Case 5:16-cv-00179-RWS Document 223 Filed 06/29/18 Page 1 of 47 PageID #: 12159
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`
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`MAXELL, LTD.,
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`v.
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`ZTE USA INC.,
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`Plaintiff,
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`Case No. 5:16-cv-00179-RWS
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`
`
`Defendant.
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`FINAL JURY INSTRUCTIONS
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`1.
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`Introduction
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`MEMBERS OF THE JURY:
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`It is my duty and responsibility to instruct you on the law you are to apply in
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`this case. The law contained in these instructions is the only law you may follow. It
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`is your duty to follow what I instruct you the law is, regardless of any opinion that
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`you might have as to what the law ought to be.
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`If I have given you the impression during the trial that I favor either party, you
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`must disregard that impression. If I have given you the impression during the trial
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`that I have an opinion about the facts of this case, you must disregard that impression.
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`You are the sole judges of the facts of this case. Other than my instructions to you
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`
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`
`
`MAXELL, LTD.,
`
`v.
`
`
`ZTE USA INC.,
`
`Plaintiff,
`
`Case No. 5:16-cv-00179-RWS
`
`
`
`Defendant.
`
`
`FINAL JURY INSTRUCTIONS
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`1.
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`Introduction
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`MEMBERS OF THE JURY:
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`It is my duty and responsibility to instruct you on the law you are to apply in
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`this case. The law contained in these instructions is the only law you may follow. It
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`is your duty to follow what I instruct you the law is, regardless of any opinion that
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`you might have as to what the law ought to be.
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`If I have given you the impression during the trial that I favor either party, you
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`must disregard that impression. If I have given you the impression during the trial
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`that I have an opinion about the facts of this case, you must disregard that impression.
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`You are the sole judges of the facts of this case. Other than my instructions to you
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`on the law, you should disregard anything I may have said or done during the trial
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`in arriving at your verdict.
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`You should consider all of the instructions about the law as a whole and regard
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`each instruction in light of the others, without isolating a particular statement or
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`paragraph.
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`The testimony of the witnesses and other exhibits introduced by the parties
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`constitute the evidence. The statements of counsel are not evidence; they are only
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`arguments. It is important for you to distinguish between the arguments of counsel
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`and the evidence on which those arguments rest. What the lawyers say or do is not
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`evidence. You may, however, consider their arguments in light of the evidence that
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`has been admitted and determine whether the evidence admitted in this trial supports
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`the arguments. You must determine the facts from all the testimony that you have
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`heard and the other evidence submitted. You are the judges of the facts, but in finding
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`those facts, you must apply the law as I instruct you.
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`You are required by law to decide the case in a fair, impartial, and unbiased
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`manner, based entirely on the law and on the evidence presented to you in the
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`courtroom. You may not be influenced by passion, prejudice, or sympathy you might
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`have for the plaintiff or the defendant in arriving at your verdict.
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`1.1 No Inference from Filing Suit
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`The fact that a plaintiff brought a lawsuit in this Court seeking damages
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`creates no inference that the plaintiff is entitled to a judgment. Anyone may make a
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`claim and file a lawsuit. The act of making a claim in a lawsuit, by itself, does not
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`in any way tend to establish that claim and is not evidence.
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`1.2 Direct and Circumstantial Evidence
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`Some of you may have heard the terms “direct evidence” and “circumstantial
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`evidence.” Direct evidence is simply evidence like the testimony of an eyewitness
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`which, if you believe it, directly proves a fact. Circumstantial evidence is simply a
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`chain of circumstances that indirectly proves a fact. If someone walked into the
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`courtroom wearing a raincoat covered with drops of water and carrying a wet
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`umbrella, that would be circumstantial evidence from which you could conclude that
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`it was raining.
