Case 1:19-cv-01937-MFK-JLH Document 327 Filed 03/03/23 Page 1 of 28 PageID #: 42500
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`EXPRESS MOBILE, INC.,
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`GODADDY.COM, LLC,
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`Plaintiff,
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`v.
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` Defendant.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Civil Action No.1:19-cv-01937-MFK
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`FINAL JURY INSTRUCTIONS
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`Case 1:19-cv-01937-MFK-JLH Document 327 Filed 03/03/23 Page 2 of 28 PageID #: 42501
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`1.
`2.
`3.
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`4.
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`TABLE OF CONTENTS
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`INTRODUCTION ............................................................................................................... 1
`THE PARTIES AND THEIR CONTENTIONS ................................................................. 2
`THE PATENT CLAIMS ..................................................................................................... 3
`3.1.
`THE ROLE OF CLAIMS IN THE PATENT ......................................................... 3
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`3.2.
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`INDEPENDENT AND DEPENDENT CLAIMS .................................................. 4
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`3.3. CLAIM INTERPRETATION ................................................................................. 5
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`INFRINGEMENT................................................................................................................ 7
`4.1.
`INFRINGEMENT GENERALLY.......................................................................... 7
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`4.2. DIRECT INFRINGEMENT BY "LITERAL INFRINGEMENT" ......................... 8
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`4.3. DIRECT INFRINGEMENT – ONE OR MORE SYSTEM COMPONENTS
`LOCATED OUTSIDE THE UNITED STATES ................................................... 9
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`4.4. WILLFUL INFRINGEMENT .............................................................................. 10
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`5.
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`INVALIDITY .................................................................................................................... 11
`5.1.
`PRIOR ART .......................................................................................................... 12
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`5.2. OBVIOUSNESS ................................................................................................... 13
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`5.3. OBVIOUSNESS – ADDITIONAL FACTORS INDICATING
`NONOBVIOUSNESS .......................................................................................... 14
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`5.4. OBVIOUSNESS — COMBINING OF PRIOR ART REFERENCES ................ 15
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`6.
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`DAMAGES ........................................................................................................................ 16
`6.1. DATE OF COMMENCEMENT OF DAMAGES ............................................... 17
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`6.2. REASONABLE ROYALTY—DEFINITION ..................................................... 18
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`6.3. DAMAGES – LUMP SUM VS. RUNNING ROYALTY ................................... 19
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`6.4. REASONABLE ROYALTY—RELEVANT FACTORS .................................... 20
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`7.
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`DELIBERATION AND VERDICT .................................................................................. 22
`7.1.
`INTRODUCTION ................................................................................................ 22
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`7.2. UNANIMOUS VERDICT .................................................................................... 23
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`7.3. DUTY TO DELIBERATE ................................................................................... 24
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`7.4. COURT HAS NO OPINION ................................................................................ 25
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`1.
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`INTRODUCTION
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`Members of the jury, it is time for me to instruct you about the law that you must follow in
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`deciding this case.
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`Each of you has been provided a copy of these instructions. If you prefer, you may read
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`along as I deliver them. You will be able to take your copies with you into your deliberations and
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`refer to them at any time, if necessary.
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`It is your duty as jurors to follow the law as I will state it to you, and to apply that law to
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`the facts as you find them from the evidence in the case. You may not single out one instruction
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`alone as stating the law but must consider the instructions as a whole. The instructions as a whole
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`include not only these instructions and the preliminary instructions, but also any instructions I gave
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`at various points during trial. You should not be concerned with the wisdom of any rule that I state.
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`Regardless of any opinion that you may have as to what the law may be-or should be-it would
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`violate your sworn duty to base a verdict upon any view of the law other than that which I will
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`now give you.
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`In deciding what the facts are, you may have to decide what testimony you believe and
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`what testimony you do not believe. The weight of the evidence to prove a fact does not necessarily
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`depend on the number of witnesses who testify. What is more important is how believable the
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`witnesses were, and how much weight you think their testimony deserves.
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`2.
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`THE PARTIES AND THEIR CONTENTIONS
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`As I previously told you, Express Mobile alleges that certain GoDaddy products infringe
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`the Asserted Claims of the Asserted Patents.
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`GoDaddy denies that it has infringed the Asserted Claims of the Asserted Patents and also
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`argues that the Asserted Claims are invalid.
