Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 1 of 72 PageID #: 51411
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 13-919-JLH
`
`))))))))))
`
`
`
`FINAL JURY INSTRUCTIONS
`
`
`
`
`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`
`v.
`
`GOOGLE LLC,
`
`
`Defendant.
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 2 of 72 PageID #: 51412
`
`
`
`TABLE OF CONTENTS
`
`
` 
`
`INTRODUCTION
`JURORS’ DUTIES
`
`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 STIPULATED FACTS
`1.12 USE OF NOTES
`1.13 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
`3.6 CONTRIBUTORY INFRINGEMENT
`3.8. WILLFULNESS
`4.
`4.1
`4.2
`4.4
`4.5
`5. DAMAGES
`
`INFRINGEMENT—INFRINGEMENT GENERALLY
`INFRINGEMENT—DIRECT INFRINGEMENT
`
` INDUCED INFRINGEMENT
`
`INVALIDITY
`INVALIDITY—BURDEN OF PROOF
`INVALIDITY—PERSON OF ORDINARY SKILL IN THE ART
`INVALIDITY—ANTICIPATION
`INVALIDITY—OBVIOUSNESS
`
`
`
`1
`
`1
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`15
`16
`18
`18
`19
`21
`21
`22
`25
`25
`27
`27
`31
`35
`38
`38
`40
`42
`45
`50
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 3 of 72 PageID #: 51413
`
`
`
`
`
`50
`5.1 DAMAGES GENERALLY
`5.2 REASONABLE ROYALTY—THE “HYPOTHETICAL NEGOTIATION” METHOD
`52
`5.4 DAMAGES—AVAILABILITY OF NON-INFRINGING ALTERNATIVES
`58
`5.5 DAMAGES—APPORTIONMENT
`59
`61
`64
`6 DELIBERATION AND VERDICT
`65
`6.1
`65
`66
`6.2 UNANIMOUS VERDICT
`67
`6.3 DUTY TO DELIBERATE
`6.4 SOCIAL MEDIA
`68
`6.5 COURT HAS NO OPINION
`69
`
`5.6 THE SAMSUNG AGREEMENT
`5.7 DAMAGES—DATE OF COMMENCEMENT
`
`INTRODUCTION
`
`
`
`
`
`2
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 4 of 72 PageID #: 51414
`
`
`
`1.
`
`GENERAL INSTRUCTIONS
`1.1
`
`INTRODUCTION
`
`Members of the jury, now it is time for me to instruct you about the law that you must
`
`follow in deciding this case. Each of you has been provided a copy of these instructions. You may
`
`read along as I deliver them if you prefer.
`
`I will start by explaining your duties and the general rules that apply in every civil case.
`
`Then I will explain some rules that you must use in evaluating particular testimony and evidence.
`
`Then I will explain the positions of the parties and the law you will apply in this case. And last, I
`
`will explain the rules that you must follow during your deliberations in the jury room and the
`
`possible verdicts that you may return.
`
`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 questions
`
`that you must answer to decide this case.
`
`
`
`
`
`
`
`1
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 5 of 72 PageID #: 51415
`
`
`
`1.2
`
`JURORS’ DUTIES
`
`You have two main duties as jurors. The first is to decide what the facts are from the
`
`evidence that you saw and heard 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 about the
`
`facts in any way. You are the sole judges of the facts.
`
`Your second duty is to take the law that I give you, apply it to the facts, and decide under
`
`the appropriate burden of proof which party should prevail on any given issue. It is my job to
`
`instruct you about the law, and you are bound by the oath 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 of the
`
`instructions are important, and you should consider them together as a whole.
`
`Perform these duties fairly. Do not guess or speculate, and do not let any bias, sympathy,
`
`or prejudice you may feel toward one side or the other influence your decision in any way.
`
`
`
`
`
`
`
`2
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 6 of 72 PageID #: 51416
`
`
`
`1.3
`
`EVIDENCE DEFINED
`
`You must make your decision based only on the evidence that you saw and heard here in
`
`court. 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 transcript testimony that
`
`has been played by video or read to you, the exhibits that I allowed into evidence, matters I have
`
`instructed you to take judicial notice of, and the stipulations to which the lawyers agreed.
