Case 1 :04-cv-05312 Document 1 062
`
`PRE-DELIBERATION INSTRUCTIONS
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`Filed 10/10/tf*jrl- a>a6el 6~
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`FILED
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`OCT 1 0 {007
`
`Judge James B. Moran
`United States Dlstrjct Court
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`Page 1 of 52
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`TRADING TECH EXHIBIT 2099
`TD Ameritrade v. Trading Technologies
`CBM2014-00131
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`Case 1 :04-cv-05312 Document 1062
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`Filed 10/10/2007 Page 2 of 52
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`2
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`Pre-Deliberation Instructions
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`2.1
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`Generallnstrudions
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`2.1.1
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`Introduction
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`Ladies and gent1emen of the jury, you have heard the evidence and argwnents in
`this case and the time has come for you to weigh the evidence, deliberate and reach a
`verdict. Now it is time for me to instruct you about the law that you must follow in
`deciding this case. I will start by explaining your duties and the general rules that apply in
`every civil case. Then I wHl explain some rules that you must use in evaluating particular
`testimony and evidence. I will explain the positions of the parties and the law you will
`apply in this case. And last, I will explain the rules that you must follow during your
`deliberations in the jury room, and the possible verdicts that you may return. Please listen
`very carefully to everything I say.
`
`It is your duty as jurors to follow the law as I shall state it to you, and to apply
`that law to the facts as you find them from the evidence in the case. You are not to single
`out one instruction alone as stating the law, but must consider the instructions as a whole.
`You should not be concerned with the wisdom of any rule that I state. Regardless of any
`opinion that you may have as to what the law may be - or ought to be - it would violate
`your sworn duty to base a verdict upon any view of the law other than that which I give
`you.
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`2.1.2 Role of the Jury
`
`As the members of the jury, you are the sole and exclusive judges of the facts.
`You pass upon the evidence. You detennine the credibility of the witnesses. You
`resolve any conflicts in the testimony. You draw whatever reasonable inferences you
`decide to draw from the facts as you have determined them, and you determine the
`weight of the evidence.
`
`In deciding the facts of this case you must not be swayed by bias or prejudice or
`favor as to any party. Our system of law does not permit jurors to be governed by
`prejudice or sympathy or public opinion. Both the parties and the public expect that you
`will carefully and impartially consider all of the evidence in the case, follow the law as
`stated by the Court, and reach a just verdict regardless of the consequences.
`
`This case shall be considered and decided by you as an action between persons of
`equal standing in the community, and holding the same or similar stations in life. Each
`party is entitled to a fair trial at your hands, and a corporation is entitled to the same fair
`trial as an individual. The law respects all persons equally, and all persons including
`corporations stand equal before the law and are to be dealt with as equals in a court of
`justice .
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`Filed 10/10/2007 Page 3 of 52
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`In determining the facts, you must consider only the evidence I have admitted in
`the case. Any evidence to which I sustained an objection or that I ordered stricken must
`be disregarded.
`
`Remember that any statements, objections or arguments made by the lawyers are
`not evidence in the case. The function of the lawyers is to point out those things that are
`most significant or most helpful to their side of the case, and in so doing, to call your
`attention to certain facts or inferences that might otherwise escape your notice.
`
`In the final analysis1 however1 it is your own recollection and interpretation of the
`evidence that controls in the case. What the lawyers say is not binding upon you.
`
`The evidence from which you are to decide the facts consists of:
`l.
`the sworn testimony ofwitnesses, on both direct and cross-examination;
`2.
`the exhibits that have been received into evidence, and
`3.
`any facts to which TT and eSpeed have agreed or stipulated; and
`4.
`any facts that I have judicially noticed.
`
`While you should consider only the evidence in the case, you are pennitted to
`draw such reasonable inferences from the testimony as you feel are justified in the light
`of common experience. In other words, you may make deductions and reach conclusions
`that reason and common sense lead you to draw from the facts that have been established
`by the testimony and evidence in the case .
