Model Patent Jury Instructions

for the Northern District of California

October 9, 2007

###### 

###### Working Committee

Martin Fliesler -- Chair

##### Professor Mark Lemley

##### David McIntyre

James Pooley

Matthew Powers

##### Honorable Ronald Whyte

James Yoon

#### I. Introduction

These Revised Model Patent Jury Instructions have been adopted by the
Northern District of California as model patent instructions. The court
intends to revise these instructions as needed to make them more
complete and to ensure compliance with U.S. Supreme Court and Federal
Circuit decisions. The court is indebted to the Working Committee which
spent many hours drafting these model instructions.

The instructions have been prepared to assist judges in communicating
effectively and in plain English with jurors in patent cases. The
instructions are models and are not intended to be used without
tailoring. They are not substitutes for the individual research and
drafting that may be required in a particular case.

These instructions include only instructions on patent law. They will
need to be supplemented with standard instructions on, among other
things, the duties of the judge and jury, the consideration of evidence,
the duty to deliberate, and the return of a verdict. The Ninth Circuit's
Manual of Model Civil Jury Instructions (Revised April 2007) is a good
reference for standard instructions for civil cases.

The instructions use the terms "patent holder" and "alleged infringer"
in brackets. The names of the parties should be substituted for these
terms as appropriate. Other language is bracketed as it may not be
appropriate for a particular case. Empty brackets signify additional
case specific information to be added, such as patent or claim numbers.

Suggested revisions to these instructions may be sent to the Honorable
Ronald M. Whyte at the e-mail address: Ronald_Whyte@cand.uscourts.gov or
at his U.S. mail address: U.S. Court Building, 280 S. First Street, San
Jose, California 95113.

**II. Table of Contents**

A.  Preliminary Instructions

    1.  What a Patent Is and How One is Obtained

    2.  Patent At Issue

    3.  Summary of Contentions

    4.  Overview of Applicable Law

    5.  Outline of Trial

B.  Instructions at Close of Evidence

    1.  Summary of Contentions

    2.  Claim Construction

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    1.  Interpretation of Claims

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    3.  Infringement

3.1 Infringement -- Burden of Proof

3.2 Direct Infringement

3.  Literal Infringement

3.4 Infringement Under the Doctrine of Equivalents

3.5 Means-Plus-Function Claims -- Literal Infringement

3.6 Means-Plus-Function Claims -- Infringement Under the Doctrine of
Equivalents

3.7 Limitations on the Doctrine of Equivalents

3.8 Indirect Infringement -- Generally

3.9 Contributory Infringement

3.10 Inducing Patent Infringement

11. Willful Infringement

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4.  Validity

    4.1 Invalidity -- Burden of Proof

4.2 Adequacy of Patent Specification

4.2a Written Description

4.2b Enablement

4.2c Best Mode

4.3 The Claims

4.3a1 Anticipation

4.3a2 Statutory Bars

4.3b Obviousness -- (Alternative 1) -- (Alternative 2)

4.3bi Scope and Content of Prior Art

4.3bii Differences Over the Prior Art

4.3biii Level of Ordinary Skill

> 4.3c Inventorship

5.  Patent Damages

5.1 Damages -- Burden of Proof

5.2 Lost Profits -- Generally

5.3 Lost Profits -- Factors to Consider

5.3a Lost Profits -- Market Share

5.4 Lost Profits -- Collateral Sales

5.5 Lost Profits -- Price Erosion

5.6 Reasonable Royalty -- Entitlement

7.  Reasonable Royalty -- Definition

8.  Date of Commencement -- Products

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C.  Appendix

    1.  Glossary

    2.  Comments Regarding Use of Sample Verdict Form

    3.  Sample Verdict Form

*A.1. Preliminary Instructions*

**WHAT A PATENT IS AND HOW ONE IS OBTAINED**

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 explain what a patent is and how
one is obtained.

Patents are granted by the United States Patent and Trademark Office
(sometimes called "the PTO"). The process of obtaining a patent is
called patent prosecution. A valid United States patent gives the patent
owner the right \[for up to 20 years from the date the patent
application was filed\] \[for 17 years from the date the patent issued\]
to prevent others from making, using, offering to sell, or selling the
patented invention within the United States or from importing it into
the United States without the patent holder'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.

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. The application includes what is called
a "specification," which must contain a written description of the
claimed invention telling what the invention is, how it works, how to
make it and how to use it so others skilled in the 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.

After the applicant files the application, a PTO patent examiner reviews
the patent application to determine whether the claims are patentable
and whether the specification adequately describes the invention
claimed. In examining a patent application, the patent examiner reviews
records available to the PTO for what is referred to as "prior art." The
examiner also will review prior art if it is submitted to the PTO by the
applicant. 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 things that existed before the claimed
invention, that were publicly known, or used in a publicly accessible
way in this country, or that were patented or described in a publication
in any country. The examiner considers, among other things, whether each
claim defines an invention that is new, useful, and not obvious in view
of the prior art. 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
patent examiner then informs the applicant in writing what the examiner
has found and whether any claim is patentable, and thus will be
"allowed." This writing from the patent examiner is called an "office
action." If the examiner rejects the claims, the applicant then responds
and sometimes changes the claims or submits new 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 and claims meet the requirements for a patent. The
papers generated during this time of communicating back and forth
between the patent examiner and the applicant make up what is called the
"prosecution history." All of this material becomes available to the
public no later than the date when the patent issues.

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 the
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 patent is invalid because it does not meet the
requirements for a patent.

*A.2. Preliminary Instructions*

**PATENT AT ISSUE**

\[The court should show the jury the patent at issue and point out the
parts including the specification, drawings and claims including the
claims at issue. The court could at this point also hand out its
construction of any claim terms and the glossary.\]

*A.3. Preliminary Instructions*

**SUMMARY OF CONTENTIONS**

To help you follow the evidence, I will now give you a summary of the
positions of the parties.

The parties in this case are \[patent holder\] and \[alleged
infringer\]. The case involves a United States patent obtained by
\[inventor\], and transferred by \[inventor\] to \[patent holder\]. The
patent involved in this case is United States Patent Number \[patent
number\] which lists \[inventor\] as the inventor. For convenience, the
parties and I will often refer to this patent as the \[last three
numbers of the patent\] patent, \[last three numbers of patent\] being
the last three numbers of its patent number.

\[Patent holder\] filed suit in this court seeking money damages from
\[alleged infringer\] for allegedly infringing the \[ \] patent by
\[making\], \[importing\], \[using\], \[selling\], and \[offering for
sale\] \[products\] \[methods\] that \[patent holder\] argues are
covered by claims \[ \] of the patent. \[\[Patent holder\] also argues
that \[alleged infringer\] has \[actively induced infringement of these
claims 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 \[list of
accused products or methods\].

\[Alleged infringer\] denies that it has infringed claims \[ \] of the
\[ \] patent and argues that, in addition, the claims are invalid. \[Add
other defenses, if applicable\].

Your job will be to decide whether claims \[ \] of the \[ \] patent have
been infringed and whether those claims are invalid. If you decide that
any claim of the \[ \] patent has been infringed 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. \[You will also need to
make a finding as to whether the infringement was willful. If you decide
that any infringement was willful, that decision should not affect any
damage award you give. I will take willfulness into account later.\]

It is my job as judge to determine the meaning of any claim language
that needs interpretation. You must accept the meanings I give you and
use them when you decide whether any claim of the patent has been
infringed and whether any claim is invalid.

> *A.4. Preliminary Instructions*

**OVERVIEW OF APPLICABLE LAW**

\[The court may want to consider giving preliminary instructions on the
patent law applicable to the specific issues in the case. This could
help focus the jury on the facts relevant to the issues it will have to
decide. If this is done, the instructions intended to be given after the
close of evidence could be adapted and given as preliminary
instructions. This, of course, would not negate the need to give
complete instructions at the close of evidence.\]

*A.5. Preliminary Instructions*

**OUTLINE OF TRIAL**

> The trial will now begin. First, each side may make an opening
> statement. An opening statement is not evidence. It is simply an
> outline to help you understand what that party expects the evidence
> will show.
>
> The presentation of evidence will then begin. 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 something is
> more likely true than not. On other issues you must use a higher
> 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 the infringement has
been \[and continues to be\] willful.\] To prove infringement of any
claim, \[patent holder\] must persuade you that it is more likely than
not that \[alleged infringer\] has infringed that claim. \[To persuade
you that any infringement was willful, \[patent holder\] must prove that
it is highly probable that the infringement was willful.\]

\[Alleged infringer\] will go next and present its evidence that the
claims of the \[ \] patent are invalid. To prove invalidity of any
claim, \[alleged infringer\] must persuade you that it is highly
probable that the claim is invalid. In addition to presenting its
evidence of invalidity, \[alleged infringer\] will put on evidence
responding to \[patent holder\]'s infringement \[and willfulness\]
contention\[s\].

> \[Patent holder\] will then return and will put on evidence responding
> to \[alleged infringer\]'s contention that the claims of the \[ \]
> patent are invalid. \[Patent holder\] will also have the option to put
> on what is referred to as "rebuttal" evidence to any evidence offered
> by \[alleged infringer\] of non‑infringement \[or lack of
> willfulness\].

Finally, \[alleged infringer\] will have the option to put on "rebuttal"
evidence to any evidence offered by \[patent holder\] on the validity of
\[some\] \[the\] claims of the \[ \] patent.

\[During the presentation of the evidence, the attorneys will be allowed
brief opportunities to explain what they believe the evidence has shown
or what they believe upcoming evidence will show. Such comments are not
evidence and are being allowed solely for the purpose of helping you
understand the evidence.\]

Because the evidence is introduced piecemeal, you need to keep an open
mind as the evidence comes in and wait for all the evidence before you
make any decisions. In other words, you should keep an open mind
throughout the entire trial.

> After the evidence has been presented, \[the attorneys will make
> closing arguments and I will give you final instructions on the law
> that applies to the case\] \[I will give you final instructions on the
> law that applies to the case and the attorneys will make closing
> arguments\]. Closing arguments are not evidence. After the \[closing
> arguments and instructions\] \[instructions and closing arguments\],
> you will then decide the case.

*B.1. Summary of Contentions*

**SUMMARY OF CONTENTIONS**

I will first give you a summary of each side's contentions in this case.
I will then tell you what each side must prove to win on each of its
contentions. As I previously told you, \[patent holder\] seeks money
damages from \[alleged infringer\] for allegedly infringing the \[ \]
patent by \[making,\] \[importing,\] \[using,\] \[selling\] and
\[offering for sale\] \[products\] \[methods\] that \[patent holder\]
argues are covered by claims \[ \] of the patent. These are the asserted
claims of the \[ \] patent. \[Patent holder\] also argues that \[alleged
infringer\] has \[actively induced infringement of these claims of the
\[ \] patent by others\] \[contributed to the infringement of these
claims of the \[ \] patent by others\]. The \[products\] \[methods\]
that are alleged to infringe are \[list of accused products or
methods\].

\[Alleged infringer\] denies that it has infringed the asserted claims
of the patent and argues that, in addition, claims \[ \] are invalid.
\[Add other defenses if applicable.\]

Your job is to decide whether the asserted claims of the \[ \] patent
have been infringed and whether any of the asserted claims of the \[ \]
patent are invalid. If you decide that any claim of the patent has been
infringed 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. \[You will also need to make a finding as to whether the
infringement was willful. If you decide that any infringement was
willful, that decision should not affect any damage award you make. I
will take willfulness into account later.\]

*B.2. Claim Construction*

**2.1 INTERPRETATION OF CLAIMS**

I have interpreted the meaning of some of the language in the patent
claims involved in this case. You must accept those interpretations as
correct. My interpretation of the language should not be taken as an
indication that I have a view regarding the issues of infringement and
invalidity. The decisions regarding infringement and invalidity are
yours to make.

\[Court gives its claim interpretation. This instruction must be
coordinated with instruction 3.5 "Means-Plus-Function Claims---Literal
Infringement" if the claims at issue include means-plus-function
limitations.\]

[Authorities]{.underline}

*Markman v. Westview Instruments, Inc.*, 517 U.S. 370, 384-391 (1996);
*Pitney Bowes, Inc. v. Hewlett-Packard Co.*, 182 F.3d 1298, 1304-13
(Fed. Cir. 1999); *Cybor Corp. v. FAS Techs.*, 138 F.3d 1448 (Fed. Cir.
1998) (*en banc*)*; Markman v. Westview Instruments, Inc.*, 52 F.3d 967,
977 (Fed. Cir. 1995) (*en banc*).