`
`Certain models, reproductions, charts, summaries, and graphics have been used to illustrate
`
`certain evidence and testimony from witnesses. Unless I have specifically admitted them into
`
`evidence, these models, reproductions, charts, summaries, and graphics are not themselves
`
`evidence, even if they refer to, identify, or summarize evidence, and you will not have these
`
`demonstratives in the jury room.
`
`Nothing else is evidence. The lawyers’ statements and arguments are not evidence. The
`
`arguments of the lawyers are offered solely as an aid to help you in your determination of the facts.
`
`Their questions and objections are not evidence. My legal rulings are not evidence. You should
`
`not be influenced by a lawyer’s objection or by my ruling on that objection. Any of my comments
`
`and questions are not evidence.
`
`During the trial I may have not 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, or that I struck from the record. 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.
`
`
`
`3
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 7 of 72 PageID #: 51417
`
`
`
`1.4
`
`DIRECT AND CIRCUMSTANTIAL EVIDENCE
`
`During the preliminary instructions, I told you about “direct evidence” and “circumstantial
`
`evidence.” I will now remind you what each means.
`
`Direct evidence is simply evidence like the testimony of an eyewitness which, if you
`
`believe it, directly proves a fact. If a witness testified that he saw it raining outside, and you believe
`
`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 weight 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.
`
`
`
`
`
`
`
`4
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 8 of 72 PageID #: 51418
`
`
`
`1.5
`
`CONSIDERATION OF EVIDENCE
`
`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.
`
`
`
`
`
`
`
`5
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 9 of 72 PageID #: 51419
`
`
`
`1.6
`
`STATEMENTS OF COUNSEL
`
`A further word about statements of counsel and arguments of counsel. The attorneys’
`
`statements and arguments are not evidence. Instead, their statements and arguments are intended
`
`to help you review the evidence presented.
`
`If you remember the evidence differently from the way it was described by the attorneys,
`
`you should rely on your own recollection.
`
`
`
`
`
`
`
`6
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 10 of 72 PageID #: 51420
`
`
`
`1.7
`
`CREDIBILITY OF WITNESSES
`
`You are the sole judges of each witness’s credibility. You may believe everything a witness
`
`says, or part of it, or none of it. You should consider each witness’s means of knowledge; strength
`
`of memory; opportunity to observe; how reasonable or unreasonable the testimony is; whether it
`
`is consistent or inconsistent; whether it has been contradicted; the witness’s biases, prejudices, or
`
`interests; the witnesses’ manner or demeanor on the witness stand; and all circumstances that,
`
`according to the evidence, could affect the credibility of the testimony.
`
`In determining the weight to give to the testimony of a witness, you should ask yourself
`
`whether there is 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 from the testimony he or she gave at the trial in
`
`person or by deposition testimony played by video or read to you. You have the right to distrust
`
`such witness’s testimony and you may reject all or some of the testimony of that witness or give
`
`it such credibility as you may think it deserves.
`
`
`
`
`
`
`
`7
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 11 of 72 PageID #: 51421
`
`
`
`1.8
`
`EXPERT WITNESSES
`
`Expert testimony is testimony from a person who has a special skill or knowledge in some
`
`science, profession, or business. This skill or knowledge is not common to the average person but
`
`has been acquired by the expert through special study or experience.
`
`In weighing expert testimony, you may consider the expert’s qualifications, the reasons for
`
`the expert’s opinions, and the reliability of the information supporting the expert’s opinions, as
`
`well as the factors I have previously mentioned for weighing testimony of any other witness.
`
`Expert testimony should receive whatever weight and credit you think appropriate, given all the
`
`other evidence in the case. You are free to accept or reject the testimony of experts, just as with
`
`any other witness.
`
`
`
`
`
`
`
`8
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 12 of 72 PageID #: 51422
`
`
`
`1.9
`
`DEPOSITION TESTIMONY
`
`During the trial, certain testimony was presented to you by the playing of video excerpts
`
`from a deposition. The deposition testimony may have been edited or cut to exclude irrelevant
`
`testimony as the parties have only a limited amount of time to present you with evidence. You
`
`should not attribute any significance to the fact that the deposition videos may appear to have been
`
`edited.