`
`In determining any fact in issue you may consider the testimony of all witnessest
`regardless of who may have called them, and all the exhibits received in evidence,
`regardless of who may have produced them.
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`•
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`Any notes that you may have taken during this trial are only aids to your memory.
`If your memory differs from your notest you should rely on your memory and not on the
`notes. The notes are not evidence. If you have not taken notes, you should rely on your
`independent recollection of the evidence and should not be unduly influenced by the
`notes of other jurors. Notes are not entitled to any greater weight than the recollection or
`impression of each juror about the testimony.
`
`Anything you may have seen or heard when the Court was not in session is not
`evidence. You are to decide the case solely on the evidence at trial. In considering the
`evidence in this case. you are not required to set aside your own observation and
`experience in the affairs of life. You have a right to consider all the evidence in the light
`of your own observation and experience in the atTairs of life .
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`2.1.3 Juror Oath
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`In determining the facts, you are reminded that you took an oath to render
`judgment impartially and fairly. without prejudice or sympathy, solely upon the evidence
`in the case and the applicable law. I know that you will do this and reach a just and true
`verdict.
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`•
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`2.1.4 Jury to Disregard Court's View
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`I have expressed no opinion as to which witnesses are, or are not, worthy of
`belief, what facts are, or are not, established, or what inferences, if any, should be drawn
`from the evidence. If anything I have said or done has seemed to indicate an opinion
`relating to any of these matters, I instruct you to disregard it. In making your
`detennination of the facts in this case, your judgment must be applied only to that which
`is properly in evidence.
`
`From time to time I have had to rule on the admissibility of evidence, although I
`have tried to do so, when possible, out of your hearing. You must have no concern with
`the reasons for any of my rulings on the evidence, and you are not to draw any inferences
`from them, although you must abide by my decisions on what evidence you can and
`cannot consider. 'Whether offered evidence is admissible is purely a question oflaw for
`me to decide. Of course, you will dismiss from your mind completely any evidence
`which has been ruled out of the case by the court .
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`2.1.5 Wbtlt Is and Is Not Evidence
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`The evidence in this case is the sworn testimony of the witnesses, the exhibits I
`allowed into evidence, the stipulations of the parties, and any facts I have judicially
`noticed.
`
`By contrast, the questions or statements of a lawyer are not evidence. It is the
`witnesses' answers that are evidence, not the questions. Arguments by lawyers are not
`evidence, because the lawyers are not witnesses. What they have said to you in their
`opening statements and in their closing arguments is intended to help you understand the
`evidence to reach your verdict. However, if your recollection of the facts differs from
`the lawyers' statements, it is your recollection which controls.
`
`Testimony that has been stricken or excluded is not evidence and may not be
`considered by you in rendering your verdict. You may also not consider any answer that
`I directed you to disregard. Also, if certain testimony was received for a limited purpose
`-such as for the purpose of assessing a witness' credibility- you must follow the
`limiting instructions I gave you at that time.
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`•
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`Exhibits which have been marked for identification may not be considered by you
`as evidence until and unless they have been received in evidence by the court. Exhibits
`marked for identification but not admitted are not evidence, nor arc materials which were
`brought forth only to refresh a witness' recollection .
`
`You may see "demonstrative exhibits'' during the trial. These are exhibits that the
`lawyers or the witnesses have prepared to help you understand particular testimony.
`While you may consider these exhibits as part of the testimony, they are not evidence
`unless I specifically admit them into evidence.
`
`It is for you alone to decide the weight, if any, to be given to the testimony you
`have heard and the exhibits you have seen .
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`•
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`Case 1 : 04-cv-05312 Document 1 062
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`Filed 10/10/2007 Page 7 of 52
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`2.1.6. Dired and Circumstantial Evidence
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`Now, some of you may have heard the terms "direct evidence" and
`1circurnstantial evidence. 11
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`'
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`Direct evidence is simply evidence like the testimony of an eyewitness, which, if
`you believe it, directly proves a fact. If a witness testified that he saw it raining outside,
`and you believed him, that would be direct evidence that it was raining.
