Case 1:10-cv-00258-SLR Document 757 Filed 08/14/17 Page 1 of 40 PageID #: 30213
`1323
`
`- VOLUME 6 -
`IN THE UNITED STATES DISTRICT COURT
`IN AND FOR THE DISTRICT OF DELAWARE
`- - -
`
`CIVIL ACTION
`
`NO. 10-258-SLR
`
`:::::::::
`
`MOBILEMEDIA IDEAS LLC,
`Plaintiff,
`
`vs.
`APPLE INC,
`
`Defendant.
`
`- - -
`Wilmington, Delaware
`Tuesday, September 20, 2016
`9:00 o'clock, a.m.
`
`- - -
`BEFORE: HONORABLE SUE L. ROBINSON, U.S.D.C.J., and a jury
`- - -
`
`APPEARANCES:
`
`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`BY: JEREMY A. TIGAN, ESQ.
`
`-and-
`
`Valerie J. Gunning
`Official Court Reporter
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`1323
`
`- VOLUME 6 -
`IN THE UNITED STATES DISTRICT COURT
`IN AND FOR THE DISTRICT OF DELAWARE
`- - -
`
`CIVIL ACTION
`
`NO. 10-258-SLR
`
`:::::::::
`
`MOBILEMEDIA IDEAS LLC,
`Plaintiff,
`
`vs.
`APPLE INC,
`
`Defendant.
`
`- - -
`Wilmington, Delaware
`Tuesday, September 20, 2016
`9:00 o'clock, a.m.
`
`- - -
`BEFORE: HONORABLE SUE L. ROBINSON, U.S.D.C.J., and a jury
`- - -
`
`APPEARANCES:
`
`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`BY: JEREMY A. TIGAN, ESQ.
`
`-and-
`
`Valerie J. Gunning
`Official Court Reporter
`
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`Case 1:10-cv-00258-SLR Document 757 Filed 08/14/17 Page 2 of 40 PageID #: 30214
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`APPEARANCES (Continued):
`
`PROSKAUER ROSE LLP
`BY: STEVEN BAUER, ESQ.,
`SAFRAZ W. ISHMAEL, ESQ.
`KIMBERLY MOTTLEY, ESQ.,
`LAURA STAFFORD, ESQ. and
`JAMES ANDERSEN, ESQ.
`(Boston, Massachusetts)
`
`Counsel for Plaintiff
`
`MORRIS JAMES LLP
`BY: MARY B. MATTERER, ESQ.
`
`-and-
`
`O'MELVENY & MYERS LLP
`BY: LUANN SIMMONS, ESQ.
`(San Francisco, California)
`
`-and-
`
`WILMER HALE LLP
`BY: JOSEPH J. MUELLER, ESQ.
`(Boston, Massachusetts)
`
`-and-
`
`WILMER HALE LLP
`BY: TARA D. ELLIOTT, ESQ.
`(Washington, D.C.)
`
`Counsel for Defendant
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`Case 1:10-cv-00258-SLR Document 757 Filed 08/14/17 Page 3 of 40 PageID #: 30215
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`P R O C E E D I N G S
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`(Proceedings commenced in the courtroom,
`beginning at 9:00 a.m.)
`
`THE COURT: All right. Let's bring the jury in.
`MR. MUELLER: Your Honor, may I make one brief
`
`point?
`
`THE COURT: Yes.
`MR. MUELLER: At the end of the instructions, if
`I could just say we preserve our positions rather than say
`anything more than that? Right now I will refer to the
`identical issue and the claim construction issues earlier in
`the case.
`
`THE COURT: All right.
`MR. MUELLER: Thank you.
`(The jury entered the courtroom and took their
`seats in the box.)
`THE COURT: You all may be seated. And,
`Francesca, go ahead and give the jurors their set.
