Case 3:17-cv-05659-WHA Document 275-5 Filed 11/27/18 Page 1 of 36
`
` 
`
` 
`
` 
`
` 
`
` 
`
` 
`
`Exhibit 5
`
`

`

`Case 3:17-cv-05659-WHA Document 275-5 Filed 11/27/18 Page 2 of 36
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`OPTIS WIRELESS TECH., LLC, et al.,
`
`
`
`
`
`
`
`Plaintiffs,
`
`Civil Action No. 2:17-cv-123-JRG-RSP
`
`v.
`
`HUAWEI TECHS. CO. LTD., et al.,
`
`Defendants.
`
`
`
`
`
`
`
`FINAL JURY INSTRUCTIONS
`
`
`
`
`
`
`Members of the jury:
`
`You have now heard the evidence in this case, and I will now instruct you on the law that
`
`you must apply. Each of you are going to have your own printed copy of these final jury
`
`instructions that I’m giving you now, so there’s really no need for you to take notes unless you just
`
`particularly want to.
`
`It’s your duty to follow the law as I give it to you. On the other hand, Ladies, as I’ve said
`
`previously, you, the jury, are the sole judges of the facts in this case. Do not consider any statement
`
`that I have made in the course of the trial or make during these instructions as an indication to you
`
`that I have any opinion about the facts in this case.
`
`You’re about to hear closing arguments from the attorneys. Statements and arguments of
`
`the attorneys, I remind you, are not evidence, and they are not instructions on the law. They’re
`
`intended only to assist the jury in understanding the evidence and the parties’ contentions.
`
`1
`
`

`

`Case 3:17-cv-05659-WHA Document 275-5 Filed 11/27/18 Page 3 of 36
`
`A verdict form has been prepared for you. You are to take this verdict form with you to the
`
`jury room; and when you have reached a unanimous decision or agreement as to the verdict, you’re
`
`to have your foreperson fill in the blanks in the verdict form, date it, and sign it.
`
`Answer each question in the verdict form from the facts as you find them to be. Do not
`
`decide who you think should win the case and then answer the questions to reach that result. Again,
`
`your answers and your verdict must be unanimous.
`
`In determining whether any fact has been proven in this case, you may, unless otherwise
`
`instructed, consider the testimony of all the witnesses, regardless of who may have called them,
`
`and you may consider the effect of all the exhibits received and admitted into evidence, regardless
`
`of who may have produced or presented them. You, the jurors, are the sole judges of the credibility
`
`of each and every witness and the weight and effect to be given to the evidence in this case.
`
`As I’ve told you previously, the attorneys in this case are acting as advocates for their
`
`competing parties and their competing claims, and they have a duty to object when they believe
`
`evidence is offered that should not be admitted under the rules of the Court.
`
`In that case, when the Court has sustained an objection to a question addressed to a witness,
`
`you are to disregard the question entirely, and you may not draw any inferences from its wording
`
`or speculate about what the witness would have said if I had permitted them to answer the question.
`
`If, on the other hand, the objection was overruled, then you’re to treat the answer to the question
`
`and the question itself just as if no objection had been made; that is, like any other question and
`
`answer.
`
`Now, at times during the trial, it was necessary for the Court to talk to the lawyers here at
`
`the bench or outside of your hearing when you were in the jury room. This happens because during
`
`a trial, there are things that sometimes come up that do not involve the jury. You should not
`
`2
`
`

