Case 3:17-cv-05659-WHA Document 275-6 Filed 11/27/18 Page 1 of 25
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`Exhibit 6
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`Case 3:17-cv-05659-WHA Document 275-6 Filed 11/27/18 Page 2 of 25
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`UNITED STATES DISTRICT COURT
`DISTRICT OF DELAWARE
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` Civ. No. 09-636 (NLH/JS)
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`EVONIK DEGUSSA GMBH,
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`Plaintiff,
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`Defendant.
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`MATERIA, INC.,
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`v.
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`1.
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`FINAL JURY INSTRUCTIONS
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`GENERAL INSTRUCTIONS
`INTRODUCTION
`1.1
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`Members of the jury, now it is time for me to instruct you about the law that you
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`must follow in deciding this case. I will start by explaining your duties and the general
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`rules that apply in every civil case. I will explain some rules that you must use in
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`evaluating particular testimony and evidence. I will explain the positions of the parties
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`and the law you will apply in this case. Last, I will explain the rules that you must
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`follow during your deliberations in the jury room. Please listen very carefully to
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`everything I say.
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`You will have a written copy of these instructions with you in the jury room for
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`your reference during your deliberations. You will also have a verdict form, which will
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`list the interrogatories, or questions, that you must answer to decide this case.
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`1.2
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`JURORS’ DUTIES
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`You have two main duties as jurors. The first one is to decide what the facts are
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`from the evidence that you saw and heard here in court. Deciding what the facts are is
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`your job, not mine, and nothing that I have said or done during this trial was meant to
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`influence your decision about the facts in any way.
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`Your second duty is to take the law that I give you, apply it to the facts, and
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`decide which party should prevail on the issues presented. I will instruct you about the
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`burden of proof shortly. It is my job to instruct you about the law, and you are bound by
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`the oath that you took at the beginning of the trial to follow the instructions that I give
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`you, even if you personally disagree with them. This includes the instructions that I
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`gave you before and during the trial, and these instructions. All the instructions are
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`important, and you should consider them together as a whole.
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`Perform these duties fairly. Do not let any bias, sympathy or prejudice that you
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`may feel toward one side or the other influence your decision in any way.
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`1.3
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`EVIDENCE DEFINED
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`You must make your decision based only on the evidence that you saw and
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`heard here in the courtroom. Do not let rumors, suspicions, or anything else that you
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`may have seen or heard outside of court influence your decision in any way. The
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`evidence in this case includes only what the witnesses said while they were testifying
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`under oath, the exhibits that I allowed into evidence, and any facts that the parties
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`agreed to by stipulation.
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`Nothing else is evidence. The lawyers’ statements and arguments are not
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`evidence. Their questions and objections are not evidence. My legal rulings are not
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`evidence. None of my comments or questions are evidence. The notes taken by any
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`juror are not evidence.
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`Certain charts and graphics have been used to illustrate testimony from
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`witnesses. Unless I have specifically admitted them into evidence, these charts and
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`graphics are not themselves evidence even if they refer to, identify, or summarize
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`evidence.
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`During the trial, I may not have let you hear the answers to some of the
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`questions that the lawyers asked. I also may have ruled that you could not see some of
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`the exhibits that the lawyers wanted you to see. And sometimes I may have ordered you
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`to disregard things that you saw or heard. You must completely ignore all of these
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`things. Do not speculate about what a witness might have said or what an exhibit might
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`have shown. These things are not evidence, and you are bound by your oath not to let
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`them influence your decision in any way.
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`Make your decision based only on the evidence, as I have defined it here, and
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`nothing else.
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`1.4
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`DIRECT AND CIRCUMSTANTIAL EVIDENCE
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`Some of you may have heard the terms “direct evidence” and “circumstantial
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`evidence.”
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`Direct evidence is simply evidence like the testimony of any eyewitness which,
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`if you believe it, directly proves a fact. If a witness testified that he saw it raining
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`outside, and you believed him, that would be direct evidence that it was raining.
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`Circumstantial evidence is simply a chain of circumstances that indirectly proves
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`a fact. If someone walked into the courtroom wearing a raincoat covered with drops of
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`water and carrying a wet umbrella, that would be circumstantial evidence from which
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`you could conclude that it was raining.
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`It is your job to decide how much weight to give the direct and circumstantial
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`evidence. The law makes no distinction between the weights that you should give to
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`either one, nor does it say that one is any better evidence than the other. You should
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`consider all the evidence, both direct and circumstantial, and give it whatever weight
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`you believe it deserves.
