I. Introduction

The 2015 Version

In the Winter of 2013, the Patent Litigation Committee of the American Intellectual Property Law Association once again undertook the task of updating the AIPLA Model Patent Jury Instructions (“Instructions”) to take into account changes to the law since the previous version of the Instructions were published. The Instructions were originally created in 1997 and were updated previously in 2005, 2008, and 2012. A Subcommittee was formed to review recent case law and make any necessary changes to the Instructions to conform to the significant changes in patent law over the last several years. The Subcommittee also continued its effort to simplify the Instructions and to improve the formatting so that the electronic version of the Instructions is easier to navigate. The current revision includes case law through December 31, 2014.

One of the fundamental goals of the Instructions is to provide a model set of jury instructions that would not be biased in favor of either the patent owner or the accused infringer. These Model Instructions are not intended to address every conceivable issue that might arise in patent litigation. Instead, Instructions are provided on those issues that typically arise in patent litigation and that have clear precedential support. It is incumbent upon the litigants to tailor these instructions to the specific issues in their particular case and to simplify the tasks for the Court and the jury by not providing superfluous or confusing instructions. It is also intended that these Instructions will be used in conjunction with other instructions dealing with non-patent issues such as credibility and that the trial court will further the jury’s understanding of these Instructions by relating the legal principles in the Instructions to the particular factual contentions of the parties.

To further these goals and to enhance the litigants’ ability to customize the Instructions to a particular case, these revised Instructions continue the use of bracketed terminology for certain consistent terms. This enables the litigants to use the find-and-replace feature of a word processing program to insert case specific facts. Examples of the terms are:

[subject matter]
[the patentee]
[the Plaintiff]
[the Defendant]
[full patent number]
[abbreviated patent number]
[claims in dispute]
[allegedly infringing product]
[invention date]
[U.S. filing date]
[critical date]
[effective filing date]
[anticipating patent]
[alleged analogous art]
[alleged prior publication]
[alleged device on sale]
[infringement notice date]
[lawsuit filing date]
[beginning infringement date]
[collateral products]
[the Plaintiff’s product]

In addition to these “find-and-replace” terms, brackets were also used to indicate where various terminology could be used to customize these Instructions to a particular case. For example, to take into account the differences between product and method patents, there will be instructions that include “[[product] [method]]” and the like. Other examples include “[[product][system]],” “[importing][selling][offering to sell][using]” and “[method][process]].”

The Subcommittee substantially completed these revisions in the fourth quarter of 2014. The AIPLA Board of Directors approved these Instructions for publication in June 2015.   These Instructions, however, do not take into account case law or statutory changes that occurred in 2015.

December 2014
Felicia J. Boyd
Chair, Model Patent Jury Instructions Subcommittee
Patent Litigation Committee
American Intellectual Property Law Association

II. Preliminary Jury Instructions

Members of the jury:

Now that you have been sworn, I have the following preliminary instructions for your guidance on the nature of the case and on your role as jurors.

A. The Nature of the Action and the Parties

This is a patent case. The patents involved in this case relate to [subject matter] technology. [BRIEFLY DESCRIBE TECHNOLOGY INVOLVED].

During the trial, the parties will offer testimony to familiarize you with this technology. For your convenience, the parties have also prepared a Glossary of some of the technical terms to which they may refer during the trial, which will be distributed to you.

[The Plaintiff] is the owner of a patent, which is identified by the Patent Office number: [full patent number] (which may be called “the [abbreviated patent number] patent”); [IDENTIFY ADDITIONAL PATENTS]. This patent may also be referred to as “[the Plaintiff]’s patent.” [The Defendant] is the other party here.

i. United States Patents

Patents are granted by the United States Patent and Trademark Office (sometimes called the “PTO” or “USPTO”). A patent gives the owner the right to exclude others from making, using, offering to sell, or selling [[the patented invention] [a product made by the patented process]] within the United States or importing it into the United States. During the trial, the parties may offer testimony to familiarize you with how one obtains a patent from the PTO, but I will give you a general background here.

To obtain a patent, an application for a patent must be filed with the PTO. The application includes a specification, which should have a written description of the invention, and telling how it works and how to make and use it so as to enable others skilled in the art to do so. [The specification should also describe what the inventor believed at the time of filing to be the best way of making his or her invention.][1] The specification concludes with one or more numbered sentences or paragraphs. These are called the “claims” of the patent. The purpose of the claims is to particularly point out what the applicant regards as the invention and to define the scope of the patent owner’s exclusive rights.

After an application for a patent is filed with the PTO, the application is reviewed by a trained PTO Patent Examiner. The Patent Examiner reviews (or examines) the patent application to determine whether the claims are patentable and whether the specification adequately describes the invention claimed. In examining a patent application, the patent examiner searches records available to the PTO for what is referred to as “prior art,” and he or she also reviews prior art submitted by the applicant.

When the parties are done presenting evidence, I will give you more specific instructions as to what constitutes prior art in this case. Generally, prior art is previously existing technical information and knowledge against which the Patent Examiners determine whether or not the claims in the application are patentable.[2] The Patent Examiner considers, among other things, whether each claim defines an invention that is new, useful, and not obvious in view of this prior art.

Following the prior art search and examination of the application, the Patent Examiner advises the applicant in writing what the patent examiner has found and whether any claim is patentable (in other words, “allowed”). This writing from the Patent Examiner is called an “office action.” More often than not, the initial Office Action by the Patent Examiner rejects the claims. The Applicant then responds to the Office Action and sometimes changes the claims or submits new claims. This process may go back and forth between the Patent Examiner and the Applicant for several months or even years until the Patent Examiner is satisfied that the Application and claims are patentable. At that time, the PTO “issues” or “grants” a patent with the allowed claims.

The collection of papers generated by the patent examiner and the applicant during this time of corresponding back and forth is called the “prosecution history.” You may also hear the “prosecution history” referred to as the “file history” or the “file wrapper.”

In this case, it is ultimately for you to decide, based on my instructions to you, whether the accused infringer has shown that the patent claims are invalid.


[1] The bracketed sentence should only be read if a defense of failure to comply with best mode is raised against an asserted patent having a pre-AIA priority date.

[2] If the litigation involves a patent governed by the AIA, prior art is art that was effectively filed or published before the filing of the application or patent.

ii. Patent Litigation

Someone is said to be infringing a claim of a patent when they, without permission from the patent owner, import, make, use, offer to sell, or sell [[the patented invention] [a product made by the patented process]], as defined by the claims, within the United States before the term of the patent expires. A patent owner who believes someone is infringing the exclusive rights of a patent may bring a lawsuit, like this one, to attempt to address the alleged infringing acts and to recover damages, which generally means money paid by the infringer to the patent owner to compensate for the harm caused by the infringement. The patent owner must prove infringement of the claims of the patent. The patent owner must also prove the amount of damages he or she is entitled to.

A patent is presumed to be valid.  In other words, it is presumed to have been properly granted.  But that presumption of validity can be overcome if clear and convincing evidence is presented that proves the patent is invalid.  One example of a way in which the presumption may be overcome is if the PTO has not considered, for whatever reason, invalidating prior art that is presented to you.  Someone accused of infringing a patent may deny that they infringe and/or prove that the asserted claims of the patent are invalid. If the opposing party challenges the validity of the patent, you must decide based on the instructions I will give you, whether the challenger has overcome the presumption of validity with proof that the asserted claims of the patent are invalid. The party challenging validity must prove invalidity by clear and convincing evidence. I will discuss more of this topic later.

I will now briefly explain the parties’ basic contentions in more detail.

B. Contentions of the Parties

[The Plaintiff] contends that [the Defendant] makes, uses, offers to sell, or sells a [[product] [method]] that infringes [claim(s) in dispute] of the [abbreviated patent number] patent. [The Plaintiff] must prove that [the Defendant] infringes the [abbreviated patent number] patent by a preponderance of the evidence. That means that [the Plaintiff] must show that it is more likely that [the Defendant]’s [allegedly infringing product] infringes than it does not infringe.

There are two ways in which a patent claim can be directly infringed.[3] First, a claim can be literally infringed. Second, a claim can be infringed under what is called the “doctrine of equivalents.” To determine infringement, you must compare the accused [[product] [method]] with each claim from the [abbreviated patent number] that [the Plaintiff] asserts is infringed. It will be my job to tell you what the language of the patent claims mean. You must follow my instructions as to the meaning of the patent claims. You are not to define the patent claims yourselves.

A patent claim is literally infringed only if [the Defendant]’s [[product] [method]] includes each and every [[element] [method step]] in that patent claim. If [the Defendant]’s [[product] [method]] does not contain one or more [[elements] [method steps]] in that claim, [the Defendant] does not literally infringe that claim. You must determine literal infringement with respect to each patent claim individually.

Practice Note: To avoid jury confusion, it is important to distinguish those claims that are allegedly infringed literally from those that are allegedly infringed under the doctrine of equivalents. Rather than submit both to the jury, the Court should narrow the infringement contentions before the jury is charged in order to provide the jury clear guidance and avoid instructions that may be confusing.

A patent claim is infringed under the doctrine of equivalents only if there is an equivalent [[component] [part] [method step]] in [the Defendant]’s [[product] [method]] for each [[element] [method step]] of the patent claim that is not literally present in [the Defendant]’s [[product] [method]]. In other words, [the Plaintiff] must prove that it is more likely than not that [the Defendant]’s [[product] [method]] contains the equivalent of each element of the claimed invention that is not literally present in the [allegedly infringing product]. An equivalent of an element is a [[component]] [[action]] that is insubstantially different from the claimed element. One way of showing that an element is insubstantially different is to show that it performs substantially the same function, in substantially the same way, to achieve substantially the same result as would be achieved by the element that is not literally present in the accused [[product]] [[method]].

[The Defendant] denies that it is infringing the [abbreviated patent number] patent and contends that the [abbreviated patent number] patent is invalid [and/or unenforceable].[4] [INSERT BRIEF DESCRIPTION OF THE PARTICULAR INVALIDITY AND UNENFORCEABILITY DEFENSES BEING ASSERTED].

Invalidity of the asserted patent claim(s) is a defense to infringement. Therefore, even though the PTO examiner has allowed the claims of the [abbreviated patent number] patent, you, the jury, must decide whether each claim of the [abbreviated patent number] patent that is challenged by [Defendant] is invalid. [The Defendant] must prove invalidity of each challenged claim by clear and convincing evidence in order to overcome the presumption of validity.  Clear and convincing evidence means that it is highly probable that the fact is true. This standard is different than the standard that applies to other issues in this case. I have instructed you that other issues, such as infringement, may be found under a lower standard, namely, by a preponderance of the evidence. You may think of this “preponderance of the evidence” as slightly greater than 50%. This is different that the criminal law standard of “beyond a reasonable doubt.” You may think of this “beyond a reasonable doubt” standard as approaching certainty, without reasonable doubt. The “clear and convincing” standard is between the two.


[3] This section and below should be modified in accordance with the patent owner’s infringement contentions, e.g., where the doctrine of equivalents is not at issue,.

[4] This section and below should be modified in accordance with the Defendant’s defenses, e.g., where the Defendant has opted to not allege non-infringement or invalidity.

C. Trial Procedure

We are about to commence the opening statements in the case. Before we do that, I want to explain the procedures that we will be following during the trial and the format of the trial. This trial, like all jury trials, comes in six phases. We have completed the first phase, which was to select you as jurors.

We are now about to begin the second phase, the Opening Statements. The opening statements of the lawyers are statements about what each side expects the evidence to show. The Opening Statements are not evidence for you to consider in your deliberations. You must make your decision based on the evidence and not the lawyers’ statements and arguments.

In the third phase, the evidence will be presented to you. Witnesses will take the witness stand and documents will be offered and admitted into evidence. [Plaintiff] goes first in calling witnesses to the witness stand. These witnesses will be questioned by [the Plaintiff]’s counsel in what is called direct examination. After the direct examination of a witness is completed, the opposing side has an opportunity to cross-examine the witness. After [the Plaintiff] has presented its witnesses, [the Defendant] will call its witnesses, who will also be examined and cross-examined. The parties may present the testimony of a witness by having the individual testify live for you, by reading from their deposition transcript, or by playing a videotape of the witness’s deposition testimony. All three are acceptable forms of testimony. A deposition is the sworn testimony of a witness taken before trial and is entitled to the same consideration as if the witness had testified at trial.

The evidence often is introduced piecemeal, meaning that all of the evidence relating to an issue may not be presented all at one time but, rather, may be presented at different times during the trial. You need to keep an open mind as the evidence comes in. You are to wait until all the evidence comes in before you make any decisions. In other words, keep an open mind throughout the entire trial.

In the fourth phase, the lawyers will again have an opportunity to talk to you in what is called “Closing Argument.” As with the Opening Statements, what the lawyers say in the Closing Arguments is not evidence for you to consider in your deliberations.

In the fifth phase, I will read you the final jury instructions. I will instruct you on the law that you must apply in this case. I have already explained to you a little bit about the law. In the fifth phase, I will explain the law to you in more detail.

Finally, the sixth phase is the time for you to deliberate and reach a verdict. You will evaluate the evidence, discuss the evidence among yourselves, and make a decision in this case. We both have a job to do. You will decide the facts, and I will apply the law. I will explain the rules of law that apply to this case, and I will also explain the meaning of the patent claim language. You must follow my explanation of the law and the patent claim language, even if you do not agree with me. Nothing I say or do during the course of the trial is intended to indicate what your verdict should be on those facts that you must decide.

III. Glossary of Patent Terms

Application – The initial papers filed by the applicant in the United States Patent and Trademark Office (also called the Patent Office or PTO).

Claims – The numbered sentences or paragraphs appearing at the end of the patent that define the invention. The words of the claims define the scope of the patent owner’s exclusive rights during the life of the patent.

File wrapper – See “prosecution history” below.

License – Permission to use the patented invention(s), which may be granted by a patent owner (or a prior licensee) in exchange for a fee called a “royalty” or other compensation.

Office action – Communication from the patent examiner regarding the specification (see definition below) and/or the claims in the patent application.

Ordinary skill in the art – The level of experience, education, and/or training generally possessed by those individuals who work in the area of the invention at the time of the invention.

Patent Examiners – Personnel employed by the PTO in a specific technical area who review (examine) the patent application to determine (1) whether the claims of a patent application are patentable over the prior art considered by the examiner, and (2) whether the specification/application describes the invention with the required specificity.

Prior art (pre-AIA) – Knowledge that is available to the public either prior to the invention by the applicant or more than one year prior to the filing date of the application.

Prior Art (Post-AIA) – Knowledge that is publicly available before the effective filing date of the patent application.

Prosecution history – The written record of proceedings between the applicant and the PTO, including the original patent application and later communications between the PTO and applicant. The prosecution history may also be referred to as the “file history” or “file wrapper” of the patent during the course of this trial.

References – Any item of prior art used to determine patentability.

Specification – The information that appears in the patent and concludes with one or more claims. The specification includes the written text, the claims, and the drawings. In the specification, the inventor describes the invention, how it works, and how to make and use it.

[Others to be agreed upon between the parties]

IV. Glossary of Technical Terms

[To be agreed upon between the parties]

V. Post-Trial Instructions[5]

[5] AIPLA drafted these Model Jury Instructions assuming the litigated issues included in the instructions will be submitted to the jury. AIPLA is not suggesting that the parties have a right to a jury trial on all issues included in the instructions. The instructions used in your case should be tailored to the specific issues being litigated.

1. Summary of Patent Issues

I will now summarize the issues that you must decide and for which I will provide instructions to guide your deliberations. You must decide the following [three] main issues:

  1. Whether [the Plaintiff] has proved that [the Defendant] infringed Claim[s] [claims in dispute] of the [abbreviated patent number] patent.
  2. Whether [the Defendant] has proved that Claim[s] [claims in dispute] of the [abbreviated patent number] patent are invalid.
  3. What amount of damages, if any, [the Plaintiff] has proved.

[LIST ANY OTHER PATENT ISSUES]

2. Claim Construction

2.0 Claim Construction – Generally

Before you decide whether [the Defendant] has infringed the claims of [the Plaintiff]’s patent or whether [the Plaintiff]’s patent is invalid, you will have to understand the patent claims. The patent claims are numbered sentences at the end of the patent. The patent claims involved here are [claims in dispute], beginning at column ___, line ___ of the patent, which is exhibit ___ in evidence. The claims are intended to define, in words, the boundaries of the inventor’s rights. Only the claims of the patent can be infringed. Neither the written description, nor the drawings of a patent can be infringed. Each of the claims must be considered individually. You must use the same claim meaning for both your decision on infringement and your decision on invalidity.

35 U.S.C. § 112; Source Search Techs., LLC v. LendingTree, LLC, 588 F.3d 1063, 1075 (Fed. Cir. 2009); Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1373 (Fed. Cir. 2008); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc); Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1286 (Fed. Cir. 2002); Amazon. com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001); Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996); SmithKline Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878, 882 (Fed. Cir. 1988).

2.1 Claim Construction for the Case

It is my job as judge to provide to you the meaning of any claim language that must be interpreted. You must accept the meanings I give you and use them when you decide whether any claim has been infringed and whether any claim is invalid. I will now tell you the meanings of the following words and groups of words from the patent claims.

[READ STIPULATIONS AND COURT’S CLAIM CONSTRUCTIONS]

Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc); Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc) aff’d, 517 U.S. 370 (1996).

2.2 Construction of Means-Plus-Function Claims for the Case[6]

The patentee may express an element for a claim in the form of a “means” or step for performing a function.

The asserted claims of the [abbreviated patent number] patent include the following clause: “____________________________________”. I have determined, as a matter of law, that this is a means-plus-function element, as described in the section of the statute I read to you. This clause requires special interpretation. This element does not cover all [[means] [steps]] that perform the recited function of “____________________________________.” Rather, I have determined that the recited function is “___________________________.” I have determined that [[structure] [step]] described in the patent specification and drawings that perform this recited function is “_________________________________________,” or an equivalent this [[structure] or [step]]. You must use this interpretation of the means-plus-function [[element] [step]] in your deliberations regarding infringement and validity, as further discussed below.

35 U.S.C. § 112; Chicago Bd. Of Options Exchange, Inc. v. Int’l Secs. Exchange, LLC, 677 F,3d 1361, 1366-69 (Fed. Cir. 2012); Mettler-Toledo, Inc. v. B-Tek Scales, LLC, 671 F.3d 1291, 1295-96 (Fed. Cir. 2012); JVW Enters., Inc. v. Interact Accessories, Inc., 424 F.3d 1324, 1330-32 (Fed. Cir. 2005); Utah Med. Prods., Inc. v. Graphic Controls Corp., 350 F.3d 1376, 1381 (Fed. Cir. 2003); Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15 F.3d 1573, 1578 (Fed. Cir. 1993); Valmont Indus., Inc. v. Reinke Mfg. Co., Inc., 983 F.2d 1039, 1042 (Fed. Cir. 1993).]


[6] Give Instruction 2.2 only if the case involves means-plus-function claims. In Instruction 2.1, the court provides its construction of any terms for which a construction is needed. This should include its construction of any limitations governed by 35 U.S.C. § 112 ¶ 6, or § 112(f). Where the limitation uses the phrase “means for” or “step for,” a jury may nonetheless incorrectly conclude that the limitation includes any component or any step that accomplishes the specified function. To avoid confusing the jury, we recommend use of Instruction 2.2. Where the limitation is governed by 35 U.S.C. § 112 ¶ 6, or § 112(f), but does not use the phrase “means for” or “step for,” consideration should be given to whether Instruction 2.2 is unnecessary.

 

3. Infringement

3.0 Infringement – Generally

Questions _____ through _____ of the Verdict Form read as follows: [READ TEXT OF INFRINGEMENT VERDICT QUESTIONS].

I will now instruct you as to the rules you must follow when deciding whether [the Plaintiff] has proven that [the Defendant] infringed any of the claims of the [abbreviated patent number] patent.

Patent law gives the owner of a valid patent the right to exclude others from importing, making, using, offering to sell, or selling [[the patented invention] [a product made by a patented method]] within the United States during the term of the patent. Any person or business entity that has engaged in any of those acts without the patent owner’s permission infringes the patent. Here, [the Plaintiff] alleges that [the Defendant]’s [allegedly infringing product] infringes claim[s] [claims in dispute] of [the Plaintiff]’s [abbreviated patent number] patent.