`

`Case 3:17-cv-05659-WHA Document 275-5 Filed 11/27/18 Page 4 of 36
`
`speculate, Ladies, about what was said during such discussions that took place outside of your
`
`presence.
`
`Now, there are two types of evidence that you may consider in properly finding the truth
`
`as to the facts in this case. One is direct evidence, such as the testimony of an eyewitness. The
`
`other is indirect or circumstantial evidence; that is, the proof of a chain of circumstances that
`
`indicates the existence or nonexistence of certain other facts. As a general rule, you should know
`
`that the law makes no distinction between direct and circumstantial evidence, but simply requires
`
`that you, the jury, find the facts based on the evidence presented, both direct and circumstantial.
`
`The parties have stipulated or agreed to some facts in the case. A list of the stipulations has
`
`been included in your juror notebooks. When the lawyers for both sides stipulate as to the
`
`existence of a fact, you must, unless otherwise instructed, accept the stipulation as evidence and
`
`regard the fact as proven.
`
`Certain testimony in the case has been presented to you through depositions. A deposition
`
`is the sworn, recorded answers to questions asked to a witness in advance of the trial. If a witness
`
`cannot be present to testify in person, then the witness’s testimony may be presented under oath in
`
`the form of a deposition. As I told you earlier, before the trial, the attorneys representing the
`
`parties in this case questioned these deposition witnesses under oath. At that time, a court reporter
`
`was present and recorded their sworn testimony. Deposition testimony is entitled to the same
`
`consideration by you, the jury, as testimony given by a witness in person from the witness stand
`
`in open court. Accordingly, you should judge the credibility and importance of the deposition
`
`testimony to the best of your ability, just as if the witness had testified before you in open court.
`
`3
`
`

`

`Case 3:17-cv-05659-WHA Document 275-5 Filed 11/27/18 Page 5 of 36
`
`While you should consider only the evidence in this case, Ladies, you should understand
`
`that you are permitted to draw such reasonable inferences from the testimony and the exhibits as
`
`you feel are justified in the light of common experience.
`
`In other words, you may make deductions and reach conclusions that reason and common
`
`sense lead you to draw from the facts that have been established by the testimony and the evidence
`
`in this case. However, you should not base your decision on any evidence not presented by the
`
`parties in open court during the trial of this case, including your own personal experiences.
`
`Now, unless I instruct you otherwise, you may properly determine that the testimony of a
`
`single witness is sufficient to prove any fact, even if a greater number of witnesses may have
`
`testified to the contrary if after considering all of the other evidence you believe that single witness.
`
`When knowledge of a technical subject may be helpful to the jury, a person who has special
`
`training and experience in that technical field, called an expert witness, is permitted to state his or
`
`her opinions on those technical matters to the jury. However, member of the jury, you’re not
`
`required to accept those opinions. As with any other witness, it is solely up to you to decide who
`
`you believe and who you don’t believe and whether or not you want to rely on their testimony.
`
`Now, certain exhibits have been shown to you during the trial that were illustrations. We
`
`call these types of exhibits demonstrative exhibits or sometimes just demonstratives for short.
`
`Demonstrative exhibits are a party’s description, picture, or model to describe something involved
`
`in this trial. If your recollection of the evidence differs from the demonstratives, you should rely
`
`on your recollection. Demonstrative exhibits are sometimes called jury aids. The demonstrative
`
`is not itself evidence, but the witness’s testimony during which they use the demonstrative is
`
`evidence.
`
`4
`
`

`

`Case 3:17-cv-05659-WHA Document 275-5 Filed 11/27/18 Page 6 of 36
`
`In any legal action, facts must be proven by a required amount of evidence known as the
`
`burden of proof. The burden of proof in this case is on Plaintiff for some issues, and it is on
`
`Defendants for other issues. There are two burdens of proof that you will apply in this case, the
`
`preponderance of the evidence and clear and convincing evidence.
`
`The Plaintiffs in this case, Optis Wireless Technology, LLC, PanOptis Patent Management,
`
`LLC, and Optis Cellular Technology, LLC, who I will refer to simply as the Plaintiffs or PanOptis,
`
`have the burden of proving patent infringement by a preponderance of the evidence. PanOptis also
`
`has the burden of proving willful patent infringement by a preponderance of the evidence.
`
`PanOptis also has the burden of proving damages for any patent infringement by a preponderance
`
`of the evidence.
`
`A preponderance of the evidence means evidence that persuades you that a claim is more
`
`probably true than not true. Sometimes this is talked about as being the greater weight and degree
`
`of credible testimony.
`
`The Defendants in this case, Huawei Device USA, Inc. and Huawei Device (Shenzhen)
`
`Co. Ltd., who I will refer to collectively as Huawei or Defendants, have the burden of proving
`
`patent invalidity by clear and convincing evidence. Clear and convincing evidence means evidence
`
`that produces in your mind an abiding conviction that the truth of the party’s factual contentions
`
`are highly probable. Although proof to an absolute certainty is not required, the clear and
`
`convincing evidence standard requires a greater degree of persuasion than is necessary for the
`
`preponderance of the evidence standard. If the proof establishes in your mind an abiding
`
`conviction in the truth of the matter, then the clear and convincing evidence standard has been met.
`
`These standards are different from what you may have learned about in criminal
`
`proceedings where a fact is proven beyond a reasonable doubt. On a scale of the various standards
`
`5
`
`

