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3 4 5 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON 6 AT SEATTLE 7 IRONBURG INVENTIONS LTD., 8 Plaintiff, C17-1182 TSZ 9 v. MINUTE ORDER 10 VALVE CORPORATION, 11 Defendant. 12 The following Minute Order is made by direction of the Court, the Honorable 13 Thomas S. Zilly, United States District Judge: (1) Having reviewed the parties’ joint statement of objections, docket no. 374, 14 to the Court’s proposed jury instructions circulated to counsel via email on April 29, 2020, as well as the supplemental authorities submitted by the parties, docket nos. 380 15 and 382, the Court has made revisions to the jury instructions as indicated in the redlined version attached hereto as Appendix A. Any objections to the current draft of the jury 16 instructions shall be filed by January 20, 2021. 17 (2) The Clerk is directed to send a copy of this Minute Order to all counsel of record. 18 Dated this 14th day of January, 2021. 19 20 William M. McCool Clerk 21 s/Gail Glass 22 Deputy Clerk DISCUSSION DRAFT 11 March 2020 01 29 April 2020 14 January 2021 02 03 04 Appendix A 05 06 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON 07 AT SEATTLE 08 IRONBURG INVENTIONS LTD., ) 09 ) Plaintiff, ) NO. C17-1182 TSZ 10 ) v. ) 11 ) COURT’S JURY INSTRUCTIONS 12 VALVE CORPORATION, ) ) 13 Defendant. ) ___________________________________ ) 14 15 DATED this ___ day of ______________, 20210. 16 17 18 _________________________ 19 THOMAS S. ZILLY United States District Judge 20 21 22 01 INSTRUCTION NO. 1 02 Duty of Jury 03 04 Members of the Jury: Now that you have heard all the evidence, it is my duty to 05 instruct you on the law that applies to this case. These instructions will be in three parts: 06 first, the instructions on general rules that define and control the jury’s duties; second, the 07 instructions that state the rules of law you must apply, i.e., what each party must prove to make 08 its case; and third, some rules for your deliberations. 09 It is your duty to find the facts from all the evidence in the case. To those facts you 10 must apply the law as I give it to you. You must follow the law as I give it to you whether 11 you agree with it or not. And you must not be influenced by any personal likes or dislikes, 12 13 opinions, prejudices, or sympathy. That means that you must decide the case solely on the 14 evidence before you and according to the law. You will recall that you took an oath 15 promising to do so at the beginning of the case. 16 In following my instructions, you must follow all of them and not single out some and 17 ignore others; they are all equally important. And you must not read into these instructions or 18 anything I might have said or done that I have an opinion regarding the evidence or what 19 verdict you should return. That is a matter entirely for you to decide. 20
22 SOURCE: 9th Cir. Model Instr. 1.4 (modified). 01 INSTRUCTION NO. 2 02 Conscious and Unconscious Bias 03 04 It is important that you discharge your duties without discrimination, meaning that bias 05 regarding race, color, religious beliefs, national origin, sexual orientation, gender, or any 06 disability of a party, a witness, or a lawyer should play no part in the exercise of your judgment 07 throughout the trial. These are called “conscious biases.” 08 There is, however, another more subtle tendency at work about which we must all be 09 aware. This part of human nature is understandable but must play no role in your service as 10 jurors. In our daily lives, there are many issues that require us to make quick decisions and 11 12 then move on. In making these daily decisions, we may well rely upon generalities, even what 13 might be called biases or prejudices. That may be appropriate as a coping mechanism in our 14 busy daily lives but bias and prejudice can play no part in any decisions you might make as a 15 juror. Your decisions as jurors must be based solely upon an open-minded, fair consideration 16 of the evidence that comes before you during trial. 17
22 SOURCE: WPI 1.01 (modified); see https://www.wawd.uscourts.gov/jury/unconscious-bias. 01 INSTRUCTION NO. 3 02 Burden of Proof 03 04 When a party has the burden of proof on any claim or affirmative defense by a 05 preponderance of the evidence, it means you must be persuaded by the evidence that the claim 06 or affirmative defense is more probably true than not true. You should base your decision on 07 all of the evidence, regardless of which party presented it. 08
11 12 13 14 15 16 17
21 SOURCE: 9th Cir. Model Instr. 1.6. 22 01 INSTRUCTION NO. 4 02 Evidence 03 04 The evidence you are to consider in deciding what the facts are consists of (1) the sworn 05 testimony of witnesses; (2) the exhibits that are admitted into evidence; and (3) any facts to 06 which all the lawyers have agreed. 07
22 SOURCE: 9th Cir. Model Instr. 1.9. 01 INSTRUCTION NO. 5 02 Stipulated Facts 03 04 The parties have agreed, or stipulated, to the following facts. You must therefore treat 05 these facts as having been proved. You should consider these facts in addition to those facts 06 that were proved to you at trial. 07 1. The United States Patent and Trademark Office issued United States 08 Patent No. 8,641,525 (the “’525 Patent”) on February 4, 2014. 09 2. Plaintiff Ironburg Inventions Ltd. is, and has been at all times since 10 February 4, 2014, the owner and assignee of record of the ’525 Patent. 11 12 3. As part of its business, plaintiff licenses the ’525 Patent to other 13 companies, including to Scuf Gaming International LLC (“Scuf 14 Gaming”), Microsoft Corporation, and others. 15 4. Defendant Valve Corporation is a video gaming company that develops 16 and sells gaming software, hardware, and related devices and accessories, 17 and that provides an on-line gaming platform. 