Free Proposed Jury Instructions - District Court of Arizona - Arizona

IN THE UNITED STATES DISTRICT COURT DISTRICT OF ARIZONA

Eberle Design, Inc., and Electronic Devices, Inc.,

) ) ) Plaintiff/Counterdefendant, ) No. CIV-02-2575 PHX DGC ) CIV 03-0883 PHX DGC v. ) (Consolidated) ) Reno A & E, ) ) Defendant/Counterclaimant. ) ______________________________ )

EBERLE'S PROPOSED MODIFICATIONS TO THE COURT'S PROPOSED FINAL JURY INSTRUCTIONS AND VERDICT FORM

DATED: September 6, 2005

_______________________________ UNITED STATES DISTRICT JUDGE

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3.1 DUTIES OF JURY TO FIND FACTS AND FOLLOW LAW Members of the jury, now that you have heard all the evidence and the arguments of the attorneys, it is my duty to instruct you on the law which applies to this case. A copy of these instructions will be available in the jury room for you to consult if you find it necessary. It is your duty to find the facts from all the evidence in the case. To those facts you will apply the law as I give it to you. You must follow the law as I give it to you whether you agree with it or not. You must not be influenced by any personal likes or dislikes, opinions, prejudices, or sympathy. That means that you must decide the case solely on the evidence before you. You will recall that you took an oath promising to do so at the beginning of the case. In following my instructions, you must follow all of them and not single out some and ignore others; they are all equally important. You must not read into these instructions or into anything the court may have said or done any suggestion as to what verdict you should return - that is a matter entirely up to you.

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3.2 WHAT IS EVIDENCE The evidence from which you are to decide what the facts are consists of: (1) (2) (3) the sworn testimony of any witness; the exhibits which have been received into evidence; and any facts to which the lawyers have agreed or stipulated.

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3.3 WHAT IS NOT EVIDENCE In reaching your verdict, you may consider only the testimony and exhibits received into evidence. Certain things are not evidence, and you may not consider them in deciding what the facts are. I will list them for you: (1) Arguments and statements by lawyers are not evidence. The lawyers are not witnesses. What they have said in their opening statements, closing arguments, and at other times is intended to help you interpret the evidence, but it is not evidence. If the facts as you remember them differ from the way the lawyers have stated them, your memory of them controls. Questions and objections by lawyers are not evidence. Attorneys have a duty to their clients to object when they believe a question is improper under the rules of evidence. You should not be influenced by the objection or by the court's ruling on it. Testimony that has been excluded or stricken, or that you have been instructed to disregard, is not evidence and must not be considered. In addition some testimony and exhibits have been received only for a limited purpose; where I have given a limiting instruction, you must follow it. Anything you may have seen or heard when the court was not in session is not evidence. You are to decide the case solely on the evidence received at the trial.

(2)

(3)

(4)

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3.7 OPINION EVIDENCE, EXPERT WITNESS You have heard testimony from persons who, because of education or experience, are permitted to state opinions and the reasons for those opinions. Opinion testimony should be judged just like any other testimony. You may accept it or reject it, and give it as much weight as you think it deserves, considering the witness' education and experience, the reasons given for the opinion, and all the other evidence in the case.

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3.10 CHARTS AND SUMMARIES IN EVIDENCE Certain charts and summaries have been received into evidence to illustrate information brought out in the trial. Charts and summaries are only as good as the underlying evidence that supports them. You should, therefore, give them only such weight as you think the underlying evidence deserves.

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3.11 TWO OR MORE PARTIES ­DIFFERENT LEGAL RIGHTS

You should decide the case as to each party separately. Unless otherwise stated, the instructions apply to all parties.

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6.1 CORPORATIONS AND PARTNERSHIPS ­ FAIR TREATMENT All parties are equal before the law and a corporation is entitled to the same fair and conscientious consideration by you as any party.

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6.2 LIABILITY OF CORPORATIONS ­ SCOPE OF AUTHORITY NOT IN ISSUE Under the law, a corporation is considered to be a person. It can only act through its employees, agents, directors, or officers. Therefore, a corporation is responsible for the acts of its employees, agents, directors, and officers performed within the scope of authority.

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Court's Proposed Instruction When a party has the burden of proof on any claim or affirmative defense by a preponderance of the evidence, it means that you must be persuaded by the evidence that the claim or affirmative defense is more probably true than not true. You should base your decision on all of the evidence, regardless of which party presented it. Source: Ninth Circuit Model Instruction 5.1, modified.

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Court's Proposed Instruction When a party has the burden of proof on any claim or affirmative defense by clear and convincing evidence, it means that you must be persuaded by the evidence that it is highly probably that the claim or affirmative defense is true. The clear and convincing evidence standard is a heavier burden than the preponderance of the evidence standard. Again, you should base your decision on all the evidence, regardless of which party presented it. Source: Ninth Circuit Model Instruction 5.2, modified.

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Non-Model Instruction No. 16 The Patent System At the beginning of the trial, I gave you some general information about patents and the patent system and a brief overview of the patent laws relevant to the case. I will now give you more detailed instructions about the patent laws that specifically relate to this case. If you would like to review my instructions at any time during your deliberation, they will be available to you in the jury room. Authorities Federal Circuit Bar Association Model Jury Instruction No. 6.

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Non-Model Instruction No. 17 The Claims of the Patent in Suit As you were told at the beginning of the trial, the claims of a patent are the numbered sentences at the end of the patent. Claims are usually divided into parts or steps, called "limitations." For example, a claim that covers the invention of a table may recite the tabletop, four legs and the glue that secures the legs to the tabletop. The tabletop, legs and glue are each a separate limitation of the claim. Authorities Federal Circuit Bar Association Model Jury Instruction No. 7 .

