Case 6:17-cv-01217-EFM Document 275 Filed 10/21/22 Page 1 of 4
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF KANSAS
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`LOGANTREE LP
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`Plaintiff,
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`v.
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`GARMIN INTERNATIONAL, INC.
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`Defendant.
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`CIVIL ACTION NO. 6:17-CV-01217
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`AGREED JURY INSTRUCTION NO. 1
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`Plaintiff LoganTree LP and Defendant Garmin International, Inc. hereby jointly submit the
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`attached Agreed Jury Instruction, in place of Plaintiff’s Proposed Instruction No. 1 (Doc. 259 at
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`2) and Defendant’s Proposed Instruction No. 1 (Doc. 260-2 at 3-4).
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`FOULSTON SIEFKIN LLP
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`/s/Clayton J. Kaiser
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`Clayton J. Kaiser, Kansas Bar #24066
`1551 N. Waterfront Pkwy, Suite 100
`Wichita, Kansas 67206
`O: 316-291-9539
`F: 866-280-2532
`ckaiser@foulston.com
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`and
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`MCCATHERN, PLLC
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`/s/ Arnold Shokouhi
`Arnold Shokouhi, TX (pro hac vice)
`James E. Sherry, TX (pro hac vice)
`3710 Rawlins Street, Suite 1600
`Dallas, Texas 75219
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`Respectfully submitted by:
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`ERISE IP, P.A.
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`/s/ Adam P. Seitz
`Adam P. Seitz, KS Bar #21059
`Megan J. Redmond, KS Bar #21999
`Carrie A. Bader, KS Bar #24436
`Clifford T. Brazen, KS Bar #27408
`ERISE IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`adam.seitz@eriseip.com
`megan.redmond@eriseip.com
`carrie.bader@eriseip.com
`cliff.brazen@eriseip.com
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`for Defendant Garmin
`Attorneys
`International, Inc.
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`Case 6:17-cv-01217-EFM Document 275 Filed 10/21/22 Page 2 of 4
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`O: 214-443-4478
`F: 214-741-4717
`arnolds@mccathernlaw.com
`jsherry@mccathernlaw.com
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`and
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`Ahmad, Zavitsanos & Mensing PC
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`/s/ Jason McManis
`Jason McManis, TX (pro hac vice)
`Weining Bai, TX (pro hac vice)
`Sujeeth Rajavolu (pro hac vice)
`1221 McKinney Street, Suite 2500
`Houston, Texas 77010
`T: 713-655-1101
`F: 713-655-0062
`jmcmanis@azalaw.com
`wbai@azalaw.com
`srajavolu@azalaw.com
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`Counsel for Plaintiff LoganTree LP
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`CERTIFICATE OF SERVICE
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`I hereby certify that on October 12, 2022, I electronically filed a copy of the foregoing
`document with the Clerk of the Court using the CM/ECF system, which will send notification of
`such filing to counsel of record for all parties in the case.
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`/s/Clayton J. Kaiser
`Clayton J. Kaiser, #24066
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`Case 6:17-cv-01217-EFM Document 275 Filed 10/21/22 Page 3 of 4
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`Instruction No. __
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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 of the kinds of factors that you
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`may consider in making your determination are:
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`The royalties received by the patentee for licensing of the patents-in-suit proving
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`or tending to prove an established royalty;
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`The rates paid by the licensee for the use of other patents comparable to the Patent-
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`in-Suit;
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`The nature and scope of the license as exclusive or non-exclusive or as restricted or
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`non-restricted in terms of territory or with respect to the parties to whom the manufactured
`products may be sold;
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`(4) Whether the patent owner had an established policy of granting licenses or retaining
`the patented invention as its exclusive right or whether the patent owner had a policy of
`granting licenses under special conditions designed to preserve its monopoly;
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`The nature of the commercial relationship between the patent owner and the
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`licensee, such as whether they are competitors, in the same territory, in the same line of
`business, or whether their relationship was that of an inventor and a promoter;
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`The effect of selling the patented specialty in promoting sales of other products of
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`the licensee, the existing value of the invention to the licensor as a generator of sales of his
`non-patented items, and the extent of such as derivative or collateral sales;
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`(7)
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`The established profitability of the product made under patent, its commercial
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`success, and its current popularity attributable to the patent;
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`The utility and advantages of the patented invention over the old modes or devices,
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`if any, that had been used for achieving similar results;
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`(10) The nature of the patented invention, the character of the commercial embodiment
`of it 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
`probative of the value of that use;
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`The duration of the patent and the term of the license;
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`Case 6:17-cv-01217-EFM Document 275 Filed 10/21/22 Page 4 of 4
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`(12) The portion of the profit or of the selling price that may be customary in the
`particular 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 should be credited to the invention as
`distinguished from non-patented elements, the manufacturing process, business risks, or
`significant features or improvements added by the infringer;
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`(14) The opinion and testimony of qualified experts; and
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`(15) The amount that a licensor and a licensee would have agreed upon at the time the
`infringement began if both sides had been reasonably and voluntarily trying to reach an
`agreement; that is, the amount which a prudent licensee who desired, as a business
`proposition, to obtain a license to manufacture and sell a particular article embodying the
`patented invention would have been willing to pay as a royalty and yet be able to make a
`reasonable profit and which amount would have been acceptable to a prudent patentee
`who was willing to grant a license.
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`While this is a list of factors that may inform your analysis, these factors do not form a test for
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`royalty calculations. No one factor is dispositive and you can and should consider the evidence
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`that has been presented to you in this case on each of these factors. You may also consider any
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`other factors which in your mind would have increased or decreased the royalty the alleged
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`infringer would have been willing to pay and the patent holder would have been willing to accept,
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`acting as normally prudent business people.
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