Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 1 of 68 PageID #: 48527
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 13-919-JLH
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`))))))))))
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`FINAL JURY INSTRUCTIONS
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`ARENDI S.A.R.L.,
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`Plaintiff,
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`v.
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`GOOGLE LLC,
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`Defendant.
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`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 2 of 68 PageID #: 48528
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`TABLE OF CONTENTS
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`INTRODUCTION
`JURORS’ DUTIES
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`1. GENERAL INSTRUCTIONS
`1.1
`1.2
`1.3 EVIDENCE DEFINED
`1.4 DIRECT AND CIRCUMSTANTIAL EVIDENCE
`1.5 CONSIDERATION OF EVIDENCE
`1.6 STATEMENTS OF COUNSEL
`1.7 CREDIBILITY OF WITNESSES
`1.8 EXPERT WITNESSES
`1.9 DEPOSITION TESTIMONY
`1.10 DEMONSTRATIVE EXHIBITS
`1.11 USE OF NOTES
`1.12 BURDENS OF PROOF
`2. THE PARTIES AND THEIR CONTENTIONS
`2.1 THE PARTIES
`2.2 SUMMARY OF THE ISSUES
`3. THE PATENT LAWS
`3.1 THE PATENT LAWS
`3.2 CLAIM CONSTRUCTION
`3.3
`3.4
`3.5 DIRECT INFRINGEMENT
`3.5 DIRECT INFRINGEMENT OF A METHOD CLAIM
`3.6
`3.7 CONTRIBUTORY INFRINGEMENT
`3.8. WILLFULNESS
`4.
`4.1
`4.2
`4.3 PRIOR ART
`4.4
`4.5
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`31
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`INFRINGEMENT—INFRINGEMENT GENERALLY
`INFRINGEMENT—DIRECT INFRINGEMENT GENERALLY
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`INDUCED INFRINGEMENT
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`INVALIDITY
`INVALIDITY—BURDEN OF PROOF
`INVALIDITY—PERSON OF ORDINARY SKILL IN THE ART
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`INVALIDITY—ANTICIPATION
`INVALIDITY—OBVIOUSNESS
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`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 3 of 68 PageID #: 48529
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`INVALIDITY—WRITTEN DESCRIPTION
`INVALIDITY—ENABLEMENT
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`4.6
`4.7
`5. DAMAGES
`5.1 DAMAGES GENERALLY
`5.2 REASONABLE ROYALTY—THE “HYPOTHETICAL NEGOTIATION”
`5.3 REASONABLE ROYALTY—RELEVANT FACTORS TO THE HYPOTHETICAL
`5.4 DAMAGES—AVAILABILITY OF NON-INFRINGING ALTERNATIVES
`5.5 DAMAGES—APPORTIONMENT
`5.6 DAMAGES LIMITATION – EXTRATERRITORIAL ACTS
`6 DELIBERATION AND VERDICT
`6.1
`6.2 UNANIMOUS VERDICT
`6.3 DUTY TO DELIBERATE
`6.4 SOCIAL MEDIA
`6.5 COURT HAS NO OPINION
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`54
`57
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`60
`61
`61
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`METHOD
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`NEGOTIATION METHOD
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`INTRODUCTION
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`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 4 of 68 PageID #: 48530
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`1.
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`GENERAL INSTRUCTIONS
`1.1
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`INTRODUCTION
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`Members of the jury, now it is time for me to instruct you about the law that you must
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`follow in deciding this case. Each of you has been provided a copy of these instructions. You may
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`read along as I deliver them if you prefer.
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`I will start by explaining your duties and the general rules that apply in every civil case.
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`Then I will explain some rules that you must use in evaluating particular testimony and evidence.
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`Then I will explain the positions of the parties and the law you will apply in this case. And last, I
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`will explain the rules that you must follow during your deliberations in the jury room and the
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`possible verdicts that you may return.
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`Please listen very carefully to everything I say.
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`You will have a written copy of these instructions with you in the jury room for your
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`reference during your deliberations. You will also have a verdict form, which will list the questions
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`that you must answer to decide this case.
