Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 1 of 51 PageID #: 52269
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 13-919-JLH
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`))))))))))
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`FINAL JURY INSTRUCTIONS
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`ARENDI S.A.R.L.,
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`Plaintiff,
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`v.
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`GOOGLE LLC,
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`Defendant.
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`Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 2 of 51 PageID #: 52270
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`TABLE OF CONTENTS
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`INTRODUCTION
`JURORS’ DUTIES
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`1
`1. GENERAL INSTRUCTIONS
`1
`1.1
`2
`1.2
`3
`1.3 EVIDENCE DEFINED
`4
`1.4 DIRECT AND CIRCUMSTANTIAL EVIDENCE
`5
`1.5 CONSIDERATION OF EVIDENCE
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`1.6 STATEMENTS OF COUNSEL
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`1.7 CREDIBILITY OF WITNESSES
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`1.8 EXPERT WITNESSES
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`1.9 DEPOSITION TESTIMONY
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`1.10 DEMONSTRATIVE EXHIBITS
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`1.11 USE OF NOTES
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`1.12 BURDENS OF PROOF
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`2. THE PARTIES AND THEIR CONTENTIONS
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`2.1 THE PARTIES
`14
`2.2 SUMMARY OF THE ISSUES
`15
`3. THE PATENT LAWS
`15
`3.1 THE PATENT LAWS
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`3.2 CLAIM CONSTRUCTION
`19
`3.3
`20
`3.4
`21
`3.5 WILLFULNESS
`23
`4.
`23
`4.1
`24
`4.2
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`4.3 PRIOR ART
`28
`4.4
`29
`4.5
`31
`5. DAMAGES
`31
`5.1 DAMAGES GENERALLY
`5.2 REASONABLE ROYALTY—THE “HYPOTHETICAL NEGOTIATION” METHOD
`32
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`INFRINGEMENT—INFRINGEMENT GENERALLY
`INFRINGEMENT—DIRECT INFRINGEMENT
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`INVALIDITY
`INVALIDITY—GENERALLY
`INVALIDITY—PERSON OF ORDINARY SKILL IN THE ART
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`INVALIDITY—ANTICIPATION
`INVALIDITY—OBVIOUSNESS
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`5.4 DAMAGES—AVAILABILITY OF NON-INFRINGING ALTERNATIVES
`5.5 DAMAGES—APPORTIONMENT
`6 DELIBERATION AND VERDICT
`6.1
`6.2 UNANIMOUS VERDICT
`6.3 DUTY TO DELIBERATE
`6.4 SOCIAL MEDIA
`6.5 COURT HAS NO OPINION
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`36
`37
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`44
`44
`45
`46
`47
`48
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`5.6 DAMAGES—DATE OF COMMENCEMENT
`[Arendi Proposal: 5.7 THE SAMSUNG AGREEMENT]
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`INTRODUCTION
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`Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 4 of 51 PageID #: 52272
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`1.
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`GENERAL INSTRUCTIONS
`1.1
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`INTRODUCTION
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`Members of the jury, now it is time for me to instruct you about the law that you must
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`follow in deciding this case. Each of you has been provided a copy of these instructions. You may
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`read along as I deliver them if you prefer.
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`I will start by explaining your duties and the general rules that apply in every civil case.
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`Then I will explain some rules that you must use in evaluating particular testimony and evidence.
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`Then I will explain the positions of the parties and the law you will apply in this case. And last, I
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`will explain the rules that you must follow during your deliberations in the jury room and the
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`possible verdicts that you may return.
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`Please listen very carefully to everything I say.
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`You will have a written copy of these instructions with you in the jury room for your
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`reference during your deliberations. You will also have a verdict form, which will list the questions
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`that you must answer to decide this case.
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`Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 5 of 51 PageID #: 52273
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`1.2
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`JURORS’ DUTIES
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`You have two main duties as jurors. The first is to decide what the facts are from the
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`evidence that you saw and heard in court. Deciding what the facts are is your job, not mine, and
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`nothing that I have said or done during this trial was meant to influence your decision about the
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`facts in any way. You are the sole judges of the facts.