*B.3. Infringement*

# 3.1 INFRINGEMENT -- BURDEN OF PROOF

I will now instruct you on the rules you must follow in deciding whether
\[patent holder\] has proven that \[alleged infringer\] has infringed
one or more of the asserted claims of the \[ \] patent. To prove
infringement of any claim, \[patent holder\] must persuade you that it
is more likely than not that \[alleged infringer\] has infringed that
claim.

[Authorities]{.underline}

*Warner-Lambert Co. v. Teva Pharm. USA, Inc.,* 418 F.3d 1326, 1341 n.15
(Fed. Cir. 2005); *Seal-Flex, Inc. v. Athletic Track and Court Constr.,*
172 F.3d 836, 842 (Fed. Cir. 1999); *Morton Int'l, Inc. v. Cardinal
Chem. Co.*, 5 F.3d 1464, 1468-69 (Fed. Cir. 1993).

*B.3. Infringement*

**3.2 DIRECT INFRINGEMENT**

A patent's claims define what is covered by the patent. A \[product\]
\[method\] directly infringes a patent if it is covered by at least one
claim of the patent.

Deciding whether a claim has been directly infringed is a two-step
process. The first step is to decide the meaning of the patent claim. I
have already made this decision, \[and I will instruct you later as to
the meaning of the asserted patent claims\] \[and I have already
instructed you as to the meaning of the asserted patent claims\]. The
second step is to decide whether \[alleged direct infringer\] has
\[made,\] \[used,\] \[sold,\] \[offered for sale\] or \[imported\]
within the United States a \[product\] \[method\] covered by a claim of
the \[ \] patent.[^1] You, the jury, make this decision.

\[With one exception,\] you must consider each of the asserted claims of
the patent individually, and decide whether \[alleged direct
infringer\]'s \[product\] \[method\] infringes that claim. \[The one
exception to considering claims individually concerns dependent claims.
A dependent claim includes all of the requirements of a particular
independent claim, plus additional requirements of its own. As a result,
if you find that an independent claim is not infringed, you must also
find that its dependent claims are not infringed. On the other hand, if
you find that an independent claim has been infringed, you must still
separately decide whether the additional requirements of its dependent
claims have also been infringed.\]

There are two ways in which a patent claim may be directly infringed. A
claim may be "literally" infringed, or it may be infringed under the
"doctrine of equivalents." The following instructions will provide more
detail on these two types of direct infringement. \[You should note,
however, that what are called "means-plus-function" requirements in a
claim are subject to different rules for deciding direct infringement.
These separate rules apply to claims \[ \]. I will describe these
separate rules shortly.\]

[Authorities]{.underline}

35 U.S.C. § 271; *Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co.*,
520 U.S. 17 (1997); *Cross Med. Prods., Inc. v. Medtronic Sofamor Danek,
Inc.*, 424 F.3d 1293, 1310‑11 (Fed. Cir. 2005); *DeMarini Sports, Inc.
v. Worth, Inc.*, 239 F.3d 1314, 1330-34 (Fed. Cir. 2001); *Seal-Flex,
Inc. v. Athletic Track and Court Constr.,* 172 F.3d 836, 842 (Fed. Cir.
1999); *Carroll Touch, Inc. v. Electro Mech. Sys., Inc.*, 15 F.3d 1573,
1576 (Fed. Cir. 1993).

*B.3. Infringement*

**3.3 LITERAL INFRINGEMENT**

To decide whether \[alleged infringer\]'s \[product\] \[method\]
literally infringes a claim of the \[ \] patent, you must compare that
\[product\] \[method\] with the patent claim and determine whether every
requirement of the claim is included in that \[product\] \[method\]. If
so, \[alleged infringer\]'s \[product\] \[method\] literally infringes
that claim. If, however, \[alleged infringer\]'s \[product\] \[method\]
does not have every requirement in the patent claim, \[alleged
infringer\]'s \[product\] \[method\] does not literally infringe that
claim. You must decide literal infringement for each asserted claim
separately.

\[If \[alleged infringer's\] \[product\] \[method\] does not itself
include every requirement in the patent claim, \[alleged infringer\]
cannot be liable for infringement merely because other parties supplied
the missing elements, unless \[accused infringer\] directed or
controlled the acts by those parties.\]

[Authorities]{.underline}

*MicroStrategy Inc. v. Business Objects, S.A.*, 429 F.3d 1344, 1352-53
(Fed. Cir. 2005); *Netword, LLC v. Centraal Corp.,* 242 F.3d 1347, 1353
(Fed. Cir. 2001); *Cole v. Kimberly-Clark Corp.,* 102 F.3d 524, 532
(Fed. Cir. 1996); *Cross Med. Prods. v. Medtronic Sofamor Danek*, 424
F.3d 1293 (Fed. Cir. 2005); *On Demand Machine Corp. v. Ingram
Industries, Inc.,* 442 F.3d 1331 (Fed. Cir. 2006); *BMC Res., Inc. v.
Paymentech, L.P.,* 2007 U.S. App. LEXIS 22413 (Fed. Cir. 2007).

*B.3. Infringement*

**3.4 INFRINGEMENT UNDER THE DOCTRINE OF EQUIVALENTS**

If you decide that \[alleged infringer\]'s \[product\] \[method\] does
not literally infringe an asserted patent claim, you must then decide
whether that \[product\] \[method\] infringes the asserted claim under
what is called the "doctrine of equivalents."

Under the doctrine of equivalents, the \[product\] \[method\] can
infringe an asserted patent claim if it includes \[parts\] \[steps\]
that are identical or equivalent to the requirements of the claim. If
the \[product\] \[method\] is missing an identical or equivalent
\[part\] \[step\] to even one requirement of the asserted patent claim,
the \[product\] \[method\] cannot infringe the claim under the doctrine
of equivalents. Thus, in making your decision under the doctrine of
equivalents, you must look at each individual requirement of the
asserted patent claim and decide whether the \[product\] \[method\] has
either an identical or equivalent \[part\] \[step\] to that individual
claim requirement.

A \[part\] \[step\] of a \[product\] \[method\] is equivalent to a
requirement of an asserted claim if a person of ordinary skill in the
field would think that the differences between the \[part\] \[step\] and
the requirement were not substantial as of the time of the alleged
infringement.

\[One way to decide whether any difference between a requirement of an
asserted claim and a \[part\] \[step\] of the \[product\] \[method\] is
not substantial is to consider whether, as of the time of the alleged
infringement, the \[part\] \[step\] of the \[product\] \[method\]
performed substantially the same function, in substantially the same
way, to achieve substantially the same result as the requirement in the
patent claim.\]

\[In deciding whether any difference between a claim requirement and the
\[product\] \[method\] is not substantial, you may consider whether, at
the time of the alleged infringement, persons of ordinary skill in the
field would have known of the interchangeability of the \[part\]
\[step\] with the claimed requirement. The known interchangeability
between the claim requirement and the \[part\] \[step\] of the
\[product\] \[method\] is not necessary to find infringement under the
doctrine of equivalents. However, known interchangeability may support a
conclusion that the difference between the \[part\] \[step\] in the
\[product\] \[method\] and the claim requirement is not substantial. The
fact that a \[part\] \[step\] of the \[product\] \[method\] performs the
same function as the claim requirement is not, by itself, sufficient to
show known interchangeability.\]

\[You may not use the doctrine of equivalents to find infringement if
you find that \[alleged infringer\]'s \[product\] \[method\] is the same
as what was in the prior art before the application for the \[ \] patent
or what would have been obvious to persons of ordinary skill in the
field in light of what was in the prior art. A patent holder may not
obtain, under the doctrine of equivalents, protection that it could not
have lawfully obtained from the Patent and Trademark Office.\][^2]

\[You may not use the doctrine of equivalents to find infringement if
you find that the subject matter alleged to be equivalent to a
requirement of the patent claim was described in the \[ \] patent but
not covered by any of its claims. The subject matter described but not
claimed must be specific enough that one of ordinary skill in the art
would understand that it was present in the patent.\]

[Authorities]{.underline}

*Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co.*, 520 U.S. 17
(1997); *Graver Tank & Mfg. Co. v. Linde Air Prods. Co.*, 339 U.S. 605,
609 (1950); *Abraxis Bioscience, Inc. v. Mayne Pharma (USA) Inc.*, 467
F.3d 1370, 1379-82 (Fed. Cir. 2006); *Pfizer, Inc. v. Teva Pharms., USA,
Inc.*, 429 F.3d 1364, 1378 (Fed. Cir. 2005); *Johnson & Johnston Assoc.
v. R.E. Service Co.*, 285 F.3d 1046 (Fed. Cir. 2002) (*en banc*);
*Multiform Desiccants, Inc. v. Medzam, Ltd.*, 133 F.3d 1473, 1480 (Fed.
Cir. 1998); *Dolly, Inc. v. Spalding & Evenflo Cos.*, 16 F.3d 394, 397
(Fed. Cir. 1994).

*B.3. Infringement*

**3.5 MEANS-PLUS-FUNCTION CLAIMS -- LITERAL INFRINGEMENT**[^3]

I will now describe the separate rules that apply to
"means-plus-function" requirements that are used in some claims. Claims
\[ \] in the \[ \] patent contain "means-plus-function" requirements. A
means-plus-function requirement only covers the specific \[structure\]
disclosed in a patent specification for performing the claimed function
and the equivalents of those specific \[structure\] that perform the
claimed function. A means-plus-function requirement does not cover all
possible \[structure\] that could be used to perform the claimed
function.

For purposes of this trial, I have interpreted each means-plus-function
requirement for you and identified the \[structure\] in the patent
specification that correspond to these means-plus-function requirements.
Specifically, I have determined that:

\[X. \[ \] is \[are\] the \[structure\] that perform\[s\] the \[ \]
function identified in the means-plus-function requirement of claim \[
\].\]

\[X. \[ \] is \[are\] the \[structure\] that perform\[s\] the \[ \]
function identified in the means-plus-function requirement of claim \[
\].\]

In deciding if \[patent holder\] has proven that \[alleged infringer\]'s
\[product\] includes structure covered by a means-plus-function
requirement, you must first decide whether the \[product\] has any
structure that performs the function I just described to you. If not,
the claim containing that means-plus-function requirement is not
infringed.

If you find that the \[alleged infringer\]'s \[accused product\] does
have structure that performs the claimed function, you must next
identify the \[structure\] in \[alleged infringer\]'s \[accused
product\] that perform\[s\] this function. After identifying that
\[structure\], you must then determine whether that \[structure\] is the
same as or equivalent to the \[structure\] I have identified. If they
are the same or equivalent, the means-plus-function requirement is
satisfied by that structure of the \[accused product\]. If all the other
requirements of the claim are satisfied by structures found in the
\[accused product\], the \[accused product\] infringes the claim.

In order to prove that \[a structure\] in the \[accused product\] is
equivalent to the \[structure\] in the \[ \] patent, the \[patent
holder\] must show that a person of ordinary skill in the field would
have considered that the differences between the \[structure\] described
in the \[ \] patent and the \[structure\] in the \[accused product\] are
not substantial. The \[patent holder\] must also show that the
\[structure\] was available on the date the \[ \] patent was
granted.[^4]

[Authorities]{.underline}

35 U.S.C. § 112(6); *Frank's Casing Crew & Rental Tools, Inc. v.
Weatherford Intern., Inc.*, 389 F.3d 1370, 1378 (Fed. Cir. 2004);
*Odetics, Inc. v. Storage Tech. Corp.*, 185 F.3d 1259, 1266 (Fed. Cir.
1999); *Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc.*,
145 F.3d 1303, 1307 (Fed. Cir. 1998); *Micro Chem., Inc. v. Great Plains
Chem. Co., Inc.*, 103 F.3d 1538, 1547 (Fed. Cir. 1997); *Valmont Indus.,
Inc. v. Reinke Mfg. Co., Inc.*, 983 F.2d 1039, 1042 (Fed. Cir. 1993).

