Case 4:09-cv-01827 Document 530 Filed in TXSD on 08/14/12 Page 1 of 30
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`
`§
`WESTERNGECO L.L.C.,
`§
`
`§
` Plaintiff,
`§
`
`§ CIVIL ACTION NO. 4:09-cv-1827
`v.
`§
`
`ION GEOPHYSICAL CORPORATION, § Judge Keith P. Ellison
`
`§
` Defendant.
`§
`
`
`JURY INSTRUCTIONS
`
`INSTRUCTION NO. 1
`
`GENERAL INSTRUCTIONS
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`MEMBERS OF THE JURY:
`
`
`You have heard the evidence in this case. I will now instruct you on the law that you
`must apply. It is your duty to follow the law as I give it to you. On the other hand, you the jury
`are the judges of the facts. Do not consider any statement that I have made in the course of trial
`or make in these instructions as an indication that I have any opinion about the facts of this case.
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`Answer each question from the facts as you find them. Do not decide who you think
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`should win and then answer the questions accordingly. Your answers and your verdict must be
`unanimous.
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`When instructed, you will answer questions based upon the preponderance of the
`evidence. By this is meant the greater weight and degree of credible evidence before you. In
`other words, a preponderance of the evidence just means the amount of evidence that persuades
`you that a claim is more likely so than not so. In determining whether any fact has been proved
`by a preponderance of the evidence in the case, you may, unless otherwise instructed, consider
`the testimony of all witnesses, regardless of who may have called them, and all exhibits received
`in evidence, regardless of who may have produced them.
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`You will answer some questions based upon clear and convincing evidence. Clear and
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`convincing evidence is evidence that produces in your mind a firm belief or conviction as to the
`matter at issue. This involves a greater degree of persuasion than is necessary to meet the
`preponderance of the evidence standard; however, proof to an absolute certainty is not required.
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`1
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`ION 1024
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`Case 4:09-cv-01827 Document 530 Filed in TXSD on 08/14/12 Page 2 of 30
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`You must decide whether the testimony of each of the witnesses 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.
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`In evaluating the testimony of any witness, you may consider, among other things:
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`the ability and opportunity the witness had to see, hear, or know the things that the
`witness testified about;
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`the witness’s memory;
` any interest, bias, or prejudice the witness may have;
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`the witness’s intelligence;
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`the manner of the witness while testifying; and
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`the reasonableness of the witness’s testimony in light of all the evidence in the case.
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`In determining the weight to give to the testimony of a witness, you should ask yourself
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`whether there was evidence tending to prove that the witness testified falsely concerning some
`important fact, or whether there was evidence that at some other time the witness said or did
`something, or failed to say or do something, that was different from the testimony the witness
`gave before you during the trial.
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`You should keep in mind, of course, that a simple mistake by a witness does not
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`necessarily mean that the witness was not telling the truth as he or she remembers it, because
`people may forget some things or remember other things inaccurately. So, if a witness has made
`a misstatement, you need to consider whether that misstatement was an intentional falsehood or
`simply an innocent lapse of memory; and the significance of that may depend on whether it has
`to do with an important fact or with only an unimportant detail.
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`While you should consider only the evidence in this case, you are permitted to draw such
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`reasonable inferences from the testimony and exhibits 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.
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`The testimony of a single witness may be sufficient to prove any fact, even if a greater
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`number of witnesses may have testified to the contrary, if after considering all the other evidence
`you believe that single witness.
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`There are two types of evidence that you may consider in properly finding the truth as to
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`the facts in the case. One is direct evidence—such as testimony of an eyewitness. The other is
`indirect or circumstantial evidence—the proof of a chain of circumstances that indicates the
`existence or nonexistence of certain other facts. As a general rule, the law makes no distinction
`between direct and circumstantial evidence but simply requires that you find the facts from a
`preponderance of all the evidence, both direct and circumstantial.