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`It is your job to decide how much weight to give the direct and circumstantial
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`evidence. As a general rule, the law makes no distinction between the weights that
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`you should give to direct and circumstantial evidence, nor does it say that one is any
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`better evidence than the other, but simply requires that you find the facts from all the
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`evidence, both direct and circumstantial, and give it the weight you believe it
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`deserves.
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`1.3 Expert Witnesses
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`When knowledge of a technical subject matter may be helpful to the jury, a
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`person who has special training or experience in that technical field is permitted to
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`state his or her opinion on those technical matters. He or she is called an expert
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`witness. However, you are not required to accept that opinion. As with any other
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`witness, it is up to you to decide whether the witness's testimony is believable or not,
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`whether it is supported by the evidence, and whether to rely upon it. In deciding
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`whether to accept or rely upon the opinion of an expert witness, you may consider
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`any bias of the witness.
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`1.4 Deposition Testimony
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`Certain testimony in this case has been presented to you through a deposition.
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`A deposition is the sworn, recorded answers to questions asked of a witness in
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`advance of the trial. Under some circumstances, if a witness cannot be present to
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`testify from the witness stand, the witness’s testimony may be presented under oath
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`in the form of a deposition. Sometime before this trial, attorneys representing the
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`parties in this case questioned this witness under oath. A court reporter was present
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`and recorded the testimony. You should judge the credibility of and weigh the
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`importance of deposition testimony to the best of your ability just as if the witness
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`had testified in court in person.
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`This deposition testimony is entitled to the same consideration and is to be
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`judged by you as to the credibility and weight and otherwise considered by you
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`insofar as possible the same as if the witness had been present and had testified from
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`the witness stand in court.
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`2.
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`Summary of Contentions
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`To help you follow the evidence, I will now give you a summary of the
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`positions of the parties. The parties in this case are Maxell Ltd. and ZTE (USA) Inc.
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`The case involves seven United States Patents, which are referred to as “Asserted
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`Patents,” and certain claims of those patents, which are referred to as “Asserted
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`Claims.”
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`Maxell contends that ZTE USA infringes the following claims by making,
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`using, selling, offering for sale, and/or importing into the United States certain ZTE
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`products. Specifically, Maxell contends that ZTE USA:
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`a.
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`b.
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`c.
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`d.
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`e.
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`f.
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`literally infringes claim 1 of the ’193 Patent;
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`literally infringes claims 1–3 of the ’317 Patent;
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`literally infringes claim 5 of the ’493 Patent;
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`literally infringes claim 1 of the ’729 Patent;
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`literally infringes claims 1 and 8 of the ’491 Patent;
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`literally infringes claim 1 of the ’695 Patent; and
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`g.
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`infringes claims 1–2 of the ’794 Patent literally and under the doctrine
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`of equivalents.
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`Maxell also contends that ZTE USA has committed infringement willfully.
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`Maxell is seeking damages for the alleged infringement of ZTE USA.
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`ZTE USA contends that it does not infringe any of the Asserted Claims. ZTE
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`USA contends that it has not infringed any asserted claim of the Asserted Patents.
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`ZTE USA further contends that:
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`a. Claims 1–3 of the ’317 Patent are invalid as anticipated by prior art under
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`35 U.S.C. § 102;
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`b. Claims 1–3 of the ‘317 Patent are invalid for failing to claim patent-eligible
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`subject matter under 35 U.S.C. § 101;
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`c. Claim 1 of the ’193 Patent is invalid as obvious in view of prior art under
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`35 U.S.C. § 103; and
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`d. Claims 1–2 of the ’794 Patent are invalid for failing to claim patent-eligible
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`subject matter under 35 U.S.C. § 101.
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`ZTE contends that Maxell is not entitled to any damages award, under any
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`theory, including a reasonable royalty theory. ZTE USA contends that Maxell’s
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`claims for damages are barred in whole or in part for failure to mark licensed
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`products with the patent in compliance with 35 U.S.C. § 287. ZTE USA contends
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`that, if it is found to infringe any asserted claim, no such infringement has been
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`willful.