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`1.5
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`CONSIDERATION OF EVIDENCE
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`You should use your common sense in weighing the evidence. Consider it in
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`light of your everyday experience with people and events, and give it whatever weight
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`you believe it deserves. If your experience tells you that certain evidence reasonably
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`leads to a conclusion, you are free to reach that conclusion.
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`1.6
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`USE OF NOTES
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`You may use notes taken during the trial to assist your memory. Remember that
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`your notes are for your personal use. They may not be given or read to anyone else. Do
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`not use your notes, or any other juror’s notes, as authority to persuade fellow jurors.
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`Your notes are not evidence, and they are by no means a complete outline of the
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`proceedings or a list of the highlights of the trial. Some testimony that is considered
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`unimportant at the time presented and, thus, not written down, may take on greater
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`importance later on in the trial in light of all the evidence presented. Your notes are
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`valuable only as a way to refresh your memory. Your memory is what you should be
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`relying on when it comes time to deliberate and render your verdict in this case.
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`1.7
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`CREDIBILITY OF WITNESSES
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`You, the jurors, are the sole judges of the credibility, or the believability, of the
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`witnesses you have seen during the trial and the weight their testimony deserves.
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`You should carefully scrutinize all the testimony each witness has given and
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`every matter of evidence that tends to show whether he or she is worthy of belief.
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`Consider each witness’s intelligence, motive, and state of mind, as well as his or her
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`demeanor while on the stand. Consider the witness’s ability to observe the matters as
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`to which he or she has testified and whether he or she impresses you as having an
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`accurate recollection of these matters. Consider also any relation each witness may
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`bear to each side of the case, the manner in which each witness might be affected by
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`the verdict, the interest any witness may have in the verdict, and the extent to which, if
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`at all, each witness is either supported or contradicted by other evidence in the case.
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`Discrepancies in the testimony of different witnesses may, or may not, cause
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`you to discredit such testimony. Two or more persons witnessing an incident or
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`transaction may see or hear it differently. Likewise, in determining the weight to give
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`to the testimony of a witness, you should ask yourself whether there was evidence
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`tending to prove that the witness testified falsely about some important fact, or whether
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`there was evidence that at some other time the witness said or did something, or failed
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`to say or do something, that was different, or inconsistent, from the testimony that he
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`or she gave during the trial. It is the province of the jury to determine whether a false
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`statement or a prior inconsistent statement discredits the witness’s testimony.
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`You should remember that a simple mistake by a witness does not mean that
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`the witness was not telling the truth. People may tend to forget some things or
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`remember other things inaccurately. If a witness has made a misstatement, you must
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`consider whether it was simply an innocent lapse of memory or an intentional
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`falsehood, and that may depend upon whether it concerns an important fact or an
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`unimportant detail.
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`1.8
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`EXPERT WITNESSES
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`As I previously stated, when knowledge of technical subject matter might be
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`helpful to the jury, a person who has special training or experience in that technical field
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`— he or she is called an expert witness — is permitted to state his or her opinion on
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`those technical matters. However, you are not required to accept that opinion. As with
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`any other witness, it is up to you to judge the credentials and credibility of the expert
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`witness and decide whether to rely upon his or her testimony.
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`You should consider each expert opinion received in evidence in this case, and
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`give it such weight as you think it deserves. If you decide that the opinion of an expert
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`witness is not based upon sufficient education and experience, or if you conclude that
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`the reasons given in support of the opinion are not sound, or if you feel that the opinion
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`is outweighed by other evidence, you may disregard the opinion in whole or in part.
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`1.9
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`NUMBER OF WITNESSES
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`One more point about the witnesses. Sometimes jurors wonder if the number of
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`witnesses who testified makes any difference. Do not make any decisions based only on
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`the number of witnesses who testified. What is more important is how believable the
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`witnesses were, and how much weight you think their testimony deserves. Concentrate on
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`that, not the numbers.
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`2.
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`THE PARTIES AND THEIR CONTENTIONS
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`I will now summarize the issues that you must decide and for which I will provide
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`instructions to guide your deliberations. You must decide the following main issues:
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`A.
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`Whether Materia has proven that the asserted claims of the `528 patent are
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`invalid for lack of enablement or lack of written description.
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`B.
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`What amount of damages is owed to Evonik due to Materia’s
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`infringement.
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`C.
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`Whether Evonik has proven that Materia’s infringement of Evonik’s `528
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`Patent was willful.
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`D.