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`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 5 of 68 PageID #: 48531
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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 is to decide what the facts are from the
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`evidence that you saw and heard in court. Deciding what the facts are is your job, not mine, and
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`nothing that I have said or done during this trial was meant to influence your decision about the
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`facts in any way. You are the sole judges of the facts.
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`Your second duty is to take the law that I give you, apply it to the facts, and decide under
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`the appropriate burden of proof which party should prevail on any given issue. It is my job to
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`instruct you about the law, and you are bound by the oath you took at the beginning of the trial to
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`follow the instructions that I give you, even if you personally disagree with them. This includes
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`the instructions that I gave you before and during the trial, and these instructions. All of the
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`instructions are important, and you should consider them together as a whole.
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`Perform these duties fairly. Do not guess or speculate, and do not let any bias, sympathy,
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`or prejudice you may feel toward one side or the other influence your decision in any way.
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`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 6 of 68 PageID #: 48532
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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 heard here in
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`court. Do not let rumors, suspicions, or anything else that you may have seen or heard outside of
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`court influence your decision in any way. The evidence in this case includes only what the
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`witnesses said while they were testifying under oath, including deposition transcript testimony that
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`has been played by video or read to you, the exhibits that I allowed into evidence, matters I have
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`instructed you to take judicial notice of, and the stipulations to which the lawyers agreed.
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`Certain models, reproductions, charts, summaries, and graphics have been used to illustrate
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`certain evidence and testimony from witnesses. Unless I have specifically admitted them into
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`evidence, these models, reproductions, charts, summaries, and graphics are not themselves
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`evidence, even if they refer to, identify, or summarize evidence, and you will not have these
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`demonstratives in the jury room.
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`Nothing else is evidence. The lawyers’ statements and arguments are not evidence. The
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`arguments of the lawyers are offered solely as an aid to help you in your determination of the facts.
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`Their questions and objections are not evidence. My legal rulings are not evidence. You should
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`not be influenced by a lawyer’s objection or by my ruling on that objection. Any of my comments
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`and questions are not evidence.
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`During the trial I may have not let you hear the answers to some of the questions that the
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`lawyers asked. I also may have ruled that you could not see some of the exhibits that the lawyers
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`wanted you to see. And, sometimes I may have ordered you to disregard things that you saw or
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`heard, or that I struck from the record. You must completely ignore all of these things. Do not
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`speculate about what a witness might have said or what an exhibit might have shown. These things
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`are not evidence, and you are bound by your oath not to let them influence your decision in any
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`way. Make your decision based only on the evidence, as I have defined it here, and nothing else.
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`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 7 of 68 PageID #: 48533
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`1.4
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`DIRECT AND CIRCUMSTANTIAL EVIDENCE
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`During the preliminary instructions, I told you about “direct evidence” and “circumstantial
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`evidence.” I will now remind you what each means.
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`Direct evidence is simply evidence like the testimony of an eyewitness which, if you
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`believe it, directly proves a fact. If a witness testified that he saw it raining outside, and you believe
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`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 a fact. If
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`someone walked into the courtroom wearing a raincoat covered with drops of water and carrying
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`a wet umbrella, that would be circumstantial evidence from which you could conclude that it was
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`raining.
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`It is your job to decide how much weight to give the direct and circumstantial evidence.
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`The law makes no distinction between the weight that you should give to either one, nor does it
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`say that one is any better evidence than the other. You should consider all the evidence, both direct
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`and circumstantial, and give it whatever weight you believe it deserves.
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`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 8 of 68 PageID #: 48534
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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 light of your
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`everyday experience with people and events, and give it whatever weight you believe it deserves.
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`If your experience tells you that certain evidence reasonably leads to a conclusion, you are free to
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`reach that conclusion.
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`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 9 of 68 PageID #: 48535
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`1.6
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`STATEMENTS OF COUNSEL
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`A further word about statements of counsel and arguments of counsel. The attorneys’
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`statements and arguments are not evidence. Instead, their statements and arguments are intended
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`to help you review the evidence presented.
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`If you remember the evidence differently from the way it was described by the attorneys,
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`you should rely on your own recollection.
