Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 1 of 80
`
`Exhibit B-2
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 2 of 80
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`TOUCHSTREAM TECHNOLOGIES, INC.,
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`Civil Case No. 6:21-cv-569-ADA
`
`JURY TRIAL DEMANDED
`U.S. District Judge Alan Albright
`
`[CHARGE] FINAL JURY INSTRUCTIONS
`
`Plaintiff Touchstream Technologies, Inc. and Defendant Google LLC submit the following
`
`[Requested] Final Jury Instructions for the trial in this matter. The parties are continuing to meet
`
`and confer and expect to further narrow their disputes over these instructions.
`
`For the attached set, the parties note their disputes as follows:
`
`Where the parties disagree about the inclusion of an instruction, or the version to use for
`
`an instruction, the parties indicate as much by labeling the instruction “contested” (underlined)
`
`and providing each side’s proposal (to the extent the party proposes an instruction). Where the
`
`parties agree on the inclusion of an instruction and are generally in agreement on the wording of
`
`the instruction, but there remains some dispute over the exact language, Touchstream’s version of
`
`the instruction is in RED and Google’s version of the instruction is in BLUE.
`
`Objections are similarly coded, with Touchstream’s objections in RED and Google’s
`
`objections in BLUE.
`
`The parties reserve all rights to supplement, amend, or otherwise modify these proposed
`
`instructions and objections as appropriate, including without limitation the right to revise their
`
`positions on the proposed instructions in response to future rulings by the Court or the evidence as
`
`1
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 3 of 80
`
`it is admitted at trial. The parties submit these proposed jury instructions without waiver of their
`
`position that the opposing party has not presented sufficient evidence to submit some or all of its
`
`affirmative claims, damages theories, or affirmative defenses to the jury, and without waiver of
`
`arguments presented in motions in limine or in other pretrial proceedings.
`
`2
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 4 of 80
`
`Table of Contents
`
`JURY INSTRUCTION NO. 1: JURY CHARGE .......................................................................... 6
`
`JURY INSTRUCTION NO. 2: EVIDENCE .................................................................................. 8
`
`JURY INSTRUCTION NO. 3: WITNESSES.............................................................................. 10
`
`JURY INSTRUCTION NO. 4: DEPOSITION TESTIMONY .................................................. 12
`
`JURY INSTRUCTION NO. 5: EXPERT TESTIMONY ........................................................... 13
`
`JURY INSTRUCTION NO. 6: INTERROGATORIES .............................................................. 14
`
`JURY INSTRUCTION NO. 7: BIAS—NO INFERENCE FROM FILING SUIT OR
`
`DEFENDING THE SUIT ......................................................................................................................... 15
`
`JURY INSTRUCTION NO. 8: STIPULATIONS OF FACT ..................................................... 16
`
`JURY INSTRUCTION NO. 9: LIMITING INSTRUCTION .................................................... 17
`
`JURY INSTRUCTION NO. 10: CHARTS AND SUMMARIES.............................................. 18
`
`JURY INSTRUCTION NO. 11: DEMONSTRATIVE EXHIBITS .......................................... 19
`
`JURY INSTRUCTION NO. 12: BIAS-CORPORATE PARTY INVOLVED ......................... 20
`
`JURY INSTRUCTION NO. 13: BURDENS OF PROOF .......................................................... 21
`
`CONTESTED: JURY INSTRUCTION NO. 14: SUMMARY OF CONTENTIONS ............ 22
`
`CONTESTED: JURY INSTRUCTION NO. __: OTHER PATENTS ..................................... 24
`
`CONTESTED: JURY INSTRUCTION NO. __: PATENT CLAIMS ...................................... 25
`
`JURY INSTRUCTION NO. __: INDEPENDENT AND DEPENDENT CLAIMS ................ 27
`
`CONTESTED: JURY INSTRUCTION NO. __: INFRINGEMENT-GENERALLY ............ 28
`
`3
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 5 of 80
`
`CONTESTED:
`
` JURY
`
`INSTRUCTION NO. __: DIRECT
`
`INFRINGEMENT-
`
`KNOWLEDGE OF THE PATENT AND INFRINGEMENT ARE IMMATERIAL ........................ 29
`
`CONTESTED: JURY INSTRUCTION NO. __: INFRINGEMENT BY LITERAL
`