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Non-Model Instruction No. 18 Construction of the Claims In deciding whether or not the claims are invalid or whether or not accused products infringe a patent, the first step is to understand the meaning of the words used in the patent claims. It is my job as Judge to determine what the patent claims mean and to instruct you about that meaning. You must accept the meanings I give you and use them when you decide whether or not the patent is infringed, and whether or not it is invalid and unenforceable. At the start of the trial, I instructed you about the meaning of the words of the claims. I will now review those instructions with you again, as well as explain the different types of claims that are at issue in this case. It may be helpful to refer to the copy of the `964 patent that you have been given as I discuss the claims at issue here. The claims are at the end of the `964 patent, starting in column 16. I will be giving you a list of the claims of the `964 patent at issue as part of the verdict form when I conclude my instructions. Authorities Federal Circuit Bar Association Model Jury Instruction No. 7.1.

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Non-Model Instruction No. 19 Independent and Dependent Claims Patent claims may exist in two forms, referred to as independent claims and dependent claims. An independent claim does not refer to any other claim of the patent. Thus, it is not necessary to look at any other claim to determine what an independent claim covers. Claim 1 of the `964 patent, for example, is an independent claim. A dependent claim refers to at least one other claim in the patent. A dependent claim includes each of the limitations of the other claim or claims to which it refers, as well as the additional limitations recited in the dependent claim itself. Therefore, to determine what a dependent claim covers, it is necessary to look at both the dependent claim and the other claim or claims to which it refers. For example, claim 2 is a dependent claim. It refers to claim 1. To determine what dependent claim 2 covers, the words of that claim and the words of claim 1 must be read together. Authorities Federal Circuit Bar Association Model Jury Instruction No. 7.2.

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Non-Model Instruction No.20 Means-Plus-Function Claim Limitations Some patent claim limitations may describe a "means" for performing a function, rather than describing the structure that performs the function. For example, let's say that a patent describes a table in which the legs are glued to the tabletop. One way to claim the table is to recite the tabletop, four legs and glue between the legs and the tabletop. Another way to claim the table is to recite the tabletop and the legs, but, rather than recite the glue, recite a "means for securing the legs to the tabletop." The second type of claim limitation is called a "means-plus-function" limitation. It describes a means for performing the function of securing the legs to the tabletop, rather than expressly reciting the glue. When a claim limitation is in means-plus-function form, it covers the structures described in the patent specification for performing the function stated in the claim, and also any structure that is equivalent to the described structures. In our example, the claim covers a table using glue to secure the legs to the tabletop, as described in the patent, and any equivalent structure that performs the function of securing the legs to the tabletop. Claims 1, 2, 31, 33, 34 and 35 of the `964 patent include one means-plus-function limitation each. In instructing you about the meaning of a means-plus-function claim limitation, I will tell you, first, the function that each of the means-plus-function claim limitations performs; and second, the structure disclosed in the patent specification that corresponds to each means-plus-function limitation. Authorities Federal Circuit Bar Association, Model Jury Instruction No. 7.4

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Non-Model Instruction No. 21 "Comprising" Claims The beginning portion, or preamble, of claims 1, 14 and 31 of the `964 patent uses the words "comprising." "Comprising" means "including" or "containing." A claim that uses the word "comprising" or "comprises" is not limited to products having only the elements that are recited in the claim, but also covers products that add additional elements. Let's take our example of the claim that covers a table. If the claim recites a table "comprising' a tabletop, legs and glue, the claim will cover any table that contains those structures, even if the table also contains other structures, such as a leaf or wheels on the legs. Authorities Federal Circuit Bar Association Model Jury Instruction No. 7.5.

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Non-Model Instruction No. 22 I have now instructed you as to the types of claims at issue in this case. I will again define the meaning of the key words used in the patent claims at issue. You must use the definitions I provide to you in your consideration of the infringement and invalidity issues. Limitations of the Claims at Issue In claim 1, the term "vehicle detector" means that the vehicle detector itself includes the variable display device. In claim 1, the term "means for detecting" means the oscillator circuit and microprocessor as identified in the `964 specification. In claim 1, the term "occupancy state of a loop detection zone" means whether a vehicle is within the range of a loop of wire typically embedded into the surface of a road. In claim 1, the term "manually actuatable switches coupled to said detecting means for enabling operator control of function state selection and selection of any one of a plurality of vehicle detector parameter values" means at least two switches electronically connected with the detector means. The switches allow the operator to select different function states or a value for a parameter. In claim 1, the term "variable display device" means a display device that is changeable and not fixed. In claim 1, the term "function states" means a state of a vehicle detector function, where that function has at least two states and is related to the mode in which the vehicle detector is operating. In claim 1, the term "identification of a selected vehicle detector parameter" means a visual identification of the current selected parameter from more than one parameter selected by the operator using one of the switches. A parameter is a vehicle detector function that is set with values. In claim 1, the term "actual value of a vehicle detector parameter selected by at least one of said function switches" means the value entered by the operator corresponding to a parameter selected from more than one parameter. The switches are used to select both vehicle detector parameters and their values.