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`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 10 of 68 PageID #: 48536
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`1.7
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`CREDIBILITY OF WITNESSES
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`You are the sole judges of each witness’s credibility. You may believe everything a witness
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`says, or part of it, or none of it. You should consider each witness’s means of knowledge; strength
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`of memory; opportunity to observe; how reasonable or unreasonable the testimony is; whether it
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`is consistent or inconsistent; whether it has been contradicted; the witness’s biases, prejudices, or
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`interests; the witnesses’ manner or demeanor on the witness stand; and all circumstances that,
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`according to the evidence, could affect the credibility of the testimony.
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`In determining the weight to give to the testimony of a witness, you should ask yourself
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`whether there is evidence tending to prove that the witness testified falsely about some important
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`fact or whether there was evidence that at some other time the witness said or did something, or
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`failed to say or do something, that was different from the testimony he or she gave at the trial in
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`person or by deposition testimony played by video or read to you. You have the right to distrust
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`such witness’s testimony and you may reject all or some of the testimony of that witness or give
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`it such credibility as you may think it deserves.
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`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 11 of 68 PageID #: 48537
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`1.8
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`EXPERT WITNESSES
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`Expert testimony is testimony from a person who has a special skill or knowledge in some
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`science, profession, or business. This skill or knowledge is not common to the average person but
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`has been acquired by the expert through special study or experience.
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`In weighing expert testimony, you may consider the expert’s qualifications, the reasons for
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`the expert’s opinions, and the reliability of the information supporting the expert’s opinions, as
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`well as the factors I have previously mentioned for weighing testimony of any other witness.
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`Expert testimony should receive whatever weight and credit you think appropriate, given all the
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`other evidence in the case. You are free to accept or reject the testimony of experts, just as with
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`any other witness.
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`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 12 of 68 PageID #: 48538
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`1.9
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`DEPOSITION TESTIMONY
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`During the trial, certain testimony was presented to you by the playing of video excerpts
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`from a deposition. The deposition testimony may have been edited or cut to exclude irrelevant
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`testimony as the parties have only a limited amount of time to present you with evidence. You
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`should not attribute any significance to the fact that the deposition videos may appear to have been
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`edited.
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`Deposition testimony is out-of-court testimony given under oath and is entitled to the same
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`consideration you would give it had the witnesses personally appeared in court.
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`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 13 of 68 PageID #: 48539
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`1.10 DEMONSTRATIVE EXHIBITS
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`During the course of the trial, you have seen many exhibits. Many of these exhibits were
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`admitted as evidence. You will have these admitted exhibits in the jury room for your deliberations.
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`The remainder of the exhibits (including charts, models, reproductions, PowerPoint presentations,
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`and animations) were offered to help illustrate the testimony of the various witnesses. These
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`illustrative exhibits, called “demonstrative exhibits,” have not been admitted, are not evidence, and
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`should not be considered as evidence. Rather, it is the underlying testimony of the witness that you
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`heard when you saw the demonstrative exhibits that is the evidence in this case.
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`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 14 of 68 PageID #: 48540
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`1.11 USE OF NOTES
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`You may have taken notes during trial to assist your memory. As I instructed you at the
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`beginning of the case, you should use caution in consulting your notes. There is generally a
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`tendency I think to attach undue importance to matters which one has written down. Some
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`testimony which is considered unimportant at the time presented, and thus not written down, takes
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`on greater importance later in the trial in light of all the evidence presented. Therefore, your notes
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`are only a tool to aid your own individual memory, and you should not compare notes with other
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`jurors in determining the content of any testimony or in evaluating the importance of any evidence.
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`Your notes are not evidence, and are by no means a complete outline of the proceedings or a list
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`of the highlights of the trial.
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`Above all, your memory should be the greatest asset when it comes time to deliberate and
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`render a decision in this case.