`INFRINGEMENT ..................................................................................................................................... 30
`
`CONTESTED: JURY INSTRUCTION NO. __: INFRINGEMENT UNDER THE
`
`DOCTRINE OF EQUIVALENTS .......................................................................................................... 32
`
`CONTESTED: JURY INSTRUCTION NO. __: DIRECT INFRINGEMENT: ACTS OF
`
`MULTIPLE PARTIES MUST BE COMBINED TO MEET ALL METHOD CLAIM
`
`LIMITATIONS ......................................................................................................................................... 34
`
`CONTESTED: JURY INSTRUCTION NO. __: DIVIDED INFRINGEMENT ................... 36
`
`CONTESTED: JURY INSTRUCTION NO. __: SALE OR USE OUTSIDE THE UNITED
`
`STATES ..................................................................................................................................................... 38
`
`CONTESTED: JURY INSTRUCTION NO. __: WILLFUL INFRINGEMENT .................... 39
`
`CONTESTED: JURY INSTRUCTION NO. __: PATENT INVALIDITY-GENERALLY ... 41
`
`CONTESTED: JURY INSTRUCTION NO. __: INVALIDITY-PRIOR ART ........................ 43
`
`CONTESTED: JURY INSTRUCTION NO. __: LEVEL OF ORDINARY SKILL ................ 47
`
`CONTESTED:
`
`JURY
`
`INSTRUCTION NO.
`
`__:
`
`PATENT
`
`INVALIDITY-
`
`ANTICIPATION ....................................................................................................................................... 48
`
`CONTESTED: JURY INSTRUCTION NO. __: OBVIOUSNESS ........................................... 50
`
`CONTESTED:
`
`JURY
`
`INSTRUCTION NO.
`
`__: WRITTEN DESCRIPTION
`
`REQUIREMENT [LACK OF WRITTEN DESCRIPTION] ................................................................ 56
`
`4
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 6 of 80
`
`CONTESTED: JURY INSTRUCTION NO. __: DAMAGES-INTRODUCTION ................. 59
`
`JURY INSTRUCTION NO. __: DATE OF COMMENCEMENT OF DAMAGES—
`
`PRODUCTS .............................................................................................................................................. 61
`
`CONTESTED: JURY INSTRUCTION NO. __: DAMAGES-REASONABLE ROYALTY62
`
`CONTESTED: JURY
`
`INSTRUCTION NO. __: DAMAGES-APPORTIONMENT
`
`REQUIRED ............................................................................................................................................... 64
`
`CONTESTED: JURY INSTRUCTION NO. __: REASONABLE ROYALTY- RELEVANT
`
`FACTORS ................................................................................................................................................. 66
`
`CONTESTED: JURY INSTRUCTION NO. __: REASONABLE ROYALTY-RELEVANT
`
`FACTORS ................................................................................................................................................. 69
`
`CONTESTED:
`
`JURY
`
`INSTRUCTION NO.
`
`__: DAMAGES-COMPARABLE
`
`AGREEMENTS ........................................................................................................................................ 72
`
`CONTESTED:
`
`JURY
`
`INSTRUCTION NO. __: DAMAGES—COMPARABLE
`
`AGREEMENTS ........................................................................................................................................ 74
`
`CONTESTED: JURY INSTRUCTION NO. __: DAMAGES-RUNNING ROYALTY VS.
`
`LUMP SUM .............................................................................................................................................. 75
`
`JURY INSTRUCTION NO. __: JUROR NOTEBOOKS ........................................................... 76
`
`CONTESTED: JURY INSTRUCTION NO. __: DOUBTS RESOLVED AGAINST THE
`
`INFRINGER .............................................................................................................................................. 77
`
`JURY INSTRUCTION NO. __: DUTY TO DELIBERATE ..................................................... 78
`
`JURY INSTRUCTION NO. __: SOCIAL MEDIA INSTRUCTION ....................................... 79
`
`5
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 7 of 80
`
`JURY INSTRUCTION NO. 1: JURY CHARGE
`
`MEMBERS OF THE JURY:
`
`It is my duty and responsibility to instruct you on the law you are to apply in this case. The
`
`law contained in these instructions is the only law you may follow. It is your duty to follow what
`
`I instruct you the law is, regardless of any opinion that you might have as to what the law ought to
`
`be.