*B.3. Infringement*

**3.6 MEANS-PLUS-FUNCTION CLAIMS -- INFRINGEMENT UNDER**

**THE DOCTRINE OF EQUIVALENTS**

\[No model instruction is provided since an instruction on this subject
is necessarily case specific. However, a means-plus-function requirement
can be met under the doctrine of equivalents if the function is not the
same but is equivalent (*see*, *e.g.*, *WMS Gaming Inc. v. Int'l Game
Tech.,* 184 F.3d 1339, 1353 (Fed. Cir. 1999) or the corresponding
structure in the accused product is later developed technology. *See
Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc.*, 145 F.3d
1303, 1310 (Fed. Cir. 1998); *Al-Site Corp. v. VSI Int'l, Inc.*, 174
F.3d 1308, 1320 (Fed. Cir. 1999).\]

*B.3. Infringement*

######### 3.7 LIMITATIONS ON THE DOCTRINE OF EQUIVALENTS

Because \[patent holder\] made certain claim changes or statements
during the patent application process for the \[ \] patent, the doctrine
of equivalents analysis cannot be applied to the following requirements
of the asserted claims:

\[List requirements on a claim-by-claim basis\]

Unless each of these requirements is literally present within the
\[alleged infringer\]'s \[product\] \[method\], there can be no
infringement of the claim.

[Authorities]{.underline}

*Honeywell Int'l Inc. v. Hamilton Sundstrand Corp.*, 370 F.3d 1131 (Fed.
Cir. 2004) (*en banc*); *Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
Co., Ltd.*, 344 F.3d (Fed. Cir. 2003) (*en banc*).

*B.3. Infringement*

**3.8 INDIRECT INFRINGEMENT -- GENERALLY**[^5]

\[Patent holder\] \[also\] argues that \[alleged infringer\]
\[contributed to infringement by another of\] \[and\] \[or\] \[induced
another to infringe\] claims \[ \] of the \[ \] patent. \[\[Patent
holder\] has not argued that the \[product\] \[method\] made, used,
sold, offered for sale or imported by \[alleged infringer\] includes all
of the requirements of an asserted patent claim.\] \[Alleged infringer\]
cannot \[contributorily infringe\] \[or\] \[induce infringement\] unless
\[patent holder\] proves that someone other than \[alleged infringer\]
directly infringes the patent claim by making, using, selling, offering
for sale or importing a \[product\] \[method\] that includes all of the
requirements of the asserted claims. If there is no direct infringement,
\[alleged infringer\] cannot have \[contributed to infringement\] \[or\]
\[induced infringement\].

[Authorities]{.underline}

*Hewlett-Packard Co. v. Bausch & Lomb, Inc.*, 909 F.2d 1464, 1468-69
(Fed. Cir. 1990).

*B.3. Infringement*

**3.9 CONTRIBUTORY INFRINGEMENT**

\[Patent holder\] \[also\] argues that \[alleged infringer\] has
contributed to infringement by another. Contributory infringement may
arise when someone supplies something that is used to infringe one or
more of the patent claims.

In order for there to be contributory infringement by \[alleged
infringer\], someone other than \[alleged infringer\] must directly
infringe a claim of the \[ \] patent; if there is no direct infringement
by anyone, there can be no contributory infringement.

If you find someone has directly infringed the \[ \] patent, then
contributory infringement exists if:

> \(1\) \[Alleged infringer\] supplied an important component of the
> infringing part of the \[product\] or \[method\];

(2) The component is not a common component suitable for non-infringing
    use; and

(3) \[Alleged infringer\] supplied the component with the knowledge of
    the \[ \] patent and knowledge that the component was especially
    made or adapted for use in an infringing manner.

[Authorities]{.underline}

35 U.S.C. § 271(c); *Aro Mfg. Co. v. Convertible Top Replacement Co.*,
377 U.S. 476 (1964); *DSU Med. Corp. v. JMS Co.*, 471 F.3d 1293, 1303
(Fed. Cir. 2006); *Mentor H/S, Inc. v. Med. Device Alliance, Inc*., 244
F.3d 1365 (Fed. Cir. 2001); *Hewlett-Packard Co. v. Bausch & Lomb,
Inc.*, 909 F.2d 1464, 1469 (Fed. Cir. 1990); *Preemption Devices, Inc.
v. Minn. Mining & Mfr. Co.*, 803 F.2d 1170, 1174 (Fed. Cir. 1986).

*B.3. Infringement*

**3.10 INDUCING PATENT INFRINGEMENT**

\[Patent holder\] argues that \[alleged infringer\] has actively induced
another to infringe the \[ \] patent. In order for there to be
inducement of infringement by \[alleged infringer\], someone else must
directly infringe a claim of the \[ \] patent; if there is no direct
infringement by anyone, there can be no induced infringement. In order
to be liable for inducement of infringement, \[alleged infringer\] must:

1.  have intentionally taken action that actually induced direct
    infringement by another;

2.  have been aware of the \[ \] patent; and

3.  have known or should have known that its actions would cause direct
    infringement by another.

In order to prove induced infringement, \[patent holder\] must either
prove that the \[accused product\] necessarily infringes the \[patent in
suit\] or prove acts of direct infringement by others that were induced
by \[accused infringer\].  \[Patent holder\] must further prove the
number of direct acts of infringement of the \[patent in suit\] because
the amount of damages for induced infringements is limited by the number
of specific instances of direct infringement.

[Authorities]{.underline}

35 U.S.C. § 271(b); *Acco Brands, Inc. v. ABA Locks Mfr. Co., Ltd.*,
2007 U.S. App LEXIS 21822 (Fed. Cir. 2007); *DSU Med. Corp. v. JMS Co.*,
471 F.3d 1293, 1304-06 (Fed. Cir. 2006) (*en banc*) (quoting
*Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd.*, 545 U.S. 913, 936
(2005)); *Metabolite Labs., Inc. v. Lab. Corp. of Am.*, 370 F.3d 1354,
1365 (Fed. Cir. 2004); *Dynacore Holdings Corp. v. U.S. Philips Corp.,*
363 F.3d 1263, 1274-76 (Fed. Cir. 2004); *Ferguson Beauregard/Logic
Controls, Division of Dover Resources, Inc. v. Mega Systems, LLC*, 350
F.3d 1327, 1342 (Fed. Cir. 2003).

*B.3. Infringement*

**3.11 WILLFUL INFRINGEMENT**

In this case, \[patent holder\] argues that \[alleged infringer\]
willfully infringed the \[patent holder\]'s patent.

To prove willful infringement, \[patent holder\] must first persuade you
that the \[alleged infringer\] infringed a valid and enforceable claim
of the \[patent holder\]'s patent. The requirements for proving such
infringement were discussed in my prior instructions.

In addition, to prove willful infringement, the \[patent holder\] must
persuade you that it is highly probable that \[prior to the filing date
of the complaint\][^6], \[alleged infringer\] acted with reckless
disregard of the claims of the \[patent holder\]'s \[patent\].

To demonstrate such "reckless disregard," \[patent holder\] must satisfy
a two-part test. The first part of the test is objective. The \[patent
holder\] must persuade you that the \[alleged infringer\] acted despite
an objectively high likelihood that its actions constituted infringement
of a valid and enforceable patent. The state of mind of the \[alleged
infringer\] is not relevant to this inquiry. You should focus on whether
a reasonable person in the position of \[alleged infringer\], after
learning of the patent, could have reasonably believed that it did not
infringe or reasonably believed the patent was invalid or unenforceable.
If a reasonable person in the position of \[alleged infringer\] could
not have held such belief, then you need to consider the second part of
the test.

The second part of the test does depend on the state of mind of the
\[alleged infringer\]. The \[patent holder\] must persuade you that
\[alleged infringer\] actually knew, or it was so obvious that \[alleged
infringer\] should have known, that its actions constituted infringement
of a valid and enforceable patent.

In deciding whether \[alleged infringer\] acted with reckless disregard
for \[patent holder\]'s patent, you should consider all of the facts
surrounding the alleged infringement including, but not limited to, the
following:

\(1\) Whether \[alleged infringer\] acted in a manner consistent with
the standards of commerce for its industry; \[and\]

> \(2\) Whether \[alleged infringer\] intentionally copied a product of
> \[patent holder\] covered by the patent\[.\] \[;and\]

\(3\) Whether \[alleged infringer\] relied on a legal opinion that was
well-supported and believable and that advised \[alleged infringer\] (1)
that the \[product\] \[method\] did not infringe \[patent holder\]'s
patent or (2) that the patent was invalid \[or unenforceable\].\][^7]

[Authorities]{.underline}

*35 U.S.C. § 284; In re Seagate Tech., LLC*, 2007 U.S. App. LEXIS 19768
(Fed. Cir. Aug. 20, 2007); *Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH
v. Dana Corp.*, 383 F.3d 1337, 1345 (Fed. Cir. 2004) (*en banc*);
*Crystal Semiconductor Corp. v. Tritech Microelectronics Int'l, Inc.,*
246 F.3d 1336, 1346 (Fed. Cir. 2001); *WMS Gaming Inc. v. Int'l Game
Tech.*, 184 F.3d 1339, 1354 (Fed. Cir. 1999); *Read Corp. v. Portec,
Inc*., 970 F.2d 816 (Fed. Cir. 1992); *Gustafson, Inc. v. Intersystems
Indus. Prods., Inc.,* 897 F.2d 508, 510 (Fed. Cir. 1990).

*B.4.1 Validity*

**4.1 INVALIDITY -- BURDEN OF PROOF**

I will now instruct you on the rules you must follow in deciding whether
\[alleged infringer\] has proven that claims \[ \] of the \[ \] patent
are invalid. Before discussing the specific rules, I want to remind you
about the standard of proof that applies to this defense. To prove
invalidity of any patent claim, \[alleged infringer\] must persuade you
that it is highly probable that the claim is invalid.

[Authorities]{.underline}

*Buildex, Inc. v. Kason Indus., Inc.*, 849 F.2d 1461, 1463 (Fed. Cir.
1988); *Hybritech, Inc. v. Monoclonal Antibodies, Inc.*, 802 F.2d 1367,
1375 (Fed. Cir. 1986).

*B.4.2 Validity---Adequacy of Patent Specification*

### 4.2a WRITTEN DESCRIPTION REQUIREMENT

\[Alleged infringer\] can meet its burden of proving that a patent claim
is invalid by showing that the patent does not contain an adequate
written description of the claimed invention. The purpose of this
written description requirement is to make sure that a patent describes
the technology it seeks to claim as an invention and to demonstrate that
the inventor was in possession of the invention at the time the
application for the patent was filed, even though the claims may have
been changed or new claims added since that time. The written
description requirement is satisfied if a person of ordinary skill in
the field reading the patent application as originally filed would
recognize that the patent application described the invention as
claimed, even though the description may not use the exact words found
in the claim. A requirement in a claim need not be specifically
disclosed in the patent application as originally filed if a person of
ordinary skill would understand that the missing requirement is
necessarily implied in the patent application as originally filed.

[Authorities]{.underline}

35 U.S.C. § 112(1) and (2); *Kao Corp. v. Unilever U.S., Inc.*, 441 F.3d
963, 968 (Fed. Cir. 2006); *Chiron Corp. v. Genentech, Inc.*, 363 F.3d
1247 (Fed. Cir. 2004); *Purdue Pharma L.P. v. Faulding, Inc.*, 230 F.3d
1320, 1323 (Fed. Cir. 2000); *Lampi Corp. v. Am. Power Prods., Inc.*,
228 F.3d 1365, 1377-78 (Fed. Cir. 2000); *Gentry Gallery, Inc. v.
Berkline Corp.*, 134 F.3d 1473, 1478-80 (Fed. Cir. 1998); *In re Alton*,
76 F.3d 1168, 1172 (Fed. Cir. 1996); *University of Rochester v. G.D.
Searle & Co.,* 358 F.3d 916, 926-928 (Fed. Cir. 2004).

*B.4.2 Validity---Adequacy of Patent Specification*

**4.2b ENABLEMENT**

\[Alleged infringer\] can meet its burden of proving that a patent claim
is invalid by showing that the patent does not contain a description of
the claimed invention that is sufficiently full and clear to enable a
person of ordinary skill in the field to make and use the invention.
This is known as the "enablement" requirement.

The patent may be enabling even though it does not expressly state some
information if a person of ordinary skill in the field could make and
use the invention without having to do excessive experimentation. In
determining whether excessive experimentation is required, you may
consider the following factors:

the scope of the claimed invention;

> the amount of guidance presented in the patent;
>
> the amount of experimentation necessary;

the time and cost of any necessary experimentation;

how routine any necessary experimentation is in the field of \[identify
field\];

whether the patent discloses specific working examples of the claimed
invention;

> the nature and predictability of the field; and
>
> the level of ordinary skill in the field of \[identity field\].