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`Your job is to decide whether ZTE USA has infringed the asserted claims, and
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`whether the asserted claims are invalid. If you decide that any asserted claim has
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`been infringed and is not invalid, you will then need to decide the amount of money
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`damages to be awarded to Maxell to compensate Maxell for the infringement, if any.
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`You will also need to make a finding as to whether the infringement was
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`willful. If you decide that any infringement was willful, that decision should not
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`affect any damages award you make. I will take willfulness into account later.
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`2.1 Representative Products
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`For purposes of this case, the parties agree that certain products are
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`representative of other products. That means that proof of infringement or non-
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`infringement of a representative product shall be treated as proof for the other
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`products that it represents. Specifically, for the purposes of infringement or non-
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`infringement, the following products are representative, and proof of infringement
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`or non-infringement about the following products is proof for the products they each
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`represent:
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`a. The ZMax 2 with pre-installed AT&T Navigator is representative of
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`products accused of infringing the ’317 Patent;
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`b. The ZMax 2 is representative of products accused of infringing the ’193
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`Patent and the ’794 Patent;
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`c. The ZMax 2 is representative of products accused of infringing the ’491
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`Patent, except for the Axon 7;
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`d. The Zmax 2 is representative of products accused of infringing the ’695
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`Patent, except the Axon 7;
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`e. The Max Duo LTE is representative of products accused of infringing the
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`’729 Patent, except for the Axon 7; and
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`f. The Max Duo LTE is representative of products accused of infringing the
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`’493 Patent, except for the Axon 7.
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`A complete list of accused products by patent is included as Appendix B to
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`these Jury Instructions.
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`3.
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`Burdens of Proof
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`Facts must be proved by a required standard of evidence known as the burden
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`of proof. You’ve heard about it, I’m sure, from television and probably in criminal
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`cases with reference to proof beyond a reasonable doubt. That does not apply in a
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`civil case like this. In a patent case like this one, there are two burdens of proof that
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`you will apply: The preponderance of the evidence standard and the clear and
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`convincing evidence standard.
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`Maxell must prove its claims of patent infringement, willfulness, marking and
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`damages by a preponderance of the evidence. When a party has the burden of proof
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`by a preponderance of the evidence, it means that you must be persuaded that what
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`the party seeks to prove is more likely so than not so. If you put the evidence for
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`and against the party who must prove the fact on opposite sides of the scale, the
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`preponderance of the evidence requires that the scale tip somewhat toward the party
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`who has the burden of proof.
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`Now, ZTE USA has the burden of proving invalidity of the patent claims by
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`clear and convincing evidence. That means evidence that produces in your mind a
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`firm belief or conviction as to the truth of the matter at issue. Although proof to a
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`certainty is not required, the clear and convincing standard requires a greater degree
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`of persuasion than is necessary for the preponderance of the evidence standard.
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`4.
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`Claims of the Patents-in-Suit
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`The claims of a patent are the numbered sentences at the end of the patent.
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`The claims describe the invention made by the inventor and describe what the patent
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`owner owns and what the patent owner may prevent others from doing. Claims may
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`describe products, methods and apparatus such as machines or chemical compounds,
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`or processes for making or using a product.
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`The claims are important because it is the words of the claims themselves that
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`define what a patent covers. The figures and text in the rest of the patent provide a
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`description and/or examples of the invention and provide a context for the claims,
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`but it is the claims that define the breadth of the patent’s coverage. Each claim is
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`effectively treated as if it were a separate patent, and each claim may cover more or
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`less than another claim. Therefore, what a patent covers depends upon what each of
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`its claims cover.
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`You will first need to understand what each claim covers in order to decide
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`whether or not there is infringement of the claim and to decide whether or not the
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`claim is invalid. The law says that it’s my role to define the terms of the claims, and
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`it’s your role to apply these definitions to the issues that you are asked to decide in
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`this case.