`
`Each of you is going to have your own printed copy of these final jury instructions that I
`
`am giving you now, so there is really no need for you to take notes unless you want to.
`
`If I have given you the impression during the trial that I favor either party, you must
`
`disregard that impression. If I have given you the impression during the trial that I have an opinion
`
`about the facts of this case, you must disregard that impression. You are the sole judges of the facts
`
`of this case. Other than my instructions to you on the law, you should disregard anything I may
`
`have said or done during the trial in arriving at your verdict.
`
`You should consider all of the instructions about the law as a whole and regard each
`
`instruction in light of the others, without isolating a particular statement or paragraph.
`
`The testimony of the witnesses and other exhibits introduced by the parties constitute the
`
`evidence. The statements of counsel are not evidence; they are only arguments. It is important for
`
`you to distinguish between the arguments of counsel and the evidence on which those arguments
`
`rest. What the lawyers say or do is not evidence. You may, however, consider their arguments in
`
`light of the evidence that has been admitted and determine whether the evidence admitted in this
`
`trial supports the arguments. You must determine the facts from all the testimony that you have
`
`heard and the other evidence submitted. You are the judges of the facts, but in finding those facts,
`
`you must apply the law as I instruct you.
`
`6
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 8 of 80
`
`You are required by law to decide the case in a fair, impartial, and unbiased manner, based
`
`entirely on the law and on the evidence presented to you in the courtroom. You may not be
`
`influenced by passion, prejudice, or sympathy you might have for Touchstream or Google in
`
`arriving at your verdict.
`
`After the remainder of these instructions, you will hear closing arguments from the
`
`attorneys. Statements and arguments of the attorneys, I remind you, are not evidence, and they are
`
`not instructions on the law. They are intended only to assist the jury in understanding the evidence
`
`and the parties’ contentions.
`
`A verdict form has been prepared for you. You are to take this verdict form with you to the
`
`jury room; and when you have reached a unanimous decision or agreement as to the verdict, you
`
`are to have your foreperson fill in the blanks in the verdict form, date it, and sign it.
`
`Answer each question in the verdict form from the facts as you find them to be. Do not
`
`decide who you think should win the case and then answer the questions to reach that result. Again,
`
`your answers and your verdict must be unanimous.
`
`7
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 9 of 80
`
`JURY INSTRUCTION NO. 2: EVIDENCE
`
`The evidence you are to consider consists of the testimony of the witnesses, the documents,
`
`and other exhibits admitted into evidence, the stipulations to which the lawyers agreed, and any
`
`fair inferences and reasonable conclusions you can draw from the facts and circumstances have
`
`been proven. Nothing else is evidence.
`
`Generally speaking, there are two types of evidence. One is direct evidence, such as
`
`testimony of eyewitnesses. The other is indirect or circumstantial evidence. Circumstantial
`
`evidence is evidence that proves a fact from which you can logically conclude another fact exists.
`
`As a general rule, the law makes no distinction between direct and circumstantial evidence, but
`
`simply requires that you determine the facts from all of the evidence that you heard in this case,
`
`whether direct, circumstantial or any combination.
`
`As I instructed you before the trial began, in judging the facts, you must consider all the
`
`evidence, both direct and circumstantial. That does not mean you have to believe all of the
`
`evidence. It is entirely up to you to give the evidence you receive in this case whatever weight you
`
`individually believe it deserves. It will be up to you to decide which witnesses to believe, which
`
`witnesses not to believe, the weight you give any testimony you hear, and how much of any
`
`witness’s testimony you choose to accept or reject.