`

`Case 3:17-cv-05659-WHA Document 275-5 Filed 11/27/18 Page 7 of 36
`
`of proof, as you move from the preponderance of the evidence, where the proof need only be
`
`sufficient to tip the scales in favor of the party proving the fact, to at the other end beyond a
`
`reasonable doubt, where the fact must be proven to a very high degree of certainty, you may think
`
`of clear and convincing evidence as being between those two standards.
`
`In determining whether any fact has been proved by a preponderance of the evidence or by
`
`clear and convincing evidence, you may, unless otherwise instructed, consider the stipulations, the
`
`testimony of all the witnesses, regardless of who called them, and all the exhibits received into
`
`evidence during the trial, regardless of who may have produced them.
`
`As I did at the start of the case, I will first give you a summary of each side’s contentions
`
`in this case. I will then provide you with detailed instructions on what each side must prove to win
`
`on each of its contentions.
`
`As I previously told you, this is an action for patent infringement. The case concerns five
`
`separate United States patents:
`
`• United States Patent No. 6,604,216, which we have referred to throughout the trial
`
`as the ’216 Patent;
`
`• United States Patent No. 7,769,238, which we have referred to throughout the trial
`
`as the ’238 Patent;
`
`• United States Patent No. 8,208,569, which we have referred to throughout the trial
`
`as the ’569 Patent;
`
`• United States Patent No. 8,385,284, which we have referred to throughout the trial
`
`as the ’284 Patent; and
`
`• United States Patent No. 8,437,293, which we have referred to throughout the trial
`
`as the ’293 Patent.
`
`6
`
`

`

`Case 3:17-cv-05659-WHA Document 275-5 Filed 11/27/18 Page 8 of 36
`
`I will refer to these patents as the “patents-in-suit” or the “asserted patents.” In so doing, I
`
`am referring to all five of them collectively. PanOptis contends that Huawei directly infringed the
`
`following claims of the patents-in-suit:
`
`• Claim 1 of the ’216 Patent;
`
`• Claim 1 of the ’238 Patent;
`
`• Claims 11 and 17 of the ’569 Patent;
`
`• Claim 1 of the ’284 Patent; and
`
`• Claim 14 of the ’293 Patent.
`
`These are the “asserted claims.”
`
`PanOptis seeks money damages from Huawei for allegedly infringing all of the asserted
`
`claims by making, using, selling, and offering for sale within the United States, and/or importing
`
`into the United States, products that PanOptis argues are covered by those claims.
`
`For the ’216, ’569, ’284, and ’293 Patents, Huawei’s Accused Products are those listed
`
`Exhibit A that is attached to these instructions. For the ’238 Patent, Huawei’s Accused Products
`
`are those listed in Exhibit B that is attached to these instructions. Huawei denies that it has
`
`infringed any asserted claim of the asserted patents. Huawei contends that during the terms of these
`
`patents, it did not make, use, sell, or offer for sale within the United States, or import into the
`
`United States, any products that infringe any of the asserted claims of the asserted patents. Huawei
`
`also denies that PanOptis is entitled to any damages.
`
`Huawei contends that all the asserted claims of all the asserted patents are invalid as
`
`obvious in view of prior art that existed before PanOptis’ alleged inventions and, therefore, that
`
`all the asserted claims of all the asserted patents are invalid.
`
`7
`
`