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`Therefore, as I explained to you at the start of the case, I have determined the
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`meaning of certain claim terms at issue in this case and I have provided you those
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`definitions in Appendix A. You must accept the definitions of these words in the
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`claims as being correct. It is your job to take these definitions and apply them to the
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`issues that you are deciding, including infringement and validity. The claim
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`language I have not interpreted for you is to be given its ordinary and accustomed
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`meaning as understood by one of ordinary skill in the art.
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`4.1 Level of Ordinary Skill
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`In deciding what the level of ordinary skill is in the field of each claimed
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`invention, you should consider all the evidence introduced at trial, including but not
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`limited to: (1) the levels of education and experience of the inventor and other
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`persons actively working in the field; (2) the types of problems encountered in the
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`field; (3) prior art solutions to those problems; (4) rapidity with which innovations
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`are made; and (5) the sophistication of the technology.
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`4.2 How a Patent Claim Defines What It Covers
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`I will now explain how a patent claim defines what it covers. A claim sets
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`forth, in words, a set of requirements. Each claim sets forth its requirements in a
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`single sentence. If a device or system satisfies each of these requirements, then it is
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`covered by the claim. In patent law, the requirements of a claim are often referred to
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`as “claim elements” or “claim limitations.”
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`When a thing (such as a feature, product, process, or system) meets all of the
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`requirements of a claim, the claim is said to “cover” that thing, and that thing is said
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`to “fall” within the scope of that claim. In other words, a claim covers a feature,
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`product, process, or system where each of the claim elements or limitations is present
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`in that feature, product, process, or system. Conversely, if the feature, product,
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`process, or system meets only some, but not all, of the claim elements or limitations,
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`then that feature, product, process, or system is not covered by the claim.
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`By understanding the meaning of the words in a claim and by understanding
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`that the words in a claim set forth the requirements that a product must meet in order
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`to be covered by that claim, you will be able to understand the scope of coverage for
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`each claim. Once you understand what each claim covers, then you are prepared to
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`decide the issues that you will be asked to decide, such as infringement and
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`invalidity.
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`4.3
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`Independent and Dependent Claims
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`This case involves two types of patent claims: independent claims and
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`dependent claims.
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`An “independent claim” sets forth all of the requirements that must be met in
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`order to be covered by that claim. Thus, it is not necessary to look at any other claim
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`to determine what an independent claim covers. In this case, for example, claim 1 of
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`the ’317 Patent is an independent claim.
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`Other claims in the case are “dependent claims.” A dependent claim refers to
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`another claim and includes all the requirements or parts of the claim to which it
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`refers. In this case, for example, claim 2 of the ’317 Patent depends from claim 1. In
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`this way the claim “depends” on another claim. The dependent claim then adds its
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`own, additional requirements. To determine what a dependent claim covers, it is
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`necessary to look at both the dependent claim and any other claims to which it refers.
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`A feature, product or method that meets all of the requirements of both the dependent
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`claim and the claims to which it refers is covered by that dependent claim.
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`4.4 Claim Interpretation
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`I will now explain to you the meaning of some of the words of the claims in
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`this case. In doing so, I will explain some of the requirements of the claims. As I
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`have previously instructed you, you must accept my definition of these words in the
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`claims as correct. Those definitions are provided for you in Appendix A . For any
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`words in the claim for which I have not provided you with a definition, you should
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`apply their common meaning. You should not take my definition of the language of
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`the claims as an indication that I have a view regarding how you should decide the
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`issues that you are being asked to decide, such as infringement and validity. These
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`issues are yours to decide.
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`For some constructions I refer to the structure required by the term as being
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`described in a portion of the patent identified by column and line number, and/or in
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`a Figure of the patent. Those are what we call means plus function terms. I will
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`explain those now.