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`Your second duty is to take the law that I give you, apply it to the facts, and decide under
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`the appropriate burden of proof which party should prevail on any given issue. It is my job to
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`instruct you about the law, and you are bound by the oath you took at the beginning of the trial to
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`follow the instructions that I give you, even if you personally disagree with them. This includes
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`the instructions that I gave you before and during the trial, and these instructions. All of the
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`instructions are important, and you should consider them together as a whole.
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`Perform these duties fairly. Do not guess or speculate, and do not let any bias, sympathy,
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`or prejudice you may feel toward one side or the other influence your decision in any way.
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`Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 6 of 51 PageID #: 52274
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`1.3
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`EVIDENCE DEFINED
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`You must make your decision based only on the evidence that you saw and heard here in
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`court. Do not let rumors, suspicions, or anything else that you may have seen or heard outside of
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`court influence your decision in any way. The evidence in this case includes only what the
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`witnesses said while they were testifying under oath, including deposition transcript testimony that
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`has been played by video or read to you, the exhibits that I allowed into evidence, matters I have
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`instructed you to take judicial notice of, and the stipulations to which the lawyers agreed.
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`Certain models, reproductions, charts, summaries, and graphics have been used to illustrate
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`certain evidence and testimony from witnesses. Unless I have specifically admitted them into
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`evidence, these models, reproductions, charts, summaries, and graphics are not themselves
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`evidence, even if they refer to, identify, or summarize evidence, and you will not have these
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`demonstratives in the jury room.
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`Nothing else is evidence. The lawyers’ statements and arguments are not evidence. The
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`arguments of the lawyers are offered solely as an aid to help you in your determination of the facts.
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`Their questions and objections are not evidence. My legal rulings are not evidence. You should
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`not be influenced by a lawyer’s objection or by my ruling on that objection. Any of my comments
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`and questions are not evidence.
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`During the trial I may have not let you hear the answers to some of the questions that the
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`lawyers asked. I also may have ruled that you could not see some of the exhibits that the lawyers
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`wanted you to see. And, sometimes I may have ordered you to disregard things that you saw or
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`heard, or that I struck from the record. You must completely ignore all of these things. Do not
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`speculate about what a witness might have said or what an exhibit might have shown. These things
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`are not evidence, and you are bound by your oath not to let them influence your decision in any
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`way. Make your decision based only on the evidence, as I have defined it here, and nothing else.
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`Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 7 of 51 PageID #: 52275
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`1.4
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`DIRECT AND CIRCUMSTANTIAL EVIDENCE
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`During the preliminary instructions, I told you about “direct evidence” and “circumstantial
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`evidence.” I will now remind you what each means.
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`Direct evidence is simply evidence like the testimony of an eyewitness which, if you
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`believe it, directly proves a fact. If a witness testified that he saw it raining outside, and you believe
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`him, that would be direct evidence that it was raining.
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`Circumstantial evidence is simply a chain of circumstances that indirectly proves a fact. If
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`someone walked into the courtroom wearing a raincoat covered with drops of water and carrying
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`a wet umbrella, that would be circumstantial evidence from which you could conclude that it was
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`raining.
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`It is your job to decide how much weight to give the direct and circumstantial evidence.
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`The law makes no distinction between the weight that you should give to either one, nor does it
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`say that one is any better evidence than the other. You should consider all the evidence, both direct
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`and circumstantial, and give it whatever weight you believe it deserves.
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`Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 8 of 51 PageID #: 52276
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`1.5
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`CONSIDERATION OF EVIDENCE
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`You should use your common sense in weighing the evidence. Consider it in light of your
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`everyday experience with people and events, and give it whatever weight you believe it deserves.
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`If your experience tells you that certain evidence reasonably leads to a conclusion, you are free to
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`reach that conclusion.
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`Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 9 of 51 PageID #: 52277
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`1.6
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`STATEMENTS OF COUNSEL
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`A further word about statements of counsel and arguments of counsel. The attorneys’
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`statements and arguments are not evidence. Instead, their statements and arguments are intended
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`to help you review the evidence presented.
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`If you remember the evidence differently from the way it was described by the attorneys,
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`you should rely on your own recollection.
