Post on 27-Apr-2021
IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEBRASKA
STRECK LABORATORIES, INC., ) 8:06CV458 a Nebraska corporation, )
) Plaintiff, )
)vs. ) FINAL JURY INSTRUCTIONS
) RESEARCH & DIAGNOSTIC SYSTEMS, ) INC., a Minnesota Corporation, and ) TECHNE CORPORATION, a Minnesota ) Corporation, )
) Defendants. )
INSTRUCTION NO. 1
DUTY
It will be your duty to decide from the evidence whether the plaintiff is entitled to a
verdict against the defendant. From the evidence, you will decide what the facts are.
You are entitled to consider the evidence in the light of your own observations and
experiences in life. You may use reason and common sense to draw deductions from
facts established by the evidence. You will then apply those facts to the law which I give
you in these and the other instructions. In that way, you will reach your verdict. You are
the sole judges of the facts; but you must follow the law as stated in my instructions,
whether you agree or disagree with the law stated in the instructions.
Do not allow sympathy or prejudice to influence you. The law requires that your
verdict be unaffected by anything except the evidence, your common sense, and the law
stated in these and other instructions.
Anything that I may say or do during the trial must not be taken by you as an
indication of what I think of the evidence or what I think your verdict should be.
INSTRUCTION NO. 2
EVIDENCE
The word "evidence" includes the testimony of witnesses; documents and other
things received as exhibits; any facts that have been stipulated, that is, formally agreed
to by the parties; and any facts that have been judicially noticed, that is, facts which I say
you must accept as true.
The following things are not evidence:
1. Statements, arguments, questions and comments by lawyers
are not evidence.
2. Objections are not evidence.
Lawyers have an obligation to their clients to object when they believe that the
evidence being offered is improper under the rules of evidence. You should not be
influenced by the lawyer’s objection or by my ruling on it. If I sustain an objection to a
question, ignore the question. If I overrule the objection, treat the answer like any other
answer. If so, do not attempt to draw any inference in favor of either side as the result of
any ruling I make. Finally, if I instruct you that some item of evidence is received for a
limited purpose only, you must follow that instruction. Pay particularly close attention to
this sort of limiting instruction, because it may not be available to you in writing later in
the jury room.
3. Testimony that I strike from the record or tell you to disregard
is not evidence and must not be considered.
4. Anything you see or hear about this case outside this courtroom is
not evidence and must be disregarded.
Finally, some of you may have heard the phrases or terms "direct evidence" and
"circumstantial evidence." Direct evidence is direct proof of a fact, such as testimony by
an eye witness. Circumstantial evidence is proof of facts from which you may infer or
conclude that other facts exist. The law makes no distinction between the weight to be
given to either direct or circumstantial evidence. You should give the evidence the
weight that you believe the evidence is entitled to receive.
INSTRUCTION NO. 3
BENCH CONFERENCES AND RECESSES
During the trial it may become necessary for me to talk with the lawyers outside
your hearing, either by having a bench conference while you are present in the
courtroom, or by calling a recess. Please understand that while you are waiting, the
court and counsel are working. The purpose of these conferences is to decide how
certain evidence is to be treated under the rules of evidence or to decide a particular
procedure to be followed in the case. We will, of course, do what we can to minimize
the number and length of these conferences.
INSTRUCTION NO. 4
JURY QUESTIONS
While evidence is being presented, you are not allowed to raise your hands to ask
questions about that evidence. However, if you do have questions about something you
hear during the examination of a witness, you may write your questions down on a piece
of paper. When attorneys have finished examining that witness, you may submit your
written question or questions. I will review each question with the attorneys. You may
not receive an answer to your question because I may decide that the question is not
proper under the rules of evidence. The attorneys may choose to answer your questions
by asking more questions of the witness. But even if the question is proper, you may not
get an immediate answer to your question. For instance, a witness or an exhibit that you
will see later in the trial may answer your question.
INSTRUCTION NO. 5
NOTE-TAKING
If you wish, you may take notes to help you remember what witnesses said.
Notes may be helpful to you because at the end of the trial, you must make your
decision based on what you recall of the evidence. You will not have a written transcript
to consult, and it may not be practical for the court reporter to read back lengthy
testimony. Therefore, you should pay close attention to the testimony as it is given.
If you do take notes, please keep them to yourself until you and the other jurors
go to the jury room to decide this case. However, do not let note-taking distract you to
the point that you miss hearing other testimony from the witness.
During the trial, documents or other physical items may be received into
evidence. At the present, however, you will not be supplied with a list of exhibits which
are received in evidence. Therefore, you may wish to make notes about the exhibits,
especially their description and number, so that you can refer to those exhibits while you
are deliberating.
When we take our recess each day for the lunchtime break and when we take our
recess each night, please take your notes to the jury room and leave your notes there.