`
`Circumstantial evidence is simply a chain of circumstances that indirectly proves
`a fact. If someone walked into the courtroom wearing a raincoat covered with drops of
`water and carrying a wet hat that would be circumstantial evidence from which you could
`conclude that it was raining.
`
`It is your job to decide how much weight to give the direct and circumstantial
`evidence. The law makes no distinction between the weight that you should give to
`either one, nor does it say that one is any better evidence than the other. You should
`consider all the evidence, both direct and circumstantial, and give it whatever weight you
`believe it deserves .
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`Page 7 of 52
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`Case 1 :04-cv-05312 Document 1062
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`Filed 10/10/2007 Page 8 of 52
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`• 2.1.7 Stipulation of Facts
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`A stipulation of facts is an agreement among the parties that a certain fact is true.
`You must regard such agreed facts as true.
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`The facts the parties have stipulated to are as follows:
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`If the correct priority date is June 9, 2000. then the patents are invalid .
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`Case 1 :04-cv-05312 Document 1 062
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`Filed 1 0/10/2007 Page 9 of 52
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`2.1.8 Stipulation ofTestimony
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`A stipulation of testimony is an agreement among the parties that, if called, a
`witness would have given certain testimony. You must accept as true the fact that the
`witness would have given that testimony. However, it is for you to determine the effect, if
`any, to be given that testimony .
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`Page 9 of 52
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`Filed 1 0/10/2007 Page 10 of 52
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`2.1.9 Interrogatories
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`You have heard and seen evidence in this case that is in the form of
`interrogatories.
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`Interrogatories are written questions posed by one side that call for written
`answers under oath from the other side. Both the questions and answers are made before
`trial during what is called pretrial discovery, and each side is entitled to seek such
`discovery from the other.
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`You may consider a party's answers to interrogatories as evidence against a party
`who made the answer, just as you would any other evidence that has been admitted in this
`case.
`
`In this regard, you are not required to consider a party's answers to interrogatories
`as true, nor are you required to give them more weight than any other evidence. It is up
`to you to determine what weight, if any, should be given to the interrogatory answers that
`have been admitted as evidence.
`
`One cautionary word on this subject: The question asked, however, is not
`evidence. You may only consider the interrogatory answer as evidence against the party
`who gave the answer .
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`Filed 10/10/2007 Page 11 of 52
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`2.1.10 Depositions
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`Some of the testimony before you is in the form of depositions that have been
`received in evidence. A deposition is simply a procedure where the attorneys for one side
`may question a witness or an adverse party under oath and the deposition is recorded by a
`court reporter. This is part of the prettial discovery, and each side is entitled to take
`depositions. Depositions may be used at trial for a number of reasons, including because
`the particular witness could not be available live. You should consider the deposition
`testimony of a witness according to the same standards you would use to evaluate the
`testimony of a witness at trial. You should not accord live testimony higher weight than
`deposition testimony .
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`Filed 10/10/2007 Page 12 of 52
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`2.1.11 Witness Credibility
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`You must decide whether the testimony of each witness is truthful and accurate,
`in part, in whole, or not at all. You also must decide what weight, if any, you give to the
`testimony of each witness.
`
`In evaluating the testimony of any witness, you may consider, among other
`
`things:
`
`~the ability and opportunity the witness had to see, hear, or know the things that
`the witness testified about
`
`-the witness's memory
`
`-any interest, bias, or prejudice the witness may have
`
`-the witness' intelligence
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`·the manner of the witness while testifying
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`-and the reasonableness of the witness' testimony in light of all the evidence in
`the case .
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`Filed 10/10/2007 Page 13 of 52
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`2.1.12 Expert Witnesses -Generally
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`In this case, I have permitted the parties to offer testimony by certain witnesses
`retained by the parties to express their opinions about matters that are in issue. A witness
`may be pennitted to testify to an opinion on those matters about which he or she has
`special knowledge, skill, experience and training. Such testimony is presented to you on
`the theory that someone who is experienced and knowledgeable in the field can assist you
`in understanding the evidence or in reaching an independent decision on the facts.