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`4.5
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`“Means-plus-function” Claims
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`Asserted Claim 1 of the ’491 Patent and Asserted Claim 1 of the ‘794 Patent
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`have limitations phrased as a “means for” performing a function. This “means for”
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`phrase has a special meaning in patent law. It is called a “means-plus-function”
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`requirement. These limitations do not cover all of the structures that could perform
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`the functions set forth in the claim. Instead, each such limitation covers a structure
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`or a set of structures that performs that function and that is either identical or
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`“equivalent” to the structure(s) described in the patent for performing that function.
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`The issue of whether two structures are identical or equivalent is for you to decide.
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`I will explain to you later how to determine whether two structures or two sets of
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`structures are “equivalent” to one another
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`For purposes of this case, I have identified for you the structures described in
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`the ’491 Patent and ‘794 Patent that perform the various functions recited in the
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`asserted claims. These are listed in Appendix A along with the other definitions for
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`the different claim terms. When I read you my definitions for certain claim terms a
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`few moments ago, I identified the structures described in the ’491 Patent for
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`performing the relevant functions. You should apply my definition of the function
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`and the structures described in the ’491 Patent for performing it as you would apply
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`my definition of any other claim term.
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`5.
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`Infringement
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`Any person or business entity who makes, uses, sells, offers to sell, or imports
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`into the United States a product or practices a method that is covered by at least one
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`claim of a patent infringes the patent. A patent owner has the right to stop others
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`from making, using, selling and offering for sale, and importing into the United
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`States the invention covered by the patent claims during the life of the patent.
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`5.1 Direct Infringement by “Literal Infringement”
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`There are two types of “direct infringement”: (1) “literal infringement” and
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`(2) “infringement under the doctrine of equivalents.”
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`In order to prove direct infringement by literal infringement, Maxell must
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`prove that ZTE USA made, used, sold, offered for sale within, or imported into the
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`United States an Accused Product that meets all of the requirements of an Asserted
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`Claim and did so without the permission of Maxell during the time the patent-in-suit
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`was in force. You must compare the Accused Product with each and every one of
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`the requirements of a claim to determine whether all of the requirements of that claim
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`are met.
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`You must determine, separately for each asserted claim, whether or not there
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`is infringement. There is one exception to this rule. If you find that a claim on which
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`other claims depend is not infringed, there cannot be infringement of any dependent
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`claim that refers directly or indirectly to that independent claim. On the other hand,
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`if you find that an independent claim has been infringed, you must still decide,
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`separately, whether the accused product meets additional requirements of any claims
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`that depend from the independent claim, thus, whether those claims have also been
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`infringed. A dependent claim includes all the requirements of any of the claims to
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`which it refers plus additional requirements of its own.
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`5.2 Direct Infringement by “Literal Infringement” of 35 U.S.C. Section 112,
`Paragraph 6 Claim Requirements
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`As I have previously explained, Asserted Claim 1 of the ’491 Patent and
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`Asserted Claim 1 of the ‘794 Patent include requirements that are in means-plus-
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`function form. A product or a process infringes the claim if: (1) it has a structure
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`that performs the identical function recited in the claim, and (2) that structure is
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`either identical or “equivalent” to one or more of the described structures that I
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`defined in Appendix A as performing the function. If the Accused Product does not
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`perform the specific function recited in the claim, the “means-plus-function”
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`requirement is not met, and the Accused Product does not literally infringe the claim.
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`Alternatively, even if the Accused Product has a structure that performs the function
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`recited in the claim but the structure is not either identical or “equivalent” to one or
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`more of the structures that I defined in Appendix A, the Accused Product does not
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`literally infringe the asserted claim. In order to prove direct infringement by literal
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`infringement of a means-plus-function limitation, Maxell must prove the above
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`requirements are met.