You have heard evidence about both [the Plaintiff]’s commercial [[product] [method]] and [the Defendant]’s accused [[product] [method]]. However, in deciding the issue of infringement you may not compare [the Defendant]’s accused [[product] [method]] to [the Plaintiff]’s commercial [[product] [method]]. Rather, you must compare the [Defendant]’s accused [[product] [method]] to the claims of the [abbreviated patent number] patent when making your decision regarding infringement.

Practice Note: To avoid jury confusion, it is important to distinguish those claims that are allegedly infringed directly from those that are allegedly infringed indirectly. In addition, it is important to distinguish those claims that are allegedly infringed literally from those allegedly infringed under the doctrine of equivalents. Finally, for indirect infringement, induced infringement should be distinguished from contributory infringement. In order to provide the jury with clear guidance and avoid confusion, the Court should only charge the jury on the specific infringement issues that are actually at issue. For example, if only literal infringement is asserted, there is no need to instruct the jury on the doctrine of equivalents.

A patent may be infringed directly or indirectly. As explained further in the following instructions, direct infringement results if the accused [[product] [method]] is covered by at least one claim of the patent. Indirect infringement results if the defendant induces another to infringe a patent or contributes to the infringement of a patent by another.

35 U.S.C. § 271; Limelight Networks, Inc. v. Akamai Techs., Inc., 572 U.S. ___, 134 S. Ct. 2111, 189 L.Ed.2d 52 (2014); Merial Ltd. v. CIPLA Ltd., 681 F.3d 1283, 1302-03 (Fed. Cir. 2012); WiAV Solutions LLC v. Motorola, Inc., 631 F.3d 1257, 1264 (Fed. Cir. 2010); WordTech Sys., Inc. v. Integrated Network Solutions, Inc., 609 F.3d 1308, 1313-18 (Fed. Cir. 2010).

3.1 Direct Infringement – Knowledge of the Patent and Intent to Infringe are Immaterial

In this case, [the Plaintiff] asserts that [the Defendant] has directly infringed the patent. [the Defendant] is liable for directly infringing [the Plaintiff]’s patent if you find that [the Plaintiff] has proven that it is more likely than not that [the Defendant] made, used, imported, offered to sell, or sold the invention defined in at least one claim of [the Plaintiff]’s patent.

Someone can directly infringe a patent without knowing of the patent or without knowing that what they are doing is an infringement of the patent. They also may directly infringe a patent even though they believe in good faith that what they are doing does not infringe a patent or if they believe in good faith that the patent is invalid.

35 U.S.C. § 271(a); Medtronic, Inc. v. Mirowski Family Ventures, LLC, 571 U.S. ___, 124 S. Ct. 843 (2014); Global-Tech Appliances, Inc., v. SEB, S.A., 563 U.S. ___ , n.2, 131 S. Ct. 2060, 2065 n.2 (2011); Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 35 (1997); DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1330 (Fed. Cir. 2001); Seal-Flex, Inc. v. Athletic Track & Court Constr., 172 F.3d 836, 842 (Fed. Cir. 1999); SmithKline Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988).

3.2 Direct Infringement – Literal Infringement

To determine literal infringement, you must compare the accused [[product] [method]] with each claim that [the Plaintiff] asserts is infringed, using my instructions as to the meaning of the patent claims.

A patent claim is literally infringed only if [the Defendant]’s [[product] [method]] includes each and every [[element] [method step]] in that patent claim. If [the Defendant]’s [[product] [method]] does not contain one or more [[elements] [method steps]] recited in a claim, [the Defendant] does not literally infringe that claim.

You must determine literal infringement with respect to each patent claim individually.

The accused [[product] [method]] should be compared to the invention described in each patent claim it is alleged to infringe.  The same [[element] [method step]] of the accused [product] [method] may satisfy more than one element of a claim.

Intellectual Sci. & Tech. v. Sony Elect., 589 F.3d 1179, 1183 (Fed. Cir. 2009); Hutchins v. Zoll Med. Corp., 492 F.3d 1377, 1380 (Fed. Cir. 2007); BMC Resources v. Paymentech, L.P., 498 F.3d 1373, 1381-82 (Fed. Cir. 2007); DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1330-31 (Fed. Cir. 2001); Gen. Mills, Inc. v. Hunt-Wesson, Inc., 103 F.3d 978, 981 (Fed. Cir. 1997); Martin v. Barber, 755 F.2d 1564, 1567 (Fed. Cir. 1985); Amstar Corp. v. Envirotech Corp., 730 F.2d 1476, 1481-82 (Fed. Cir. 1984).

3.2.1 Direct Infringement – Joint Infringement[7]

In this case, [the Defendant] is accused of direct infringement. [the Defendant] asserts that it has not directly infringed the [abbreviated patent number] patent because it did not perform each step of a claimed method or did not perform all the steps necessary to make, sell, offer for sale, or import [allegedly infringing product] because [another party] performed one of more of the acts necessary to infringe. If you find that one or more of the steps cannot be attributed to [the Defendant], then you must find that there is no joint infringement. For example, if you find that several parties have collectively committed the acts necessary to infringe but no single party has committed all of the required acts, then you must find that there is no joint infringement.

However, if you find that [the Defendant] performed all of the acts necessary to infringe, either personally or that the steps performed by the other person are attributable to [the Defendant], [the Defendant] directly infringes. In determining whether the steps are attributable to [the Defendant], you should consider whether [the Defendant] exercised direction or control over [the other party] when it performed these acts.

If you find that [the Defendant] and [the other party] have a contract that requires [the other party] to perform a step [[steps]] of the claimed method on [the Defendant]’s behalf, then you should find that [the Defendant] has granted [the other party] authority to act on [the Defendant]’s behalf and that [the other party] has agreed to so act.

Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008); BMC Resources v. Paymentech, L.P., 498 F.3d 1373, 1381-82 (Fed. Cir. 2007). Limelight Networks, Inc. v. Akami Techs., Inc., 572 U.S. ___, 134 S. Ct. 2111, 189 L.Ed.2d 52 (2014).

Practice Note:  The concepts of direct infringement based on joint infringement and indirect infringement based on inducement to infringe (Instruction 3.10) are closely-related and may be confusing to the jury. Care should be taken to be clear regarding the instructions on each issue and what findings the jury is being asked to make. Only if these theories of infringement are alleged and have been adequately supported by sufficient evidence should these instructions be given. If both instructions are being given, consideration should be given to instructing on joint infringement and inducement to infringe (Instruction 3.10) back-to-back and in a manner that readily allows the jury to appreciate the difference between the two theories, the evidence required to support each, and the specific findings they are being asked to make on each.

Give instructions on Joint Infringement and Active Inducement to Infringe only if these issues are raised and are adequately supported by the evidence.

3.3 Literal Infringement of Means-Plus-Function or Step-Plus Function Claims[8]

The Court has instructed you that claims _____ through _____of the [abbreviated patent number] patent contain [[means-plus-function] [step-plus-function]] clauses. To establish infringement, [the Plaintiff] must prove that it is more likely than not that the [[part of the Defendant’s product] [step in the Defendant’s method]]: (1) performs the recited function of “_______________________________________________”; and (2) is identical or equivalent to the [[structure] [step]] described in the patent specification and drawings for performing this recited function, namely, “_____________________________________.”

In deciding whether [the Plaintiff] has proven that [the Defendant]’s [[product] [method]] includes structure covered by a [[means-plus-function] [step-plus-function]] requirement, you must first decide whether the [[product] [method]] has any [[structure] [step]] that performs the specific function [step] that I just described to you. If not, the claim containing that means-plus-function [or step-plus-function] requirement is not infringed.

Even if you find that [the Defendant]’s [product] [method] includes some [structure] [step] that performs this specific function, you must next decide whether the [structure] [step ] in [the Defendant]’s [[product] [method] is the same as, or equivalent to, the structure recited in the specification for performing this specific function.

Whether the [[structure] [act]] of the accused product is equivalent to a [[structure] [act]] described in the patent specification is decided from the perspective of a person of ordinary skill in the art. If a person of ordinary skill in the art would consider the differences between the [[structure] [act]] found in [the Defendant]’s product and a [[structure] [act]] described in the patent specification to be insubstantial, the [[structures] [acts]] are equivalent. One way of showing that an element is insubstantially different is to show that it performs substantially the same function, in substantially the same way, to achieve substantially the same result as would be achieved by the element that is not literally present in the accused [[structure]][[act]].

Only if you find both that [the Defendant]’s [product] [method] has the same or equivalent [structure] [step] for performing the specific function can you find that the claim containing the [means-plus-function] or [step-plus-function] limitation is infringed. If you find that either the recited [structure] [step] is not performed or that the [structure] [step] in [the Defendant]’s product that performs this specific function is not the same or  equivalent, you must find that the claim containing the means-plus-function limitation is not infringed.

35 U.S.C. § 112; Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1457 (Fed. Cir. 1998) (en banc); In re Donaldson Co., Inc., 16 F.3d 1189, 1193 & 1195 (Fed. Cir. 1994) (en banc); Chicago Bd. Options Exchange, Inc. v. Int’l. Secs. Exchange, LLC, 677 F.3d 1361, 1366-69 (Fed. Cir. 2012); Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1304-05 (Fed. Cir. 2011); General Protecht Gp., Inc. v. Int’l Trade Comm’n., 619 F.3d 1303, 1312-13 (Fed. Cir. 2010); Baran v. Med. Device Tech., Inc., 616 F.3d 1309, 1316-17, (Fed. Cir. 2010); Intellectual Sci. and Tech., Inc. v. Sony Elecs., Inc., 589 F.3d 1179, 1183 (Fed. Cir. 2009); Applied Med. Resources Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333-34 (Fed. Cir. 2006); Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1307-09 (Fed. Cir. 1998); Kraft Foods Inc. v. Int’l Trade Comm., 203 F.3d 1362, 1371-73 (Fed. Cir. 2000).


[8] This Instruction should be given only if infringement of a means-plus-function claim is asserted and there is sufficient evidence to support this assertion.

3.4 Infringement of Dependent Claims

There are two different types of claims in the patent. One type is called an independent claim. The other is called a dependent claim.

An independent claim does not refer to any other claim of the patent. For example, [Independent Claim] is an independent claim. An independent claim must be read separately from the other claims to determine the scope of the claim.

A dependent claim refers to at least one other claim in the patent. For example, [Dependent Claim] is a dependent claim that refers to claim [Independent Claim]. A dependent claim includes all of the elements recited in the dependent claim, as well as all of the elements of [Independent Claim] the claim to which it refers.

To establish literal infringement of [Dependent Claim], [the Plaintiff] must show that it is more likely than not that the [Defendant]’s [[product] [method]] includes each and every element of [Independent Claim] and [Dependent Claim].

If you find that [Independent Claim] from which [Dependent Claim] depends is not literally infringed, then you must find that [Dependent Claim] is also not literally infringed.

Wolverine World Wide v. Nike Inc., 38 F.3d 1192, 1196-99 (Fed. Cir. 1994) (citing Johnston v. IVAC Corp., 885 F.2d 1574, 1577-89 (Fed. Cir. 1989)); Wilson Sporting Goods v. David Geoffrey & Assocs., 904 F.2d 677, 685-86 (Fed. Cir. 1990); Wahpeton Canvas Co., Inc. v. Frontier, Inc., 870 F.2d 1546, 1552-53 nn.9&10 (Fed. Cir. 1989); Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 626 (Fed. Cir. 1985).

3.5 Infringement of Open Ended or “Comprising” Claims

(Alternative 1: “comprising”) The preamble to claim _____ uses the phrase [RECITE THE PREAMBLE “_________ comprising”]. The word “comprising” means “including the following but not excluding others.”

If you find that [the Defendant]’s [[product] [method]] includes all of the elements in claim _____, and that [the Defendant]’s [[product] [method]] it may include additional [[components] [method steps]], you must find that [the Defendant]’s [product] [ method] literally infringes claim _____.

(Alternative 2: “consisting of”) The preamble to claim _____ uses the phrase [RECITE THE PREAMBLE “_________ consisting of”]. The word “consisting of” means “including the following and excluding others.”

If you find that [the Defendant]’s [[product] [method]] includes all of the elements in claim _____, and that [the Defendant]’s [[product] [method]] includes additional [[components] [method steps]], you must find that [the Defendant]’s product does not literally infringe claim _____.

(Alternative 3: “consisting essentially of”) The preamble to claim _____ uses the phrase [RECITE THE PREAMBLE “_________ consisting essentially of”]. The words “consisting essentially of” mean “including the following and possibly including unlisted [components][method steps] that do not materially affect the invention.”

CIAS Inc. v. Alliance Gaming Corp., 504 F.3d 1356 (Fed. Cir. 2007); Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1331(Fed. Cir. 2004); Invitrogen Corp. v. Biocrest Mfg. LP, 327 F.3d 1364, 1368 (Fed. Cir. 2003); AFG Indus. v. Cardinal IG Co., 239 F.3d 1239, 1244-45 (Fed. Cir. 2001); PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1271 (Fed. Cir. 1986); AB Dick Co. v. Burroughs Corp., 713 F.2d 700, 703 (Fed. Cir. 1983).

Practice Note:  If the accused product or method includes all of the elements of the claim and also additional components or steps as well, the jury must find literal infringement as long as the additional elements do not negate any claim element.If the claim is literally infringed, there is no need to resort to the doctrine of equivalents. Similarly, the doctrine of equivalents is available only if one or more of the claim elements is not literally met. The patentee should be required to state their theory of infringement prior to trial and the jury should be charged on only the theory of infringement—literal and/or equivalents—that is adequately supported by the evidence.

 

3.6 Direct Infringement – Infringement Under the Doctrine of Equivalents[9]

If you decide that [the Defendant]’s [[product] [method]] does not literally infringe an asserted patent claim, you must then decide whether it is more probable than not that [[product] [method]] infringes the asserted claim under what is called the “doctrine of equivalents.” Under the doctrine of equivalents, the [[product] [method]] can infringe an asserted patent claim if it includes [[parts] [steps]] that are equivalent to those elements of the claim that are not literally present in the [[product][method]]. If the [[product] [method]] is missing an equivalent [[part] [step]] to even one [[part] [step]] of the asserted patent claim, the [[product] [method]] cannot infringe the claim under the doctrine of equivalents. Thus, in making your decision under the doctrine of equivalents, you must look at each individual element of the asserted patent claim and decide whether the [[product] [method]] has an equivalent [[part] [step]] to the individual claim element(s) that are not literally present in the [[product][method]].

An equivalent of an element is a [[component]][[action]] that is insubstantially different from the claimed element. One way of showing that an element is insubstantially different is to show that it performs substantially the same function, in substantially the same way, to achieve substantially the same result as would be achieved by the element that is not literally present in the accused [[product]][[method]].

In deciding whether any difference between a claim requirement and the [[product] [method]] is not substantial, you may consider whether, at the time of the alleged infringement, persons of ordinary skill in the field would have known of the interchangeability of the [[part] [step]] with the claimed requirement. The known interchangeability between the claim requirement and the [[part] [step]] of the [[product] [method]] is not necessary to find infringement under the doctrine of equivalents.

[Further, the same [[element] [method step]] of the accused [[product] [method]] may satisfy more than one element of a claim. If you find that all of the remaining elements of the claim are present in the accused [[product] [method]] and, further, that these differences are insubstantial, you may find infringement under the doctrine of equivalents.][10]

[Further, two [[elements] [methods]] of the accused [[product] [method] may satisfy a single claimed. If you find that all of the remaining elements of the claim are present in the accused [[product] [method]] and, further, that these differences are insubstantial, you may find infringement under the doctrine of equivalents.][11]

Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997); Graver Tank & Mfg. Co, v. Linde Air Prods. Co., 339 U.S. 605, 609 (1950); Johnson & Johnston Assoc. v. R.E. Serv. Co., 285 F.3d 1046, 1053-54 (Fed. Cir. 2002) (en banc); Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1480 (Fed. Cir. 1998); Dolly, Inc. v. Spalding & Evenflo Cos., 16 F.3d 394, 397 (Fed. Cir. 1994); Datascope Corp. v. SMEC, Inc., 776 F.2d 320, 325 (Fed. Cir. 1985); Eagle Comtronics, Inc. v. Arrow Commc’n. Labs., Inc., 305 F.3d 1303, 1316-17 (Fed. Cir. 2002); DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1332, 57 USPQ2d 1889, 1900 (Fed. Cir. 2001) (citing Dolly, Inc. v. Spalding & Evenflo Cos., Inc., 16 F.3d 394, 398, 29 USPQ2d 1767, 1769-70 (Fed. Cir. 1994)).


[9] This additional Instruction on equivalents should be given only if infringement under the doctrine of equivalents is properly before the court.

[10] Eagle Comtronics, Inc. v. Arrow Commc’n. Labs., Inc., 305 F.3d 1303, 1316-17 (Fed. Cir. 2002); DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1332, 57 USPQ2d 1889, 1900 (Fed. Cir. 2001) (citing Dolly, Inc. v. Spalding & Evenflo Cos., Inc., 16 F.3d 394, 398, 29 USPQ2d 1767, 1769-70 (Fed. Cir. 1994)).

[11] Id.

3.7 Limitations on the Doctrine of Equivalents – Prior Art[12]

The patentee is not entitled to a scope of equivalents under the “doctrine of equivalents” that is so broad that the claim would cover [[products] [methods]] that were already in the prior art. In this case, [the Defendant] alleges that the scope of the claim under the doctrine of equivalents asserted by [the Plaintiff] would cover the prior art, namely, __________________ __________________________________________________________________. In order to show that [the Plaintiff] is not entitled to this scope of equivalents, [the Defendant] must prove to you that ____________ ______________________ ____________________ ___________ was in the prior art.[13] [The Defendant] must show that it was in the prior art by a preponderance of the evidence. This is different, and lower, namely, more likely than not, than the burden Defendant has to prove invalidity by clear and convincing evidence.

If you find that the claim including the alleged equivalent, namely, ______________ _______________________ was in the prior art, then you must find that [the Defendant] does not infringe the claim under the doctrine of equivalents. If you find that [the Defendant] has not proven to you that it is more likely than not that ­­­­­­­­­­­­­­­­­­­________________________________ _____________________________________ is in the prior art, you may consider that [the Defendant] has not established this defense.

DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1322-24 (Fed. Cir. 2009); Fiskars, Inc. v. Hunt Mfg. Co., 221 F.3d 1318, 1323 (Fed. Cir. 2000); Conroy v. Reebok Int’l, Ltd., 14 F.3d 1570, 1576-77 (Fed. Cir. 1994); Wilson Sporting Goods Co. v. David Geoffrey & Assocs., 904 F.2d 677, 683-85 (Fed. Cir. 1990).

Practice Note:  The doctrine of prosecution history estoppel is determined by the Court. The following Instruction should be given only if the Court has determined that the doctrine of prosecution history estoppel applies as a matter of law. Specifically, this requires that the patentee made a representation or argument, or that an amendment to the claim was made for reasons related to patentability, and the presumption that the equivalent subject matter has been surrendered by the patentee has not been rebutted.

 

[12] This Instruction should be given only if the Defendant has identified sufficient evidence that this issue is genuinely disputed.

[13] Although “ensnarement” is a question of law, a court may obtain an Advisory Verdict on this question necessitating inclusion of Instruction 3.7. In particular, the Federal Circuit has held that the question of whether the scope of a claim under the doctrine of equivalents ensnares the prior art is “ultimately . . . a question of law for the court, not the jury, to decide,” but “[i]f a district court believes that an advisory verdict would be helpful, and that a ‘hypothetical’ claim construct would not unduly confuse the jury as to equivalence and validity, then one may be obtained under Federal Rule of Civil Procedure 39(c).” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1324 (Fed. Cir. 2009).

3.8 Limitations on the Doctrine of Equivalents – Prosecution History Estoppel[14]

In this case, I have determined, as a matter of law, that the doctrine of equivalents cannot be applied to certain elements of the asserted claims. I am instructing you that the following elements cannot be considered equivalents to elements of the asserted claims:

[List Elements on a claim by claim basis]

Consequently, each of the elements above must be literally present within [the Defendant]’s [[product] [method]] for there to be infringement of the claim.

As for the remaining elements of the asserted claims not listed above, you are permitted to find these elements with the doctrine of equivalents analysis that I instructed you on earlier.

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002); Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 30-34 (1997); Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359, 1366-67 (Fed. Cir. 2003) (en banc).


[14] This Instruction should be given only if the Defendant has identified sufficient evidence that this issue is genuinely disputed.