The courtroom deputy will take custody of your notes and secure them.
No one will read your notes but you. Your notes will be destroyed after the trial is
over.
INSTRUCTION NO. 6
ALL PERSONS ARE EQUAL BEFORE THE LAW
This is a case involving corporations. The case should be considered and
decided by you as an action between two persons of equal standing and worth in the
community, persons holding the same or similar position in life. A corporation is entitled
to the same fair trial at your hands as a private individual. All parties, whether business
organizations or individuals, stand equal before the law, and are to be dealt with as
equals in a court of justice.
INSTRUCTION NO. 7
BURDEN OF PROOF - PREPONDERANCE OF THE EVIDENCE
When a party has the burden of proof on any claim or defense by a
preponderance of the evidence, it means the evidence must persuade you that the claim
or defense is more probable than not.
You should base your decision on all of the evidence, regardless of which party
presented it.
INSTRUCTION NO. 8
BURDEN OF PROOF - CLEAR AND CONVINCING EVIDENCE
When a party has the burden of proving any claim or defense by clear and
convincing evidence, it means the evidence has persuaded you that the claim or
defense is highly probable.
Such evidence requires a higher standard of proof than proof by a preponderance
of the evidence. Again, you should base your decision on all of the evidence, regardless
of which party presented it.
It is a higher burden than proof by a preponderance of the evidence, but is not as
high as “proof beyond a reasonable doubt,” which is a stricter standard that applies in
criminal cases. It does not apply in civil cases such as this one. You should, therefore,
put the term “proof beyond a reasonable doubt,” out of your minds.
INSTRUCTION NO. 9
WITNESSES
In deciding what the facts are, you may have to decide what testimony you
believe and what testimony you do not believe. You may believe all of what a witness
said, or only part of it, or none of it.
In deciding what testimony to believe, consider the witness’s intelligence, the
opportunity the witness had to have seen or heard the things testified about, the
witness’s memory, any motives that witness may have for testifying a certain way, the
manner of the witness while testifying, whether that witness said something different at
an earlier time, the general reasonableness of the testimony, and the extent to which the
testimony is consistent with any evidence that you believe.
In deciding whether or not to believe a witness, keep in mind that people
sometimes hear or see things differently and sometimes forget things. You need to
consider therefore whether a contradiction is an innocent misrecollection or lapse of
memory or an intentional falsehood, and that may depend on whether it has to do with
an important fact or only a small detail.
The fact that one side may use a greater number of witnesses or present a
greater quantity of evidence should not affect your decision. Rather, determine which
witness or witnesses and which evidence appears accurate and trustworthy. It is the
weight of the evidence that counts—not the number of witnesses.
If the testimony of a single witness produces in your minds a belief in the likely
truth of any fact and would justify a verdict in accordance with the witness’s testimony,
even though a number of witnesses may have testified to the contrary, and you have
considered
all of the evidence in the case, then you hold greater belief in the accuracy and reliability
of this single witness.
INSTRUCTION NO. 10
EXPERT WITNESS
A witness who has special knowledge, skill, experience, training, or education in a
particular area may testify as an expert in that area. An expert may state opinions in the
witness’s area of expertise and may also state the reasons for those opinions.
You determine what weight, if any, to give to an expert's testimony just as you do
with the testimony of any other witness. You should consider the expert's credibility as a
witness, the witness' qualifications as an expert, including the witness’s education and
experience, the sources of the expert's information, the soundness of the reasons given
for any opinions expressed by the expert, the acceptability of the methods used, and all
the other evidence in the case.
If you decide that the opinion of an expert is not based upon sufficient education
or experience, or if you conclude that the reasons given in support of the opinion are not
sound, or if you conclude that the opinion is outweighed by other evidence including that
of another expert witness, you may disregard the opinion in part or in its entirety.
INSTRUCTION NO. 11
DEPOSITION TESTIMONY
During this trial, some testimony will be presented by deposition. Testimony in a
deposition is under oath and is entitled to the same fair and impartial consideration that
you give to other testimony from the witness stand in this courtroom.
INSTRUCTION NO. 12
CONDUCT OF THE JURY
To insure fairness, jurors are asked to obey the following rules:
First, do not talk among yourselves about this case, or about anyone involved
with this case, until the end of the case when you go to the jury room to decide on your
verdict.
Second, do not talk with anyone else about this case, or about anyone involved
with it, until the trial has ended and you have been discharged as jurors.
Third, during this trial when you are outside this courtroom, do not listen to or let
anyone try to tell you anything about this case. Do not let anyone talk to you about
anyone involved with this case until the trial has ended and I have accepted your verdict.
If anyone tries to talk to you about this case during the trial, please promptly report the
matter to me.
