Case 1:20-cv-00393-LMB-TCB Document 1353-1 Filed 06/14/22 Page 1 of 44 PageID# 33828
`Case 1:20-cv-00393-LMB-TCB Document 1353-1 Filed 06/14/22 Page 1 of 44 PagelD# 33828
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`EXHIBIT 1
`EXHIBIT 1
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`Case 1:20-cv-00393-LMB-TCB Document 1353-1 Filed 06/14/22 Page 2 of 44 PageID# 33829
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`1.
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`General Introduction
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`Members of the Jury:
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`Now that you have heard the evidence and the argument, it is my duty to instruct you about
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`the law applicable to this case.
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`It is your duty as jurors to follow the law as stated in the instructions of the Court, and to
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`apply these rules of law to the facts as you find them from the evidence in the case.
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`The lawyers may have referred to some of the governing rules of law in their arguments.
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`If, however, any difference appears to you between the law as stated by counsel and that stated by
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`the Court in these instructions, you are to be governed by the instructions.
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`You are not to single out one instruction alone as stating the law, but consider the
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`instructions as a whole.
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`Neither are you to be concerned about the wisdom of any rules of law stated by the Court.
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`You must follow and apply the law. Regardless of any opinion you may have as to what the law
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`ought to be, it would be a violation of your sworn duty to base a verdict upon any view of the law
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`other than that given in the instructions of the Court; just as it would be a violation of your sworn
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`duty, as judges of the facts, to base a verdict upon anything but the evidence in the case. Nothing
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`I say in these instructions indicates that I have any opinion about the facts. You, not I, have the
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`duty to determine the facts.
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`Justice through trial by jury always depends on the willingness of each individual juror to
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`seek the truth as to the facts from the same evidence presented to all the jurors; and to arrive at a
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`verdict by applying the same rules of law, as given in the instructions of the Court.
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`You must perform your duties as jurors without bias or prejudice as to any party. The law
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`does not permit you to be controlled by sympathy, prejudice, or public opinion. All parties expect
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`that you will carefully and impartially consider all the evidence, follow the law as it is now being
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`given to you, and reach a just verdict, regardless of the consequences.
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`2.
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`Note-taking
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`During this trial, I permitted you to take notes. Many courts do not permit note-taking by
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`jurors, and a word of caution is in order. There is always a tendency to place undue importance to
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`matters which one has written down. Some testimony which is considered unimportant at the time
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`presented, and thus not written down, takes on greater importance later in the trial in light of all
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`the evidence presented. Therefore, you are instructed that your notes are only a tool to aid in your
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`own individual memory and you should not compare your notes with other jurors in determining
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`the content of any testimony or in evaluating the importance of any evidence. Your notes are not
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`evidence and are by no means a complete outline of the proceedings or a list of the highlights of
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`the trial. Above all, your memory should be your greatest asset when it comes time to deliberate
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`and render a decision in this case.
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`Moreover, you are coequal judges of the facts and each juror’s memory of and opinion
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`about the evidence is worthy of consideration by all the other jurors. That a juror may have taken
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`extensive notes does not mean that his or her memory or opinion is worthy of more consideration
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`than the memory or opinion of a juror who took few or no notes.
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`3.
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`All Persons Equal Before the Law
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`This case should be considered and decided by you as an action between persons of equal
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`standing in the community, of equal worth, and holding the same or similar stations of life. A
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`corporation is entitled to the same fair trial at your hands as a private individual regardless of its
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`size, wealth, or place of incorporation. All persons, including corporations, partnerships,
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`unincorporated associations, and other organizations, stand equal before the law, and are to be
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`dealt with as equals in a court of justice.
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`4.
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`Judging the Evidence
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`There is nothing particularly different in the way that a juror should consider the evidence
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`in a trial from the way in which any reasonable and careful person would treat any very important
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`question that must be resolved by examining facts, opinions, and evidence. You are expected to
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`use your good sense in considering and evaluating the evidence in the case for only those purposes
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`for which it has been received and to give such evidence a reasonable and fair construction in the
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`light of your common knowledge of the natural tendencies and inclinations of human beings.
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`5.