`
`Deposition testimony is out-of-court testimony given under oath and is entitled to the same
`
`consideration you would give it had the witnesses personally appeared in court.
`
`
`
`9
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 13 of 72 PageID #: 51423
`
`
`
`1.10 DEMONSTRATIVE EXHIBITS
`
`During the course of the trial, you have seen many exhibits. Many of these exhibits were
`
`admitted as evidence. You will have these admitted exhibits in the jury room for your deliberations.
`
`The remainder of the exhibits (including charts, models, reproductions, PowerPoint presentations,
`
`and animations) were offered to help illustrate the testimony of the various witnesses. These
`
`illustrative exhibits, called “demonstrative exhibits,” have not been admitted, are not evidence, and
`
`should not be considered as evidence. Rather, it is the underlying testimony of the witness that you
`
`heard when you saw the demonstrative exhibits that is the evidence in this case.
`
`
`
`10
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 14 of 72 PageID #: 51424
`
`
`
`
`
`1.11
`
`STIPULATED FACTS
`
`[Arendi’s proposal:
`
`Google has stipulated that these facts are true. You must therefore treat these facts as having
`
`been proved for purposes of this case:
`
`1. The Pixel device (produced in this lawsuit by Google) loaded with Android version 8
`
`(Oreo), having the Accused Applications that were available in connection with that
`
`Android version (whether or not those applications were preinstalled), may be treated as
`
`representative of all Google-branded devices loaded with versions of Android version 8
`
`(Oreo). The Accused Applications loaded on that device may likewise be treated as
`
`representative of those Accused Applications when installed on devices with versions of
`
`Android version 8.
`
`2. The Pixel 2 device (produced in this lawsuit by Google) loaded with Android version 9
`
`(Pie), having the Accused Applications that were available in connection with that Android
`
`version (whether or not those applications were preinstalled), may be treated as
`
`representative of all Google-branded devices loaded with versions of Android version 9
`
`(Pie). The Accused Applications loaded on that device may likewise be treated as
`
`representative of those Accused Applications when installed on devices with versions of
`
`Android version 9.
`
`3. The following produced source code for Android Google Docs may be treated as
`
`representative of all versions of Google Docs from September 1, 2016 through November
`
`10, 2018: //Apps/google3/java/com/google/android/apps/docs/editors/kix)
`
`4. The following produced source code for the Android Gmail App (Android 6.5) may be
`
`treated as representative of all versions of the Android Gmail App (and the Android
`
`
`
`11
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 15 of 72 PageID #: 51425
`
`
`
`
`
`Inbox app form May 28, 2015) from January 1, 2016 through November 10, 2018:
`
`//2016-06-07-
`
`GmailAndroid6.5/google3/java/com/google/android/apps/gmail/unifiedgmail/
`
`5. The following produced source code for the Android Google Chrome app may be treated
`
`as representative of all versions of the Android Google Chrome app from February 1, 2017
`
`through November 10, 2018: //chorme-release-R65-10323.B/
`
`6. The following produced source code for the Android Google Messages app may be treated
`
`as representative of all versions of the Android Google Messages app from February 1,
`
`2017
`
`through
`
`November
`
`10,
`
`2018:
`
`//Apps/google3/third_party/java_src/android_app/bugle/.
`
`7. The following produced source code for the Android Google Contacts app may be treated
`
`as representative of all versions of the Android Google Contacts app from March 29, 2011,
`
`through
`
`November
`
`10,
`
`2018:
`
`//219375010/google3/java/com/google/android/apps/contacts/.
`
`8. The following produced source code for the Android Google Keep app may be treated as
`
`representative of all versions of the Android Google Keep app from March 20, 2013,
`
`through November 10, 2018: //219375010/google3/java/com/google/android/apps/keep/.
`
`9. The following produced source code for the Android Google Tasks app may be treated as
`
`representative of all versions of the Android Google Tasks app from April 25, 2018,
`
`through November 10, 2018: //219375010/google3/java/com/google/android/apps/tasks/.
`
`10. The following produced source code for the Android Google Calendar app may be treated
`
`as representative of all versions of the Android Google Calendar app from March 29, 2011,
`
`12
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 16 of 72 PageID #: 51426
`
`
`
`
`
`through
`
`November
`
`10,
`
`2018:
`
`//219375010/google3/java/com/google/android/apps/calendar/.