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`During the course of the trial you heard references to the `145 Patent. I
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`instruct you now that that patent is no longer at issue in this case.
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`3.
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`BURDENS OF PROOF
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`In any legal action, facts must be proven by a required standard of evidence,
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`known as the “burden of proof.” In a patent action such as this, there are two different
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`burdens of proof that are used. The first is called “preponderance of the evidence.”
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`The second is called “clear and convincing” evidence.
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`When a party has the burden of proof by the preponderance of the evidence, it
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`means you must be persuaded that what the party seeks to prove is more probably true
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`than not true. Clear and convincing evidence is a higher burden of proof than a
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`preponderance of the evidence. Clear and convincing evidence is evidence that
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`produces an abiding conviction that the truth of a fact is highly probable. Those of you
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`who are familiar with criminal cases will have heard the term “proof beyond a
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`reasonable doubt.” That burden does not apply in a civil case and you, therefore,
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`should put it out of your mind in considering whether or not either party has met its
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`“more likely than not” burden of proof or its “clear and convincing” burden of proof.
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`Here, Materia has the burden of proving invalidity of the `528 Patent by clear
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`and convincing evidence. You must decide, as to each of these asserted claims,
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`whether Materia has proven, by clear and convincing evidence, that the claim is invalid
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`by reason of lack of enablement and/or lack of written description based on the
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`instructions that I will give you in a moment.
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`If you find that the `528 Patent is valid, Evonik must prove its claim for
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`damages and willful infringement of the `528 Patent by a preponderance of the
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`evidence. When a party has the burden of proof by the preponderance of the evidence,
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`it means you must be persuaded that what Evonik seeks to prove is more probably true
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`than not true. To put it differently, if you were to put Evonik’s and Materia’s evidence
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`of damages and willful infringement on opposite sides of a scale, the evidence
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`supporting Evonik’s assertions would have to make the scale tip somewhat to Evonik’s
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`side.
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`4.
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`THE PATENT CLAIMS
`PATENT CLAIMS GENERALLY
`4.1
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`Before you can decide whether or not any of the asserted claims are invalid, you
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`will have to understand what patent “claims” are. Patent claims are the numbered
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`paragraphs at the end of a patent. A patent applicant may amend or insert claims at any time
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`during the prosecution of a patent application.
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`The purpose of the claims is to provide notice to the public of what a patent covers
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`and does not cover. The claims are “word pictures” intended to define, in words, the
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`boundaries of the invention described and illustrated in the patent.
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`Claims are usually divided into parts, called “limitations.” For example, a claim
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`that covers the invention of a table may recite the tabletop, four legs, and the glue that
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`secures the legs to the tabletop. The tabletop, legs and glue are each a separate limitation of
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`the claim.
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`4.2
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`DEPENDENT AND INDEPENDENT CLAIMS
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`There are two different types of claims in a patent. The first type is called an
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`“independent” claim. An independent claim does not refer to any other claim of the
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`patent. An independent claim is read alone to determine its scope.
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`For example, Claim 8 of the `528 Patent is an independent claim. You know
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`this because Claim 8 does not refer to any other claims. Accordingly, the words of this
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`claim are read by themselves in order to determine what the claim covers.
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`The second type, a “dependent” claim, refers to at least one other claim in the
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`patent and, thus, incorporates whatever that other claim says. Accordingly, to
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`determine what a dependent claim covers, you must read both the dependent claim and
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`the claim or claims to which it refers.
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`For example, Claims 9 and 10 of the `528 Patent are dependent claims. If you
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`look at Claims 9 and 10, they refer to Claim 8. Therefore, to determine what Claims 9
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`and 10 cover, you must consider the words of Claim 8 and Claim 9 together and the
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`words of Claim 8 and Claim 10 together.
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`4.3
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`CLAIM CONSTRUCTION
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`It is my duty under the law to define what the patent claims mean and to instruct
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`you about that meaning. You must accept the meanings I give you and use the meaning of
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`each claim for your decision on validity.
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`You must ignore any different interpretation given to these terms by the witnesses
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`or by attorneys.
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`I instruct you that the following claim term has the following definition: “N-
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`heterocyclic carbene” means “a carbene having a molecular structure that comprises at least
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`one ring containing at least one nitrogen in the ring.”
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`If I have not provided a specific definition for a given term, you are to use the
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`ordinary meaning of that term.
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`5.
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`INVALIDITY
`Materia contends that Claims 8-10 of the `528 Patent are invalid for failing to
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`comply with the enablement and written description requirements of the Patent Law.