3.9 Limitations on the Doctrine of Equivalents – Subject Matter Dedicated to the Public[15]

When a patent discloses subject matter but does not include it within its claims, the patentee has dedicated the unclaimed subject matter to the public. If [the Patentee] alleges that a [[component] [step]] of [the Defendant]’s [product] [method] that [the patent] discloses but does not claim is equivalent to a limitation of the claim that is missing from [the Defendant]’s [product] [method] the [component] [step] cannot be an equivalent. Instead, the subject matter that was disclosed but not claimed is dedicated to the public. This is true even if the failure to claim the subject matter was wholly unintentional.

In this case, I have determined as a matter of law, that certain subject matter from the patent has been dedicated to the public and the doctrine of equivalents analysis cannot be applied to the following elements of the asserted claims:

[LIST ELEMENTS ON A CLAIM-BY-CLAIM BASIS]

Unless you find that each of the elements of the claims is literally present in [the Defendant]’s [[product] [method]], you must find that there is no infringement.

Pfizer, Inc. v. Teva Pharms., USA, Inc., 429 F.3d 1364, 1378-79 (Fed. Cir. 2005); Toro Co. v. White Consol. Indus., Inc., 383 F.3d 1326 (Fed. Cir. 2004); Johnson & Johnston Assocs. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1054-55 (Fed. Cir. 2002) (en banc).

 

Practice Note:  The concepts of direct infringement based on joint infringement (Instruction 3.2) and indirect infringement based on inducement to infringe are closely-related and may be confusing to the jury. Care should be taken to be clear regarding the instructions on each issue and what findings the jury is being asked to make. Only if these theories of infringement are alleged and have been adequately supported by sufficient evidence should these instructions be given. If both instructions are being given, consideration should be given to instructing on joint infringement (Instruction 3.2) and inducement to infringe back-to-back and in a manner that readily allows the jury to appreciate the difference between the two theories, the evidence required to support each, and the specific findings they are being asked to make on each

[15] This Instruction should be given only if the Defendant has identified sufficient evidence that this issue is genuinely disputed.

3.10 Actively Inducing Patent Infringement

In this case, [the Defendant] is accused of actively inducing [another entity] to directly infringe [the Plaintiff]’s patent, either literally or under the doctrine of equivalents. To find that [the Defendant] actively induced infringement, it is not necessary to show that [the Defendant] personally directly infringed, provided: (1) a single actor is responsible for direct infringement, namely, all of the [components] [steps] of the [product] [method] accused of infringing the patent; and (2) [the Defendant] actively induced these acts of infringement by [another entity]. If you do not find that there is direct infringement by a single actor, or if you do not find that [the Defendant] actively induced these acts, you must find that [the Defendant] did not induce infringement of the patent.[16] To prove active inducement, [the Plaintiff] must establish that it is more likely than not that:

  1. [the Defendant] aided, instructed, or otherwise acted with the intent to cause acts by [alleged direct infringer] that would constitute direct infringement of the patent;
  2. [the Defendant] knew of the patent, or showed willful blindness to the existence of the patent, at that time;
  3. [the Defendant] knew, or showed willful blindness that it consciously ignored the possibility that its actions would infringe at least one claim of the patent; and
  4. [alleged direct infringer] infringed at least one patent claim.

To find willful blindness: (1) [the Defendant] must have subjectively believed that there was a high probability that a patent existed covering [the accused product/process]; and (2) [the Defendant] must have taken deliberate actions to avoid learning of the patent.

35 U.S.C. § 271(b); Limelight Networks, Inc. v. Akamai Techs., Inc., 572 U.S. ___, 134 S. Ct. 2111, 189 L.Ed.2d 52 (2014); Global-Tech Appliances, Inc., v. SEB, S.A., 563 U.S. ___, 131 S. Ct. 2060 (2011); Commil USA, LLC v. Cisco Sys., Inc., 720 F.3d 1361, 1368 (Fed. Cir. 2013); DSU Medical Corp. v. JMS Co., 471 F.3d 1293, 1304-05 (Fed. Cir. 2006) (en banc) (quoting Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913, 936 (2005)); Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1365 (Fed. Cir. 2004); Ferguson Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1342 (Fed. Cir. 2003); Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 553 (Fed. Cir. 1990); Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468-69 (Fed. Cir. 1990).

Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 682 F.3d 1003, 1006-08 (Fed. Cir. 2012); Powell v. Home Depot USA, Inc., 663 F.3d. 1221, 1236-37 (Fed. Cir. 2011); i4i Ltd. P’Ship. v. Microsoft Corp., 598 F.3d 831, 859-60 (Fed. Cir. 2010); Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1319 (Fed. Cir. 2010); In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc); Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337, 1347 (Fed. Cir. 2004) (en banc). 

Practice Note: Each of the theories of indirect infringement has a number of elements and the Instructions tend to be complex. In order to avoid the risk of jury confusion, it is important to instruct the jury on only those issues that are properly before the Court. Consideration should be given to using case management techniques, such as charging the jury and having the jury deliberate on specific issues separately, to reduce the risk of confusion

 

[16] The issue of active inducement to infringe is currently the subject of a petition for a writ of certiorari to the Federal Circuit, in Commil v. Costco, Docket No. 13-896,

3.11 Infringement by Supply of all or a Substantial Portion of the Components of a Patented Invention to Another Country (§ 271(f)(1))

[Plaintiff] asserts that [Defendant] infringed the [abbreviated patent number] patent by supplying [or causing to be supplied] all or a substantial portion of the components of the patented product from the United States to another country and actively inducing the assembly of those components into a product that would infringe the [abbreviated patent number] patent if they had been assembled in the United States.

To show infringement under Section 271(f)(1), [the Plaintiff] must prove that each of the following is more likely than not:

  1. the product, as it was intended to be assembled outside the United States, [included][would have included] all limitations of at least one of claims ____ of the [abbreviated patent number] patent;
  2. [the Defendant] supplied [or caused to be supplied] components from the United States that made up all or a substantial portion of the invention of any one of claims _____ of the [abbreviated patent number] patent; and
  3. [the Defendant] specifically intended to induce the combination of the components into a product that would infringe the [abbreviated patent number] patent if the components had been combined in the United States.

35 U.S.C. § 271(f)(1); Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc. 576 F.3d 1348, 1359-67 (Fed. Cir. 2009); Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 453-56 (2007); Minn. Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1304-05 (Fed. Cir. 2002).

3.12 Contributory Infringement

[The Plaintiff] asserts that [the Defendant] has contributed to infringement by another person.

To establish contributory infringement, [the Plaintiff] must prove that it is more likely than not that [the Defendant] had knowledge of both the patent and direct infringement of that patent. Plaintiff must prove that each of the following is more likely than not:

  1. someone other than [the Defendant] has directly infringed the [abbreviated patent number] patent;
  2. [the Defendant] sold, offered for sale, or imported within the United States a component of the infringing product or an apparatus for use in the infringing process;
  3. the component or apparatus is not a staple article or commodity of commerce capable of substantial non-infringing use;
  4. the component or apparatus constitutes a material part of the patented invention; and
  5. [the Defendant] knew that the component was especially made or adapted for use in an infringing [[product] [method]].

Proof of [the Defendant’s] knowledge may be shown with evidence of willful blindness where [the Defendant] consciously ignored the existence of both the patent and direct infringement of that patent. To find willful blindness: (1) [the Defendant] must have subjectively believed that there was a high probability that a patent existed covering [the accused product/process] and (2) [the Defendant] must have taken deliberate actions to avoid learning of the patent.

A “staple article or commodity of commerce capable of substantial non-infringing use” is something that has uses [[other than as a part or component of the patented product] [other than in the patented method]], and those other uses are not occasional, farfetched, impractical, experimental, or hypothetical.

To find contributory infringement, it is not necessary to show that [the Defendant] has directly infringed as long as you find that someone has directly infringed. If you find that there is no direct infringement by any one single entity, you must find that [the Defendant] did not contribute to the infringement of the patent.

35 U.S.C. § 271(c); Global-Tech Appliances, Inc., v. SEB, S.A., 563 U.S. ___, 131 S. Ct. 2060, 2068-70 (2011); Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 488 (1964); Commil USA, LLC v. Cisco Sys., Inc., 720 F.3d 1361, 1368 (Fed. Cir. 2013); Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1362 (Fed. Cir. 2012); R+L Carriers, Inc. v. DriverTech LLC, 681 F.3d 1323, 1337 (Fed. Cir. 2012); Spansion, Inc. v. Int’l Trade Comm’n, 629 F.3d 1331, 1353 (Fed. Cir. 2010); Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 1326 (Fed. Cir. 2010).

3.13 Infringement by Supply of Components Especially Made or Adapted for Use in the Patented Invention into Another Country (§ 271(f)(2))

[The Plaintiff] asserts that [the Defendant] infringed the [abbreviated patent number] patent by supplying [or causing to be supplied] [a component][components] of an invention covered by at least one claim of the [abbreviated patent number] patent from the United States into a foreign country, where the exported component[s] [was][were] especially made or especially adapted for use in an invention covered by the [abbreviated patent number] patent and [has][have] no substantial non-infringing use[s], and where [the Defendant] knew the component[s] [was][were] especially made or adapted for use in the patented invention and intended for the component[s] to be combined in a way that would have infringed the [abbreviated patent number] patent if the combination had occurred in the United States.

To show infringement under Section 271(f)(2), [the Plaintiff] must prove that each of the following is more likely than not:

  1.  [the Defendant] actually supplied the components from the United States into a foreign country or caused them to be supplied from the United States to a foreign country;
  2. [the Defendant] knew or should have known that the components were especially made or adapted for use in a product that infringes the [abbreviated patent number] patent;
  3. those components have no substantial non-infringing use; and
  4. [the Defendant] intended for the components to be combined into that product . It is not necessary for you to find that the components actually were combined into an infringing product, as long as you find that [Defendant] intended the components to be combined into a product that would have infringed the [abbreviated patent number] patent if they had been combined in the United States.

35 U.S.C. § 271(f)(2); Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc. 576 F.3d 1348, 1359-67 (Fed. Cir. 2009); Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 453-56 (2007); Waymark Corp. v. Porta Sys. Corp., 245 F.3d 1364, 1367-69 (Fed. Cir. 2001); Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1257-58 (Fed. Cir. 2000).

3.14 Infringement by Import, Sale, Offer for Sale or Use of Product Made by Patented Process (§ 271(g))

[Plaintiff] asserts that [Defendant] infringed the [abbreviated patent number] patent by [importing][selling][offering for sale][using] a product that was made by a process covered by one or more claims of the [abbreviated patent number] patent.

To show infringement under Section 271(g), [the Plaintiff] must prove that each of the following is more likely than not:

  1.  [the Defendant] [imported][sold][offered for sale][used] a product that was made by a process that includes all steps of at least one claim of the [abbreviated patent number] patent;
  2. the product was made between [issue date of patent] and [expiration date of patent][date of trial];
  3. [the Defendant] [imported][sold][offered for sale][used] the product between [issue date of patent] and [expiration date of patent][date of trial].

You must decide whether the evidence presented at trial establishes that the product [imported][sold][offered for sale][used] by the Defendant was “made by” the patented process. However, if you find that either: (a) the product [imported][sold][offered for sale][used] was materially changed by later processes, or (b) the product is only a trivial or non-essential part of another product, you must find that the product [imported][sold][offered for sale][used] by the Defendant was not “made by” by the patented process.[17]

35 U.S.C. § 271(g); Amgen Inc., v. F. Hoffman-La Roche Ltd., 580 F.3d 1340 (Fed. Cir. 2009); Mycogen Plant Sci., Inc. v. Monsanto Co., 252 F.3d 1306 (Fed. Cir. 2001); Biotec Biologische Naturvenpackungen GmbH v. BioCorp., Inc., 249 F.3d 1341 (Fed. Cir. 2001); Eli Lilly & Co. v. American Cyanamid Co., 82 F.3d 1568 (Fed. Cir. 1996); Bio-Technology Gen. Corp. v. Genentech, Inc., 80 F.3d 1553 (Fed. Cir. 1996).


[17] In cases where the patentee is unable to determine the process by which the product at issue is made, and the prerequisites of 35 U.S.C. § 295 are satisfied, the presumption of Section 295 may also need to be included in this instruction, requiring the accused infringer to rebut a presumption that the product was made by the patented process.

4. Summary of Invalidity Defense

[The Defendant] contends that the asserted claim[s] of the patent[s]-in-suit are invalid. [The Defendant] must prove that it is highly probable that each asserted claim is invalid.

Claims of an issued patent may be found to be invalid. Thus, you must determine whether each of [the Plaintiff]’s claims is invalid.

[The Defendant] contends that patent claims [insert claim numbers] are invalid for the following reasons:

[Insert invalidity contentions]

I will now instruct you in more detail why [the Defendant] alleges that the asserted claim[s] of the [abbreviated patent numbers] is/are invalid.

Practice Note: Jury Instructions on prior art are always complex and potentially confusing. Following implementation of the AIA, different legal principles are applicable to pre-AIA and post-AIA claims, requiring multiple instructions on similar issues, under different controlling legal principles. Consideration should be given by the Court whether to bifurcate the issues of validity of pre-AIA claims from post-AIA claims, or to separately instruct and have the jury deliberate to a verdict on these issues, in order to avoid undue burden and jury confusion. At a minimum, the issues that the jury needs to decide must be clearly identified and the instructions limited to these issues.

5. Prior Art

5.0 Prior Art Defined (For patent claims having a priority date before March 16, 2013)

Prior art includes any of the following items received into evidence during trial:

  1. any [product] [method] that was publicly known or used by others in the United States before the patented invention was made;
  2. patents that issued more than one year before the filing date of the patent, or before the invention was made;
  3. publications having a date more than one year before the filing date of the patent, or before the invention was made;
  4. any [product] [method] that was in public use or on sale in the United States more than one year before the patent was filed;
  5. any [product] [method] that was made by anyone before the named inventors created the patented [product] [method] where the [product] [method] was not abandoned, suppressed, or concealed.

In this case, [the Defendant] contends that the following items are prior art:

[Identify the prior art admitted into evidence by name]

35 U.S.C. § 102 (pre-AIA).

5.0 Prior Art Defined (For patent claims having a priority date after March 16, 2013)

  1. any claimed invention that was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public anywhere in the world before the effective filing date of the current patent; or
  2. any claimed invention that was described in a patent, or in an application for patent published or deemed published, in which the patent or application names another inventor and was filed before the effective filing date of the current patent;

Exceptions to Prior Art:

  1. A disclosure made 1 year or less before the effective filing date of the current claim[s] shall not be prior art to claim[s] ___________ of the [abbreviated patent number] patent if:

A. the disclosure was made by the inventor or joint inventor named in the current patent or by another person who obtained the subject matter disclosed directly or indirectly from such inventor; or

B. the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or another person who obtained the subject matter disclosed directly or indirectly from such inventor.

  1. A disclosure shall not be prior art to claim[s] _________ of the [abbreviated patent number] if:

A. the subject matter disclosed was obtained directly or indirectly from the inventor or joint inventor named in the [abbreviated patent number] patent;

B. the subject matter disclosed had, before the effective filing date of the current patent, been publicly disclosed by the inventor or joint inventor named in the [abbreviated patent number] patent or another person who obtained the subject matter disclosed directly or indirectly from such inventor; or

C. the subject matter disclosed and the claimed invention, not later than the effective filing date of the [abbreviated patent number] patent, were owned by the same person or subject to an obligation of assignment to the same person.

Practice Note:  While AIA § 102(a) does not use the term “disclosure,” that section expressly identifies as “prior art” things existing before the effective filing date of the application claiming the invention that have been: (i) patented, (ii) described in a printed publication, (iii) in public use, (iv) on sale, or (v) otherwise available to the public. The term “disclosure” is used in AIA § 102(b) to describe “exceptions” to one of the disclosure means identified in AIA § 102(a) which made the claimed invention (or elements thereof) publicly accessible. This is consistent with the USPTO’s AIA Examination Guidelines, 78 Fed. Reg. 11059, Feb. 14, 2013.  Some commentators still question whether the AIA repudiated the doctrine of Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts, 153 F.2d 516 (2d Cir. 1945), which barred patentability where an inventor/patentee (but not third parties) secretly, but commercially, practiced a claimed invention more than one year before its filing date

In this case, [the Defendant] contends that the following items are prior art: [identify prior art by name]

35 U.S.C. § 102 as amended by the Leahy-Smith America Invents Act of 2011.

COMMENTS:

“Effective filing date” is defined under 35 U.S.C. § 100(i).

Practice Note: The issues on which the jury is being asked to make factual findings should be identified clearly and concisely. For example, if the parties dispute the status of a reference as prior art due to its date, public availability, or other factors, these issues should be identified clearly to the jury in the instructions in order to avoid jury confusion.

 

5.1 Prior Art Considered or Not Considered by the USPTO

Regardless whether particular prior art reference[s] was/were considered by the USPTO Examiner during the prosecution of the application which matured into the [the abbreviated number] patent, [the Defendant] must prove that the challenged claim[s] is/are invalid. [The Defendant] must do so by clear and convincing evidence. This burden of proof on [the Defendant] never changes regardless whether or not the Examiner considered the reference.

Microsoft Corp. v. i4i Ltd. P’ship., 564 U.S. __, 131 S. Ct. 2238, 2251 (2011); Sciele Pharma Inc. v. Lupin LTD, 684 F.3d 1253, 1260 (Fed. Cir. 2012; SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1355-56 (Fed. Cir. 2000); Grp. One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297, 1306 (Fed. Cir. 2005).

5.2 Invalidity of Independent and Dependent Claims

There are two different types of claims in the patent. One type is called an independent claim. The other is called a dependent claim.

An independent claim does not refer to any other claim of the patent. For example, [Independent Claim] is an independent claim. An independent claim must be read separately from the other claims to determine the scope of the claim.

A dependent claim refers to at least one other claim in the patent. For example, [Dependent Claim] is a dependent claim that refers to claim [Independent Claim]. A dependent claim includes all of the elements recited in the dependent claim, as well as all of the elements of [Independent Claim] the claim to which it refers.

[IDENTIFY THE DIFFERENCES BETWEEN [Independent Claim] AND [Dependent Claim]]. [Dependent Claim] requires each of the elements of [Dependent Claim], as well as all of the additional elements of [Independent Claim].

You must evaluate the invalidity of each asserted claim separately. Even if an independent claim is invalid, this does not mean that the dependent claims that depend from it are automatically invalid. Rather, you must consider the validity of each claim, separately. You must decide this issue of validity on a claim-by-claim basis. However, if you find that a dependent claim is invalid, then you must find that the independent claim from which it depends is also invalid. The dependent claim includes all of the elements of the independent claim from which it depends.

Comaper Corp. v. Antec. Inc., 596 F.3d 1343, 1350 (Fed. Cir. 2010); Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1344 (Fed. Cir. 2009); Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007).

5.3 Person of Ordinary Skill in the Art (For patent claims having a priority date before March 16, 2013)

The question of invalidity of a patent claim is determined from the perspective of a person of ordinary skill in the art in the field of the asserted invention as of [date].

You must determine the level of ordinary skill in the field of the invention. The higher the level of ordinary skill, the easier it may be to establish that an invention would have been obvious. Persons having a greater level of education, training, or experience in the field will more readily appreciate technical details that may be more challenging for persons having a lower level of skill. On the other hand, persons having a lower level of skill may not perceive as obvious technical details that would be apparent to persons having greater skill. In order to determine the obviousness of the invention you will be asked to determine what the ordinary level of skill was in the field of the invention. Regardless whether you decide to articulate in your verdict what you believe was the level of ordinary skill in the field of the invention, you must consider and assess this factor before reaching your conclusion in this case.

35 U.S.C. § 103 (pre-AIA).

5.3 Person of Ordinary Skill in the Art (For patent claims having a priority date on or after March 16, 2013)

The question of invalidity of a patent claim is determined from the perspective of a person of ordinary skill in the art in the field of the asserted invention as of [the effective filing date of the patent(s)].

You must determine the level of ordinary skill in the field of the invention. In order to determine the obviousness of the invention you will be asked to determine what the ordinary level of skill was in the field of the invention. Regardless whether you decide to articulate in your verdict what you believe was the level of ordinary skill in the field of the invention, you must consider and assess this factor before reaching your conclusion in this case.

35 U.S.C. § 103 as amended by the Leahy-Smith America Invents Act of 2011.

6. Anticipation

6.0 Anticipation

If a device or process has been previously invented and disclosed to the public, then it is not new, and therefore the claimed invention is “anticipated” by the prior invention. Simply put, the invention must be new to be entitled to patent protection under the U.S. patent laws. To prove anticipation, [the Defendant] must prove by clear and convincing evidence, namely, evidence that leaves you with a clear conviction, that the claimed invention is not new.