`
`11. The following produced source code for the Android Slides app may be treated as
`
`representative of all versions of the Android Slides app from April 30, 2014, through
`
`August
`
`6,
`
`2018:
`
`//2014-
`
`Apps/google3/java/com/google/android/apps/docs/editors/sketchy/.
`
`12. The following produced source code for the Android Slides app may be treated as
`
`representative of all versions of the Android Slides app from August 6, 2018, through
`
`November
`
`10,
`
`2018:
`
`//2018-
`
`Apps/google3/java/com/google/android/apps/docs/editors/sketchy/.
`
`13. The following produced source code for the Android Sheets app may be treated as
`
`representative of all versions of the Android Sheets app from April 30, 2014, through
`
`August 6, 2018: //2014-Apps/google3/java/com/google/android/apps/docs/editors/ritz/.
`
`14. The following produced source code for the Android Sheets app may be treated as
`
`representative of all versions of the Android Sheets app from August 6, 2018, through
`
`November
`
`10,
`
`2018:
`
`//2018-
`
`Apps/google3/java/com/google/android/apps/docs/editors/ritz/.
`
`15. The following produced source code for the Android Hangouts app may be treated as
`
`representative of all versions of the Android Hangouts app from May 1, 2017, through
`
`November 10, 2018: //219375010/google3/java/com/google/android/apps/dynamite/.
`
`16. Finally, you must accept that Smart Text Selection was available and implemented in each
`
`of the Accused Google Apps and Accused Google Devices starting with the launch of
`
`Android 8 on August 21, 2017. ]
`
`13
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 17 of 72 PageID #: 51427
`
`
`
`[Google’s proposal: Google maintains that no stipulations or other proven facts should be
`
`detailed in the jury instructions. Moreover, Arendi’s recitation of the stipulations offered and the
`
`alleged facts proven is inaccurate and misstates what was established at trial.]
`
`
`
`
`
`14
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 18 of 72 PageID #: 51428
`
`
`
`1.12 USE OF NOTES
`
`You may have taken notes during trial to assist your memory. As I instructed you at the
`
`beginning of the case, you should use caution in consulting your notes. There is generally a
`
`tendency I think to attach undue importance to matters which one has written down. Some
`
`testimony which is considered unimportant at the time presented, and thus not written down, takes
`
`on greater importance later in the trial in light of all the evidence presented. Therefore, your notes
`
`are only a tool to aid your own individual memory, and you should not compare notes with other
`
`jurors in determining the content of any testimony or in evaluating the importance of any evidence.
`
`Your notes are not evidence, and are by no means a complete outline of the proceedings or a list
`
`of the highlights of the trial.
`
`Above all, your memory should be the greatest asset when it comes time to deliberate and
`
`render a decision in this case.
`
`
`
`
`
`
`
`15
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 19 of 72 PageID #: 51429
`
`
`
`1.13
`
`BURDENS OF PROOF
`
`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.” I told you about these two standards of proof during my preliminary
`
`instructions to you and I will now remind you what they mean. [Arendi’s Proposal: Plaintiff
`
`Arendi asserts that Defendant Google infringes the ’843 patent.]
`
`[Arendi’s Proposal: Plaintiff Arendi contends it does so in several distinct ways—that is,
`
`Google infringes directly, Google actively induces infringement by others, and Google contributes
`
`to infringement by others.]
`
` [Google’s Proposal: Plaintiff Arendi asserts that Defendant Google directly infringes
`
`the ’843 Patent.]
`
`Plaintiff Arendi has the burden of proving its infringement claims by a “preponderance of
`
`the evidence.” That means Plaintiff Arendi has to prove to you, in light of all the evidence, that
`
`what it claims is more likely true than not. To say it differently, if you were to put the evidence of
`
`Plaintiff Arendi and the evidence of Defendant on opposite sides of a scale, the evidence
`
`supporting Plaintiff Arendi’s claims would have to make the scales tip slightly on its side in each
`
`instance. If the scale should remain equal or tip in favor of Defendant, you must find in favor of
`
`Defendant.