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In claim 2, the means for detecting must include a microprocessor. In claim 3, the display device must be a liquid crystal display. In claim 4, the term "relative sensitivity" means the threshold value used by the detector to determine if a loop change is sufficient to indicate occupancy of a vehicle detection zone. In claim 5 the term "loop frequency" means the number of oscillations in a period of time. In claim 6, the term "loop inductance" means a varying magnetic field established by the area and number of turns of wire in the detection loop. In claim 7, the term "loop inductance change" ("delta L/L") is measured in percentage and is established by the change in the inductance due to the proximity of a vehicle. In claim 8, the term "delay time" is typically measured in seconds, and is the minimum time that will expire before a call signal is generated after the detection of a vehicle. In claim 9, the term "maximum presence time" is typically measured in seconds or minutes, and is the maximum time period that will expire after the detection of a vehicle before a call signal is dropped. In claim 10, the term "extension time" is typically measured in seconds, and is the time period that will expire after the detection of a vehicle leaving the loop before a call signal is dropped. In claim 11, the term "pulse mode" means a call signal consisting of a signal pulse of fixed length. In claim 11, the term "presence mode" means a call signal that continually persists until the vehicle leaves the loop. In claim 13, the term "'end-of-green" means that the call signal is dropped immediately after receiving a signal indicating that the traffic signal's green light has terminated. The common terms between claims 1 and 14 have the same meaning. In claim 14, the term "segment" means the minimum region that can be activated

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to indicate the relative magnitude of a parameter. In claim 14, the term "bar graph" means a one-dimensional graph indicating an increase in magnitude with a larger bar (more segments activated) and a decrease in magnitude with a smaller bar (fewer segments activated). In claim 14, the term "message indicators" means a message indicator representing the parameter and includes all conventional LCD techniques, including dedicated segment and pixel-type displays. In claim 15, the term "loop inductance" has the same meaning as I have previously given to you for claim 6. In claim 17, the display device must be a liquid crystal display, as I mentioned in claim 3. In claim 21, the terms "message indicators" and "function states" have the same meaning as I have previously given to you for claims 1 and 14. In claim 24, the term "frequency" has the same meaning as I have previously given to you for claim 5. In claim 25, the term "delay time" has the same meaning as I have previously given to you for claim 8. In claim 26, the term "maximum presence time" has the same meaning as I have previously given to you for claim 9. In claim 27, the term "extension time" has the same meaning as I have previously given to you for claim 10. In claim 28, the terms "pulse mode" and "presence mode" have the same meaning as I have previously given to you for claim 11. In claim 30, the term "end-of-green" has the same meaning as I have previously given to you for claim 13. The common terms between claims 1 and 31 have the same meaning. In claim 32, the term "first display portion" means the portion of the screen

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displaying more than one alphanumeric character representing the value of a parameter. In claim 32, the term "second display portion" means the portion of the screen capable of displaying more than one parameter. In claim 33, the term "means for displaying the sensitivity value " is a liquid crystal display. In claim 33, the term "relative sensitivity" has the same meaning as I have previously given to you for claim 4. In claim 34, the term "means for displaying the sensitivity value" has the same meaning as I have previously given to you for claim 33. In claim 34, the terms "selectively actuatable indicators" and "graph-like indication of sensitivity" have the same meaning as I have previously given to you for the term "bar graph" in claim 14. In claim 35, the term "multiple channel detector means" means that the means for detecting in the vehicle detector must support more than one channel or be capable of detecting the occupancy of more than one loop. In claim 35, the term "means for indicating an active channel" means that the display device must indicate whether a channel is active or disabled. In claim 36, the term "loop frequency" has the same meaning as I have previously given to you for claim 5. In claim 37, the term "loop inductance" has the same meaning as I have previously given to you for claim 6. In claim 38, the term "loop inductance change" has the same meaning as I have previously given to you for claim 7. In claim 39, the term "delay time" has the same meaning as I have previously given to you for claim 8. In claim 40, the term "maximum presence time" has the same meaning as I have previously given to you for claim 9.

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In claim 41, the term "extension time" has the same meaning as I have previously given to you for claim 10. In claim 42, the terms "pulse mode" and "presence mode" have the same meaning as I have previously given to you for claim 11. In claim 44, the term "end-of-green function" has the same meaning as I have previously given to you for claim 12

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Non-Model Instruction No. 28 The Prior Art Under the patent laws, a person is entitled to a patent only if the invention claimed in the patent is new and not obvious in light of what came before. That which came before is referred to as the "prior art." Eberle is relying on various items of prior art. The parties agree that the following items are prior art, and there is no dispute that these items came before the invention claimed in the `964 patent. 1. 2. 3. 4. 5. 6. 7. 8. 9. 10. Authorities Federal Circuit Bar Association Model Jury Instruction No. 10.6. Federal APD Model G-90 Device Federal APD Model G-90 Operation Manual Traficomp Device Traficomp Operation Manual ILT II Detector ILT II Manual 3M Installation Instructions, Canoga C400 Vehicle Detection System, C424T Loop Detector United States Patent No. 3,942,108 United States Patent No. 5,266,954 Prior vehicle detectors admitted to be prior art in the `964 patent

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Non-Model Instruction No. 30 (modified) Validity in General Only a valid patent can be infringed. For a patent to be valid, the invention claimed in the patent must be new, useful and non-obvious. A patent cannot take away from people their right to use what was known or what would have been obvious when the invention was made. The terms "new ," "useful" and "non-obvious" have special meanings under the patent laws. I will explain these terms to you as we discuss Eberle Design's grounds for asserting invalidity. The patent statutes state that a patent is presumed to be valid. Because of this presumption, Eberle must prove that the `964 patent is invalid by clear and convincing evidence. Eberle has challenged the validity of the `964 patent claims on a number of grounds. I will now explain to you each of Eberle's grounds for invalidity in detail. In making your determination as to invalidity, you should consider each claim separately. Authorities Federal Circuit Bar Association Model Jury Instruction No. 10.1.