18 5. At least as early as 2013, defendant announced its intention to enter the 19 video game controller market. 20 6. Plaintiff, through its counsel, sent defendant a letter dated March 7, 2014, 21 and provided defendant with notice of the ’525 Patent. 22 7. Defendant began to sell its “Steam Controller” product in 2015. 01 INSTRUCTION NO. 5 (page 2) 02 03 8. In connection with its design of the Steam Controller, defendant made no 04 attempt to design around the ’525 Patent. 05 9. None of the design changes that defendant made to the Steam Controller 06 were made in response to plaintiff’s March 7, 2014, letter notifying 07 defendant of the ‘525 Patent. 08 10. Defendant continued to sell its Steam Controller product in the United 09 States at all times from June 2015 through December 2019. 10 11. Between June 1, 2015, and December 31, 2019, defendant sold 11 12 approximately 1,612,136 Steam Controllers, all of which were 13 manufactured in the United States. 14 15 16 17
22 01 INSTRUCTION NO. 6 02 What is Not Evidence 03 04 In reaching your verdict you may consider only the testimony and exhibits received into 05 evidence. Certain things are not evidence and you may not consider them in deciding what 06 the facts are. I will list them for you: 07 1. Arguments and statements by lawyers are not evidence. The lawyers are not 08 witnesses. What they say in their opening statements, closing arguments and at other times is 09 intended to help you interpret the evidence, but it is not evidence. If the facts as you 10 remember them differ from the way the lawyers have stated them, your memory of them 11 12 controls. 13 2. Objections by lawyers are not evidence. Attorneys have a duty to their clients to 14 object when they believe a question is improper under the rules of evidence. You should not 15 be influenced by the objection or by the Court’s ruling on it. 16 3. Testimony that has been excluded or stricken, or that you have been instructed to 17 disregard, is not evidence and must not be considered. In addition, if testimony or exhibits 18 have been received only for a limited purpose, you must follow the limiting instructions I have 19 given. 20 4. Anything you may have seen or heard when the court was not in session is not 21 evidence. You are to decide the case solely on the evidence received at the trial. 22 SOURCE: 9th Cir. Model Instr. 1.10 (modified). 01 INSTRUCTION NO. 7 02 Direct and Circumstantial Evidence 03 04 Evidence may be direct or circumstantial. Direct evidence is direct proof of a fact, 05 such as testimony by a witness about what the witness personally saw or heard or did. 06 Circumstantial evidence is proof of one or more facts from which you could find another fact. 07 You should consider both kinds of evidence. The law makes no distinction between the 08 weight to be given to either direct or circumstantial evidence. It is for you to decide how 09 much weight to give to any evidence. 10
22 SOURCE: 9th Cir. Model Instr. 1.12. 01 INSTRUCTION NO. 8 02 Credibility of Witnesses 03 04 In deciding the facts in this case, you might have to decide which testimony to believe 05 and which testimony not to believe. You may believe everything a witness says, or part of it, 06 or none of it. 07 In considering the testimony of any witness, you may take into account: 08 1. the opportunity and ability of the witness to see or hear or know the things 09 testified to; 10 2. the witness’s memory; 11 12 3. the witness’s manner while testifying; 13 4. the witness’s interest in the outcome of the case and any bias or prejudice; 14 5. whether other evidence contradicted the witness’s testimony; 15 6. the reasonableness of the witness’s testimony in light of all the evidence; and 16 7. any other factors that bear on believability. 17 Sometimes a witness may say something that is not consistent with something else he or 18 she said. Sometimes different witnesses will give different versions of what happened. People 19 often forget things or make mistakes in what they remember. Also, two people may see the 20 same event but remember it differently. You may consider these differences, but do not 21 decide that testimony is untrue just because it differs from other testimony. 22 01 INSTRUCTION NO. 8 (page 2) 02 03 If you decide, however, that a witness has deliberately testified untruthfully about 04 something important, you may choose not to believe anything that witness said. On the other 05 hand, if you think the witness testified untruthfully about some things but told the truth about 06 others, you may accept the part you think is true and ignore the rest. 07 The weight of the evidence presented by each side does not necessarily depend on the 08 number of witnesses who testify. What is important is how believable the witnesses were, and 09 how much weight you think their testimony deserves. 10
22 SOURCE: 9th Cir. Model Instr. 1.14. 01 INSTRUCTION NO. 9 02 Opinion Evidence 03 04 You have heard testimony from persons who, because of education or experience, are 05 permitted to state opinions and the reasons for their opinions. 06 Opinion testimony should be judged just like any other testimony. You may accept it 07 or reject it, and give it as much weight as you think it deserves, considering the witness’s 08 education and experience, the reasons given for the opinion, and all the other evidence in the 09 case. 10
22 SOURCE: 9th Cir. Model Instr. 2.13 (modified). 01 INSTRUCTION NO. 10 02 Charts and Summaries 03 04 Certain charts and summaries not admitted into evidence have been shown to you to 05 help explain the contents of books, records, documents, or other evidence in the case. Other 06 charts and summaries have been received into evidence to illustrate information brought out in 07 the trial. Charts and summaries are only as good as the underlying evidence that supports 08 them. You should, therefore, give them only such weight as you think the underlying 09 evidence deserves. 10