`
`In addition to denying Plaintiff Arendi’s claims that it infringes, Google asserts that the
`
`asserted claims of the ’843 Patent are invalid. A party challenging the validity of a patent—in this
`
`instance, Defendant Google—has the burden to prove that the asserted claims are invalid by clear
`
`and convincing evidence. Clear and convincing evidence means evidence that it is highly probable
`
`
`
`16
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 20 of 72 PageID #: 51430
`
`
`
`that a fact is true. Proof by clear and convincing evidence is a higher burden than proof by a
`
`preponderance of the evidence.
`
`You may have heard of the “beyond a reasonable doubt” burden of proof from criminal
`
`cases. That requirement is the highest burden of proof. It does not apply to civil cases and,
`
`therefore, you should put it out of your mind.
`
`
`
`
`
`
`
`17
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 21 of 72 PageID #: 51431
`
`
`
`2.
`
`THE PARTIES AND THEIR CONTENTIONS
`2.1
`
`THE PARTIES
`
`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.
`
`As I have previously told you, the plaintiff in this case is Arendi S.A.R.L. We have referred
`
`to the plaintiff as Arendi. The defendant in this case is Google LLC. We have referred to it as
`
`Google.
`
`Plaintiff Arendi is the owner of U.S. Patent Number 7,917,843. During this case, we have
`
`referred to the patent by its last three digits, the ’843 Patent, or as the patent-in-suit or the Asserted
`
`Patent.
`
`
`
`
`
`
`
`18
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 22 of 72 PageID #: 51432
`
`
`
`you:
`
`2.2
`
`SUMMARY OF THE ISSUES
`
`You must decide the following issues in this case according to the instructions that I give
`
`[Arendi’s Proposal:
`
`1.
`
`Whether Plaintiff Arendi has proven by a preponderance of the evidence that
`
`Google directly infringes one or more of claims 23 and 30 of the ’843 Patent;
`
`2.
`
`Whether Plaintiff Arendi has proven by a preponderance of the evidence that
`
`Google’s infringement of one or more claims of the ’843 Patent was willful;
`
`3.
`
`Whether Plaintiff Arendi has proven by a preponderance of the evidence that third
`
`parties directly infringed one or more of claims 23 and 30 of the ’843 Patent. With respect to
`
`Google, a third-party is a person or entity other than Google.
`
`4.
`
`Whether Plaintiff Arendi has proven by a preponderance of the evidence that
`
`Google induced a third-party to infringe one or more of claims 23 and 30 of the ’843 Patent;
`
`5.
`
`Whether Plaintiff Arendi has proven by a preponderance of the evidence that
`
`Google contributed to a third-party’s infringement of one or more of claims 23 and 30 of the ’843
`
`Patent;
`
`6.
`
` Whether Plaintiff Arendi has proven by a preponderance of the evidence the
`
`amount of money damages adequate to compensate it for Defendant Google’s infringement.
`
`7.
`
`Whether Defendant Google has proven by clear and convincing evidence that one
`
`or more of the asserted claims of the ’843 Patent is invalid.]
`
`
`
`[Google’s Proposal:
`
`1.
`
`Whether Plaintiff Arendi has proven by a preponderance of the evidence that
`
`Google directly infringes one or more of claims 23 and 30 of the ’843 Patent;
`
`
`
`19
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 23 of 72 PageID #: 51433
`
`
`
`2.
`
`Whether Defendant Google has proven by clear and convincing evidence that one
`
`or more of the asserted claims of the ’843 Patent is invalid.
`
`3.
`
`If you decide that any claim of the ’843 Patent has been infringed by Google and is
`
`not invalid, you will then need to decide whether Arendi has proven by a preponderance of the
`
`evidence that Google’s infringement was willful;
`
`4.
`
`If you decide that any claim of the ’843 Patent has been infringed by Google and is
`
`not invalid, you will also need to decide what, if any, money damages Arendi has proven by a
`
`preponderance of the evidence are to be awarded to compensate it for Google’s infringement.]
`
`
`
`
`
`
`
`20
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 24 of 72 PageID #: 51434
`
`
`
`3.