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Court's Proposed (from Eberle No. 6 and Reno No. 5) On-Sale bar The sale or offer for sale in the United States of a product may be prior art to a patent claim covering the product or a method of making the product if the product was sold or offered for sale more than one year before the application for the patent was filed. In this case, the sale or offer for sale must have been made before April 24, 1996. That is, one year prior to the filing date of April 24, 1997. If the sale or offer for sale of a product is more than one year before the patent application was filed, then the product or method of making it maybe prior art, regardless of the date of invention. In order for there to be an offer for sale, two requirements must be met. First, the product must have been the subject of a commercial offer for sale. Second, the product must be "ready for patenting." Even a single offer for sale to a single customer may be a commercial offer, even if the customer does not accept the offer. A formal offer is defined as the manifestation of willingness to enter into a bargain, made in such a way that the person receiving the offer understands that his agreement to the bargain is invited and will result in a binding contract. A manifestation of willingness to enter into a bargain is not an offer if the person receiving it knows or has reason to know that the person making it does not intend to conclude a bargain until he has made a further manifestation of intent. An invention is ready for patenting if the product offered for sale has been developed to the point where there was reason to expect that it would work for its intended purpose, or drawings or other descriptions exist that are sufficiently specific to enable a person of ordinary skill in the art to practice them. The product may be ready for patenting even if it is not ready for commercial production, or has not been technically perfected.

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Non-Model Instruction No. 32 Anticipation/Lack of Novelty A person cannot obtain a patent on an invention if someone else has already made the same invention. In other words, the invention must be new. If an invention is not new, we say that it was "anticipated" by the prior art. An invention that is "anticipated" by the prior art is not entitled to patent protection. A party challenging the validity of a patent must prove anticipation by the highly probable standard. In order for a patent claim to be anticipated by the prior art, each and every limitation of the claim must be present within a single item of prior art, whether that prior art is a publication, a prior patent, a prior invention, a prior public use or sale, or some other item of prior art. You may not find that the prior art anticipates a patent claim by combining two or more items of prior art. A print publication or patent will not be an anticipation unless it contains a description of the invention covered by the patent claims that is sufficiently detailed to teach a skilled person how to make and use the invention without undue experimentation. That means that a person skilled in the field of the invention reading the printed publication or patent would be able to make and use the invention using only an amount of experimentation that is appropriate for the complexity of the field of the invention and for the level of expertise and knowledge of persons skilled in that field. In deciding whether or not a single item of prior art anticipates a patent claim, you should consider that which is expressly stated or present in the item of prior art, and also that which is inherently present. Something is inherent in an item of prior art if it is always present in the prior art or always results from the practice of the prior art, and if a skilled person would understand that to be the case. In this case, Eberle contends that claims 1-5 and 31-33 of the `964 patent are invalid because they are anticipated by the Federal APD Model G-90 Device and Operation Manual. If you find that Eberle Design has proved that it is highly probable that claims 1-5 and 31-33 are anticipated, then you must find that the claims are invalid. Eberle also contends that claims 1-4, 6-10, 31-33, and 37-41 of the `964 patent are

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invalid because they are anticipated by the Traficomp Device and Operation Manual. If you find that Eberle Design has proved that it is highly probably that claim 1-4, 6-10,3133, and 37-41 are anticipated, then you must find that the claims are invalid. Authorities Federal Circuit Bar Association Model Jury Instruction No. 10.8.

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Non-Model Instruction No. 33 Obviousness As I mentioned earlier, an inventor is not entitled to a patent if his or her invention would have been obvious to a person of ordinary skill in the field of the invention at the time the invention was made. Unlike anticipation, obviousness may be shown by considering more than one item of prior art. The question is, would it have been obvious for a skilled person who knew of the prior art to make the claimed invention? If the answer to that question is yes, then the patent claims are invalid. Eberle and Electronic Devices have the burden of proving by the highly probable standard that the asserted claims of the `964 patent are invalid for obviousness. Obviousness is determined from the perspective of a person of ordinary skill in the field of the invention. The issue is not whether the claimed invention would have been obvious to you, to me as a judge, or to a genius in the field of the invention. Rather, the question is whether or not the invention would have been obvious to a person of ordinary skill in the field of the invention. 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 at the time the invention was made. You must also keep in mind that the test for obviousness is not whether or not it would have been obvious to try to make the invention, but rather whether or not the invention would have been obvious to a person of ordinary skill in the inventor's field at the time the invention was made. In determining whether or not these claims would have been obvious, you should make the following determinations: First, what is the scope and content of the prior art? Second, what differences, if any, are there between the invention of the claims of the patent and the prior art?

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Third, what was the level of ordinary skill in the art at the time the invention was made? Fourth, are there any objective indications of non-obviousness? Against this background, you must decide whether or not the invention covered by the `964 patent claims would have been obvious. I will now describe in more detail the specific determinations you must make in deciding whether or not the claimed invention would have been obvious. Authorities Federal Circuit Bar Association Model Jury Instruction No. 10.9.

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Non-Model Instruction No. 34 The Scope and Content of the Prior Art Determining the scope and content of the prior art means that you should determine what is disclosed in the prior art relied on by Eberle Design. You must decide whether this prior art was reasonably relevant to the particular problem the inventor faced in making the invention covered by the patent claims. Such relevant prior art includes prior art in the field of the invention, and also prior art from other fields that a person of ordinary skill would look to when attempting to solve the problem. Authorities Federal Circuit Bar Association Model Jury Instruction No. 10.9.1.

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Non-Model Instruction No. 35 Differences Between the Invention of the Claims and the Prior Art In determining the differences between the invention covered by the patent claims and the prior art, you should not look at the individual differences in isolation. You must consider the claimed invention as a whole and determine whether or not it would have been obvious in light of all of the prior art. In deciding whether to combine what is described in various items of prior art, you should keep in mind that there must be some motivation or suggestion for a skilled person to make the combination covered by the patent claims. You should also consider whether or not the prior art "teaches away" from the invention covered by the patent claims. The question to be answered is: Would someone reading the prior art be discouraged from following the path taken by the inventor? Authorities Federal Circuit Bar Association Model Jury Instruction No. 10.9.2.

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Non-Model Instruction No. 36 Level of Ordinary Skill Obviousness is determined from the perspective of a person of ordinary skill in the art. This person is presumed to know all of the prior art, not just what the inventor may have known. When faced with a problem, this ordinary skilled person is able to apply his or her experience and ability to the problem and also to look to any available prior art to help solve the problem. Factors to consider in determining the level or ordinary skill in the art include the educational level and experience of people working in the field, the types of problems faced by the workers in the art and the solutions found to those problems, and the sophistication of the technology in the field. Authorities Federal Circuit Bar Association Model Jury Instruction No. 10.9.3.

