014). With respect to the
double-bracketed text in blue, plaintiff has taken inconsistent positions, proposing in one
document to omit it, see Ex. B to Jt. Stmt. of Objections (docket no. 374-2 at 3), but
including it in another version of this instruction, see Ex. A to Jt. Stmt. of Objections
(docket no. 374-1 at 4:14-17). Defendant has indicated no objection to substantially
similar language. See Ex. C to Jt. Stmt. of Objections (docket no. 374-3 at 12-15). With
respect to Factor 6, the Court has attempted to incorporate the substance of the parties’
proposed language, while not introducing an undefined term (“patented specialty”) or
unexplained concepts (“convoyed or derivative sales”).
COURT’S JURY INSTRUCTIONS

01

INSTRUCTION NO. 18B

02

Date of Commencement

03
04

Any damages that you award to plaintiff should be calculated to begin on the date that

05 you determine the infringing activity began and to end on ____________________________.
06
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SOURCE: N.D. Cal. Model Instr. 5.9 (modified); Fed. Cir. Bar Ass’n Model Instr. 6.8.

21

NOTE: Based on the parties’ Admitted Facts 1, 2, 6, and 7, indicating that the ’525
22 Patent issued in February 2014, and plaintiff sent defendant notice of the ’525 Patent in
March 2014, before defendant began selling its “Steam Controller” product in 2015, the
date of notice is not relevant.

COURT’S JURY INSTRUCTIONS

01

INSTRUCTION NO. 19

02

Deliberation

03
04
05

Before you begin your deliberations, elect one member of the jury as your presiding
juror. The presiding juror will preside over the deliberations and serve as the spokesperson

06

for the jury in court. It is the presiding juror’s duty to see that discussion is carried on in a
07

sensible and orderly fashion, the issues submitted for your decision are fully and fairly
08
09
10

discussed, and that every juror has a chance to express himself or herself and participate in the
deliberations upon each question before the jury. Deliberations are to occur only in the jury

11 room and only when all jurors are present.
12

You will be furnished with all of the exhibits admitted into evidence, these instructions,

13 and a suitable form of verdict. Your verdict must be based solely on the evidence and on the
14 law as I have given it to you in these instructions.
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22

SOURCE: 9th Cir. Model Instr. 3.1 & 3.2 (modified); WPI 1.08 (modified).

COURT’S JURY INSTRUCTIONS

01

INSTRUCTION NO. 20

02

Reaching Agreement

03
04
05

You shall diligently strive to reach agreement with all of the other jurors if you can do
so. Your verdict must be unanimous.

06

Each of you must decide the case for yourself, but you should do so only after you have
07

considered all of the evidence, discussed it fully with the other jurors, and listened to their
08
09
10

views.
It is important that you attempt to reach a unanimous verdict but, of course, only if each

11 of you can do so after having made your own conscientious decision. Do not be unwilling to
12 change your opinion if the discussion persuades you that you should. But do not come to a
13 decision simply because other jurors think it is right, or change an honest belief about the
14 weight and effect of the evidence simply to reach a verdict.
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SOURCE: 9th Cir. Model Instr. 3.1.

COURT’S JURY INSTRUCTIONS

01

INSTRUCTION NO. 21

02

Communication with Court

03
04
05

If it becomes necessary during your deliberations to communicate with me, you may
send a note through the clerk, signed by your presiding juror or by one or more members of the

06

jury. No member of the jury should ever attempt to communicate with me except by a signed
07

writing. I will communicate with any member of the jury on anything concerning the case
08
09
10

only in writing, or orally here in open court. Remember that you are not to tell anyone -including me -- how the jury stands, numerically or otherwise, until after you have reached a

11 unanimous verdict or have been discharged.
12

If you send a note to me, there will be some delay in my response because I will discuss

13 the note with the lawyers before preparing a response. You may continue your deliberations
14 while waiting for the answer to any question.
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22

SOURCE: 9th Cir. Model Instr. 3.3 (modified).

COURT’S JURY INSTRUCTIONS

01

INSTRUCTION NO. 22

02

Verdict

03
04
05

After you have reached unanimous agreement on a verdict, your presiding juror should
complete the verdict form in a manner that expresses the results of your deliberations, date and

06

sign the verdict form, and announce your agreement to the clerk, who will conduct you into the
07

courtroom to declare your verdict.
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SOURCE: 9th Cir. Model Instr. 3.5 (modified).

COURT’S JURY INSTRUCTIONS