The question of whether a patent is enabling is judged as of the date
the original application for the patent was first filed.[^8]

[Authorities]{.underline}

35 U.S.C. § 112(1); *AK Steel Corp. v. Sollac & Ugine*, 344 F.3d 1234,
1244 (Fed. Cir. 2003); *Union Pac. Resources Co. v. Chesapeake Energy
Corp.*, 236 F.3d 684, 690-92 (Fed. Cir. 2001); *Ajinomoto Co. v.
Archer-Daniels-Midland Co.*, 228 F.3d 1338, 1345-46 (Fed. Cir. 2000);
*In re Wands*, 858 F.2d 731, 737 (Fed. Cir. 1988).

*B.4.2 Validity---Adequacy of Patent Specification*

**4.2c BEST MODE**

\[Alleged infringer\] can meet its burden of proving that a patent claim
is invalid by showing that the patent does not disclose what \[the
inventor\] \[any of the inventors\] believed was the best way to carry
out the claimed invention at the time the patent application was filed.
This is known as the "best mode" requirement. It ensures that the public
obtains a full disclosure of the best way to carry out the claimed
invention known to \[the inventor\] \[any of the inventors\] at the time
the \[original\] patent application was first filed. The disclosure of
the best mode must be detailed enough to enable the persons of ordinary
skill in the field of \[identity\] field to carry out that best mode
without excessive experimentation.

The best mode requirement focuses on what \[the inventor\] \[any of the
inventors\] believed at the time the \[original\] patent application was
first filed. It does not matter whether the best mode contemplated by
\[the inventor\] \[any of the inventors\] was, in fact, the best way to
carry out the invention. The question is whether the patent includes
what \[the inventor\] \[any of the inventors\] believed was the best
mode at the time the \[original\] patent application was filed. If \[the
inventor did not believe\] \[none of the inventors believed\] there was
a best way to carry out the invention at the time that application was
filed, there is no requirement that the patent describe a best mode.
Although a patent specification must disclose the best mode, it may
disclose other modes as well and need not state which of the modes
disclosed is best. If \[the inventor\] \[any of the inventors\] believed
there was a best way to carry out the invention and the patent does not
disclose it, the patent is invalid.

[Authorities]{.underline}

35 U.S.C. § 112(1); *Glaxo Inc. v. Novopharm Ltd.*, 52 F.3d 1043,
1049-52 (Fed. Cir. 1995); *Transco Prods. v. Performance Contracting*,
38 F.3d 551 (Fed. Cir. 1994); *Wahl Instruments v. Acvious*, 950 F.2d
1575 (Fed. Cir. 1991); *Chemcast Corp. v. Arco Indus. Corp.*, 913 F.2d
923, 926-28 (Fed. Cir. 1990); *Spectra-Physics Inc. v. Coherent, Inc.*,
827 F.2d 1524 (Fed. Cir. 1987).

*B.4.3 Validity---The Claims*

**4.3a1 ANTICIPATION**

A patent claim is invalid if the claimed invention is not new. For the
claim to be invalid because it is not new, all of its requirements must
have existed in a single device or method that predates the claimed
invention, or must have been described in a single previous publication
or patent that predates the claimed invention. In patent law, these
previous devices, methods, publications or patents are called "prior art
references." If a patent claim is not new we say it is "anticipated" by
a prior art reference.

The description in the written reference does not have to be in the same
words as the claim, but all of the requirements of the claim must be
there, either stated or necessarily implied, so that someone of ordinary
skill in the field of \[identify field\] looking at that one reference
would be able to make and use the claimed invention.

Here is a list of the ways that \[alleged infringer\] can show that a
patent claim was not new \[use those that apply to this case\]:

> \[-- if the claimed invention was already publicly known or publicly
> used by others in the United States before \[insert date of conception
> unless at issue\];\]
>
> \[-- if the claimed invention was already patented or described in a
> printed publication anywhere in the world before \[insert date of
> conception unless at issue\]. \[A reference is a "printed publication"
> if it is accessible to those interested in the field, even if it is
> difficult to find.\];\]
>
> \[-- if the claimed invention was already made by someone else in the
> United States before \[insert date of conception unless in issue\], if
> that other person had not abandoned the invention or kept it secret;\]
>
> \[-- if the claimed invention was already described in another issued
> U.S. patent or published U.S. patent application that was based on a
> patent application filed before \[insert date of the patent holder's
> application filing date\] \[or\] \[insert date of conception unless at
> issue\];\]
>
> \[-- if \[named inventor\] did not invent the claimed invention but
> instead learned of the claimed invention from someone else;\]
>
> \[-- if the \[patent holder\] and \[alleged infringer\] dispute who is
> a first inventor, the person who first conceived of the claimed
> invention and first reduced it to practice is the first inventor. If
> one person conceived of the claimed invention first, but reduced to
> practice second, that person is the first inventor only if that person
> (a) began to reduce the claimed invention to practice before the other
> party conceived of it and (b) continued to work diligently to reduce
> it to practice. \[A claimed invention is "reduced to practice" when it
> has been tested sufficiently to show that it will work for its
> intended purpose or when it is fully described in a filed patent
> application\].\]

\[Since it is in dispute, you must determine a date of conception for
the \[claimed invention\] \[and/or\] \[prior invention\]. Conception is
the mental part of an inventive act and is proven when the invention is
shown in its complete form by drawings, disclosure to another or other
forms of evidence presented at trial.\]

[Authorities]{.underline}

35 U.S.C. § 102(a), (c), (e), (f) and (g); *Apotex U.S.A., Inc. v. Merck
& Co*., 254 F.3d 1031, 1035 (Fed. Cir. 2001); *Mycogen Plant Science,
Inc. v. Monsanto Co.*, 243 F.3d 1316, 1330 (Fed. Cir. 2001); *Ecolochem,
Inc. v. S. Cal. Edison Co.*, 227 F.3d 1361, 1367-70 (Fed. Cir. 2000);
*Singh v. Brake*, 222 F.3d 1362, 1366-70 (Fed. Cir. 2000); *Pannu v.
Iolab Corp.*, 155 F.3d 1344, 1349 (Fed. Cir. 1998); *Gambro Lundia AB v.
Baxter Healthcare Corp.*, 110 F.3d 1573, 1576-78 (Fed. Cir. 1997);
*Lamb-Weston, Inc. v. McCain Foods, Ltd.*, 78 F.3d 540, 545 (Fed. Cir.
1996); *In re Bartfeld*, 925 F.2d 1450 (Fed. Cir. 1985); *Ralston Purina
Co. v. Far-Mar-Co, Inc.*, 772 F.2d 1570, 1574 (Fed. Cir. 1985);
*American Stock Exch., LLC v. Mopies*, 250 F. Supp. 2d 323 (S.D.N.Y.
2003); *In re Wyer*, 655 F.2d 221, 226 (C.C.P.A. 1981).

*B.4.3 Validity---The Claims*

**4.3a2 STATUTORY BARS**

A patent claim is invalid if the patent application was not filed within
the time required by law. This is called a "statutory bar." For a patent
claim to be invalid by a statutory bar, all of its requirements must
have been present in one prior art reference dated more than one year
before the patent application was filed. Here is a list of ways
\[alleged infringer\] can show that the patent application was not
timely filed: \[choose those that apply\]

> \[-- if the claimed invention was already patented or described in a
> printed publication anywhere in the world before \[insert date that is
> one year before effective filing date of patent application\]. \[A
> reference is a "printed publication" if it is accessible to those
> interested in the field, even if it is difficult to find.\];\]
>
> \[-- if the claimed invention was already being openly used in the
> United States before \[insert date that is one year before application
> filing date\] and that use was not primarily an experimental use (a)
> controlled by the inventor, and (b) to test whether the invention
> worked for its intended purpose;\]
>
> \[-- if a device or method using the claimed invention was sold or
> offered for sale in the United States, and that claimed invention was
> ready for patenting, before \[insert date that is one year before
> application filing date\]. \[The claimed invention is not being
> \[sold\] \[or\] \[offered for sale\] if the \[patent holder\] shows
> that the \[sale\] \[or\] \[offer for sale\] was primarily
> experimental.\] \[The claimed invention is ready for patenting if it
> was actually built, or if the inventor had prepared drawings or other
> descriptions of the claimed invention that were sufficiently detailed
> to enable a person of ordinary skill in the field to make and use the
> invention based on them.\];\]
>
> \[-- if the \[patent holder\] had already obtained a patent on the
> claimed invention in a foreign country before filing the original U.S.
> application, and the foreign application was filed at least one year
> before the U.S. application.\]

For a claim to be invalid because of a statutory bar, all of the claimed
requirements must have been either (1) disclosed in a single prior art
reference, (2) implicitly disclosed in a reference to one skilled in the
field, or (3) must have been present in the reference, whether or not
that was understood at the time. The disclosure in a reference does not
have to be in the same words as the claim, but all the requirements must
be there, either described in enough detail or necessarily implied, to
enable someone of ordinary skill in the field of \[identify field\]
looking at the reference to make and use the claimed invention.

[Authorities]{.underline}

35 U.S.C. § 102(b) and (d); *Pfaff v. Wells Elec. Inc.*, 525 U.S. 55
(1998); *Schering Corp. v. Geneva Pharms.,* 339 F.2d 1273 (Fed Cir.
2003); *Helifix Ltd. v. Blok-Lok, Ltd*., 208 F.3d 1339, 1346 (Fed. Cir.
2000); *Abbot Labs. v. Geneva Pharms., Inc.*, 182 F.3d 1315, 1318 (Fed.
Cir. 1999); *Finnigan Corp. v. Int'l Trade Comm'n*, 180 F.3d 1354 (Fed.
Cir. 1999); *J.A. LaPorte, Inc. v. Norfolk Dredging Co*., 787 F.2d 1577,
1581 (Fed. Cir. 1986); *In re Hall*, 781 F.2d 897, 898-99 (Fed. Cir.
1986); *D.L. Auld Co. v. Chroma Graphics Corp*., 714 F.2d 1144, 1150
(Fed. Cir. 1983).

*B.4.3 Validity---The Claims*

#### 4.3b OBVIOUSNESS[^9] -- (Alternative 1)

Not all innovations are patentable. A patent claim is invalid if the
claimed invention would have been obvious to a person of ordinary skill
in the field \[at the time the application was filed\] \[as of \[insert
date\]\]. This means that even if all of the requirements of the claim
cannot be found in a single prior art reference that would anticipate
the claim or constitute a statutory bar to that claim, a person of
ordinary skill in the field of \[identify field\] who knew about all
this prior art would have come up with the claimed invention.

However, a patent claim composed of several elements is not proved
obvious merely by demonstrating that each of its elements was
independently known in the prior art. In evaluating whether such a claim
would have been obvious, you may consider whether \[the alleged
infringer\] has identified a reason that would have prompted a person of
ordinary skill in the field to combine the elements or concepts from the
prior art in the same way as in the claimed invention. There is no
single way to define the line between true inventiveness on one hand
(which is patentable) and the application of common sense and ordinary
skill to solve a problem on the other hand (which is not patentable).
For example, market forces or other design incentives may be what
produced a change, rather than true inventiveness. You may consider
whether the change was merely the predictable result of using prior art
elements according to their known functions, or whether it was the
result of true inventiveness. You may also consider whether there is
some teaching or suggestion in the prior art to make the modification or
combination of elements claimed in the patent. However, you must be
careful not to determine obviousness using the benefit of hindsight;
many true inventions might seem obvious after the fact. You should put
yourself in the position of a person of ordinary skill in the field at
the time the claimed invention was made and you should not consider what
is known today or what is learned from the teaching of the patent.