In this case, [the Defendant] contends that [some/all of] the claims of the [abbreviated patent number] patent are anticipated. [DESCRIBE BRIEFLY EACH BASIS FOR THE DEFENDANT’S INVALIDITY DEFENSE, FOR EXAMPLE: “First, [the Defendant] contends that the invention of claims 1, 2, and 3 of the ____ patent was described in the July, 1983 article published by Jones in THE JOURNAL OF ENDOCRINOLOGY.”]

To anticipate a claim, each and every element in the claim must be present in a single item of prior art, and arranged or combined in the same way as recited in the claim. You may not combine two or more items of prior art to find anticipation. In determining whether every one of the elements of the claimed invention is found in the prior [[publication] [patent] [etc.]], you should take into account what a person of ordinary skill in the art would have understood from his or her review of the particular [[publication] [patent] [etc.]].

Practice Note: If one or more elements of the claim are alleged by the Defendant to be inherent in a single prior art reference, the jury will need to be instructed on inherency. Care should be taken to limit this instruction as appropriate to the evidence admitted in the case and to make this instruction as clear as possible. This Instruction should be given only if the issue is properly before the Court.

Inherency: In determining whether the single item of prior art anticipates a patent claim, you should take into consideration not only what is expressly disclosed in the particular prior art reference [[publication] [invention] [etc.]] but also what is inherently present or disclosed in that prior art or inherently results from its practice. Prior art inherently anticipates a patent claim if the missing element or feature would necessarily result from what the prior art teaches to persons of ordinary skill in the art. A party claiming inherent anticipation must prove by clear and convincing evidence that the allegedly inherent element necessarily is present. Evidence outside of the prior art reference itself [including experimental testing] may be used to show that elements that are not expressly disclosed in the reference are inherent in it. In order to be inherent, the feature that is alleged to have been inherent must necessarily have existed in the prior art reference. The fact that it was likely is not sufficient. It is not required, however, that persons of ordinary skill actually recognized or appreciated the inherent disclosure at the time the prior art was first known or used. Thus, the prior use of the patented invention that was unrecognized and unappreciated can still be an invalidating anticipation, provided the allegedly inherent feature was necessarily present in the reference.

You must keep these requirements in mind and apply them to each kind of anticipation you consider in this case. There are additional requirements that apply to the particular categories of anticipation that [the Defendant] contends apply in this case. I will now instruct you about these.

Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369-70 (Fed. Cir. 2008); Toro Co. v. Deere & Co., 355 F.3d 1313, 1320-21 (Fed. Cir. 2004); Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377-78 (Fed. Cir. 2003); In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999); Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347-48 (Fed. Cir. 1999); Glaverbel Societe Anonyme v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 1554 (Fed. Cir. 1995); Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed. Cir. 1992); Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1267-69 (Fed. Cir. 1991); Buildex, Inc. v. Kason Indus., Inc., 849 F.2d 1461, 1463 (Fed. Cir. 1988).

6.1 Prior Public Knowledge (Pre-AIA)

[The Defendant] contends that claim __________ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim was publicly known by others in the United States before it was invented by the inventor(s).

Practice Note: If there is a factual issue to be resolved by the jury as to the date of invention, the jury should be instructed here as to how they should determine the date of invention. Otherwise, the Court should instruct the jury as follows: “The invention defined by claim _____ of  the [abbreviated patent number] patent was invented on [invention date].”

A patent claim is invalid if the invention defined in that claim was publicly known by others in the United States before it was invented by [the patentee].

35 U.S.C. § 102(a) (pre-AIA); Minnesota Mining and Manuf. Co. v. Chemque, Inc., 303 F.3d 1294, 1301, 1306 (Fed. Cir. 2002); Ecolochem, Inc. v. Southern Cal. Edison Co., 227 F.3d 1361, 1369 (Fed. Cir. 2000); Woodland Trust v. Flowertree Nursery, 148 F.3d 1368, 1370 (Fed. Cir. 1998).

6.1 Prior Public Knowledge (Post-AIA):

[The Defendant] contends that claim ____ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim was available to the public before the effective filing date of the claimed invention.

Practice Note: If there is a factual issue to be resolved by the jury as to whether the prior public knowledge is the result of a disclosure made within one (1) year or less of the effective filing date by the inventor, or by another who obtained the subject matter disclosed directly from the inventor, or is subject matter which had previously been disclosed by the inventor, the jury should be instructed here as to exceptions under § 102(b).

You are instructed that the [abbreviated patent number] patent has an effective filing date of [effective filing date].

A patent claim is invalid if the invention defined in that claim was available to the public before the effective filing date of the claimed invention.

35 U.S.C. § 102(a)(1) (post-AIA); Minnesota Mining and Manuf. Co. v. Chemque, Inc., 303 F.3d 1294, 1301, 1306 (Fed. Cir. 2002); Ecolochem, Inc. v. Southern Cal. Edison Co., 227 F.3d 1361, 1369 (Fed. Cir. 2000); Woodland Trust v. Flowertree Nursery, 148 F.3d 1368, 1370 (Fed. Cir. 1998).

6.2 Prior Public Use (Pre-AIA):

[The Defendant] contends that claim _____ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim [was publicly used by others in the United States before it was invented by [the patentee]] [was publicly used in the United States more than one year before [the patentee] filed his patent application on [effective filing date]].

Practice Note: If there is a factual issue to be resolved by the jury as to the date of invention of the patent claims in suit, the jury should be instructed here as to how they should determine that date of invention. Otherwise, the Court should instruct the jury as follows: “The invention defined by claim _____ of  the [abbreviated patent number] patent was invented on [invention date].”

A patent claim is invalid if more than one year before the filing date of the patent an embodiment of the claimed invention was both:

  1. accessible to the public or commercially exploited in the United States; and
  2. ready for patenting.

An invention was in public use if the claimed invention was accessible to the public or commercially exploited. Factors relevant to determining whether a use was public include: the nature of the activity that occurred in public; public access to the use; confidentiality obligations imposed upon observers; commercial exploitation; and the circumstances surrounding testing and experimentation.

An invention is publicly used if it is used by the inventor or by a person who is not under any limitation, restriction, or obligation of secrecy to the inventor. The absence of affirmative steps to conceal the use of the invention is evidence of a public use. However, secret use by a third party is not public, unless members of the public or employees of the third party have access to the invention.

In order to be a public use, the invention also must have been ready for patenting at the time of the alleged public use. An invention is ready for patenting either when it is reduced to practice or when the inventor has prepared drawings or other descriptions of the invention sufficient to allow a person of ordinary skill in the art to make or use the invention. An invention is reduced to practice when it has been: (1) constructed or performed within the scope of the patent claims; and (2) determined that it works for its intended purpose. The claimed invention is ready for patenting when there is reason to believe it would work for its intended purpose.

35 U.S.C. § 102(a), (b) (pre-AIA); Clock Spring, L.P. v. Wrapmaster, Inc., 560 F.3d 1317, 1325-27 (Fed. Cir. 2009); American Seating Co. v. USSC Grp., Inc., 514 F.3d 1262, 1267 (Fed. Cir. 2008); Invitrogen Corp. v. Biocrest Manuf., L.P., 424 F.3d 1374, 1379-82 (Fed. Cir. 2005); SmithKline Beecham Corp. v. Apotex Corp., 365 F.3d 1306, 1316-20 (Fed. Cir. 2004); Netscape Commc’ns Corp. v. Konrad, 295 F.3d 1315, 1320-23 (Fed. Cir. 2002); Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998) (as to reduction to practice); Grain Processing Corp. v. Am. Maize-Prods. Co., 840 F.2d 902, 906 (Fed. Cir. 1988); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1265-67 (Fed. Cir. 1986); Kinzenbaw v. Deere & Co., 741 F.2d 383, 390-91 (Fed. Cir. 1984); TP Lab., Inc. v. Prof’l Positioners, Inc., 724 F.2d 965, 970-72 (Fed. Cir. 1984); WL Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1549-50 (Fed. Cir. 1983); In re Smith, 714 F.2d 1127, 1134-37 (Fed. Cir. 1983).

6.2 Prior Public Use (Post-AIA):

[The Defendant] contends that claim ____ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim was in public use anywhere in the world before the effective filing date of the claimed invention.

Practice Note: If there is a factual issue to be resolved by the jury as to whether the prior public use is the result of a disclosure made within one (1) year or less of the effective filing date by the inventor, or by another who obtained the subject matter disclosed directly from the inventor, or subject matter which had previously been disclosed by the inventor, the jury should be instructed here as to exceptions under § 102(b).

You are instructed that the [abbreviated patent number] patent has an effective filing date of [effective filing date].

A patent claim is invalid if the claimed invention was in public use before the effective filing date of the claimed invention.

An invention was in public use if the claimed invention was accessible to the public or commercially exploited anywhere in the world. Factors relevant to determining whether a use was public include the nature of the activity that occurred in public; public access to the use; confidentiality obligations imposed upon observers; commercial exploitation; and the circumstances surrounding testing and experimentation. An invention is publicly used if it is used by the inventor or by a person who is not under any limitation, restriction, or obligation of secrecy to the inventor. The absence of affirmative steps to conceal the use of the invention is evidence of a public use. However, secret use by a third party is not public, unless members of the public or employees of the third party have access to the invention.

In order to be a public use, the invention also must have been ready for patenting at the time of the alleged public use. An invention is ready for patenting either when it is reduced to practice or when the inventor has prepared drawings or other descriptions of the invention sufficient to allow a person of ordinary skill in the art to make or use the invention. An invention is reduced to practice when it has been: (1) constructed or performed within the scope of the patent claims; and (2) determined that it works for its intended purpose. The claimed invention is ready for patenting when there is reason to believe it would work for its intended purpose.

35 U.S.C. § 102(a)(2) (post-AIA); Clock Spring, L.P. v. Wrapmaster, Inc., 560 F.3d 1317, 1325-27 (Fed. Cir. 2009); American Seating Co. v. USSC Grp., Inc., 514 F.3d 1262, 1267 (Fed. Cir. 2008); Invitrogen Corp. v. Biocrest Manuf., L.P., 424 F.3d 1374, 1379-82 (Fed. Cir. 2005); SmithKline Beecham Corp. v. Apotex Corp., 365 F.3d 1306, 1316-20 (Fed. Cir. 2004); Netscape Commc’ns Corp. v. Konrad, 295 F.3d 1315, 1320-23 (Fed. Cir. 2002); Grain Processing Corp. v. Am. Maize-Prods. Co., 840 F.2d 902, 906 (Fed. Cir. 1988); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1265-67 (Fed. Cir. 1986); Kinzenbaw v. Deere & Co., 741 F.2d 383, 390-91 (Fed. Cir. 1984); TP Lab., Inc. v. Prof’l Positioners, Inc., 724 F.2d 965, 970-72 (Fed. Cir. 1984); WL Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1549-50 (Fed. Cir. 1983); In re Smith, 714 F.2d 1127, 1134-37 (Fed. Cir. 1983).

6.3 On Sale Bar (Pre-AIA):

[The Defendant] contends that claim __________ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim was on sale in the United States more than one year before [the patentee] filed his U.S. patent application on [U.S. filing date].

A patent claim is invalid if more than one year before the filing date of the patent an embodiment of the claimed invention was both: (1) subject to commercial offer for sale in the United States; and (2) ready for patenting.

A commercial “offer for sale” was made if another party could make a binding contract by simply accepting the offer. An invention was subject to an “offer for sale” if the claimed invention was embodied in an item that was actually sold or offered for sale. It is not required that a sale was actually made. The essential question is whether there was an attempt to obtain a commercial benefit from the invention.

The invention also must have been “ready for patenting” more than one year before the filing date of the patent. An invention is ready for patenting either when it is reduced to practice or when the inventor has prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person of ordinary skill in the art to practice the invention. An invention is reduced to practice when it has been (1) constructed or performed within the scope of the patent claims; and (2) determined that it works for its intended purpose. The claimed invention is ready for patenting when there is reason to believe it would work for its intended purpose.

35 U.S.C. § 102(b) (pre-AIA); Pfaff v. Wells Elecs., 525 U.S. 55, 67-68 (1998); August Tech v. Camtek, 655 F.3d 1278, 1288-89 (Fed. Cir. 2011); Atlanta Attachment Co., v. Leggett & Platt, Inc., 516 F.3d 1361, 1365 (Fed. Cir. 2008); Board of Educ. ex rel Bd. Of Trustees of Florida State University v. American Bioscience, Inc., 333 F.3d 1330, 1338 (Fed. Cir. 2003) (as to conception); Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1352-55 (Fed. Cir. 2002); Linear Tech. Corp. v. Micrel, Inc., 275 F.3d 1040, 1047-54 (Fed. Cir. 2001); Robotic Vision Sys., Inc., v. View Eng’g, Inc., 249 F.3d 1307, 1312 (Fed. Cir. 2001); Grp. One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 1045-49 (Fed. Cir. 2001; Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998) (as to reduction to practice).

6.3 On Sale Bar (Post-AIA):

[The Defendant] contends that claim __________ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim was on sale before the effective filing date of the claimed invention.

You are instructed that the [abbreviated patent number] patent has an effective filing date of [effective filing date].

A patent claim is invalid if it was on sale before the effective filing date of the claimed invention.

A commercial “offer for sale” was made if another party could make a binding contract by simply accepting the offer. An invention was subject to an “offer for sale” if the claimed invention was embodied in an item that was actually sold or offered for sale. It is not required that a sale was actually made. The essential question is whether there was an attempt to obtain a commercial benefit from the invention.

A commercial “offer for sale” was made by the inventor both:

  1. if the claimed invention was embodied in an item that was actually sold or offered for sale; and
  2. the invention was “ready for patenting”

more than one year before the effective filing date of the claimed invention. An invention is ready for patenting either when it is reduced to practice or when the inventor has prepared drawings or other descriptions of the invention that was sufficiently specific to enable a person of ordinary skill in the art to practice the invention. An invention is reduced to practice when it has been: (1) constructed or performed within the scope of the patent claims; and (2) determined that it works for its intended purpose. The claimed invention is ready for patenting when there is reason to believe it would work for its intended purpose.

35 U.S.C. § 102(a)(1) (post-AIA); Pfaff v. Wells Elecs., 525 U.S. 55, 67-68 (1998); August Tech v. Camtek, 655 F.3d 1278, 1288-89 (Fed. Cir. 2011); Atlanta Attachment Co., v. Leggett & Platt, Inc., 516 F.3d 1361, 1365 (Fed. Cir. 2008); Board of Educ. ex rel Bd. Of Trustees of Florida State University v. American Bioscience, Inc., 333 F.3d 1330, 1338 (Fed. Cir. 2003) (as to conception); Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1352-55 (Fed. Cir. 2002); Linear Tech. Corp. v. Micrel, Inc., 275 F.3d 1040, 1047-54 (Fed. Cir. 2001); Robotic Vision Sys., Inc., v. View Eng’g, Inc., 249 F.3d 1307, 1312 (Fed. Cir. 2001); Grp. One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 1045-49 (Fed. Cir. 2001; Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998) (as to reduction to practice).

6.4 Experimental Use

[The Plaintiff] contends that __________________ should not be considered [[a prior public use of the invention] [placing the invention on sale]] because that [[use] [sale]] was experimental. The law recognizes that the inventor must be given the opportunity to develop the invention through experimentation. Certain activities are experimental if they are a legitimate effort to test claimed features of the invention or to determine if the invention will work for its intended purpose. So long as the primary purpose is experimentation, it does not matter that the public used the invention or that the inventor incidentally derived profit from it.

Only experimentation by or under the control of the inventor of the patent [or his assignee] qualifies for this exception. Experimentation by [third party], for its own purposes, does not. The experimentation must relate to the features of the claimed invention, and it must be for the purpose of technological improvement, not commercial exploitation. If any commercial exploitation does occur, it must be merely incidental to the primary purpose of experimentation. A test done primarily for marketing, and only incidentally for technological improvement, is not an experimental use.

If you find that [the Defendant] has shown by clear and convincing evidence that there was a [[prior public use] [prior sale]], then the burden is on [the Plaintiff] to come forward with evidence showing that the purpose of [the prior public use] [prior sale]] was experimental. If the evidence of the experimental use produced by [the Plaintiff] is strong enough that you find that [the Defendant] has not met its burden of establishing a [[prior public use][prior sale]] by clear and convincing evidence, you may find that______________ does not constitute [[a prior public use of the invention][placing the invention on sale]].

City of Elizabeth v. Am. Nicholson Pavement Co., 97 U.S. 126, 134-35 (1877); Clock Spring, L.P. v. Wrapmaster, Inc., 560 F.3d 1317, 1327 (Fed. Cir. 2009); Lisle Corp. v. A.J. Mfg. Co., 398 F.3d 1306, 1316 (Fed. Cir. 2005); Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1353-55 (Fed. Cir. 2002); LaBounty Mfg., Inc. v. U.S. Int’l Trade Comm’n, 958 F.2d 1066, 1071-72 (Fed. Cir. 1992); Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 549-51 (Fed. Cir. 1990); U.S. Envtl. Prods. Inc. v. Westall, 911 F.2d 713, 716 (Fed. Cir. 1990); In re Hamilton, 882 F.2d 1576, 1580-83 (Fed. Cir. 1989); Grain Processing Corp. v. Am. Maize-Prods. Co., 840 F.2d 902, 906 (Fed. Cir. 1988); Hycor Corp. v. Schlueter Co., 740 F.2d 1529, 1535-37 (Fed. Cir. 1984); Pennwalt Corp. v. Akzona Inc., 740 F.2d 1573, 1580-81 (Fed. Cir. 1984); In re Smith, 714 F.2d 1127, 1134-37 (Fed. Cir. 1983).

6.5 Printed Publication (Pre-AIA):

[The Defendant] contends that claim __________ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim was described in a printed publication [[more than one year before [the patentee] filed the U.S. patent application on [U.S. filing date]] [before [the patentee] invented the invention]].

A patent claim is invalid if the invention defined by that claim was described in a printed publication [[before it was invented by [the patentee]] [more than one year prior to the filing date of the U.S. application]].

Practice Note: If there is a factual issue to be resolved by the jury as to the date of invention of the patent claims in suit, the jury should be instructed here as to how they should determine that date of invention. Otherwise, the Court should instruct the jury as follows: “The invention defined by claim _____ of the [abbreviated patent number] patent was invented on [invention date].”

 

A printed publication must have been maintained in some tangible form, such as [[printed pages] [typewritten pages] [magnetic tape] [microfilm] [photographs] [internet publication] [photocopies]], and must have been sufficiently accessible to persons interested in the subject matter of its contents.

 

Practice Note:  In the event accessibility is disputed, it is appropriate to give the following additional Instruction.

 

Information is publicly accessible if it was distributed or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter exercising reasonable diligence can locate it. It is not necessary for the printed publication to have been available to every member of the public. An issued patent is a printed publication. A published patent application is a printed publication as of its publication date.

The disclosure of the claimed invention in the printed publication must be complete enough to enable one of ordinary skill in the art to use the invention without undue experimentation. In determining whether the disclosure is enabling, you should take into account what would have been within the knowledge of a person of ordinary skill in the art [[one year before the application for the [abbreviated patent number] patent was filed] [at the time the invention of the [abbreviated patent number] patent was made]], and you may consider evidence that sheds light on the knowledge such a person would have had.

35 U.S.C. § 102(a), (b) (pre-AIA); In re NTP, Inc., 654 F.3d 1279, 1296-97 (Fed. Cir. 2011); Orion IP v. Hyundai Motor America, 605 F.3d 967 (Fed. Cir. 2010); In re Lister, 583 F.3d 1307, 1311-12 (Fed. Cir. 2009); Kyocera Wireless Corp. v. Int’l Trade Comm., 545 F.3d 1340, 1350 (Fed. Cir. 2008); Finisar Corp. v. DirectTV Grp., Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008); SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186 (Fed. Cir. 2008); In re Klopfenstein, 380 F.3d 1345, 1352 (Fed. Cir. 2004); Glaverbel Societe Anonyme v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 1554-55 (Fed. Cir. 1995); Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991); Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568-69 (Fed. Cir. 1988); Akzo N.V. v. U.S. Int’l Trade Comm’n, 808 F.2d 1471, 1479 (Fed. Cir. 1986); In re Hall, 781 F.2d 897, 898-899 (Fed. Cir. 1986); In re Donohue, 766 F.2d 531, 533-34 (Fed. Cir. 1985); Studiengesellschaft Kohle mbH v. Dart Indus., Inc., 726 F.2d 724, 727 (Fed. Cir. 1984).