`All right, members of the jury, although you
`have a set, you'll have them back in the jury room, I am
`obligated to read them aloud. It's a painful experience,
`but bear with me. At some point if I'm lucky, I kind of go
`into a Zen trance, but that means I'm more reading words
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`Case 1:10-cv-00258-SLR Document 757 Filed 08/14/17 Page 4 of 40 PageID #: 30216
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`than really putting much emotion into it. And as I explain,
`if I read something different than is on the paper, you're
`to pay attention to the paper unless I specifically say
`there was a mistake. All right?
`All right. Here we go.
`Members of the jury, now it is time for me to
`instruct about the law that you must follow in deciding this
`case. I will start by explaining your duties and the
`general rules that apply in every civil case. I will
`explain some rules that you must use in evaluating
`particular testimony and evidence. I will explain the
`positions of the parties and the law you will apply in this
`case. Last, I will explain the rules that you must follow
`during your deliberations in the jury room. Please listen
`very carefully to everything I say.
`You will have a written copy of these
`instructions with you in the jury room for your reference
`during your deliberations. You will also have a verdict
`form, which will list the interrogatories, or questions,
`that you must answer to decide this case.
`You have two main duties as jurors. The first
`one is to decide what the facts are from the evidence that
`you saw and heard here in court. Deciding what the facts
`are is your job, not mine, and nothing that I have said or
`done during this trial was meant to influence your decision
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`Case 1:10-cv-00258-SLR Document 757 Filed 08/14/17 Page 5 of 40 PageID #: 30217
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`about the facts in any way.
`Your second duty is to take the law that I give
`you, apply it to the facts, and decide which party should
`prevail on the issues presented. I will instruct you about
`the burden of proof shortly. It is my job to instruct you
`about the law, and you are bound by the oath that you took
`at the beginning of the trial to follow the instructions
`that I give you, even if you personally disagree with them.
`This includes the instructions that I gave you before and
`during the trial, and these instructions. All the
`instructions are important, and you should consider them
`together as a whole.
`Perform these duties fairly. Do not let any
`bias, sympathy or prejudice that you may feel toward one
`side or the other influence your decision in any way.
`You must make your decision based only on the
`evidence that you saw and heard here in the courtroom. Do
`not let rumors, suspicions, or anything else that you may
`have seen or heard outside of Court influence your decision
`in any way. The evidence in this case includes only what
`the witnesses said while they were testifying under oath
`(including deposition testimony that has been played or read
`to you), the exhibits that I allowed into evidence, and any
`facts that the parties agreed to by stipulation.
`Nothing else is evidence. The lawyers'
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`Case 1:10-cv-00258-SLR Document 757 Filed 08/14/17 Page 6 of 40 PageID #: 30218
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`statements and arguments are not evidence. Their questions
`and objections are not evidence. My legal rulings are not
`evidence. None of my comments or questions are evidence.
`The notes taken by any juror are not evidence. Your
`knowledge or belief as to how the iPhone functions, or how
`the technology in the iPhone works, is not evidence.
`Certain charts and graphics have been used to
`illustrate testimony from witnesses. Unless I have
`specifically admitted them into evidence, these charts and
`graphics are not themselves evidence even if they refer to,
`identify, or summarize evidence.
`During the trial I may not have let you hear the
`answers to some of the questions that the lawyers asked. I
`also may have ruled that you could not see some of the
`exhibits that the lawyers wanted you to see. And sometimes
`I may have ordered you to disregard things that you saw or
`heard. You must completely ignore all of these things. Do
`not speculate about what a witness might have said or what
`an exhibit might have shown. These things are not evidence,
`and you are bound by your oath not to let them influence
`your decision in any way. Make your decision based only
`on the evidence, as I have defined it here, and nothing
`else.
`
`Some of you may have heard the terms direct
`evidence and circumstantial evidence. Direct evidence is
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`Case 1:10-cv-00258-SLR Document 757 Filed 08/14/17 Page 7 of 40 PageID #: 30219
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`simply evidence like the testimony of any eyewitness which,
`if you believe it, directly proves a fact. If a witness
`testified that he saw it raining outside, and you believed
`him, that would be direct evidence that it was raining.