`
`Objections to questions are not evidence. The attorneys in this case may have objected if
`
`they thought that documents or testimony that were offered into evidence were improper under the
`
`rules of evidence. My legal rulings as to those objections are not evidence. My comments and
`
`questions are not evidence. If I sustained an objection, then just pretend the question was never
`
`asked. If there was an answer given, ignore it. If I overruled the objection, act like the objection
`
`was never made. If I gave you instructions that some item of evidence was received for a limited
`
`8
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 10 of 80
`
`purpose, you must follow my instruction. If I gave any limiting instruction during trial, you must
`
`follow it. Any testimony I told you to exclude or disregard is not evidence, may not be considered.
`
`You must not conduct any independent research or investigation. You must make your
`
`decision based only on the evidence as I have defined it here, and nothing else.
`
`9
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 11 of 80
`
`JURY INSTRUCTION NO. 3: WITNESSES
`
`You alone determine the questions of credibility or truthfulness of the witnesses. In
`
`weighing the testimony of witnesses, you may consider the witness’s manner and demeanor on the
`
`witness stand, any feelings or interest in the case, any prejudice or bias about the case, and the
`
`consistency or inconsistency of the witness’s testimony considered in the light of circumstances.
`
`Has the witness been contradicted by other credible evidence? Has the witness made
`
`statements at other times that are contrary to those made here on the witness stand? You must give
`
`the testimony of each witness the credibility that you think it deserves.
`
`Even though a witness may be a party to the action and therefore interested in the outcome,
`
`you may accept the testimony if it is not contradicted by direct evidence or by any inference that
`
`may be drawn from the evidence, if you believe the testimony.
`
`You are not to decide this case by counting the number of witnesses who have testified for
`
`the opposing sides. Witness testimony is weighed. Witnesses are not counted. The test is not the
`
`relative number of witnesses, but the relative convincing force of the evidence. The testimony of
`
`a single witness is sufficient to prove any fact, even if a greater number of witnesses testify to the
`
`contrary, if after you have considered all of the other evidence you choose to believe the single
`
`witness.
`
`In determining the weight to give to the testimony of a witness, consider whether there was
`
`evidence that at some time the witness said or did something or failed to say or do something that
`
`was at odds with the testimony given at trial. A simple mistake by a witness does not necessarily
`
`mean that a witness did not tell the truth as he or she remembers it. We’re people. We forget things.
`
`We remember things inaccurately. If a witness has made a misstatement, consider whether that
`
`was an intentional falsehood or simply an innocent mistake. The significance of that may depend
`
`10
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 12 of 80
`
`on whether it has to do with something important or unimportant. But again, this is exclusively in
`
`your province of whether or not you believe a witness is telling the truth.
`
`11
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 13 of 80
`
`JURY INSTRUCTION NO. 4: DEPOSITION TESTIMONY
`
`Certain testimony has been presented to you through a deposition. A deposition is the
`
`sworn, recorded answers to questions a witness was asked in advance of the trial. Under some
`
`circumstances, if a witness cannot be present to testify from the witness stand, that witness’s
`
`testimony may be presented, under oath, in the form of a deposition. Sometime before this trial,
`
`attorneys representing the parties in this case questioned this witness under oath. A court reporter
`
`was present and recorded the testimony. The questions and answers have been shown to you. This
`
`deposition testimony is entitled to the same consideration and is to be weighed and otherwise
`
`considered by you in the same way as if the witness had been present and had testified from the
`
`witness stand in court.
`
`Some of the video recordings of witnesses you have seen may have been of lower quality
`
`because the witnesses testified from home. You should not hold the quality of the video or the
`
`location of the witness against either party.
`
`Deposition testimony is entitled to the same consideration and is to be weighed and
`
`otherwise considered by you in the same way as if the witness had been present and had testified
`
`from the witness stand in court.
`
`12
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 14 of 80
`
`JURY INSTRUCTION NO. 5: EXPERT TESTIMONY
`
`Expert testimony is testimony from a person who has a special skill or knowledge in some
`
`science, profession, or business. This skill or knowledge is not common to the average person but
`
`has been acquired by the expert through special study or experience.
`
`In weighing expert testimony, you may consider the expert’s qualifications, the reasons for
`
`the expert’s opinions, and the reliability of the information supporting the expert’s opinions, as
`
`well as the factors I have previously mentioned for weighing testimony of any other witness.