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`In this case, you must decide the issues according to the instructions I give you. In general,
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`these issues are:
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`Whether Express Mobile has proven by a preponderance of the evidence that GoDaddy has
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`infringed any of the Asserted Claims of the Asserted Patents.
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`Whether Express Mobile has proven by a preponderance of the evidence that GoDaddy has
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`willfully infringed any of the Asserted Claims of the Asserted Patents.
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`Whether GoDaddy has proven by clear and convincing evidence that any of the Asserted
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`Claims of the Asserted Patents are invalid.
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`If you find that any Asserted Claim of any of the Asserted Patents is infringed and is not
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`invalid, then you must decide what damages has Express Mobile proven by a preponderance of
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`the evidence that it is entitled to compensate Express Mobile for GoDaddy's infringement.
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`Your decision will be recorded in a verdict form that I will provide to you.
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`3.
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`THE PATENT CLAIMS
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`3.1. THE ROLE OF CLAIMS IN THE PATENT
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`Before you can decide the issues in this case, you will need to understand the role of patent
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`"claims." Patent claims are the numbered sentences at the end of each patent. The claims are
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`important because the words in those sentences define what a patent covers. The rest of the patent
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`includes figures and text that provide a description and examples of the invention and context for
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`the claims, but it is the claims that define the breadth of the patent's coverage. Therefore, what a
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`patent covers depends, in turn, on what each of its claims cover.
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`A claim states, in words, a set of requirements that describe what the claim covers. Each
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`claim sets forth its requirements in a single sentence. The requirements of a claim are often referred
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`to as "claim elements" or "claim limitations." The scope of a patent is assessed claim-by-claim.
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`When a thing (such as a product or a method) meets all the requirements of a claim, the claim is
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`said to "cover" that thing, and that thing is said to "fall" within the scope of that claim. In other
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`words, a claim covers a product or method when each of the claim elements or limitations is present
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`in that product or method.
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`3.2.
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`INDEPENDENT AND DEPENDENT CLAIMS
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`This case involves two types of patent claims: independent claims and dependent claims.
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`An "independent claim" describes all 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. In this case, Asserted Claims 1 and 12 of the '755 patent, claim 1 of the
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`'287 patent, and claim 1 of the '044 patent are independent claims. The remaining Asserted Claims,
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`claims 3, 16, and 22 of the '755 patent, claim 13 of the '287 patent and claims 11, 13, 17 and 19 of
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`the '044 patent, are "dependent claims."
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`A "dependent claim" does not by itself describe all the requirements of the claim but refers
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`to another claim for some of its requirements. In this way, the claim "depends" on another claim.
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`A dependent claim incorporates all the requirements of the claim(s) that it depends on. The
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`dependent claim then adds its own additional requirements. To determine what a dependent claim
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`covers, it is necessary to look at both the dependent claim and any other claim that it depends on.
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`Here, for example, claim 3 of the '755 patent depends on claim 1. A product must meet all the
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`requirements of both dependent claim 3 and independent claim 1, in order for you to find that it is
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`covered by dependent claim 3.
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`3.3. CLAIM INTERPRETATION
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`It is my job as the judge to determine the meaning of any claim language from these patents
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`that needs interpretation. You must accept the meanings that I give you and use them when you
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`decide whether any claim is infringed or invalid.
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`In order to decide whether or not each claim is invalid and whether it has been infringed,
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`you will first need to understand what each claim covers. The first step is to understand the
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`meaning of the words used in the patent claim. Sometimes, the words in a patent claim are difficult
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`to understand, and it is therefore difficult to understand what requirements these words impose.
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`The law says that it is my role to define the terms of the claims, and it is your role to apply my
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`definitions to the issues that you are asked to decide in this case. Therefore, as I explained to you
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`at the start of the case, I have determined the meaning of certain claim terms and I will provide
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`you with those definitions. You must accept my definitions of these words as correct.
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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 its ordinary and accustomed meaning as understood by a person of ordinary skill in the art.