22 SOURCE: 9th Cir. Model Instr. 2.14 & 2.15 (modified). 01 INSTRUCTION NO. 11 02 Notes 03 04 Whether or not you took notes during the trial, you should rely on your own memory of 05 the evidence. Notes are only to assist your memory. You should not be overly influenced by 06 your notes or those of other jurors. 07
22 SOURCE: 9th Cir. Model Instr. 1.18 (modified). 01 INSTRUCTION NO. 12 02 Fair Treatment 03 04 Under the law, a business entity is considered to be a person, but it can act only through 05 its employees, agents, directors, officers, members, and/or managers. A business entity is 06 responsible for the acts of its employees, agents, directors, officers, and managers, provided 07 that such acts are performed within the scope of authority. Plaintiff Ironburg Inventions Ltd. 08 (“Ironburg”) is United Kingdom limited company, and defendant Valve Corporation (“Valve”) 09 is a Washington corporation. The fact that these parties are business entities, organized under 10 United Kingdom or Washington law, should not affect your decision. All parties are equal 11 12 before the law, and these business entities are entitled to the same fair and conscientious 13 consideration by you as any other party. 14 15 16 17
22 Source: 9th Cir. Model Instr. 4.1 & 4.2 (modified). 01 INSTRUCTION NO. 13 02 Patents 03
04 This case involves a dispute relating to a United States patent. Before summarizing the 05 positions of the parties and the legal issues involved in the dispute, let me take a moment to 06 explain what a patent is and how one is obtained. 07 Patents are granted by the United States Patent and Trademark Office (sometimes called 08 “the PTO”). A valid United States patent gives the patent holder the right to prevent others 09 from making, using, offering to sell, or selling the patented invention within the United States, 10 without the patent holder’s permission, during the term of the patent, which is usually 17 years 11 12 from the date when the patent issued. A violation of the patent holder’s rights is called 13 infringement. The patent holder may try to enforce a patent against persons believed to be 14 infringers by means of a lawsuit filed in federal court. 15 To obtain a patent one must file an application with the PTO. The process of obtaining 16 a patent is called patent prosecution. The PTO is an agency of the federal government and 17 employs trained patent examiners who review applications for patents. The application 18 includes what is called a “specification,” which must contain a written description of the 19 claimed invention telling what the invention is, how it works, how to make it, and how to use 20 it, so others skilled in the field will know how to make or use it. The specification concludes 21 with one or more numbered sentences. These are the patent “claims.” When the patent is 22 01 INSTRUCTION NO. 13 (page 2) 02 03 eventually granted by the PTO, the claims define the boundaries of its protection and give 04 notice to the public of those boundaries. 05 After the applicant files the application, a PTO patent examiner reviews the patent 06 application to determine whether the claims are patentable and whether the specification 07 adequately describes the invention claimed. In examining a patent application, the patent 08 examiner reviews information about the state of the technology at the time the application was 09 filed. As part of that effort, the patent examiner searches for and reviews information that is 10 publicly available, submitted by the applicant, or both. That information is called “prior art.” 11 12 Prior art is defined by law, and includes things that existed before the claimed invention, that 13 were publicly known, or used in a publicly accessible way in this country, or that were 14 patented or described in a publication in any country. The patent examiner considers, among 15 other things, whether each claim of the patent defines an invention that is new, useful, and not 16 obvious in view of the prior art. A patent lists the prior art that the examiner considered; this 17 list is called the “cited references.” 18 After the prior art search and examination of the application, the patent examiner then 19 informs the applicant in writing what the examiner has found and whether any claim is 20 patentable, and thus will be “allowed.” This writing from the patent examiner is called an 21 “office action.” If the examiner rejects the claims, the applicant has an opportunity to respond 22 and sometimes changes the claims or submits new claims. This process, which takes 01 INSTRUCTION NO. 13 (page 3) 02 03 place only between the examiner and the patent applicant, may go back and forth for some 04 time until the examiner is satisfied that the application and claims meet the requirements for a 05 patent. Sometimes, patents are issued after appeals with the PTO or to a court. The papers 06 generated during this time of communicating back and forth between the patent examiner and 07 the applicant make up what is called the “prosecution history.” All of this material becomes 08 available to the public no later than the date when the patent issues. 09