6.5 Printed Publication (Post-AIA):

[The Defendant] contends that claim __________ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim was described in a printed publication before the effective filing date of the claimed invention.

You are instructed that the [abbreviated patent number] patent has an effective filing date of [effective filing date].

Practice Note: If there is a factual issue to be resolved by the jury as to whether the printed publication is the result of a disclosure made within one (1) year or less of the effective filing date by the inventor, or by another who obtained the subject matter disclosed directly from the inventor, or subject matter which had previously been disclosed by the inventor, the jury should be instructed here as to exceptions under § 102(b)(1).

A patent claim is invalid if the invention defined by that claim was described in a printed publication before the effective filing date of the claimed invention.

A printed publication must have been maintained in some tangible form, such as [[printed pages] [typewritten pages] [magnetic tape] [microfilm] [photographs] [internet publication] [photocopies]], and must have been sufficiently accessible to persons interested in the subject matter of its contents .

Practice Note:  In the event accessibility is disputed, it is appropriate to give the following additional instruction on this issue.

Information is publicly accessible if it was distributed or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter exercising reasonable diligence can locate it. It is not necessary for the printed publication to have been available to every member of the public. An issued patent is a printed publication. A published patent application is a printed publication as of its publication date.

The disclosure of the claimed invention in the printed publication must be complete enough to enable one of ordinary skill in the art to use the invention without undue experimentation. In determining whether the disclosure is enabling, you should take into account what would have been within the knowledge of a person of ordinary skill in the art [[one year before the application for the [abbreviated patent number] patent was filed] [at the time the invention of the [abbreviated patent number] patent was made]], and you may consider evidence that sheds light on the knowledge such a person would have had.

35 U.S.C. § 102(a)(1) & (b)(1) (post-AIA); In re NTP, Inc., 654 F.3d 1279, 1296-97 (Fed. Cir. 2011); Orion IP v. Hyundai Motor America, 605 F.3d 967 (Fed. Cir. 2010); In re Lister, 583 F.3d 1307, 1311-12 (Fed. Cir. 2009); Kyocera Wireless Corp. v. Int’l Trade Comm., 545 F.3d 1340, 1350 (Fed. Cir. 2008); Finisar Corp. v. DirectTV Grp., Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008); SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186 (Fed. Cir. 2008); In re Klopfenstein, 380 F.3d 1345, 1352 (Fed. Cir. 2004); Glaverbel Societe Anonyme v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 1554-55 (Fed. Cir. 1995); Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991); Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568-69 (Fed. Cir. 1988); Akzo N.V. v. U.S. Int’l Trade Comm’n, 808 F.2d 1471, 1479 (Fed. Cir. 1986); In re Hall, 781 F.2d 897, 898-899 (Fed. Cir. 1986); In re Donohue, 766 F.2d 531, 533-34 (Fed. Cir. 1985); Studiengesellschaft Kohle mbH v. Dart Indus., Inc., 726 F.2d 724, 727 (Fed. Cir. 1984).

6.6 Prior Invention (pre-AIA Only):[18]

[18]

[The Defendant] contends that claim __________ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim was invented by another person, [third party], before [the patentee] invented his invention.

A patent claim is invalid if the invention defined by that claim was invented by another person in the United States before it was invented by the patentee, [and that other person did not abandon, suppress, or conceal the invention].

[The Defendant] must show clear and convincing evidence either that before [the patentee] invented his invention, [third party] reduced to practice a [[product] [method]] that included all of the elements of claim ___ of the [abbreviated patent number] patent or that [third party] was first to conceive the invention and that he exercised reasonable diligence in later reducing the invention to practice. In addition, [the Defendant] must show that [third party]’s device was sufficiently developed that one skilled in the art would have recognized that it would work for its intended purpose.

Practice Note: This defense may be negated if the invention was abandoned, suppressed, or concealed. In the event this issue is properly asserted and there is sufficient evidentiary support to submit this issue to the jury the following additional Instructions should be given.

If the prior invention was abandoned, suppressed, or concealed, it does not anticipate the [abbreviated patent number] patent. It is not necessary that [the patentee] had knowledge of that prior invention.[19]

You may find that an invention was abandoned, suppressed, or concealed if you find that: (1) the prior inventor actively concealed the invention from the public; or (2) the prior inventor unreasonably delayed in making the invention publicly known. These facts must be proven by clear and convincing evidence. Generally, an invention was not abandoned, suppressed, or concealed if the invention was made public, sold, or offered for sale, or otherwise used for a commercial purpose. A period of delay does not constitute abandonment, suppression, or concealment, provided the prior inventor was engaged in reasonable efforts to bring the invention to market during this period.

35 U.S.C. § 102(a), (g) (pre-AIA); Teva Pharm. v. Astrazeneca Pharms., 661 F.3d 1378 (Fed. Cir. 2011); Solvay S.A. v. Honeywell Int’l. Inc., 622 F.3d 1367, 1376 (Fed. Cir. 2010); Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1381 (Fed. Cir. 2002); Dow Chemical Co. v. Astro-Valcour, Inc., 267 F.3d 1334, 1343 (Fed. Cir. 2001); Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356, 1361-63 (Fed. Cir. 2001); Apotex USA, Inc. v. Merck & Co., 254 F.3d 1031, 1035-40 (Fed. Cir. 2001); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1436-37 (Fed. Cir.1988); Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1444-46 (Fed. Cir. 1984).



[18] In cases where priority of invention is an issue to be submitted to the jury, further instructions will be required. For example, the jury will need to consider not only the dates when the respective inventions were conceived, but also when the inventions were reduced to practice. An inventor who claims to be the first to conceive of a prior invention but was the last to reduce to practice must also show reasonable diligence from a time just before the other party entered the field until his own reduction to practice in order for the “prior invention” to anticipate the claimed invention in suit.

[19] If abandonment, suppression or concealment are at issue in the case, these terms should be defined for the jury. See Dow Chem. Co. v. Astro-Valcour Inc., 267 F.3d 1334, 1342 (Fed. Cir. 2001); Checkpoint Sys., Inc. v. United States Int’l Trade Comm’n, 54 F.3d 756, 761-62 (Fed. Cir. 1995).

6.6 Prior Invention (post-AIA Only)

 

Practice Note:  The prior invention defense was eliminated by the AIA. The prior invention defense is no longer a basis for invalidity and no instruction should be given on this issue for Post-AIA claims.

6.7 Prior Patent (Pre-AIA):

[the Defendant] contends that claim __________ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim was patented by [third party] [[before it was invented by [the patentee]] [more than one year before [the patentee] filed his United States patent application on [U.S. filing date]].

A patent claim is invalid if the invention defined by that claim was patented in the United States or a foreign country [[before it was invented by [the patentee]] [more than one year before [the patentee] filed his United States patent application]].

Practice Note: If there is a factual issue to be resolved by the jury as to the date of invention of the patent claims in suit, the jury should be instructed here as to how they should determine that date of invention. Otherwise, the court should instruct the jury as follows: “The invention defined by claim _____ of the [abbreviated patent number] patent was invented on [invention date].”

35 U.S.C. § 102(a)‑(b) (pre-AIA); Adv. Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1287-83 (Fed. Cir. 2000); In re Carlson, 983 F.2d 1032, 1035‑36 (Fed. Cir. 1992).

6.7 Prior Patent (Post-AIA):

[The Defendant] contends that claim __________ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim was patented by [third party] before the effective filing date of the claimed invention.

Practice Note: If there is a factual issue to be resolved by the jury as to whether the disclosure appearing in a patent is the result of a disclosure made within one (1) year or less of the effective filing date by the inventor, by another who obtained the subject matter disclosed directly from the inventor, or if the subject matter disclosed and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person, the jury should be instructed here as to exceptions under § 102(b)(2).

A patent claim is invalid if the invention defined by that claim was patented in the United States or a foreign country before the effective filing date of the claimed invention.

You are instructed that the [abbreviated patent number] patent has an effective filing date of [effective filing date].

You are further instructed that patent [patent number] issued to [third party] has an effective filing date of [effective filing date].

35 U.S.C. § 102(a)(1), (a)(2) & (d) (post-AIA).

6.8 Prior U.S. Application (Pre-AIA):

[The Defendant] contends that claim __________ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim was described in United States [[published patent application] [patent]] [[published application number] [anticipating patent number]], and because [[the published patent application [published application number]] [application for the [anticipating patent number] patent] was filed before [the patentee] made his invention.

A claim of the [abbreviated patent number] patent would be invalid if the invention defined by that claim was described in a [[published United States patent application] [United States patent]] filed by another person before the invention was made by [the patentee].

Practice Note: if there is a factual issue to be resolved by the jury as to the date of invention of the patent claims in suit, the jury should be instructed here as to how they should determine that date of invention. Otherwise, the court should instruct the jury as follows: “The invention defined by claim [____] of the [abbreviated patent number] patent was invented on [invention date]”

35 U.S.C. §§ 102(e)(1) and (2) (pre-AIA); In re Giacomini, 612 F.3d 1380, 1383-84 (Fed. Cir. 2010); Sun Studs, Inc. v. ATA Equip. Leasing, Inc., 872 F.2d 978, 983-84 (Fed. Cir. 1989) (overruled on other grounds); In re Wertheim, 646 F.2d 527, 536-37 (C.C.P.A. 1981).

6.8 Prior U.S. Application (Post-AIA):

[The Defendant] contends that claim __________ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim was described in a patent application [published application number] published in the United States, and because the published patent application [published application number] was filed before the effective filing date of the claimed invention.

A claim of the [abbreviated patent number] patent would be invalid if the invention defined by that claim was described in a published patent application filed by another person before the effective filing date of the claimed invention.


Practice Note: If there is a factual issue to be resolved by the jury as to whether the disclosure appearing in a patent application is the result of a disclosure made within one (1) year or less of the effective filing date by the inventor, by another who obtained the subject matter disclosed directly from the inventor, or if the subject matter disclosed and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person, the jury should be instructed here as to exceptions under § 102(b)(2).

You are instructed that the [abbreviated patent number] patent has an effective filing date of [effective filing date].

You are further instructed that the published patent application [published application number] has an effective filing date of [effective filing date].

35 U.S.C. § 102(a)(2), (b)(2) & (d) (post-AIA).

7. Obviousness

Practice Note: Obviousness is a mixed question of fact and law. Failing to move for judgment as a matter of law may waive the issue of obviousness on an appeal. Careful consideration should be given to the Court’s and the Jury’s respective roles in determining this issue and the jury should be instructed accordingly.

7.0 Obviousness

[The Defendant] contends that claim(s) [numbers] of the [abbreviated patent number] patent are invalid because the claimed invention(s) is “obvious.”

A claimed invention is invalid as “obvious” if it would have been obvious to a person of ordinary skill in the art of the claimed invention at the time the invention was made. Unlike anticipation, which allows consideration of only one item of prior art, obviousness may be shown by considering more than one item of prior art.

In deciding obviousness, you must avoid using hindsight; that is, you should not consider what is known today or what was learned from the teachings of the patent. You should not use the patent as a road map for selecting and combining items of prior art. You must put yourself in the place of a person of ordinary skill in the art at the time the invention was made.

The following factors must be evaluated to determine whether [the Defendant] has established that the claimed invention(s) is obvious:

  1. the scope and content of the prior art relied upon by [the Defendant];
  2. the difference or differences, if any, between each claim of the [abbreviated patent number] patent that [the Defendant] contends is obvious and the prior art;
  3. the level of ordinary skill in the art at the time the invention of the [abbreviated patent number] patent was made; and
  4. additional considerations, if any, that indicate that the invention was obvious or not obvious.

Each of these factors must be evaluated, although they may be analyzed in any order, and you must perform a separate analysis for each of the claims.

[The Defendant] must prove by clear and convincing evidence that the invention would have been obviousness.

I will now explain each of the four factors in more detail.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405 and 421 (2007); Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); Otsuka Pharm. Co., Ltd. v. Sandoz, Inc., 678 F.3d 1280, 1296 (Fed. Cir. 2012); Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161-62 (Fed. Cir. 2007); Ruiz v. A.B. Chance Co., 234 F.3d 654, 662-63 (Fed. Cir. 2000); Arkies Lures, Inc. v. Gene Larew Tackle, Inc., 119 F.3d 953, 955 (Fed. Cir. 1997); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 716 (Fed. Cir. 1991); Nutrition 21 v. U.S., 930 F.2d 867, 871 n.2 (Fed. Cir. 1991); Newell Cos. v. Kenney Mfg. Co.,864 F.2d 757, 764 (Fed. Cir. 1988); Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 718-19 (Fed. Cir. 1984); Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1382-83 (Fed. Cir. 1983); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538-40 (Fed. Cir. 1983).

7.1 The First Factor: Scope and Content of the Prior Art

The prior art that you considered previously for anticipation purposes is also prior art for obviousness purposes. The prior art includes the following items received into evidence during the trial:

[LIST PRIOR ART STIPULATED TO BY THE PARTIES].

[IF PARTIES DISPUTE THE PRIOR ART, USE THE FOLLOWING]. You must determine what is the prior art that may be considered in determining whether the [abbreviated patent number] patent is obvious. A prior art reference may be considered if it discloses information designed to solve any problem or need addressed by the patent or if the reference discloses information that has obvious uses beyond its main purpose that a person of ordinary skill in the art would reasonably examine to solve any problem or need addressed by the patent.

[ADD INSTRUCTIONS ON PRIOR ART CONTENTIONS, E.G., PUBLICATION AND ON-SALE BAR, AND INHERENCY, IF ASSERTED]

KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742 (2007); Ruiz v. A.B. Chance Co., 234 F.3d 654, 664-65 (Fed. Cir. 2000); Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 864 (Fed. Cir. 1993); In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992); In re Wood, 599 F.2d 1032, 1036-37 (C.C.P.A. 1979).

7.2 The Second Factor: Differences Between the Claimed Invention and the Prior Art

You should analyze whether there are any relevant differences between the prior art and the claimed invention from the view of a person of ordinary skill in the art at the time of the invention. Your analysis must determine the impact, if any, of such differences on the obviousness or nonobviousness of the invention as a whole, and not merely some portion of it.

Practice Note:  In the event inherency if properly asserted and adequately supported by the evidence, the following instruction should be given:“In comparing the scope and content of each prior art reference to a patent claim, you may find that inherency may supply a claim element that is otherwise missing from the explicit disclosure of a prior art reference. The inherent presence of an element so found by you may be used in your evaluation of whether the claimed invention would have been obvious in view of the prior art. But, to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis, that limitation necessarily must be present in, or the natural result of, the combination of elements explicitly disclosed by the prior art. Inherency may not be established by probabilities or possibilities. The mere fact that a certain thing may result from an explicit disclosure is not sufficient to find inherency. However, if the disclosure is sufficient to show that the natural result flowing from the explicit disclosure would result in the claim limitation in question, inherency may be found. Something inherent from the explicit disclosure of the prior art must be limited when applied in an obviousness analysis and used only when the inherent limitation is the natural result of the combination of prior art elements explicitly disclosed.”

Par Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194-1196 (Fed. Cir. 2014); Alcon Research, Ltd. v. Apotex Inc., 687 F.3d, 1362 (Fed. Cir. 2012); In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009); and cases cited therein.

In analyzing the relevance of the differences between the claimed invention and the prior art, you do not need to look for precise teaching in the prior art directed to the subject matter of the claimed invention. You may take into account the inferences and creative steps that a person of ordinary skill in the art would have employed in reviewing the prior art at the time of the invention. For example, if the claimed invention combined elements known in the prior art and the combination yielded results that were predictable to a person of ordinary skill in the art at the time of the invention, then this evidence would make it more likely that the claim was obvious. On the other hand, if the combination of known elements yielded unexpected or unpredictable results, or if the prior art teaches away from combining the known elements, then this evidence would make it more likely that the claim that successfully combined those elements was not obvious.

Importantly, a claim is not proved obvious merely by demonstrating that each of the elements was independently known in the prior art. Most, if not all, inventions rely on building blocks long-known, and claimed discoveries almost of necessity will likely be combinations of what is already known. Therefore, you should consider whether a reason existed at the time of the invention that would have prompted a person of ordinary skill in the art in the relevant field to combine the known elements in the way the claimed invention does. The reason could come from the prior art, the background knowledge of one of ordinary skill in the art, the nature of any problem or need to be addressed, market demand, or common sense. You may also consider whether the problem or need was known, the possible approaches to solving the problem or addressing the need were known and finite, and the solution was predictable through use of a known option.

If you find that a reason existed at the time of the invention to combine the elements of the prior art to arrive at the claimed invention, this evidence would make it more likely that the claimed invention was obvious. Again, you must undertake this analysis separately for each claim that [the Defendant] contends is obvious.

KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742-43 (2007); Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351 (Fed. Cir. 2008); Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1536-37 (Fed. Cir. 1983); Medtronic, Inc., v. Cardiac Pacemakers, Inc., 721 F.2d 1563, 1567-68 (Fed. Cir. 1983).

7.3 The Third Factor: Level of Ordinary Skill

The determination of whether a claimed invention is obvious is based on the perspective of a person of ordinary skill in the [pertinent art field]. The person of ordinary skill is presumed to know all prior art that you have determined to be reasonably relevant. The person of ordinary skill is also a person of ordinary creativity that can use common sense to solve problems.

[If the parties have agreed to the level of ordinary skill in the art, then the instruction should include: “[The Plaintiff] and [the Defendant] contend that the level of ordinary skill in the art is [insert proposal]].”

[If the parties have not agreed to the level of ordinary skill in the art, then the instruction should continue as follows].

When determining the level of ordinary skill in the art, you should consider all the evidence submitted by the parties, including evidence of:

  1. the level of education and experience of persons actively working in the field at the time of the invention, including the inventor;
  2. the types of problems encountered in the art at the time of the invention; and
  3. the sophistication of the technology in the art at the time of the invention, including the rapidity with which innovations were made in the art at the time of the invention.

KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742-43 (2007); Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); Ruiz v. A.B. Chance Co., 234 F.3d 654, 666-67 (Fed. Cir. 2000); Envtl Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696-97 (Fed. Cir. 1983).

7.4 The Fourth Factor: Other Considerations

Before deciding the issue of obviousness, you must also consider certain factors, which may help to determine whether or not the invention would have been obvious. No factor alone is dispositive, and you must consider the obviousness or nonobviousness of the invention as a whole.

 

Practice Note: Careful consideration should be given to the Court’s role in determining the admissibility of evidence of secondary considerations. In addition, the materiality of the evidence depends on the existence of a nexus between the consideration and the invention as opposed to other factors. Only if the Court determines that there is a sufficient nexus that a consideration is admissible should the jury be instructed on it.

[PROVIDE ONLY THOSE INSTRUCTIONS THAT ARE APPROPRIATE.]

  1. Were products covered by the claim commercially successful due to the merits of the claimed invention rather than due to advertising, promotion, salesmanship, or features of the product other than those found in the claim?
  2. Was there long felt need for a solution to the problem facing the inventors, which was satisfied by the claimed invention?
  3. Did others try, but fail, to solve the problem solved by the claimed invention?
  4. Did others copy the claimed invention?
  5. Did the claimed invention achieve unexpectedly superior results over the closest prior art?
  6. Did others in the field, or [the Defendant] praise the claimed invention or express surprise at the making of the claimed invention?
  7. Did others accept licenses under [abbreviated patent number] patent because of the merits of the claimed invention?

Answering all, or some, of these questions “yes” may suggest that the claim was not obvious. Answering all, or some, of these questions “no” may suggest that the claims would have been obvious. These factors are relevant only if there is a connection, or nexus, between the factor and the invention covered by the patent claims. Even if you conclude that some of the above indicators have been established, those factors should be considered along with all the other evidence in the case in determining whether [the defendant] has proven that the claimed invention would have been obvious.

Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); United States v. Adams, 383 U.S. 39, 52 (1966); Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 894-95 (Fed. Cir. 1984); Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 697 (Fed. Cir. 1983); WL Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1555-56 (Fed. Cir. 1983); Stratoflex, Inc., v. Aeroquip Corp., 713 F.2d 1530, 1538-39 (Fed. Cir. 1983).

8. Enablement

Practice Note: Enablement is a question of law for the Court. The jury should be instructed on subsidiary fact issues only if, and only to the extent, that there is a specific issue of fact that the jury must decide that bears on the issue of enablement. If not, this instruction should not be given.