`Circumstantial evidence is simply a chain of
`circumstances that indirectly proves a fact. If someone
`walked into the courtroom wearing a raincoat covered with
`drops of water and carrying a wet umbrella, that would be
`circumstantial evidence from which you could conclude that
`it was raining.
`It is your job to decide how much weight to give
`the direct and circumstantial evidence. The law makes no
`distinction between the weights that you should give to
`either one, nor does it say that one is any better evidence
`than the other. You should consider all the evidence, both
`direct and circumstantial, and give it whatever weight you
`believe it deserves.
`You should use your common sense in weighing the
`evidence. Consider it in light of your everyday experience
`with people and events, and give it whatever weight you
`believe it deserves. If your experience tells you that
`certain evidence reasonably leads to a conclusion, you are
`free to reach that conclusion.
`You may use notes taken during the trial to
`assist your memory. Remember that your notes are for your
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`personal use. They may not be given or read to anyone else.
`Do not use your notes, or any other jurors' notes, as
`authority to persuade fellow jurors. Your notes are not
`evidence, and they are by no means a complete outline of the
`proceedings or a list of the highlights of the trial.
`Some testimony that is considered unimportant at
`the time presented and, thus, not written down, may take on
`greater importance later on in the trial in light of the
`evidence presented. Your notes are valuable only as a way
`to refresh your memory. Your memory is what you should be
`relying on when it comes time to deliberate and render your
`verdict in this case.
`You, the jurors, are the sole judges of the
`credibility, or the believability, of the witnesses you have
`seen during the trial and the weight their testimony
`deserves.
`
`You should carefully scrutinize all the
`testimony each witness has given and every matter of
`evidence that tends to show whether he or she is worthy of
`belief. Consider each witness' intelligence, motive, and
`state of mind, as well as his or her demeanor while on the
`stand. Consider the witness' ability to observe the matters
`as to which he or she has testified and whether he or she
`impresses you as having an accurate recollection of these
`matters. Consider also any relation each witness may bear
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`to each side of the case, the manner in which each witness
`might be affected by the verdict, the interest any witness
`may have in the verdict, and the extent to which, if at all,
`each witness is either supported or contradicted by other
`evidence in the case.
`Discrepancies in the testimony of different
`witnesses may, or may not, cause you to discredit such
`testimony. Two or more persons witnessing an incident or
`transaction may see or hear it differently. Likewise, in
`determining the weight to give to the testimony of a
`witness, you should ask yourself whether there was evidence
`tending to prove that the witness testified falsely about
`some important fact, or whether there was evidence that at
`some other time the witness said or did something, or failed
`to say or do something, that was different, or inconsistent,
`from the testimony that he or she gave during the trial. It
`is the province of the jury to determine whether a false
`statement or a prior inconsistent statement discredits the
`witness' testimony.
`You should remember that a simple mistake by a
`witness does not mean that the witness was not telling the
`truth. People may tend to forget some things or remember
`other things inaccurately. If a witness has made a
`misstatement, you must consider whether it was simply an
`innocent lapse of memory or an intentional falsehood, and
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`that may depend upon whether it concerns an important fact
`or an unimportant detail.
`One more point about the witnesses. Sometimes
`jurors wonder if the number of witnesses who testified makes
`any difference. Do not make any decisions based only on the
`number of witnesses who testified. What is more important
`is how believable the witnesses were, and how much weight
`you think their testimony deserves. Concentrate on that,
`not the numbers.
`When knowledge of technical subject matter might
`be helpful to the jury, a person who has special training or
`experience in that technical field -- he or she is called an
`expert witness -- is permitted to state his or her opinion
`on those technical matters. However, you are not required
`to accept that opinion. As with any other witness, it is up
`to you to judge the credentials and credibility of the
`expert witness and decide whether to rely upon his or her
`testimony.