22 SOURCE: N.D. Cal. Model Instr. A1 (modified); Fed. Cir. Bar Ass’n Model Instr. A.1. 01 INSTRUCTION NO. 14 02 Patent Claims 03 04 A patent claim sets forth, in words, a set of requirements. If a device satisfies each of 05 these requirements, then it is covered by the patent claim, or put another way, the patent claim 06 “reads on” the device. 07 A patent may have several claims, each of which will fall into one of two categories: 08 independent claims and dependent claims. An independent claim sets forth all of the 09 requirements that must be met for a device to be covered by that claim. A dependent claim 10 refers to another claim (which might be an independent or a dependent claim), and it 11 incorporates the requirements of that other claim while also reciting one or more additional 12 requirements. A dependent claim “reads on” a device if all of the requirements of the 13 dependent claim and the claim on which it depends are met. 14 The requirements of a patent claim are also referred to as limitations or elements. 15 16 17 18 19 20 21 22 SOURCE: Fed. Cir. Bar Ass’n Model Instr. 2.2 & 2.2a. 01 INSTRUCTION NO. 15 02 Summary of Contentions 03 04 This case involves United States Patent No. 8,641,525. For convenience, the Court 05 will refer to this patent by the last three digits, or as “the ’525 Patent.” The ’525 Patent, titled 06 “Controller for Video Game Console,” was obtained by Duncan Ironmonger and Simon 07 Burgess on February 4, 2014, and was transferred by them to plaintiff Ironburg Inventions Ltd. 08 The Claims of the ’525 Patent at issue in this case are Claims 2, 4, 7, 9, 10, 11, and 18. The 09 Court will refer to these Claims of the ’525 Patent as the “Asserted Claims.” The validity of 10 the Asserted Claims is not at issue in this trial and should not be considered by you. 11 12 Plaintiff Ironburg Inventions Ltd. asserts the following cause of action, on which it 13 bears the burden of proof by a preponderance of the evidence: That defendant Valve 14 Corporation has infringed one or more of the Asserted Claims of the ’525 Patent. The product 15 that is alleged to infringe one or more of the Asserted Claims of the ’525 Patent is defendant’s 16 video-game controller known as the “Steam Controller.” Plaintiff further alleges that 17 defendant’s infringement of the Asserted Claims of the ’525 Patent was willful. 18 Defendant denies that it infringed the Asserted Claims of the ’525 Patent, willfully or 19 otherwise, and, further, denies the nature and extent of plaintiff’s claimed damages. 20 The foregoing is merely a summary of the parties’ contentions. You are not to take the 21 same as proof of a contention unless admitted by the opposing party, and you are to consider 22 01 INSTRUCTION NO. 15 (page 2) 02 03 only those matters that are admitted or established by the evidence. These contentions have 04 been outlined solely to aid you in understanding the issues. 05 Plaintiff is asserting that defendant infringed more than one Claim of the ’525 Patent, 06 and you must decide as to each Asserted Claim of the ’525 Patent whether plaintiff has proven 07 infringement. The fact that plaintiff has proven infringement as to one Claim of the ’525 08 Patent does not mean that plaintiff has proven infringement of a different Claim of the ’525 09 Patent. Similarly, the fact that plaintiff has not proven infringement as to one Claim of the 10 ’525 Patent does not prevent plaintiff from proving infringement on a different Claim of the 11 12 ’525 Patent, except as otherwise indicated in these instructions. 13 14 15 16 17
22 SOURCE: 9th Cir. Model Instr. 1.5 & 1.8 (modified); see N.D. Cal. Model Instr. A.3 & B.1; Fed. Cir. Bar Ass’n Model Instr. A.2 & A.4. 01 INSTRUCTION NO. 16 02 Patent Infringement 03 04 Infringement occurs when, without the patent holder’s permission, a product meeting all 05 of the requirements of a patent claim is made, used, sold, or offered for sale in the United 06 States. To establish patent infringement in this case, plaintiff must prove by a preponderance 07 of the evidence that defendant’s product meets all of the requirements of one or more of the 08 Asserted Claims of the ’525 Patent, namely Claims 2, 4, 7, 9, 10, 11, and/or 18, with all of you 09 agreeing on which Claim or Claims. 10 If you find from your consideration of all of the evidence that plaintiff has not satisfied 11 12 this burden as to any Asserted Claim, then your verdict should be for defendant as to such 13 Asserted Claim or Claims. On the other hand, if you find that plaintiff has satisfied this 14 burden as to one or more of the Asserted Claims of the ’525 Patent, then your verdict should be 15 for plaintiff as to such Asserted Claim or Claims. 16 To determine whether any Asserted Claim “reads on” defendant’s product, you must 17 first interpret such Asserted Claim, as further explained in Instruction No. 16A. You must 18 then decide, separately for each asserted Claim of the ’525 Patent, whether defendant’s product 19 meets all of the requirements of the Asserted Claim. This rule is subject to one exception 20 relating to dependent patent claims. Claims 2, 4, 7, 9, 10, 11, and 18 depend from Claim 1 of 21 the ’525 Patent. If you find from your consideration of all of the evidence that defendant’s 22 01 INSTRUCTION NO. 16 (page 2) 02 03 product does not meet all of the requirements of Claim 1, then your verdict must be for 04 defendant as to all of the Asserted Claims of the ’525 Patent. 05 Claim 4 depends on Claim 2, and if you find that defendant’s product does not meet all 06 of the requirements of Claim 2, then your verdict must be for defendant as to both Claim 2 and 07 Claim 4 of the ’525 Patent. 08 You have heard evidence about both defendant’s accused product and the product of 09 plaintiff’s affiliate Scuf Gaming. In deciding the issue of infringement, you may not compare 10 defendant’s product to Scuf Gaming’s product; rather, you must compare defendant’s product 11 12 to the Asserted Claims of the ’525 Patent. 13 To establish patent infringement, plaintiff need not prove that defendant knew about the 14 ’525 Patent or was aware that its product infringed the ’525 Patent. 15 16
18 SOURCE: Fed. Cir. Bar Ass’n Model Instr. A.4 & 3.1a (modified); see also N.D. Cal. 19 Model Instr. 3.2 & 3.3; Am. Intellectual Prop. Law Ass’n Model Instr. 3.2.