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`Objections and Rulings
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`It is the sworn duty of the attorneys on each side of a case to object when the other side
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`offers testimony or exhibits which that attorney believes is not properly admissible. Only by
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`raising an objection can a lawyer request and obtain a ruling from the court on the admissibility of
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`the evidence being offered by the other side. You should not be influenced against an attorney or
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`his or her client because an attorney has made objections.
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`Do not attempt to interpret my rulings on objections as somehow indicating to you what I
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`believe the outcome of the case should be.
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`6.
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`Evidence in Case – Stipulations – Inferences Permitted
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`The evidence in the case consists of the sworn testimony of the witnesses, regardless of
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`who may have called them; all exhibits received in evidence, regardless of who may have produced
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`them; and all facts which have been admitted or stipulated.
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`When the attorneys on both sides stipulate or agree as to the existence of a fact you must,
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`unless otherwise instructed, accept the stipulation as evidence, and regard that fact as proved.
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`Statements, arguments, questions and objections of counsel are not evidence in the case.
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`Any evidence as to which an objection was sustained by the court, and any evidence ordered
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`stricken by the court, must be entirely disregarded.
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`Anything you may have seen or heard outside the courtroom is not evidence, and must be
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`entirely disregarded.
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`You are to consider only the evidence in the case. But in your consideration of the
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`evidence, you are not limited to the statements of the witnesses. In other words, you are not limited
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`solely to what you see and hear as the witnesses testify. You are permitted to draw, from facts
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`which you find have been proved, such reasonable inferences as you feel are justified in the light
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`of experience. Inferences are deductions or conclusions which reason and common sense lead you
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`to draw from the evidence received in the case.
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`7.
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`Direct and Circumstantial Evidence
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`There are two types of evidence which are generally presented during a trial: direct
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`evidence and circumstantial evidence. Direct evidence is the testimony of a person, such as an
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`eyewitness, who asserts or claims to have actual knowledge of a fact. Circumstantial evidence is
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`proof of a chain of facts and circumstances indicating the existence of a fact.
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`An example of circumstantial evidence is the following: You leave your house at noon on
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`a cold February day. Your front yard is bare at that time. It starts to snow, you return at 5:00 p.m.
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`and see a footprint in the snow that now covers your yard. From the facts that you left your home
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`at noon, returned at 5:00 p.m., see the footprint and know from common experience that human
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`beings are associated with footprints, you can infer that there was a person in your yard sometime
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`between noon and 5:00 p.m. If you had actually seen a person, that would be direct evidence of
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`that fact.
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`The law makes no distinction between the weight or value to be given to either direct or
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`circumstantial evidence. Nor is a greater degree of certainty required of circumstantial evidence
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`than of direct evidence. You should weigh all the evidence in the case in making your decisions.
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`8.
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`Jury’s Recollection Controls
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`If any reference by the Court or by counsel to matters of evidence does not coincide with
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`your own recollection, it is your recollection which should control during your deliberations.
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`9.
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`Credibility of the Witness – Discrepancies in Testimony
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`You are the sole judges of the credibility of the witnesses and the weight their testimony
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`deserves. You may be guided by the appearance and conduct of the witness, or by the manner in
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`which the witness testifies, or by the character of the testimony given, or by evidence contrary to
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`the testimony.
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`You should carefully examine all the testimony given, the circumstances under which each
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`witness has testified, and every matter in evidence tending to show whether a witness is worthy of
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`belief. Consider each witness’ intelligence, motive and state of mind, and demeanor or manner
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`while testifying.
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`Consider the witness’ ability to observe the matters as to which the witness has testified,
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`and whether the witness impresses you as having an accurate recollection of these matters. Also,
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`consider any relation each witness may have with either side of the case, the manner in which each
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`witness might be affected by the verdict, and the extent to which, if at all, the testimony of each
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`witness is either supported or contradicted by other evidence in the case.
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`Inconsistencies or discrepancies in the testimony of a witness, or between the testimony of
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`different witnesses may or may not cause you to discredit such testimony. Two or more persons
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`witnessing an incident or a transaction may see or hear it differently, and innocent misrecollection,
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`like failure of recollection, is not an uncommon experience.
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`In weighing the effect of a discrepancy, always consider whether it pertains to a matter of
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`importance or an unimportant detail, and whether the discrepancy results from innocent error or
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`intentional falsehood.