`
`Expert testimony should receive whatever weight and credit you think appropriate, given all the
`
`other evidence in the case. You are not required to accept the opinion of any expert, rather, you
`
`are free to accept or reject the testimony of experts, just as with any other witness.
`
`13
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 15 of 80
`
`JURY INSTRUCTION NO. 6: INTERROGATORIES
`
`Evidence has been presented to you in the form of answers of one or the parties to written
`
`interrogatories submitted by the other side. These answers were given in writing and under oath
`
`before the trial in response to questions that were submitted under established court procedures.
`
`You should consider the answers, insofar as possible, in the same way as if they were made from
`
`the witness stand.
`
`14
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 16 of 80
`
`JURY INSTRUCTION NO. 7: BIAS—NO INFERENCE FROM FILING SUIT OR
`DEFENDING THE SUIT
`
`The fact that one side or the other brought this lawsuit and is in court seeking damages
`
`creates no inference on their behalf that they’re entitled to judgment. The act of making a claim in
`
`a lawsuit, in this case claims of patent infringement, does not tend to establish the claim is true or
`
`not true and cannot be considered by you as evidence.
`
`Also, the fact that Google has raised arguments against the claims and says they don’t
`
`infringe creates no inference that they’re entitled to a judgment.
`
`Both of these actions, the offensive action of filing the suit and the defensive action of
`
`defending the suit must be disregarded by you, and neither of those actions should tend to establish
`
`judgment in either side’s favor.
`
`15
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 17 of 80
`
`JURY INSTRUCTION NO. 8: STIPULATIONS OF FACT
`
`A “stipulation” is an agreement. When there is no dispute about certain facts, the parties
`
`may agree or “stipulate” to those facts. You must accept a stipulated fact as evidence and treat that
`
`fact as having been proven here in court.
`
`16
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 18 of 80
`
`JURY INSTRUCTION NO. 9: LIMITING INSTRUCTION
`
`When testimony or an exhibit is admitted for a limited purpose, you may consider that
`
`testimony or exhibit only for the specific limited purpose for which it was admitted.
`
`17
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 19 of 80
`
`JURY INSTRUCTION NO. 10: CHARTS AND SUMMARIES
`
`Certain charts and summaries have been shown to you solely to help explain or summarize
`
`the facts disclosed by the books, records, and other documents that are in evidence. These charts
`
`and summaries are not evidence or proof of any facts. You should determine the facts from the
`
`evidence.
`
`18
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 20 of 80
`
`JURY INSTRUCTION NO. 11: DEMONSTRATIVE EXHIBITS
`
`Certain exhibits shown to you, such as PowerPoint presentations, posters, or models, are
`
`illustrations of the evidence, but are not themselves evidence. Such exhibits are demonstrative
`
`exhibits. A demonstrative exhibit is a party’s description, picture, or model used to describe
`
`something involved in this trial. If your recollection of the evidence differs from the exhibit, rely
`
`on your recollection.
`
`19
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 21 of 80
`
`JURY INSTRUCTION NO. 12: BIAS-CORPORATE PARTY INVOLVED
`
`Do not let bias, prejudice, or sympathy play any part in your deliberations. Whether you
`
`are familiar with one party or the other should not play any part in your deliberations. A corporation
`
`and all other persons are equal before the law and must be treated as equals in a court of justice.
`
`20
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 22 of 80
`
`JURY INSTRUCTION NO. 13: BURDENS OF PROOF
`
`For each issue in this case, either Touchstream or Google bears the burden of proof, which
`
`means that it bears the burden of persuading you to find in its favor. In a patent case such as this,
`
`there are two different burdens of proof. The first is called “preponderance of the evidence.” The
`
`second is called “clear and convincing evidence.”
`
`Here, Touchstream has the burden of proving by a preponderance of the evidence that
`
`Google has infringed the Asserted Claims of the Asserted Patents, that such infringement has been
`
`willful, and the amount of damages Touchstream should receive to compensate it for any
`
`infringement. A preponderance of the evidence means evidence that persuades you that a claim is
`
`more probably true than not true. Sometimes this is talked about as being the greater weight and
`
`degree of credible testimony.