20 NOTE: The Court has omitted from this instruction the following elements of an infringement claim, which appear to be undisputed: (1) defendant (a) made, (b) used, 21 (c) sold, and/or (d) offered for sale within the United States its “Steam Controller” device (with all jurors agreeing on (a), (b), (c), and/or (d)); and (2) any features of the “Steam 22 Controller” covered by the ’525 Patent were incorporated in the device without plaintiff’s permission. 01 INSTRUCTION NO. 16A 02 Interpretation of Patent Claims 03 04 The words of a patent claim are generally assigned their ordinary and customary 05 meaning. 06 In patent law, however, the word “comprising” is a term of art. By using the term 07 “comprising,” rather than “consisting of,” Claim 1 and its dependent Claims define “open” 08 patent claims, which means that the Claim is infringed as long as every requirement in the 09 Claim is present in defendant’s product. The fact that defendant’s product also includes other 10 parts will not avoid infringement, as long as defendant’s product has every requirement in the 11 12 Claim. 13 The ’525 Patent contains certain directional words, including “top,” “bottom,” “front,” 14 “back,” “end,” “side,” “inner,” “outer,” “upper,” and “lower.” These terms do not limit the 15 respective features to a particular orientation, but merely serve to distinguish the features from 16 one another. For example, the “front” is opposite the “back,” and the “top” is opposite the 17 “bottom.” 18 Two phrases that appear in Claim 1 of the ’525 Patent have been interpreted by the 19 Court. You must accept these interpretations as correct. The phrase “substantially the full 20 distance between the top edge and the bottom edge” means largely but not necessarily the 21 entire distance between the top and bottom edges. The phrase “inherently resilient and 22 flexible,” which modifies “elongate member,” means that the member may be bent or flexed 01 INSTRUCTION NO. 16A (page 2) 02 03 by a load, for example, the force exerted by a user’s finger, and will then return to the unloaded 04 position. 05 The Court has also interpreted the preamble language of a patent claim is ordinarily 06 interpreted as merely stating a purpose or intended use for the invention and does not usually 07 state a limitation that must be found in an accused device to find infringement. This rule does 08 not apply when the patent holder has indicated in a prior proceeding that the preamble or a 09 portion of the preamble is limiting. The preamble of the Claim 1 of the ’525 Patent, which 10 reads: “A hand held controller for a game console comprising . . . .” You must accept the 11 12 Court’s interpretation as correct. In a prior proceeding, plaintiff indicated that the following 13 portion of the preamble is limiting: The term “hand held controller.” is a limitation set forth 14 in Claim 1 and requires Plaintiff further indicated that this portion of the preamble requires 15 that the controller “be held by a user in one or both hands.” In contrast, the phrase “for a 16 game console,” which also appears in the preamble, is not limiting, and you are to ignore this 17 intended statement of purpose or intended use in determining whether defendant’s product 18 infringes the asserted Claim or Claims of the ’525 Patent. 19 You should not infer from the above interpretations that the Court has any particular 20 view regarding how you should decide the issues before you. Those matters are solely for 21 your determination. 22 SOURCE: N.D. Cal. Model Instr. 3.3 (modified); Fed. Cir. Bar Ass’n Model Instr. 2.3; see Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); see also Bio-Rad Labs., Inc. v. 01 10X Genomics Inc., 967 F.3d 1353 (Fed. Cir. 2020); Shoes by Firebug LLC v. Strid e Rite Children’s Group, LLC, 962 F.3d 1362 (Fed. Cir. 2020); Aylus Networks, Inc. v. Apple Inc., 02 856 F.3d 1353 (Fed. Cir. 2017); Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801 (Fed. Cir. 2002); Valve Corp. v. Ironburg Inventions Ltd., PTAB Final Dec. in 03 IPR2016-948 (docket no. 262-11); Valve Corp. v. Ironburg Inventions Ltd., PTAB Dec. Instituting IPR2016-948 (docket no. 262-5); Minute Order (docket no. 153); Pla.’s IPR 04 Resp., Ex. 1 to Schafer Decl. (docket no. 331-1).