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`The parties agree that the definition of a person of ordinary skill in the art that you should apply in
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`this case is someone who had a bachelors or graduate degree in computer science, mathematics,
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`engineering, or a similar discipline, or equivalent practical experience, together with knowledge
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`of software development and web design and development with graphical user interfaces and
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`systems, together with approximately two or three years of experience in the field relating to web
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`design and development. You should not take my definition of the language of the claims as an
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`indication that I have a view regarding how you should decide the issues that you are being asked
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`to decide, such as infringement or invalidity. These issues are yours to decide. I will now read you
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`my interpretation of various claim terms and phrases:
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`Claim Term
`application
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`player
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`Patents
`'755, '287 and '044
`patents
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`'755, '287 and '044
`patents
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`device-dependent code
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`'755 and '287 patents
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`device-independent code
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`'755 and '287 patents
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`Construction
`device-independent code containing
`instructions for a device and which is
`separate from the Player
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`device-specific code which contains
`instructions of a device and which is
`separate from the Application
`code that is specific to the operating
`system, programming language, or
`platform of a device
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`code that is not specific to the
`operating system, programming
`language, or platform of a device
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`a system, with a graphical interface, for
`generating code to display content on a
`device screen
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`'755, '287 and '044
`patents
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`'755 patent
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`where said Application is a device-
`independent code
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`'755, '287 and '044
`patents
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`for calling up one or more web
`components
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`authoring tool /
`authoring tool configured to
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`where said application is a
`device-dependent code
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`for evoking one or more
`web components
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`registry
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`web component
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`web service
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`'755 and '287 patents
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`'755, '287 and '044
`patents
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`'755, '287 and '044
`patents
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`a database that is used for computing
`functionality
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`software objects that provide
`functionalities of a web service
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`A software system that supports
`interaction between devices over a
`network
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`No construction necessary
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`symbolic name(s)
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`'755, '287 and '044
`patents
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`4.
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`INFRINGEMENT
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`4.1.
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`INFRINGEMENT GENERALLY
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`In this case, Express Mobile alleges that GoDaddy infringes claims 1, 3, 12, 16, and 22 of
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`the ʼ755 patent, claims 1 and 13 of the ʼ287 patent, and claims 1, 11, 13, 17, and 19 of the '044
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`patent. I will refer to these as the "Asserted Claims."
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`You must determine the issue of infringement separately for each Asserted Claim.
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`Infringement is assessed on a claim-by-claim basis. Therefore, there may be infringement of one
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`claim but no infringement of another claim.
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`I will now instruct you how to decide whether Express Mobile has proven that GoDaddy
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`has infringed the Asserted Claims. Express Mobile must prove infringement by a "preponderance
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`of the evidence." That means Express Mobile has to produce evidence which, when considered in
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`the light of all the facts, leads you to believe that the particular proposition you are considering is
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`more likely true than not.
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`You have heard evidence about both Express Mobile's product development and
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`GoDaddy's accused products. However, in deciding the issue of infringement you may not
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`compare GoDaddy's accused products to Express Mobile's product development. Rather, you
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`must compare the GoDaddy's accused product to the claims of the ʼ755, ʼ287, and ʼ044 patents
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`when making your decision regarding infringement.
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`4.2. DIRECT INFRINGEMENT BY "LITERAL INFRINGEMENT"
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`To prove infringement, Express Mobile must prove by a preponderance of the evidence
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`that GoDaddy made, used, sold or offered for sale within the United States a product or method
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`that meets all of the requirements of the particular patent claim you are considering.
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`To determine infringement, you must compare the accused products with each Asserted
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`Claim. In making that comparison, you must use my claim definitions, along with the ordinary
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`meaning in the field of the patent for the other terms in the claims. You must compare the accused
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`products with each and every one of the requirements of a claim to determine whether all of the
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`requirements of that claim are met by one or more of the accused products. If the accused product
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`does not literally contain one or more elements recited in a claim, then you must find that the
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`accused product does not directly infringe that claim.
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`Case 1:19-cv-01937-MFK-JLH Document 327 Filed 03/03/23 Page 12 of 28 PageID #: 42511
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`claim.
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`4.3. DIRECT INFRINGEMENT – ONE OR MORE SYSTEM COMPONENTS
`LOCATED OUTSIDE THE UNITED STATES
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`Direct infringement requires that the accused system include every element listed in the
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`Express Mobile claims that infringement occurred within the United States even though
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`GoDaddy contends that some (but not all) of the elements of the claim were located outside of the
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`United States. For infringement to occur within the United States, Express Mobile must prove, by
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`a preponderance of the evidence, that the control of the system took place, and the benefit of the
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`system was enjoyed, in the United States.