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`Materia bears the burden of establishing lack of enablement and lack of written description
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`by clear and convincing evidence.
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`The question of invalidity of a patent claim is determined from the perspective of a
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`person of ordinary skill in the art of the invention. Evonik and Materia have stipulated to
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`the following definition of one of ordinary skill in the art applicable to the `528 Patent:
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`“One of ordinary skill in the art would have an undergraduate degree in chemistry, would be
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`familiar with the literature on metathesis catalysts, and would have at least three (3) years of
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`transition metal coordination chemistry laboratory experience.” This is the definition you
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`must apply in reaching your verdict in this case.
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`5.1
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`LACK OF ENABLEMENT
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`A patent must disclose sufficient information to enable or teach persons of ordinary
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`skill in the art of the invention, at the time the priority patent application was filed, to make
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`and use the full scope of the claimed invention without undue experimentation. This
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`requirement is known as the enablement requirement. If a patent claim is not enabled, it is
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`invalid.
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`In considering whether a patent complies with the enablement requirement, you must
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`keep in mind that patents are written for persons of ordinary skill in the art of the invention.
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`Thus, a patent need not expressly state information that persons of ordinary skill would be
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`likely to know or could obtain.
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`The fact that some experimentation may be required for a person of ordinary skill to
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`practice the claimed invention does not mean that a patent does not meet the enablement
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`requirement. The presence of inoperative embodiments within the scope of a claim does not
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`necessarily render a claim non-enabled. The question of undue experimentation is a matter
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`of degree. Even extensive experimentation does not necessarily make the experiments
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`unduly extensive where the experiments are routine, such as repetition of known or
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`commonly used techniques. But permissible experimentation is not without bounds.
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`If the number of inoperative embodiments becomes significant, and in effect forces
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`one of ordinary skill in the art to engage in undue experimentation in order to practice the
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`claimed invention, the claims are invalid as non-enabled. Further, the fact that certain
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`operative embodiments where known does not enable claims which, as written, implicate an
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`indeterminable number of inoperative embodiments.
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`Factors that you may consider in determining whether persons of ordinary skill in
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`the art of the invention would require undue experimentation to make and use the full scope
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`of the claimed invention include:
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`1. the quantity of experimentation necessary;
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`2. the amount of direction or guidance disclosed in the patent;
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`3. the presence or absence of working examples in the patent;
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`4. the nature of the invention;
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`5. the state of the prior art;
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`6. the relative skill of those in the art;
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`7. the predictability of the art; and
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`8. the breadth of the claims.
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`5.2
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`LACK OF WRITTEN DESCRIPTION
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`A patent must contain a written description of the product claimed in the patent. The
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`written description requirement helps to ensure that the patent applicant actually invented
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`the claimed subject matter. To satisfy the written description requirement, the patent
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`specification must describe each and every limitation of a patent claim in sufficient detail,
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`although the exact words found in the claim need not be used. When determining whether
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`the specification discloses the invention, the claim must be viewed as a whole.
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`The written description requirement is satisfied if persons of ordinary skill in the art
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`of the invention would recognize, from reading the patent specification, that the inventor
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`possessed the subject matter finally claimed in the patent. The written description
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`requirement is satisfied if the specification shows that the inventor possessed his or her
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`invention as of the date the priority patent application was filed, even though the claims
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`themselves may have been changed or new claims added since that time.
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`It is unnecessary to spell out every detail of the invention in the specification, and
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`specific examples are not required; only enough must be included in the specification to
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`convince persons of ordinary skill in the art that the inventor possessed the full scope of the
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`invention. The inquiry for determining whether a patent complies with the written
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`description requirement is a question of fact. Thus, determining whether a patent complies
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`with the written description requirement will necessarily vary depending on the context.
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`Specifically, the level of detail required to satisfy the written description requirement varies
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`depending on the nature and scope of the claims and on the complexity and predictability of
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`the relevant technology.
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`In evaluating whether the specification has provided an adequate written description,
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`you may take into account such factors as:
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`the nature and scope of the patent claims;
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`the complexity, predictability, and maturity of the technology at issue;
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`the existing knowledge in the relevant field; and
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`the scope and content of the prior art.
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`The issue of written description is decided on a claim-by-claim basis, not as to the
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`entire patent or groups of claims.
