Case 1:19-cv-01410-MN Document 278 Filed 11/03/23 Page 1 of 37 PageID #: 10914
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`VB ASSETS, LLC,
`
`
`
`
`v.
`
`Plaintiff,
`
`
`AMAZON.COM SERVICES LLC,
`
`
`Defendant.
`
`
`
`
`C.A. No. 1:19-cv-01410-MN
`
`
`
`FINAL JURY INSTRUCTIONS
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`

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`Case 1:19-cv-01410-MN Document 278 Filed 11/03/23 Page 2 of 37 PageID #: 10915
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`TABLE OF CONTENTS
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`I.
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`GENERAL ........................................................................................................................ 1
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`A.
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`B.
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`C.
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`Introduction ........................................................................................................... 1
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`Consideration of Evidence .................................................................................... 2
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`Burdens of Proof ................................................................................................... 3
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`II.
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`PATENT JURY INSTRUCTIONS .................................................................................. 5
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`H.
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`I.
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`J.
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`K.
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`The Parties’ Contentions ....................................................................................... 5
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`Summary of Patent Issues ..................................................................................... 6
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`The Claims of a Patent .......................................................................................... 7
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`Infringement – Generally ...................................................................................... 8
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`Infringement .......................................................................................................... 9
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`Willful infringement ........................................................................................... 11
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`Invalidity – Generally ......................................................................................... 12
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`Prior Art – Generally .......................................................................................... 13
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`Invalidity – Obviousness..................................................................................... 14
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`Invalidity – Written Description ......................................................................... 17
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`Invalidity – Patent Eligibility .............................................................................. 20
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`III.
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`DAMAGES ..................................................................................................................... 21
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`H.
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`Damages – Generally .......................................................................................... 21
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`Reasonable Royalty ............................................................................................ 22
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`Damages – Lump Sum vs. Running Royalty ...................................................... 23
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`Reasonable Royalty – Factors Relevant to the Hypothetical Negotiation .......... 24
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`Reasonable Royalty – Apportionment ................................................................ 26
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`REASONABLE ROYALTY – TIMING............................................................ 27
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`Reasonable Royalty – Comparable License Agreements ................................... 28
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`Reasonable Royalty – Availability of Non-Infringing Alternatives ................... 29
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`IV.
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`DELIBERATIONS AND VERDICT ............................................................................. 30
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`A.
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`B.
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`C.
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`D.
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`E.
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`Deliberations and Verdict – Introduction ........................................................... 30
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`Unanimous Verdict ............................................................................................. 31
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`Duty to Deliberate ............................................................................................... 32
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`Social Media ....................................................................................................... 33
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`Court Has No Opinion ........................................................................................ 34
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`i
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`Case 1:19-cv-01410-MN Document 278 Filed 11/03/23 Page 3 of 37 PageID #: 10916
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`I.
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`GENERAL
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`A. INTRODUCTION
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`Members of the jury, now is the time for me to instruct you about the law that you must
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`follow in deciding this case. Please listen carefully to everything I say. You must follow all of my
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`instructions, including the ones that I gave you at the start of the case and the ones I have given
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`during trial, and not single out some and ignore others. They are all important.
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`You will have a written copy of these instructions, as well as my preliminary instructions,
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`with you in the jury room for your reference during your deliberations. You will also have a verdict
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`form, which will list the questions that you must answer to decide this case.
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`I will start by reminding you of the respective burdens in this case, and then I will instruct
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`you concerning the positions of the parties and the law you will apply in this case. Then we will
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`hear the closing arguments. After that, I will explain the rules that you must follow during your
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`deliberations in the jury room.
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`
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`Source: United States v. Gilead Scis., Inc., No. 19-2103-MN, D.I. 464 at 1 (D. Del. May 8, 2023)
`(Final Jury Instructions) (Noreika, J.).
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`1
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`Case 1:19-cv-01410-MN Document 278 Filed 11/03/23 Page 4 of 37 PageID #: 10917
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`B. CONSIDERATION OF EVIDENCE
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`You must make your decision based only on the evidence that you see and hear in court.
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`Do not let rumors, suspicions, or anything else that you may see or hear outside of court influence
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`your decision in any way.