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`When knowledge of technical subject matter may be helpful to the jury, a person who has
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`special training or experience in that technical field—called an expert witness—is permitted to
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`Case 4:09-cv-01827 Document 530 Filed in TXSD on 08/14/12 Page 3 of 30
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`state his or her opinion on those technical matters. However, you are not required to accept that
`opinion. As with any other witness, it is up to you to decide whether to rely upon it.
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`In deciding whether to accept or rely upon the opinion of an expert witness, you may
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`consider any bias of the witness, including any bias you may infer from evidence that the expert
`witness has been or will be paid for reviewing the case and testifying or from evidence that he
`testifies regularly as an expert witness and his income from such testimony represents a
`significant portion of his income.
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`Any notes that you have taken during this trial are only aids to memory. If your memory
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`should differ from your notes, then you should rely on your memory and not on the notes. The
`notes are not evidence. A juror who has not taken notes should rely on his or her 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.
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`3
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`Case 4:09-cv-01827 Document 530 Filed in TXSD on 08/14/12 Page 4 of 30
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`INSTRUCTION NO. 2
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`SUMMARY OF CONTENTIONS
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`
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`As you have observed, the parties in this case are Plaintiff WesternGeco L.L.C. and
`Defendant ION Geophysical Corporation. Throughout these instructions, I will refer to
`WesternGeco L.L.C. as WesternGeco and ION Geophysical Corporation as ION.
`
`
`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:
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`(1) Whether WesternGeco has proven by a preponderance of the evidence that ION has
`infringed the following claims:
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`
`
`
`
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`Claims 18,1 19, and 23 of the ‘520 Patent
`Claim 15 of the ‘967 Patent
`Claim 15 of the ‘607 Patent
`Claim 14 of the ‘038 Patent.
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`(2) Whether ION has proven by clear and convincing evidence that the following are
`invalid:
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`
`
`
`
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`Claims 18, 19, and 23 of the ‘520 Patent
`Claim 15 of the ‘967 Patent
`Claim 15 of the ‘607 Patent
`Claim 14 of the ‘038 Patent.
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`(3) For any claims that are infringed and are not invalid, you will then need to make a
`finding as to whether the infringement was willful.
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`(4) Finally, if you decide that any claim has been infringed and is not invalid, you will
`also need to decide the money damages to be awarded to WesternGeco to compensate it
`for the infringement that WesternGeco has proved by a preponderance of the evidence. If
`you decide that any infringement was willful, that decision should not affect any damages
`award you make. I will take willfulness into account later.
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`
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`1 Note that, though I have already found that ION infringes Claim 18 of the ‘520 Patent under 35 U.S.C. § 271(f)(1),
`you still must decide whether Claim 18 is infringed under 35 U.S.C. § 271(f)(2).
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`4
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`Case 4:09-cv-01827 Document 530 Filed in TXSD on 08/14/12 Page 5 of 30
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`INSTRUCTION NO. 3
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`ROLE OF THE CLAIMS OF A PATENT
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`Before you can decide many of the issues in this case, you will need to understand the
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`role of patent “claims.” The patent claims are the numbered sentences at the end of each patent.
`The claims are important because it is the words of the claims that define what a patent covers.
`The figures and text in the rest of the patent provide a description and/or examples of the
`invention and provide a context for the claims, but it is the claims that define the breadth of the
`patent’s coverage. That is, the claims are intended to define, in words, the boundaries of the
`invention. Only the claims of the patent can be infringed. Neither the written description nor the
`drawings of a patent can be infringed. Each of the claims must be considered individually. You
`must use the same claim meaning for both your decision on infringement and your decision on
`invalidity. Each claim is effectively treated as if it was a separate patent, and each claim may
`cover more or less than another claim. Therefore, what a patent covers depends, in turn, on what
`each of its claims covers.
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`You will first need to understand what each claim covers in order to decide whether or
`not there is infringement of the claim and to decide whether or not the claim is invalid. The law
`says that it is my role to define the terms of the claims, and it is your role to apply my definitions
`to the issues that you are asked to decide in this case. Therefore, as I explained to you at the start
`of the case, I have determined the meaning of the claims, and I will provide to you my
`definitions of certain claim terms. You must accept my definitions of these words in the claims
`as being correct. It is your job to take these definitions and apply them to the issues that you are
`deciding, including the issues of infringement and validity.
