Case 5:19-cv-00036-RWS Document 559-2 Filed 11/03/20 Page 1 of 44 PageID #: 29711
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`Exhibit B
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`Jury Instructions
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`Case 5:19-cv-00036-RWS Document 559-2 Filed 11/03/20 Page 2 of 44 PageID #: 29712
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`
`Plaintiff,
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`Defendants.
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`Case No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`PROPOSED JURY INSTRUCTIONS
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`1.
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`Introduction1
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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 this case.
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`The law contained in these instructions is the only law you may follow. It is your duty to follow
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`what I instruct you the law is, regardless of any opinion that you might have as to what the law
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`ought to be.
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`If I have given you the impression during the trial that I favor either party, you must
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`disregard that impression. If I have given you the impression during the trial that I have an
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`opinion about the facts of this case, you must disregard that impression. You are the sole judges
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`of the facts of this case. Other than my instructions to you on the law, you should disregard
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`anything I may have said or done during the trial in arriving at your verdict.
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`You should consider all of the instructions about the law as a whole and regard each
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`instruction in light of the others, without isolating a particular statement or paragraph.
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`1 Authority: Section 3.1, Fifth Circuit Pattern Jury Instructions (Civil Cases) (rev. 6/2020) (verbatim).
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`The testimony of the witnesses and other exhibits introduced by the parties constitute the
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`evidence. The statements of counsel are not evidence; they are only arguments. It is important
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`for you to distinguish between the arguments of counsel and the evidence on which those
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`arguments rest. What the lawyers say or do is not evidence. You may, however, consider their
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`arguments in light of the evidence that has been admitted and determine whether the evidence
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`admitted in this trial supports the arguments. You must determine the facts from all the testimony
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`that you have heard and the other evidence submitted. You are the judges of the facts, but in
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`finding 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 manner,
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`based entirely on the law and on the evidence presented to you in the courtroom. You may not be
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`influenced by passion, prejudice, or sympathy you might have for the plaintiff or the defendant
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`in arriving at your verdict.
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`1.1
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`Considering Witness Testimony2
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`You alone are to determine the questions of credibility or truthfulness of the witnesses. In
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`weighing the testimony of the witnesses, you may consider the witness’s manner and demeanor,
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`any feelings or interest in the case, or any prejudice or bias about the case, that he or she may
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`have, and the consistency or inconsistency of his or her testimony considered in the light of the
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`circumstances. Has the witness been contradicted by other credible evidence? Has he or she
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`made statements at other times and places contrary to those made here? You must give the
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`testimony of each witness the credibility that you think it deserves.
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`2 Section 3.4, Fifth Circuit Pattern Jury Instructions (Civil Cases) (rev. 6/2020) (verbatim); Proposed by Apple in
`Virnetx Inc. v. Apple Inc., Case No. 6:12-CV-855-RWS, Joint Submission of Jury Materials, Docket No. 855, Ex. B
`at 1-6 (E.D. Tex. Jul. 9, 2020).
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`2
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`Even though a witness may be a party to the action and therefore interested in its
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`outcome, the testimony may be accepted if it is not contradicted by direct evidence or by any
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`inference that may be drawn from the evidence, if you believe the testimony.
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`You are not to decide this case by counting the number of witnesses who have testified
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`on the opposing sides. Witness testimony is weighed; witnesses are not counted. The test is not
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`the relative number of witnesses, but the relative convincing force of the evidence. The
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`testimony of a single witness is sufficient to prove any fact, even if a greater number of witnesses
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`testified to the contrary, if after considering all of the other evidence, you believe that witness.
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`1.2
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`No Inference from Filing Suit3
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`The fact that a plaintiff brought a lawsuit and is in court seeking damages creates no
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`inference that the plaintiff is entitled to a judgment. Anyone may make a claim and file a lawsuit.
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`The act of making a claim in a lawsuit, by itself, does not in any way tend to establish that claim
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`and is not evidence.