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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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`
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`Source: United States v. Gilead Scis., Inc., No. 19-2103-MN, D.I. 464 at 2 (D. Del. May 8, 2023)
`(Final Jury Instructions) (Noreika, J.); Third Circuit Pattern Jury Instructions (“3d Cir.”) at No. 1.5
`Preliminary Instructions—Evidence.
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`2
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`Case 1:19-cv-01410-MN Document 278 Filed 11/03/23 Page 5 of 37 PageID #: 10918
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`C. BURDENS OF PROOF
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`As I told you on the first day of trial, in a legal action, facts must be proven by a required
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`standard of evidence, known as the “burden of proof.” In a patent case such as this, there are two
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`different burdens of proof. The first is called “preponderance of the evidence.” The second is called
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`“clear and convincing evidence.” I will now remind you what they mean.
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`This is a civil case in which VB Assets alleges that Amazon has infringed four patents VB
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`Assets owns. VB Assets has the burden of proving infringement and the amount of monetary
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`damages for any infringement by a preponderance of the evidence. That means it has to produce
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`evidence that, when considered in light of all of the facts, leads you to believe that what VB Assets
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`claims is more likely true than not. To put it differently, if you were to put the parties’ evidence
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`on opposite sides of a scale, the evidence supporting VB Assets’ claims of infringement and
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`damages must make the scales tip somewhat on its side. [[AMAZON PROPOSAL: If the scale
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`should remain equal or tip in favor of Amazon, you must find for Amazon on the issue of
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`infringement.]]1
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`Amazon contends that VB Assets’ patent is invalid. A party challenging the validity of a
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`patent has the burden of proving by clear and convincing evidence that the asserted claims are
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`
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` 1
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` VB’s Position: VB disagrees that this sentence, which was not read in the Gilead final jury
`instruction, is necessary. There was no prejudice in that case and no prejudice here.
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`Amazon’s Position: The Court read Amazon’s proposed balancing sentence in both Complete
`Genomics and recently in the TrackTime case. See Complete Genomics, Inc. v. Illumina, Inc., D.
`Del. No. 1:19-cv-970-MN, D.I. 404 (May 5, 2022); TrackTime LLC v. Amazon.com, Inc., D. Del.
`No. 1:18-cv-1518-MN, D.I. 306 at 3 (Sept. 19, 2023). This sentence is a correct statement of the
`law and necessary to balance the instruction, that otherwise would favor VB Assets and prejudice
`Amazon.
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`Case 1:19-cv-01410-MN Document 278 Filed 11/03/23 Page 6 of 37 PageID #: 10919
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`invalid. [[AMAZON PROPOSAL: That means it has to produce evidence that, when
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`considered in light of all of the facts, leads you to believe that what Amazon claims]] [[VB
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`ASSETS PROPOSAL: Clear and convincing evidence ]]2 is highly probable. Proof by clear
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`and convincing evidence is thus a higher burden than proof by a preponderance of the evidence
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`[[VB ASSETS PROPOSAL: needed to prove infringement]].3
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`Some of you may have heard the phrase “proof beyond a reasonable doubt.” That burden
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`is a higher burden of proof that applies only in criminal cases and has nothing to do with a civil
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`case like this one. You should therefore not consider it in this case and put it out of your mind.
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`
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`Source: United States v. Gilead Scis., Inc., No. 19-2103-MN, D.I. 464 at 3 (D. Del. May 8, 2023)
`(Final Jury Instructions) (Noreika, J.); Complete Genomics, Inc. v. Illumina, Inc., No. 19-970-MN,
`Dkt. 404 (“Complete Genomics Final Instructions”) at 2 (D. Del. May 5, 2022); TrackTime, LLC
`v. Amazon.com Services LLC, et al., No. 18-1518-MN, D.I. 280 at 3 (D. Del. Aug. 31, 2023) (Final
`Jury Instructions) (Noreika, J.).
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` 2
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` VB’s position: VB’s proposal comes from the Gilead final jury instruction. VB disagrees with
`Amazon that it causes undue prejudice.
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`Amazon’s position: Amazon’s proposal comes verbatim from the Court’s instruction read to the
`jury in TrackTime. See TrackTime LLC v. Amazon.com, Inc., D. Del. No. 1:18-cv-1518-MN, D.I.