Fourth, during the trial you should not talk with or speak to any of the parties,
lawyers or witnesses involved in this case, which means that you should not even pass
the time of day with any of them. If a person from one side of the lawsuit sees you
talking to a person from the other side, even if it is on a matter unconnected with this trial
or simply to pass the time of day, such contact might arouse an unwarranted suspicion
about your fairness. If a lawyer, party or witness does not speak to you when you pass
in the hall, ride the elevator, or encounter each other elsewhere while this trial is taking
place, do not think he or she is being rude. Those persons are not supposed to talk or
visit with you, either.
Fifth, you must decide this case on the basis of evidence presented in the
courtroom. Therefore, do not read any news stories or articles about the case, or about
anyone involved with this case, or listen to any radio or television reports about the case
or about anyone involved with it. In fact, until the trial is over you should probably avoid
INSTRUCTION NO. 13reading any newspapers or news journals, and avoid listening to any TV or radio
newscasts. There might not be any news reports of this case, but, if there are, you might
find yourself inadvertently reading or listening to something before you realize what you
are doing.
Sixth, do not do any research, on the internet or otherwise, or make any
investigation on your own concerning this case. Do not use or refer to a dictionary or
any law books concerning any aspect of this case, including any evidence introduced.
Do not visit the scene of any incident that may have been mentioned in this case.
Further, you are not to communicate between yourselves or with anyone else about the
case via cellphone, text-message, e-mail, twitter, or otherwise, or to access the Internet
with those devices to do research or otherwise investigate the case.
Seventh, do not form an opinion about any fact or issue in the case until you have
received all of the evidence, have heard arguments of counsel, have been instructed as
to the law of the case, and have retired to the jury room. Consequently, do not make up
your mind during the trial about what the verdict should be. Keep an open mind until
after you have gone to the jury room to decide the case and have discussed the
evidence with the other jurors.
Finally, do not be influenced by sympathy or prejudice. Do not indulge in any
speculation, guess, or conjecture. And do not make any inferences which are not
supported by the evidence.
INSTRUCTION NO. 13
OUTLINE OF TRIAL
The trial will proceed in the following manner:
First, the attorney for the plaintiff may make an opening statement. Next, the
attorney for the defendants may make an opening statement. An opening statement is
not evidence or argument. It is an outline of what the party intends to prove, a summary
of what the attorney expects the evidence to be.
The plaintiff's attorney will then present evidence through a direct examination of
a witness. The defendants’ attorney may then cross-examine that witness. After the
cross- examination, the plaintiff’s attorney may ask additional questions on re-direct. The
defendants’ attorney may also ask questions on re-cross. After the plaintiff has
presented all her witnesses, the plaintiff will rest. The defendants will then present their
case. The defendants may present evidence through direct examination of witnesses
and plaintiff’s attorney may cross-examine those witnesses. Re-direct and re-cross
examinations may also take place.
After the evidence is completely presented, the attorneys will make their closing
arguments to summarize and interpret the evidence for you. Just as with opening
statements, these closing arguments are not evidence. I will then instruct you further on
the law. After that you will retire to the jury room to deliberate on your verdict.
INSTRUCTION NO. 14
BACKGROUND OR OVERVIEW
The trial of the issues between the parties in this case requires the application of
the laws governing United States patents. You have probably some general ideas
about patents and some of you may have yourselves obtained patents or had licenses
or otherwise learned something about patent law but I think it is helpful to give some
general explanation about the patent system before proceeding to opening statements.
So before moving to opening statements, we will play a video for you that gives a
general explanation about the United States Patent and Trademark Office and the patent
process.
We will now watch the video on the United States Patent and Trademark Office. I
will then briefly explain the parties' basic contentions in more detail.
INSTRUCTION NO. 15
POSITIONS OF THE PARTIES
The plaintiff in this case is named Streck, Inc., whom I shall refer to as “Streck”
throughout these instructions. The defendants in this case are Research and Diagnostic
Systems, Inc. and Techne Corporation, whom I shall refer to collectively as “R&D”
throughout these instructions. The patents involved in this case relate to biological
substances used as “controls” in machines that analyze blood samples in medical
laboratories. These control solutions are used by labs to make sure these blood testing
machines are performing properly and rendering reliable results. In other words,
hematology reference controls tell an instrument operator whether a hematology
instrument is functioning properly.
Plaintiff, Streck Inc., is the owner of certain patents granted by the United States
Patent and Trademark Office to Dr. Wayne Ryan and John Scholl for inventions in
connection with such control solutions. A patent is identified by the Patent Office by
number and is often referred to by the last three digits in that number. During this case,
we will generally refer to the patents by their last three digits. Streck contends that
R&D makes, uses, offers for sale and sells certain integrated hematology control
products (the “CBC-XE,” the “CBC-4K Plus Retics,” and the "CBC-5D Plus Retics"
hematology controls, sometimes referred to as “the accused products”) that infringe
certain claims of its patents.