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`1.3
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`Expert Witnesses4
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`When knowledge of a technical subject matter may be helpful to the jury, a person who
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`has special training or experience in that technical field is permitted to state his or her opinion on
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`those technical matters. [Maxell Proposal: He or she is called an expert witness.] [Apple
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`Proposal: delete]5 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, whether it
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`3Authority: Section 3.6, Fifth Circuit Pattern Jury Instructions (Civil Cases) (rev. 6/2020) (“person” replaced with
`“plaintiff”).
`4 Maxell Authority: Final Jury Instructions, Maxell, Ltd. v. ZTE (USA) Inc. Case No. 5:16-cv-00179-RWS, D.I. 223
`(E.D. Tex., June 29, 2018).
`5 Apple Authority: Section 3.5, Fifth Circuit Pattern Jury Instructions (Civil Cases) (rev. 6/2020) (verbatim);
`Proposed by Apple in Virnetx Inc. v. Apple Inc., Case No. 6:12-CV-855-RWS, Joint Submission of Jury Materials,
`Docket No. 883, Ex. B at 1-6 (E.D. Tex. Jul. 9, 2020). .
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`3
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`is supported by the evidence, and whether to rely upon it. In deciding whether to accept or rely
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`upon the opinion of an expert witness, you may consider any bias of the witness.
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`1.4
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`Deposition Testimony6
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`Certain testimony has been presented to you through a deposition. A deposition is the
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`sworn, recorded answers to questions a witness was asked in advance of the trial. Under some
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`circumstances, if a witness cannot be present to testify from the witness stand, that witness’s
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`testimony may be presented, under oath, in the form of a deposition. Sometime before this trial,
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`attorneys representing the parties in this case questioned this witness under oath. A court reporter
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`was present and recorded the testimony. The questions and answers have been read and/or shown
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`to you during this trial. This deposition testimony is entitled to the same consideration and is to
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`be judged by you as to credibility and weighed and otherwise considered by you in the same way
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`as if the witness had been present and had testified from the witness stand in court.
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`2.
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`Summary of Contentions
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`Maxell Proposal:
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`To help you follow the evidence, I will now give you a summary of the positions of the
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`parties. The parties in this case are Maxell, Ltd. and Apple Inc. The case involves ten United
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`States Patents, which are referred to as “Asserted Patents,” and certain claims of those patents,
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`which are referred to as “Asserted Claims.”
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`Maxell contends that Apple infringes the following claims by making, using, selling,
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`offering for sale, and/or importing into the United States certain Apple products. Specifically,
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`Maxell contends that Apple:
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`6 Authority: Section 2.13, Fifth Circuit Pattern Jury Instructions (Civil Cases) (rev. 6/2020); Proposed by Apple in
`Virnetx Inc. v. Apple Inc., Case No. 6:12-CV-855-RWS, Joint Submission of Jury Materials, Docket No. 883, Ex. B
`at 1-4 (E.D. Tex. Jul. 9, 2020). .
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`4
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`a.
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`Infringes claims 1 and 17 of the ’317 Patent, literally and under the doctrine of
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`equivalents;
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`b.
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`Infringes claim 3 of the ’999 Patent, literally and under the doctrine of
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`equivalents;
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`Infringes claims 3 and 13 of the ’498 Patent, literally and under the doctrine of
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`equivalents;
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`Literally infringes claim 5 of the ’493 Patent;
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`Infringes claim 6 of the ’493 Patent, literally and under the doctrine of
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`equivalents;
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`Literally infringes claims 1, 2, and 4 of the ’438 Patent;
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`Infringes claims 1 and 6 of the ’193 Patent, literally and under the doctrine of
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`equivalents;
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`Literally infringes claim 4 of the ’991 Patent;
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`Infringes claims 12 and 15 of the ’306 Patent, literally and under the doctrine of
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`equivalents;
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`Infringes claims 1 and 14 of the ’794 Patent, literally and under the doctrine of
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`c.