[The defendant] contends that claim[s] ____ of the [abbreviated patent number] patent [is] [are] invalid for lack of enablement. [The defendant] bears the burden of establishing lack of enablement by the highly probable standard.

A patent must disclose sufficient information to enable or teach persons of ordinary skill in the field of the invention, at the time the [priority] patent application was filed, to make and use the full scope of the claimed invention without undue experimentation. This requirement is known as the enablement requirement. If a patent claim is not enabled, it is invalid.

In considering whether a patent complies with the enablement requirement, you must keep in mind that patents are written for persons of ordinary skill in the field of the invention. Thus, a patent need not expressly state information that persons of ordinary skill would be likely to know or could obtain.

The fact that some experimentation may be required for a person of ordinary skill to practice the claimed invention does not mean that a patent does not meet the enablement requirement. Factors that you may consider in determining whether persons of ordinary skill in the field of the invention would require undue experimentation to make and use the full scope of the claimed invention include:

  1. the quantity of experimentation necessary and whether that experimentation involves only known or commonly used techniques. [The question of undue experimentation is a matter of degree. Even extensive experimentation does not necessarily make the experiments unduly extensive where the experiments are routine, such as repetition of known or commonly used techniques. But permissible experimentation is not without bounds.[20]
  2. the amount of direction or guidance disclosed in the patent;
  3. the presence or absence of working examples in the patent;
  4. the nature of the invention;
  5. the state of the prior art;
  6. the relative skill of those in the art;
  7. the predictability of the art; and
  8. the breadth of the claims.
Practice Note:  This Instruction should be modified to identify the fact issues the jury is being asked to determine. The ultimate issue of enablement is a question of law to be decided by the Court.

35 U.S.C. § 112; Streck, Inc. v. Research & Diagnostic Sys., 665 F.3d 1269, 1288-89 (Fed. Cir. 2012); Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296, 1305-07 (Fed. Cir. 2010); ALZA Corp. v. Andrx Pharms., LLC, 603 F.3d 935, 939-43 (Fed. Cir. 2010); Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1377-79 (Fed. Cir. 2009); Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999-1002 (Fed. Cir. 2008); Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1380 (Fed. Cir. 2007); AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1244 (Fed. Cir. 2003); Durel Corp. v. Osram Sylvania Inc., 256 F.3d 1298, 1306 (Fed. Cir. 2001); Union Pac. Resources Co. v. Chesapeake Energy Corp., 236 F.3d 684, 690-92 (Fed. Cir. 2001); Ajinomoto Co. v. Archer- Daniels-Midland Co., 228 F.3d 1338, 1345-46 (Fed. Cir. 2000); Nat’l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195-98 (Fed. Cir. 1999); Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371 (Fed. Cir. 1999); In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988); Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed. Cir. 1991).


[20] Cephalon, Inc. v. Watson Pharm., Inc., 707 F.3d 1330, 1338 (Fed. Cir. 2013); see also Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1360-61 (Fed. Cir. 1998).]].

9. Written Description Requirement

Practice Note:Practice Note: Written description is a question of fact for the finder of fact. The jury should be instructed on these issues only if, and only to the extent, that specific claims are challenged for lack of written description support and there is sufficient evidentiary support for these arguments.

The [Defendant] contends that claim[s] ____ of the [abbreviated patent number] patent [is] [are] invalid for failure to satisfy the written description requirement. [The defendant] bears the burden of establishing lack of written description by clear and convincing evidence.

A patent must contain a written description of the [product or process] claimed in the patent. The written description requirement helps to ensure that the patent applicant actually invented the claimed subject matter. To satisfy the written description requirement, the patent specification must describe each and every limitation of a patent claim, in sufficient detail, although the exact words found in the claim need not be used. When determining whether the specification discloses the invention, the claim must be viewed as a whole.

The written description requirement is satisfied if persons of ordinary skill in the field of the invention would recognize, from reading the patent specification, that the inventor possessed the subject matter finally claimed in the patent. The written description requirement is satisfied if the specification shows that the inventor possessed his or her invention as of the date the [priority] patent application was filed, even though the claims themselves may have been changed or new claims added since that time.

It is unnecessary to spell out every detail of the invention in the specification, and specific examples are not required; only enough must be included in the specification to convince persons of ordinary skill in the art that the inventor possessed the full scope of the invention. In evaluating whether the specification has provided an adequate written description, you may take into account such factors as:

  1. the nature and scope of the patent claims;
  2. the complexity, predictability, and maturity of the technology at issue;
  3. the existing knowledge in the relevant field; and
  4. the scope and content of the prior art.

The issue of written description is decided on a claim-by-claim basis, not as to the entire patent or groups of claims.

If you find that [the defendant] has proven by clear and convincing evidence that the [abbreviated patent number] patent does not contain a written description for the invention[s] of claims _____, then you must find that the claim[s] [is] [are] invalid.

35 U.S.C. § 112; Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., 670 F.3d 1171, 1188-89 (Fed. Cir. 2012), aff’d on reh’g, 682 F.3d 1003, 1005 (Fed. Cir. 2012); Streck, Inc. v. Research & Diagnostic Sys., 665 F.3d 1269, 1284-87 (Fed. Cir. 2012); Atl. Research Mktg. Sys. v. Troy, 659 F.3d 1345, 1353-55 (Fed. Cir. 2011); Boston Sci. Corp. v. Johnson & Johnson, 647 F.3d 1353, 1361-63 (Fed. Cir. 2011); Crown Packaging Tech. v. Ball Metal Bev. Container Corp., 635 F.3d 1373, 1379-80 (Fed. Cir. 2011); Centocor Ortho Biotech, Inc. v. Abbott Labs., 636 F.3d 1341, 1347-48 (Fed. Cir. 2011); Ariad Pharms., Inc. v. Mass. Instit. of Tech., 598 F.3d 1336, 1351-52 (Fed. Cir. 2010) (en banc); Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 870 (Fed. Cir. 2010); Laryngeal Mask Co. v. Ambu A/S, 618 F.3d 1367, 1373-74 (Fed. Cir. 2010); Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358, 1366 (Fed. Cir. 2009); PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008); Falko-Gunter Faulkner v. Inglis, 448 F.3d 1357, 1366 (Fed. Cir. 2006); Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 968 (Fed. Cir. 2006); Monsanto Co. v. Scruggs, 459 F.3d 1328, 1336 (Fed. Cir. 2006); Univ. of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916, 922-28 (Fed. Cir. 2004); Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 964 (Fed. Cir. 2002).

10. Unenforceability (Inequitable Conduct)

Practice Note: Inequitable conduct is an equitable issue that is decided by the Court, in its discretion.[21] There is no right to a jury trial on inequitable conduct. Although the issue is sometimes submitted to the finder of fact for an Advisory Verdict, the issue must be decided by the Court, either with or without and Advisory Verdict. If the court elects to request and Advisory Verdict, the Court should consider whether to charge the jury on the entire issue, or solely on the materiality and/or intent to deceive issues. The verdict form should include separate questions on each of the issues on which the jury is charged, i.e., materiality, intent, and/or balancing the equities.

The Court should consider carefully whether to request an Advisory Verdict. The issues are complex and potentially confusing. A clear-and-convincing-evidence standard applies to the inequitable conduct defense while the preponderance-of-the-evidence standard applies to the issue of whether the Patent and Trademark Office would have issued the patent “but for” the failure to disclose.[22] In addition, the USPTO employs a “broadest reasonable interpretation” standard for claim construction, which may conflict with the Court’s construction of the claims. Submitting the issue for an Advisory Verdict increases the complexity of the Instructions, has the potential to confuse the jury, and may bias the jury’s consideration of other issues that it is required to decide. Federal Circuit authority establishes an objective threshold issue of whether the reference or conduct would have been a basis to deny patentability.[23] If this threshold issue is not satisfied, submitting the issue for an Advisory Verdict is not appropriate.

If an Advisory Verdict is requested, care must be taken to ensure that the issue(s) is properly raised and that there is sufficient evidence to support the defense.


[21] Flex-Rest, LLC v. Steelcase, Inc., 455 F.3d 1351, 1357 (Fed. Cir. 2006).

[22] Therasense, Inc. v. Becton Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc).

[23] Id.

10.0 Inequitable Conduct – Generally

[The Defendant] contends that [the Plaintiff] may not enforce the [abbreviated patent number] patent against [the Defendant] because individuals substantively involved in the prosecution of the [abbreviated patent number] patent engaged in inequitable conduct before the Patent and Trademark Office during prosecution of that patent.

Applicants for a patent have a duty to prosecute patent applications in the Patent and Trademark Office with candor and good faith. This duty of candor and good faith extends to all inventors named on a patent application, all patent attorneys and patent agents involved in preparing and prosecuting the application, and every other individual involved in a substantial way with the prosecution of the patent application. An intentional failure to meet this duty of candor and good faith is referred to as “inequitable conduct.”

[In this case, [the Defendant] asserts that [DESCRIBE BRIEFLY EACH BASIS FOR [THE DEFENDANT]’S UNENFORCEABILITY DEFENSE].]

[The Defendant] must prove inequitable conduct by clear and convincing evidence. To determine whether the [abbreviated patent number] patent was obtained through inequitable conduct, you must determine:

  1. whether an individual or individuals having this duty of candor and good faith [engaged in affirmative acts of egregious misconduct or] withheld or misrepresented information, or submitted false information, that was material to the examination of the patent application; and
  2. that this individual or individuals acted with the specific intent to deceive or mislead the Patent and Trademark Office.

Therasense, Inc. v. Becton Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc); Avid Identification Sys., Inc. v. Crystal Import Corp., 603 F.3d 967, 973-74 (Fed. Cir. 2010); eSpeed, Inc. v. BrokerTec USA, L.L.C., 480 F.3d 1129, 1135 (Fed. Cir. 2007); Digital Control, Inc. v. Charles Mach. Works, 437 F.3d 1309, 1313 (Fed. Cir. 2006); Purdue Pharma L.P. v. Endo Pharm., Inc., 438 F.3d 1123, 1128 (Fed. Cir. 2006); Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., 326 F.3d 1226, 1233 (Fed. Cir. 2003).

10.1 Materiality (Non-disclosure cases only)

[Defendant] contends that _____________________ was information [known to] [misrepresented by] an individual having the duty of good faith and candor to the Patent and Trademark Office, and that such information was [withheld from] [misrepresented to] the Patent and Trademark Office during the prosecution of the [abbreviated patent number] patent. If you find that an individual having this duty of good faith and candor [withheld] [misrepresented] information when applying for the [abbreviated patent number] patent, you must also determine whether that information was material information.

Information is material if “but for” the individual’s [failure to disclose] [misrepresentation of] the information during the prosecution, the Patent and Trademark Office would not have allowed one or more claims of the [abbreviated patent number] patent. In other words, information is material if it is more likely than not that the Patent and Trademark Office would not have allowed one or more claims of the [abbreviated patent number] patent if it had been aware of the [withheld] [true] information. To decide whether the Patent and Trademark Office would not have allowed one or more claims if it had been aware of the [withheld] [true] information, you should use the broadest reasonable interpretation of the claim or claims under consideration and apply the “more likely than not” standard, as the Patent and Trademark Office would have done.

If you decide that the Patent and Trademark Office would not have allowed one or more claims applying this standard, then the individual’s [failure to disclose] [misrepresentation of] the information during the prosecution is material, whether or not you also find the claims invalid under the standards for finding claims invalid in this lawsuit. This does not change the [Defendant]’s overall burden, however, to prove its inequitable conduct defense by the highly probable standard of proof.

Therasense, Inc. v. Becton Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc).

10.2 Materiality (Affirmative Egregious Misconduct cases only)

In this case, [the Defendant] alleges that [individual(s) accused of inequitable conduct] engaged in affirmative acts of egregious misconduct during the prosecution of the [abbreviated patent number] patent. Specifically, [the Defendant] alleges [summarize alleged affirmative acts of egregious misconduct]. If you are left with a clear conviction that [accused individual(s)] engaged in the conduct as alleged by [the Defendant], and that the conduct rises to the level of affirmative egregious misconduct, then you must find that the misconduct was material.

To assist you in your deliberation, examples of affirmative acts of egregious conduct would be perjury, including filing an unmistakably false affidavit in the Patent and Trademark Office during prosecution of the [abbreviated patent number], or fabricating evidence presented to the Patent and Trademark Office during prosecution of the [abbreviated patent number]. Affirmative acts of egregious conduct may also include deliberately planned and executed schemes to defraud the Patent and Trademark Office.

On the other hand, examples of things that do not rise to the level of affirmative acts of egregious conduct would be mere nondisclosure of prior art references to the Patent and Trademark Office, failure to submit references that are duplicative or cumulative of references of which the Patent and Trademark Offfice was already aware, or failure to mention prior art references in an affidavit during prosecution of the [abbreviated patent number].

Therasense, Inc. v. Becton Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc).

10.3 Intent to Deceive or Mislead

If you find by clear and convincing evidence that material information was withheld from or misrepresented to the Patent and Trademark Office, or that [accused individual(s)] engaged in affirmative egregious misconduct, you must next determine whether this was done with a specific intent to deceive or mislead the Patent and Trademark Office. You may find intent to deceive or mislead the Patent and Trademark Office from direct evidence. You may also infer intent to deceive or mislead the Patent and Trademark Office from the facts and surrounding circumstances. Whether based on direct or circumstantial evidence, the evidence must leave you with a clear conviction that material information was withheld from or misrepresented to the Patent and Trademark Office in order for you to find an intent to deceive or mislead.

For example, when a patentee has knowingly misrepresented a material fact or submitted false material information, and when the natural consequence of those intentional acts would be to deceive or mislead the Patent and Trademark Office, an inference that [the accused individual(s)] intended to deceive the Patent and Trademark Office may be appropriate.

When the individual having a duty of good faith and candor has deliberately withheld or misrepresented known material information from the Patent and Trademark Office, you may find that he or she acted with intent to deceive or mislead the Patent and Trademark Office if and only if that is the single most reasonable inference to be drawn from the evidence. If there are multiple reasonable inferences that may be drawn, you cannot find an intent to deceive or mislead. You may not infer that the individual acted with intent to deceive or mislead based solely on the fact or facts that the information withheld was material, or even highly material, or that the individual has not provided a good faith explanation for the withholding. Nor may you infer intent solely on the basis of gross negligence or negligence in withholding material information.

For example, it is not enough that the individual knew of a reference, should have known of its materiality, and did not submit it to the Patent and Trademark Office. Instead, you need to determine whether or not the individual knew of the withheld or misrepresented information, knew the information was material, and made a deliberate and conscious decision to withhold or misrepresent the information. In determining whether there was an intent to deceive or mislead the Patent and Trademark Office, you should consider the totality of the circumstances, including the nature of the conduct and whether that conduct occurred in good faith.

Therasense, Inc. v. Becton Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011)(en banc); Intellect Wireless, Inc. v. HTC Corp., 732 F.3d 1339, 1345 (Fed. Cir. 2013); Larson Mfg. Co. of S.D. v. Aluminart Prods. Ltd., 559 F.3d 1317, 1340-41 (Fed. Cir. 2009); Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366, 1368 (Fed. Cir. 2008); eSpeed, Inc. v. BrokerTec USA, L.L.C., 480 F.3d 1129, 1137-38 (Fed. Cir. 2007); Purdue Pharma L.P. v. Endo Pharm. Inc., 438 F.3d 1123, 1133-34 (Fed. Cir. 2006); PerSeptive Biosystems, Inc. v. Pharmacia Biotech, Inc., 225 F.3d 1315, 1319-20 (Fed. Cir. 2000); Molins PLC v. Textron, Inc., 48 F.3d 1172, 1180-82 (Fed. Cir. 1995).

11. Damages

11.0 Damages – Generally

If you find that the accused [[device] [method]] infringes any of the claims of the [abbreviated patent number] patent, and that those claims are not invalid, you must determine the amount of damages to be awarded [the Plaintiff] for the infringement. On the other hand, if you find that each of the asserted patent claims is either invalid or is not infringed, then you need not consider damages in your deliberations.

[The Plaintiff] must prove each element of its damages—including the amount of the damages—by a preponderance of the evidence, which means more likely true than not.

If proven by the Plaintiff, damages must be in an amount adequate to compensate [the Plaintiff] for the infringement. The purpose of a damage award is to put [the Plaintiff] in about the same financial position it would have been in if the infringement had not happened. But, the damage award cannot be less than a reasonable royalty. You may not add anything to the amount of damages to punish an accused infringer or to set an example. You also may not add anything to the amount of damages for interest.

The fact that I am instructing you on damages does not mean that the Court believes that one party or the other should win in this case. My instructions about damages are for your guidance only in the event you find in favor of [the Plaintiff]. You will need to decide the issue of damages only if you find that one or more of the asserted claims are both not invalid and infringed.

Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1238 (Fed. Cir. 2011); ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 868 (Fed. Cir. 2010); Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1325 (Fed. Cir. 2009); 35 U.S.C. § 284 (2004); Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 507 (1964); Dow Chem. Co. v. Mee Indus., Inc., 341 F.3d 1370, 1381-82 (Fed. Cir. 2003); Vulcan Eng’g Co. v. FATA Aluminum, Inc., 278 F.3d 1366, 1376 (Fed. Cir. 2002); Grain Processing Corp. v. Am. Maize-Prods. Co., 185 F.3d 1341, 1349 (Fed. Cir. 1999); Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1108-09 (Fed. Cir. 1996); Hebert v. Lisle Corp., 99 F.3d 1109, 1119 (Fed. Cir. 1996); Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1544-45 (Fed. Cir. 1995); Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 870 (Fed. Cir. 1993); Fromson v. W. Litho Plate & Supply Co., 853 F.2d 1568, 1574 (Fed. Cir. 1988), overruled on other grounds by Knorr-Bremse Systeme Fuer Nutzfahrzeuge v. Dana Corp., 383 F.3d 1337, 1342 (Fed. Cir 2004); Del Mar Avionics, Inc. v. Quinton Instrument Co., 836 F.2d 1320, 1326 (Fed. Cir. 1987).

11.1 Date Damages Begin

11.1.1 Alternate A – When the Date of the Notice of Infringement is Stipulated

The date that [the Plaintiff] first notified [the Defendant] of its claim of patent infringement is the date for the start of damages calculations. The parties agree that date is [infringement notice date].

11.1.2 Alternate B – When the Date of the Notice of Infringement is Disputed – Product Claims

The date that [the Plaintiff] first notified [the Defendant] of its claim for patent infringement is the date for the start of damages. The parties do not agree on that date, and it is up to you to determine what that date is. [The Plaintiff] must prove that it is more likely than not that the [Defendant] actually was notified of the claim for patent infringement as of the date alleged by [the Plaintiff].

[The Plaintiff] can give notice in two ways. The first way is to give notice to the public in general. [The Plaintiff] can do this by marking substantially all of the products that it sold which included the patented invention, or including on the labeling of substantially all of the products, the word “patent” or the abbreviation “PAT” with the number of the patent. [The Plaintiff] also may give notice by marking substantially all of the products with “Patent” or “Pat” and a free internet address where there is a posting that connects the product with the patent number. [Licensees of the [abbreviated patent number] patent who use the patented invention must also mark substantially all of their products that include the patented invention with the patent number.] This type of notice starts from the date [the Plaintiff] [and its licensees] began to mark substantially all of its products that use the patented invention with the patent number. If [the Plaintiff] [and its licensees] did not mark substantially all of those products with the patent number, then [the Plaintiff] did not provide notice in this way.[24]

A second way [the Plaintiff] can give notice of its patent[s] is to notify [the Defendant] directly with a specific claim that the [allegedly infringing product] infringed the [abbreviated patent number] patent. This type of notice starts from the date [Defendant] received the notice. If you find that [the Plaintiff], before filing this lawsuit, did not properly mark its products and did not notify [the Defendant] with a specific charge that the [allegedly infringing product] infringed, then [the Plaintiff] can only recover damages for infringement that occurred after it sued [the Defendant] on [lawsuit filing date]


[24] If there is an issue of fact regarding the adequacy of [the Patentee’s marking], additional instructions will be required.

11.1.3 Alternate C – When the Date Damages Begin is the Date the Lawsuit was Filed

The date that damages begin to be calculated in this case is the date this lawsuit was filed, which is [the lawsuit filing date].