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`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 15 of 68 PageID #: 48541
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`1.12
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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, known as the
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`“burden of proof.” In a patent case such as this, there are two different burdens of proof that are
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`used. The first is called “preponderance of the evidence.” The second is called “clear and
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`convincing evidence.” I told you about these two standards of proof during my preliminary
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`instructions to you and I will now remind you what they mean. [Arendi’s Proposal: Plaintiff
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`Arendi asserts that Defendant Google infringes the ’843 patent.]
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`[Arendi’s Proposal: Plaintiff Arendi contends it does so in several distinct ways—that is,
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`Google infringes directly, Google actively induces infringement by others, and Google contributes
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`to infringement by others.]
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`[Google’s Proposal: Plaintiff Arendi asserts that Defendant Google directly infringes the
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`’843 Patent.]
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`Plaintiff Arendi has the burden of proving its infringement claims by a “preponderance of
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`the evidence.” That means Plaintiff Arendi has to prove to you, in light of all the evidence, that
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`what it claims is more likely true than not. To say it differently, if you were to put the evidence of
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`Plaintiff Arendi and the evidence of Defendant on opposite sides of a scale, the evidence
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`supporting Plaintiff Arendi’s claims would have to make the scales tip slightly on its side in each
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`instance. If the scale should remain equal or tip in favor of Defendant, you must find in favor of
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`Defendant.
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`In addition to denying Plaintiff Arendi’s claims that it infringes, Google asserts that the
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`asserted claims of the ’843 Patent are invalid. A party challenging the validity of a patent—in this
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`instance, Defendant Google—has the burden to prove that the asserted claims are invalid by clear
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`and convincing evidence. Clear and convincing evidence means evidence that it is highly probable
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`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 16 of 68 PageID #: 48542
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`that a fact is true. Proof by clear and convincing evidence is a higher burden than proof by a
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`preponderance of the evidence.
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`You may have heard of the “beyond a reasonable doubt” burden of proof from criminal
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`cases. That requirement is the highest burden of proof. It does not apply to civil cases and,
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`therefore, you should put it out of your mind.
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`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 17 of 68 PageID #: 48543
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`2.
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`THE PARTIES AND THEIR CONTENTIONS
`2.1
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`THE PARTIES
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`I will now review for you the parties in this action, and the positions of the parties that you
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`will have to consider in reaching your verdict.
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`As I have previously told you, the plaintiff in this case is Arendi S.A.R.L. We have referred
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`to the plaintiff as Arendi. The defendant in this case is Google LLC. We have referred to it as
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`Google.
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`Plaintiff Arendi is the owner of U.S. Patent Number 7,917,843. During this case, we have
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`referred to the patent by its last three digits, the ’843 Patent, or as the patent-in-suit or the Asserted
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`Patent.
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`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 18 of 68 PageID #: 48544
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`you:
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`2.2
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`SUMMARY OF THE ISSUES
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`You must decide the following issues in this case according to the instructions that I give
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`[Arendi’s Proposal:
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`1.
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`Whether Plaintiff Arendi has proven by a preponderance of the evidence that
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`Google directly infringes one or more of claims 1, 8, 23 and 30 of the ’843 Patent;
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`2.
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`Whether Plaintiff Arendi has proven by a preponderance of the evidence that
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`Google’s infringement of one or more claims of the ’843 Patent was willful;
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`3.
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`Whether Plaintiff Arendi has proven by a preponderance of the evidence that third
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`parties directly infringed one or more of claims 1, 8, 23 and 30 of the ’843 Patent. With respect to
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`Google, a third-party is a person or entity other than Google.
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`4.
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`Whether Plaintiff Arendi has proven by a preponderance of the evidence that
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`Google induced a third-party to infringe one or more of claims 1, 8, 23 and 30 of the ’843 Patent;
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`5.
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`Whether Plaintiff Arendi has proven by a preponderance of the evidence that
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`Google contributed to a third-party’s infringement of one or more of claims 1, 8, 23 and 30 of the
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`’843 Patent;
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`6.
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`Whether Plaintiff Arendi has proven by a preponderance of the evidence the
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`amount of money damages adequate to compensate it for Defendant Google’s infringement.
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`7.
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`Whether Defendant Google has proven by clear and convincing evidence that one
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`or more of the asserted claims of the ’843 Patent is invalid.]