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`Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 10 of 51 PageID #: 52278
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`1.7
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`CREDIBILITY OF WITNESSES
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`You are the sole judges of each witness’s credibility. You may believe everything a witness
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`says, or part of it, or none of it. You should consider each witness’s means of knowledge; strength
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`of memory; opportunity to observe; how reasonable or unreasonable the testimony is; whether it
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`is consistent or inconsistent; whether it has been contradicted; the witness’s biases, prejudices, or
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`interests; the witnesses’ manner or demeanor on the witness stand; and all circumstances that,
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`according to the evidence, could affect the credibility of the testimony.
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`In determining the weight to give to the testimony of a witness, you should ask yourself
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`whether there is evidence tending to prove that the witness testified falsely about some important
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`fact or whether there was evidence that at some other time the witness said or did something, or
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`failed to say or do something, that was different from the testimony he or she gave at the trial in
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`person or by deposition testimony played by video or read to you. You have the right to distrust
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`such witness’s testimony and you may reject all or some of the testimony of that witness or give
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`it such credibility as you may think it deserves.
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`Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 11 of 51 PageID #: 52279
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`1.8
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`EXPERT WITNESSES
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`Expert testimony is testimony from a person who has a special skill or knowledge in some
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`science, profession, or business. This skill or knowledge is not common to the average person but
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`has been acquired by the expert through special study or experience.
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`In weighing expert testimony, you may consider the expert’s qualifications, the reasons for
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`the expert’s opinions, and the reliability of the information supporting the expert’s opinions, as
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`well as the factors I have previously mentioned for weighing testimony of any other witness.
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`Expert testimony should receive whatever weight and credit you think appropriate, given all the
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`other evidence in the case. You are free to accept or reject the testimony of experts, just as with
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`any other witness.
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`Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 12 of 51 PageID #: 52280
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`1.9
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`DEPOSITION TESTIMONY
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`During the trial, certain testimony was presented to you by the playing of video excerpts
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`from a deposition. The deposition testimony may have been edited or cut to exclude irrelevant
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`testimony as the parties have only a limited amount of time to present you with evidence. You
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`should not attribute any significance to the fact that the deposition videos may appear to have been
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`edited.
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`Deposition testimony is out-of-court testimony given under oath and is entitled to the same
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`consideration you would give it had the witnesses personally appeared in court.
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`Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 13 of 51 PageID #: 52281
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`1.10 DEMONSTRATIVE EXHIBITS
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`During the course of the trial, you have seen many exhibits. Many of these exhibits were
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`admitted as evidence. You will have these admitted exhibits in the jury room for your deliberations.
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`The remainder of the exhibits (including charts, models, reproductions, PowerPoint presentations,
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`and animations) were offered to help illustrate the testimony of the various witnesses. These
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`illustrative exhibits, called “demonstrative exhibits,” have not been admitted, are not evidence, and
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`should not be considered as evidence. Rather, it is the underlying testimony of the witness that you
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`heard when you saw the demonstrative exhibits that is the evidence in this case.
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`Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 14 of 51 PageID #: 52282
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`1.11 USE OF NOTES
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`You may have taken notes during trial to assist your memory. As I instructed you at the
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`beginning of the case, you should use caution in consulting your notes. There is generally a
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`tendency I think to attach undue importance to matters which one has written down. Some
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`testimony which is considered unimportant at the time presented, and thus not written down, takes
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`on greater importance later in the trial in light of all the evidence presented. Therefore, your notes
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`are only a tool to aid your own individual memory, and you should not compare notes with other
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`jurors in determining the content of any testimony or in evaluating the importance of any evidence.
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`Your notes are not evidence, and are by no means a complete outline of the proceedings or a list
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`of the highlights of the trial.
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`Above all, your memory should be the greatest asset when it comes time to deliberate and
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`render a decision in this case.
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`Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 15 of 51 PageID #: 52283
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`1.12
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`BURDENS OF PROOF
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`In any legal action, facts must be proven by a required standard of evidence, known as the
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`“burden of proof.” In a patent case such as this, there are two different burdens of proof that are
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`used. The first is called “preponderance of the evidence.” The second is called “clear and
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`convincing evidence.” I told you about these two standards of proof during my preliminary
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`instructions to you and I will now remind you what they mean. Plaintiff Arendi asserts that
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`Defendant Google infringes the ’843 patent.