`

`Case 3:17-cv-05659-WHA Document 275-5 Filed 11/27/18 Page 9 of 36
`
`Invalidity is a defense to infringement. Invalidity and infringement are separate and distinct
`
`issues.
`
`Your job is to decide whether Huawei has infringed any of the asserted claims and whether
`
`any of the asserted claims are invalid. If you decide that any asserted claim of any asserted patent
`
`has been infringed and is not invalid, you will then need to decide any money damages to be
`
`awarded to PanOptis 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 damages award you make. I will take willfulness into account later.
`
`Before you can decide many of the issues in this case, you will need to understand the role
`
`of patent “claims.” The patent claims are the numbered sentences at the end of each patent. The
`
`claims are important because it is the words of the claims that define what a patent covers. The
`
`figures and text in the rest of the patent provide a description and/or examples of the invention and
`
`provide a context for the claims, but it is the claims that define the breadth of the patent’s coverage.
`
`Each claim is effectively treated as if it was a separate patent, and each claim may cover more or
`
`less than another claim. Therefore, what a patent covers depends, in turn, on what each of its claims
`
`covers.
`
`You will first need to understand what each claim covers in order to decide whether or not
`
`there is infringement of the claim and to decide whether or not the claim is invalid. The law says
`
`that it is my role to define the terms of the claims and it is your role to apply my definitions to the
`
`issues that you are asked to decide in this case. Therefore, as I explained to you at the start of the
`
`case, I have determined the meaning of some of the claim terms in this case and provided you with
`
`my definitions of those construed terms in your juror notebooks.
`
`8
`
`

`

`Case 3:17-cv-05659-WHA Document 275-5 Filed 11/27/18 Page 10 of 36
`
`You must accept my definitions of these words in the claims as being correct. It is your job
`
`to take these definitions and apply them to the issues that you are deciding, including the issues of
`
`infringement and validity. You should disregard any evidence presented at trial that contradicts or
`
`is inconsistent with the constructions and definition I have given you. For claim terms that I have
`
`not construed or defined, you are to use the plain and ordinary meaning of the terms as understood
`
`by one of ordinary skill in the art, that is, in the field of the technology of the patent at the time of
`
`the alleged invention.
`
`The meaning of the words of the patent claims must be the same when you decide the issues
`
`of both infringement and invalidity.
`
`I will now explain how a claim defines what it covers.
`
`A claim sets forth, in words, a set of requirements. Each claim sets forth its requirements
`
`in a single sentence with one or more paragraphs. If a device or a method satisfies each of these
`
`requirements, then it is covered by and infringes that claim.
`
`There can be several claims in a patent. Each claim may be narrower or broader than
`
`another claim by setting forth more or fewer requirements. The coverage of a patent is assessed
`
`claim-by-claim. In patent law, the requirements of a claim are often referred to as “claim elements”
`
`or “claim limitations.” When a thing (such as a product or a process) meets all of the requirements
`
`of a claim, the claim is said to “cover” that thing, and that thing is said to “fall” within the scope
`
`of that claim. In other words, a claim covers a product or process where each of the claim elements
`
`or limitations is present in that product or process. If a product or process is missing even one
`
`limitation or element of a claim, then the product or process is not covered by the claim. If a
`
`product or process is not covered by the claim, then it does not infringe the claim.
`
`9
`
`