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`After making your own judgment, you will give the testimony of each witness such weight,
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`if any, that you may think it deserves. In short, you may accept or reject the testimony of any
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`witness, in whole or in part.
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`If you find testimony to be contradictory, you must try to reconcile it, if reasonably
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`possible, so as to make one harmonious story of it all. But if you cannot do this, then it is your
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`duty to credit the testimony that, in your judgment, is most believable and disregard any testimony
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`that, in your judgment, is not believable. You may believe everything a witness says, part of it, or
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`none of it. In addition, the weight of the evidence is not necessarily determined by the number of
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`witnesses testifying to the existence or nonexistence of any fact. You may find that the testimony
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`of a small number of witnesses as to any fact is more credible than the testimony of a larger number
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`of witnesses to the contrary.
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`This instruction applies to the testimony of all witnesses, including expert witnesses.
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`10.
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`Effect of Prior Inconsistent Statements
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`Evidence that, at some other time while not under oath a witness who is not a party to this
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`action has said or done something inconsistent with the witness’ testimony at the trial, may be
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`considered for the sole purpose of judging the credibility of the witness. However, such evidence
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`may not be considered as evidence of proof of the truth of any such statement.
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`Where the witness is a party to the case, and by such statement or other conduct admits
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`some fact or facts against the witness’ interest, then such statement or other conduct, if knowingly
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`made or done, may be considered as evidence of the truth of the fact or facts so admitted by such
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`party, as well as for the purpose of judging the credibility of the party as a witness.
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`An act or omission is “knowingly” done, if the act is done voluntarily and intentionally,
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`and not because of mistake or accident or other innocent reason.
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`If you find that a witness made an earlier sworn statement that conflicts with the witness’s
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`trial testimony, you may consider that contradiction in deciding how much of the trial testimony,
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`if any, to believe. You may consider whether the witness purposely made a false statement or
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`whether it was an innocent mistake; whether the inconsistency concerns an important fact or a
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`small detail; whether the witness had an explanation for the inconsistency; and whether that
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`explanation made sense to you. Your duty is to decide, based on all the evidence and your own
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`good judgment, whether the earlier statement was inconsistent; and if so, how much weight to give
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`to the inconsistent statement in deciding whether to believe the earlier statement or the witness’s
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`trial testimony.
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`11.
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`Distinction Between Fact and Expert Testimony
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`In this case, you have heard testimony from both fact and expert witnesses. The rules of
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`evidence ordinarily do not permit witnesses to testify as to opinions or conclusions. An exception
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`to this rule exists for expert witnesses. An expert witness is a person who, by education and
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`experience, may have become knowledgeable in some technical, scientific, or very specialized
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`area. One difference between the testimony of a fact and expert witness is that an expert witness
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`may state his or her opinions as to matters in which he or she is qualified as an expert, and may
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`also state his or her reasons for their opinions. Although an expert may testify as to his opinion,
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`you should consider each expert opinion received in evidence in this case and give it such weight
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`as you may think it deserves. You should consider the testimony of expert witnesses just as you
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`consider other evidence in this case. If you should decide that the opinion of an expert witness is
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`not based upon sufficient education or experience, or if you should conclude that the reasons given
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`in support of the opinion are not sound, or if you should conclude that the opinion is outweighed
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`by other evidence, including that of other expert witnesses, you may disregard the opinion in part
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`or in its entirety.
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`A fact witness is not an expert, and is therefore ordinarily not permitted to testify as to
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`opinions based on scientific, technical, or other specialized knowledge, but is restricted to
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`testifying as to factual matters within their personal knowledge. A fact witness who has personal
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`knowledge of scientific, technical, or other facts may, however, testify about that personal
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`knowledge. A fact witness may give an opinion if it is his or her personal knowledge and it is
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`rationally based upon his or her perception. If you find that an opinion of a fact witness is personal
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`knowledge and is rationally based upon the witness’s perception, then you may consider it and
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`give it such weight as you consider appropriate. However, a fact witness may not testify as to
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`opinions on alleged theories of non-infringement, invalidity, or the patent claims.
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`12.