`306 at 3 (Sept. 19, 2023). VB Assets proposes to keep the description of its own burden in the
`previous paragraph but to remove the description of Amazon’s burden, which will cause undue
`prejudice to Amazon.
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` 3
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` VB’s position: VB’s proposal comes from the Gilead final jury instruction. VB disagrees with
`Amazon that it causes undue prejudice.
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`Amazon’s Position: The difference between the standards of proof is clear in the agreed portion
`of the sentence. VB Assets unnecessarily inserts the concept of infringement into an instruction
`on Amazon’s burden on invalidity, which can only cause prejudice and confusion. VB Assets
`cites Gilead, but the parties in that case did not dispute this language and thus the Court never
`ruled on whether it was unduly prejudicial. See United States v. Gilead Scis., Inc., D. Del. No. 19-
`2103-MN, D.I. 438 at 7 (Apr. 17, 2023).
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`Case 1:19-cv-01410-MN Document 278 Filed 11/03/23 Page 7 of 37 PageID #: 10920
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`II.
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`PATENT JURY INSTRUCTIONS
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`A. THE PARTIES’ CONTENTIONS
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`VB Assets filed this case in July 2019, alleging patent infringement against Amazon. You
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`have heard evidence regarding the four Asserted Patents in this case: U.S. Patent Nos. 8,073,681;
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`9,626,703; 7,818,176; and 9,269,097, which have been referred to as the ’681, ’703, ’176, and
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`’097 patents, or the “Asserted Patents.”
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`VB Assets alleges that Amazon has infringed claim 13 of the ’681 Patent; claim 25 of the
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`’703 Patent; claim 40 of the ’176 Patent; and claim 23 of the ’097 Patent. You have heard these
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`referred to collectively as the “asserted claims.” VB Assets also alleges that it is entitled to
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`damages for Amazon’s infringement. Amazon denies that it has infringed the asserted claims of
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`the asserted patents, and that VB Assets is entitled to damages. Amazon also contends that all
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`asserted claims of the asserted patents are invalid.
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`
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`Source: United States v. Gilead Scis., Inc., No. 19-2103-MN, D.I. 464 at 4 (D. Del. May 8, 2023)
`(Final Jury Instructions) (Noreika, J.).
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`Case 1:19-cv-01410-MN Document 278 Filed 11/03/23 Page 8 of 37 PageID #: 10921
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`B. SUMMARY OF PATENT 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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`you:
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`1.
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`Whether VB Assets has proven by a preponderance of the evidence that Amazon
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`infringes the asserted claims;
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`2.
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`Whether VB Assets has proven by a preponderance of evidence that Amazon
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`willfully infringed one or more of the asserted claims;
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`3.
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`Whether Amazon has proven by clear and convincing evidence that one or more of
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`the asserted claims of the Asserted Patents is invalid; and
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`If you decide that Amazon infringes any asserted claim of the asserted patents that is not
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`invalid, then you will also need to decide what money damages should be awarded to compensate
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`VB Assets.
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`
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`Source: United States v. Gilead Scis., Inc., No. 19-2103-MN, D.I. 464 at 5 (D. Del. May 8, 2023)
`(Final Jury Instructions) (Noreika, J.); Complete Genomics Final Instructions.
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`Case 1:19-cv-01410-MN Document 278 Filed 11/03/23 Page 9 of 37 PageID #: 10922
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`C. THE CLAIMS OF A PATENT
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`Before you can decide many of the issues in this case, you need to understand the role of
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`patent “claims.” The claims are the numbered sentences at the end of a patent. The claims are
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`important because the words of a claim define the scope of the patent right. The figures and text
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`in the rest of the patent provide a description and examples of the invention and provide a context
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`for the claims, but the claims define the extent of the patent’s coverage.
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`Here, you will need to understand what each of the asserted claims covers to decide whether
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`or not that claim is infringed and whether or not each claim is invalid.
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`It is my job to define the terms of the claims and instruct you about the meaning. It is your
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`role to apply my definitions to the issues that you are asked to decide. In this case, I have
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`determined the meanings of the following terms:
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`• “speech recognition engine” / “speech recognition” means “software or hardware
`that recognizes the words or phrases in the natural language utterance.” These
`terms appear in the ’703 Patent, claim25 and the ’176 Patent, claim 40.