05 Both sides have objected to the Court’s proposed instruction concerning the preamble of 06 Claim 1 of the ’525 Patent. Plaintiff argues that the preamble should have no limiting effect. In contrast, defendant contends that the preamble should be construed as 07 requiring that a controller (i) “be held by a user in both hands,” and (ii) “physically communicates with a game console and controls video output associated with a 08 videogame.” Jt. Stmt. of Objections at 27 & 36 (docket no. 374). The Court’s tentative rulings are as follows. 09 Whether a preamble is limiting must be determined “on the facts of each case in 10 light of the overall form of the claim, and the invention as described in the specification and illuminated in the prosecution history.” Bio-Rad, 967 F.3d at 1369. If a patent 11 claim uses the preamble only to state a purpose or intended use for the invention, then 12 the preamble is not limiting. Id. If, however, the preamble provides the antecedent basis for an element of the claim, it might be limiting. Id.; see also Shoes by Firebug, 962 13 F.3d at 1367 (“‘No litmus test defines when a preamble limits claim scope,’ but ‘dependence on a particular disputed preamble phrase for antecedent basis may limit 14 claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.’” (citations omitted)). As explained by one set of commentators, 15 to avoid ambiguity, an antecedent basis must be provided for each element recited in a patent claim, usually by introducing each element with an indefinite article (“a” or “an”), 16 for example, a filament or an electrode. John Gladstone Mills III, et al., PATENT LAW BASICS § 14:12 (2020). Subsequent mention of the element can then be preceded by the 17 definite article (“the”) or by “said” or “such,” for example, the filament or said electrode. See id. 18
19 The preamble in Claim 1 of the ’525 Patent provides the antecedent basis for the term “controller.” In the preamble, “controller” is modified by the phrase “hand held” 20 and appears with an indefinite article. In the body of Claim 1, however, “controller” is not reintroduced, but is instead preceded by the definite article on each of five different 21 occasions. Thus, the preamble defines the scope of Claim 1, which describes a “hand hand controller.” See Shoes by Firebug, 962 F.3d at 1367-68 (distinguishing between two 22 patents, one that reintroduced “a footwear” within the body of the claim, and another that relied on “[a]n internally illuminated textile footwear” in the preamble for antecedent basis). In addition to being supported by recent decisions of the Federal 01 Circuit, the conclusion that the preamble of Claim 1 requires the controller be he ld by a user in one or both hands is consistent with the positions taken by plaintiff before the 02 Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office, as well as the decisions of the PTAB. 03
In contrast, the phrase “for a game console” does not serve as the antecedent basis 04 for any element of Claim 1 of the ’525 Patent and merely identifies the intended use for the “hand hand controller.” Defendant’s suggestion that the preamble requires the 05 controller to be in physical communication with a game console and control the video 06 output associated with a videogame attempts to improperly import limitations into the patent claim, and it is unsupported by the authorities defendant has cited. 07
08 09 10 11 12 13 14 15 16 17 18 19 20 21 22 01 INSTRUCTION NO. 17 02 Willful Infringement 03 04 If you find that defendant infringed one or more of the Asserted Claims of the ’525 05 Patent, then you must also determine whether or not defendant’s infringement was willful. To 06 establish willful infringement, plaintiff must prove by a preponderance of the evidence that 07 defendant intentionally ignored or recklessly disregarded the infringed Claim or Claims. 08 You must base your decision concerning willfulness on defendant’s knowledge and 09 actions at the time of any infringement. Evidence that defendant knew about the ’525 Patent 10 is not itself sufficient to show willfulness; rather, to conclude that defendant acted willfully, 11 12 you must find that defendant engaged in additional conduct manifesting deliberate or reckless 13 disregard of plaintiff’s patent rights. 14 In determining whether any infringement was willful, you should consider all of the 15 facts surrounding the infringement, including (i) whether defendant intentionally copied 16 plaintiff’s patented technology in developing the accused product, (ii) whether defendant knew 17 or should have known that its conduct involved an unreasonable risk of infringement, and/or 18 (iii) whether defendant had a reasonable belief at the time of any infringement that its product 19 did not infringe the Asserted Claims of the ’525 Patent. 20
SOURCE: N.D. Cal. Model Instr. 3.8. 01 INSTRUCTION NO. 18 02 Measure of Damages 03 04 It is the duty of the Court to instruct you as to the measure of damages. By instructing 05 you on damages, the Court does not mean to suggest for which party your verdict should be 06 rendered. It is for you to determine, based upon the evidence, what damages, if any, have 07 been proved. Your award of damages, if any, must be based upon evidence and not upon 08 speculation, guess, or conjecture. 09 If you find that defendant’s product infringed one or more of the Asserted Claims of the 10 ’525 Patent, you must determine plaintiff’s damages relating to that Claim or Claims. You 11 12 may not allow your decision concerning whether any infringement was or was not willful to 13 affect the amount of any damages you award to plaintiff. If you find that any infringement 14 was willful, the Court will take your decision into account later. 15 Damages are the amount of money that will reasonably and fairly compensate plaintiff 16 for any injury that you find was caused by defendant; damages are not intended to punish 17 defendant for any infringement. 18 Plaintiff has the burden of proving the amount of its damages by a preponderance of the 19 evidence. Plaintiff is not required to prove the amount of its damages with mathematical 20 precision, but it must prove the amount with reasonable certainty. An award of damages 21 should put plaintiff in approximately the financial position it would have occupied if the 22 alleged infringement had not occurred, and it must not be less than a reasonable royalty. 01 SOURCE: 9th Cir. Model Instr. 5.1 (modified); N.D. Cal. Model Instr. 5.1 (mod ified); see Am. Intellectual Prop. Law Ass’n Model Instr. 10.0 & 11.0; see also Fed. Cir. Bar 02 Ass’n Model Instr. A.2 & B.1.