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`d.
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`e.
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`f.
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`g.
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`h.
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`i.
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`j.
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`equivalents;
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`k.
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`Literally infringes claims 7, 16, and 17 of the ’586 Patent.
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`Maxell also contends that Apple has committed infringement willfully.7
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`Maxell is seeking damages for the alleged infringement of Apple.
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`In response to Maxell’s contentions, Apple contends that it does not infringe any of the
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`Asserted Claims of the Asserted Patents. Apple also contends that, if it is found to infringe any
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`7 Apple objects to all references to willful infringement in these instructions and to the inclusion of willful
`infringement as an issue for trial.
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`Asserted Claim, no such infringement has been willful. Apple also contends that the Asserted
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`Claims of the Asserted Patents are invalid. Apple also contends Maxell is not entitled to damages
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`for any infringement.
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`Your job is to decide whether Apple has infringed the Asserted Claims, and whether any
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`of the Asserted Claims are invalid. If you decide that any Asserted Claim has been infringed and
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`is not invalid, you will then need to decide the amount of money damages to be awarded to
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`Maxell to compensate it for the infringement.8
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`You will also need to make a finding as to whether the infringement was willful. If you
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`decide that any infringement was willful, that decision should not affect any damages award you
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`make. I will take willfulness into account later.9
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`Apple Proposal:10
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`I will first give you a summary of each side’s contentions in this case. I will then tell you
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`what each side must prove to win on these issues.
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`Maxell seeks damages from Apple for allegedly infringing certain claims of ten Maxell
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`patents. I will refer to them as the asserted patents. Maxell contends that Apple has made, used,
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`sold, or offered for sale in the United States certain iPhones, iPads, Apple Watches, and iPod
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`Touches that infringe at least one of the following asserted patent claims:
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` Claims 1 and 17 of the ’317 Patent;
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` Claim 3 of the ’999 Patent;
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` Claims 3 and 13 of the ’498 Patent;
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` Claims 5 and 6 of the ’493 Patent;
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`8 Authority: Section B.1, The Federal Circuit Bar Association Model Patent Jury Instructions (rev. 2020).
`9 Id.
`10 Authority: Sections A.2, B.1, The Federal Circuit Bar Association Model Patent Jury Instructions (rev. 2020)
`(modified to replace “any” with “what, if any,”).
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` Claims 1, 2, and 4 of the ’438 Patent;
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` Claims 1 and 6 of the ’193 Patent;
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` Claim 4 of the ’991 Patent;
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` Claims 12 and 15 of the ’306 Patent;
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` Claims 1 and 14 of the ’794 Patent; and
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` Claims 7, 16, and 17 of the ’586 Patent.
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`In response to Maxell’s infringement contentions, Apple contends that Apple did not
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`make, use, sell, or offer for sale products that infringe any asserted claim of Maxell’s patents.
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`Apple also contends that the asserted claims are invalid. Because Apple contends that none of
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`the features infringe, Apple further contends that Maxell is not entitled to damages.
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`Your job is to decide whether Apple has infringed the asserted claims of the asserted
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`patents and whether any of the asserted claims of the asserted patents are invalid. If you decide
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`that any claim of the asserted patents has been infringed and is not invalid, you will then need to
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`decide what, if any, money damages to be awarded to Maxell to compensate it for the
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`infringement.
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`3.
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`Burdens of Proof11
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`Facts must be proved by a required standard of evidence known as the burden of proof.
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`[Apple Proposal: The burden of proof in this case is on Maxell for some issues, and it is on
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`Apple for other issues.]12 [Maxell Proposal: You’ve heard about it, I’m sure, from television and
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`probably in criminal cases with reference to proof beyond a reasonable doubt. That does not
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`apply in a civil case like this. In a patent case like this one, there] [Apple proposal: There] are
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`11 Maxell Authority: Final Jury Instructions, Maxell, Ltd. v. ZTE (USA) Inc. Case No. 5:16-cv-00179-RWS, D.I.