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`You must accept my definition of this term as being correct. It is your job to take this
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`definition and apply it to the issues that you are deciding, including the issues of infringement and
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`invalidity.
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`For any words in the claim for which I have not provided you with a definition, you should
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`apply the ordinary meaning in the field of the patents. You should not take my definition of the
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`language of the claims as an indication that I have a view regarding how you should decide the
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`issues that you are being asked to decide, such as infringement and invalidity. These issues are
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`yours to decide.
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`Source: Adapted from United States v. Gilead Scis., Inc., No. 19-2103-MN, D.I. 464 at 6-7 (D.
`Del. May 8, 2023) (Final Jury Instructions) (Noreika, J.); (D.I 89).
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`Case 1:19-cv-01410-MN Document 278 Filed 11/03/23 Page 10 of 37 PageID #: 10923
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`D. INFRINGEMENT – GENERALLY
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`The United States’ patent law gives the owner of a valid patent the right to exclude others
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`from importing, making, using, offering to sell, or selling the patented product or method in the
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`United States during the term of the patent. Any person or company that has engaged in any of
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`those acts without the patent owner’s permission infringes the patent.
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`To prove infringement, a patent owner must prove that the requirements for infringement
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`are met by a preponderance of the evidence that all of the requirements of infringement have been
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`proved.
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`Infringement is assessed on a claim-by-claim basis. Thus, a patent owner bears the burden
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`of proving by a preponderance of the evidence that each of the asserted claims of its asserted
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`patents is infringed. Therefore, you, the jury, must determine infringement for each patent and
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`each claim separately.
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`I will now explain each type of infringement in more detail.
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`Source: Complete Genomics, Inc. v. Illumina, Inc., No. 19-970-MN, D.I. 404 at 9 (D. Del. May.
`5, 2022) (Final Jury Instructions) (Noreika, J.).
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`Case 1:19-cv-01410-MN Document 278 Filed 11/03/23 Page 11 of 37 PageID #: 10924
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`E. INFRINGEMENT
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`You must determine whether VB Assets has proven infringement of one or more of the
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`asserted claims.
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`As I just told you, you must determine, separately for each asserted claim, whether or not
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`there is infringement. There is one exception to this rule. If you find that an independent claim is
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`not infringed, there cannot be infringement of any dependent claim that refers directly or indirectly
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`to that claim. On the other hand, if you find that an independent claim has been infringed, you
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`must still separately decide whether the additional requirements of any claims that depend from
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`that independent claim were met, in order to determine whether the dependent claims have also
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`been infringed. Remember, a dependent claim includes all the requirements of any of the claims
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`to which it refers plus additional requirements of its own.
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`To determine infringement, you must compare the accused products or process with each
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`asserted claim to determine whether each and every one of the requirements of that claim is
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`satisfied. A patent claim is infringed only if the product or process includes each and every
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`limitation in that patent claim. If the accused product or process does not contain one or more
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`elements or steps recited in a claim, there is no infringement. The presence of other elements or
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`additional steps in the accused product or process is beyond those claimed, however, does not
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`avoid infringement, as long as every claimed element is present.
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`Proof of infringement may be based on circumstantial evidence.
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`One may infringe a patent unknowingly – that is, without knowledge that what one is doing
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`is an infringement of the patent. One can be an infringer of a patent even if that person believes in
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`good faith that he is not infringing any patent or even if he does not know of the patent.
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`All steps of the claimed method must be performed for there to be infringement of an
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`asserted claim. If any step of an asserted claim is not performed, there is no infringement.
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`Case 1:19-cv-01410-MN Document 278 Filed 11/03/23 Page 12 of 37 PageID #: 10925
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`
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`Source: Adapted from United States v. Gilead Scis., Inc., No. 19-2103-MN, D.I. 464 at 9-10 (D.
`Del. May 8, 2023) (Final Jury Instructions) (Noreika, J.); Complete Genomics, Inc. v. Illumina,
`Inc., No. 19-970-MN, D.I. 404 at 10-11 (D. Del. May. 5, 2022) (Final Jury Instructions) (Noreika,
`J.).