`

`Case 3:17-cv-05659-WHA Document 275-5 Filed 11/27/18 Page 11 of 36
`
`The beginning portion, or “preamble,” of a number of the claims in this case uses the word
`
`“comprising.” The word “comprising,” when used in a preamble, means including but not limited
`
`to, or containing but not limited to. When comprising is used in the preamble, a device that includes
`
`all of the limitations of the claim is covered by the claim even if the device contains additional
`
`elements. For example, a claim to a table comprising a tabletop, legs, and glue would be infringed
`
`by a table that includes a tabletop, legs, and glue, even if the table also contains other features,
`
`such as wheels on the ends of the legs.
`
`This case involves two types of patent claims: independent claims and dependent claims.
`
`An independent claim does not refer to any other claim of the patent. An independent claim
`
`sets forth all of the requirements that must be met in order to be covered by that claim. Thus, it is
`
`not necessary to look at any other claim to determine what an independent claim covers.
`
`A dependent claim does not itself recite all of the requirements of the claim but refers to
`
`one or more other claims, at least one of which is an independent claim, for some of its
`
`requirements. In this way, the claim “depends” on another claim. A dependent claim incorporates
`
`all of the requirements of the claim or claims to which it refers, as well as the requirements within
`
`the dependent claim itself. The dependent claim adds its own requirements to the claim or claims
`
`to which it refers. To determine what a dependent claim covers, it is necessary to look at both the
`
`dependent claim and the other claim or claims to which it refers. A product or process that meets
`
`all of the requirements of both the dependent claim and the claim or claims to which it refers is
`
`covered by that dependent claim.
`
`For each of the Asserted Claims, their independence and dependence is as follows:
`
`• For the ’216 Patent: Independent Claim 1;
`
`• For the ’238 Patent: Independent Claim 1;
`
`10
`
`

`

`Case 3:17-cv-05659-WHA Document 275-5 Filed 11/27/18 Page 12 of 36
`
`• For the ’569 Patent: Independent Claim 11 and Dependent Claim 17;
`
`• For the ’284 Patent: Independent Claim 1; and
`
`• For the ’293 Patent: Dependent Claim 14.
`
`Please note: while Dependent Claim 14 depends from Independent Claim 12, Independent
`
`Claim 12 is not an Asserted Claim and should only be considered in the context of Claim 14’s
`
`dependency upon it.
`
`Certain claims use the phrase “means for.” This “means for” phrase has a special meaning
`
`in patent law. It is called a “means-plus-function” requirement. It does not cover all of the
`
`structures that could perform the function set forth in the claim. Instead, it covers a structure or set
`
`of structures that performs that function and that is either identical or “equivalent” to the structures
`
`described in the patent for performing the function. The issue of whether two structures are
`
`identical or equivalent is for you to decide. I will explain to you later how to determine whether
`
`two structures or two sets of structures are “equivalent” to one another. In the claim construction
`
`section of your juror notebooks, I have identified the structures described in the patents for
`
`performing the relevant functions. You should apply my definitions of the functions, and the
`
`structures described in the patent for performing them, as you would apply my definition of any
`
`other claim term.
`
`A patent owner has the right to stop others from using the invention covered by its patent
`
`claims in the United States during the life of the patent. If any person makes, uses, sells, or offers
`
`for sale within the United States, or imports into the United States, what is covered by the patent
`
`claims without the patent owner’s permission, that person is said to infringe the patent.
`
`In reaching your decision on infringement, keep in mind that only the claims of a patent
`
`can be infringed. You must compare the asserted claims, as I have defined each of them, to the
`
`11
`
`

`

`Case 3:17-cv-05659-WHA Document 275-5 Filed 11/27/18 Page 13 of 36
`
`accused products and determine whether or not there is infringement. You should not compare the
`
`accused products with any specific example set out in the patent or with the patent owner’s
`
`commercial products or with the prior art in reaching your decision on infringement. The only
`
`correct comparison is between the accused products and the language of the claims, themselves,
`
`as the Court has construed them.
`
`You must reach your decision as to each assertion of infringement based on my instructions
`
`about the meaning and scope of the claims, the legal requirements for infringement, and the
`
`evidence presented to you by the parties.
`
`The issue of infringement is assessed on a claim-by-claim basis. That means there may be
`
`infringement as to one claim even if there is no infringement as to other claims.
`
`However, if you find that an independent claim on which other claims depend is not
`
`infringed, there cannot be infringement of any dependent claim that refers to or depends on that
`
`independent claim. On the other hand, if you find that an independent claim has been infringed,
`
`you must still decide separately whether the additional requirements of any dependent claims have
`
`been satisfied. That is because a dependent claim includes all the requirements of any of the claims
`
`to which it refers, plus its own additional requirements.
`
`In order to prove direct infringement of a patent claim, PanOptis must show by a
`
`preponderance of the evidence that the accused product or process includes each and every
`
`requirement or limitation of the claim, either literally or under the Doctrine of Equivalents.
`
`In determining whether the accused product or process literally infringes one of the asserted
`
`claims in this case, you must compare the accused product or process with each and every one of
`
`the requirements or limitations of that claim to determine whether the accused product or process
`
`contains each and every limitation recited in the claim. A claim requirement is present if it exists
`
`12
`
`