35 U.S.C. § 287(a); Funai Elec. Co., Ltd. v. Daewoo Electronics Corp., 616 F.3d 1357, 1373-74 (Fed. Cir. 2010); Gart v. Logitech, Inc., 254 F.3d 1334, 1345 (Fed. Cir. 2001); Lans v. Digital Equip. Corp., 252 F.3d 1320, 1327-28 (Fed. Cir. 2001); Crystal Semiconductor Corp. v. TriTech Microelecs. Int’l, Inc., 246 F.3d 1336, 1353 (Fed. Cir. 2001); Amsted Indus., Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 184-87 (Fed. Cir. 1994); Devices for Med., Inc. v. Boehl, 822 F.2d 1062, 1066 (Fed. Cir. 1987).

11.2 Damages – Types of Damages That May be Recovered

Practice Note: The issue of damages is rapidly evolving at both the Federal Circuit and Supreme Court. The courts have recently supported vigorous examination of the plaintiff’s damages theory before submitting this issue to the jury. Only if the plaintiff’s damages theory is admissible and supported by sufficient evidence should it be submitted to the jury. In addition, in order to avoid undue burden and jury confusion, the jury should be instructed on only those theories of recovery that the Court has determined are admissible.

There are several types of damages that are available for patent infringement.

One type of patent damages is lost profits. Lost profits are the additional profits that the patent owner would have made if the defendant had not infringed.  In this connection, you may hear references to the “but for” test—which means, “what profits would the patent owner have made ‘but for’ the alleged infringement?”

A second type of patent damages is price suppression. The patentee may have been forced to reduce its price for the patented product or other related products in order to compete with the infringer. Again, the patentee must prove to you by a preponderance of the evidence what price concessions it was forced to give that are due to the infringement as opposed to other factors.

A third measure of damages is convoyed sales. A patentee may have lost sales of other related products other than the patented product, if these products are typically sold together.

Finally, another measure of damages is a reasonable royalty. A reasonable royalty is the reasonable amount that someone wanting to use the patented invention would have agreed to pay to the patent owner and the patent owner would have accepted. A reasonable royalty is the minimum amount of damages that a patent owner can receive for an infringement.

11.3 Lost Profits – “But-For” Test

[The Plaintiff] is seeking lost profits damages in this case. To prove lost profits, [the Plaintiff] must show that, but for [the Defendant]’s infringement, [the Plaintiff] would have made additional profits through the sale of all or a portion of the sales of [the allegedly infringing products] made by [the Defendant]. Plaintiff must prove this by a preponderance of the evidence, more likely than not. Part of your job is to determine what the customers who purchased the [allegedly infringing product] [from the Defendant] would have done if the alleged infringement had not occurred. It is important to remember that the profits I have been referring to are the profits allegedly lost by [the Plaintiff], not the profits, if any, made by [the Defendant] on the allegedly infringing sales.

Siemens Med. Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc., 637 F.3d 1269, 1289 (Fed. Cir. 2011); American Seating Co. v. USSC Grp., Inc., 514 F.3d 1262 (Fed. Cir. 2008); Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 507 (1964); Micro Chem. v. Lextron, Inc., 318 F.3d 1119, 1122-25 (Fed. Cir. 2003); Ferguson Beauregard/Logic Controls v. Mega Sys., L.L.C., 350 F.3d 1327, 1345-46 (Fed. Cir. 2003); Ericsson, Inc. v. Harris Corp., 352 F.3d 1369, 1377 (Fed. Cir. 2003); Tate Access Floors, Inc. v. Maxcess Techs., Inc., 222 F.3d 958, 971 (Fed. Cir. 2000); Grain Processing Corp. v. Am. Maize-Prods. Co., 185 F.3d 1341, 1349 (Fed. Cir. 1999); King Instruments Corp. v. Perego, 65 F.3d 941, 952 (Fed. Cir. 1995); State Indus., Inc. v. Mor-Flo Indus., Inc., 883 F.2d 1573, 1577 (Fed. Cir. 1989); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 1428 (Fed. Cir. 1988); King Instrument Corp. v. Otari Corp., 767 F.2d 853, 863-64 (Fed. Cir. 1985); Paper Converting Mach. Co. v. Magna-Graphics Corp., 745 F.2d 11, 21 (Fed. Cir. 1984); Am. Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1365 (Fed. Cir. 1984); Central Soya Co. v. Geo A Hormel & Co., 723 F.2d 1573, 1578-79 (Fed. Cir. 1983).

11.4 Lost Profits – Panduit Factors

[The Plaintiff] has proven its lost profits if you find that [the Plaintiff] has proven each of the following factors by the more likely than not standard:

  1. the demand for the patented [[product] [method]],
  2. absence of acceptable non-infringing substitutes,
  3. that [the Plaintiff] had the manufacturing and marketing ability to make all or a part of the infringing sales actually made by [the Defendant], and
  4. the amount of profit that [the Plaintiff] would have made if it were not for [the Defendant]’s infringement.

I will now explain each of these factors.

Siemens Med. Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc., 637 F.3d 1269, 1287 (Fed. Cir. 2011); DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1329 (Fed. Cir. 2009); Tate Access Floors, Inc. v. Maxcess Techs., Inc., 222 F.3d 958, 971 (Fed. Cir. 2000); Gargoyles, Inc. v. United States, 113 F.3d 1572, 1577-79 (Fed. Cir. 1997); Stryker Corp. v. Intermedics Orthopedics, Inc., 96 F.3d 1409, 1417-18 (Fed. Cir. 1996); Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1545 (Fed. Cir. 1995); State Indus., Inc. v. Mor-Flo Indus., Inc., 883 F.2d 1573, 1577 (Fed. Cir. 1989); Yarway Corp. v. Eur-Control USA, Inc., 775 F.2d 268, 275 (Fed. Cir. 1985); Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152, 1156 (6th Cir. 1978).

11.5 Lost Profits – Panduit Factors – Demand

The first factor asks whether there was demand for the patented product in the relevant market. [The Plaintiff] can prove demand for the patented product by showing significant sales of [the Plaintiff]’s own patented product.  [The Plaintiff ] also can prove demand for the patented product by showing significant sales of [the Defendant]’s products that are covered by the patent in suit. To use sales of [the Defendant]’s products as proof of this demand, however, [the Plaintiff]’s and [the Defendant]’s product must be sufficiently similar to compete against each other in the same market or market segment. You also should not consider sales of products mainly due to advertising and marketing, and unpatented features of the products as evidence of demand for the patented product.

DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1330 (Fed. Cir. 2009); Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1548-49 (Fed. Cir. 1995); BIC Leisure Prods., Inc. v. Windsurfing Int’l, Inc., 1 F.3d 1214, 1218-19 (Fed. Cir. 1993); SmithKline Diagnostics, Inc. v. Helena Labs. Corp., 926 F.2d 1161, 1165 n.3 (Fed. Cir. 1991); Gyromat Corp. v. Champion Spark Plug Co., 735 F.2d 549, 552 (Fed. Cir. 1984).

11.6 Lost Profits – Panduit Factors – Acceptable Non-Infringing Substitutes

The second factor asks whether there were non-infringing, acceptable substitutes for the patented products in the market place and the impact of such substitute products on the marketplace absent the sale of [Defendant]’s products. If the realities of the marketplace are that competitors other than [the Plaintiff] would likely have captured some or all of the sales made by the [Defendant], even despite a difference in the products, then [the Plaintiff] is not entitled to lost profits on those sales.

To be an acceptable substitute, the products must have had one or more of the advantages of the patented invention that were important to the actual buyers of the infringing products, not the public in general. The acceptable substitutes also must not infringe the patent because they were licensed under the patent or they did not include all the features required by the patent. The acceptable substitutes, in addition, must have been available during the damages period. An acceptable non-infringing substitute is available if, during the damages period, a competitor or [the Defendant] had all the necessary equipment, materials, know-how, and experience to design and manufacture the substitute and sell such substitute instead of its infringing sales at the time those infringing sales were made. If you determine that some of [the Defendant]’s customers would just as likely have purchased a non-infringing acceptable product, then [the Plaintiff] has not shown it lost those sales but for [the Defendant]’s sales.

Even if you find that [the Plaintiff]’s and [the Defendant]’s products were the only ones with the advantages of the patented invention, [the Plaintiff] is nonetheless required to prove to you that it in fact would have made the [the Defendant]’s infringing sales.

SynQor, Inc. v. Aresyn Techs., Inc., 709 F.3d 1365, 1383 (Fed. Cir. 2013); DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1331-32 (Fed. Cir. 2009); American Seating Co. v. USSC Grp., Inc., 514 F.3d 1262, (Fed. Cir. 2008); Mars, Inc. v. Coin Acceptors, Inc., 527 F.3d 1359, 1372-73 (Fed. Cir. 2008); Grain Processing Corp. v. Am. Maize-Prods. Co., 185 F.3d 1341, 1349 (Fed. Cir. 1999); Gargoyles, Inc. v. United States, 113 F.3d 1572, 1577-78 (Fed. Cir. 1997); Uniroyal, Inc. v. Rudkin-Wiley Corp., 939 F.2d 1540, 1545-46 (Fed. Cir. 1991); Standard Havens Prods., Inc. v. Gencor Indus., 953 F.2d 1360, 1373 (Fed. Cir. 1991); Kaufman Co. v. Lantech, Inc., 926 F.2d 1136, 1142-43, 1143 n.17 (Fed. Cir. 1991); SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 926 F.2d 1161, 1166 (Fed. Cir. 1991); TWM Mfg. Co. v. Dura Corp., 789 F.2d 895, 901-02 (Fed. Cir. 1986).

11.7 Lost Profits – Market Share

If you find that there were other acceptable non-infringing substitute products in the market, then [the Plaintiff] may be entitled to lost profits on a portion of [the Defendant]’s infringing sales. The burden is on [the Plaintiff] to prove that it is more likely than not that the patented product competed in the same market as [the Defendant]’s infringing product, and that [the Plaintiff] would have made a portion of the infringing sales equal to at least [the Plaintiff]’s share of that market but for [the Defendant]’s infringement. It is not necessary for [the Plaintiff] to prove that [the Plaintiff] and [the Defendant] were the only two suppliers in the market for [the Plaintiff] to demonstrate entitlement to lost profits. The burden is on [the Plaintiff], however, to show that it is more likely than not that it would have sold that portion had [the Defendant]’s product never existed. In a two-supplier marker, the burden is on [the Plaintiff] to show that its product competed in the same market with the [the Defendant]’s product and that it would have made those sales if the infringement had not occurred.

DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1330 (Fed. Cir. 2009); Ericsson, Inc. v. Harris Corp., 352 F.3d 1369, 1377-78 (Fed. Cir. 2003); Crystal Semiconductor Corp. v. Tritech Microelecs. Int’l, Inc., 246 F.3d 1336, 1353-57 (Fed. Cir. 2001); BIC Leisure Prods., Inc. v. Windsurfing Int’l, Inc., 1 F.3d 1214 (Fed. Cir. 1993); State Indus., Inc. v. Mor-Flo Indus., Inc., 883 F.2d 1573, 1577-78 (Fed. Cir. 1989).

11.8 Lost Profits – Panduit Factors – Capacity

The third factor asks whether [the Plaintiff] had the manufacturing and marketing ability to actually make the sales it allegedly lost due to [the Defendant]’s infringement. [The Plaintiff] must prove that it could have supplied the additional patented products needed to make the sales [the Plaintiff] said it lost, or that someone working with [the Plaintiff] could have supplied the additional patented products. [The Plaintiff] also must prove that it more likely than not had the ability to market and sell these additional patented products.

Wechsler v. Macke Int’l Trade, Inc., 486 F.3d 1286, 1293 (Fed. Cir. 2007); Gargoyles, Inc. v. United States, 113 F.3d 1572, 1577-78 (Fed. Cir. 1997); Fonar Corp. v. Gen. Elec. Co, 107 F.3d 1543, 1553 (Fed. Cir. 1997); Kearns v. Chrysler Corp., 32 F.3d 1541, 1551 (Fed. Cir. 1994); Datascope Corp. v. SMEC, Inc., 879 F.2d 820, 825 (Fed. Cir. 1989); Gyromat Corp. v. Champion Spark Plug Co., 735 F.2d 549, 554 (Fed. Cir. 1984).

11.9 Lost Profits – Panduit Factors – Amount of Profit Incremental Income Approach

[The Plaintiff] may calculate the amount of its lost profits by calculating its lost sales for the patented product and subtracting from that amount any additional costs or expenses that [the Plaintiff] would have had to pay to make the lost sales. This might include additional costs for making the products, and additional sales costs, additional packaging costs, additional shipping costs, etc. Any costs that do not change when more products are made, such as taxes, insurance, rent and administrative overhead, should not be subtracted from the lost sales amount. The amount of lost profits cannot be speculative but it need not be proved with unerring certainty.

Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1572 (Fed. Cir. 1996); Oiness v. Walgreen Co., 88 F.3d 1025, 1030 (Fed. Cir. 1996); Beatrice Foods Co. v. New England Printing & Lithographing Co., 923 F.2d 1576, 1579 (Fed. Cir. 1991); Kalman v. Berlyn Corp., 914 F.2d 1473, 1482-83 (Fed. Cir. 1990); State Indus., Inc. v. Mor-Flo Indus., Inc., 883 F.2d 1573, 1579-80 (Fed. Cir. 1989); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 1428 (Fed. Cir. 1988); Del Mar Avionics, Inc. v. Quinton Instrument Co., 836 F.2d 1320, 1327 (Fed. Cir. 1987); King Instrument Corp. v. Otari, 767 F.2d 853, 863-64 (Fed. Cir. 1985); Gyromat Corp. v. Champion Spark Plug Co., 735 F.2d 549, 554-55 (Fed. Cir. 1984); Paper Converting Mach. Co. v. Magna-Graphics Corp., 745 F.2d 11, 22 (Fed. Cir. 1984); Bio-Rad Labs., Inc. v. Nicolet Inst. Corp., 739 F.2d 604 (Fed. Cir. 1984); Lam, Inc. v. Johns-Manville Corp., 718 F.2d 1056, 1065 (Fed. Cir. 1983).

11.10 Price Erosion

[The Plaintiff] is entitled to recover additional damages if it can show that it is more likely than not that, but for [the Defendant]’s infringement, [the Plaintiff] [[would have been able to charge higher prices] [would not have had to lower its prices]] for its patented products. If you find that [the Plaintiff] has met its burden of proof, then you may award as additional damages an amount equal to the difference between the profits that [the Plaintiff] would have made at the higher price and the profits [the Plaintiff] actually made selling its patented products at the lower price that [the Plaintiff] charged for its patented product. This type of damage is referred to as price erosion damages.

If you find that [the Plaintiff] suffered price erosion damages, then you also may use the higher price that [the Plaintiff] would have charged in determining [the Plaintiff]’s lost sales and lost profits due to [the Defendant]’s infringement. However, if you calculate price erosion or lost profits damages using the higher price for the patented product, then you also must take into account any decrease in [the Plaintiff]’s sales that might have occurred due to the higher price for the patent products. In order to award lost profits based on price erosion, it is not required that [the Plaintiff] knew that [the Defendant]’s competing product infringed the patent, if [the Plaintiff] reduced its price to meet [the Defendant]’s prices.

Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348, 1377-80 (Fed. Cir. 2013); Siemens Med. Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc., 637 F.3d 1269, 1287 (Fed. Cir. 2011); Ericsson, Inc. v. Harris Corp., 352 F.3d 1369, 1378-79 (Fed. Cir. 2003); Vulcan Eng’g Co. v. FATA Aluminum, Inc., 278 F.3d 1366, 1377 (Fed. Cir. 2002); Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1544 (Fed. Cir. 1995) (en banc) (applying test articulated in Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152 (6th Cir. 1978)); BIC Leisure, Inc. v. Windsurfing Int’l, Inc., 1 F.3d 1214, 1218 (Fed. Cir. 1993); Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1578-79 (Fed. Cir. 1992); Amstar Corp. v. Envirotech Corp., 823 F.2d 1538, 1543 (Fed. Cir. 1987); Lam, Inc. v. Johns-Manville Corp., 718 F.2d 1056, 1065 (Fed. Cir. 1983).

11.11 Cost Escalation

[The Plaintiff] can recover additional damages if it can show that it also lost profits because its costs—such as additional marketing costs—went up as a result of [the Defendant]’s infringement of [the Plaintiff]’s patent. [The Plaintiff] must prove that it was more likely than not that its costs went up because of [the Defendant]’s actions, and not for some other reason.

Amstar Corp. v. Envirotech Corp., 823 F.2d 1538, 1543 (Fed. Cir. 1987); Lam, Inc. v. Johns-Manville Corp., 718 F.2d 1056, 1064-65 (Fed. Cir. 1983).

11.12 Convoyed Sales

In this case, [the Plaintiff] contends that the patented product is ordinarily sold along with other products, namely [collateral products]. These other products are called “collateral products.” It is part of your job to determine whether [the Plaintiff] has proved that it is entitled to damages for the lost sales of any collateral products.

To recover lost profits for lost sales of any collateral products, [the Plaintiff] must prove two things. First, [the Plaintiff] must prove that it is more likely than not that it would have sold the collateral products but for the infringement. Second, the collateral products and the patented product must be so closely related that they effectively act or are used together for a common purpose. Damages for lost collateral sales, if any, are calculated in the same way as for calculating lost profits on the patented product.

Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 507 (1964); DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1333 (Fed. Cir. 2009); Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1549-51 (Fed. Cir. 1995); State Indus., Inc. v. Mor-Flo Indus., Inc., 883 F.2d 1573, 1580 (Fed. Cir. 1989); Kori Corp. v. Wilco Marsh Buggies & Draglines, Inc., 761 F.2d 649, 656 (Fed. Cir. 1985); Paper Converting Mach. Co. v. Magna-Graphics Corp., 745 F.2d 11, 22-23 (Fed. Cir. 1984).

11.13 Reasonable Royalty – Generally

If you find that [the Plaintiff] has not proven its claim for lost profits, or if you find that [the Plaintiff] has proven its claim for lost profits for only a portion of the infringing sales, then you must consider the issue of a reasonable royalty.

The patent law provides that the amount of damages that [the Defendant] should pay [the Plaintiff] for infringing [the Plaintiff]’s patent must be enough to compensate for the infringement, but may not be less than a reasonable royalty for the use of [the Plaintiff]’s invention.

You must award the [the Plaintiff] a reasonable royalty in the amount that the [the Plaintiff] has proved it could have earned on any infringing sales for which you have not already awarded lost profit damages. A royalty is a payment made to a patent owner by someone else in exchange for the rights to [make, use, sell, or import] a patented product.

The reasonable royalty award must be based on the incremental value that the patented invention adds to the end product. When the infringing products have both patented and unpatented features, measuring this value requires a determination of the value added by the patented features. The ultimate combination of royalty base and royalty rate must reflect the value attributable to the infringing features of the product, and no more.

35 U.S.C. § 284; Ericsson, Inc. v. D-Link Syss., Inc., No. 10-CV-0473, 2014 U.S. App. LEXIS 22778 at *53, 54 (Fed. Cir. 2014); VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1326 (Fed. Cir. 2014); Apple Inc. et al v. Motorola Inc., et al., ___ F.3d ____ (Fed. Cir. Apr. 25, 2014); Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1312 (Fed. Cir. 2011); Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1324-25 (Fed. Cir. 2009); Fromson v. W. Litho Plate & Supply Co., 853 F.2d 1568, 1574 (Fed. Cir. 1998) overruled on other grounds by Knorr-Bremse Systeme Fuer Nutzfahrzeuge v. Dana Corp., 383 F.3d 1337, 1342 (Fed. Cir 2004); Minco, Inc. v. Combustion Eng’g, Inc., 95 F.3d 1109, 1119 (Fed. Cir. 1996); Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1579 (Fed. Cir. 1996); Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1554 (Fed. Cir. 1995) (en banc).

11.14 Reasonable Royalty Definition – Using the “Hypothetical Negotiation” Method

A reasonable royalty is the royalty that would have resulted from a hypothetical license negotiation between [the Plaintiff] and [the Defendant]. Of course, we know that they did not agree to a license and royalty payment. But, in order to decide on the amount of reasonable royalty damages, you should assume that that the parties did negotiate a license just before the infringement began. This is why it is called a “hypothetical” license negotiation. You should assume that both parties to the hypothetical negotiation understood that the patent was valid and infringed and both were willing to enter into a license. You should also presume that the parties had full knowledge of the facts and circumstances surrounding the infringement at the time of the hypothetical negotiation.