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`Case 1:19-cv-01410-MN Document 278 Filed 11/03/23 Page 13 of 37 PageID #: 10926
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`F. WILLFUL INFRINGEMENT
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`If you find that Amazon infringed a valid claim of VB Assets’s patents, then you must also
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`determine whether or not such infringement was willful.
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`To show that infringement was willful, VB Assets must prove by a preponderance of the
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`evidence that Amazon knew of the asserted patents and intentionally infringed at least one asserted
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`claim of the asserted patents. To show willfulness, you must find that Amazon has engaged in
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`conduct evidencing deliberate or reckless disregard for VB Assets’s patent rights. However, you
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`may not find that infringement was willful merely because Amazon knew about the asserted
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`patents, without more. In determining whether VB Assets has proven that Amazon’s infringement
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`was willful, you must consider all of the circumstances and assess Amazon’s knowledge at the
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`time the challenged conduct occurred, including: whether Amazon intentionally copied the
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`patented technology in developing the accused products; whether Amazon knew or should have
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`known, that its conduct involved an unreasonable risk of infringement; and whether Amazon had
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`a reasonable belief that its products did not infringe the asserted patent or that the patent was
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`invalid.
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`If you determine that any infringement was willful, you may not allow that decision to
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`affect the amount of any damages award you give for infringement.
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`Source: TrackTime LLC v. Amazon.com, Inc., No. 1:18-cv-1518-MN, D.I. 306 at 9 (Sept.
`19, 2023).
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`Case 1:19-cv-01410-MN Document 278 Filed 11/03/23 Page 14 of 37 PageID #: 10927
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`G. INVALIDITY – GENERALLY
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`I will now instruct you on the rules you must follow in deciding whether or not Amazon has
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`proven that the asserted claims of VB Assets’ patent are invalid. As I previously told you, to prove
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`that a claim of a patent is invalid, Amazon must persuade you by clear and convincing evidence.
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`Like infringement, you must determine whether each asserted claim is invalid. As I
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`instructed you earlier, there are independent claims and dependent claims in a patent. A dependent
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`claim recites all the requirements of its independent claim and adds additional requirements. This
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`means the scope of the dependent claim should be narrower than the scope of the independent
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`claim from which it depends. Finding the broader independent claim to be invalid does not mean
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`the narrower dependent claims are also invalid. However, if you find a narrower dependent claim
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`to be invalid, you must find the broader independent claim from which it depends is also invalid.
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`
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`Source: Complete Genomics, Inc. v. Illumina, Inc., No. 19-970-MN, D.I. 404 at 16 (D. Del. May.
`5, 2022) (Final Jury Instructions) (Noreika, J.).
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`Case 1:19-cv-01410-MN Document 278 Filed 11/03/23 Page 15 of 37 PageID #: 10928
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`H. PRIOR ART – GENERALLY
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`For someone to be entitled to a patent, the invention must actually be “new” and not
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`obvious over what came before, which is referred to as the prior art. Prior art is considered in
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`determining whether the asserted claims of the asserted patents would have been obvious to a
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`person of skill in the art at the time of the invention.
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`Here, the parties agree that the invention dates for the asserted patents, for purposes of
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`assessing prior art, are as follows:
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`• October 16, 2006 for the ’681 Patent;
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`• February 6, 2007 for the ’176, and ’097 Patents;
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`• September 16, 2014 for the ’703 Patent.
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`Prior art may include items that were publicly known or that have been used or offered for
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`sale, or references, such as publications or patents, or products, systems, or technologies that
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`disclose the claimed invention or elements of the claimed invention.
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`Amazon contends that the following is prior art to the asserted patents:
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`• The MIT Galaxy System;
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`• The UNITED System;
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`• Japanese Patent Publication No. 2002297626 to Yonebayashi et al. (referred to as
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`“Yonebayashi”); and
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`• United States Patent No. 7,376,586 to Partovi et al. (referred to as “Partovi”).
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`
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`Source: Adapted from United States v. Gilead Scis., Inc., No. 19-2103-MN, D.I. 464 at 13 (D.
`Del. May 8, 2023) (Final Jury Instructions) (Noreika, J.); see also Federal Circuit Bar Association
`(FCBA) No. B.4.3a-1 (Prior Art (If Not in Dispute)).
