Appendix D - Model Jury Instructions

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Appendix D - Model Jury Instructions Model Patent Jury Instructions for the Northern District of California (Nov. 3, 2011) Federal Circuit Bar Association Model Patent Jury Instructions (February 2012)

Model Patent Jury Instructionsfor the Northern District of CaliforniaNovember 3, 2011Working CommitteeMartin Fliesler – ChairProfessor Mark LemleyKathi LuttonDavid McIntyreMatthew PowersHonorable Ronald WhyteJames Yoon

I. IntroductionThese Revised Model Patent Jury Instructions have been adopted by the Northern District ofCalifornia as model patent instructions. The court intends to revise these instructions as neededto make them more complete and to ensure compliance with U.S. Supreme Court and FederalCircuit decisions. The court is indebted to the Working Committee which spent many hoursdrafting these model instructions.The instructions have been prepared to assist judges in communicating effectively and in plainEnglish with jurors in patent cases. The instructions are models and are not intended to be usedwithout tailoring. They are not substitutes for the individual research and drafting that may berequired in a particular case.These instructions include only instructions on patent law. They will need to be supplementedwith standard instructions on, among other things, the duties of the judge and jury, theconsideration of evidence, the duty to deliberate, and the return of a verdict. The Ninth Circuit’sManual of Model Civil Jury Instructions (Revised April 2007) is a good reference for standardinstructions for civil cases.The instructions use the terms “patent holder” and “alleged infringer” in brackets. The names ofthe parties should be substituted for these terms as appropriate. Other language is bracketed as itmay not be appropriate for a particular case. Empty brackets signify additional case specificinformation to be added, such as patent or claim numbers.Suggested revisions to these instructions may be sent to the Honorable Ronald M. Whyte at thee-mail address: Ronald [email protected] or at his U.S. mail address: U.S. CourtBuilding, 280 S. First Street, San Jose, California 95113.iNovember 3, 2011

II. Table of ContentsA.B.Preliminary Instructions1.What a Patent Is and How One is Obtained2.Patent At Issue3.Summary of Contentions4.Overview of Applicable Law5.Outline of TrialInstructions at Close of Evidence1.Summary of Contentions2.Claim Construction2.1Interpretation of Claims3.Infringement3.1Infringement – Burden of Proof3.2Direct Infringement3.3Literal Infringement3.4Infringement Under the Doctrine of Equivalents3.5Means-Plus-Function Claims – Literal Infringement3.6Means-Plus-Function Claims – Infringement Under the Doctrine ofEquivalents3.7Limitations on the Doctrine of Equivalents3.8Contributory Infringement3.9Inducing Patent Infringement3.10 Willful Infringement4.Validity4.14.2Invalidity – Burden of ProofAdequacy of Patent Specification4.2a Written Description4.2b Enablement4.2c Best ModeiiNovember 3, 2011

4.35.C.The Claims4.3a1 Anticipation4.3a2 Statutory Bars4.3b Obviousness – (Alternative 1) – (Alternative 2)4.3c InventorshipPatent Damages5.1Damages – Burden of Proof5.2Lost Profits – Generally5.3Lost Profits – Factors to Consider5.3a Lost Profits – Market Share5.4Lost Profits – Collateral Sales5.5Lost Profits – Price Erosion5.6Reasonable Royalty – Entitlement5.7Reasonable Royalty – Definition5.8Date of Commencement – Products5.9Calculating Damages in Cases of Inducement or ts Regarding Use of Sample Verdict Form3.Sample Verdict FormiiiNovember 3, 2011