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`Plaintiff Arendi has the burden of proving its infringement claims by a “preponderance of
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`the evidence.” That means Plaintiff Arendi has to prove to you, in light of all the evidence, that
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`what it claims is more likely true than not. To say it differently, if you were to put the evidence of
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`Plaintiff Arendi and the evidence of Defendant on opposite sides of a scale, the evidence
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`supporting Plaintiff Arendi’s claims would have to make the scales tip slightly on its side in each
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`instance. If the scale should remain equal or tip in favor of Defendant, you must find in favor of
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`Defendant.
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`In addition to denying Plaintiff Arendi’s claims that it infringes, Google asserts that the
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`asserted claims of the ’843 Patent are invalid. A party challenging the validity of a patent—in this
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`instance, Defendant Google—has the burden to prove that the asserted claims are invalid by clear
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`and convincing evidence. Clear and convincing evidence means evidence that it is highly probable
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`that a fact is true. Proof by clear and convincing evidence is a higher burden than proof by a
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`preponderance of the evidence.
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`You may have heard of the “beyond a reasonable doubt” burden of proof from criminal
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`cases. That requirement is the highest burden of proof. It does not apply to civil cases and,
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`therefore, you should put it out of your mind.
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`Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 16 of 51 PageID #: 52284
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`2.
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`THE PARTIES AND THEIR CONTENTIONS
`2.1
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`THE PARTIES
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`I will now review for you the parties in this action, and the positions of the parties that you
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`will have to consider in reaching your verdict.
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`As I have previously told you, the plaintiff in this case is Arendi S.A.R.L. We have referred
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`to the plaintiff as Arendi. The defendant in this case is Google LLC. We have referred to it as
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`Google.
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`Plaintiff Arendi is the owner of U.S. Patent Number 7,917,843. During this case, we have
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`referred to the patent by its last three digits, the ’843 Patent, or as the patent-in-suit or the Asserted
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`Patent.
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`Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 17 of 51 PageID #: 52285
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`you:
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`2.2
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`SUMMARY OF THE ISSUES
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`You must decide the following issues in this case according to the instructions that I give
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`1.
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`Whether Plaintiff Arendi has proven by a preponderance of the evidence that
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`Google infringes one or more of claims 23 and 30 of the ’843 Patent;
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`2.
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`Whether Defendant Google has proven by clear and convincing evidence that one
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`or more of the asserted claims of the ’843 Patent is invalid.
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`3.
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`If you decide that any claim of the ’843 Patent has been infringed by Google and is
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`not invalid, you will then need to decide whether Arendi has proven by a preponderance of the
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`evidence that Google’s infringement was willful;
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`4.
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`If you decide that any claim of the ’843 Patent has been infringed by Google and is
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`not invalid, you will also need to decide the amount of money damages Arendi has proven by a
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`preponderance of the evidence are to be awarded to compensate it for Google’s infringement.
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`Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 18 of 51 PageID #: 52286
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`3.
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`THE PATENT LAWS
`3.1
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`THE PATENT LAWS
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`At the beginning of the trial, I gave you some general information about patents and the
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`patent system and a brief overview of the patent laws relevant to this case. I will now give you
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`more detailed instructions about the patent laws that specifically relate to this case. If you would
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`like to review my instructions at any time during your deliberations, you will have your copy
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`available to you in the jury room.
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`Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 19 of 51 PageID #: 52287
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`3.2
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`CLAIM CONSTRUCTION
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`Before you can decide many of the issues in this case, you will need to understand the role
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`of patent “claims.” The patent claims are the numbered sentences at the end of a patent. The claims
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`are important because it is the words of the claims that define what a patent covers. The figures
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`and text in the rest of the patent provide a description and/or examples of the invention and provide
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`a context for the claims, but it is the claims that define the breadth of the patent’s coverage.
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`Therefore, what a patent covers depends, in turn, on what each of its claims covers.