The ultimate conclusion of whether a claim is obvious should be based
upon your determination of several factual decisions. First, you must
decide the level of ordinary skill in the field that someone would have
had at the time the claimed invention was made. Second, you must decide
the scope and content of the prior art. Third, you must decide what
difference, if any, existed between the claimed invention and the prior
art. Finally, you should consider any of the following factors that you
find have been shown by the evidence:

\[(1) commercial success of a product due to the merits of the claimed
invention\];\]

\[(2) a long felt need for the solution provided by the claimed
invention\];\]

> \[(3) unsuccessful attempts by others to find the solution provided by
> the claimed invention\];\]

\[(4) copying of the claimed invention by others\];\]

\[(5) unexpected and superior results from the claimed invention\];\]

> \[(6) acceptance by others of the claimed invention as shown by praise
> from others in the field or from the licensing of the claimed
> invention\];\]
>
> \[(7) other evidence tending to show nonobviousness\];\]
>
> \[(8) independent invention of the claimed invention by others before
> or at about the same time as the named inventor thought of it\] \[;
> and\]

\[(9) other evidence tending to show obviousness\].\]

\[The presence of any of the \[list factors 1-7 as appropriate\] may be
considered by you as an indication that the claimed invention would not
have been obvious at the time the claimed invention was made, and the
presence of the \[list factors 8-9 as appropriate\] may be considered by
you as an indication that the claimed invention would have been obvious
at such time. Although you should consider any evidence of these
factors, the relevance and importance of any of them to your decision on
whether the claimed invention would have been obvious is up to you.\]

[Authorities]{.underline}

35 U.S.C. § 103; *Graham v. John Deere Co.*, 383 U.S. 1 (1966); *KSR
Int'l Co. v. Teleflex, Inc.*, 550 U.S. \_\_\_ (2007); *Ruiz v. A.B.
Chance Co.*, 234 F.3d 654 (Fed. Cir. 2000); *Arkie Lures, Inc. v. Gene
Larew Tackle, Inc.*, 119 F.3d 953, 957 (Fed. Cir. 1997); *Specialty
Composites v. Cabot Corp.*, 845 F.2d 981, 991 (Fed. Cir. 1988);
*Windsurfing Int'l, Inc. v. AMF, Inc.*, 782 F.2d 995, 1000 (Fed. Cir.
1986); *Pentec. Inc. v. Graphic Controls Corp.*, 776 F.2d 309, 313 (Fed.
Cir. 1985). *See Novo Nordisk A/S v. Becton Dickinson & Co.*, 304 F.3d
1216, 1219-20 (Fed. Cir. 2002).

**4.3b OBVIOUSNESS**[^10] **-- (Alternative 2)**

Not all innovations are patentable. A patent claim is invalid if the
claimed invention would have been obvious to a person of ordinary skill
in the field \[at the time the application was filed\]\[as of \[insert
date\]\]. The court, however, is charged with the responsibility of
making the determination as to whether a patent claim was obvious based
upon your determination of several factual questions. First, you must
decide the level of ordinary skill in the field that someone would have
had at the time the claimed invention was made. Second, you must decide
the scope and content of the prior art. Third, you must decide what
difference, if any, existed between the claimed invention and the prior
art. Finally, you must determine which, if any, of the following factors
have been established by the evidence:

\[(1) commercial success of a product due to the merits of the claimed
invention\];\]

\[(2) a long felt need for the solution provided by the claimed
invention\];\]

\[(3) unsuccessful attempts by others to find the solution provided by
the claimed invention\[;\]

\[(4) copying of the claimed invention by others\];\]

\[(5) unexpected and superior results from the claimed invention\]\]

\[(6) acceptance by others of the claimed invention as shown by praise
from others in the field or from the licensing of the claimed
invention\];\]

\[(7) other evidence tending to show nonobviousness\];\]

\[(8) independent invention of the claimed invention by others before or
at about the same time as the named inventor thought of it\]; and\]

\[(9) other evidence tending to show obviousness\].\]

[Authorities]{.underline}

35 U.S.C. § 103; *Graham v. John Deere Co.*, 383 U.S. 1 (1966); *KSR
Int'l Co. v. Teleflex, Inc.*, 550 U.S. \_\_\_ (2007); *Ruiz v. A.B.
Chance Co.*, 234 F.3d 654 (Fed. Cir. 2000); *Arkie Lures, Inc. v. Gene
Larew Tackle, Inc.*, 119 F.3d 953, 957 (Fed. Cir. 1997); *Specialty
Composites v. Cabot Corp.*, 845 F.2d 981, 991 (Fed. Cir. 1988);
*Windsurfing Int'l, Inc. v. AMF, Inc.*, 782 F.2d 995, 1000 (Fed. Cir.
1986); *Pentec. Inc. v. Graphic Controls Corp.*, 776 F.2d 309, 313 (Fed.
Cir. 1985). *See Novo Nordisk A/S v. Becton Dickinson & Co.*, 304 F.3d
1216, 1219-20 (Fed. Cir. 2002).

*B.4.3 Validity---The Claims*

**4.3bi SCOPE AND CONTENT OF PRIOR ART**

\[Patent holder\] and \[alleged infringer\] disagree as to whether
\[identify prior art reference(s)\] should be included in the prior art
you use to decide the validity of claims \[ \] of the \[ \] patent. In
order to be considered as prior art to the \[ \] patent, these
references must be reasonably related to the claimed invention of that
patent. A reference is reasonably related if it is in the same field as
the claimed invention or is from another field to which a person of
ordinary skill in the field would look to solve a known problem.

[Authorities]{.underline}

*Graham v. John Deere Co.*, 383 U.S. 1 (1966); *KSR Int'l Co. v.
Teleflex, Inc.*, 550 U.S. \_\_\_ (2007); *Ruiz v. A.B. Chance Co.*, 234
F.3d 654, 664-65 (Fed. Cir. 2000); *Wang Labs. v. Toshiba Corp.*, 993
F.2d 858, 864 (Fed. Cir. 1993).

*B.4.3 Validity---The Claims*

**4.3bii DIFFERENCES OVER THE PRIOR ART**

In reaching your conclusion as to whether or not claim \[ \] would have
been obvious at the time the claimed invention was made, you should
consider any difference or differences between the \[identify prior art
reference(s)\] and the claimed requirements.

[Authorities]{.underline}

*Graham v. John Deere Co.*, 383 U.S. 1 (1966); *Yamanouchi Pharm. Co. v.
Danbury Pharmacal, Inc.*, 231 F.3d 1339, 1343-45 (Fed. Cir. 2000); *In
re Kotzab*, 217 F.3d 1365, 1369 (Fed. Cir. 2000); *Northern Telecom,
Inc. v. Datapoint Corp.*, 908 F.2d 931, 935 (Fed. Cir. 1990).

*B.4.3 Validity---The Claims*

**4.3biii LEVEL OF ORDINARY SKILL**

Several times, in my instructions, I have referred to a person of
ordinary skill in the field of \[identify field\]. It is up to you to
decide the level of ordinary skill in the field of \[identify field\].
You should consider all the evidence introduced at trial in making this
decision, including:

1.  the levels of education and experience of persons working in the
    field;

2.  the types of problems encountered in the field; and

3.  the sophistication of the technology.

\[Patent holder\] contends that the level of ordinary skill in the field
was \[ \]. \[Alleged infringer\] contends that the level of ordinary
skill in the field was \[ \].

[Authorities]{.underline}

*Graham v. John Deere Co.*, 383 U.S. 1 (1966); *Brown & Williamson
Tobacco Corp. v. Philip Morris Inc.*, 229 F.3d 1120, 1125 (Fed. Cir.
2000); *SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp.*, 225 F.3d 1349,
1355 (Fed. Cir. 2000); *Ryko Mfg. Co. v. Nu-Star, Inc.*, 950 F.2d 714,
718-19 (Fed. Cir. 1991).

*B.4.3 Validity---The Claims*

**4.3c INVENTORSHIP**

\[\[Alleged infringer\] can meet its burden of proving that a patent is
invalid by showing that it fails to name all actual inventors and only
the actual inventors. This is known as the "inventorship" requirement.\]

or

\[To obtain correction of the inventors listed on the patent, or to
prove a claim for \[type of state law claim that requires proof of
patent law inventorship\], \[plaintiff\] must show that it is highly
probable that \[s\]he is an actual inventor of the patent.\][^11]

To be an inventor, one must make a significant contribution to the
conception of one or more claims of the patent.[^12] Persons may be
inventors even though they do not physically work together or make the
same type or amount of contribution, or contribute to the subject matter
of each claim of the patent. However, merely helping with
experimentation by carrying out the actual inventor's instructions or
explaining the actual inventor's well-known concepts or the current
state of the art does not make someone an inventor.

[Authorities]{.underline}

35 U.S.C. § 102(f) and 35 U.S.C. § 256; *Pannu v. Iolab Corp*., 155 F.3d
1344, 1349-50 (Fed. Cir. 1998) ("If a patentee demonstrates that
inventorship can be corrected as provided for in Section 256, a district
court must order correction of the patent, thus saving it from being
rendered invalid." *Id*. at 1350.); *Hess v. Advanced Cardiovascular
Sys*., 106 F.3d 976, 980 (Fed. Cir. 1997); *Burroughs Wellcome Co. v.
Barr Lab.*, 40 F.3d 1223, 1227-28 (Fed. Cir. 1994); *Shatterproof Glass
Corp. v. Libbey-Owens Ford Co.*, 758 F.2d 613, 624 (Fed. Cir. 1985).

*B.5. Patent Damages*

#### 5.1 DAMAGES -- BURDEN OF PROOF

I will instruct you about the measure of damages. By instructing you on
damages, I am not suggesting which party should win on any issue. If you
find that \[alleged infringer\] infringed any valid claim of the \[ \]
patent, you must then determine the amount of money damages to be
awarded to \[patent holder\] to compensate it for the infringement.

The amount of those damages must be adequate to compensate \[patent
holder\] for the infringement. A damages award should put the patent
holder in approximately the financial position it would have been in had
the infringement not occurred, but in no event may the damages award be
less than a reasonable royalty. You should keep in mind that the damages
you award are meant to compensate the patent holder and not to punish an
infringer.

\[Patent holder\] has the burden to persuade you of the amount of its
damages. You should award only those damages that \[patent holder\] more
likely than not suffered. While \[patent holder\] is not required to
prove its damages with mathematical precision, it must prove them with
reasonable certainty. \[Patent holder\] is not entitled to damages that
are remote or speculative.

[Authorities]{.underline}

*Dow Chem. Co. v. Mee Indus., Inc.*, 341 F.3d 1370, 1381-82 (Fed. Cir.
2003); *Grain Processing Corp. v. American Maize-Prod. Co.*, 185 F.3d
1341, 1349 (Fed. Cir. 1999); *Maxwell v. J. Baker, Inc.*, 86 F.3d 1098,
1108-09 (Fed. Cir. 1996); *Rite-Hite Corp. v. Kelley Co.*, 56 F.3d 1538,
1545 (Fed. Cir. 1995) (*en banc*).

*B.5. Patent Damages*

**5.2 LOST PROFITS -- GENERALLY**

In this case, \[patent holder\] seeks to recover lost profits for some
of \[alleged infringer\]'s sales of \[infringing product\], and a
reasonable royalty on the rest of \[alleged infringer\]'s sales.

To recover lost profits for infringing sales, \[patent holder\] must
show that but for the infringement there is a reasonable probability
that it would have made sales that \[alleged infringer\] made of the
infringing product. \[Patent holder\] must show the share of \[alleged
infringer\]'s sales that it would have made if the infringing product
had not been on the market.

You must allocate the lost profits based upon the customer demand for
the patented feature of the infringing \[product\] \[method\]. That is,
you must determine which profits derive from the patented invention that
\[alleged infringer\] sells, and not from other features of the
infringing \[product\] \[method\].

[Authorities]{.underline}

35 U.S.C. § 284; *Aro Mfg. Co. v. Convertible Top Co.*, 377 U.S. 476,
502-07 (1964); *Beauregard v. Mega Sys., LLC*, 350 F.3d 1327, 1345-46
(Fed. Cir. 2003); *Central Soya Co. v. George A. Hormel & Co.*, 723 F.2d
1573, 1579 (Fed. Cir. 1983); *Lam, Inc. v. Johns-Mansville Corp.*, 718
F.2d 1056, 1065 (Fed. Cir. 1983).