`
`Google has the burden of proving patent invalidity and that an alleged product or
`
`publication is prior art by clear and convincing evidence. Clear and convincing evidence means
`
`evidence that produces in your mind a firm belief or conviction as to the truth of the matter sought
`
`to be established. It is evidence so clear, direct, weighty and convincing as to enable you to come
`
`to a clear conviction without hesitancy.
`
`These standards are different from what you may have learned about in criminal
`
`proceedings where a fact is proven beyond a reasonable doubt. On a scale of the various standards
`
`of proof, as you move from the preponderance of the evidence, where the proof need only be
`
`sufficient to tip the scales in favor of the party proving the fact, to at the other end, beyond a
`
`reasonable doubt, where the fact must be proven to a very high degree of certainty, you may think
`
`of clear and convincing evidence as being between these two ends of the spectrum or those two
`
`standards.
`
`21
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 23 of 80
`
`CONTESTED: JURY INSTRUCTION NO. 14: SUMMARY OF CONTENTIONS
`
`As I did at the start of the case, I will first give you a summary of each side’s contentions
`
`in this case. I will then provide you with detailed instructions on what each side must prove to win
`
`on each of its contentions.
`
`As I previously told you, Touchstream asserts that Google has infringed claims 1 and 8 of
`
`the ’251 patent; claims 1 and 14 of the ’528 patent; and claims 1 and 2 of the ’289 patent, that such
`
`infringement has been willful, and that Touchstream is entitled to money damages for Google’s
`
`alleged infringement. Those patents and claims are referred to as the “Asserted Patents” and the
`
`“Asserted Claims.”
`
`[Touchstream: Touchstream asserts that Google infringes the Asserted Claims by selling,
`
`offering to sell, and/or using cast-enabled services that involve the operation of products that are
`
`“cast-enabled,” including by directing and controlling the operation of cast-enabled products by
`
`others.]
`
`Touchstream alleges that [Google: the following] [Touchstream: such cast-enabled]
`
`products include: (1) standalone Chromecast devices (e.g., Chromecast 1st Generation,
`
`Chromecast 2nd Generation, Chromecast 3rd Generation, Chromecast Audio, Chromecast Ultra,
`
`and Chromecast with Google TV); (2) the following devices that implement Chromecast built-in:
`
`(a) third-party devices running the Android TV operating system and with Google TV; and (b)
`
`third-party televisions and speakers with “Chromecast Built-In”; and (3) Google Home/Nest
`
`products capable of receiving cast content (e.g., Google Home, Google Home Mini, Google Home
`
`Max, Google Home Hub/Nest Hub, Google Home Hub/Nest Hub Max, Google Nest Hub
`
`Generation 2, Google Nest Audio, Google Nest Mini, and Google Nest Wifi Point (wifi extender
`
`with speaker)). These products are referred to as the “Accused Products.”
`
`22
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 24 of 80
`
`Google denies that it has infringed the Asserted Claims of the Asserted Patents and argues
`
`that the Asserted Claims are invalid.
`
`Your job is to decide whether Google has infringed the Asserted Claims of the Asserted
`
`Patents and whether any of the Asserted Claims of the Asserted Patents are invalid. If you decide
`
`that any Asserted Claim of the Asserted Patents has been infringed and is not invalid, you will then
`
`need to decide any money damages to be awarded to Touchstream to compensate it for the
`
`infringement. You will also need to make a finding as to whether the infringement was willful. If
`
`you decide that any infringement was willful, that decision should not affect any damages award
`
`you make. I will take willfulness into account later.
`
`Google’s Objections to Touchstream’s Proposed Instruction:
`
`Google’s proposal is more readable and avoid unnecessary repetition. Moreover,
`
`Touchstream’s proposal unnecessarily addresses a specific form of infringement (divided
`
`infringement) that is more fully addressed in a separate instruction and is inappropriate here. By
`
`comparison, the instruction has only a single, straightforward instruction on invalidity,
`
`notwithstanding Google’s several different theories of invalidity. If Touchstream’s version is
`
`adopted, Google reserves the right to propose amendments to this instruction to include discussion
`
`of its specific invalidity theories.