`223 (E.D. Tex., June 29, 2018).
`12 Federal Circuit Bar Association Model Patent Jury Instructions (May 2020) at A.5, §§ 3.1, 4.1 (modified).
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`two burdens of proof that you will apply: The preponderance of the evidence standard and the
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`clear and convincing evidence standard.13
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`Maxell has the burden of proving patent infringement, [Apple proposal: actual notice]
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`[Maxell proposal: willfulness], and damages by a preponderance of the evidence. A
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`preponderance of the evidence means evidence that persuades you that a claim is more likely
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`true than not true. Sometimes this is talked about as being the greater weight and degree of
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`credible testimony.
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`Apple has the burden of proving patent invalidity by clear and convincing evidence.
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`Clear and convincing evidence means evidence that produces in your mind a firm belief or
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`conviction that the truth of the party’s factual contentions is highly probable. Although proof to
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`an absolute certainty is not required, the clear and convincing evidence standard requires a
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`greater degree of persuasion than is necessary for the preponderance of the evidence standard. If
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`the proof establishes in your mind a firm belief [Maxell proposal (Apple opposes): or conviction]
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`in the truth of the matter, then the clear and convincing evidence standard has been met.
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`These standards are different from what you may have learned about in criminal
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`proceedings where a fact is proven beyond a reasonable doubt. On a scale of the various
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`standards of proof, as you move from the preponderance of the evidence, where the proof need
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`only be sufficient to tip the scales in favor of the party proving the fact, to at the other end
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`beyond a reasonable doubt, where the fact must be proven to a very high degree of certainty, you
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`may think of clear and convincing evidence as being between those two standards.
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`In determining whether any fact has been proved by a preponderance of the evidence or
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`by clear and convincing evidence, you may, unless otherwise instructed, consider the
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`13 Federal Circuit Bar Association Model Patent Jury Instructions (May 2020) at A.5, §§ 3.1, 4.1 (modified).
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`stipulations, the testimony of all the witnesses, regardless of who called them, and all the exhibits
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`received into evidence during the trial, regardless of who may have produced them.
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`4.
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`Claims of the Patents-in-Suit
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`Maxell Proposal:14
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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 claims of a patent are the numbered sentences at the end of the
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`patent. 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 describe
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`products, methods and apparatus such as machines or chemical compounds, or processes for
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`making or using a product.
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`The claims are important because it is the words of the claims themselves that define
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`what a patent covers. The figures and text in the rest of the patent provide a description and/or
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`examples of the invention and provide a context for the claims, but it is the claims that define the
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`breadth of the patent’s coverage. Each claim is effectively treated as if it were a separate patent,
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`and each claim may cover more or less than another claim. Therefore, what a patent covers
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`depends upon what each of its claims cover.
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`Apple Proposal:15
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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.
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`The claims are important because it is the words of the claims that define what a patent covers.
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`14 Authority: Final Jury Instructions, Maxell, Ltd. v. ZTE (USA) Inc. Case No. 5:16-cv-00179-RWS, D.I. 223 (E.D.
`Tex., June 29, 2018); Section B.2(2.1), The Federal Circuit Bar Association Model Patent Jury Instructions (rev.
`2020).
`15 Apple Authority: Final Jury Instructions, Virnetx Inc. v. Apple Inc., Case No. 6:12-CV-855-RWS, Trial Tr. Feb 2,
`2016 at 149-150 (E.D. Tex. Feb 1, 2016); Federal Circuit Bar Association Model Patent Jury Instructions (May
`2020) § B.2 (2.1).
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`9
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`The figures and text in the rest of the patent provide a description and/or examples of the
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`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 less than
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`another claim. Therefore, what a patent covers depends in turn on what each of its claims covers.