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`5.3 Direct Infringement Under the Doctrine of Equivalents
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`If ZTE USA makes, uses, sells, offers to sell within, or imports into the United
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`States an Accused Product that does not meet all of the requirements of a claim and
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`thus does not literally infringe that claim, there can still be direct infringement if that
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`Accused Product satisfies the claim “under the doctrine of equivalents.” Under the
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`doctrine of equivalents, an Accused Product infringes a claim if the Accused Product
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`contains elements or performs steps corresponding to each and every requirement of
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`the claim that is equivalent to, even though not literally met by, the Accused Product.
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`You may find that an element or step is equivalent to a requirement of a claim that
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`is not met literally if a person having ordinary skill in the field of technology of the
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`patent would have considered the differences between them to be “insubstantial” or
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`if you find that the structure or action: (1) performs substantially the same function
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`and (2) works in substantially the same way (3) to achieve substantially the same
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`result as the requirement of the claim. In order for the structure or action to be
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`considered interchangeable, the structure or action must have been known at the time
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`of the alleged infringement to a person having ordinary skill in the field of
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`technology of the patent.
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`You may also consider whether, at the time of the alleged infringement, a
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`person having ordinary skill in the field of technology of the patent would have
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`known of the interchangeability of the alternative feature and the unmet requirement
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`of the claim. Interchangeability at the present time is not sufficient proof of
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`infringement under the doctrine of equivalents. In order for the structures to be
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`considered interchangeable, the interchangeability of the two structures must have
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`been known to persons of ordinary skill in the field of technology at the time the
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`infringement began
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`5.4 Preambles
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`The beginning portion, or preamble of a claim is the portion of the claim prior
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`to the word “comprises” or “comprising.” The Court’s Constructions in Appendix
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`A include information about whether certain “preambles” are limiting. Where the
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`Case 5:16-cv-00179-RWS Document 223 Filed 06/29/18 Page 18 of 47 PageID #: 12176
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`Court has made this determination, you must follow the Court’s Construction.
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`Where
`
`the Court has not
`
`indicated whether a preamble
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`is
`
`limiting,
`
`then "comprising" and "comprises" mean "including but not limited to, "or
`
`"containing but not limited to." Thus, if you decide that an accused feature includes
`
`all the requirements in that claim, the claim is infringed. This is true even if the
`
`accused instrumentality 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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`5.5 Willful Infringement
`
`
`
`Maxell contends that ZTE USA willfully infringed the patents-in-suit.
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`Willfulness requires you to determine whether Maxell proved that it is more likely
`
`than not that the infringement by Maxell was especially worthy of punishment. You
`
`may not determine that the infringement was willful just because ZTE USA knew of
`
`a patent and infringed it. Instead, willful infringement is reserved for only the most
`
`egregious behavior, such as where the infringement is malicious, deliberate,
`
`consciously wrongful, or done in bad faith. You must base your decision on ZTE
`
`USA’s knowledge at the time of infringement.
`
`
`
`To determine whether ZTE USA acted willfully for any of the patents-in-suit,
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`consider all facts. These may include, but are not limited, to:
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`Page 18 of 47
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`
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`Case 5:16-cv-00179-RWS Document 223 Filed 06/29/18 Page 19 of 47 PageID #: 12177
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`
`
`
`
`a. Whether or not ZTE USA acted consistently with the standards of
`behavior for its industry;
`
`b. Whether or not ZTE USA intentionally copied a product of Maxell that
`is covered by a patent-in-suit;
`
`c. Whether or not ZTE USA reasonably believed it did not infringe;
`
`d. Whether or not ZTE USA made a good-faith effort to avoid infringing,
`for example, whether ZTE USA attempted to design around the patent;
`
`e. Whether or not ZTE USA tried to cover up its infringement; and
`
`f. Whether ZTE USA’s reliance on an opinion of counsel as a defense to
`Maxell’s allegations of willful infringement was reasonable.
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`Your determination of willfulness should incorporate the totality of the
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`circumstances based on the evidence presented during this trial.
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`6.