It has been determined that sale of R&D's accused products infringe claims 28 and
29 of the '500 patent, claims 1, 5, 6, 8, and 13 of the '668 patent, and claim 13 of the
'388 patent, if those claims are valid. All of R&D's accused products infringe at least one
claim of each patent. The court has also determined that the claims of the patents
contain an adequate written description of the claimed invention.
R&D asserts claims 28 and 29 of the '500 patent, claims 1, 5, 6, 8 and 13 of the
'668 patent, and claim 13 of the '388 patent are invalid for failing to enable others skilled
in the art to make and use the invention and because Dr. Alan Johnson of R&D was the
first to invent the claimed invention. Streck denies that Dr. Johnson was the first to
invent the integrated controls claimed in those patents. Streck asserts that Dr.
Johnson did not exercise reasonable diligence in reducing its claimed invention to
practice.
Invalidity is a defense to infringement. Therefore, even though the United States
Patent Office (“PTO”) examiner has allowed the claims of the Streck patents to issue,
you, the jury, will have the ultimate responsibility for deciding whether the claims of the
patents are valid. Because a patent issued by the United States Patent Office, and
each of its claims, is presumed to be valid, R&D bears the burden of proving invalidity by
clear and convincing evidence.
It is my job to tell you what the patent claims mean. You must follow my
instructions as to the meaning of the patent claims. I will provide you with the meanings
of certain important terms in a few moments.
If you decide that R&D has not proved by clear and convincing evidence that any
one of the asserted claims of the patents is invalid, then you will also be asked to
determine damages. You may also need to decide whether the infringement was willful.
If you decide that any infringement was willful, that decision should not affect any
damage award you make. The court will take willfulness into account later. You will
be provided further instructions on damages issues after you have heard the evidence.
INSTRUCTION NO. 16
UNCONTROVERTED FACTS
The plaintiff and the defendants have stipulated, that is, they have agreed to the
following facts. You should accept them as true.
1. Plaintiff Streck, Inc., is a corporation having a place of business at 7002 South
109th Street, LaVista, NE 68128.
2. Defendants Research & Diagnostic Systems, Inc., and Techne Corporation,
are corporations having their principal places of business at 614 McKinley Place NE,
Minneapolis, MN 55413.
3. Research & Diagnostic Systems, Inc. is a wholly-owned subsidiary of Techne
Corporation.
4. Streck is the owner by assignment of three patents at issue in this lawsuit:
U.S. Patent No. 6,200,500 Bl issued on March 31, 2001 (the "'500 patent"); U.S.
Patent No.
6,221,668 Bl issued on April 24, 2001 (the '''668 patent"); and U.S. Patent No. 6,399,388
Bl issued on June 4, 2002 (the '''388 patent"), each entitled "Hematology Control and
System for Multi-Parameter Hematology Measurements."
5. Hematology is the branch of science that relates to the study of blood. Several
other companies, not parties to this lawsuit, make automated hematology analyzers that
detect and count the various components of human blood.
6. Automated hematology analyzers are used by clinical laboratories to analyze
patient blood samples. These analyzers count the various cellular components of whole
blood such as red blood cells, white blood cells and reticulocytes. Controls for these
analyzers allow laboratories to periodically monitor the accuracy and consistency of
these automated hematology analyzers.
7. A hematology control composition is a preparation of one or more blood
components, including naturally occurring blood components, or analogs thereof, which
sufficiently simulate the relevant characteristics of whole blood when measured by the
hematology analyzer. Each component of a control appears to the analyzer as its
corresponding component in whole blood when examined by the particular analyzer.
8. Control manufacturers like Streck and Research & Diagnostic Systems, Inc.,
run a sample from each large batch or "lot" of control product that they make through
their in-house, calibrated analyzers to determine the number of cells in each type of cell
component in that particular lot of control. These numbers will then be listed on an
"assay sheet" that goes with each vial of control made from that lot of product when it is
sold to customers. A customer then uses the control to determine the accuracy of his
analyzer by running the control through the analyzer, and comparing the values reported
by his analyzer to the values on the assay sheet provided by the control manufacturer.
If the values generated by the customer's analyzer are within the range of acceptable
values provided on the assay sheet, this indicates that the customer's analyzer is
functioning properly.
9. The asserted claims of the patents-in-suit are directed to a specific type of
control, called an "integrated control" by the parties, that contains at least a white blood
cell component capable of exhibiting a five-part differential combined with a reticulocyte
component.
10. Both Streck and Research & Diagnostic Systems, Inc., currently make, use,
sell, and offer for sale in the United States integrated reticulocyte controls.