Apple Inc. et al v. Motorola Inc., et al., ___ F.3d ____ (Fed. Cir. Apr. 25, 2014); LaserDynamics, Inc. v. Quanta Computer, Inc. et al, 694 F.3d 51, 75 (Fed. Cir. 2012); Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1311 (Fed. Cir. 2011); Fujifilm Corp. v. Benun, 605 F.3d 1366, 1372 (Fed. Cir. 2010); Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1324-25 (Fed. Cir. 2009); Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1579 (Fed. Cir. 1996); Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1109-10 (Fed. Cir. 1996); Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1554 (Fed. Cir. 1995) (en banc); Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 870 (Fed. Cir. 1993).

11.15 Relevant Factors if Using the Hypothetical Negotiation Method

In determining the amount of a reasonable royalty, you may consider evidence on any of the following factors, in addition to any other evidence presented by the parties on the economic value of the patent:

  1. Any royalties received by the licensor for the licensing of the patent-in-suit, proving or tending to prove an established royalty.
  2. The rates paid by [the Defendant] to license other patents comparable to the [abbreviated patent number] patent.
  3. The nature and scope of the license, as exclusive or non-exclusive, or as restricted or non-restricted in terms of its territory or with respect to whom the manufactured product may be sold.
  4. The licensor’s established policy and marketing program to maintain its right to exclude others from using the patented invention by not licensing others to use the invention, or by granting licenses under special conditions designed to preserve that exclusivity.
  5. The commercial relationship between the licensor and the licensee, such as whether or not they are competitors in the same territory in the same line of business.
  6. The effect of selling the patented product in promoting sales of other products of the licensee; the existing value of the invention to the licensor as a generator of sales of its non-patented items; and the extent of such collateral sales.
  7. The duration of the [abbreviated patent number] patent and the term of the license.
  8. The established profitability of the product made under the [abbreviated patent number] patent; its commercial success; and its current popularity.
  9. The utility and advantages of the patented invention over the old modes or devices, if any that had been used for achieving similar results.
  10. The nature of the patented invention; the character of the commercial embodiment of it as owned and produced by the licensor; and the benefits to those who have used the invention.
  11. The extent to which [the Defendant] has made use of the invention; and any evidence that shows the value of that use.
  12. The portion of the profit or of the selling price that may be customary in the particular business or in comparable businesses to allow for the use of the invention or analogous inventions.
  13. The portion of the profit that arises from the patented invention itself as opposed to profit arising from unpatented features, such as the manufacturing process, business risks, or significant features or improvements added by the accused infringer.
  14. The opinion testimony of qualified experts.
  15. The amount that a licensor and a licensee (such as [the Defendant]) would have agreed upon (at the time the infringement began) if both sides had been reasonably and voluntarily trying to reach an agreement; that is, the amount which a prudent licensee—who desired, as a business proposition, to obtain a license to manufacture and sell a particular article embodying the patented invention—would have been willing to pay as a royalty and yet be able to make a reasonable profit and which amount would have been acceptable by a patentee who was willing to grant a license.
  16. Any other economic factor that a normally prudent business person would, under similar circumstances, take into consideration in negotiating the hypothetical license.

Ericsson, Inc. v. D-Link Sys., Inc., No. 10-CV-0473, 2014 U.S. App. LEXIS 22778 at *65-69 (Fed. Cir. 2014); Apple Inc. et al v. Motorola Inc., et al., ___ F.3d ____ (Fed. Cir. Apr. 25, 2014); LaserDynamics, Inc. v. Quanta Computer, Inc. et al, 694 F.3d 51, 60 (Fed. Cir. 2012); Wordtech Sys., Inc. v. Integrated Networks Solutions, Inc., 609 F.3d 1308, 1319 (Fed. Cir. 2010); ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 869-73 (Fed. Cir. 2010); Monsanto Co. v. McFarling, 488 F.3d 973 (Fed. Cir. 2007); Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1108-10 (Fed. Cir. 1996); TWM Mfg. Co. v. Dura Corp., 789 F.2d 895, 898-900 (Fed. Cir. 1986); Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970), modified and aff’d sub nom., Georgia Pacific Corp. v. United States Plywood Champion Papers, Inc., 446 F.2d 295 (2d Cir. 1971).

11.16 Reasonable Royalty—Attribution

The amount you find as damages must be the value attributable to the patented technology, as distinct from other unpatented features of the accused product, or other factors such as marketing or advertising, or [the Patentee]’s size or market position. In determining the appropriate royalty base and the appropriate royalty rate, the ultimate combination of both the royalty rate and the royalty based must reflect the value attributable to the patented technology. It is not sufficient to use a royalty base that is too high and adjust the damages downward by applying a lower royalty rate. Similarly, it is not appropriate to select a royalty base that is too low and adjust it upward by applying a higher royalty rate. Rather, you must determine an appropriate royalty rate and an appropriate royalty base that reflect the value attributable to the patented technology.

VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308 (Fed. Cir. 2014); LaserDynamics, Inc. v. Quanta Computer, Inc. et al, 694 F.3d 51, 60 (Fed. Cir. 2012).

11.17 Reasonable Royalty—Entire Market Value Rule

A product may have both infringing and non-infringing components. In such products, royalties should be based not on the entire product, but instead on the “smallest salable unit” that practices the patent and has close relation to the claimed invention. Where the smallest salable unit is, in fact, a multi-component product containing several non-infringing features with no relation to the patented feature, damages must only be based on portion of the value of that product is attributable to the patented technology. This may involve estimating the value of a feature that may not have ever been individually sold.

The entire market value rule is a narrow exception to this general rule. In order to recover damages as a percentage of revenues or profits attributable to the entire product, [the Patentee] must establish that it is more likely than not that the patented feature drives the demand for an entire multi-component product.

VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1326-29 (Fed. Cir. 2014); LaserDynamics, Inc. v. Quanta Computer, Inc. et al, 694 F.3d 51, 67 (Fed. Cir. 2012); Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1318 (Fed. Cir. 2011); Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1336-37 (Fed. Cir. 2009); Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1549-51 (Fed. Cir. 1995) (en banc).

11.18 Reasonable Royalty – Multiple Patents

If you find that [the Defendant] infringed multiple patents, even by a single infringing act and if you award a reasonable royalty for the infringement, then you may award separate royalties to [the Plaintiff] for each patent that was infringed. You also may consider the number of patent licenses that are needed for the allegedly infringing product and the effect on the hypothetical negotiation of having to pay a royalty for each of those licenses.

Stickle v. Heublein, Inc., 716 F.2d 1550, 1561 n.8 (Fed. Cir. 1983); Integra Lifesciences I, Ltd. v. Merck KGaA, 331 F.3d 860, 871 (Fed. Cir. 2003), reversed on other ground, Merck KGaA v. Integra Lifesciences I., Ltd., 545 U.S. 193 (2005); Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1310 (Fed. Cir. 2007).

11.19 Reasonable Royalty – Timing

Although the relevant date for the hypothetical license negotiation is just before the infringement began, you may consider evidence relating to events after the infringement began, any actual profits made by [the Defendant] due to its infringement and any commercial success of the patented invention or the infringing products after that date.

Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1324-25 (Fed. Cir. 2009); TWM Mfg. Co. v. Dura Corp., 789 F.2d 895, 898-900 (Fed. Cir. 1986); Studiengesellschaft Kohle, mbH v. Dart Indus., Inc., 862 F.2d 1564, 1570-72 (Fed. Cir. 1988); Fromson v. W. Litho Plate & Supply Co., 853 F.2d 1568, 1575-76 (Fed. Cir. 1988), overruled on other grounds by Knorr-Bremse Systeme Fuer Nutzfahrzeuge v. Dana Corp., 383 F.3d 1337, 1342 (Fed. Cir 2004).

11.20 Reasonable Royalty – Availability of Non-Infringing Substitutes

In determining a reasonable royalty, you may also consider evidence concerning the availability and cost of non-infringing alternatives to the patented invention. A non-infringing alternative must be an acceptable product that is licensed under the patent or that does not infringe the patent.

Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1313 (Fed. Cir. 2011); Mars, Inc. v. Coin Acceptors, Inc., 527 F.3d 1359, 1372-73 (Fed. Cir. 2008);  Zygo v. Wyko, 79 F.3d 1563, 1571-72 (Fed. Cir. 1996).

11.21 Reasonable Royalty – Use of Comparable License Agreements

When determining a reasonable royalty, you may consider evidence concerning the amounts that other parties have paid for rights to the patent[s] in question, or for rights to similar technologies. A license agreement must not be perfectly comparable to a hypothetical license that would be negotiated between [the Plaintiff] and [the Defendant] in order for you to consider it. However, if you choose to rely upon evidence from any other license agreements, you must account for any differences between those licenses and the hypothetically negotiated license between [the Plaintiff] and [the Defendant], in terms of the technologies and economic circumstances of the contracting parties, when you make your reasonable royalty determination.

Ericsson, Inc. v. D-Link Sys., Inc., No. 10-CV-0473, 2014 U.S. App. LEXIS 22778 at *57-59 (Fed. Cir. 2014); VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1330-31 (Fed. Cir. 2014); Apple Inc. et al v. Motorola Inc., et al., 757 F.3d 1286, 1325-26 (Fed. Cir. Apr. 25, 2014); LaserDynamics, Inc. v. Quanta Computer, Inc. et al, 694 F.3d 51, 77-81 (Fed. Cir. 2012); ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 869-70 (Fed. Cir. 2010); Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 129, 1336 (Fed. Cir. 2009).

11.22 Doubts Resolved Against Infringer

Any doubts that you may have on the issue of damages due to [the Defendant]’s failure to keep proper records should be decided in favor of [the Plaintiff]. Any confusion or difficulties caused by [the Defendant]’s records also should be held against [the Defendant], not [the Plaintiff].

Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1572-73 (Fed. Cir. 1996); Lam, Inc. v. Johns-Manville Corp., 718 F.2d 1056, 1065 (Fed. Cir. 1983).

11.23 Standards Essential Patents

 

Practice Note: Substantial recent attention has been given to the appropriate royalty rate for Standards-Essential Patents (SEPs).  Although several district courts have applied the Georgia-Pacific factors in assessing a Fair Reasonable and Non-Discriminatory (FRAND or RAND) royalty rate, the Federal Circuit has held some Georgia-Pacific factors may not be relevant. Rather, the jury must be instructed on the particulars of the FRAND commitment made by the patentee, on established principles of patent law, and on those Georgia-Pacific factors that may be relevant. The jury must not be instructed on any factors that are not relevant to the determination of the royalty. The jury must be instructed on apportionment of the value of the portion of the standard as a whole to which the patented technology relates. Finally, the jury must be instructed on apportionment of the value of the patented technology and not the value added by standardization. These will typically be fact-specific issues that will depend on the facts of the individual case. Ericsson, Inc. v. D-Link Systems, Inc., 773 F.3d 1201 (Fed. Cir 2014).

12. Willful Infringement

12.0 Willful Infringement – Generally

Practice Note:  The following instruction should be given only if the patent owner contends willful infringement and has introduced sufficient evidence to support this contention.

If you find that it is more likely than not that [the Defendant] infringed [the Plaintiff]’s patent, either literally or under the doctrine of equivalents, then you must also determine whether or not [the Defendant]’s infringement was willful. In contrast to proving that infringement is more likely than not, [the Patentee] must prove willfulness by clear and convincing evidence. Willfulness requires clear and convincing evidence that:

  1. [The Defendant] acted despite an objectively high likelihood that its actions infringed a valid patent; and
  2. This objectively high likelihood of infringement was either known or so obvious that it should have been known to [the Defendant].

In making the determination of whether [the Defendant] acted despite an objectively high likelihood that its actions infringed a valid patent, you are to consider what a reasonable person would have believed and are not to consider [the Defendant]’s actual state of mind.

Practice Note: In Bard, the Federal Circuit stated “the objective determination of recklessness, … is best decided by the judge.…,”682 F.3d at 1007, and that “the judge may when the defense is a question of fact or a mixed question of law and fact allow the jury to determine the underlying facts relevant to the defense in the first instance…. But, … the ultimate legal question of whether a reasonable person would have considered there to be a high likelihood of infringement of a valid patent should always be decided as a matter of law by the judge.” Id. at 1008. “The judge remains the final arbiter of whether the defense was reasonable, even when the underlying fact question is sent to a jury.” Id. at 1007. But cf. Powell v. Home Depot USA, Inc., 663 F.3d. 1221, 1236-37 (Fed. Cir. 2011) (“Under the objective prong, the answer to whether an accused infringer’s reliance on a particular issue or defense is reasonable is a question for the court when the resolution of that particular issue or defense is a matter of law.Should the court determine that the infringer’s reliance on a defense was not objectively reckless, the question of willfulness should not be sent to the jury because the objective prong is a predicate to the subjective prong. When the resolution of a particular issue or defense is a factual matter, however, such as whether or not reliance on that issue or defense was reasonable under the objective prong, the issue is properly considered by the jury.

In circumstances, then, where separate issues of fact and law are presented by an alleged infringer as defenses to willful infringement, the objective recklessness inquiry may require analysis by both the court and the jury. For instance, in this case, certain components of the case were before the jury, while others were not. The court decided issues of claim construction and inequitable conduct, neither of which was before the jury. Thus, while the jury was in a position to consider how the infringement case weighed in the objective prong analysis, on other components—such as claim construction—the objective prong question was properly considered by the court.”) (citations omitted). [25]

In determining whether [the Defendant] knew of the objectively high likelihood of infringement or whether the likelihood was so obvious that [the Defendant] should have known of that likelihood, you must consider the totality of the circumstances. The totality of the circumstances comprises a number of factors, which include, but are not limited to, whether [the Defendant] intentionally copied the claimed invention or a product covered by patent, whether [the Defendant] relied on competent legal advice, and whether [the Defendant] presented a substantial defense to infringement, including the defense that the patent is invalid [or unenforceable].

Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 682 F.3d 1003, 1006-08 (Fed. Cir. 2012); Powell v. Home Depot USA, Inc., 663 F.3d. 1221, 1236-37 (Fed. Cir. 2011); i4i Ltd. P’Ship. v. Microsoft Corp., 598 F.3d 831, 859-60 (Fed. Cir. 2010); Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1319 (Fed. Cir. 2010); In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc); Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337, 1347 (Fed. Cir. 2004) (en banc).


[25] As the earlier case, Powell is controlling precedent. See Deckers Corp. v. U.S., No. 2013-1356, Slip. Op. at *27 (Fed. Cir. May 13, 2014) (“We have also adopted the rule that a panel of this court—which normally sits in panels of three, and not en banc—is bound by the precedential decisions of prior panels unless and until overruled by an intervening Supreme Court or en banc decision.”). Compare Scripps Clinic & Res. Found v. Genentech, Inc., 927 F.2d 1565 (Fed. Cir. 1991) with Atlantic Thermoplastics Co. v. Faytex Corp., 970 F.2d 834 (Fed. Cir. 1992).

12.1 Willful Infringement – Absence of Legal Opinion

Practice Note:  The following instruction should be given only if the Defendant does not claim reliance on a legal opinion to rebut willfulness.

In considering the totality of the circumstances whether [the Defendant] acted willfully, you may consider as one factor whether [the Defendant] obtained a competent legal opinion. The absence of a legal opinion is one factor that may be considered.

You may not assume that merely because [the Defendant] did not obtain a legal opinion, that the opinion would have been unfavorable. The absence of a lawyer’s opinion is not sufficient for you to find that [the Defendant] acted willfully. Rather, the issue is whether the Defendant had a good faith belief that they were not infringing or that the asserted patent was invalid. An opinion of counsel is not necessary for [the Defendant] to establish this defense.

Spectralytics, Inc. v. Cordis Corp., 649 F.3d 1336, 1347-48 (Fed. Cir. 2011); Aspex Eyewear, Inc. v. Clariti Eyewear, Inc., 605 F.3d 1305, 1313 (Fed. Cir. 2010); In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc).

*          *          *

VI. Acknowledgments

The contributions of the following attorneys to the drafting and commenting on of these model jury instructions are gratefully acknowledged.

The 1997 Version

Mark Abate
Ken R. Adamo
Joseph Z. Allen
Robert L. Baechtold
Russell J. Barron
Christopher R. Benson
David J. Brezner
Henry L. Brinks
Jeffrey N. Costakos
John F. Delaney
Bradford J. Duft
Donald R. Dunner
Richard D. Fladung
Floyd A. Gibson
Eileen M. Herlihy
Roy E. Hofer
Michael K. Kirschner
Steven S. Korniczky
William E. Lahey
Bradley G. Lane
Robert C. Laurenson
Gary H. Levin
Jeffrey I.D. Lewis
Brent P. Lorimer
Don W. Martens
Alice O. Martin
Clifton E. McCann
Gaynell C. Methvin
Frederick G. Michaud, Jr.
Jeffrey D. Mills
John B. Pegram
Michael F. Petock
Peter H. Priest
Jerrold B. Reilly
Daniel M. Riess
William C. Rooklidge
Alan J. Ross
John M. Skenyon
Allan Sternstein
Lawrence M. Sung
Jennifer A. Tegfeldt
David C. Wright

The 2005 version

Kley Achterhof
Stephanie Barbosa
Kelli Deasy
Denise DeFranco
Barbara Fiacco
Katherine Fick
Mareesa Frederick
Stephanie Harris
Wendell Harris
Andrew Lagatta
Christy Lea
Kalun Lee
Rashida MacMurray
Steven Maslowski
William McGeveran
George Medlock
Mary Beth Noonan
Matthew Pearson
Mark Schuman
Steve Sheldon
Sean Seymour
John Skenyon
Stephen Timmins
Hema Viswanathan
Aaron Weiss
Elizabeth Wright
Jeremy Younkin

The 2007 version

Aaron Barlow
Dave Bennett
Elaine Hermann Blais
Walter Bookhardt
Scott Breedlove
Patrick Coyne
John Crossan
Elizabeth Day
Conor Farley
John Hintz
Scott Howard
Kirby Lee
Gregory Lyons
Joshua Masur
Clifton McCann
Tim Meece
Heather Mewes
Joe Miller
Kenneth Mitchell
John Moran
Jeff Nichols
Scott Pivnick
Mirriam Quinn
Amber Rovner
Michael Sacksteder
John Scheibeler
John Schneider
Mark Schuman
Jeff Sheldon
John Skenyon
Steve Swinton
Tim Teter
Kurt Van Thomme
David Todd
Michael Valek
Alastair Warr
Adam Wichman
Daniel Winston
Steven Zeller

The 2012 version

Matthew Blackburn
Elaine Blais
Carrie Beyer
Gary Buccigross
Brian Butler
Justin Cohen
Danielle Coleman
Craig Countryman
Tom Davison
David DeBruin
Evan Finkel
Glenn Forbis
Nicolas Gikkas
Aleksander Goranin
Angie Hankins
Ben Hanrahan
Ben Hodges
Lisa Kattan
William Lenz
Greg Lewis
Robert Matthews
John Moy
Paul Overhauser
Ajeet Pai
John Pinkerton
Scott J. Pivnick
William Poynter
Woody Pollack
Joe Richetti
Spencer Ririe
John Skenyon
Laura Smalley
Andrew Stein
Steve Swinton
Lynn Tyler
Jennifer Vein, Smr. Assoc.
Jose Villareal
Steven Zeller

The 2014 version 

Ken Adamo
Aden Allen
Alan Anderson
Matt Bernstein
Felicia Boyd
Joshua Brady
Cheryl Burgess
Kristin Cleveland
Patrick J. Coyne
David De Bruin
Denise DeFranco
Larry DeMeo
Alper Ertas
Peter Forrest
Aaron Frankel
Gary Frischling
Mel Garner
Derek Gilliland
James Goggin
David Harth
Anthony Hartmann
Rudy Hofmann
Daniel Holmander
Travis Jensen
Neil Jones
James Kamp
Karen Keller
Nicholas Kim
Suzanne Konrad
Samuel Lewis
David Moore
Jeffrey Mote
Don Niles
Eric Osterberg
Paul Overhauser
Ajeet Pai
Henrik Parker
Ken Parker
Roger Parkhurst
John Pegram
Rafael A. Perez-Pineiro
Scott J. Pivnick
Connie Ramos
Russell Rigby
Spencer Ririe
Victor Rodriguez Reyes
David Ruschke
Jeffrey Sadowski
Javier Sobrado
Kim Schenk
Michael Strapp
Mark Supko
Stephen Swinton
Jamaica Szeliga
Peter Toren
Christopher Tokarczyk
Steven Trybus
Colette Verkuil
Mark Whitaker
A. Robert Weaver
Steven McMahon Zeller
RJ Zayed