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`Maxell and Apple Proposal:
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`You will first need to understand what each claim covers in order to decide whether or
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`not there is infringement of the claim and to decide whether or not the claim is invalid. The law
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`says that it’s my role to define the terms of the claims, and it’s your role to apply these
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`definitions to the issues that you are asked to decide in this case.
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`Therefore, as I explained to you at the start of the case, I have determined the meaning of
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`certain claim terms at issue in this case and I have provided you those definitions in Appendix A.
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`You must accept the definitions of these words in the claims as being correct. It is your job to
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`take these definitions and apply them to the issues that you are deciding, including infringement
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`and invalidity.
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`For any words in a claim for which you have not been provided with a definition, you
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`should apply the ordinary meaning of those terms in the field of the patent, as understood by one
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`of ordinary skill in the art. You should not take my definition of the language of the claims as an
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`indication that I have a view regarding how you should decide the issues that you are being
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`asked to decide, such as infringement and invalidity.
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`4.1 How a Patent Claim Defines What It Covers16
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`16 Authority: Final Jury Instructions, Maxell, Ltd. v. ZTE (USA) Inc. Case No. 5:16-cv-00179-RWS, D.I. 223 (E.D.
`Tex., June 29, 2018); Section B.2(2.1), The Federal Circuit Bar Association Model Patent Jury Instructions (rev.
`2020); Proposed by Apple in Virnetx Inc. v. Apple Inc., Case No. 6:12-CV-855-RWS, Joint Submission of Jury
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`10
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`I will now explain how a patent claim defines what it covers. A claim sets forth, in words,
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`a set of requirements. Each claim sets forth its requirements in a single sentence. If a device or
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`system satisfies each of these requirements, then it is covered by the claim. In patent law, the
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`requirements of a claim are often referred to 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 to “fall”
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`within the scope of that claim. In other words, a claim covers a feature, product, process, or
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`system where each of the claim elements or limitations is present in that feature, product,
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`process, or system. Conversely, if the feature, product, process, or system meets only some, but
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`not all, of the claim elements or limitations, then that feature, product, process, or system is not
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`covered by the claim.
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`By understanding the meaning of the words in a claim and by understanding that the
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`words in a claim set forth the requirements that a product must meet in order to be covered by
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`that claim, you will be able to understand the scope of coverage for each claim. Once you
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`understand what each claim covers, then you are prepared to decide the issues that you will be
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`asked to decide, such as infringement and invalidity.
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`4.2
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`Independent and Dependent Claims17
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`This case involves two types of patent claims: independent claims and dependent claims.
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`Materials, Docket No. 883, Ex. B at 4-1 (E.D. Tex. Jul. 9, 2020). ; Final Jury Instructions, Virnetx Inc. v. Apple Inc.,
`Case No. 6:12-CV-855-RWS, Trial Tr. Feb 2, 2016 at 150-51 (E.D. Tex. Feb 1, 2016).
`17 Authority: Section B.2(2.1a), The Federal Circuit Bar Association Model Patent Jury Instructions (rev. 2020);
`Final Jury Instructions, Virnetx Inc. v. Apple Inc., Case No. 6:12-CV-855-RWS, Trial Tr. Feb 2, 2016 at 151-52
`(E.D. Tex. Feb 1, 2016).
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`11
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`An “independent claim” sets forth all of the requirements that must be met in order to be
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`covered by that claim. In this case, for example, claim 1 of the ’317 Patent is an independent
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`claim.
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`Other claims in the case are “dependent claims.” A dependent claim does not itself recite
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`all of the requirements of the claim but refers to another claim for some of its requirements. In
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`this case, for example, claim 17 of the ’317 Patent depends from claim 15. In this way the claim
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`“depends” on another claim. The dependent claim incorporates all of the requirements of the
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`claims to which it refers. The dependent claim then adds its own additional requirements. To
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`determine what a dependent claim covers, it is necessary to look at both the dependent claim and
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`any other claims to which it refers. A feature or product that meets all of the requirements of
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`both the dependent claim and the claims to which it refers is covered by that dependent claim.