11. Research & Diagnostic Systems, Inc. currently makes and sells three
integrated reticulocyte control products: "CBC-4K Plus Retics," "CBC-XE," and "CBC-5D
Plus Retics" (collectively "the Accused Products").
INSTRUCTION NO. 17
THE MEANING OF CLAIM TERMS
I have defined certain words and phrases in the patent claims. During your
deliberations you must apply these meanings. You must follow my interpretation of the
patent claim language even if you do not agree with it.
Control composition: a preparation of one or more blood components,
including naturally occurring blood components, or analogs thereof, which sufficiently
simulate the relevant characteristics of whole blood when measured by the hematology
instrument.
Component: an element forming measurable part of the whole.
A fixed and stabilized w hite blood cell component: white blood cells or
analogs thereof that have been preserved to stabilize the cell morphology analyzed by
the hematology instrument.
Reticuloc y te: immature anucleate red blood cells containing some ribonucleic
acid.
Stabilized reticuloc y te component: a component that appears to the
instrument as immature, anucleate red blood cells containing a detectable amount of
ribonucleic acid, and that has been treated so as to inhibit undue diminishment of its
utility as a component of a hematology control.
Reticulated platelet component: a component that appears to the instrument
as platelet cells containing some ribonucleic acid enclosed within the membrane.
White blood cells for cellular t y pes: white blood cells that simulate the relevant
characteristics of the following: lymphocytes, monocytes, neutrophils, eosinophils or
basophils.
Wh it e b l ood cells for all phenot y pes: white blood cells in which antigenic sites
have been preserved for a useful period of time.
Reticuloc y te analogs: particles made from a source other than naturally
occurring reticulocytes, such particles appearing to the instrument as reticulocytes that
naturally occur in the whole blood for which the instrument is intended.
INSTRUCTION NO. 18
INVALIDITY - GENERALLY
Patent invalidity is a defense to patent infringement. Even though the PTO
examiner has allowed the claims of a patent, you have the ultimate responsibility for
deciding whether the claims of the patent are valid.
I will now instruct you on the invalidity issues you should consider. As you
consider these issues, remember that R&D must prove that the claims are invalid by
clear and convincing evidence.
INSTRUCTION NO. 20
INVALIDITY – ANTICIPATION (INVENTED BY SOMEONE ELSE)
R&D contends that claims 28 and 29 of the '500 patent, claims 1, 5, 6, 8 and 13 of
the '668 patent, and claim 13 of the '388 patent are invalid because the invention in each
of those claims was first invented by someone else, namely, Dr. Alan Johnson, before
Dr. Wayne Ryan and/or John Scholl 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 conceal the
invention or keep it secret. If someone other than Dr. Wayne Ryan or John Scholl made
or invented the invention described in one or more such patent claims involved in this
lawsuit before them and did not abandon, suppress, or conceal the invention, then each
such claim was “anticipated” by the other invention, and each such claim is invalid.
R&D must prove by clear and convincing evidence (1) that before the patentee
reduced his invention to practice, Dr. Alan Johnson reduced to practice a product or
method that included all of the elements of claims 28 and 29 of the '500 patent, and
claims
1, 5, 6, 8 and 13 of the '668 patent, and claim 13 of the '388 patent; and (2) that Dr. Alan
Johnson did not abandon, suppress, or conceal his invention before October 18, 1999.
INSTRUCTION NO. 21
DEFINITION - CONCEPTION
Conception is the formation in the mind of the inventor, of a definite and
permanent idea of the complete and operative invention, as it is to be applied in practice.
Conception is the mental part of an inventive act and is proven when the invention is
shown in its complete form by drawings, disclosure to another or other forms of evidence
presented at trial.
INSTRUCTION NO. 22
DEFINITION - REDUCTION TO PRACTICE
An invention requires both conception and reduction to practice. A claimed
invention is reduced to practice when the inventor has shown and understands that it will
work for its intended purpose or when it is fully described in a filed patent application.
INSTRUCTION NO. 23
DEFINITION - REASONABLE DILIGENCE
Reasonable diligence means that the inventor worked continuously on reducing
the invention to practice. Interruptions necessitated by the everyday problems and
obligations of the inventor or others working with him or her do not prevent a finding of
reasonable diligence.
INSTRUCTION NO. 24
PRIOR INVENTOR - TESTIMONY
In order to prove prior invention in this case, R&D is required to provide
corroborating evidence in addition to Dr. Johnson’s own testimony. However, you must
evaluate all pertinent evidence, including that testimony, and make a sound
determination that the evidence credibly establishes prior invention.
INSTRUCTION NO. 25
ABANDON OR CONCEAL
If the prior invention was abandoned or kept secret, it does not anticipate the ‘500,
‘668' or ‘388 patent. However, it is not necessary that the patentee had knowledge of
that prior invention. 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 if the prior inventor was engaged in reasonable efforts to
make the invention publicly known.