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`5
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`Case 4:09-cv-01827 Document 530 Filed in TXSD on 08/14/12 Page 6 of 30
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`INSTRUCTION NO. 4
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`HOW A CLAIM DEFINES WHAT IT COVERS
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`I will now explain how a claim defines what it covers. A claim sets forth, in words, a set
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`of requirements. Each claim sets forth its requirements in a single sentence. If a system satisfies
`each of these requirements, then it is covered by the claim. The beginning or preamble of the
`patent claims at issue use the word “comprising.” Comprising means “including or containing
`but not limited to.” That is, if you decide that a system includes all the requirements in a claim,
`that claim is infringed. This is true even if the accused product includes components in addition
`to those requirements. For example, a claim to a table comprising a tabletop, legs, and glue
`would be infringed by a table that includes a tabletop, legs, and glue, even if the table also
`includes wheels on the table’s legs.
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`There can be several claims in a patent. Each claim may be narrower or broader than
`another claim by setting forth more or fewer requirements. The coverage of a patent is assessed
`claim-by-claim. In patent law, the requirements of a claim are often referred to as “claim
`elements” or “claim limitations.” When a thing (such as a system) meets all of the requirements
`of a claim, the claim is said to “cover” that thing, and that thing is said to “fall” within the scope
`of that claim. In other words, a claim covers a system where each of the claim elements or
`limitations is present in that system.
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`6
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`Case 4:09-cv-01827 Document 530 Filed in TXSD on 08/14/12 Page 7 of 30
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`INSTRUCTION NO. 5
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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” sets forth all of the requirements that must be met in order to be covered
`by that claim. Thus, it is not necessary to look at any other claim to determine what an
`independent claim covers. In this case, the following claims are independent claims:
`
`
`Claim 18 of the ‘520 Patent
`Claim 15 of the ‘967 Patent
`Claim 15 of the ‘607 Patent
`Claim 14 of the ‘038 Patent.
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`
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`The remainder of the asserted claims in the patents are “dependent claims.” Claims 19
`and 23 of the ‘520 patent are dependent on Claim 18 of the ‘520 patent. A dependent claim does
`not itself recite all of the requirements of the claim but refers to another claim for some of its
`requirements. In this way, the claim “depends” on another claim. A dependent claim
`incorporates all of the requirements of the claims to which it refers. The dependent claim then
`adds its own additional requirements. To determine what a dependent claim covers, it is
`necessary to look at both the dependent claim and any other claims to which it refers. A system
`that meets all of the requirements of both the dependent claim and the claims to which it refers is
`covered by that dependent claim.
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`Case 4:09-cv-01827 Document 530 Filed in TXSD on 08/14/12 Page 8 of 30
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`INSTRUCTION NO. 6
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`CLAIM CONSTRUCTION
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`I will now explain to you the meaning of some of the words of the claims in this case. In
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`doing so, I will explain some of the requirements of the claims. As I have previously instructed
`you, you must accept my definition of these words in the claims as correct. You were provided
`with these definitions in your juror notebooks. For any words in the claim for which I have not
`provided you with a definition, you should apply their ordinary meaning. You should not take
`my definition of the language of the claims as an indication that I have a view regarding how you
`should decide the issues that you are being asked to decide, such as infringement and invalidity.
`These issues are yours to decide.