`
`In weighing this opinion testimony, you may consider the witness' qualifications,
`his or her opinions, the reasons for testifying, as well as all of the other considerations
`that ordinarily apply when you are deciding whether or not to believe a witness·
`testimony. You may give the opinion testimony whatever weight, if any, you fmd it
`deserves in light of all the evidence in this case. You should not, however, accept
`opinion testimony merely because I allowed the witness to testit)r concerning his or her
`opinion. Nor should you substitute it for your own reason, judgment and common sense.
`The determination of the facts in this case rests solely with you .
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`LAWYER INTERVIEWING WITNESS <MODEL 1.16)
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`It is proper for a lawyer to meet with any witness in preparation for trial .
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`Filed 10/10/2007 Page 15 of 52
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`•
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`ABSENCE OF EVIDENCE <MODEL 1.18)
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`The law does not require any party to call as a witness every person who might have
`knowledge of the facts related to this trial. Similarly, the law does not require any party
`to present as exhibits all papers and things mentioned during this trial.
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`NO NEED TO CONSIDER DAMAGES (MODEL 1.31)
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`If you decide for the Defendants on the question of patent infringement, then you should
`not consider th~ question of damages .
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`Filed 10/10/2007 Page 17 of 52
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`The Parties and Their Contentions
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`2.2
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`•
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`I will now review for you the parties' contentions and the law that you will have to consider
`in reaching your verdict.
`
`At the beginning of the trial, I gave you some general infonnation about patents and the
`patent system and a brief overview of the patent laws relevant to this case. I will now give you
`more detailed instructions about the patent laws that specifically relate to this case. If you would
`like to review my instructions at any time during your deliberations, they will be available to you
`in the jury room .
`
`•
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`•
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`~ 1 -
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`Page 17 of 52
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`Filed 10/10/2007 Page 18 of 52
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`2.2.1 Summary of Issues
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`•
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`I will now summarize the issues that you must decide and for which I will provide
`instructions to guide your deliberations. You must decide the following four main issues, each of
`which must be decided separately:
`1. Whether TT has proven by a preponderance of the evidence that the eSpeed Futures
`View, AutoSpeed Basis, and ECCO Ladder View products, which I shall refer to as the "Accused
`Products," infringes claims of the '132 and '304 Patents. The Verdict Sheet lists each of the claims
`at issue, which I shall refer to as the "Asserted Claims."
`2. Whether TT has proven, by clear and convincing evidence, that the infringement was
`willful.
`3. The amount of damages, if any, that TT has proven by a preponderance of the evidence.
`4. Whether Defendants have proven by clear and convincing evidence that the correct
`priority date is June 9, 2000 instead of March 2, 2000.
`5. Whether Defendants have proven by clear and convincing. evidence that any Asserted
`Claim is invalid, either because of anticipation or obviousness .
`
`•
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`•
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`- 2-
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`Page 18 of 52
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`Filed 10/10/2007 Page 19 of 52
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`•
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`2.2.3 Burden of Proof
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`When I say a particular party must prove something by ';a preponderance of the evidence",
`this is what I mean: When you have considered all the evidence in the case, you must be persuaded
`that it is more likely than not true. When I say that a particular party must prove something by
`"clear and convincing evidence," this is what I mean: When you have considered all the evidence
`in the case, it produces in you an abiding conviction that the truth of a necessary fact is highly
`probable. Clear and convincing evidence is a higher burden than a preponderance of the evidence,
`but it does not require proof beyond a reasonable doubt.
`
`•
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`•
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`-3-
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`Page 19 of 52
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`Filed 10/10/2007 Page 20 of 52
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`Claim Construction
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`2.3
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`•
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`Before you decide the issues in this case, you will have to understand the patent "claims.''
`Patent claims are munbered paragraphs at the end of the patent. They are "word pictures" intended
`to define the boundaries of the invention described and illustrated in the patent.