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`To know what a claim covers, a claim sets forth, in words, a set of requirements. Each
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`claim sets forth its requirements in a single sentence. A claim may be narrower or broader than
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`another claim by setting forth more or fewer requirements. The requirements of a claim are often
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`referred to as “claim elements” or “claim limitations.” The coverage of a patent is assessed claim-
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`by-claim.
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`When a thing (such as a product) meets all of the requirements of a claim, the claim is said
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`to “cover” that thing, and that thing is said to “fall” within the scope of that claim. In other words,
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`a claim covers a product where each of the claim elements or limitations is present in that product.
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`You will first need to understand what each claim covers in order to decide whether or not
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`there is infringement of the claim and to decide whether or not the claim is invalid. The first step
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`is to understand the meaning of the words used in the patent claim.
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`This case involves two types of patent claims: independent claims and dependent claims.
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`An “independent claim” sets forth all of the requirements that must be met in order to be
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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. Claim 23 of the ’843 Patent is an independent claim.
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`In contrast, claim 30 of the ’843 Patent is a “dependent claim.” A dependent claim does
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`not itself recite all of the requirements of the claim but refers to another claim for some of its
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`requirements. In this way, the claim “depends” on another claim. A dependent claim incorporates
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`all of the requirements of the claim(s) to which it refers. The dependent claim then adds its own
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`additional requirements. Therefore, to determine what a dependent claim covers, it is necessary to
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`look at both the dependent claim and the other claim or claims to which it refers. A product that
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`meets all of the requirements of both the dependent claim and the claim(s) to which it refers is
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`covered by that dependent claim.
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`It is my job as a judge to define the terms of the claims and to instruct you about the
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`meaning. It is your role to apply my definitions to the issues that you are asked to decide.
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`In this case, I have determined the meaning of the following terms of the asserted claims
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`of the ’843 Patent:
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`Claim Term
`“document”
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`“first information”
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`“computer program”
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`“to determine if the first
`information is at least one of a
`plurality of types of information that
`can be searched for”
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`“that allows a user to enter a
`user command to initiate an
`operation”
`“providing an input device
`configured by the first computer
`program”
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`Court’s Construction
`“a word processing, spreadsheet, or similar file
`into which text can be entered”
`“text in a document that can be used as input
`for a search operation in a source external to the
`document”
`“a self-contained set of instructions, as opposed
`to a routine or library, intended to be executed on a
`computer so as to perform some task”
`“to determine if the first information belongs to
`one or more of several predefined categories of
`identifying information (e.g., a name) or contact
`information (e.g., a phone number, a fax number, or an
`email address) that can be searched for in an
`information source external to the document”
`“that allows a user to enter an input or series of
`inputs to initiate an operation”
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`“providing an input device set up by the first
`computer program for use by the user”
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`Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 21 of 51 PageID #: 52289
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`You must accept my definition of these words as being correct. It is your job to take these
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`definitions and apply them to the issues that you are deciding, including the issues of infringement
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`and validity.
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`The beginning portion of a claim, also known as the preamble, often uses the word
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`“comprising.” The word “comprising,” when used in the preamble, means “including but not
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`limited to” or “containing but not limited to.” When “comprising” is used in the preamble, if you
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`decide that an accused product includes all of the requirements of that claim, the claim is infringed.
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`This is true even if the accused product contains additional elements.
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`For any words in the claim for which I have not provided you with a definition, you should
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`apply their plain and ordinary meaning as understood by one of ordinary skill in the field of
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`technology of the ’843 Patent at the time of the invention. The meanings of the words of the patent
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`claims must be the same when deciding both the issues of infringement and validity.
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`You should not take my definition of the language of the claims as an indication that I have
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`a view regarding how you should decide the issues that you are being asked to decide, such as
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`infringement and invalidity. These issues are yours to decide.