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Non-Model Instruction No. 37 Objective Indications Concerning Obviousness You must also consider what are referred to as objective indications of nonobviousness. Some of these indications of non-obviousness are: 1. 2. 3. 4. Commercial success of products covered by the patent claims or made by a process covered by the patent claims. Copying of the invention by others in the field. Unexpected results achieved by the invention. Praise of the invention by the infringer or others in the field.

The presence of any of these objective indications may suggest that the invention was not obvious. These objective indications are only relevant to obviousness if there is a connection, or nexus, between them and the invention covered by the patent claims. For example, commercial success is relevant to obviousness only if the success of the product is related to a feature of the patent claims. If the commercial success is the result of something else, such as innovative marketing and not to patented feature, then you should not consider it to be an indication of non-obviousness. Authorities Federal Circuit Bar Association Model Jury Instruction No. 10.9.4.

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Non-Model Instruction No. 38 Determination for Obviousness Eberle Design contends that the inventions claimed in claims 1-11, 13-15, 17, 21, 24-28, 30, 34-42 and 44 of the `964 patent would have been obvious to a person of ordinary skill in the field of the invention at the time the invention was made in light of the combinations of various references. Specifically, Eberle contends that all of these claims are obvious in light of the G-90 Device or Operation Manual, or the Traficomp Device or Operation Manual, in combination with other prior art and alleged prior art previously discussed. If you find that Eberle Design has proved obviousness by the highly probable standard, then you must find that the claims are invalid for obviousness. Authorities Federal Circuit Bar Association Model Jury Instruction No. 10.9.5

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Non-Model Instruction No. 39 Inequitable Conduct After a patent application is filed, it is assigned to an Examiner, who examines the application and attempts to determine whether or not the application and the claims meet all of the requirements of the patent laws. In conducting this examination, the Examiner must consider the description of the invention in the application, which may involve highly technical subject matter, and search for and consider the prior art. The Examiner has only a limited amount of time and resources available and, therefore, must rely on information provided by the applicant with respect to the technical field of the invention and the prior art. Because the Patent and Trademark Office must rely on the patent application for information, applicants for patents have a duty of honesty and good faith in their dealings with thg64 e Patent and Trademark Office. Persons who have this duty include the inventor named on the patent application, persons who represent the inventor before the Patent and Trademark Office, and other persons involved in a substantial way with the application. This duty of honesty and good faith exists from the time the application is filed and continues for the entire time that an application is pending before the Patent and Trademark Office. It requires that the applicant, the applicant's representatives, and others involved in a substantial way with the application fully disclose to the Patent and Trademark Office all information of which they are aware that is material to examination of the application, including all material prior art. I will explain to you in a moment how you may determine whether or not information is material. Intentional failure to fulfill this duty of honesty and good faith is called inequitable conduct. When inequitable conduct occurs during the course of obtaining a patent, the patent is unenforceable. This means that the patent owner may not prevent others from using the invention covered by the claims of the patent and may not collect damages for patent infringement. Eberle Design has the burden of proving inequitable conduct by the highly probable standard. Eberle Design must prove that the inventors, the inventors' representatives, or someone involved in a substantial way with the application withheld or misrepresented information that was material to the examination of the `964 patent application and did so with an intent to deceive or mislead the Patent Examiner.

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I will now explain to you the requirements of materiality and intent. I will then explain how you should balance any materiality and intent that you find in order for you to determine whether or not there was inequitable conduct. Authorities Federal Circuit Bar Association Model Jury Instruction No. 11.

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Non-Model Instruction No. 40 Materiality In considering the issue of materiality, you must first determine whether or not information was withheld from or misrepresented to the Patent and Trademark Office. If you find that the inventors, the inventors' representatives, or others involved in a substantial way with the. application withheld or misrepresented information when applying for the `964 patent, you must then determine whether or not that information was material. Information is material if it establishes, either alone or in combination with other information, that a claim of the patent application more likely than not does not meet one of the requirements for a patent, such as the requirements that a patented invention be new, useful and non-obvious. Information is also material if it refutes or is inconsistent with information provided or arguments made to persuade the Examiner that the invention is entitled to patent protection. Information that is cumulative of, or less material than, other information the Examiner already had, is not material. Information is material if there is substantial likelihood that a reasonable Patent Examiner would consider it important in deciding whether or not to allow the application to issue as a patent. You must next consider whether or not there was an intent to mislead or deceive the Patent and Trademark Office. Authorities Federal Circuit Bar Association Model Jury Instruction No. 11.1.

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Non-Model Instruction No. 41 Intent Evidence relevant to the question of intent to deceive or mislead the Patent and Trademark Office includes any direct evidence of intent, as well as evidence from which intent may be inferred. The patent law recognizes that direct evidence of an actual intent to deceive or mislead is rarely available. You may, however, infer intent from conduct. That means you may conclude that Mr. Potter or others intended the foreseeable results of his or her action. You should decide whether or not to infer an intent to deceive or mislead based on the totality of the circumstances, including the nature of the conduct and evidence of the absence or presence of good faith. Authorities Federal Circuit Bar Association Model Jury Instruction No. 11.2.

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Non-Model Instruction No. 42 Balancing of Materiality and Intent If you find that Eberle has proved by clear and convincing evidence that material information was withheld or misrepresented and that there was an intent to deceive or mislead the Patent Examiner, you must then balance the degree of materiality and the degree of intent to determine whether or not the evidence is sufficient to establish clearly and convincingly that there was inequitable conduct. The higher the materiality of the withheld or misrepresented information is, the lower the intent needed to establish inequitable conduct. Authorities Federal Circuit Bar Association Model Jury Instruction No. 11.3.