`
`Only the claims of issued patents can be infringed. Neither the written description, which
`we have already discussed, nor the drawings of a patent can be infringed.
`
`I will now explain to you the meaning ofthe claims .
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`•
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`•
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`-4-
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`Page 20 of 52
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`Filed 10/10/2007 Page 21 of 52
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`Independent and Dependent Claims
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`2.3.1
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`•
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`A patent claim may be either an independent claim or a dependent claim. An independent
`claim does not refer to any other claim of the patent. An independent claim must be read
`separately from the other claims to determine the scope of the claim.
`
`A dependent claim refers to at least one other claim in the patent. A dependent claim
`includes each of the limitations of the other claim or claims to which it refers, as well as the
`additional limitations recited in the dependent claim itself. Therefore, to determine what a
`dependent claim covers, it is necessary to look at both the dependent claim and all other claims to
`which it refers.
`
`As an example, a patent may have a Claim 1 that is directed to a chair with 4 legs; there
`may then be a dependent Claim 2 that claims the four-legged chair of Claim 1, plus one additional
`leg. In this case, as an example, Claim 1 of the '304 Patent is an independent claim and recites
`several elements. Claim 2 of the '304 Patent is a dependent claim that refers to Claim 1 and
`includes an additional element or limitation. Claim 2 therefore must include each of the elements
`of Claim 1, as well as the additional elements identified in Claim 2 itself .
`
`•
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`•
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`Filed 1 0/10/2007 Page 22 of 52
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`•
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`2.3.3 Construction of tbe Claims
`
`It is my job as Judge to determine what the patent claims mean and to instruct you about that
`meaning. You must accept the meanings I give you and use them when you decide whether or not
`any claim is infringed, and whether or not any claim is invalid.
`
`With respect to the '304 Patent, I have detennined the following meanings for terms in the
`claims:
`
`•
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`•
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`•
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`"common statit price a:~:is" means "a line comprising price levels that do not change
`positions unless a manual re-centering command is received and where the line of
`prices corresponds to at least one bid value and one ask value."
`o Regarding the "line of prices," orientation of the axis is irrelevant. It can be
`horizontal, vertical or angled.
`o Regarding "common," "corresponding to," and "aligned," these are all
`synonyms for the phrase ''visually or graphically in relationship with."
`
`"dynamically displaying" means "updating the first (second) indicator in response to
`new market infonnation such that the first (second) indicator changes positions relative
`to the common static price axis when the market changes."
`"displaying the bid and ask display regions" means "a display of one or more bids
`and one or more asks."
`
`With respect to the '132 Patent, I have determined the following meanings for terms in the
`claims:
`
`•
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`•
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`•
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`•
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`•
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`''static display of prices" means "a display of prices comprising price levels that do
`not change positions m1less a manual re-centering command is received."
`"dynamic display" means "a display of a plurality of bids and asks that are updated in
`response to new market information such that the bids and asks change positions
`relative to the static display of prices when the market changes."
`"display of a plurality of bids and a plurality of asks" means ''a display of one or
`more bids and one or more asks. The display of a plurality of bids and a plurality of
`asks is not limited to a single window."
`
`The following claim terms apply to both patents:
`
`• "order entry region" means "an area comprising a plurality of locations where users
`may enter commands to send trade orders, and that each location corresponds to a price
`level along the common static price axis., This refers to "a location within the trading
`display where a user sends and not simply initiates an order."
`
`•
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`I have found that the term "order entry region' should be viewed from the perspective
`of the user .
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`-6-
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`Filed 1 0/10/2007 Page 23 of 52
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`•
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`•
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`"parameter" means uan element of a trade order, including, but not limited to,
`quantity, price, type of order and the identity of the commodity."
`":11ingle action of a user input device" means ''an action by a user within a short period
`of time that may comprise one or more clicks of a mouse button or other input device."
`
`•
`
`• TT' s patents were VvTitten from the perspective of the user. I have therefore detennined
`that this phrase refers to a single action by a user, not the action or actions the computer
`performs to execute the user's conunand.