INSTRUCTION NO. 26
LEVEL OF ORDINARY SKILL
It is up to you to decide the level of ordinary skill in the field of the invention. You
should consider all of the evidence introduced at trial in making this decision, including:
1. the levels of education and experience of persons working in the field;
2. the types of problems encountered in the field; and
3. the sophistication of the technology.
Streck contends that a person of ordinary skill in the relevant art at the time of the
invention would typically have had a graduate degree in biochemistry or an
undergraduate degree in biological sciences and several years of experience in the field.
This person of ordinary skill in the art would also have had several years work or
research experience directed to designing, preparing or analyzing commercial controls
for hematology instruments, and would have knowledge of the composition and
preparation of prior commercial hematology controls having components that simulate
the properties of blood cells.
R&D contends that a person of ordinary skill in the art at the time of the invention
would typically have an advanced degree, such as a Masters, Ph.D., or equivalent
degree, in biological sciences with 5 to 10 years of postgraduate experience working in
the field of laboratory hematology, assays for determining the number or presence of the
formed elements of blood, control compositions used in performing such assays, and
processes for preparing, and methods for using such controls; or a bachelors of science
or equivalent degree with 15 to 20 years of postgraduate experience working in the field.
INSTRUCTION NO. 27
DAMAGES - GENERALLY
If you find that R&D has not proved by clear and convincing evidence that one or
more of the claims are invalid, you must determine the amount of money damages
Streck is entitled to recover. By instructing you on damages, I do not suggest that one or
the other party should prevail. These instructions are provided to guide you on the
calculation of damages in the event of infringement of a valid patent claim.
INSTRUCTION NO. 28
DAMAGES - BURDEN OF PROOF
Streck has the burden to prove its damages by a preponderance of evidence.
Streck must prove the amount of damages with reasonable certainty, but need not prove
the amount of damages with mathematical precision. Streck is not entitled to damages
that are remote or speculative.
You must determine the amount of damages that are adequate to compensate
Streck for any infringement by R&D, as measured by the reasonable royalty for all
infringing sales.
Your damages determination must not include additional sums to punish R&D or
to set an example. You may award compensatory damages only for the loss that
Streck proves was more likely than not caused by R&D’s infringement.
INSTRUCTION NO. 29
DAMAGES - WHEN DAMAGES BEGIN
In this case, you should assess damages beginning on December 13, 2004.
Streck and R&D have agreed upon this date.
INSTRUCTION NO. 30
REASONABLE ROYALTY - DEFINITION
A royalty is a payment made to a patent holder in exchange for rights to make,
use or sell the claimed invention.
A reasonable royalty is the payment that would have resulted from a negotiation
between a patent holder and a company in the position of the defendants just before the
infringement began. In considering the nature of this negotiation, the focus is on what
the expectations of the patent holder and infringer would have been had they entered
into an agreement at that time and acted reasonably in their negotiations. You should
also assume that both parties to that negotiation understood the patent to be valid and
infringed and were willing to enter into a license. Your role is to determine what that
agreement would have been. The test for damages is what royalty would have resulted
from the hypothetical negotiation and not simply what either party would have preferred.
In determining the royalty that would have resulted from the hypothetical
negotiation you may consider real world facts including the following to the extent they
are helpful to you:
• Licenses or offers to license the patent at issue in this case
• Licenses involving comparable patents
• The licensing history of the parties
• Licensing practices in the relevant industry
• Whether the patent owner had an established policy of refusing to license
the patent at issue.
• The relationship between the patent owner and alleged infringer, including
whether or not they were competitors
• The significance of the patented technology in promoting sales of the
alleged infringer's products and earning it profit
• Alternatives to the patented technology and advantages provided by the
patented technology relative to the alternatives.
• The portion of the alleged infringer's profit that should be credited to the
invention as distinguished from nonpatented features, improvements or
contributions.
• Any other economic factor that a normally prudent businessperson would,
under similar circumstances, take into consideration in negotiating the
hypothetical license.
INSTRUCTION NO. 31
GLOSSARY OF TERMS
Some of the terms in this glossary will be defined in more detail in the legal
instructions you are being given, or will be given at the close of all the evidence.
Application: The initial papers filed by the applicant with the United States Patent andTrademark Office (also called the Patent Office or PTO).
Claims: The numbered sentences appearing at the end of the patent that define the invention. The words of the claims define the scope of the patent holder's exclusive rights during the life of the patent. Claims can be independent or dependent. An independent claim stands alone; it is self-contained. An independent claim is self-contained. A dependent claim refers back to an earlier claim and includes the requirements of the earlier claim.
Examination: Procedure before the U.S. Patent and Trademark Office whereby a Patent Examiner reviews the filed patent application to determine if the claimed invention is patentable.