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`Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 22 of 51 PageID #: 52290
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`3.3
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`INFRINGEMENT—INFRINGEMENT GENERALLY
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`I will now instruct you as to the rules you must follow when deciding whether Plaintiff
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`Arendi has proven that Google has infringed the ’843 Patent. Infringement is assessed on a claim-
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`by-claim basis [Google Proposal: by comparing Google’s accused product to the elements of each
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`claim1]. [Arendi: Google already agreed to this instruction without its newly inserted language,
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`which Arendi did not receive until 8:22pm on Sunday night. This language does not exist in the
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`Federal Circuit model instructions.] Therefore, there may be infringement of one claim but no
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`infringement of another.
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`In order to prove infringement, Arendi must prove that the requirements for infringement
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`are met by a preponderance of the evidence, that is, that it is more likely than not that all of the
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`requirements of infringement have been proved.
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`1 Google: The all-elements rule is a non-controversial legal requirement that would otherwise be
`missing from the parties’ joint proposed final jury instructions. It is in the FCBA Model Patent
`Jury Instruction 3.1a; AIPLA Model Patent Jury Instruction 3.2; and N.D. Cal. Model Patent
`Jury Instruction 3.3. It was also included in the parties’ agreed-upon instruction for “Direct
`Infringement” but inadvertently dropped during meet-and-confer revisions to move the language
`to this “Infringement Generally” section.
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`19
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`Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 23 of 51 PageID #: 52291
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`3.4
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`INFRINGEMENT—DIRECT INFRINGEMENT
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`A person or business entity that makes, uses, sells, or offers for sale within the United
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`States or imports into the United States an invention claimed in a patent infringes that patent. There
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`may be infringement of one claim but no infringement of another. [Google proposal: If a product
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`is missing even one limitation or element of a claim, the product is not covered by that claim.2]
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`If you find that an independent claim is not infringed, there cannot be infringement of any
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`dependent claim that depends from that claim. On the other hand, if you find that an independent
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`claim has been infringed, you must still separately decide whether the accused products meet the
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`additional requirements of any dependent claim to determine whether that dependent claim has
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`also been infringed.
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`2 4/28/23 Trial Tr. (Rough) at 1086:8-1091:6 (ruling regarding relevant paragraphs in prior
`proposed final jury instructions).
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`20
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`Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 24 of 51 PageID #: 52292
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`3.5 WILLFULNESS
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`Arendi asserts that Google infringed the ’843 Patent, and further, that Google infringed
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`willfully. If you find that Google infringed one or more claims of the ’843 Patent, then you must
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`also determine whether or not such infringement was willful.
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`To show that infringement was willful, Arendi must establish that it is more likely than not
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`that Google knew of the ’843 Patent at the time of the alleged infringement and that the
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`infringement was deliberate or intentional.
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`[Google’s Proposal: Mere knowledge of the patent at that time is not sufficient.3]
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` [Arendi’s Proposal: Intentional infringement includes infringement with reckless
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`disregard of Arendi’s patent rights.4] [Google’s Response: Google opposes Arendi’s proposal. If
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`the conduct is only reckless, it is not intentional. The case law requires deliberate or intentional
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`infringement, not recklessness.5]
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`To decide whether Google acted willfully, you should consider all of the facts and assess
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`Google’s knowledge at the time of the challenged conduct. Facts that may be considered include,
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`but are not limited to:
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`3 Bayer Healthcare LLC v. Baxalta Inc., 989 F.3d 964, 988 (Fed. Cir. 2021) (“Knowledge of the
`asserted patent and evidence of infringement is necessary, but not sufficient, for a finding of
`willfulness. Rather, willfulness requires deliberate or intentional infringement.”).
`4 Ironburg Inventions Ltd. v. Valve Corp., 64 F.4th 1274, 1296 (Fed. Cir. 2023) (affirming
`judgment of willful infringement where evidence “support[ed] a finding that Valve ‘recklessly’
`disregarded Ironburg’s patent rights and, therefore, willfully infringed.”).