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`[Google’s Proposal:
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`1.
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`Whether Plaintiff Arendi has proven by a preponderance of the evidence that
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`Google directly infringes one or more of claims 1, 8, 23 and 30 of the ’843 Patent;
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`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 19 of 68 PageID #: 48545
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`2.
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`Whether Defendant Google has proven by clear and convincing evidence that one
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`or more of the asserted claims of the ’843 Patent is invalid.
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`3.
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`If you decide that any claim of the ’843 Patent has been infringed by Google and is
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`not invalid, you will then need to decide whether Arendi has proven by a preponderance of the
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`evidence that Google’s infringement was willful;
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`4.
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`If you decide that any claim of the ’843 Patent has been infringed by Google and is
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`not invalid, you will also need to decide what, if any, money damages Arendi has proven by a
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`preponderance of the evidence are to be awarded to compensate it for Google’s infringement.]
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`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 20 of 68 PageID #: 48546
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`3.
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`THE PATENT LAWS
`3.1
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`THE PATENT LAWS
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`At the beginning of the trial, I gave you some general information about patents and the
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`patent system and a brief overview of the patent laws relevant to this case. I will now give you
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`more detailed instructions about the patent laws that specifically relate to this case. If you would
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`like to review my instructions at any time during your deliberations, you will have your copy
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`available to you in the jury room.
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`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 21 of 68 PageID #: 48547
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`3.2
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`CLAIM CONSTRUCTION
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`Before you can decide many of the issues in this case, you will need to understand the role
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`of patent “claims.” The patent claims are the numbered sentences at the end of a patent. The claims
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`are important because it is the words of the claims that define what a patent covers. The figures
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`and text in the rest of the patent provide a description and/or examples of the invention and provide
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`a context for the claims, but it is the claims that define the breadth of the patent’s coverage.
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`Therefore, what a patent covers depends, in turn, on what each of its claims covers.
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`To know what a claim covers, a claim sets forth, in words, a set of requirements. Each
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`claim sets forth its requirements in a single sentence. A claim may be narrower or broader than
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`another claim by setting forth more or fewer requirements. The requirements of a claim are often
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`referred to as “claim elements” or “claim limitations.” The coverage of a patent is assessed claim-
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`by-claim.
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`When a thing (such as a product or a process) meets all of the requirements of a claim, the
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`claim is said to “cover” that thing, and that thing is said to “fall” within the scope of that claim. In
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`other words, a claim covers a product or process where each of the claim elements or limitations
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`is present in that product or process. [Google’s proposal: If a product or process is missing even
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`one limitation or element of a claim, the product or process is not covered by that claim.]
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`You will first need to understand what each claim covers in order to decide whether or not
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`there is infringement of the claim and to decide whether or not the claim is invalid. The first step
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`is to understand the meaning of the words used in the patent claim.
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`This case involves two types of patent claims: independent claims and dependent claims.
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`An “independent claim” sets forth all of the requirements that must be met in order to be
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`covered by that claim. Thus, it is not necessary to look at any other claim to determine what an
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`independent claim covers. For example, claims 1 and 23 of the ’843 Patent are independent claims.
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`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 22 of 68 PageID #: 48548
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`In contrast, claims 8 and 30 of the ’843 Patent are “dependent claims.” A dependent claim
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`does not itself recite all of the requirements of the claim but refers to another claim for some of its
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`requirements. In this way, the claim “depends” on another claim. A dependent claim incorporates
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`all of the requirements of the claim(s) to which it refers. The dependent claim then adds its own
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`additional requirements. Therefore, to determine what a dependent claim covers, it is necessary to
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`look at both the dependent claim and the other claim or claims to which it refers. For example,
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`claim 8 of the ’843 Patent is a dependent claim that depends from claim 1. Claim 30 of the ’843
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`Patent is a dependent claim that depends from claim 23. A product that meets all of the
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`requirements of both the dependent claim and the claim(s) to which it refers is covered by that
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`dependent claim.
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`It is my job as a judge to define the terms of the claims and to instruct you about the
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`meaning. It is your role to apply my definitions to the issues that you are asked to decide.