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`Invalidity
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`I will now instruct you on the rules you must follow in deciding whether or
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`not ZTE USA has proven that the Asserted Claims are invalid. Patent invalidity is a
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`defense to patent infringement. Even though the Patent Office examiner has allowed
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`the claims of a patent, you have the ultimate responsibility for deciding whether the
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`claims of the patent are valid. For a patent claim to be valid, the invention claimed
`
`in the patent must be new, useful, and not obvious. A patent claim cannot take away
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`from people their right to use what was known or what would have been obvious
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`when the invention was made.
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`Page 19 of 47
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`
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`Case 5:16-cv-00179-RWS Document 223 Filed 06/29/18 Page 20 of 47 PageID #: 12178
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`That which precedes the priority date of the patent invalidates, and that which
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`comes after infringes. Claims are given the same meaning for purposes of validity
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`and infringement.
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`An issued patent claim is accorded a presumption of validity based on the
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`presumption that the experts at the United States Patent and Trademark Office acted
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`correctly in issuing each claim of a patent. Each claim of a patent is presumed valid
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`independently of the validity of the other claims. The presumption of validity remains
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`intact and the burden of proof remains on the party challenging validity throughout
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`this litigation. In other words, the burden never shifts to the patent owner to prove that
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`its patent claims are valid.
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`I will now explain to you the rules that govern invalidity in detail. In making
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`your determination as to invalidity, you should consider each claim and each ground
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`for invalidity separately.
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`6.1 Prior Art
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`That which came before a patent is generally referred to as the “prior art.”
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`Prior art may include items that were publicly known or that have been used or
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`offered for sale, or references, such as publications or patents, that disclose the
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`claimed invention or elements of the claimed invention. To be prior art, the item or
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`reference must have been made, known, used, published, or patented either before
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`the priority date of the patent
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`Page 20 of 47
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`
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`Case 5:16-cv-00179-RWS Document 223 Filed 06/29/18 Page 21 of 47 PageID #: 12179
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`6.2 Anticipation
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`In order for someone to be entitled to a patent, the invention must actually be
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`“new.” In general, inventions are new when the identical product has not been made,
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`used, or disclosed before. Anticipation must be determined on a claim-by-claim
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`basis.
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`ZTE (USA) Inc. contends that certain claims of the Asserted Patents are
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`invalid because the claimed inventions are anticipated by prior art.
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`Here is a list of ways that ZTE (USA) Inc. can show that a patent claim was
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`not new or that the patentee lost the right to patent the claims:
`
`1. An invention is not new if it was known to or used by others in the United
`States before the priority date of invention. An invention is known when
`the information about it was reasonably accessible to the public on that date.
`
`2. An invention is not new if it was already patented or described in a printed
`publication, anywhere in the world before the priority date of the patent.
`A description is a “printed publication” only if it was publicly accessible.
`
`3. The inventor has lost its rights if the claimed invention was already patented
`or described in a printed publication, anywhere in the world by Maxell Ltd.
`or anyone else, more than a year before the priority date of the application
`for the Asserted Patent. An invention was patented by another if the other
`patent describes the same invention claimed by Maxell Ltd. to a person
`having ordinary skill in the technology.
`
`4. An invention is not new if it was described in a published patent application
`filed by another in the United States or under the PCT system and designated
`the United States, and was published in English before the priority date of
`invention.
`
`5. An invention is not new if the claimed invention was described in a patent
`granted on an application for patent by another filed in the United States or
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`Page 21 of 47
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`
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`Case 5:16-cv-00179-RWS Document 223 Filed 06/29/18 Page 22 of 47 PageID #: 12180
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`under the PCT system and designated the United States, and was published
`in English and the application was filed before the date of reduction to
`practice or the filing date of the application for the Asserted Patent.
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`
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`To understand how the prior art system operates, you may rely on multiple
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`pieces of evidence that describe the same prior art system for the purpose of finding
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`anticipation. In other words, if you find that a single prior art system existed that
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`meets every element of the claim, then that is enough t
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