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`4.4. WILLFUL INFRINGEMENT
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`Express Mobile argues that GoDaddy willfully infringed Express Mobile's patents from
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`October 22, 2019 through the present. If you have decided that GoDaddy has infringed, you must
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`also address the additional issue of whether or not this infringement was willful. This requires you
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`to determine whether Express Mobile proved that it is more likely than not that GoDaddy knew of
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`Express Mobile's patents and infringed them deliberately or intentionally.
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`To determine whether GoDaddy acted willfully, consider all of the facts and assess what
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`knowledge GoDaddy had at the time of the challenged conduct. Facts that you may consider
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`include, but are not limited, to:
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`(1) Whether or not GoDaddy acted consistently with the standards of behavior for its
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`industry;
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`(2) Whether or not GoDaddy intentionally copied a product of Express Mobile that is
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`covered by the Asserted Patents;
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`(3) Whether or not GoDaddy reasonably believed it did not infringe or that the Asserted
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`Patents were invalid;
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`(4) Whether or not GoDaddy made a good-faith effort to avoid infringing the Asserted
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`Patents, for example, whether GoDaddy attempted to design around the Asserted Patents; and
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`(5) Whether or not GoDaddy tried to cover up its infringement.
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`5.
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`INVALIDITY
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`I will now instruct you on the rules you must follow in deciding whether GoDaddy has
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`proven that the Asserted Claims are invalid.
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`The law presumes the Asserted Claims are valid. For this reason, GoDaddy has the burden
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`of proving invalidity by clear and convincing evidence. Proof by clear and convincing evidence
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`consists of proof that the truth of a factual contention is highly probable. This is a higher burden
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`than proof by a preponderance of the evidence.
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`GoDaddy contends that the Asserted Claims are invalid based on obviousness. The term
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`"obviousness" has a special meaning under patent law, which I will explain to you in these
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`instructions.
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`In making your determination as to invalidity, you should consider each claim separately.
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`5.1. PRIOR ART
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`In addressing Defendant's invalidity defenses, you will have to consider what is disclosed
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`in the "prior art." That which came before the invention of the patents is referred to as "prior art."
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`The parties agree that the following references are prior art:
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` BlackBerry MDS in combination with the knowledge and routine skill of one of ordinary
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`skill in the art is prior art to the Asserted Patents.
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`5.2. OBVIOUSNESS
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`Defendant contends that the Asserted Claims of the '755, '287, and '044 patents are invalid
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`because they are obvious.
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`In order to show that the claimed invention is obvious, Defendant must prove by clear and
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`convincing evidence that a person of ordinary skill in the art of the invention, who knew about all
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`the prior art existing at the time the invention was made would have conceived the invention at
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`that time. Obviousness may be shown by considering one or more items of prior art in combination.
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`In deciding obviousness, you should put yourself in the position of a person with ordinary
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`skill in the field at the time the invention was made. You must not use hindsight; in other words,
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`you may not consider what is known now or what was learned from Plaintiff's patent. In addition,
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`you may not use Plaintiff's patent as a roadmap for selecting and combining items of prior art.
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`In making your decision regarding obviousness, you are to consider each of the following
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`factors:
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`1. The scope and content of the prior art. You may consider prior art that was reasonably
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`relevant to the problem the inventor faced that a person of ordinary skill would consider in
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`attempting to solve the problem.
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`2. Any differences between the prior art and the invention in the patent claim that you are
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`considering.
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`3. The level of ordinary skill in the field of the invention at the time the invention was
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`made.
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`4. Additional factors, if any, that indicate that the invention was obvious or not obvious. I
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`will define them in the next instruction.
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`5.3.
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` OBVIOUSNESS – ADDITIONAL FACTORS INDICATING
`NONOBVIOUSNESS
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`As I stated in the previous instruction, in deciding obviousness you should consider
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`whether any of the following are true, which if so may indicate the invention was not obvious.
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`1. Has the invention achieved commercial success? If so, is that success based on the
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`invention itself, rather than on advertising, promotion, sales tactics, or features of the product other
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`than those found in the claimed invention?