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`CLAIM TERM
`“streamer positioning device(s)”; “the
`positioning device”
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`COURT’S CONSTRUCTION
`a device that controls the position of a streamer
`as it is towed (e.g., a “bird”)
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`“global control system”
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`“local control system”
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`a control system that sends commands to other
`in a system (e.g.,
`devices
`local control
`systems)
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`a control system located on or near the
`streamer position devices (e.g., birds)
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`“location information”
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`information regarding location
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`“a control system configured to use a control
`mode selected from a feather angle mode, a
`turn control mode, a streamer separation mode,
`and two or more of these modes”
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`“feather angle mode”
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`“turn control mode”
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`“streamer separation mode”
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`a control system configured to use one or more
`control modes selected from a feather angle
`mode, a
`turn control mode, a streamer
`separation mode, and two or more of these
`modes
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`a control mode that attempts to set and
`maintain each streamer in a straight line offset
`from the towing direction by a certain feather
`angle
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`mode wherein streamer positioning device(s)
`generate a force in the opposite direction of a
`turn and
`then directing each
`streamer
`positioning device to the position defined in
`the feather angle mode
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`a control mode that attempts to set and
`maintain
`the
`spacing between
`adjacent
`streamers
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`Case 4:09-cv-01827 Document 530 Filed in TXSD on 08/14/12 Page 9 of 30
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`CLAIM TERM
`“at least some”
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`COURT’S CONSTRUCTION
`more than one
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`“active streamer positioning device (ASPD)”
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`“master controller”
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`“the master controller”
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`“positioning commands”
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`a device capable of controlling the vertical and
`horizontal position of the seismic streamer
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`a controller that sends commands to other
`devices in a system
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`a master controller
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`signals or instructions to control positioning
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`“maintaining a specified array geometry”
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`maintaining a specified array shape
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`“environmental factors”; “environmental
`influences”; “environmental measurements”
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`environmental factors or influences such as
`wind speed and direction;
`tidal currents
`velocity
`and
`direction;
`ocean
`bottom
`depth/angle;
`local
`current velocity
`and
`direction; wave height and direction; ocean
`bottom depth/angle; and water temperature and
`salinity
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`Case 4:09-cv-01827 Document 530 Filed in TXSD on 08/14/12 Page 10 of 30
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`INSTRUCTION NO. 7
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`PERSON OF ORDINARY SKILL IN THE ART
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`From time to time, you will be asked to consider the person of ordinary skill in art. The
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`person of ordinary skill is presumed to know all prior art that you have determined to be
`reasonably relevant. The person of ordinary skill is also a person of ordinary creativity that can
`use common sense to solve problems.
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`When determining the level of ordinary skill in the art, you should consider all the
`evidence submitted by the parties, including evidence of:
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`(1)
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`The levels of education and experience of the inventor and other persons actively
`working in the field;
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`(2)
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`(3)
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`(4)
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`(5)
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`The types of problems encountered in the field;
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`Prior art solutions to those problems;
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`Rapidity with which innovations are made; and
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`The sophistication of the technology.
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`Case 4:09-cv-01827 Document 530 Filed in TXSD on 08/14/12 Page 11 of 30
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`INSTRUCTION NO. 8
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`INFRINGEMENT GENERALLY
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`I will now instruct you how to decide whether or not ION has infringed the asserted
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`patents. Infringement is assessed on a patent-by-patent, claim-by-claim basis. Therefore, there
`may be infringement as to one claim but no infringement as to another. To prove that an accused
`system is a patented invention, WesternGeco must prove that the accused system literally
`infringes the patent claim or infringes the patent claim under the doctrine of equivalents. In this
`case, there are two possible ways ION may be liable for infringement. These two ways are: (1)
`infringement through supplying or causing to be supplied components in or from the United
`States for combination abroad under 35 U.S.C. § 271(f)(1); and (2) infringement through
`supplying or causing to be supplied one component in or from the United States for combination
`abroad under 35 U.S.C. § 271(f)(2).
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`In order to prove infringement, WesternGeco must prove that the requirements for one or
`more of these types of infringement are met by a preponderance of the evidence, i.e., that it is
`more likely than not that all of the requirements of one or more of each of these types of
`infringement have been proved. In deciding the question of infringement, you may not compare
`ION’s products and services to WesternGeco’s products and services. Instead, you must
`compare the accused system to the claims at issue.
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`I will now explain each of these types of infringement in more detail.