`"trade order" means "a single, electronic message in executable fonn that includes at
`least all required parameters of a desired trade."
`''price level,_ means "a level on which a designated price or price representation
`resides.')
`"indicator" means ''something that indicates."
`
`•
`
`•
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`For the Asserted Claims, the words "the" and "said" when used in the claims of a patent
`always refer to an element previously described in that claim or in another claim from which the
`claim at issue depends.
`
`Returning to my example of the four-legged chair, independent claim 1 may claim a chair
`having four legs and a seat. Dependent claim 2 may then claim the chair of claim I wherein the
`seat is made of wood .
`
`You should give the rest of the words in the claims their ordinary meaning in the context of
`the patent specification and prosecution history.
`
`.. ----,
`•
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`- 7-
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`Case 1:04—cv—05312 Document 1062
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`Page 24 of 52
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`Case 1:04-cv-05312 Document 1062
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`Filed 10/10/2007 Page 25 of 52
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`2.4
`
`Patent Infringement GeneraJly
`
`I will now instruct you as to the rules you must follow when deciding whether IT has
`proven that Defendants infringed the Asserted Claims.
`
`•
`
`Patent law gives the owner of a patent the right to exclude others from importing, making,
`using, offering to sell, or selling the patented invention within the United States during the tenn of
`the patent. Any person or business entity that has engaged in any of those acts without the patent
`owner's pennission infringes the patent. Here IT alleges that Defendants directly or indirectly
`infringed the following claims: Claims 1, 2, 7, 14, 15, 20, 23, 24, 25, 27, 28, 40, 45, 47, 48, SO and
`52 of the '132 Patent and Claims 1, 11, 14, 15 and 26 of the '304 Patent.
`
`You have heard evidence about the Accused Products and IT's "MD Trader" product.
`However, in deciding the issue of infringement you are not to compare the Accused Products to
`MD Trader. Rather, you must compare the Accused Products to the Asserted Claims when making
`your decision regarding infringement.
`
`IT bears the burden of proving infringement by a ~reponderance of the evidence .
`
`•
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`•
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`- 9 -
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`Page 25 of 52
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`Case 1 :04-cv-05312 Document 1062
`
`Filed 10/10/2007 Page 26 of 52
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`Infringement
`
`2.4.1
`
`Infringement- Literal Infringement
`
`•
`
`To detennine literal infringement, you must compare the Accused Products with each
`Asserted Claim, using my instructions as to the meaning of the tenns in the Asserted Claims.
`
`An Asserted Claim is literally infringed only if an Accused Product includes each and
`every element or method step in that claim. If the Accused Product does not contain one or more
`elements or method steps recited in an Asserted Claim, the Accused Product does not literally
`infringe that claim. You must determine literal infringement with respect to each Asserted Claim
`individually.
`
`If a.n independent claim is not infringed, then any dependent claims that depend on that
`independent claim cannot be infringed, and you need not consider the dependent claims for
`purposes of infringement. On the Verdict Sheet, independent claims are listed in boldface type,
`and dependent claims in regular type .
`
`•
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`- 10-
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`Page 26 of 52
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`Case 1 :04-cv-05312 Document 1062
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`Filed 10/10/2007 Page 27 of 52
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`•
`
`2.4.2 Direct Infringement
`
`To decide whether eSpeed directly infringes an asserted claim ofthe 304 or-the 132 Patent,
`you must compare each Accused Product with each Asserted claim. In the '304 patent, claims 14,
`15, 40, 45, 47, 48, and 52 are product claims, and the remaining Asserted Claims of both patents
`are method claims. To directly infringe a patent claim, eSpeed and Ecco by itself must make, use,
`sell, or offer for sale a product containing each and every element of an Asserted product Claim or
`must practice each and every step of an Asserted method Claim.
`
`Direct infringement by eSpeed and Ecco themselves does not require proof of intent,
`because someone can directly infringe a patent without knowing that what they are doing is an
`infringement of the patent. The law is different for indirect infringement, and I will explain next
`the standard for indirect infringement.