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`2. Did others seek or obtain a license to the Patent(s)-in-Suit?
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`Not all of these factors may be present. No single factor is more or less important than the
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`others.
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`5.4. OBVIOUSNESS — COMBINING OF PRIOR ART REFERENCES
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`The fact that each of the elements of the claim may be found in prior art references, if
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`combined is not enough, by itself, to prove obviousness. In determining whether Defendant has
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`proved obviousness, you may combine multiple items of prior art only if a person who has
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`ordinary skill in the field would have been motivated to combine them when trying to solve the
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`problem that is addressed by the claimed invention and would have had a reasonable expectation
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`of success in doing so. In deciding this, you may consider, among other things, any of the
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`following factors:
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`1. What the prior art suggests about combining;
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`2. The knowledge possessed by persons who have ordinary skill in the field of the
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`invention; and
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`3. The effects of market pressures and design needs that existed at the time, and the
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`number of identified and predictable solutions for those demands.
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`6.
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`DAMAGES
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`If you find that GoDaddy infringed any valid claim of the asserted patents, you must then
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`consider what amount of damages to award to Express Mobile. If you find that GoDaddy has not
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`infringed any valid claim of the asserted patents, then Express Mobile is not entitled to any damages.
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`The fact that I am instructing you on damages does not mean that the I believe that one party
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`or the other should win in this case. My instructions about damages are for your guidance only in the
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`event you find in favor of Express Mobile.
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`The damages you award must be adequate to compensate Express Mobile for any infringement.
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`They are not meant to punish an infringer. Express Mobile has the burden to establish the amount of
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`its damages by a preponderance of the evidence. While Express Mobile is not required to prove the
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`amount of its damages with mathematical precision, it must prove them with reasonable certainty. You
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`may not award damages that are speculative or based on guesswork.
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`Express Mobile seeks to recover a "reasonable royalty." A reasonable royalty is defined as the
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`dollar amount Express Mobile and GoDaddy would have agreed upon in a hypothetical negotiation,
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`which I will explain below, as a fee for GoDaddy's use of the claimed invention at the time just prior
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`to when the alleged infringement began.
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`6.1. DATE OF COMMENCEMENT OF DAMAGES
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`In determining the amount of damages, you must determine when the damages began. In
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`this case, damages, if any, began on June 23, 2015 for the '755 patent; on October 18, 2016 for the
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`'287 patent; and on March 27, 2018 for the '044 patent.
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`6.2. REASONABLE ROYALTY—DEFINITION
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`A royalty is a payment made to a patent holder in exchange for the right to make, use, or
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`sell the claimed invention. A reasonable royalty is the amount of royalty payment that a patent
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`holder and the alleged infringer would have agreed to in a hypothetical negotiation taking place at
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`a time prior to when the infringement first began. In considering this hypothetical negotiation, you
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`should focus on what the expectations of the patent holder and the alleged infringer would have
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`been if they had entered into an agreement at that time, and if they had acted reasonably in their
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`negotiations. In determining this, you must assume that both parties believed the patent was valid
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`and infringed and that both parties were willing to enter into an agreement. The reasonable royalty
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`you determine must be a royalty that would have resulted from the hypothetical negotiation, and
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`not simply a royalty either party would have preferred. If evidence of things that happened after
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`the infringement first began will aid you in assessing what royalty would have resulted from a
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`hypothetical negotiation just prior to the first infringement, then you may consider such evidence.
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`6.3. DAMAGES – LUMP SUM VS. RUNNING ROYALTY
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`A reasonable royalty can be paid either in the form of a one-time lump sum payment or as
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`a "running royalty." Either method is designed to compensate the patent holder based on the
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`infringer's use of the patented technology. It is up to you to determine based on the evidence what
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`type of royalty, if any, is appropriate in this case.
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`6.4. REASONABLE ROYALTY—RELEVANT FACTORS
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`In determining the reasonable royalty, you should consider all the facts known and
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`available to the parties at the time the infringement began. Some factors that you may consider
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`are:
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`(1) The royalties received by the patent holder for the licensing of the Asserted Patents,
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`proving or tending to prove an established royalty.
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`(2) The rates paid by the licensee for the use of other patents comparable to the Asserted
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`Patents.