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`Summary of The Issues
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`I will now summarize the issues that you must decide and for which I will provide
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`instructions to guide your deliberations. You must decide the following main issues:
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`1. Has Philip Morris proven by a preponderance of the evidence that the accused Reynolds
`devices, the VUSE Solo G2 and VUSE Alto, directly infringe the specified claims of
`the ’265 and ’911 Patents.
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`2. Has Reynolds proven by clear and convincing evidence that the ’911 Patent is invalid
`as obvious in view of the prior art.1
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`3. If and only if you find that one or both of Reynolds’s accused devises infringe either
`or both the ’265 and ’911 Patents, and that the patents are valid, what amount of
`damages has Philip Morris proven by a preponderance of the evidence that it is entitled
`to for that infringement by Reynolds.
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`Philip Morris need not practice the ’265 and ’911 Patents to prove infringement and
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`damages. Whether Philip Morris has licensed its patents against any other company is irrelevant
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`to infringement, validity, and damages. In addition, any evidence of patents owned by Reynolds
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`is irrelevant to the issues of infringement, validity, and damages.
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`1 The invalidity of the ’265 Patent is no longer an issue in this case.
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`13.
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`Burdens of Proof
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`As to each issue you must decide, one of the parties has the burden of proof, and it differs
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`from issue to issue.
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`Philip Morris has the burden of proving infringement of the asserted patents by a
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`preponderance of the evidence. When a party has the burden to prove any matter by a
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`preponderance of the evidence, it means that you must be persuaded by the testimony and exhibits
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`that the matter sought to be proved is more probably true than not true.
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`Reynolds has the burden of proving invalidity of the ’911 Patent by clear and convincing
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`evidence. A patent is presumed to be valid. In other words, it is presumed to have been properly
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`granted by the PTO. To prove that any claim is invalid, Reynolds must persuade you by clear and
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`convincing evidence that the claim is invalid. This means that Reynolds must show that it is highly
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`probable that the claim is invalid.
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`You should base your decision on all the evidence, regardless of which party presented it.
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`14.
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`Level of Ordinary Skill in the Art
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`During the course of the evidence, and in these instructions, you have heard the term
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`“person of ordinary skill in the art.” There are certain issues you must decide from the perspective
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`of a person of ordinary skill in the art.
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`A person of ordinary skill in the art is a person with a level of experience, education, or
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`training generally possessed by those individuals who work in the area or field of the invention at
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`the time of the invention. A person of ordinary skill is also a person of ordinary creativity that can
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`use common sense to solve problems.
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`When determining the level of ordinary skill in the art, you should consider all the evidence
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`submitted by the parties, including evidence of (i) the level of education and experience of persons
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`actively working in the field at the time of the invention; (ii) the types of problems encountered in
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`the art or field at the time of the invention; and (iii) the sophistication of the technology in the art
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`or field at the time of the invention, including how quickly innovations were made in the art or
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`field at the time of the invention.
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`A person need not be a testifying expert to qualify as a person of ordinary skill in the art.
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`15.
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`Claim Construction Generally
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`Before you decide whether Reynolds has infringed the claims of the asserted patents or
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`whether the asserted patents are invalid, you will have to understand the patent claims. The patent
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`claims are numbered sentences at the end of the patent. The claims are important because it is the
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`words of the claims that define what a patent covers.
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`The claims are intended to define, in words, the boundaries of the inventor’s rights. Only
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`the claims of the patent can be infringed. Neither the written description, nor the drawings of a
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`patent can be infringed. Each of the claims must be considered individually. You must use the
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`same claim meaning for both your decision on infringement and your decision on invalidity.
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`The patent claims involved here are claims 1 and 4 of the ’265 Patent and claims 1, 2, 11,
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`12, and 13 of the ’911 Patent.
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`•
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`For the ’265 Patent, the claims begin at column 9, line 22 of the patent, which is
`Exhibit PX-0002 in evidence.
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`For the ’911 Patent, the claims begin at column 18, line 11 of the patent, which is
`Exhibit PX-0003 in evidence.
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`In this case, I have determined that all of the claim terms should be given their plain and
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`ordinary meaning.
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`16.
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`Independent and Dependent Claims
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`This case involves independent claims and dependent claims.