`
`•
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`- 11 -
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`Page 27 of 52
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`Case 1 :04-cv-05312 Document 1062
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`Filed 10/10/2007 Page 28 of 52
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`Inducing Infringement
`
`•
`
`In order to induce infringement, there must first be an act of direct infringement by an
`entity or person other than the defendants, and proof that the defendants knowingly induced
`infringement with the intent to encourage the infringement. The defendants must have intended to
`cause the acts that constitute direct infringement and must have known or should have known that
`their actions would cause the direct infringement.
`
`Direct infringement by the entity or person other than the defendants does not require proof
`of intent, because someone can directly infringe a patent without knowing that what they are doing
`is an infringement of the patent. .
`
`•
`
`• .;··
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`- 12-
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`Page 28 of 52
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`Case 1 :04-cv-05312 Document 1062
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`Filed 10/10/2007 Page 29 of 52
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`Contributory Infringement
`
`•
`
`TT asserts that eSpeed has contributed to another's infringement. To show contributory
`infringement, TT has the burden to prove that it is more likely than not that there was contributory
`infringement.
`
`It is not necessary to show that eSpeed has directly infringed as long as you find that
`someone has directly infringed. If there is no direct infringement by anyone, TT has not
`contributed to the infringement of the patent. If you find someone has directly infringed the TT
`patents, then contributory infringement exists if:
`
`( 1) eSpeed sold or supplied;
`(2) a material component ofthe patented invention that is not a staple article of commerce
`capable of substantial noninfringing use;
`(3) with knowledge that the component was especially made or adapted for use in an
`infringing system or method.
`
`A "staple article of commerce capable of substantial noninfringing use" is something that
`has uses other than in the patented product or method, and those other uses are not occasional,
`farfetched, impractical, experimental, or hypothetical .
`
`•
`
`•
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`- 13-
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`Page 29 of 52
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`Case 1 :04-cv-05312 Document 1 062
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`Filed 10/10/2007 Page 30 of 52
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`•
`
`2.3.2 "Comprising" Claims
`
`The beginning portion, or preamble, of many of the patent claims use the word "comprising."
`"Comprising" means "including" or "containing.n A claim that uses the word "comprising" or
`"comprises" is not limited to products having on1y the claimed elements or methods having only the
`steps that are recited in the claim, but also covers products with extra features and methods that add
`additional steps.
`
`Thus there can be infringement or invalidity of a claim containing "comprising" language
`even if the product or method to which the claims are compared contains additional features or steps
`beyond those claimed in the patent, so long as each of the claimed elements is present.
`
`Returning to my example of the 4-legged chair, if a claim calls for ''A chair comprising 4
`legs,'' then a chair having five legs would fall within the scope of the claim. Additional features
`are not relevant in assessing whether there the claims using "comprising" language are fulfilled .
`
`•
`
`•
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`- 14 ~
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`Page 30 of 52
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`Case 1 :04-cv-05312 Document 1062
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`Filed 1 0/10/2007 Page 31 of 52
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`Validity
`
`Validity in General
`
`eSpeed contends that Asserted Claims are invalid for the following reasons:
`
`•
`
`3 .
`
`3.1
`
`The invention was anticipated by the prior art because one prior art reference
`1.
`contained all of the elements of an Asserted Claim, or
`
`The invention would have been obvious to one of ordinary skill in the art at the time
`2.
`the invention was made.
`
`Each claim must be considered separately. The patents are presumed to be valid. eSpeed
`bears the burden of proving invalidity. This means that eSpeed must first prove by clear and
`convincing evidence what constitutes prior art in this case. Then, eSpeed must prove by clear and
`convincing evidence whether any patent claim is invalid in view of the prior art. If you find that
`an independent claim is invalid, you must still consider the validity of each dependent claim
`separately. If you find that an independent claim is valid, then all claims depending from that
`claim are also valid.
`
`I will now instruct you in more detail about these invalidity issues. On the Verdict