*B.5. Patent Damages*

**5.3 LOST PROFITS -- FACTORS TO CONSIDER**

\[Patent holder\] is entitled to lost profits if it proves all of the
following:

> \(1\) that there was a demand for the patented \[product\] \[method\]
> \[product produced by the method\];

(2) that there were no non-infringing substitutes, or, if there were,
    the number of the sales made by \[alleged infringer\] that \[patent
    holder\] would have made despite the availability of other
    acceptable non-infringing substitutes. An alternative may be
    considered available as a potential substitute even if it was not
    actually on sale during the infringement period. Factors suggesting
    that the alternative was available include whether the material,
    experience, and know-how for the alleged substitute were readily
    available. Factors suggesting that the alternative was not available
    include whether the material was of such high cost as to render the
    alternative unavailable and whether \[alleged infringer\] had to
    design or invent around the patented technology to develop an
    alleged substitute;

(3) that \[patent holder\] had the manufacturing and marketing capacity
    to make any infringing sales actually made by the infringer and for
    which \[patent holder\] seeks an award of lost profits; and

(4) the amount of profit that \[patent holder\] would have made if
    \[alleged infringer\] had not infringed.

[Authorities]{.underline}

*Ericsson, Inc. v. Harris Corp.*, 352 F.3d 1369, 1377-79 (Fed. Cir.
2003); *Micro Chem., Inc. v. Lextron, Inc.*, 318 F.3d 1119, 1123 (Fed.
Cir. 2003); *Gargoyles, Inc. v. United States*, 113 F.3d 1572, 1577-78
(Fed. Cir. 1997); *Carella v. Starlight Archery*, 804 F.2d 135, 141
(Fed. Cir. 1986); *Gyromat Corp. v. Champion Spark Plug Co.*, 735 F.2d
549, 552 (Fed. Cir. 1984); *Panduit Corp. v. Stahlin Bros. Fibre Works,
Inc.*, 575 F.2d 1152, 1156 (6^th^ Cir. 1978).

*B.5. Patent Damages*

**5.3a LOST PROFITS -- MARKET SHARE**

One way \[patent holder\] may prove the number of sales it would have
made if the infringement had not happened is to prove its share of the
relevant market excluding infringing products. You may award \[patent
holder\] a share of profits equal to that market share.

In deciding \[patent holder\]'s market share, you must decide which
products are in \[patent holder\]'s market. Products are in the same
market if they are sufficiently similar to compete against each other.
Two products are sufficiently similar if one does not have a
significantly higher price than or possess characteristics significantly
different than the other.

[Authorities]{.underline}

*Micro Chem., Inc. v. Lextron, Inc.*, 318 F.3d 1119, 1124 (Fed. Cir.
2003); *Crystal Semiconductor Corp. v. Tritech Microelectronics Int'l,
Inc.*, 246 F.3d 1336, 1354-55 (Fed. Cir. 2001); *State Indus., Inc. v.
Mor-Flo Indus., Inc.*, 883 F.2d 1573, 1580 (Fed. Cir. 1989).

*B.5. Patent Damages*

**5.4 LOST PROFITS -- COLLATERAL SALES**

In this case, \[patent holder\] is seeking profits from sales of \[ x
\], which it contends it would have sold along with \[ y \]. These
products are called collateral products.

To recover lost profits on sales of such collateral products, \[patent
holder\] must prove two things. First, that it is more likely than not
that \[patent holder\] would have sold the collateral products but for
the infringement. Second, a collateral product and the patented product
together must be analogous to components of a single assembly or parts
of a complete machine, or they must constitute a functional unit.

[Authorities]{.underline}

*Rite-Hite Corp. v. Kelley Co.*, 56 F.3d 1538, 1550 (Fed. Cir. 1995)
(*en banc*); *State Indus., Inc. v. Mor-Flo Indus., Inc.*, 883 F.2d
1573, 1580 (Fed. Cir. 1989); *Panduit Corp. v. Stahlin Bros. Fibre
Works, Inc.*, 575 F.2d 1152, 1157-58 (6^th^ Cir. 1978).

*B.5. Patent Damages*

**5.5 LOST PROFITS -- PRICE EROSION**

\[Patent holder\] can recover additional damages if it can show to a
reasonable probability that, if there had been no infringement, \[patent
holder\] would have been able to charge higher prices for some of its
products. In that case, you may also award as additional damages the
amount represented by the difference between the amount of profits that
\[patent holder\] would have made by selling its product at the higher
price and the amount of profits \[patent holder\] actually made by
selling its product at the lower price that \[patent holder\] charged
for its product. This type of damage is referred to as price erosion
damage.

If you find that \[patent holder\] suffered price erosion, you may also
use the higher price in determining \[patent holder\]'s lost profits
from sales lost because of the infringement. In calculating a patentee's
total losses from price erosion, you must take into account any drop in
sales that would have resulted from a higher price.

You may also award as damages the amount of any increase in costs of
\[patent holder\], such as additional marketing costs, caused by
competition from the infringing product.

[Authorities]{.underline}

*Ericsson, Inc. v. Harris Corp.*, 352 F.3d 1369, 1377-79 (Fed. Cir.
2003); *Vulcan Eng'g Co. v. FATA Aluminum, Inc.*, 278 F.3d 1366, 1377
(Fed. Cir. 2002); *Crystal Semiconductor Corp. v. Tritech
Microelectronics Int'l, Inc.*, 246 F.3d 1336, 1357-58 (Fed. Cir. 2001);
*Minco, Inc. v. Combustion Eng'g, Inc.*, 95 F.3d 1109, 1120 (Fed. Cir.
1996); *BIC Leisure Prods., Inc. v. Windsurfing Int'l, Inc.*, 1 F.3d
1214, 1220 (Fed. Cir. 1993); *Kalman v. Berlyn Corp.*, 914 F.2d 1473,
1485 (Fed. Cir. 1990); *Wechsler v. Macke Int. Trade, Inc.,* 486 F. 3d
1286, 1293-94 (Fed. Cir. 2007).

*B.5. Patent Damages*

**5.6 REASONABLE ROYALTY -- ENTITLEMENT**

If \[patent holder\] has not proved its claim for lost profits, or has
proved its claim for lost profits for only a portion of the infringing
sales, then \[patent holder\] should be awarded a reasonable royalty for
all infringing sales for which it has not been awarded lost profits
damages.

[Authorities]{.underline}

35 U.S.C. § 284; *Crystal Semiconductor Corp. v. Tritech
Microelectronics Int'l, Inc.*, 246 F.3d 1336 (Fed. Cir. 2001); *Fromson
v. Western Litho Plate & Supply Co.*, 853 F.2d 1568, 1574 (Fed. Cir.
1998) (*overruled on other grounds*); *Minco, Inc. v. Combustion Eng'g,
Inc.*, 95 F.3d 1109, 1119-20 (Fed. Cir. 1996); *Mahurkar v. C.R. Bard,
Inc.*, 79 F.3d 1572, 1579 (Fed. Cir. 1996); *Rite-Hite Corp. v. Kelley
Co.*, 56 F.3d 1538, 1554 (Fed. Cir. 1995) (*en banc*).

*B.5. Patent Damages*

**5.7 REASONABLE ROYALTY -- DEFINITION**

A royalty is a payment made to a patent holder in exchange for rights to
make, use or sell the claimed invention. A reasonable royalty is the
payment that would have resulted from a negotiation between a patent
holder and the infringer taking place at the time when the infringing
sales first began. In considering the nature of this negotiation, the
focus is on what the expectations of the patent holder and infringer
would have been had they entered into an agreement at that time and
acted reasonably in their negotiations. However, you must assume that
both parties believed the patent was valid and infringed. In addition,
you must assume that patent holder and infringer were willing to enter
into an agreement; your role is to determine what that agreement would
have been. The test for damages is what royalty would have resulted from
the hypothetical negotiation and not simply what either party would have
preferred.

In this trial, you have heard evidence of things that happened after the
infringing sales first began. That evidence can be considered only to
the extent that \[add appropriate limitations on consideration of later
occurring events\]. You may not limit or increase the royalty based on
the actual profits \[alleged infringer\] made.

[Authorities]{.underline}

*Golight, Inc., v. Wal-Mart Stores, Inc.*, 355 F.3d 1327, 1338 (Fed.
Cir. 2004); *Maxwell v. Baker, Inc.*, 86 F.3d 1098, 1108-10 (Fed. Cir.
1996); *Mahurkar v. C.R. Bard, Inc.*, 79 F.3d 1572, 1579-81 (Fed. Cir.
1996); *Rite-Hite Corp. v. Kelley Co.*, 56 F.3d 1538, 1554 (Fed. Cir.
1995) (*en banc*); *Georgia-Pacific Corp. v. United States Plywood
Corp.*, 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970).

*B.5. Patent Damages*

# 5.8 DATE OF COMMENCEMENT -- PRODUCTS[^13]

Damages that \[patent holder\] may be awarded by you commence on the
date that \[alleged infringer\] has both infringed and been notified of
the \[ \] patent: \[use those that apply to this case\]

\[-- \[Patent holder\] and \[alleged infringer\] agree that date was
\[insert date\];\]

> \[-- Since \[patent holder\] sells a product that includes the claimed
> invention but has not marked that product with the patent number, you
> must determine the date that \[alleged infringer\] received actual
> written notice of the \[ \] patent and the specific product alleged to
> infringe;\]
>
> \[-- Since \[patent holder\] \[marks the product\] or \[does not sell
> a product covered by the patent\], then damages begin without the
> requirement for actual notice under the following circumstances:
>
> If the \[ \] patent was granted before the infringing activity began,
> damages should be calculated as of the date you determine that the
> infringement began; or
>
> If the \[ \] patent was granted after the infringing activity began as
> determined by you, damages should be calculated as of \[date patent
> issued\].\]

[Authorities]{.underline}

35 U.S.C. § 287; *Crystal Semiconductor Corp. v. Tritech
Microelectronics Int'l, Inc.*, 246 F.3d 1336 (Fed. Cir. 2001); *Nike
Inc. v. Wal-Mart Stores*, 138 F.3d 1437, 1443-44 (Fed. Cir. 1998);
*Maxwell v. Baker, Inc.*, 86 F.3d 1098, 1108-09 (Fed. Cir. 1996);
*American Med. Sys. v. Medical Eng'g Corp.*, 6 F.3d 1523, 1534 (Fed.
Cir. 1993); *Devices for Med., Inc. v. Boehl*, 822 F.2d 1062, 1066 (Fed.
Cir. 1987).

*C.1 Appendix*

**GLOSSARY**

**Some of the terms in this glossary will be defined in more detail in
the legal instructions you are given. The definitions in the
instructions must be followed and must control your deliberations.**

\[Add any technical terms from the art involved that may be used during
trial and have agreed-upon definitions and delete any of the following
terms which may not be applicable in a particular case.\]

Abstract: A brief summary of the technical disclosure in a patent to
enable the U.S. Patent and Trademark Office and the public to determine
quickly the nature and gist of the technical disclosure in the patent.

Amendment: A patent applicant's change to one or more claims or to the
specification either in response to an office action taken by a Patent
Examiner or independently by the patent applicant during the patent
application examination process.

Anticipation: A situation in which a claimed invention describes an
earlier invention and, therefore, is not considered new and is not
entitled to be patented.

Assignment: A transfer of patent rights to another called an "assignee"
who upon transfer becomes the owner of the rights assigned.

Best Mode: The best way the inventor actually knew to make or use the
invention at the time of the patent application. If the applicant had a
best mode as of the time the application was first filed, it must be set
forth in the patent specification.

Claim: Each claim of a patent is a concise, formal definition of an
invention and appears at the end of the specification in a separately
numbered paragraph. In concept, a patent claim marks the boundaries of
the patent in the same way that a legal description in a deed specifies
the boundaries of land, i.e. similar to a land owner who can prevent
others from trespassing on the bounded property, the inventor can
prevent others from using what is claimed. Claims may be independent or
dependent. An independent claim stands alone. A dependent claim does not
stand alone and refers to one or more other claims. A dependent claim
incorporates whatever the other referenced claim or claims say.

Conception: The complete mental part of the inventive act which must be
capable of proof, as by drawings, disclosure to another, etc.

Continuation Application: A patent application filed during the
examination process of an earlier application which has the same
disclosure as the original application and does not include anything
which would constitute new matter if inserted in the original
application.

Continuation-In-Part (C-I-P) Application: A patent application filed
during the application process of an earlier application which repeats
some or all of the earlier application and adds matter not disclosed in
the earlier application to support the addition of new patent claims.

Drawings: The drawings are visual representations of the claimed
invention contained in a patent application and issued patent, and
usually include several figures illustrating various aspects of the
claimed invention.

Elements: The required parts of a device or the required steps of a
method. A device or method infringes a patent if it contains each and
every requirement of a patent claim.

Embodiment: A product or method that contains the claimed invention.