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`Case 1:19-cv-01410-MN Document 278 Filed 11/03/23 Page 16 of 37 PageID #: 10929
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`I.
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`INVALIDITY – OBVIOUSNESS
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`A claimed invention is invalid as “obvious” if it would have been obvious to the person of
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`ordinary skill in the art at the time the invention was made. The issue is not whether the claimed
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`inventions would have been obvious to you as a layperson or to me as the judge, or to a genius in
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`the relevant field, but whether it would have been obvious to one of ordinary skill in the art at the
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`time the invention was made.
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`In this case, Amazon contends that the asserted claims are invalid for obviousness.
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`Obviousness can only be found if you find that a reason existed at the time of the invention
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`to combine the elements of the prior art to arrive at the claimed invention, and there would have
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`been a reasonable expectation of success for doing so. In determining whether the claimed
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`invention was obvious, consider each claim separately. Obviousness may be shown by considering
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`one or more than one item of prior art.
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`In determining whether an asserted claim is obvious, you must first consider the level of
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`ordinary skill in the pertinent field that someone would have had at the time the invention was
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`made, the scope and content of the prior art, any differences between the prior art and the asserted
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`claims, and, if present, objective evidence or secondary considerations. You must determine what
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`is the level of ordinary skill according to the instruction I gave you earlier.
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`Second, you must determine what is the prior art that may be considered in determining
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`whether the asserted claims are obvious. A prior art reference may be considered if it discloses
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`information designed to solve any problems or need addressed by the patent or if the reference
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`discloses information that has obvious uses beyond its main purpose that a person of ordinary skill
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`in the art would reasonably examine to solve any problem or need addressed by the patent.
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`Third, you must decide what difference, if any, existed between the claimed invention and
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`the prior art.
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`Case 1:19-cv-01410-MN Document 278 Filed 11/03/23 Page 17 of 37 PageID #: 10930
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`In deciding obviousness, you must avoid using hindsight; that is, you should not consider
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`what is known today or what was learned from the teachings of the asserted patents. As I instructed
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`you earlier, you must put yourself in the place of a person of ordinary skill in the art at the time
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`the invention was made.
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`In considering whether a claimed invention is obvious, you should consider whether, at the
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`relevant time, there was a reason that would have prompted a person having ordinary skill in the
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`field of the invention to combine the known elements in the prior art in a way the claimed invention
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`does, taking into account such factors as (1) whether the claimed invention was merely the
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`predictable result of using prior art elements according to their known function(s); (2) whether the
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`claimed invention provides an obvious solution to a known problem in the relevant field; (3)
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`whether the prior art teaches or suggests the desirability of combining elements claimed in the
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`invention; (4) whether the prior art teaches away from combining elements in the claimed
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`invention; (5) whether it would have been obvious to try the combinations of elements, such as
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`when there is a design incentive or market pressure to solve a problem and there are a finite number
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`of identified, predictable solutions. To find it rendered the claimed invention obvious, you must
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`find that the prior art provided a reasonable expectation of success.
`
`Finally, in determining whether the claimed invention is obvious, you should consider any
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`of the following factors (called “secondary considerations”) that you find have been shown by the
`
`evidence:
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`1. Whether the claimed invention was commercially successful as a result of the merits
`of the claimed invention;
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`2. [[VB ASSETS PROPOSAL: Whether others had tried and failed to make the
`claimed invention;]]
`
`3. Whether others copied the claimed invention;
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`4. Whether the claimed invention satisfied a long-felt need;
`
`15
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`

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`Case 1:19-cv-01410-MN Document 278 Filed 11/03/23 Page 18 of 37 PageID #: 10931
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`5. [[VB ASSETS PROPOSAL: Whether others in the field praised the claimed
`invention;
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`6. Whether the inventor proceeded contrary to accepted wisdom in the field.]]4
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`When evidence establishes the presence of one or more of these secondary considerations,
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`it tends to prove the inventions were not obvious. These factors should be considered along with
`
`all the other evidence in the case in determining whether the asserted claims would have been
`
`obvious. In considering this kind of evidence, you should consider whether the secondary
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`consideration was attributable to the features of the asserted claims as opposed to features already
`
`found in the prior art.