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`Case 4:09-cv-01827 Document 530 Filed in TXSD on 08/14/12 Page 12 of 30
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`INSTRUCTION NO. 9
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`LITERAL INFRINGEMENT
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`To determine whether a system literally infringes a system/apparatus claim, you must
`compare the accused system with each system/apparatus claim that WesternGeco asserts is
`infringed. A patent claim for a system or apparatus is literally infringed only if the accused
`system includes each and every element in that patent claim. If the system does not contain one
`or more elements recited in a claim, the system does not literally infringe that claim.
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`WesternGeco asserts that the following claims are literally infringed:
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`Claims 18, 19, and 23 of the ‘520 Patent
`Claim 15 of the ‘967 Patent
`Claim 15 of the ‘607 Patent
`Claim 14 of the ‘038 Patent.
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`Case 4:09-cv-01827 Document 530 Filed in TXSD on 08/14/12 Page 13 of 30
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`INSTRUCTION NO. 10
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`INFRINGEMENT UNDER THE DOCTRINE OF EQUIVALENTS
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`If a system does not literally meet all of the requirements of a claim and thus does not
`literally infringe that claim, that system may nonetheless be the patented invention and infringe if
`that system satisfies the claim under the “doctrine of equivalents.”
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`Under the doctrine of equivalents, a system infringes a claim if the accused system
`performs steps or contains elements corresponding to each and every requirement of the claim
`that is equivalent to, even though not literally met by, the accused system. You may find that an
`element or step is equivalent to a requirement of a claim that is not met literally if a person
`having ordinary skill in the field of technology of the patent would have considered the
`differences between them to be “insubstantial” or would have found that the structure: (1)
`performs substantially the same function (2) in substantially the same way (3) to achieve
`substantially the same result as the requirement of the claim. In order for the structure to be
`considered interchangeable, the structure must have been known at the time of the alleged
`infringement to a person having ordinary skill in the field of technology of the patent.
`Interchangeability at the present time is not sufficient.
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`In order to prove infringement by “equivalents,” WesternGeco must prove the
`equivalency of the structure to a claim element by a preponderance of the evidence.
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`WesternGeco asserts that the following claims are infringed under the doctrine of
`equivalents if they are not literally infringed:
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`Claims 18, 19, and 23 of the ‘520 Patent
`Claim 15 of the ‘967 Patent
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`Case 4:09-cv-01827 Document 530 Filed in TXSD on 08/14/12 Page 14 of 30
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`INSTRUCTION NO. 11
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`INFRINGEMENT THROUGH THE SUPPLY OF COMPONENTS IN OR FROM THE
`UNITED STATES FOR COMBINATION ABROAD UNDER 35 U.S.C. § 271(f)(1)
`
`
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`WesternGeco alleges that ION infringed the following claims by supplying or causing to
`be supplied all or a substantial portion of the components of the patented system from the United
`States and actively inducing the assembly of those components into a system that would infringe
`the claims if they had been assembled in the United States:
`
`Claims 19 and 23 of the ‘520 Patent
`Claim 15 of the ‘967 Patent
`Claim 15 of the ‘607 Patent
`Claim 14 of the ‘038 Patent.
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` 
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`In order to prevail on its infringement claims under 35 U.S.C. § 271(f)(1), WesternGeco
`must prove by a preponderance of the evidence that:
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`(1) ION supplied or caused to be supplied from the United States a substantial portion of
`the components of the claimed invention;
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`(2) ION intended that the components be combined outside the United States; and
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`(3) The combination of those components would infringe the claim if such combination
`occurred in the United States.
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`You must accept my finding on infringement as it relates to Claim 18 of the ‘520 Patent
`under 35 U.S.C. § 271(f)(1). Specifically, I have already determined that ION has supplied or
`caused to be supplied from the United States a substantial portion of the components—which I
`found to be the DigiFIN and the Lateral Controller—of the patented invention of Claim 18 of the
`‘520 Patent. I also have already found that ION intended those components to be combined
`outside of the United States in a manner that would infringe the patent if the combining had been
`done in the United States.
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`In evaluating whether ION infringes the other asserted claims, you must accept my
`finding that ION intended the DigiFIN and the Lateral Controller to be combined outside of the
`United States.