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`Written description is about whether the skilled reader of the patent disclosure can
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`recognize that what was claimed corresponds to what was described; it is not about whether
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`the invention works, or how to make it work, which is an enablement issue. As such, unlike
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`enablement, the presence or absence of any inoperative embodiments is not relevant to the
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`written description analysis.
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`6.
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`DAMAGES
`COMPENSATORY DAMAGES IN GENERAL
`6.1
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`If, after considering all of the evidence and the law as I have stated it, you are
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`convinced that the `528 Patent is invalid, your verdict should be for Materia and you
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`need go no further in your deliberations. On the other hand, if you decide that the `528
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`Patent is not invalid, you must then turn to the issue of damages.
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`The Patent Laws provide that in the case of infringement of a valid patent claim,
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`the owner of the patent shall be awarded damages adequate to compensate for the
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`infringement, but in no event less than a reasonable royalty for the use made of the
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`invention by the infringer. Damages are compensation for all losses suffered as a result
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`of the infringement.
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`It is not relevant to the question of damages whether Materia benefited from,
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`realized profits from or even lost money as a result of the acts of infringement. The only
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`issue is the amount necessary to adequately compensate Evonik for Materia’s
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`infringement. Adequate compensation should return plaintiff to the position it would
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`have occupied had there been no infringement. You must consider the amount of injury
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`suffered by Evonik without regard to Materia’s gains or losses from the infringement.
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`6.2
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`REASONABLE CERTAINTY
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`Under the Patent Laws, Evonik is entitled to all damages for infringement of Claims
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`8 - 10 of the `528 Patent that can be proven with “reasonable certainty.” On one hand,
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`reasonable certainty does not require proof of damages with mathematical precision. Mere
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`difficulty in ascertaining damages is not fatal to Evonik. On the other hand, Evonik is not
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`entitled to speculative damages; that is, you should not award any amount for loss, which,
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`although possible, is wholly remote or left to conjecture and/or guess. You may base your
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`evaluation of “reasonable certainty” on opinion evidence. Finally, any doubts regarding the
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`computation of the amount of damages should be resolved against Materia.
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`6.3
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`REASONABLE ROYALTY
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`The amount you find as damages must be the value attributable to the patented
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`technology, as distinct from other unpatented features of the accused product, or other
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`factors such as marketing or advertising, or Evonik’s size or market position. In
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`determining the appropriate royalty base and the appropriate royalty rate, the ultimate
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`combination of both the royalty rate and the royalty base must reflect the value attributable
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`to the patented technology. It is not sufficient to use a royalty base that is too high and
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`adjust the damages downward by applying a lower royalty rate. Similarly, it is not
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`appropriate to select a royalty base that is too low and adjust it upward by applying a higher
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`royalty rate. Rather, you must determine an appropriate royalty rate and an appropriate
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`royalty base that reflect the value attributable to the patented technology.
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`I am instructing you that this hypothetical negotiation between Evonik and Materia
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`would have taken place at or around May 27, 2008, the date on which the `528 Patent
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`issued. The parties would have assumed that the `528 Patent was valid and would have
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`been infringed by Materia unless it obtained a license from Evonik for the right to use the
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``528 Patent.
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`Calculation of a reasonable royalty requires determination of two separate
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`quantities—a royalty base, or the revenue pool implicated by any Materia products that
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`infringe the `528 Patent, and a royalty rate, the percentage of that pool adequate to
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`compensate Evonik for that infringement. These quantities, though related, are distinct. An
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`over-inclusive royalty base including revenues from the sale of non-infringing components
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`is not permissible simply because the royalty rate is adjustable. In determining the
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`appropriate royalty base and the appropriate royalty rate, the ultimate combination of both
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`the royalty rate and the royalty base must reflect solely the value attributable to the
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`infringing features.
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`Having that in mind, you may consider any relevant fact in determining the
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`reasonable royalty for the use of a patented invention, including the opinion testimony of
`
`experts. The reasonable royalty you determine must be a royalty that would have resulted
`
`from the hypothetical negotiation, and not simply a royalty either party would have
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`15
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`Case 3:17-cv-05659-WHA Document 275-6 Filed 11/27/18 Page 17 of 25
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`preferred.
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`FACTORS FOR DETERMINING REASONABLE ROYALTY
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`6.4
`Although this reasonable royalty analysis necessarily involves an element of
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`approximation and uncertainty, a trier of fact must have some factual basis for a
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`determination of a reasonable royalty. Any reasonable royalty rate determined by you
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`must be supported by relevant evidence in the record. To arrive at a reasonable royalty
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`rate, you may consider the following factors:
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`1.