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Non-Model Instruction No. 23 Patent Infringement Generally - Direct Infringement A patent owner has the right to stop others from using the invention covered by its patent claims during the life of the patent. If any person makes, uses, sells or offers to sell what is covered by the patent claims without the patent owner's permission, that person is said to infringe the patent. This type of infringement is called "direct infringement." In addition to enforcing a patent against a direct infringer, a patent owner also has the right to enforce the patent against those who are known as "indirect infringers." In reaching your decision on infringement, keep in mind that only the claims of a patent can be infringed. You must compare patent claims l-11, 13-15, 17, 21, 24-28, 3042 and 44, as I have defined them, to the accused products, and determine whether or not there is infringement. You should not compare Eberle Design's products with any specific example set out in the `964 patent, or with Reno A & E's product or process. The only correct comparison is with the language of the claim itself, as I have explained its meaning to you. You must consider each claim individually and must reach your decision as to each assertion of infringement based on my instructions about the meaning and scope of the claim, the legal requirements for infringement, and the evidence presented to you by the parties. I will first discuss direct infringement. Whether or not Eberle Design knew that what they were doing was an infringement does not matter. A person may be found to be 'a direct infringer of a patent even if he or she believes in good faith that what he or she is doing is not an infringement of any patent, and even if he or she does not even know of the patent. In this case, Reno A & E asserts that Eberle Design's Oracle products directly infringe claims 1-11, 13-15, 17, 21, 24-28, 30-42 and 44 of the `964 patent. It is your job to determine whether or not Reno A & E has proved by the more probable than not standard that Eberle Design has directly infringed any of these claims of the `964 patent. Authorities Federal Circuit Bar Association Model Jury Instruction No. 8.1.

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Non-Model Instruction No. 24 Literal Infringement In order to infringe a patent claim, a product must include every limitation of the claim. If Eberle Design's products omit even a single structure recited in a claim, then you must find that Eberle Design has not infringed that claim. You must consider each of the `964 patent claims separately. A claim limitation is literally present in an accused product if it exists in the product just as it is described in the claim language, either as I have explained that language to you or, if I did not explain it, as you understand it. Authorities Federal Circuit Bar Association Model Jury Instruction No. 8.2.

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Reno A&E's Proposed Non-Model Instruction No. 10 Determination of Infringement Taking each claim of the `964 patent separately, if you find that Reno A & E has proved that it is more probable than not that each and every limitation of the claims is literally present in Eberle Design's accused products, then you must find that Eberle Design's products infringe that claim.

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Reno A&E's Proposed Non-Model Instruction No. 9 Infringement and Improvements to Patented Invention Eberle Design has presented evidence that its products accused of infringement represent an improvement of the invention described in the `964 patent. Proof of this fact does not necessarily mean that the accused products do not infringe Reno A & E's patent claims. The tests for infringement remain as I have instructed you. As long as you find that Eberle Design's accused products literally includes all of the limitation of at least one of the `964 patent claims, then you must find that those claims of the `964 patent claims are infringed by Eberle Design's accused products, despite Eberle's improvements.

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Non-Model Instruction No. 25 Infringement - Means-Plus-Function Claim Limitations As I told you, a means-plus function claim limitation describes a means for performing a particular function. To prove that an accused product includes a structure that is covered by a means-plus-function limitation, a patent owner must prove two things by the more probable than not standard: first, that the accused product contains a structure that performs the identical function to the function recited in the means-plusfunction limitation; and second, that the structure of the accused product that performs that function is either identical or equivalent to the corresponding structure disclosed in the patent specification. Whether or not the structure of the accused product is equivalent to the structure disclosed in the patent is decided from the perspective of a person of ordinary skill in the field of the invention. A person of ordinary skill is a person of average education and training in the field. A structure is equivalent if the such an ordinary skilled person would consider the differences between the accused structure and the structure in the patent to be insubstantial. One way of determining whether the structure of the accused product is equivalent to the structure disclosed in the specification is to determine whether or not persons of ordinary skill in the field of the invention believe that the structure disclosed in the specification and the structure of the accused product are interchangeable. Another way is to determine whether or not the accused structure performs the identical function, in substantially the same way, to achieve substantially the same result. Let's go back to our example of the claim reciting three limitations - first, a tabletop, second, legs, and third, a means for securing the legs to the tabletop. The third limitation is the means-plus-function portion of the claim. The patent in our example discloses glue to secure the legs to the tabletop. Let's assume that the accused device uses nails. They both perform the claimed function of securing the legs to the tabletop. The fact that nails and glue are different does not mean that, under the patent laws, they may not be equivalent. Whether or not they are equivalent depends on such things as whether the glue is important to the invention claimed in the patent, whether those skilled in the art of table-making would consider the glue and nails to be interchangeable, and whether in the patent or prosecution history the two are referred to as equivalent. Authorities Federal Circuit Bar Association Model Jury Instruction No. 8.5.

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Non-Model Instruction No. 26 Infringement of Dependent Claims My instructions on infringement so far have related to independent claims. As I told you, the `964 patent also contains dependent claims. A dependent claim includes each of the limitations of the independent claim to which it refers, plus additional elements. If you find that independent claims 1, 14 and 31 of the `964 patent have been infringed, you must separately determine whether dependent claims 2-11,13, 15, 17, 21,2428, 30, 32-42 and 44 have also been infringed. Authorities Federal Circuit Bar Association Model Jury Instruction No. 8.10.