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`4.3
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`Claim Interpretation18
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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
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`you, you must accept my definition of these words in the claims as correct. Those definitions are
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`provided for you in Appendix A. For any words in the claim for which I have not provided you
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`with a definition, you should apply their common meaning. You should not take my definition of
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`the language of the claims as an indication that I have a view regarding how you should decide
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`the issues that you are being asked to decide, such as infringement and validity. These issues are
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`yours to decide.
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`18 Authority: Final Jury Instructions, Maxell, Ltd. v. ZTE (USA) Inc. Case No. 5:16-cv-00179-RWS, D.I. 223 (E.D.
`Tex., June 29, 2018).
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`For some constructions I refer to the structure required by the term as being described in
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`a portion of the patent identified by column and line number, or in a Figure of the patent. Those
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`are what we call means plus function terms. I will explain those now.
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`4.4
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`“Functional Claiming” Claims19
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`Asserted Claims 1 and 17 of the ’317 Patent, asserted claim 3 of the ’999 Patent, asserted
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`claims 3 and 13 of the ’498 Patent, and asserted claims 1 and 14 of the ’794 Patent have
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`limitations expressed using functional language. For example, these claims have phrases such as
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`“device for” performing a function or “function device.” Such functional language phrases have
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`a special meaning in patent law. It is called a “means-plus-function” requirement. These
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`limitations do not cover all of the structures that could perform the functions set forth in the
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`claim. Instead, each such limitation covers a structure or a set of structures that performs that
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`function and that is either identical or “equivalent” to the structure(s) described in the patent for
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`performing that function. The issue of whether two structures are identical or equivalent is for
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`you to decide. 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 the ’317,
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`’999, ’498, and ’794 patents that perform the various functions recited in the asserted claims.
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`These are listed in Appendix A along with the other definitions for the different claim terms.
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`When I read you my definitions for certain claim terms a few moments ago, I identified these
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`structures. You should apply my definitions of the functions and the structures described in the in
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`19 Authority: Claim Construction Memorandum and Order, Maxell, Ltd. v. Apple Inc. Case No. 5:19-cv-00036-
`RWS, D.I. 235 (E.D. Tex., March 18, 2020; Section B.2(2.3a), The Federal Circuit Bar Association Model Patent
`Jury Instructions (rev. 2020).
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`13
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`Case 5:19-cv-00036-RWS Document 559-2 Filed 11/03/20 Page 15 of 44 PageID #: 29725
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`the ’317, ’999, ’498, and ’794 patents for performing them as you would apply my definition of
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`any other claim term.
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`5.
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`Infringement20
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`Any person or business entity who makes, uses, sells, offers to sell, or imports into the
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`United States a product that is covered by at least one claim of a patent infringes the patent. A
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`patent owner has the right to stop others from making, using, selling and offering for sale, and
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`importing into the United States the invention covered by the patent claims during the life of the
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`patent.
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`5.1
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`Direct Infringement by “Literal Infringement”21
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`There are two types of “direct infringement”: (1) “literal infringement” and (2)
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`“infringement under the doctrine of equivalents.”
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`In order to prove direct infringement by literal infringement, Maxell must prove that
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`Apple made, used, sold, offered for sale within, or imported into the United States an accused
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`product that meets all of the requirements of an asserted claim and did so without the permission
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`of Maxell during the time the asserted patent was in force. You must compare the accused
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`product with each and every one of the requirements of a claim to determine whether all of the
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`requirements of that claim are met.
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`You must determine, separately for each asserted claim, whether or not there is
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`infringement. There is one exception to this rule. If you find that a claim on which other claims
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`depend is not infringed, there cannot be infringement of any dependent claim that refers directly
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`20 Authority: Final Jury Instructions, Maxell, Ltd. v. ZTE (USA) Inc. Case No. 5:16-cv-00179-RWS, D.I. 223 (E.D.
`Tex., June 29, 2018).