`
`You should consider each expert opinion received
`in evidence in this case, and give it such weight as you
`think it deserves. If you decide that the opinion of an
`expert witness is not based upon sufficient education and
`experience, or if you conclude that the reasons given in
`support of the opinions are not sound, or if you feel that
`the opinion is outweighed by other evidence, you may
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`disregard the opinion in whole or in part.
`During the trial, certain testimony was
`presented to you through depositions that were read into
`evidence or electronically played. This testimony must be
`given the same consideration you would give it had the
`witness personally appeared in court. Like the testimony of
`a live witness, the statements made in a deposition are made
`under oath and are considered evidence that may be used to
`prove particular facts.
`I will now review for you the parties in this
`action and the positions of the parties that you will have
`to consider in reaching your verdict.
`Plaintiff is MobileMedia Ideas, LLC, which I
`will refer to as MobileMedia. Defendant is Apple Inc.,
`which I will refer to as Apple. MobileMedia is the current
`owner of U.S. Patent Number RE 39,231, which I will refer to
`as the patent-in-suit or the '231 patent. Apple designs,
`manufactures, and markets mobile communication and media
`devices. MobileMedia contends that certain versions of
`Apple's iPhone products infringe claims 2 and 12 of the '231
`patent. These patent claims may be referred to collectively
`as the asserted claims.
`Apple contends it does not infringe the asserted
`claims of the '231 patent. Apple further contends that the
`asserted claims are invalid due to obviousness and lack of
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`written description.
`You will be asked to determine the issues of
`infringement and validity according to instructions I will
`give you in a moment.
`In any legal action, facts must be proven by a
`required standard of evidence, known as the burden of proof.
`In a patent case such as this, there are two different
`burdens of proof that are used. The first is called
`preponderance of the evidence. The second is called clear
`and convincing evidence.
`MobileMedia must prove its claims of patent
`infringement by a preponderance of the evidence. When a
`party has the burden of proof by a preponderance of the
`evidence, it means that you must be persuaded that what the
`party seeks to prove is more probably true than not true.
`To put it differently, if you were to put MobileMedia's and
`Apple's evidence regarding infringement on opposite sides of
`a scale, the evidence supporting MobileMedia's assertions
`would have to make the scale tip somewhat to MobileMedia's
`side. If it is determined that Apple fringes the asserted
`claims and those claims are determined to be valid,
`MobileMedia also has the burden to establish the appropriate
`amount of damages it should receive by a preponderance of
`the evidence.
`Clear and convincing evidence is a higher burden
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`of proof than a preponderance of the evidence. Apple has
`the burden of proving that each one of the asserted claims
`is invalid by clear and convincing evidence. Clear and
`convincing evidence is evidence that produces an abiding
`conviction that the truth of a fact is highly probable. You
`must decide, as to each of the asserted claims, whether
`Apple has proven, by clear and convincing evidence, that the
`claim is invalid by reason of obviousness in light of the
`prior art and the ordinary skill of one in the art, or by
`reason of lack of written description. I will explain these
`concepts to you further in a moment.
`Those of you who are familiar with criminal
`cases will have heard the term proof beyond a reasonable
`doubt. That burden does not apply in a civil case and you,
`therefore, should put it out of your mind.
`Before you can decide whether or not any of the
`asserted claims are infringed or invalid, you will have to
`understand what patent claims are. Patent claims are the
`numbered paragraphs at the end of a patent.
`The purpose of the claims is to provide notice
`to the public of what a patent covers and does not cover.
`The claims are word pictures intended to define, in words,
`the boundaries of the invention described and illustrated in
`the patent.
`
`Claims are usually divided into parts, called
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`limitations. For example, a claim that covers the invention
`of a table may recite the tabletop, four legs, and the glue
`that secures the legs to the tabletop. The tabletop, legs
`and glue are each a separate limitation of the claim. A
`claim covering the invention of a table is called an
`apparatus claim.