03 04 05 06 07 08 09 10 11 12 13 14 15 16 17 18 19 20 21 22 01 INSTRUCTION NO. 18A 02 Reasonable Royalty 03 04 A royalty is a payment made to a patent holder in exchange for the right to make, use, or 05 sell the claimed invention. This right is called a “license.” In the context of an infringement 06 action, a reasonable royalty is the payment for the license that would have resulted from a 07 hypothetical negotiation between plaintiff and defendant, if such negotiation had occurred at 08 the time when the infringing activity first began. In ascertaining the amount of a reasonable 09 royalty upon which the parties would have agreed in a considering the nature of this 10 hypothetical negotiation, you must assume that the parties would have acted reasonably and 11 12 would have entered into a license agreement based on mutually-held beliefs that the Claim or 13 Claims of the ’525 Patent on which plaintiff has prevailed in this litigation are valid and are 14 infringed by defendant’s product. Your role is to determine what royalty would have resulted 15 from such hypothetical negotiation, and not simply what each party might have preferred. 16 A royalty may be calculated in different ways and you must determine which way is the 17 most appropriate based on the evidence you have heard. A royalty might be “ongoing,” 18 meaning that the licensee pays, for the right to use the patented invention, either (i) a certain 19 percentage of the revenue generated by the licensed product, also known as the “royalty base,” 20 or (ii) a fixed amount per unit actually sold. For example, an “ongoing” royalty rate might be 21 1% or 5% of the royalty base, which might be $100, resulting in a royalty of $1 or $5, 22 respectively, or an “ongoing” royalty rate might be $1 or $5 per unit, netting a royalty of $100 01 INSTRUCTION NO. 18A (page 2) 02 03 or $500, respectively, if 100 units are sold. These numbers are only illustrative and are not 04 intended to suggest the appropriate royalty rate. 05 A royalty might instead be a “lump sum,” meaning that the licensee pays one time for a 06 license to cover all sales of licensed products. The licensee pays this single price regardless of 07 whether it sells any products or generates any revenue. When a “lump sum” royalty is 08 awarded, the accused infringer pays a flat rate for the hypothetical license, which covers any 09 and all past and future infringing sales. Which type of royalty is appropriate in this case for 10 the life of the patent is entirely up to you to decide, based on the evidence. 11 12 Plaintiff has the burden of demonstrating the value that any infringing features of 13 defendant’s product add to the desirability of the product as a whole and of apportioning the 14 value of the patented contributions from the value of other features of defendant’s product. 15 [[In this case, you have heard evidence of licenses between plaintiff and other entities. 16 You may consider the royalty rates in those licenses if doing so helps you to determine the 17 value attributable to the asserted Claim or Claims of the ’525 Patent, as distinct from the 18 value of other features of defendant’s product.]] Any royalty that you award must reflect 19 the value attributable to the infringing features of defendant’s product, and nothing more. 20 In determining the amount of a reasonable royalty that would have resulted from a 21 hypothetical negotiation, you should consider all of the facts known and available to the parties 22 01 INSTRUCTION NO. 18A (page 3) 02 03 at the time when the infringing activity first began, including the following factors: 04 (1) The royalties received by plaintiff for licensing the ’525 Patent; 05 (2) The royalty rates paid by other entitiesdefendant for licensing patents comparable to the ’525 patent; 06 (3) The nature and scope of the license or licenses referenced in factors (1) 07 and (2), for example, whether they are as exclusive or nonexclusive, and 08 whether they are or as restricted or non-restricted in terms of territory or with respect to whom the manufactured product may be sold; 09 (4) Any policy and/or marketing program established by plaintiff to maintain 10 its patent monopoly, for example, by not licensing others to use the invention or by granting licenses under special conditions designed to 11 preserve that monopoly; 12 (5) The commercial relationship between plaintiff and any licensees and/or defendant, for example, whether they are competitors in the same territory 13 and/or in the same line of business, or whether they are inventor and promoter; 14 (6) Whether products with features covered by the ’525 Patent are sold along 15 with other products (“convoyed sales”) or generate sales of other products (“derivative sales”) of either plaintiff, or any of its licensees, and/or 16 defendant, and the extent of such convoyed or derivative sales; 17 (7) The duration of the ’525 Patent and the term of any licenses; 18 (8) The established profitability of any product made under the ’525 Patent, its commercial success, and its current popularity; 19 (9) The utility and advantages of the patented property over the old modes or 20 devices, if any, that had been used for working out similar results; 21 (10) The nature of the patented invention, the character of the commercial embodiment of it as owned and produced by plaintiff, and the benefits 22 to those who have used the invention; 01 INSTRUCTION NO. 18A (page 4) 02 (11) The extent to which defendant has made use of the patented invention and 03 any evidence probative of the value of that use; 04 (12) The portion of the profit or of the selling price that might be customary in the particular business or in a comparable business to allow for the use of 05 the invention or analogous inventions; 06 (13) The portion of the realizable profits that should be credited to the invention as distinguished from non-patented elements, the manufacturing 07 process, business risks, or significant features or improvements added by 08 the infringerdefendant; and 09 (14) The opinion and testimony of qualified experts. No one factor is dispositive. You may also consider any other factor that in your mind would 10 11 have increased or decreased the royalty the alleged infringer would have been willing to pay 12 and the patent holder would have been willing to accept, acting as normally prudent business 13 people in a hypothetical negotiation. 