A.1. Preliminary InstructionsWHAT A PATENT IS AND HOW ONE IS OBTAINEDThis case involves a dispute relating to a United States patent. Before summarizing the positionsof the parties and the legal issues involved in the dispute, let me take a moment to explain what apatent is and how one is obtained.Patents are granted by the United States Patent and Trademark Office (sometimes called “thePTO”). The process of obtaining a patent is called patent prosecution. A valid United Statespatent gives the patent owner the right to prevent others from making, using, offering to sell, orselling the patented invention within the United States, or from importing it into the UnitedStates, during the term of the patent without the patent holder’s permission. A violation of thepatent owner’s rights is called infringement. The patent owner may try to enforce a patentagainst persons believed to be infringers by a lawsuit filed in federal court.To obtain a patent one must file an application with the PTO. The PTO is an agency of thefederal government and employs trained examiners who review applications for patents. Theapplication includes what is called a “specification,” which must contain a written description ofthe claimed invention telling what the invention is, how it works, how to make it and how to useit so others skilled in the field will know how to make or use it. The specification concludes withone or more numbered sentences. These are the patent “claims.” When the patent is eventuallygranted by the PTO, the claims define the boundaries of its protection and give notice to thepublic of those boundaries.After the applicant files the application, a PTO patent examiner reviews the patent application todetermine whether the claims are patentable and whether the specification adequately describesthe invention claimed. In examining a patent application, the patent examiner reviews recordsavailable to the PTO for what is referred to as “prior art.” The examiner also will review priorart if it is submitted to the PTO by the applicant. Prior art is defined by law, and I will give youat a later time specific instructions as to what constitutes prior art. However, in general, prior artincludes things that existed before the claimed invention, that were publicly known, or used in apublicly accessible way in this country, or that were patented or described in a publication in anycountry. The examiner considers, among other things, whether each claim defines an inventionthat is new, useful, and not obvious in view of the prior art. A patent lists the prior art that theexaminer considered; this list is called the “cited references.”After the prior art search and examination of the application, the patent examiner then informsthe applicant in writing what the examiner has found and whether any claim is patentable, andthus will be “allowed.” This writing from the patent examiner is called an “office action.” If theexaminer rejects the claims, the applicant then responds and sometimes changes the claims orsubmits new claims. This process, which takes place only between the examiner and the patentapplicant, may go back and forth for some time until the examiner is satisfied that the applicationand claims meet the requirements for a patent. The papers generated during this time ofcommunicating back and forth between the patent examiner and the applicant make up what iscalled the “prosecution history.” All of this material becomes available to the public no later than1November 3, 2011

the date when the patent issues.The fact that the PTO grants a patent does not necessarily mean that any invention claimed in thepatent, in fact, deserves the protection of a patent. For example, the PTO may not have hadavailable to it all the information that will be presented to you. A person accused ofinfringement has the right to argue here in federal court that a claimed invention in the patent isinvalid because it does not meet the requirements for a patent.2November 3, 2011

A.2. Preliminary InstructionsPATENT AT ISSUE[The court should show the jury the patent at issue and point out the parts including thespecification, drawings and claims including the claims at issue.]3November 3, 2011