File wrapper: Another term for the "prosecution history," defined below.
License: Permission to use or make the patented invention, or perform any of the other exclusive rights granted by the patent, which may be granted by a patent holder (or a prior licensee) in exchange for a fee called a “royalty” or other types of payment.
Office action: Communication from the patent examiner regarding the patent application.
Ordinary skill in the art: The level of experience, education, and/or training that those individuals who worked in the area of the invention ordinarily possessed at the time of the effective filing date of the patent application.
Patent and Trademark Office (PTO): An administrative branch of the U.S. Department of Commerce that is charged with overseeing and implementing the federal laws of patents and trademarks. It is responsible for examining all patent applications and issuing all patents in the United States.
Patent examiners – Personnel employed by the PTO who review (examine) patent applications, each in a specific technical area, to determine whether the claims of a patent application are patentable and whether the specification adequately describes and enables the claimed invention.
Prior Art: Prior art is not art as one might generally understand the word art. Rather, prior art is a technical term relating to patents. In general, it includes things that existed before the claimed invention and might typically be a patent or a printed publication.
Prosecution history: The written record of proceedings in the Patent Office between the applicant and the PTO, including the original patent application and later communications between the PTO and applicant.
Specification: The part of the patent application or patent which describes the invention and concludes with one or more claims. The specification includes the written text and the drawings (if any). In the specification, the inventor should provide a description telling what the invention is, how it works, and how to make and use it so as to enable others skilled in the art to do so, and what the inventor believed at the time of filing to be the best way of making the invention.
INSTRUCTION NO. 32
INTRODUCTION
Now that you have heard the evidence and the attorneys’ arguments, it is my duty
to inform you of the legal principles and considerations you are to use in arriving at a
proper verdict.
It is your duty to follow the law given you in this charge and to apply these rules of
law to the facts as you find them from the evidence. Do not single out one instruction
alone as stating the law, but consider the instructions as a whole.
Do not be concerned with the wisdom of any rule of law that the court states.
Regardless of any opinion you may have about what the law ought to be, it would violate
your sworn duty to base a verdict upon a view of the law different from the one given in
these instructions, just as it would violate your sworn duty as judges of the facts to base
a verdict upon anything but the evidence in the case and the reasonable inferences
arising from such evidence.
INSTRUCTION NO. 33
EXPLANATORY
Members of the jury, most of the instructions I gave at the beginning of the trial
and during the trial remain in effect. Some instructions have been deleted from your
preliminary set and those instructions should not be considered. I will now give you
some additional instructions.
Other than the instructions that have been deleted from your preliminary set, you
must continue to follow the instructions that I gave you earlier, as well as those I give
you now. You must not single out some instructions and ignore others, because all are
important. This is true even though some of those I gave you at the beginning of trial are
not repeated here.
The instructions I am about to give you now as well as those I gave you earlier,
other than the deleted instructions, are in writing and will be available to you in the jury
room.
You will also receive a Verdict Form to use in conjunction with these instructions.
INSTRUCTION NO. 34
WILLFULNESS
In this case, Streck argues that R&D willfully infringed the claims of Streck’s
patents. The court has already determined that R&D infringes claims 28 and 29 of the
‘500 patent, claims 1, 5, 6, 8 and 13 of the ‘668 patent, and claim 13 of the ‘388 patent,
but it is for you to decide if that infringement has been willful.
The issue of willful infringement relates to the amount of damages Streck is
entitled to recover in this lawsuit. If you decide that R&D infringed the claims of Streck’s
patent, then it is my job to decide whether or not to award increased damages to Streck.
You should not take this factor into account in assessing the damages, if any, to be
awarded to Streck.
To prove willful infringement, Streck must persuade you that it is highly probable
that R&D acted with reckless disregard of the claims of Streck’s patents. To show
“reckless disregard,” Streck must satisfy a two-part text: the first concerns R&D’s
conduct, the second concerns R&D’s state of mind.
When considering R&D’s conduct, you must decide whether Streck has proven it
is highly probable that R&D’s conduct was reckless; that is, that R&D proceeded with the
infringing conduct with knowledge of the patents, and in the face of an unjustifiably high
risk that it was infringing the claims of valid and enforceable patents. Because this
is an objective issue, the state of mind of R&D is not relevant to it. Legitimate or
credible defenses to infringement, even if ultimately not successful, demonstrate a lack
of recklessness.