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`An “independent claim” sets forth all of the requirements that must be met in order to be
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`covered by that claim. Thus, it is not necessary to look at any other claim to determine what an
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`independent claim covers. In this case, claim 1 of the ’265 Patent and claim 1 of the ’911 Patent
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`are independent claims.
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`The remainder of the claims in the asserted patents are “dependent claims.” A dependent
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`claim does not itself recite all of the requirements of the claim but refers to another claim for some
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`of its requirements. In this way, the claim “depends” on and adds to the requirements from another
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`claim. Thus, a dependent claim incorporates all of the requirements of the claim(s) to which it
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`refers, as well as the new requirements that it adds to them. In this case, claim 4 of the ’265 Patent
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`is dependent on claim 1 of the ’265 Patent, and claims 2 and 11-13 of the ’911 Patent are each
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`dependent claims of claim 1 of the ’911 Patent.
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`17. How A Claim Defines What It Covers
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`The claims are intended to define the boundaries of the inventor’s rights. This is done by
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`using words which set forth a set of requirements called elements. Each claim sets forth its
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`elements in a single sentence, which can be very long. As you saw during the trial, a claim often
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`has many elements. If and only if a device satisfies all the elements of a particular claim, then that
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`device infringes that claim.
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`There can be several claims in a patent. Each claim may be narrower or broader than
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`another claim by including more or fewer elements. The coverage of a patent is assessed claim-
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`by-claim.
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`You must use the same claim meaning for both your decision on infringement and your
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`decision on invalidity. You should give the words in the claims their plain and ordinary meaning
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`to a person of ordinary skill in the art in the context of the patent specification and prosecution
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`history.
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`18.
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`Infringement Generally
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`Patent law gives the owner of a valid patent the right to exclude others from importing,
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`making, using, offering to sell, or selling the patented invention within the United States during
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`the term of the patent. If the patent is valid, then any person or business entity that has engaged in
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`any of those acts without the patent owner’s permission infringes the patent.
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`19.
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`Direct Infringement
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`To determine whether there has been an act of direct infringement, you must compare the
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`accused product with each asserted claim.
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`Direct infringement of an asserted claim occurs when the patent holder proves by a
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`preponderance of the evidence that an accused product includes all the elements of that claim. If
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`an accused product did not contain one or more elements recited in a claim, that product does not
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`infringe that claim.
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`A party can directly infringe a patent without knowing of the patent or without knowing
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`that the party’s conduct constitutes patent infringement.
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`For dependent claims, if you find that a claim to which a dependent claim refers is not
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`infringed, there cannot be infringement of that dependent claim. On the other hand, if you find
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`that an independent claim has been infringed, you must still decide, separately, whether the product
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`meets the additional requirements of any claims that depend on 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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`20.
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`Direct Infringement – Literal Infringement
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`To determine literal infringement, you must compare the accused product with each patent
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`claim that Philip Morris contends is infringed.
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`A patent claim is literally infringed only if an accused product includes each and every
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`element recited in that patent claim. If a product does not contain one or more elements recited in
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`a claim, then Reynolds does not literally infringe that claim.
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`You must determine literal infringement with respect to each asserted patent claim
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`individually.
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`Each of the accused products should be compared to the invention described in each patent
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`claim it is alleged to infringe. The same element of the accused product may satisfy more than
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`one element of a patent claim.
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`Case 1:20-cv-00393-LMB-TCB Document 1353-1 Filed 06/14/22 Page 24 of 44 PageID#
`33851
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`21.
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`Direct Infringement – Infringement Under the Doctrine of Equivalents
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`If you decide that the accused products do not literally infringe an asserted patent claim,
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`you must then decide whether it is more likely than not that the product infringes that asserted
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`claim under what is called the “doctrine of equivalents.” Under the doctrine of equivalents, the
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`accused product can infringe an asserted patent claim if it includes components that were
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`equivalent to those elements of the claim that were not literally present in the product. If the
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`accused product is missing an equivalent component to even one element of the asserted patent
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`claim, the accused product cannot infringe the claim under the doctrine of equivalents. Thus, in
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`making your decision under the doctrine of equivalents, you must look at each individual element
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`of an asserted patent claim and decide whether the accused product has an equivalent component,
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`or set of equivalent components, to each individual claim element that is not literally present in
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`the product.