Enablement: A description of the invention that is sufficient to enable
persons skilled in the field of the invention to make and use the
invention. The specification of the patent must contain such an enabling
description.

Examination: Procedure before the U.S. Patent and Trademark Office
whereby a Patent Examiner reviews the filed patent application to
determine if the claimed invention is patentable.

Filing Date: Date a patent application, with all the required sections,
has been submitted to the U.S. Patent and Trademark Office.

Infringement: Violation of a patent occurring when someone makes, uses
or sells a patented invention, without permission of the patent holder,
within the United States during the term of the patent. Infringement may
be direct, by inducement, or contributory. Direct infringement is
making, using or selling the patented invention without permission.
Inducing infringement is intentionally causing another to directly
infringe a patent. Contributory infringement is offering to sell or
selling an item that is a significant part of the invention, so that the
buyer directly infringes the patent. To be a contributory infringer one
must know that the part being offered or sold is designed specifically
for infringing the patented invention and is not a common object
suitable for non-infringing uses.

Limitation: A required part of an invention set forth in a patent claim.
A limitation is a requirement of the invention. The word "limitation" is
often used interchangeably with the word "requirement."

Nonobviousness: One of the requirements for securing a patent. To be
valid, the subject matter of the invention must not have been obvious to
a person of ordinary skill in the field of the invention at the time of
the earlier of the filing date of the patent application or the date of
invention.

Office Action: A written communication from the Patent Examiner to the
patent applicant in the course of the application examination process.

Patent: A patent is an exclusive right granted by the U.S. Patent and
Trademark Office to an inventor to prevent others from making, using or
selling an invention for a term of 20 years from the date the patent
application was filed (or 17 years from the date the patent issued).
When the patent expires, the right to make, use or sell the invention is
dedicated to the public. The patent has three parts, which are a
specification, drawings and claims. The patent is granted after
examination by the U.S. Patent and Trademark Office of a patent
application filed by the inventor which has these parts, and this
examination is called the prosecution history.

Patent and Trademark Office (PTO): An administrative branch of the U.S.
Department of Commerce that is charged with overseeing and implementing
the federal laws of patents and trademarks. It is responsible for
examining all patent applications and issuing all patents in the United
States.

Prior Art: Previously known subject matter in the field of a claimed
invention for which a patent is being sought. It includes issued
patents, publications, and knowledge deemed to be publicly available
such as trade skills, trade practices and the like.

Prosecution History: The prosecution history is the complete written
record of the proceedings in the PTO from the initial application to the
issued patent. The prosecution history includes the office actions taken
by the PTO and the amendments to the patent application filed by the
applicant during the examination process.

Reads On: A patent claim "reads on" a device or method when each
required part (requirement) of the claim is found in the device or
method.

Reduction to Practice: The invention is "reduced to practice" when it is
sufficiently developed to show that it would work for its intended
purpose.

Requirement: A required part or step of an invention set forth in a
patent claim. The word "requirement" is often used interchangeably with
the word "limitation."

Royalty: A royalty is a payment made to the owner of a patent by a
non-owner in exchange for rights to make, use or sell the claimed
invention.

Specification: The specification is a required part of a patent
application and an issued patent. It is a written description of the
invention and of the manner and process of making and using the claimed
invention.

Number range CHAPTER*C.2. Appendix*

**COMMENTS REGARDING USE OF SAMPLE VERDICT FORM**

The following sample verdict form is provided for guidance in preparing
an appropriate special verdict form tailored for your specific case. The
sample is for a hypothetical case in which the patent holder alleges
direct and indirect infringement of a single claim of one patent and
seeks a combination of lost profits and a reasonable royalty for the
allegedly infringing sales. The alleged infringer raises a number of
invalidity defenses. No issue is raised, however, as to the conception
date of the claimed invention. The issue of willfulness has not been
bifurcated.

The form requires the jury to make specific findings on the bases for
the affirmative defenses of "anticipation" and "statutory bars."

The form also requires the jury to make factual determinations
underlying a conclusion of "obviousness" or "nonobviousness." It is
expected that these issues will be presented to the jury as specifically
as possible. For example, if the only dispute between the parties is
whether a particular reference is within the "scope and content" of the
prior art, that is the only question on that *Graham* factor that should
be presented to the jury. As another example, if the only factual
dispute between the parties on the "differences between the prior art
and the claimed invention" is whether a prior art reference discloses a
particular claim limitation, that is the only issue that should be
presented to the jury on that *Graham* factor.

This form also provides two alternative section 11's on obviousness. One
asks the jury to only answer the underlying factual questions. The other
permits the jury to give an advisory verdict on the ultimate question of
obviousness. It must be remembered, however, that the ultimate question
of obviousness is a question of law for the court. *KSR Intern, Co. v.
Teleflex, Inc.*, 127 S.Ct. 1727, 1745 (2007)("The ultimate judgment of
obviousness is a legal determination."); *see Dippin\' Dots, Inc. v.
Mosey*, 476 F.3d 1337, 1343 (Fed. Cir. 2007). Both alternatives are
designed to focus the parties and the court on the factual disputes on
the obviousness question. For example, the form requires that each party
specify exactly what it contends constitutes the scope and content of
the prior art. Although trial courts have often permitted the jury to
reach the final conclusion of obviousness without specifying its
underlying factual determinations, such an approach is not recommended.
The verdict form should require the jury\'s finding on each factual
issue so that the trial judge may make the final determination on the
obviousness question. As Judge Michel pointed out in his dissent in
*McGinley v. Franklin Sports, Inc.*, 262 F.3d 1339 (Fed. Cir. 2001):

> The issue presented in this appeal derives from the common, if
> unfortunate, practice of allowing the jury to render a general verdict
> on the ultimate legal conclusion of obviousness without requiring
> express findings on the underlying factual issues through a special
> verdict or special interrogatories under Fed. R. Civ. P. 49.
> Nevertheless, since the inception of our court, we have recognized
> that a court may submit this legal question to a jury and that doing
> so by general verdict rather than by Rule 49 is not ordinarily an
> abuse of discretion. We have emphasized, however, that there is no
> question that the judge must remain the ultimate arbiter on the
> question of obviousness.\")

*Id*. at 1358 (internal citations and quotation marks omitted). The fact
that the verdict form allows the jury to give an advisory conclusion on
obviousness should not be construed as suggesting that the court defer
to the jury's ultimate determination on obviousness. The law is clear
that the ultimate question is a legal one for the court.

*C.3. Appendix*

**SAMPLE VERDICT FORM**

When answering the following questions and filling out this Verdict
Form, please follow the directions provided throughout the form. Your
answer to each question must be unanimous. Some of the questions contain
legal terms that are defined and explained in detail in the Jury
Instructions. Please refer to the Jury Instructions if you are unsure
about the meaning or usage of any legal term that appears in the
questions below.

We, the jury, unanimously agree to the answers to the following
questions and return them under the instructions of this court as our
verdict in this case.

**FINDINGS ON INFRINGEMENT CLAIMS**

(The questions regarding infringement should be answered regardless of
your findings with respect to the validity or invalidity of the patent.)

**A. Direct Infringement**

1\. Has Patent Holder proven that it is more likely than not that every
requirement of claim 1 of its patent is included in Alleged Infringer's
accused product?

Yes No \_\_\_\_\_

If your answer to question 1 is \"yes,\" go to question 3. If your
answer to question 1 is \"no,\" go to question 2.

**B. Infringement Under the Doctrine of Equivalents**

2\. Has Patent Holder proven that it is more likely than not that the
accused product includes parts that are identical or equivalent to every
requirement of claim 1 of Patent Holder\'s patent? In other words, for
any requirement that is not literally found in the Alleged Infringer\'s
accused product, does the accused product have an equivalent part to
that requirement?

Yes No \_\_\_\_\_

**C. Contributory Infringement**

3\. Has Patent Holder proven that it is more likely than not: (i) that
Direct Infringer infringed claim 1 of Patent Holder\'s patent; (ii) that
Alleged Infringer supplied an important component of the infringing part
of the product; (iii) that the component was not a common component
suitable for non-infringing use; and (iv) that Alleged Infringer
supplied the component with knowledge of the patent and knowledge that
the component was especially made or adapted for use in an infringing
manner?

Yes No \_\_\_\_\_

**D. Inducing Infringement**

4\. Has Patent Holder proven that it is more likely than not: (i) that
Direct Infringer infringed claim 1 of Patent Holder's patent; (ii) that
Alleged Infringer took action that actually induced that infringement by
Direct Infringer; (iii) that Alleged Infringer was aware of the patent;
and (iv) that Alleged Infringer knew or should have known that taking
such action would induce direct infringement?

Yes No \_\_\_\_\_

**E. Willful Infringement**

5\. Has Patent Holder proven that it is highly probable that Alleged
Infringer infringed claim 1 of Patent Holder's patent with actual
knowledge of the patent and with no reasonable basis for believing that
its product did not infringe or that the patent claim was invalid or
unenforceable?

Yes No \_\_\_\_\_

**FINDINGS ON INVALIDITY DEFENSES**

(The questions regarding invalidity should be answered regardless of
your findings with respect to infringement.)

**A. Written Description Requirement**

6\. Has Alleged Infringer proven that it is highly probable that claim 1
of Patent Holder\'s patent does not contain an adequate written
description of the claimed invention?

Yes No

**B. Enablement**

7\. Has Alleged Infringer proven that it is highly probable that claim 1
of Patent Holder\'s patent does not contain a description of the claimed
invention that is sufficiently full and clear to enable persons of
ordinary skill in the field to make and use the invention?

Yes No

**C. Best Mode**

8\. Has Alleged Infringer proven that it is highly probable that the
patent does not disclose what the inventor believed was the best way to
carry out the claimed invention at the time the patent application was
filed?

Yes No

**D. Anticipation**

9\. Has Alleged Infringer proven that it is highly probable that claim 1
of Patent Holder\'s patent was \"anticipated,\" or, in other words, not
new?

Yes No

\[If the answer is \"yes,\" check any reason below that is applicable:

The claimed invention was already publicly known or publicly used by
others in the United States before the date of conception of the claimed
invention.

The claimed invention was already patented or described in a printed
publication somewhere in the world before the date of conception.

The claimed invention was already made by someone else in the United
States before the date of conception and that other person had not
abandoned the invention or kept it secret.

The claimed invention was already described in another issued U.S.
patent or published U.S. patent application that was based on a patent
application filed before the date of conception.

The named inventor did not invent the claimed invention but instead
learned of the claimed invention from someone else.

The named inventor was not the first inventor of the claimed
invention.\]

**E. Statutory Bar**

10\. Has Alleged Infringer proven that it is highly probable that claim
1 of Patent Holder's patent was not filed within the time required by
law?

Yes No

If the answer is \"yes,\" check any reason below that is applicable:

The claimed invention was already patented or described in a printed
publication somewhere in the world at least one year before the filing
date of the patent application.

The claimed invention was already being openly used in the United States
at least one year before the filing date of the patent application and
that use was not primarily an experimental use to test whether the
invention worked for its intended purpose which was controlled by the
inventor.

A device or method using the claimed invention was sold or offered for
sale in the United States and the claimed invention was ready for
patenting at least one year before the filing date of the patent
application and that offer or sale was not primarily for experimental
purposes to test whether the invention worked for its intended purpose
and which was controlled by the inventor.

Patent Holder had already obtained a patent on the claimed invention in
a foreign country before the original U.S. application, and the foreign
application was filed at least one year before the U.S. application.

**F. Obviousness**

\[Alternative 1 -- Jury decides underlying factual issues only\]

11\. The ultimate legal conclusion on the obviousness question will be
made by the court. However, in order for the court to do so, you must
answer the following preliminary factual questions:

> a\. What was the level of ordinary skill in the field that someone
> would have had at the time the claimed invention was made? (check the
> applicable answer)
>
> \_\_\_\_\_\_set forth Alleged Infringer's contention, e.g., an
> individual with at least 3 years of experience in both furniture
> design and manufacture\]
>
> \[set forth Patent Holder's contention, e.g., anyone who has worked in
> the field of furniture design or manufacture for at least two years\]

\[other, specify \]

> b\. What was the scope and content of the prior art at the time of the
> claimed invention? (check the applicable answer)
>
> \[set forth what the Alleged Infringer has offered as the invalidating
> prior art, e.g., '123 patent on fixed sitting device with four legs,
> general knowledge in field of industrial design that a horizontal
> surface may be held parallel to the ground using three legs and common
> knowledge that a person can easily move an object weighing under 25
> pounds\]
>
> \[set forth what the Patent Holder asserts was within the scope and
> content of the prior art, e.g., '123 patent on fixed sitting device
> with four legs\]

\[other, specify \]

> c\. What difference, if any, existed between the claimed invention and
> the prior art at the time of the claimed invention?