`21 Authority: Final Jury Instructions, Maxell, Ltd. v. ZTE (USA) Inc. Case No. 5:16-cv-00179-RWS, D.I. 223 (E.D.
`Tex., June 29, 2018); Section B.3(3.1a), The Federal Circuit Bar Association Model Patent Jury Instructions (rev.
`2020).
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`14
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`Case 5:19-cv-00036-RWS Document 559-2 Filed 11/03/20 Page 16 of 44 PageID #: 29726
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`or indirectly to that independent claim. On the other hand, if you find that an independent claim
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`has been infringed, you must still decide, separately, whether the accused products meet the
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`additional requirements of any claims that depend from the independent claim to determine
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`whether those dependent claims have also been infringed. A dependent claim includes all the
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`requirements of any of the claims to which it refers plus additional requirements of its own.
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`5.2
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`
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`Direct Infringement by “Literal Infringement” of 35 U.S.C. Section 112, Paragraph
`6 Claim Requirements22
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`As I have previously explained, asserted claims 1 and 17 of the ’317 Patent, asserted
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`claim 3 of the ’999 Patent, asserted claims 3 and 13 of the ’498 Patent, and asserted claims 1 and
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`14 of the ’794 Patent include requirements that are in means-plus-function form. A product
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`infringes the claim if: (1) it has a structure that performs the identical function recited in the
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`claim, and (2) that structure is either identical or “equivalent” to one or more of the described
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`structures that I defined in Appendix A as performing the function. If the accused product does
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`not perform the specific function recited in the claim, the “means-plus-function” requirement is
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`not met, and the accused product does not literally infringe the claim. Alternatively, even if the
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`accused product has a structure that performs the function recited in the claim but the structure is
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`neither identical or “equivalent” to one or more of the structures that I defined in Appendix A,
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`the accused product does not literally infringe the asserted claim.
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`Apple Proposal (Maxell Opposes):23
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`A structure or a set of structures may be found to be “equivalent” to one or more of the
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`described structures that I defined in Appendix A as performing the function if a person having
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`22 Authority: Final Jury Instructions, Maxell, Ltd. v. ZTE (USA) Inc. Case No. 5:16-cv-00179-RWS, D.I. 223 (E.D.
`Tex., June 29, 2018); Section B.3(3.1b), The Federal Circuit Bar Association Model Patent Jury Instructions (rev.
`2020).
`23 Apple Authority: Federal Circuit Bar Association Model Patent Jury Instructions § B.3(3.1b) (May 2020).
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`ordinary skill in the field of technology of the asserted patent either would have considered the
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`differences between them to be insubstantial at the time the asserted patent issued or if that
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`person would have found the structures performed the function in substantially the same way to
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`accomplish substantially the same result. In deciding whether the differences would be
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`“insubstantial,” you may consider whether a person having an ordinary level of skill in the field
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`of technology of the patent would have known of the interchangeability of the two structures or
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`sets of structures at the time the patent issued. The fact that the structures or set of structures is
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`known to be “equivalent” today is not enough. The structures or set of structures must also have
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`been available at the time the asserted patent issued.
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`Joint Proposal:
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`In order to prove direct infringement by literal infringement of a means-plus-function
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`limitation, Maxell must prove the above requirements are met.
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`5.3
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`Direct Infringement Under the Doctrine of Equivalents24
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`Maxell contends that Apple has infringed the following asserted claims of the asserted
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`patents “under the doctrine of equivalents”: claims 1 and 17 of the ’317 Patent; claim 3 of the
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`’999 Patent, claims 3 and 13 of the ’498 Patent, claims 1 and 6 of the ’193 Patent, and claims 12
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`and 15 of the ’306 Patent.
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`If Apple makes, uses, sells, offers to sell within, or imports into the United States an
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`accused product that does not meet all of the requirements of a claim and thus does not literally
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`infringe that claim, there can still be direct infringement if that accused pr