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Non-Model Instruction No. 27 Indirect Infringement Reno A& E contends that Electronic Devices indirectly infringes claims 1-11, 1315, 17, 21, 24-28, 30-42 and 44 of the `964 patent by contributing to or encouraging others to directly infringe. There are two types of indirect infringement - contributory infringement and inducing infringement. To prove contributory infringement of the `964 patent claims, Reno A & E must prove that it is more probable than not that Electronic Devices sold or supplied to another person a component or part that is a material part of the patented invention, that is not a staple article of commerce, and is not suitable for other substantial, non-infringing uses. Reno A & E must also prove that the other person directly infringed the `964 patent claims, and that Electronic Devices knew that the component or part was especially made for use in an infringing manner. To prove that Electronic Devices induced Eberle Design to infringe the `964 patent claims, Reno A & E must prove that it is more probable than not that Electronic Devices encouraged or instructed Eberle Design to use a product in a manner that directly infringes the `964 patent, and that Electronic Devices knew or should have known that the encouragement or instructions would likely result in Eberle Design's actual infringement of the `964 patent. Authorities Federal Circuit Bar Association Model Jury Instruction No. 3.1.2, modified.

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Eberle's Proposed Non-Model Instruction No. 8 (modified) Willful Infringement Reno A&E claims that Eberle and Electronic Devices infringed its patent willfully. Although you must determine whether any infringement was willful, this determination will not affect the amount of damages, if any, that you assess. The purpose of your determination is to assist the court in making decisions that it will have to make.

Reno A&E must prove willfulness by clear and convincing evidence.

Reno A&E proves willful infringement if it shows that Eberle (1) was aware of the `964 patent and (2) had no reasonable basis for reaching a good faith conclusion that its making, using or selling its device avoided infringing the patent. Reno A&E may also prove willful infringement by proving that Eberle did not exercise due care to determine whether or not it was infringing the `964 patent once the defendant had actual notice of the patent. Infringement is not willful and deliberate if defendant had a reasonable basis for believing that the patent is invalid or not infringed. In considering whether Eberle's alleged infringement was willful, you should consider all of the circumstances and all of the evidence demonstrating Eberle's intentions. No single factor alone requires a finding of willful or nonwillful infringement. In determining damages, you must not consider Reno A&E's allegations of willfulness or take into account any evidence relating to those allegations. Consideration of willfulness is entirely separate from the question of damages. You may not increase damages because you find willfulness or decrease damages because you did not find willfulness.

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Non-Model Instruction No. 43 Damages I have now instructed you as to the law governing Eberle Design's claims of invalidity and inequitable conduct and Reno A & E's claims of patent infringement. If you find that Eberle Design and/or Electronic Devices have infringed a valid claim of the `964 patent, then you must determine what damages they must pay to Reno A & E for that infringement. If, on the other hand, you find that they have not infringed a valid enforceable claim of the `964 patent, then Reno A & E is not entitled to any damages, and you should not make any findings about damages. The fact that I am instructing you about damages does not mean that Reno A & E is or is not entitled to recover damages. I am expressing no opinion one way or another. These instructions are only to guide you in case you find that Eberle Design and Electronic Devices infringed a valid, enforceable claim of the `964 patent. Authorities Federal Circuit Bar Association Model Jury Instruction No. 12.

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Non-Model Instruction No. 44 Notice Requirement for Patents With Product Claims Reno A & E can recover damages for infringement that occurred only after Reno A & E gave notice of its patent rights. It is Reno A & E's burden to prove by the more probable than not standard that it gave notice. Reno A & E can give notice in two ways. The first is to give notice to the public in general. Reno A & E can do this by placing the word "patent" or the abbreviation "PAT" with the number of the `964 patent on substantially all the products it sold that included the patented invention. This type of notice is effective from the date Reno A & E began to mark substantially all of its products that use the patented invention with the patent number. If Reno A & E and its licensees did not mark substantially all of its products that use the patented invention with the patent number, then Reno A & E did not provide notice in this way. A second way Reno A & E can provide notice of its patent is to tell Eberle Design they are infringing the `964 patent and to identify the products that were infringing. This type of notice is effective from the time it is given. As I said, Reno A & E may recover damages only from the time it gave notice of its patent, either by the marking of products or by telling Eberle Design of its infringement. If you find that Reno A & E did not do either of these before beginning this lawsuit, then Reno A & E can only recover damages for infringement that occurred after it sued Eberle Design on October 23, 2003. Authorities Federal Circuit Bar Association Model Jury Instruction No. 12.1.1.

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(Preliminary Non-Model Instruction No. 14 - Modified)

Damages Reno A & E claims that it has suffered damages as a result of Eberle Design's infringement. If you find that there has been an infringement, the owner of the patent is entitled to an award of damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention. Reno A & E contends that it is entitled to lost profits that Reno A & E would have made if Eberle Design had not infringed and/or a reasonable royalty on each of Eberle Design's sales of any infringing product. Reno A & E also claims that it has suffered reasonable royalty damages as a result of Electronic Devices' alleged infringement. Authorities Federal Circuit Bar Association Model Jury Instruction No. 3.1.3, modified.

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Non-Model Instruction No. 45 Lost Profits Reno A & E claims that it should be awarded the amount of profits it lost because of the alleged infringement. In this respect, Reno A & E has the burden to establish by a reasonable probability that the infringement cost it lost profits. In order to satisfy this burden, Reno A & E must show that there was a reasonable probability that it would have made the sales that the infringer made, but for the infringement. In other words, what would Reno A & E have made had the infringer not infringed the patent? In determining lost profits, you may consider whether plaintiff has established the following facts: (1) the demand for the patented product; (2) the absence of acceptable noninfringing substitutes; (3) the patent holder's capacity to meet the demand; (4) and the amount of profit the patent holder would have made but for the defendant's sales. To prove that there are no noninfringing substitutes the patent owner must show either that (1) the purchasers in the marketplace were generally willing to buy the patented product for its advantages or (2) specific purchasers of the infringing product purchased it on that basis. To be an acceptable noninfringing substitute, the product must not have a disparately higher price than the patented product, nor possess significantly different characteristics. If you find that Reno A & E has sustained the burden of proving that it is entitled to lost profits, you should next consider the measure of those damages. In doing so, you should consider the amount or number of lost sales, the gross receipts that Reno A & E would have obtained from the lost sales, the cost of the sales to be deducted from the gross receipts and then the profit on the lost sales. If you find, however, that Reno A & E would not have made the sales that the defendant in fact made, you may not award lost profits. Instead you must award an amount based on a reasonable royalty.