. \[set forth the Alleged Infringer's contention as to the difference,
e.g., no difference between scope of invention and what is known in
prior art\]

\[set forth the Patent Holder's contention as to the difference, e.g.,
only 3 legs on a sitting device and portability\]

> \[other, specify \]
>
> d\. Which of the following factors has been established by the
> evidence with respect to the claimed invention: (check those that
> apply)\[verdict form should list only those factors for which a *prima
> facie* showing has been made\]:
>
> commercial success of a product due to the merits of the claimed
> invention
>
> a long felt need for the solution that is provided by the claimed
> invention
>
> unsuccessful attempts by others to find the solution that is provided
> by the claimed invention

copying of the claimed invention by others

unexpected and superior results from the claimed invention

acceptance by others of the claimed invention as shown by

praise from others in the field or from the licensing of the claimed

invention

> independent invention of the claimed invention by others before or at
> about the same time as the named inventor thought of it
>
> \[ other factor(s) indicating obviousness or nonobviousness---describe
> the factor(s) \]

\[Alternative 2 - Jury decides underlying factual issues and renders
advisory verdict on obviousness\]

11\. The ultimate conclusion that must be reached on the obviousness
question is whether Alleged Infringer has proven that it is highly
probable that the claimed invention would have been obvious to a person
of ordinary skill in the field at the time the patent application was
filed. In order to properly reach a conclusion the following preliminary
questions must be answered:

> a\. What was the level of ordinary skill in the field that someone
> would have had at the time the claimed invention was made? (check the
> applicable answer)
>
> \[set forth Alleged Infringer's contention, e.g., an individual with
> at least 3 years of experience in both furniture design and
> manufacture\]
>
> \[set forth Patent Holder's contention, e.g., anyone who has worked in
> the field of furniture design or manufacture for at least two years\]

\[other, specify \]

> b\. Was \[disputed reference\] within the scope and content of the
> prior art at the time of the claimed invention? (check only if
> reference was within the scope and content of the prior art)

\[set forth the prior art reference \[alleged infringer\] has offered as
prior art that the \[patent holder\] disputes as being in the scope and
content of the prior art. If there is more than one reference in
dispute, each disputed reference should be listed separately.\]

> c\. What difference, if any, existed between the claimed invention and
> the prior art at the time of the claimed invention?

. \[set forth the Alleged Infringer's contention as to the difference,
e.g., no difference between scope of invention and what is known in
prior art\]

\[set forth the Patent Holder's contention as to the difference, e.g.,
only 3 legs on a sitting device and portability\]

> \[other, specify \]
>
> d\. Which of the following factors has been established by the
> evidence with respect to the claimed invention: (check those that
> apply)\[verdict form should list only those factors for which a *prima
> facie* showing has been made\]:
>
> commercial success of a product due to the merits of the claimed
> invention
>
> a long felt need for the solution that is provided by the claimed
> invention
>
> unsuccessful attempts by others to find the solution that is provided
> by the claimed invention

copying of the claimed invention by others

> unexpected and superior results from the claimed invention

acceptance by others of the claimed invention as shown by

praise from others in the field or from the licensing of the claimed

invention

> independent invention of the claimed invention by others before or at
> about the same time as the named inventor thought of it
>
> \[ other factor(s) indicating obviousness or nonobviousness---describe
> the factor(s) \]

After consideration of the answers to the preliminary questions above,
do you find that the Alleged Infringer has proven that it is highly
probable that the claim of Patent Holder's patent would have been
obvious to a person of ordinary skill in the field at the time the
patent application was filed?

Yes No

**G. Inventorship**

12\. Has Alleged Infringer proven that it is highly probable that Patent
Holder's patent fails to meet the requirement to name all actual
inventors and only the actual inventors?

Yes No

**FINDINGS ON DAMAGES (IF APPLICABLE)**

If you answered question 1, 2, 3 or 4 \"yes\" and questions 6, 7, 8, 9,
10, 11 and 12 \"no,\" proceed to answer the remaining questions. If you
did not so answer, do not answer the remaining questions and proceed to
check and sign the verdict form.

13\. What lost profits, if any, did Patent Holder show it more likely
than not suffered as a result of sales that it would with reasonable
probability have made but for Alleged Infringer's infringement?

\$

14\. For those infringing sales for which Patent Holder has not proved
its entitlement to lost profits, what amount has it proved it is
entitled to as a reasonable royalty?

\$

You have now reached the end of the verdict form and should review it to
ensure it accurately reflects your unanimous determinations. The
Presiding Juror should then sign and date the verdict form in the spaces
below and notify the Security Guard that you have reached a verdict. The
Presiding Juror should retain possession of the verdict form and bring
it when the jury is brought back into the courtroom.

  ---------------------------------------- -----------------------------------------------------------
  DATED:                                   By:\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_
  \_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_, 20   Presiding Juror

                                           
  ---------------------------------------- -----------------------------------------------------------

[^1]: Consistent with the policy of these instructions not to propose
    instructions on issues that arise only rarely, we have not proposed
    instructions on international infringement under sections 35 U.S.C.
    271(f) and (g). If those issues arise, the reference in this
    instruction to infringement "within the United States" should be
    modified accordingly. See *Microsoft Corp. v. AT&T Corp.*, 127 S.Ct.
    1746 (2007); *Bayer AG v. Housey Pharms. Inc.*, 340 F.3d 1367 (Fed.
    Cir. 2003).

[^2]: If this instruction is applicable in a given case, then the court
    should instruct the jury that if \[alleged infringer\] has offered
    evidence sufficient to show that the accused \[product\] \[method\]
    is in the prior art, the burden shifts to the \[patent holder\] to
    prove that what it attempts to cover under the doctrine of
    equivalents is not in the prior art or would not have been obvious
    from the prior art. *See Fiskares, Inc. v. Hunt Mfg. Co*., 221 F.3d
    1318, 1323 (Fed. Cir. 2000); *Ultra-Tex Surfaces, Inc. v. Hill Bros.
    Chem. Co.*, 204 F.3d 1360, 1364-66 (Fed. Cir. 2000); *Streamfeeder,
    LLC v. Sure-Feed Systems, Inc.*, 175 F.3d 974, 981-84 (Fed. Cir.
    1999).

[^3]: If a claim at issue is a method claim with a limitation written in
    "step-plus-function" format, this instruction should be modified
    accordingly, for example, substituting "acts" for "structure."

[^4]: There is an important difference between what can be an equivalent
    under § 112(6) and what can be an equivalent under the doctrine of
    equivalents. An equivalent structure or act under § 112(6) cannot
    embrace technology developed after the issuance of the patent
    because the literal meaning of a claim is fixed upon its issuance.
    *Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc.*, 145
    F.3d 1303, 1310 (Fed. Cir. 1998); *Al-Site Corp. v. VSI Int'l,
    Inc.*, 174 F.3d 1308, 1320 (Fed. Cir. 1999). Although new matter
    cannot be added to a patent application after it has been filed,
    current Federal Circuit law nevertheless uses the patent issuance
    date, as opposed to the effective filing date, to distinguish what
    constitutes an "after arising equivalent." An after arising
    equivalent infringes, if at all, under the doctrine of equivalents
    and could infringe under the doctrine of equivalents without
    infringing literally under § 112(6). Furthermore, under § 112(6) the
    accused device must perform the identical function as recited in the
    claim element while the doctrine of equivalents may be satisfied
    when the function performed by the accused device is only
    substantially the same. *Al-Site*, 174 F3d. at 1320-21.

[^5]: These instructions are written for the usual case in which the
    alleged infringer is accused of contributing to or inducing direct
    infringement by another. They are not appropriate for cases in which
    the alleged infringer induced another to take some action that
    itself only contributed to infringement. Nor are they appropriate
    for cases in which the patent claim requires two or more people to
    act in concert in order to infringe. The Committee expresses no
    opinion as to whether such conduct gives rise to a legally viable
    assertion of contributory or inducement of infringement.

[^6]: This bracketed language should ordinarily be included as the
    Federal Circuit has made clear that, in ordinary circumstances,
    willfulness will depend on an infringer\'s prelitigation conduct.
    *In re Seagate Technology, LLC*, 2007 U.S. App. LEXIS 19768 (Fed.
    Cir. Aug. 20, 2007).

[^7]: This bracketed language should only be included if the alleged
    infringer relies on advice of counsel. There is no affirmative
    obligation to obtain opinion of counsel. *In re Seagate Technology,
    LLC*, 2007 U.S. App. LEXIS 19768 (Fed. Cir. Aug. 20, 2007).

[^8]: Where a claim is the result of a continuation-in-part application
    and the priority date is disputed, this language will need to be
    revised to reflect the concept of effective filing date.

[^9]: This instruction provides the jury with an instruction on how to
    analyze the obviousness question and reach a conclusion on it in the
    event that the Court decides to allow the jury to render an advisory
    verdict on the ultimate question of obviousness. However, the court,
    not the jury, should make the legal conclusion on the obviousness
    question based on underlying factual determinations made by the
    jury. *KSR Intern, Co. v. Teleflex, Inc.,* 127 S.Ct. 1727, 1745
    (2007)("The ultimate judgment of obviousness is a legal
    determination."); *see Dippin\' Dots, Inc. v. Mosey*, 476 F.3d 1337,
    1343 (Fed. Cir. 2007). The introductory comment to the sample
    verdict form discusses further the functions of the judge and jury
    in determining obviousness.

[^10]: This instruction provides the jury with an instruction on the
    underlying factual questions it must answer to enable the court to
    make the ultimate legal determination of the obviousness question.
    The court, not the jury, should make the legal conclusion on the
    obviousness question based on underlying factual determinations made
    by the jury. *KSR Intern, Co. v. Teleflex, Inc.,* 127 S.Ct. 1727,
    1745 (2007)("The ultimate judgment of obviousness is a legal
    determination."); *see Dippin\' Dots, Inc. v. Mosey*, 476 F.3d 1337,
    1343 (Fed. Cir. 2007). It is anticipated that these factual issues
    will be presented to the jury as specifically as possible. For
    example, if the only dispute between the parties is whether a
    particular reference is with the \"scope and content\" of the prior
    art, that is the only *Graham* factor that should be presented to
    the jury. As another example, if the only factual dispute between
    the parties on the \"difference between the prior art and the
    claimed invention\" is whether a prior art reference discloses a
    particular claim limitation, that is the only issue that should be
    presented to the jury on that *Graham* factor. The introductory
    comment to the sample verdict form discusses further the functions
    of the judge and jury in determining obviousness.

[^11]: The former paragraph is appropriate where the defendant in an
    infringement suit claims that the patent is invalid for failure to
    name the correct inventors. The latter paragraph is appropriate when
    a plaintiff brings state-law claims that depend on the plaintiff
    proving his or her status as an inventor. *Shum v. Intel Corp.*,
    2007 WL 2404718 (Fed. Cir. Aug. 24, 2007). Those claims must apply
    the federal patent law standard. *Univ. of Colorado Found. v.
    American Cyanamid*, 196 F.3d 1366 (Fed. Cir. 1999). Fraud and unjust
    enrichment claims are examples, if the basis of the claim is that
    the plaintiff in fact invented the subject matter of the patent.

[^12]: Alleged infringer, in order to meet its burden of proof, must
    present corroborating evidence of a contemporaneous disclosure that
    would enable one skilled in the field to make the claimed invention.
    Corroborating evidence may take many forms and is evaluated under a
    rule of reason analysis. The court should tailor instructions to the
    specific facts of the case. *See* *Linear Tech. Corp. v. Impala
    Linear Corp.*, 379 F.3d 1311 (Fed. Cir. 2004); *Univ. of Colo.
    Found., Inc. v. Am. Cyanimid Co.*, 342 F.3d 1298 (Fed. Cir. 2003).

[^13]: This instruction may be used when the claim is an apparatus or
    product claim and \[alleged infringer\] is a direct infringer.
    Different rules may apply if the claim is a method claim or
    \[alleged infringer\] is an inducer or contributory infringer.