14 SOURCE: N.D. Cal. Model Instr. 5.7 (modified); see Am. Intellectual Prop. Law Ass’n 15 Model Instr. 10.2.5.2 & 10.2.5.3; Fed. Cir. Bar Ass’n Model Instr. 6.6 & 6.7; see also Ga.- Pac. Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970). 16 NOTE: The Court previously indicated an intentds to omit the stricken language in 17 green. The Court will instead leave the language in green in the instruction, but and 18 reserves ruling on whether these words, as well as which, if any, of other the “Georgia- Pacific” factors, are relevant in light of the evidence presented to the jury. See Ericsson, 19 Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1230-32 (Fed. Cir. 2014). With respect to the double-bracketed text in blue, plaintiff has taken inconsistent positions, proposing in one 20 document to omit it, see Ex. B to Jt. Stmt. of Objections (docket no. 374-2 at 3), but including it in another version of this instruction, see Ex. A to Jt. Stmt. of Objections 21 (docket no. 374-1 at 4:14-17). Defendant has indicated no objection to substantially similar language. See Ex. C to Jt. Stmt. of Objections (docket no. 374-3 at 12-15). With 22 respect to Factor 6, the Court has attempted to incorporate the substance of the parties’ proposed language, while not introducing an undefined term (“patented specialty”) or unexplained concepts (“convoyed or derivative sales”). 01 INSTRUCTION NO. 18B 02 Date of Commencement 03 04 Any damages that you award to plaintiff should be calculated to begin on the date that 05 you determine the infringing activity began and to end on ____________________________. 06 07
15 16 17 18 19 20 SOURCE: N.D. Cal. Model Instr. 5.9 (modified); Fed. Cir. Bar Ass’n Model Instr. 6.8. 21 NOTE: Based on the parties’ Admitted Facts 1, 2, 6, and 7, indicating that the ’525 22 Patent issued in February 2014, and plaintiff sent defendant notice of the ’525 Patent in March 2014, before defendant began selling its “Steam Controller” product in 2015, the date of notice is not relevant. 01 INSTRUCTION NO. 19 02 Deliberation 03 04 Before you begin your deliberations, elect one member of the jury as your presiding 05 juror. The presiding juror will preside over the deliberations and serve as the spokesperson 06 for the jury in court. It is the presiding juror’s duty to see that discussion is carried on in a 07 sensible and orderly fashion, the issues submitted for your decision are fully and fairly 08 discussed, and that every juror has a chance to express himself or herself and participate in the 09 deliberations upon each question before the jury. Deliberations are to occur only in the jury 10 room and only when all jurors are present. 11 12 You will be furnished with all of the exhibits admitted into evidence, these instructions, 13 and a suitable form of verdict. Your verdict must be based solely on the evidence and on the 14 law as I have given it to you in these instructions. 15 16 17 18 19 20 21 22 SOURCE: 9th Cir. Model Instr. 3.1 & 3.2 (modified); WPI 1.08 (modified). 01 INSTRUCTION NO. 20 02 Reaching Agreement 03 04 You shall diligently strive to reach agreement with all of the other jurors if you can do 05 so. Your verdict must be unanimous. 06 Each of you must decide the case for yourself, but you should do so only after you have 07 considered all of the evidence, discussed it fully with the other jurors, and listened to their 08 views. 09 It is important that you attempt to reach a unanimous verdict but, of course, only if each 10 of you can do so after having made your own conscientious decision. Do not be unwilling to 11 12 change your opinion if the discussion persuades you that you should. But do not come to a 13 decision simply because other jurors think it is right, or change an honest belief about the 14 weight and effect of the evidence simply to reach a verdict. 15 16 17
22 SOURCE: 9th Cir. Model Instr. 3.1. 01 INSTRUCTION NO. 21 02 Communication with Court 03 04 If it becomes necessary during your deliberations to communicate with me, you may 05 send a note through the clerk, signed by your presiding juror or by one or more members of the 06 jury. No member of the jury should ever attempt to communicate with me except by a signed 07 writing. I will communicate with any member of the jury on anything concerning the case 08 only in writing, or orally here in open court. Remember that you are not to tell anyone -- 09 including me -- how the jury stands, numerically or otherwise, until after you have reached a 10 unanimous verdict or have been discharged. 11 12 If you send a note to me, there will be some delay in my response because I will discuss 13 the note with the lawyers before preparing a response. You may continue your deliberations 14 while waiting for the answer to any question. 15 16 17
22 SOURCE: 9th Cir. Model Instr. 3.3 (modified). 01 INSTRUCTION NO. 22 02 Verdict 03 04 After you have reached unanimous agreement on a verdict, your presiding juror should 05 complete the verdict form in a manner that expresses the results of your deliberations, date and 06 sign the verdict form, and announce your agreement to the clerk, who will conduct you into the 07 courtroom to declare your verdict. 08
22 SOURCE: 9th Cir. Model Instr. 3.5 (modified).