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`You must determine infringement under 35 U.S.C. § 271(f)(1) on a claim-by-claim basis.
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`14
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`Case 4:09-cv-01827 Document 530 Filed in TXSD on 08/14/12 Page 15 of 30
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`INSTRUCTION NO. 12
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`INFRINGEMENT THROUGH THE SUPPLY OF ONE COMPONENT IN OR FROM
`UNITED STATES FOR COMBINATION ABROAD UNDER 35 U.S.C. § 271(f)(2)
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`WesternGeco alleges that ION infringed the following claims by supplying, or causing to
`be supplied, a component of the patented system from the United States, where the component
`was especially made or especially adapted for use in the invention and not a staple article or
`commodity of commerce suitable for substantial noninfringing use, knowing that such
`component is so made or adapted and intending that such component will be combined outside
`of the United States in a manner that would infringe the patent if such combination occurred
`within the United States:
`
` 
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`Claims 18, 19, and 23 of the ‘520 Patent
`Claim 15 of the ‘967 Patent
`Claim 15 of the ‘607 Patent
`Claim 14 of the ‘038 Patent.
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`
`
`
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`In order to prevail on its infringement claims under 35 U.S.C. § 271(f)(2), WesternGeco
`must prove by a preponderance of the evidence that:
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`(1) ION supplied or caused to be supplied from the United States a component of the
`claimed invention;
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`(2) The component is not a staple article or commodity of commerce suitable for
`substantial non-infringing use;
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`(3) The component is especially made or especially adapted for use in the claimed
`invention;
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`(4) ION knew that the component is especially made or especially adapted for use in the
`claimed invention; and
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`(5) ION knew that the intended combination is patented and that the combination would
`be infringing if it occurred in the United States.
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`You must determine infringement under 35 U.S.C. § 271(f)(2) on a claim-by-claim basis.
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`Case 4:09-cv-01827 Document 530 Filed in TXSD on 08/14/12 Page 16 of 30
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`INSTRUCTION NO. 13
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`INVALIDITY—BURDEN OF PROOF
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`I will now instruct you on the rules you must follow in deciding whether or not ION has
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`proven that the following claims are invalid:
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`
`
`
`
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`Claims 18, 19, and 23 of the ‘520 Patent
`Claim 15 of the ‘967 Patent
`Claim 15 of the ‘607 Patent
`Claim 14 of the ‘038 Patent.
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`Patents are presumed valid. To prove that any claim of a patent is invalid, ION must
`persuade you by clear and convincing evidence, i.e. you must be left with a clear conviction that
`the claim is invalid.
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`Case 4:09-cv-01827 Document 530 Filed in TXSD on 08/14/12 Page 17 of 30
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`INSTRUCTION NO. 14
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`ANTICIPATION
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`
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`In order for someone to be entitled to a patent, the invention must actually be “new.” In
`general, inventions are new when the identical system has not been made, used, or disclosed
`before.
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`In this case, ION contends that the following claims are anticipated and thus invalid:
`
`Claim 18 of the ‘520 Patent
`Claim 15 of the ‘607 Patent
`Claim 14 of the ‘038 Patent.
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`ION must convince you of this by clear and convincing evidence that the claim(s) is/are
`invalid. You must consider anticipation on a claim-by-claim basis.
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`In considering whether the claimed invention was anticipated, you should consider the
`following prior art:
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`As to the ‘520 Patent:
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` U.S. Patent No. 5,790,472 (referred to as the “Workman Patent”)
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`As to the ‘607 Patent:
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` U.S. Patent No. 5,790,472 (referred to as the “Workman Patent”)
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`As to the ‘038 Patent:
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`
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`International Application WO 00/20895
`Application”).
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`(referred
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`to as
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`the “‘895
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`The parties agree that the foregoing patents and publications are prior art.
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`For a particular piece of prior art to anticipate a patent claim, it must expressly or
`inherently disclose each element of the claimed invention to a person of ordinary skill in the art.