`
`
`
`Source: Complete Genomics, Inc. v. Illumina, Inc., No. 19-970-MN, D.I. 404 at 25-27 (D. Del.
`May. 5, 2022) (Final Jury Instructions) (Noreika, J.); TRUSTID, Inc. v. Next Caller Inc., No. 18-
`172-MN, D.I. 295 at 29 (D. Del. Jul. 6, 2021) (Final Jury Instructions) (Noreika, J.).
`
`
`
`
`
` 4
`
` VB’s Position: VB’s proposal is from the final instructions for Complete Genomics. VB
`disagrees with Amazon that the instruction should be condensed.
`
`Amazon’s Position: VB Assets’s validity expert, Dr. Nathaniel Polish, provided an opinion on
`the existence of only three secondary considerations of non-obviousness: commercial success,
`copying, and long-felt, unmet needs. (See Polish Reb. Rep. at ¶¶ 668–699.) The others should be
`excluded.
`
`16
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`Case 1:19-cv-01410-MN Document 278 Filed 11/03/23 Page 19 of 37 PageID #: 10932
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`J.
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`INVALIDITY – WRITTEN DESCRIPTION
`
`A patent must contain a written description of the patent claims. The written-description
`
`requirement helps ensure that the patent applicant actually invented the claimed subject matter. To
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`satisfy the written-description requirement, the patent specification must describe each and every
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`limitation of a patent claim, in sufficient detail, although the exact words found in the claim need
`
`not be used. When determining whether the specification discloses the invention, the claim must
`
`be viewed as a whole.
`
`In this case, Amazon contends that the asserted claims are invalid for failure to satisfy the
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`written-description requirement. Amazon bears the burden of establishing by clear and convincing
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`evidence that the specification fails to satisfy the written-description requirement. If a patent claim
`
`lacks adequate written description, it is invalid.
`
`The written description requirement is satisfied if persons of ordinary skill in the field of
`
`the invention would recognize, from reading the patent specification, that the inventor possessed
`
`the subject matter finally claimed in the patent. The written-description requirement is satisfied if
`
`the specification shows that the inventor possessed his or her invention as of the effective filing
`
`date of the claimed invention, even though the claims may have been changed or new claims added
`
`since that time.
`
`It is unnecessary to spell out every detail of the invention in the specification, and specific
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`examples are not required; but enough must be included in the specification to convince persons
`
`of ordinary skill in the art that the inventor possessed the full scope of the invention.
`
`[[VB ASSETS PROPOSAL: The written description does not have to be in the exact
`
`words of the claim. The requirement may be satisfied by any combination of the words,
`
`structures, figures, diagrams, formulas, etc., contained in the patent specification. Adequate
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`written description does not require either examples or an actual reduction to practice of the
`
`17
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`

`

`Case 1:19-cv-01410-MN Document 278 Filed 11/03/23 Page 20 of 37 PageID #: 10933
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`claimed invention(s). However,]]5 a mere wish or plan for obtaining the claimed invention is not
`
`an adequate written description. [[VB ASSETS PROPOSAL: Rather, the level of disclosure
`
`required depends on a variety of factors, such as the existing knowledge in the particular
`
`field, the extent and content of the prior art, the maturity of the science or technology, and
`
`other considerations appropriate to the subject matter.]]6 In evaluating whether the
`
`specification has provided an adequate written description, you may consider such factors as:
`
`1.
`
`2.
`
`3.
`
`the nature and scope of the patent claims;
`
`the complexity, predictability, and maturity of the technology at issue;
`
`the existing knowledge in the relevant field; and
`
`
`
` 5
`
` VB’s Position: Amazon’s added sentence of “a mere wish or plan for obtaining the claimed
`invention is not an adequate written description” is from the Federal Circuit Bar Association model
`jury instruction. But that addition alone without the proper context is prejudicial. Accordingly,
`VB proposes adding the sentences that precede and follow Amazon’s addition in the Federal
`Circuit Bar Association’s model. FCBA at No. B.4.2a—Written Description Requirement.
`
`Amazon’s Position: VB Asset’s addition is redundant of the previous paragraph, which already
`states that “[i]t is unnecessary to spell out every detail of the invention in the specification” and
`that “specific examples are not required.” Re-stating the same