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`One way of showing that a component or components is an equivalent of a claimed element
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`is to show that it performs substantially the same function, in substantially the same way, to achieve
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`substantially the same result as would be achieved by the element that is not literally present in the
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`accused product. Another way of showing that a component or components is an equivalent to a
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`patent element is to show that it is insubstantially different from the claimed element.
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`In deciding whether a claim element and a component or components are equivalents, you
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`may consider whether, at the time of the alleged infringement, persons of ordinary skill in the art
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`would have known of the interchangeability of the equivalent component or components with the
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`claimed element. However, known interchangeability between a claim element and the component
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`or components of the product is not necessary to find infringement under the doctrine of
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`equivalents.
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`23
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`

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`Case 1:20-cv-00393-LMB-TCB Document 1353-1 Filed 06/14/22 Page 25 of 44 PageID#
`33852
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`23.
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`Invalidity – Invalidity of Independent and Dependent Claims
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`You must evaluate the invalidity of each asserted claim separately. Even if an independent
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`claim is invalid, this does not mean that the dependent claims that depend from it are automatically
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`invalid. You must decide this issue of validity on a claim-by-claim basis. However, if you find
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`that a dependent claim is invalid, then you must find that the independent claim from which it
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`depends is also invalid. The verdict form will explain which asserted claims are independent or
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`dependent claims.
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`24
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`Case 1:20-cv-00393-LMB-TCB Document 1353-1 Filed 06/14/22 Page 26 of 44 PageID#
`33853
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`24.
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`Invalidity – Burden of Proof
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`The asserted claims of the asserted patents are presumed to be valid, and to prove that any
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`claim of a patent is invalid, and to thereby overcome the presumption of validity, Reynolds must
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`persuade you by clear and convincing evidence, that is, you must be left with a clear conviction
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`that the particular claim is invalid.
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`Invalidity, like infringement, is determined on a claim-by-claim basis, meaning that one
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`claim from a patent may be invalid, while another claim from that same patent may not be invalid.
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`25
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`Case 1:20-cv-00393-LMB-TCB Document 1353-1 Filed 06/14/22 Page 27 of 44 PageID#
`33854
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`
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`25.
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`Prior Art
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`Prior art includes published patent applications and patents. To be prior art, the reference
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`must have been known or published before the priority date of the asserted patent. In this case,
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`the priority date for prior art purposes is December 3, 2010, for the ’911 Patent.
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`26
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`Case 1:20-cv-00393-LMB-TCB Document 1353-1 Filed 06/14/22 Page 28 of 44 PageID#
`33855
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`26.
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`Invalidity – Prior Art Not Considered by the PTO
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`In deciding the issue of invalidity, you may take into account the fact that a particular prior
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`art reference was previously considered by the Patent Office when it examined and allowed the
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`claims of the asserted patents. Conversely, with respect to prior art or information that was not
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`considered by the Patent Office during examination, you may consider whether that prior art or
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`information is significantly different and more relevant than the prior art and information that the
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`Patent Office did consider. If you decide it is different and more relevant, you may weigh that
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`prior art and information more heavily when considering whether Reynolds has carried its burden
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`of proving invalidity. Finally, you are not bound by the Patent Office decision and indeed you
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`must make your own decision on the matter, with due regard to Reynolds’s burden to prove
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`invalidity by clear and convincing evidence.
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`27
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`Case 1:20-cv-00393-LMB-TCB Document 1353-1 Filed 06/14/22 Page 29 of 44 PageID#
`33856
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`27.
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`Prior Art – Printed Publications
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`Reynolds contends that the asserted claims of the ‘911 Patent are invalid in view of printed
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`publications that were publicly available before the priority date of each asserted patents. To be
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`considered prior art, a printed publication must be reasonably accessible to those members of the
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`public who would be interested in its contents.
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`It is not necessary that the printed publication be available to every member of the public.
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`Information is publicly accessible if it was distributed or otherwise made available such
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`that persons interested and ordinarily skilled in the subject matter exercising reasonable diligence
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`could locate it. It is not necessary that the printed publication be available to every member of the
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`public.
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`Thus, publications may include not only such things as books, periodicals or newspapers,
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`but also publications that are not as widely available to the public, such as trade catalogues, journal
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`a