A.3. Preliminary InstructionsSUMMARY OF CONTENTIONSTo help you follow the evidence, I will now give you a summary of the positions of the parties.The parties in this case are [patent holder] and [alleged infringer]. The case involves a UnitedStates patent obtained by [inventor], and transferred by [inventor] to [patent holder]. The patentinvolved in this case is United States Patent Number [patent number] which lists [inventor] asthe inventor. For convenience, the parties and I will often refer to this patent as the [last threenumbers of the patent] patent, [last three numbers of patent] being the last three numbers of itspatent number.[Patent holder] filed suit in this court seeking money damages from [alleged infringer] forallegedly infringing the [ ] patent by [making], [importing], [using], [selling], and [offering forsale] [products] [methods] that [patent holder] argues are covered by claims [] of the patent.[[Patent holder] also argues that [alleged infringer] has [actively induced infringement of theseclaims of the [ ] patent by others] [and] [contributed to the infringement of these claims of the[ ] patent by others].] The [products] [methods] that are alleged to infringe are [list of accusedproducts or methods].[Alleged infringer] denies that it has infringed claims [ ] of the [ ] patent and argues that, inaddition, the claims are invalid. [Add other defenses, if applicable]. Invalidity is a defense toinfringement.Your job will be to decide whether claims [] of the [] patent have been infringed andwhether those claims are invalid. If you decide that any claim of the [] patent has beeninfringed and is not invalid, you will then need to decide any money damages to be awarded to[patent holder] to compensate it for the infringement. [You will also need to make a finding asto whether the infringement was willful. If you decide that any infringement was willful, thatdecision should not affect any damage award you give. I will take willfulness into account later.]You may hear evidence that [alleged infringer] has its own patent(s) or that [alleged infringer]improved on the [ ] patent. While this evidence is relevant to some issues you will be asked todecide, a party can still infringe even if it has its own patents in the same area. You will beinstructed after trial as to what, if any, relevance these facts have to the particular issues in thiscase. Meanwhile, please keep an open mind.Before you decide whether [alleged infringer] has infringed the claim[s] of the patent or whetherthe claim[s] [is][are] invalid, you will need to understand the patent claims. As I mentioned, thepatent claims are numbered sentences at the end of the patent that describe the boundaries of thepatent’s protection. It is my job as judge to explain to you the meaning of any language in theclaim[s] that needs interpretation.[The Court may wish to hand out its claim constructions (if the claims have been construed atthis point) and the glossary at this time. If the claim constructions are handed out, the following4November 3, 2011

instruction should be read:I have already determined the meaning of certain terms of the claims of the [ ] patent. You havebeen given a document reflecting those meanings. You are to apply my definitions of these termsthroughout this case. However, my interpretation of the language of the claims should not betaken as an indication that I have a view regarding issues such as infringement and invalidity.Those issues are yours to decide. I will provide you with more detailed instructions on themeaning of the claims before you retire to deliberate your verdict.]5November 3, 2011

A.4. Preliminary InstructionsOVERVIEW OF APPLICABLE LAW[The court may want to consider giving preliminary instructions on the patent law applicable tothe specific issues in the case. This could help focus the jury on the facts relevant to the issues itwill have to decide. If this is done, the instructions intended to be given after the close ofevidence could be adapted and given as preliminary instructions. This, of course, would notnegate the need to give complete instructions at the close of evidence.]6November 3, 2011

A.5. Preliminary InstructionsOUTLINE OF TRIALThe trial will now begin. First, each side may make an opening statement. An openingstatement is not evidence. It is simply an outline to help you understand what that partyexpects the evidence will show.The presentation of evidence will then begin. Witnesses will take the witness stand and thedocuments will be offered and admitted into evidence. There are two standards of proof thatyou will apply to the evidence, depending on the issue you are deciding. On some issues, youmust decide whether something is more likely true than not. On other issues you must use ahigher standard and decide whether it is highly probable that something is true.[Patent holder] will present its evidence on its contention that [some] [the] claims of the [ ]patent have been [and continue to be] infringed by [alleged infringer] [and that theinfringement has been [and continues to be] willful.] These witnesses will be questioned by[Patent holder]’s counsel in what is called direct examination. After the direct examination ofa witness is completed, the opposing side has an opportunity to cross-examine the witness. Toprove infringement of any claim, [patent holder] must persuade you that it is more likely thannot that [alleged infringer] has infringed that claim. [To persuade you that any infringementwas willful, [patent holder] must prove that it is highly probable that the infringement waswillful.]After [Patent holder] has presented its witnesses, [alleged infringer] will call its witnesses, whowill also be examined and cross-examined. [Alleged infringer] will present its evidence that theclaims of the [ ] patent are invalid. To prove invalidity of any claim, [alleged infringer] mustpersuade you that it is highly probable that the claim is invalid. In addition to presenting itsevidence of invalidity, [alleged infringer] will put on evidence responding to [patent holder]’sinfringement [and willfulness] contention