`There are two different types of claims in a
`patent. The first type is called an independent claim. An
`independent claim does not refer to any other claim of the
`patent. An independent claim is read alone to determine its
`scope.
`
`For example, claim 12 of the '231 patent is an
`independent claim. You know this because claim 12 does not
`refer to any other claims. Accordingly, the words of the
`claim are read by themselves in order to determine what the
`claim covers.
`The second type, a dependent claim, refers
`to at least one other claim in the patent and, thus,
`incorporates whatever that other claim says. Accordingly,
`to determine what a dependent claim covers, you must read
`both the dependent claim and the claim or claims to which it
`refers.
`
`For example, claim 2 of the '231 patent is a
`dependent claim. If you look at claim 2, it refers to
`claim 12. Therefore, to determine what claim 2 covers,
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`you must consider both the words of claim 12 and 2
`together.
`
`Several claims of the patent-in-suit use the
`transitional term comprising. Comprising is interpreted the
`same as including or containing. In patent claims,
`comprising means that the claims are open-ended, that is,
`the claims are not limited to products that include only
`what is in the claim and nothing else.
`If you find that an accused product includes all
`of the limitations in any of the asserted claims that use
`the term comprising, the fact that the product may also
`include additional elements or features is irrelevant. The
`presence of additional elements or features in an accused
`product does not mean that the product does not infringe a
`patent claim.
`Similarly, if you find that the prior art
`includes all of the limitations in any of the asserted
`claims that use the word "comprising," the fact that it
`may also include additional elements or features is
`irrelevant. The presence of additional elements or features
`does not mean that the prior art does not invalidate a
`patent claim.
`It is my duty under the law to define what the
`patent claims mean and to instruct you about that meaning.
`You must accept the meanings I give you and use the meaning
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`of each claim for your decision on infringement and
`validity. You must ignore any different interpretation
`given to these terms by the witnesses or by attorneys. I
`instruct you that the following claim terms of the '231
`patent have the following definitions.
`An alert sound generator for generating the
`alert sound when the call is received from the remote
`caller. That's the limitation. The definition, the
`function is generating the alert sound when the call is
`received from the remote caller.
`The structure is an alert sound generator (such
`the alert sound generator 13 in the '231 patent.)
`The limitation control means for controlling
`said alert sound generator. The function is controlling the
`alert sound generator to change a volume of the generated
`alert sound.
`
`The structure is CPU and alert sound generator
`on/off controller.
`The limitation means for specifying a
`predetermined operation by the user. The function is
`specifying a predetermined operation by the user.
`The structure is a CPU and an operation key.
`The limitation to change a volume of the
`generated alert sound.
`The definition is encompasses both stopping the
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`sound and reducing the volume of the sound.
`The limitation RF signal processing means for
`transmitting and/or receiving radio waves.
`The function is transmitting and/or receiving
`
`radio waves.
`
`The structure is RF signal processing circuitry.
`The limitation stop the sound.
`The definition stop the sound that is being
`generated without cutting off the telephone circuit.
`If I have not provided a specific definition for
`a given term, you are to use the ordinary meaning of that
`term.
`
`The definitions I have given for some of the
`claim terms include identification of function and
`structure. Each of those terms is called a
`means-plus-function limitation. 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 described in the patent that performs that
`function.
`
`When I read you my definitions for certain claim
`terms a few moments ago, I identified the
`means-plus-function claim limitations by describing
`the structures disclosed in the patent-in-suit for
`performing the corresponding functions. You should apply my
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`Case 1:10-cv-00258-SLR Document 757 Filed 08/14/17 Page 18 of 40 PageID #: 30230
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`definition of the functions and the structures described in
`the patent 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 during the
`life of the patent. If any person makes, uses, sells
`(within the United States), offers to sell (from within the
`United States), or imports what is covered by the patent
`claims without the patent owner's permission, that person is
`said to infringe the patent.
`In this case, MobileMedia alleges that Apple's
`accused products literally infringe the asserted claims.