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`(3) The nature and scope of the license (for example, as exclusive or nonexclusive, or as
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`restricted or non-restricted in terms of territory or with respect to whom the manufactured product
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`may be sold).
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`(4) The licensor's established policy and marketing program to maintain his or her patent
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`monopoly (for example, by not licensing others to use the invention, or by granting licenses under
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`special conditions designed to preserve that monopoly).
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`(5) The commercial relationship between the licensor and licensee, such as whether they
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`are competitors in the same territory and line of business, or whether they are inventor and
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`promoter.
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`(6) The effect of derivative or convoyed sales (for example, the effect of selling the
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`patented specialty in promoting sales of other products of the licensee, or the existing value of the
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`invention to the licensor as a generator of sales of his non-patented items.
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`(7) The duration of the patent and the term of the license.
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`(8) The established profitability of the product made under the patents, its commercial
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`success, and its current popularity.
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`(9) The utility and advantages of the patented property over the prior art, if any, that had
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`been used to achieve similar results.
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`(10) The nature of the patented invention, the character of commercial embodiments of it
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`as owned and produced by the licensor, and the benefits to those who have used the invention.
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`(11) The extent to which the infringer has made use of the invention and any evidence that
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`substantiates the value of that use.
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`(12) The portion of the profit, or of the selling price, that may be customary in the particular
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`business or in comparable business to allow for the use of the invention or analogous inventions.
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`(13) The portion of the realizable profits that are due to the patented invention as
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`distinguished from non-patented elements, the manufacturing process, business risks, or
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`significant features or improvements added by the alleged infringer.
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`(14) The opinion testimony of qualified experts.
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`(15) The amount that a prudent licensee—who desired, as a business proposition, to obtain
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`a license to manufacture and sell a particular article embodying the patented invention—would
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`have been willing to pay as a royalty and yet be able to make a reasonable profit and that would
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`have been acceptable to a prudent patent holder who was willing to grant a license.
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`No one factor is dispositive, and you can and should consider the evidence that has been
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`presented to you in this case on each of these factors. You may also consider any other factors
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`which in your mind would have increased or decreased the royalty the alleged infringer would
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`have been willing to pay, and the patent holder would have been willing to accept, if they were
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`acting as normally prudent business people.
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`7.
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`DELIBERATION AND VERDICT
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`7.1.
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`INTRODUCTION
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`That concludes the part of my instructions explaining the rules for considering some of the
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`testimony and evidence. After you hear closing arguments of counsel, you will return to the jury
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`room to begin your deliberations. Now, let me finish up by explaining some things about your
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`deliberations in the jury room, and your possible verdicts.
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`Once you are all in the jury room, the first thing you should do is choose a presiding
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`juror. The presiding juror should see to it that your discussions are carried on in an organized
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`way and that everyone has a fair chance to be heard. You may discuss the case only when all
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`jurors are present.
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`Once you start deliberating, do not talk to the jury officer, to me, or to anyone else except
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`each other about the case. If you have any questions or messages, you must write them down on a
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`piece of paper, sign them, and then give them to the jury officer. The officer will give them to me,
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`and I will respond as soon as I can. I may have to talk to the lawyers about what you have asked,
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`so it may take me some time to get back to you. You may continue to deliberate while you wait
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`for me to answer. Any questions or messages normally should be sent to me through your
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`foreperson.
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`7.2. UNANIMOUS VERDICT
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`Your verdict must represent the considered judgment of each juror. Your verdict must be
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`unanimous.
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`A verdict form has been prepared for you. The verdict form asks you a series of questions
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`about the parties' claims and defenses.
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`(Go over the verdict form.)
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`You will take this form to the jury room. When you have reached unanimous agreement,
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`your presiding juror will fill in and date the verdict form, and each of you will sign it. Unless
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`you are directed otherwise in the verdict form, you must answer all of the questions asked, and
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`you must all agree on each answer.
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`Advise the jury officer once you have reached a verdict. When you come back to the
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`courtroom, you will hand the verdict to the jury officer, and I will read the verdict aloud.
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`7.3. DUTY TO DELIBERATE
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`Now that all the evidence is in and the arguments are completed, you are free to talk about
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`the case in the jury room. In fact, it is your duty to talk with each other about the evidence and to
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`make every reasonable effort you can to reach a unanimous ag