`
`Touchstream’s Objections to Google’s Proposed Instruction:
`
`Touchstream objects to Google’s proposal as an incomplete statement of Touchstream’s
`
`infringement contentions and does not provide sufficient context for the Accused Products.
`
`23
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 25 of 80
`
`CONTESTED: JURY INSTRUCTION NO. __: OTHER PATENTS
`
`You have heard certain arguments and evidence regarding Google’s patents. The fact that
`
`Google has patents does not mean that it has a right to use Touchstream’s patented technology and
`
`has no impact on whether Google has or has not infringed the Asserted Patents.
`
`Google’s Objections to Touchstream’s Proposed Instruction:
`
`Google objects to this instruction as improper and without a basis and therefore potentially
`
`confusing to the jury, including in light of Touchstream’s willfulness claims. This is not a standard
`
`instruction, and at best, the instruction is premature and would only be appropriate depending on
`
`how the evidence comes in at trial.
`
`24
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 26 of 80
`
`CONTESTED: JURY INSTRUCTION NO. __: PATENT CLAIMS
`
`Before you can decide many of the issues in this case, you’ll need to understand the role
`
`of the patent “claims.” The claims of a patent are the numbered sentences at the end of the patent.
`
`The claims are important because it is the words of the claims themselves that define what a patent
`
`covers. The figures and the text in the rest of the patent provide a description or examples of the
`
`claimed invention and provide a context for the claims, but it is the claims that define the breadth
`
`of the patent’s coverage. Therefore, what a patent covers depends, in turn, on what each of its
`
`claims covers.
`
`The requirements of a claim are often referred to as “claim elements,” “claim steps,” or
`
`“claim limitations.” The coverage of a patent is assessed claim-by-claim. When a thing (such as a
`
`product or a process) meets all of the requirements of a claim, the claim is said to “cover” that
`
`thing, and that thing is said to “fall” within the scope of that claim. In other words, a claim covers
`
`a product or process where each of the claim elements or limitations is present in that product or
`
`process.
`
`You will first need to understand what each claim covers in order to decide whether or not
`
`there is infringement of that claim and to decide whether or not the claim is invalid. The first step
`
`is to understand the meaning of the words used in the patent claim.
`
`It is my role to define the terms of the claims and it is your role to apply my definitions of
`
`the terms I have construed to the issues that you are asked to decide in this case. [Touchstream:
`
`You are to use the plain and ordinary meaning of the words of the patent claims as understood by
`
`a person of ordinary skill in the art, which is to say, in the field of technology of the patent at the
`
`time of the invention. The meanings of the words of the patent claims must be the same when
`
`deciding both the issues of infringement and validity.] [Google: I have determined that the plain
`
`and ordinary meanings of the claim terms apply. It is your job to take the plain and ordinary
`25
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 27 of 80
`
`meanings and apply them to the issues that you are deciding, including the issues of infringement
`
`and validity.]
`
`The beginning portion of a claim, also known as the preamble, often uses the word
`
`“comprising.” The word “comprising,” when used in the preamble, means “including but not
`
`limited to” or “containing but not limited to.” When “comprising” is used in the preamble of a
`
`claim, if you decide that an accused product or process includes all of the requirements of that
`
`claim, the claim is infringed. This is true even if the accused product or process contains additional
`
`elements. For example, a claim to “a table comprising a tabletop, legs, and glue” would cover a
`
`table that includes a tabletop, legs, and glue, even if the table also includes wheels on the table’s
`
`legs.
`
`Google’s Objections to Touchstream’s Proposed Instruction:
`
`Google’s proposal is more readable, and Google reserves the right to continue reviewing
`
`Touchstream’s proposal and whether the dispute can be narrowed or eliminated.
`
`Touchstream’s Objections to Google’s Proposed Instruction:
`
`Touchstream objects to Google’s explanation of use of “plain and ordinary” meaning in the
`
`fourth paragraph as incomplete.
`
`26
`
`

`

`Case 6:21-cv-00569-ADA Document 230-5 Filed 07/14/23 Page 28 of 80
`
`JURY INSTRUCTION NO. __: INDEPENDENT AND DEPENDENT CLAIMS
`
`This case involves two types of Asserted Claims: independent claims and dependent claims.
`
`An “independent claim” se