`You must decide whether or not MobileMedia has
`proven, by a preponderance of the evidence, that Apple has
`made, used, sold (within the United States), or offered for
`sale (within the United States), a product covered by any of
`the claims at issue in this case. If Apple infringes one
`claim of the patent-in-suit, then Apple infringes that
`patent. Apple's knowledge or intent to infringe is not
`relevant to whether Apple directly infringes the asserted
`claims.
`
`In order to prove direct infringement,
`MobileMedia must prove that each limitation of the asserted
`claims is present in the accused product. A claim
`limitation is literally present if it exists in the accused
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`Case 1:10-cv-00258-SLR Document 757 Filed 08/14/17 Page 19 of 40 PageID #: 30231
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`product just as it is described in the claim language,
`either as I have explained that language to you or, if I did
`not explain it, as you understand its plain and ordinary
`meaning.
`
`Literal infringement must be determined with
`respect to each asserted claim individually by comprising
`the elements or features of the accused product to each of
`that claim's limitations. If the accused product omits any
`single limitation recited in a given claim, then you must
`find that Apple has not infringed that claim. You must
`determine infringement with respect to each asserted claim
`and each accused product individually.
`In determining whether any accused product
`literally infringes any asserted claim, you should take the
`following steps.
`First, you should determine the meaning of the
`asserted claim by reading the claim language, limitation by
`limitation, as those limitations have been construed by the
`Court, or if they have not been specifically construed by
`the Court, according to the plain and ordinary meaning of
`the of the claim language.
`And, second, you should compare the accused
`product, element by element or feature by feature to each of
`the limitations of the asserted claim.
`If you find each and every limitation of the
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`Case 1:10-cv-00258-SLR Document 757 Filed 08/14/17 Page 20 of 40 PageID #: 30232
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`asserted claim in the accused product, you must return a
`verdict of literal infringement as to that claim. If you
`did not find each and every limitation of the asserted claim
`in the accused product, you must not return a verdict of
`literal infringement as to that claim.
`You must repeat the above analysis with every
`asserted claim. There is one exception to this rule. If
`you find that an independent claim is not infringed, there
`cannot be infringement of any dependent claim that refers
`directly or indirectly to that independent claim. On the
`other hand, if you find that an independent claim has been
`infringed, you must still decide, separately, whether the
`product meets the additional requirements of any claims that
`depend from the independent claim, thus, whether those
`dependent claims have also been infringed.
`As I have previously explained, some of the
`asserted claims include requirements that are written in
`means-plus-function form. In order to prove direct
`infringement of a means-plus-function limitation of an
`asserted claim, MobileMedia must prove that: One, the
`accused product has a structure or a set of structures that
`performs the identical function recited in the claim; and
`two, that structure or set of structures is the described
`structures that I defined earlier as performing the
`functional limitation.
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`Case 1:10-cv-00258-SLR Document 757 Filed 08/14/17 Page 21 of 40 PageID #: 30233
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`As I stated previously, Apple contends that the
`asserted claims are invalid. I will now explain to you each
`of the grounds for invalidity that were presented by Apple
`at trial.
`
`Apple must meet its burden of proof on at least
`one ground in order to invalidate a claim. In making your
`determination as to invalidity, you should consider each
`claim separately.
`For a patent to be valid, the invention claimed
`in the patent must be new, useful, and nonobvious. The
`terms new, useful and nonobvious have special meaning under
`the patent laws. I will explain these terms to you as we
`discuss Apple's grounds for asserting invalidity.
`Apple has challenged the validity of the
`asserted claims on a number of grounds. Although the patent
`was granted by the Patent and Trademark Office, it is your
`job to determine whether Apple has proven, by clear and
`convincing evidence, that the legal requirements for
`patentability were not met.
`I will now explain to you Apple's grounds for
`invalidity in detail. In making your determination as to
`invalidity, you must consider each claim separately.