`5 See, e.g., Ironburg Inventions Ltd. v. Valve Corp., 64 F.4th 1274, 1296 (Fed. Cir. 2023) (“To
`prevail on its claim for willful infringement, Ironburg was required to prove, by a preponderance
`of the evidence, that Valve knew of the '525 patent and then engaged in ‘deliberate or intentional
`infringement.’”); Bayer Healthcare LLC v. Baxalta Inc., 989 F.3d 964, 988 (Fed. Cir. 2021)
`(“Knowledge of the asserted patent and evidence of infringement is necessary, but not sufficient,
`for a finding of willfulness. Rather, willfulness requires deliberate or intentional infringement.”);
`Eko Brands, LLC v. Adrian Rivera Maynez Enters., Inc., 946 F.3d 1367, 1378 (Fed. Cir. 2020)
`(“Under Halo, the concept of ‘willfulness’ requires a jury to find no more than deliberate or
`intentional infringement.”).
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`21
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`Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 25 of 51 PageID #: 52293
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`1. Whether or not Google acted consistently with the standards of behavior for its
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`industry;
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`2. Whether or not Google intentionally copied a product of Arendi that is covered by
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`the ’843 Patent;
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`3. Whether or not Google reasonably believed it did not infringe or that the patent was
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`invalid;
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`4. Whether or not Google made a good-faith effort to avoid infringing the ’843 Patent
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`by, for example, attempting to design around the ’843 Patent; and
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`5. Whether or not Google tried to cover up its infringement.
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`If you determine that any infringement was willful, you may not allow that decision to
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`affect the amount of any damages award you give for infringement. I will take willfulness into
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`account later.6
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`6 Arendi: See Federal Circuit Bar Association, Model Patent Jury Instructions at 35, available at
`https://fedcirbar.org/integralsource/model-patent-jury-instructions.7 Google: These two paragraphs are
`incomplete regarding inventions that were “known” under pre-AIA 35 U.S.C. § 102(a) and
`inventions that were in “public use” under pre-AIA 35 U.S.C. § 102(b), and the provision of a
`single November 10, 1997 date is incorrect in view of the November 10, 1998 effective filing
`date. These two paragraphs are also unnecessary and confusing in view of Google’s proposed
`language below from the FCBA model jury instructions.
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`22
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`Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 26 of 51 PageID #: 52294
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`4.
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`INVALIDITY
`4.1
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`INVALIDITY—GENERALLY
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`I will now instruct you on the rules you must follow in deciding whether or not Google has
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`proven that the Asserted Claims are invalid.
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`Patent invalidity is a defense to patent infringement. The issuance of a patent by the Patent
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`Office provides a presumption that the patent is valid.
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`A party challenging the validity of a patent—in this instance, Google—has the burden to
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`prove that the asserted claims are invalid by clear and convincing evidence. Clear and convincing
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`evidence means evidence that it is highly probable that a fact is true. Proof by clear and convincing
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`evidence is a higher burden than proof by a preponderance of the evidence.
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`In this case, you have the ultimate responsibility for deciding whether the claims of the
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`patent are valid or invalid. In making your determination, you must consider the claims
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`individually, as you did when you considered whether each claim was infringed or not. If clear
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`and convincing evidence demonstrates that a claim of the ’843 Patent fails to meet any requirement
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`of the patent laws, then that claim is invalid.
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`The fact that any particular reference was or was not considered by the Patent Office does
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`not change Google’s burden of proof.
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`I will now instruct you on the invalidity issues you should consider.
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`23
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`Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 27 of 51 PageID #: 52295
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`4.2
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`INVALIDITY—PERSON OF ORDINARY SKILL IN THE ART
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`The question of invalidity of a patent claim is determined from the perspective of a person
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`of ordinary skill in the art in the field of the asserted invention as of the time of invention. In
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`deciding the level of ordinary skill, you should consider all the evidence introduced at trial,
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`including:
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`(1) the levels of education and experience of persons working in the field;
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`(2) the types of problems encountered in the field;
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`(3) prior art solutions to those problems;
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`(4) rapidity with which innovations are made; and
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`(5) the sophistication of the technology.
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`24
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`Case 1:13-cv-00919-JLH Document 510 Filed 05/01/23 Page 28 of 51 PageID #: 52296
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`4.3
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`PRIOR ART
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`[Arendi: Google and Arendi agreed to the entirety of this instruction in open Court on
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`Friday, April 28. See Trial Tr. 1102:20-22 (Mr. Unikel: “So