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`In this case, I have determined the meaning of the following terms of the asserted claims
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`of the ’843 Patent:
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`Claim Term
`“document”
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`“first information”
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`“computer program”
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`“to determine if the first
`information is at least one of a
`plurality of types of information that
`can be searched for”
`
`“that allows a user to enter a
`user command to initiate an
`operation”
`
`Court’s Construction
`“a word processing, spreadsheet, or similar file
`into which text can be entered”
`“text in a document that can be used as input for
`a search operation in a source external to the
`document”
`“a self-contained set of instructions, as opposed
`to a routine or library, intended to be executed on a
`computer so as to perform some task”
`“to determine if the first information belongs to
`one or more of several predefined categories of
`identifying information (e.g., a name) or contact
`information (e.g., a phone number, a fax number, or an
`email address) that can be searched for in an
`information source external to the document”
`“that allows a user to enter an input or series of
`inputs to initiate an operation”
`
`
`
`19
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`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 23 of 68 PageID #: 48549
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`
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`“providing an input device
`configured by the first computer
`program”
`
`“providing an input device set up by the first
`computer program for use by the user”
`
`You must accept my definition of these words 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.
`
`The beginning portion of a claim, also known as the preamble, often uses the word
`
`“comprising.” The word “comprising,” when used in the preamble, means “including but not
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`limited to” or “containing but not limited to.” When “comprising” is used in the preamble, if you
`
`decide that an accused product includes all of the requirements of that claim, the claim is infringed.
`
`This is true even if the accused product contains additional elements.
`
`[Arendi’s proposal: For any words in the claim for which I have not provided you with a
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`definition, you should apply their ordinary meaning in the field of the ’843 Patent.] 1
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`[Google’s proposal: For any words in the claim for which I have not provided you with a
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`definition, you should apply their plain and ordinary meaning as understood by one of ordinary
`
`skill in the field of technology of the ’843 Patent at the time of the alleged invention. The meanings
`
`of the words of the patent claims must be the same when deciding both the issues of infringement
`
`and validity.]
`
`You should not take my definition of the language of the claims as an indication that I have
`
`a view regarding how you should decide the issues that you are being asked to decide, such as
`
`infringement and invalidity. These issues are yours to decide.
`
`
`
`
`
`
`1 Arendi: See Federal Circuit Bar Association, Model Patent Jury Instructions at 12, available at
`https://fedcirbar.org/integralsource/model-patent-jury-instructions.
`
`
`
`20
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`

`

`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 24 of 68 PageID #: 48550
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`
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`[Arendi’s proposal:
`
`
`3.3
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`INFRINGEMENT—INFRINGEMENT GENERALLY
`
`I will now instruct you as to the rules you must follow when deciding whether Plaintiff
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`Arendi has proven that Google has infringed the ’843 Patent. Infringement is assessed on a claim-
`
`by-claim basis. Therefore, there may be infringement of one claim but no infringement of another.
`
`In this case, there are three possible ways that a claim may be infringed. The three types of
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`infringement are called: (1) direct infringement; (2) active inducement; and (3) contributory
`
`infringement. Active inducement and contributory infringement are referred to as indirect
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`infringement. There cannot be indirect infringement without someone else engaging in direct
`
`infringement. In this case, Arendi has alleged that Google directly infringes the ’843 Patent. In
`
`addition, Arendi has alleged that third parties directly infringe the ’843 Patent, and Google is liable
`
`for actively inducing and contributing to that direct infringement.
`
`In order to prove infringement, Arendi must prove that the requirements for one or more
`
`of these types of infringement are met by a preponderance of the evidence, that is, that it is more
`
`likely than not that all of the requirements of one or more of each of these types of infringement
`
`have been proved.
`
`I will now explain each of these types of infringement in more detail.]2
`
`[Google’s proposal:
`
`
`3.4
`
`INFRINGEMENT—DIRECT INFRINGEMENT GENERALLY
`
`A person or business entity that makes, uses, sells, or offers for sale within the United
`
`States or imports into the United States an invention claimed in a patent infringes that patent.