`

`Case 3:17-cv-05659-WHA Document 275-5 Filed 11/27/18 Page 14 of 36
`
`in an accused product or process just as it is described in the claim language, either as I have
`
`explained the language to you or, if I did not explain it, as it would be understood by its plain and
`
`ordinary meaning by one of ordinary skill in the art. If an accused product or process omits any
`
`requirement recited in a claim, then you must find that the particular product or process does not
`
`literally infringe that particular claim.
`
`If an accused product or process does not meet all the requirements of a claim and thus
`
`does not literally infringe the claim, there can still be direct infringement if that product or process
`
`satisfies the claim under the Doctrine of Equivalents. Under the Doctrine of Equivalents, an
`
`accused product or process infringes a claim if the accused product or process performs steps or
`
`contains elements corresponding to each and every requirement of the claim that are equivalent to,
`
`even though not literally met by, the accused product or process. You may find that a step or
`
`element is equivalent to a requirement of a claim that is not literally met if a person having ordinary
`
`skill in the field of the technology of the patent would have considered the differences between
`
`them to be insubstantial or would have found that the structure performs substantially the same
`
`function in substantially the same way to achieve substantially the same result as the requirements
`
`of the claim. In order to prove that an accused product or process meets a limitation by equivalents,
`
`PanOptis must prove the equivalency to the claim element by a preponderance of the evidence.
`
`A patent can be directly infringed even if the alleged infringer did not have knowledge of
`
`the patent and without the infringer knowing what it was doing infringed the claim. A patent may
`
`also be directly infringed even though the accused infringer believes in good faith that what it is
`
`doing is not infringement of the patent.
`
`As I have previously explained, certain claims include requirements that are means-plus-
`
`function forms. A product meets a means-plus-function requirement of a claim if (1) it has a
`
`13
`
`

`

`Case 3:17-cv-05659-WHA Document 275-5 Filed 11/27/18 Page 15 of 36
`
`structure or set of structures that performs the identical function recited in the claim; and (2) that
`
`structure or set of structures is either identical or equivalent to one or more of the described
`
`structures that I defined earlier as performing the associated function of the claim term. If a product
`
`does not perform the specific function recited in the claim, the means-plus-function requirement
`
`is not met, and the product does not directly infringe the claim. Alternatively, even if the product
`
`has a structure or set of structures that performs the function recited in the claim, but the structure
`
`or set of structures is neither identical nor equivalent to the structure that I defined to you as being
`
`described in the patent and performing this function, the product does not directly infringe the
`
`asserted claim.
`
`In this case, PanOptis argues both that Huawei infringed and, further, that Huawei infringed
`
`willfully. If you have decided that Huawei has infringed, you must go on and address the additional
`
`issue of whether or not this infringement was willful. Willfulness requires you to determine
`
`whether PanOptis proved that it is more likely than not that the infringement by Huawei was
`
`especially worthy of punishment. You may not determine that the infringement was willful just
`
`because Huawei knew of the asserted patents and infringed them. Instead, willful infringement is
`
`reserved for only the most egregious behavior, such as where the infringement is malicious,
`
`deliberate, consciously wrongful, or done in bad faith.
`
`To determine whether Huawei acted willfully, consider all facts. These may include, but
`
`are not limited, to:
`
`1. Whether or not Huawei acted consistently with the standards of behavior for its
`
`industry;
`
`2. Whether or not Huawei reasonably believed it did not infringe or that the patent
`
`was invalid;
`
`14
`
`