`As I stated previously, under the patent laws, a
`person can be granted a patent only if the invention claimed
`in the patent is new and not obvious in light of what came
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`Case 1:10-cv-00258-SLR Document 757 Filed 08/14/17 Page 22 of 40 PageID #: 30234
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`before. That which came before is referred to as the prior
`art.
`
`Apple must prove, by clear and convincing
`evidence, that these items are prior art. In order to do
`so, Apple must prove that the items fall within at least one
`of the different categories of prior art recognized by the
`patent laws. These categories include:
`First, anything that was publicly known or used
`in the United States by someone other than the inventor
`before the inventor made the invention.
`Second, anything that was described in a printed
`publication anywhere in the world before the inventor made
`the invention, or more than one year before the application
`for the patent was filed.
`You must decide whether the asserted claims are
`invalid in view of the prior art and the ordinary skill in
`the art as it existed as of a certain time. The parties
`agree to the following priority date for the '231 patent:
`December 19, 1994.
`The prior art relevant to each of Apple's claims
`will be listed for you in connection with the instructions
`relating to that claim.
`Apple contends that the asserted claims are
`invalid because they are obvious. Apple contends that each
`of the asserted claims is obvious in view of the following
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`Case 1:10-cv-00258-SLR Document 757 Filed 08/14/17 Page 23 of 40 PageID #: 30235
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`prior art:
`
`DTX-260: Michael Spring, et al, "Telephone
`Ring Mute With Auto Re-Enable" Motorola Technical
`Developments, Volume 19 (June 1993) (the Spring or Motorola
`preference).
`
`DTX-271, DTX-272, and PTX-272A: Japanese
`Application 2-305248 (the Fujita or Panasonic reference).
`In order to be patentable, an invention must not
`have been obvious to a person of ordinary skill in the art
`at the time the invention was made. The issue is not
`whether the claimed invention would be obvious to you as a
`layman, to me as a judge, or to a genius in the art, but
`whether it would have been obvious to one of ordinary skill
`in the art at the time the invention was made.
`In arriving at your decision on the issue of
`whether or not the asserted claims would have been obvious
`to a person of ordinary skill in the art and, therefore, are
`invalid, you should determine the scope and content of the
`prior art. This means that you should determine what prior
`art was reasonably pertinent to the particular problems the
`inventor faced.
`Prior art must be analogous art to be relevant
`to your consideration of obviousness. Analogous art may be
`art from the same field of endeavor. If the reference is
`not within the field of the inventor's endeavor, it may
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`Case 1:10-cv-00258-SLR Document 757 Filed 08/14/17 Page 24 of 40 PageID #: 30236
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`still be considered if the reference is reasonably pertinent
`to the particular problem that the inventors faced.
`You must next consider the differences, if any,
`between the prior art and each asserted claim. Although it
`is proper for you to consider differences between the
`claimed invention and the prior art, you should not focus on
`only the differences, because the test is whether the
`claimed invention as a whole would have been obvious over
`all of the asserted prior art.
`Next you are to determine the level of ordinary
`skill in the art to which the claimed invention pertained at
`the time the claimed invention was made. Factors to be
`considered in determining the level of ordinary skill in the
`pertinent art include:
`One, the educational level of the inventor and
`of others working in the field.
`Two, the types of problems encountered in the
`art at the time of the invention.
`Three, the prior art patents and publications.
`Four, the activities of others.
`Five, prior art solutions to the problems
`encountered by the inventor.
`And, six, the sophistication of the technology.
`A person of ordinary skill art is presumed to
`have knowledge of the relevant prior art at the time of the
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`Case 1:10-cv-00258-SLR Document 757 Filed 08/14/17 Page 25 of 40 PageID #: 30237
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`claimed invention. If you find that the available prior art
`shows each of the limitations of the asserted claims, you
`must determine whether it then would have been obvious to a
`person of ordinary skill in the art to combine these
`limitations in the same manner as the asserted claims.
`Apple must show that a person of ordinary skill
`in the art, at the
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