`
`Infringement is assessed on a claim-by-claim basis by comparing Google’s accused product or
`
`
`2 Arendi: See Federal Circuit Bar Association, Model Patent Jury Instructions at 17, available at
`https://fedcirbar.org/integralsource/model-patent-jury-instructions.
`
`
`
`21
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`

`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 25 of 68 PageID #: 48551
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`
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`method to the elements of each claim. There may be infringement of one claim but no infringement
`
`of another. To prove infringement of a claim, Arendi must prove that the requirements for
`
`infringement are met by a preponderance of the evidence, that is, that it is more likely than not that
`
`all of the requirements of infringement have been proven.
`
`There is one exception. If you find that an independent claim is not infringed, there cannot
`
`be infringement of any dependent claim that depends from that claim. On the other hand, if you
`
`find that an independent claim has been infringed, you must still separately decide whether the
`
`accused products meet the additional requirements of any dependent claim to determine whether
`
`that dependent claim has also been infringed.]
`
`
`
`
`
`
`
`22
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`

`

`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 26 of 68 PageID #: 48552
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`
`
`[Arendi’s proposal:
`
`
`3.5
`
`DIRECT INFRINGEMENT
`
`To prove direct infringement, Arendi must prove by a preponderance of the evidence, i.e.
`
`that it is more likely than not, that Google made, used, sold, offered for sale within, or imported
`
`into the United States a product that meets the requirements of a claim and did so without Arendi’s
`
`permission during the time the ’843 Patent was in force. You must compare the accused Google
`
`products with each and every one of the requirements of a claim to determine whether all of the
`
`requirements of that claim are met. You must determine, separately for each asserted claim,
`
`whether or not there is infringement.]3
`
`
`
`[Google’s proposal:
`
`
`3.5
`
`DIRECT INFRINGEMENT OF A METHOD CLAIM
`
`Claims 1 and 8 cover a method. Direct infringement of a method claim occurs when a
`
`party performs each and every step of the claimed method. Where no one party performs all of
`
`the steps of a claimed method, but multiple parties combine to perform every step of the method,
`
`that claim can be directly infringed only if all of the actions constituting infringement are
`
`attributable to a single party.4 Here, the actions constituting infringement are attributable to a
`
`single party only if that party directs or controls another party’s performance of the claimed
`
`steps.5
`
`
`3 Arendi: See Federal Circuit Bar Association, Model Patent Jury Instructions at 18, available at
`https://fedcirbar.org/integralsource/model-patent-jury-instructions.
`4 Google: See Akamai Techs. Inc v. Limelight Networks, Inc., 797 F.3d 1020, 1022–23 (Fed. Cir.
`2015) (en banc).
`5 Google: See id.
`
`
`
`23
`
`

`

`Case 1:13-cv-00919-JLH Document 452 Filed 03/31/23 Page 27 of 68 PageID #: 48553
`
`
`
`Arendi alleges that all of the actions constituting infringement of claims 1 and 8 of the
`
`’843 Patent are performed by Google itself or are attributable to Google because Google directs
`
`or controls product users’ performance of the claim steps. Arendi bears the burden of showing
`
`that Google itself has performed each and every step of the claimed methods and, for any step
`
`not performed by Google, that product users’ performance of those steps is attributable to
`
`Google.6
`
`You may find that Google directed or controlled another party’s performance of a step of
`
`a claimed method (1) if the parties have a principal and agent relationship; (2) if Google contracted
`
`with another party to perform a step of the claimed method; or (3) if Google established how or
`
`when the claim step would be performed and conditioned receipt of a benefit or participation in an
`
`activity on another party’s performance of the step in the established manner. Mere guidance or
`
`instruction as to how or when the claim step will be performed is insufficient to show that Google
`
`required another party to perform the step to receive a benefit or participate in an activity.7 If you
`
`find that one or more steps of claims 1 or 8 are not performed by Google and cannot be attributed
`
`to Google, then you must find that there is no direct infringement.]
`
`
`
`
`
`6 Google: See id.
`7 Google: See id.; Travel Sentry, In