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Reno A&E's Proposed Non-Model Instruction No. 14 (modified)

Reasonable Royalty Reno A & E is also asking for damages in the amount of a reasonable royalty either from Eberle Design or Electronic Devices If you find that Reno A & E has proved lost profits for all of Eberle Design's infringing sales, then the damages award to Reno A & E should be those lost profits. If you find that Reno A & E has not proved that it should recover lost profits, or that it has only proved lost profits for some of Eberle Design's infinging sales, then for those infringing sales for which you do not award lost profits, you should determine the amount Reno A & E has proved to be a reasonable royalty.

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Reno A&E's Proposed Non-Model Instruction No. 15 What is a Reasonable Royalty? A royalty is an amount of money that someone pays a patent owner to be able to use the patented invention. A reasonable royalty is the royalty that would be reasonable for the infringer to pay and for the patent owner to accept for use of a patent that they both knew is valid and that the infinger wants to use. You are to decide what a reasonable royalty would be, based on circumstances as of the time just before Eberle Design and Electronic Devices began selling their products. You should assume that Eberle Design and Electronic Devices and Reno A & E knew at the time such things as the level of sales and profits that Eberle and Electronic Devices would make using the invention. You should also assume that Reno A & E was willing to grant Eberle and Electronic Devices a license to sell or use the patented invention and that Eberle and Electronic Devices were willing to pay for that license. In deciding what is a reasonable royalty, you may consider the factors that Reno A & E and Eberle and Electronic Devices would consider in setting the amount they should pay. I will list for you a number of factors you may consider. This is not every possible factor, but it will give you an idea of the kinds of things to consider in setting a reasonable royalty. 1. Whether the patent owner had established a royalty for the patented invention, for example, by granting other licenses at that royalty. You should remember, however, that an established royalty may have been set before the patent was determined to be valid and infringed in court and, therefore, may not be as much as it would be if both the patent owner and the party wanting to use the patent know it is valid. Royalties paid by Eberle or Electronic Devices or by others for patents comparable to the `964 patent.

2.

3. Whether or not Reno A & E had a policy of licensing or not licensing the patent. 4. Whether or not Reno A & E and Eberle and Electronic Devices are competitors.

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5. 6. 7. 8. 9.

Whether being able to use the patented invention helps in making sales of other products or services. The profitability of the products made using the patent, and whether or not it is commercially successful or popular. The advantages and benefits of using the patented invention over products not claimed in the `964 patent. The extent of Eberle and Electronic Devices use of the patented invention and the value of that use to them. Whether or not there is a portion or percentage of the profit or selling price that is customarily paid in the field of vehicle detectors for use of patented inventions comparable to the inventions claimed in the `964 patent. The portion of the profit that is due to the patented invention, as compared to the portion of the profit due to other factors, such as unpatented elements or unpatented manufacturing processes, or features or improvements developed by Eberle and Electronic Devices. Expert opinions as to what would be a reasonable royalty.

10.

11.

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Non-Model Instruction No. 46 Total Damages If you find that Reno A&E has proven infringement as to either Eberle Design or Electronic Devices, you should arrive at a total damages amount to award to Reno A & E for each such infringement you find. This amount should include all damages, including any lost profits which have been proven, and any reasonable royalty damages for that portion of the infringement for which Reno A & E did not prove lost profits damages. Damages should not be duplicated and the total damages should be the entire amount adequate to compensate for the infringement. Authorities Federal Circuit Bar Association Model Jury Instruction No. 12.3.8; 35 U.S.C. § 284.

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4.1 DUTY TO DELIBERATE When you begin your deliberations, you should elect one member of the jury as your presiding juror. That person will preside over the deliberations and speak for you here in court. You will then discuss the case with your fellow jurors to reach agreement if you can do so. Your verdict must be unanimous. Each of you must decide the case for yourself, but you should do so only after you have considered all of the evidence, discussed it fully with the other jurors, and listened to the views of your fellow jurors. Do not be afraid to change your opinion if the discussion persuades you that you should. Do not come to a decision simply because other jurors think it is right. It is important that you attempt to reach a unanimous verdict but, of course, only if each of you can do so after having made your own conscientious decision. Do not change an honest belief about the weight and effect of the evidence simply to reach a verdict.

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4.2 USE OF NOTES Some of you have taken notes during the trial. Whether or not you took notes, you should rely on your own memory of what was said. Notes are only to assist your memory. You should not be overly influenced by the notes.

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4.3 COMMUNICATION WITH COURT If it becomes necessary during your deliberations to communicate with me, you may send a note through the bailiff, signed by your presiding juror or by one or more members of the jury. No member of the jury should ever attempt to communicate with me except by a signed writing; and I will communicate with any member of the jury on anything concerning the case only in writing, or here in open court. If you send out a question, I will consult with the parties before answering it, which may take some time. You may continue your deliberations while waiting for the answer to any question. Remember that you are not to tell anyone - including me - how the jury stands, numerically or otherwise, until after you have reached a unanimous verdict or have been discharged. Do not disclose any vote count in any note to the court.

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4.4 RETURN OF VERDICT A verdict form has been prepared for you. After you have reached unanimous agreement on the specific issues of infringement, invalidity, unenforceability and damages, as identified in the verdict form, your presiding juror will fill in the form that has been given to you, sign and date it, and advise the court that you are