If you conclude that Streck has proven that R&D’s conduct was reckless, then you
need to consider the second part of the test. You must determine whether Streck
proved
it is highly probable that the unjustifiably high risk of infringement was known or so obviousthat it should have been known to R&D. In deciding whether R&D satisfied the state-of-
mind part of the test, you should consider all facts surrounding the alleged infringement
including, but not limited to, the following:
1. whether the infringer deliberately copied the ideas or design of another,
2. whether the infringer, when he knew of the other’s patent protection,
investigated the scope of the patent and formed a good faith belief that it
was invalid or not infringed,
3. the infringer’s behavior as a party to the litigation,
4. the accused infringer’s size and financial condition,
5. closeness of the case,
6. duration of the accused infringer’s misconduct,
7. remedial action by the accused infringer,
8. the accused infringer’s motivation for harm, and
9. whether the accused infringer attempted to conceal its misconduct.
INSTRUCTION NO. 35
JUDGE’S OPINION
In the trial of this case and in these instructions, I have in no way attempted to
express my opinion about who should prevail upon the issues submitted to you. You
must not construe any statement, action, or ruling on my part during the trial as an
indication of my opinion about the proper outcome of your verdict. During the course of
a trial, I might have occasionally asked questions of a witness to bring out facts not fully
covered in the testimony. Do not assume that I hold any opinion on the matters to which
the questions related.
INSTRUCTION NO. 36
EVIDENCE AND OBJECTIONS
During the trial I have ruled on objections to certain evidence. You must not
concern yourselves with the reason for such rulings since they are controlled by rules of
law.
You must not speculate or form or act upon any opinion about how a witness
might have testified in answer to questions which I rejected during the trial, or upon any
subject matter to which I forbade inquiry.
In coming to any conclusion in this case, you must be governed by the evidence
before you and by the evidence alone. You may not indulge in speculation, conjecture or
inference not supported by the evidence.
The evidence from which you are to find the facts consists of the following: (1)
the testimony of the witnesses; (2) documents and other things received as exhibits; and
(3) any facts that have been stipulated—that is, formally agreed to by the parties.
The following things are not evidence: (1) statements, comments, questions and
arguments by lawyers for the parties; (2) questions by jurors; (3) objections to questions;
(4) any testimony I told you to disregard; and (5) anything you may have seen or heard
about this case outside the courtroom.
INSTRUCTION NO. 37
REASONABLE INFERENCES
While you should consider only the evidence in the case, you are permitted to
draw such reasonable inferences from the testimony and exhibits as you feel are
justified in the light of common experience. In other words, you may make deductions
and reach conclusions which reason and common sense lead you to draw from the facts
which have been established by the testimony and evidence in the case.
INSTRUCTION NO. 38
NOTE-TAKING
Throughout the course of the trial you have been allowed to take notes of the
testimony. You may take your notes into the jury room for use in your deliberations.
Remember, however, your notes are not evidence. The courtroom deputy is charged
with the task of keeping the official record of all exhibits received into evidence during
the trial. At the close of trial, she will deliver all exhibits you are to consider in your
deliberations.
Your notes should be used only as aids to your memory. You should not give
your notes precedence over your independent recollection of the evidence. You should
rely on your own independent recollection of the proceedings, and you should not be
influenced by the notes of other jurors. Your notes are not entitled to any greater weight
than each juror’s recollection or impression of the testimony given during this trial. After
you have reached a verdict, your notes will be destroyed.
INSTRUCTION NO. 39
DELIBERATIONS AND VERDICT
In conducting your deliberations and returning your verdict, there are certain rules
you must follow.
First, when you retire to the jury room, first select one of your number to be
foreperson to preside over your discussions and to speak for you here in court.
Second, it is your duty, as jurors, to discuss this case with one another in the jury
room. You should try to reach agreement because a verdict—whether liable or not liable
—must be unanimous. Each of you must make your own conscientious decision, but
only after you have considered all the evidence, discussed it fully with your fellow jurors,
and listened to the views of your fellow jurors. Do not be afraid to change your opinions
if the discussion persuades you that you should. But do not come to a decision simply
because other jurors think it is right, or simply to reach a verdict.
Third, you will take with you when you retire for your deliberations an official
Verdict Form on which you will indicate a verdict. Please follow the directions carefully
when filling it out. A verdict must be agreed to by all of you, that is, it must be
unanimous. Your verdict must be signed by the foreperson.
Fourth, if you need to communicate with me during your deliberations, you may
send a note to me through the courtroom deputy, signed by one or more jurors. I will
respond as soon as possible either in writing or orally in open court. Your answer
may not come immediately because I may need to assemble the attorneys and confer
with them before I respond. Remember that you should not tell anyone—including me
—how your votes stand numerically.
Finally, when you arrive at your verdict and the form of verdict has been
completed, you will have concluded your task. Notify my chambers and I will receive
your verdict promptly. If you do not agree on a verdict by 5:00 this evening, you may
separate and return for further deliberations tomorrow. You may separate for meals
whenever you choose. If you do separate, you are not allowed to discuss this case with
anyone, even another juror.