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`2.
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`3.
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`The royalties received by Evonik for the licensing of the `528 Patent;
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`The rates paid by Materia for the use of other patents comparable to
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`the `528 Patent;
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`The nature and scope of the license, as exclusive or non-exclusive; or
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`as restricted or non-restricted in terms of territory or with respect to
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`whom Materia’s products covered by the `528 Patent may be sold;
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`4.
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`Evonik’s established policy and marketing program, if any, to
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`maintain its exclusivity of the `528 Patent by not licensing others
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`the right to use the `528 Patent or by granting licenses under special
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`conditions designed to preserve that exclusivity;
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`5.
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`6.
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`The commercial relationship between Evonik and Materia, such as
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`whether they are competitors in the same territory in the same line of
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`business; or whether they are inventors or promoters;
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`The effect of selling any Materia’s products covered by the `528 Patent
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`in promoting sales of other Materia products, the existing value of the
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`invention to Evonik as a generator or sales of its products not covered
`by the `528 Patent, and the extent of such derivative or convoyed sales;
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`16
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`Case 3:17-cv-05659-WHA Document 275-6 Filed 11/27/18 Page 18 of 25
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`7.
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`8.
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`9.
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`The duration of the `528 Patent and the term of the license;
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`The established profitability of the products made under the `528
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`Patent, their commercial success, and their current popularity;
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`The utility and advantages of the `528 Patent over the old modes or
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`devices, if any, that had been used for working out similar results;
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`10.
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`The nature of the patented invention, the character of the commercial
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`embodiment of it as owned and produced by Evonik, and the benefits
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`to those who have used the invention;
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`11.
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`The extent to which Materia has made use of the invention covered
`
`by the `528 Patent, and any evidence probative of the value of that
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`use;
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`12.
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`The portion of the profit or of the selling price that may be customary
`
`in the particular business or in comparable businesses to allow for the
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`use of the invention covered by the `528 Patent or analogous
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`inventions;
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`13.
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`The portion of the realizable profit that should be credited to the
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`invention covered by the `528 Patent as distinguished from non-
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`patented elements, the manufacturing process, business risks, or
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`significant features or improvements added by Materia; and
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`The opinion testimony of qualified experts.
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`14.
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`
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`Where a willing licensor and a willing licensee are negotiating for a royalty, the
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`hypothetical negotiations would not occur in a vacuum of pure logic. They would also
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`involve considerations of the marketplace and any other economic factor that normally
`
`17
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`Case 3:17-cv-05659-WHA Document 275-6 Filed 11/27/18 Page 19 of 25
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`prudent businessmen would, under similar circumstances, take into consideration in
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`negotiating the hypothetical license.
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`No one of these factors is dispositive in every case, and you can and should
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`consider the evidence that has been presented to you on any of these factors. You may
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`also consider any other factors that in your mind would have increased or decreased
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`the royalty the accused infringer would have been willing to pay and the patent holder
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`would have been willing to accept.
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`6.5
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`USE OF COMPARABLE LICENSE AGREEMENTS
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`When determining a reasonable royalty, you may consider evidence concerning
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`the amounts that other parties have paid or offered to pay or receive for rights to the
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``528 Patent, or for rights to similar technologies. Such agreements or offers must not
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`be perfectly comparable to a hypothetical license that would be negotiated between
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`Evonik and Materia in order for you to consider it. However, if you choose to rely
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`upon evidence from any other agreement, you must exercise vigilance when
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`considering past licenses to technologies other than the `528 Patent, and you must
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`account for any differences between those situations and the hypothetically negotiated
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`license between Evonik and Materia, in terms of the scope of the license, the type and
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`nature of the technologies at issue, whether the license included foreign patent rights or
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`rights other than the mere right to use a patent, and economic circumstances of the
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`contracting parties, when you make your reasonable royalty determination. Notably,
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`when relying on licenses to prove a reasonable royalty, alleging a loose or vague
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`comparability between different technologies or licenses does not suffice.
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`6.6
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`ROYALTY BASE
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`18
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`Case 3:17-cv-05659-WHA Document 275-6 Filed 11/27/18 Page 20 of 25
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`The royalty base represents the revenue generated by Materia’s infringement of
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`the `528 Patent. The royalty base cannot include activities that do not constitute patent
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`infringement, as patent damages are limited to those adequate to compensate for the
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`infringement. This means that you should not include the sales of any products (or any
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`divisible portion of a product) other than those that infringe the `528 Patent, even if
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`those pro
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