`
`THE PATENT LAWS
`3.1
`
`THE PATENT LAWS
`
`At the beginning of the trial, I gave you some general information about patents and the
`
`patent system and a brief overview of the patent laws relevant to this case. I will now give you
`
`more detailed instructions about the patent laws that specifically relate to this case. If you would
`
`like to review my instructions at any time during your deliberations, you will have your copy
`
`available to you in the jury room.
`
`
`
`
`
`21
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 25 of 72 PageID #: 51435
`
`
`
`3.2
`
`CLAIM CONSTRUCTION
`
`Before you can decide many of the issues in this case, you will need to understand the role
`
`of patent “claims.” The patent claims are the numbered sentences at the end of a patent. The claims
`
`are important because it is the words of the claims that define what a patent covers. The figures
`
`and text in the rest of the patent provide a description and/or examples of the invention and provide
`
`a context for the claims, but it is the claims that define the breadth of the patent’s coverage.
`
`Therefore, what a patent covers depends, in turn, on what each of its claims covers.
`
`To know what a claim covers, a claim sets forth, in words, a set of requirements. Each
`
`claim sets forth its requirements in a single sentence. A claim may be narrower or broader than
`
`another claim by setting forth more or fewer requirements. The requirements of a claim are often
`
`referred to as “claim elements” or “claim limitations.” The coverage of a patent is assessed claim-
`
`by-claim.
`
`When a thing (such as a product or a process) meets all of the requirements of a claim, the
`
`claim is said to “cover” that thing, and that thing is said to “fall” within the scope of that claim. In
`
`other words, a claim covers a product or process where each of the claim elements or limitations
`
`is present in that product or process.
`
`You will first need to understand what each claim covers in order to decide whether or not
`
`there is infringement of the claim and to decide whether or not the claim is invalid. The first step
`
`is to understand the meaning of the words used in the patent claim.
`
`This case involves two types of patent claims: independent claims and dependent claims.
`
`An “independent claim” sets forth all of the requirements that must be met in order to be
`
`covered by that claim. Thus, it is not necessary to look at any other claim to determine what an
`
`independent claim covers. Claim 23 of the ’843 Patent is an independent claim.
`
`
`
`22
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 26 of 72 PageID #: 51436
`
`
`
`In contrast, claim 30 of the ’843 Patent is a “dependent claim.” A dependent claim does
`
`not itself recite all of the requirements of the claim but refers to another claim for some of its
`
`requirements. In this way, the claim “depends” on another claim. A dependent claim incorporates
`
`all of the requirements of the claim(s) to which it refers. The dependent claim then adds its own
`
`additional requirements. Therefore, to determine what a dependent claim covers, it is necessary to
`
`look at both the dependent claim and the other claim or claims to which it refers. A product that
`
`meets all of the requirements of both the dependent claim and the claim(s) to which it refers is
`
`covered by that dependent claim.
`
`It is my job as a judge to define the terms of the claims and to instruct you about the
`
`meaning. It is your role to apply my definitions to the issues that you are asked to decide.
`
`In this case, I have determined the meaning of the following terms of the asserted claims
`
`of the ’843 Patent:
`
`Claim Term
`“document”
`
`“first information”
`
`“computer program”
`
`“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”
`“providing an input device
`configured by the first computer
`program”
`
`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”
`
`“providing an input device set up by the first
`computer program for use by the user”
`
`
`
`23
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 27 of 72 PageID #: 51437
`
`
`
`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
`
`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
`
`definition, you should apply their ordinary meaning in the field of the ’843 Patent.] 1
`
`[Google’s proposal: For any words in the claim for which I have not provided you with a
`
`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.2]
`
`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.
`2 Google: Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003);
`Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001).
`
`
`
`24
`
`

`

`Case 1:13-cv-00919-JLH Document 501 Filed 04/28/23 Page 28 of 72 PageID #: 51438
`
`
`
`[Arendi’s proposal:
`
`
`3.3
`
`INFRINGEMENT—INFRINGEMENT GENERALLY
`
`I will now instruct you as to the rules you must follow when deciding whether Plaintiff
`
`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
`
`infringement are called: (1) direct infringement; (2) active inducement; and (3) contributory
`
`infringement. Active inducement and contributory infringement are referred to as indirect
`
`infringement. There cannot be indirect infringement without someone else engaging in direct
`