`The disclosure must be complete enough to enable one of ordinary skill in the art to practice the
`invention without undue experimentation. In determining whether the prior art is enabling for the
`‘520 Patent and the ‘607 Patent, you should take into account what would have been within the
`knowledge of a person of ordinary skill in the art on October 1, 1998. In determining whether the
`prior art is enabling for the ‘038 Patent, you should take into account what would have been
`within the knowledge of a person of ordinary skill in the art on June 15, 2001. You may
`consider evidence that sheds light on the knowledge such a person would have had on those
`dates, respectively.
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`Case 4:09-cv-01827 Document 530 Filed in TXSD on 08/14/12 Page 18 of 30
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`INSTRUCTION NO. 15
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`OBVIOUSNESS
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`
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`Even though an invention may not have been identically disclosed or described before it
`was made by an inventor, in order to be patentable, the invention must also not have been
`obvious to a person of ordinary skill in the field of technology of the patent at the time the
`invention was made.
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`In this case, ION contends that the following claims were obvious and thus invalid:
`
`Claim 15 of the ‘967 Patent
`Claim 15 of the ‘607 Patent
`Claim 14 of the ‘038 Patent.
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`ION may establish that a patent claim is invalid as obvious by showing, by clear and
`convincing evidence, that the claimed invention would have been obvious to persons having
`ordinary skill in the art at the time the invention was made in the field of the invention. You
`must consider obviousness on a claim-by-claim basis.
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` 
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`In determining whether a claimed invention is obvious, you must consider the level of
`ordinary skill in the field of the invention that someone would have had at the time the claimed
`invention was made, the scope and content of the prior art, and any differences between the prior
`art and the claimed invention. Unlike anticipation, which allows consideration of only one item
`of prior art, obviousness may be shown by considering more than one item of prior art.
`
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`Keep in mind that the existence of each and every element of the claimed invention in the
`prior art does not necessarily prove obviousness. Most, if not all, inventions rely on building
`blocks of prior art. In considering whether a claimed invention is obvious, you may but are not
`required to find obviousness if you find that at the time of the claimed invention there was a
`reason that would have prompted a person having ordinary skill in the field of invention to
`combine the known elements in a way the claimed invention does, taking into account such
`factors as:
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`(1) Whether the claimed invention was merely the predictable result of using prior art
`elements according to their known function(s);
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`(2) Whether the claimed invention provides an obvious solution to a known problem
`in the relevant field;
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`(3) Whether the prior art teaches or suggests the desirability of combining elements
`claimed in the invention;
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`(4) Whether the prior art teaches away from combining elements in the claimed
`invention;
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`(5) Whether it would have been obvious to try the combinations of elements, such as
`when there is a design need or market pressure to solve a problem and there are a
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`Case 4:09-cv-01827 Document 530 Filed in TXSD on 08/14/12 Page 19 of 30
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`finite number of identified, predictable solutions; and
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`(6) Whether the change resulted more from design incentives or other market forces.
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`In determining whether the claimed invention was obvious, you must consider each claim
`separately. You must be careful not to determine obviousness using hindsight; many true
`inventions can seem obvious after the fact. You should put yourself in the position of a person of
`ordinary skill in the field of the invention at the time the claimed invention was made, and you
`should not consider what is known today or what is learned from the teaching of the patent.
`
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`In making these assessments, you should take into account any objective evidence
`(sometimes called “secondary considerations”) that may have existed at the time of the invention
`and afterwards that may shed light on the obviousness or not of the claimed invention, such as:
`
`
`(1) Whether the invention was commercially successful as a result of the merits of the
`claimed invention (rather than the result of design needs or market-pressure advertising
`or similar activities);
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`(2) Whether the invention satisfied a long-felt need;
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`(3) Whether others had tried and failed to make the invention;
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`(4) Whether others invented the invention at roughly the same time;
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`(5) Whether others copied the invention;
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`(6) Whether there were changes or related technologies or market needs
`contemporaneous with the invention;
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`(7) Whether the invention achieved unexpected results;
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`(8) Whether others in the field praised the invention;
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`(9) Whet