`

`Case 3:17-cv-05659-WHA Document 275-5 Filed 11/27/18 Page 16 of 36
`
`3. Whether or not Huawei made a good-faith effort to avoid infringing the asserted
`
`patents, for example, whether Huawei attempted to design around the asserted
`
`patents; and
`
`4. Whether or not Huawei tried to cover up its infringement.
`
`None of these factors alone is determinative, and this list is not an exhaustive list of things
`
`that you should consider. Your determination of willfulness should incorporate the totality of the
`
`circumstances based on all the evidence presented during the trial.
`
`If you decide that any infringement was willful, that decision should not affect any damages
`
`award that you might make. I will take willfulness into account later.
`
`I will now instruct you on the rules you must follow in deciding whether or not Huawei
`
`has proven that the asserted claims of the asserted patents are invalid. A United States patent is
`
`accorded a presumption of validity based on the presumption that the United States Patent and
`
`Trademark Office, which you have heard referred to during this trial as the PTO, has acted
`
`correctly in issuing the patent. This presumption of validity extends to all issued United States
`
`patents, including those that claim the benefit of an earlier filed patent application, such as so-
`
`called continuation or continuation-in-part applications.
`
`To prove that any claim of a patent is invalid, Huawei must persuade you by clear and
`
`convincing evidence that the claim is invalid. You have heard evidence of prior art that the Patent
`
`Office may or may not have evaluated. The fact that any particular reference was or was not
`
`considered by the Patent Office does not change Huawei’s burden of proof. However, in making
`
`your decision whether Huawei has met its burden of proof by clear and convincing evidence as to
`
`a particular patent claim, you may take into account the fact that the prior art was not considered
`
`by the Patent Office. Prior art differing from the prior art considered by the Patent Office may, but
`
`15
`
`

`

`Case 3:17-cv-05659-WHA Document 275-5 Filed 11/27/18 Page 17 of 36
`
`does not always, carry more weight than the prior art that was considered by the Patent Office.
`
`Again, the ultimate responsibility for deciding whether the claims of the patent are valid is up to
`
`you, the members of the jury.
`
`Keep in mind that everyone has the right to use existing knowledge and principles. A patent
`
`cannot remove from the public the ability to use what was known or obvious before the invention
`
`was made or patent protection was sought.
`
`Like infringement, invalidity is determined on a claim-by-claim basis. In making your
`
`determination as to invalidity, you should consider each claim separately. If one claim of a patent
`
`is invalid, this does not mean that any other claim is necessarily invalid.
`
`Claims are construed the same way for determining infringement as for determining
`
`invalidity.
`
`In patent law, a previous device, system, method, publication, or patent that predates the
`
`claimed invention is generally called a “prior art reference.” Prior art may include any of the
`
`following items:
`
`1.
`
`any product or system that was known or used by others in the United States before
`
`the patented inventions were made;
`
`2.
`
`any patent that issued or any printed publication that published anywhere in the
`
`world before the patented inventions were made;
`
`3.
`
`any product or system that was in public use or on sale in the United States more
`
`than one year before the applications for the asserted patents were filed;
`
`4.
`
`any patents that issued or any printed publication that published anywhere in the
`
`world more than one year before the application for the asserted patents were filed;
`
`16
`
`

`

`Case 3:17-cv-05659-WHA Document 275-5 Filed 11/27/18 Page 18 of 36
`
`5.
`
`any patent application that was filed in the United States by someone other than the
`
`inventors of the asserted patents, before the invention was made.
`
`In this case, Huawei contends that the items listed in Exhibit C that is attached to these
`
`instructions are prior art to the ’293, ’569, and ’238 patents.
`
`The priority dates of the ’216, ’284, ’569, ’293, and ’238 Patents are as follows:
`
`• December 1, 1999, for the ’216 Patent;
`
`• December 20, 2007, for the ’284 Patent;
`
`• June 12, 2003, for the ’569 Patent;
`
`• June 19, 2007, for the ’293 Patent; and
`
`• April 15, 2002, for the ’238 Patent.
`
`A provisional patent application is a legal document filed with the United States Patent and
`
`Trademark Office to establish an early filing date, but it does not become a formal patent
`
`application unless the applicant files for a patent within one year.
`
` Huawei contends that certain United States patents are prior art to certain of the asserted
`
`claims based on th