CLAIM CONSTRUCTION AND LITERAL INFRINGEMENT
LIMITATIONS ON THE DOCTRINE OF EQUIVALENTS
Alternative 1 - Instructions Where the Judge Will Decide the Issue of Obviousness
Alternate 3: When the patent issues before infringement begins.
Alternate 4: When the patent issues after the infringing activity begins.
These model jury instructions were drafted by the Model Patent Jury Instruction Subcommittee of the American Intellectual Property Law Association's Federal Litigation Committee. The substantive drafting process was completed in July, 1997. These model instructions were then approved by the Board of Directors of the AIPLA, subject to some stylistic changes. They were first posted on the AIPLA's website in April, 1998.
One of the subcommittee's fundamental objectives was to draft a set of instructions that would not be biased in favor of either the patent owner or the accused infringer. Another fundamental goal was to accurately reflect the current state of the law on many of the major issues that typically arise in patent infringement cases, as those principles of law had been declared by the Federal Circuit Court of Appeals through July, 1997.
The subcommittee has also attempted to prepare a set of instructions that will be more easily understood by a jury than many prior sets of patent jury instructions. However, much of the burden of assisting the jury's understanding of the applicable principles of patent law must be carried by the parties and the Court by tailoring these instructions to the facts of each particular case. For example, most cases will not involve all of the issues that are addressed by these model instructions; instructions that are superfluous should not, of course, be given. On the other hand, the subcommittee did not attempt to draft jury instructions that would cover every issue that might possibly arise in a patent infringement jury trial. In addition, there may well be further details that should be added to particular instructions to address specific issues that will arise in certain cases.
Of course, it is also intended that these instructions be used in conjunction with other instructions dealing with "non-patent" issues (e.g., credibility of witnesses).
Finally, it is intended that the trial court "breathe life" into these model instructions by relating the legal principles in the instructions to the particular factual contentions of the parties. In many instances the subcommittee has indicated where such customizing can be accomplished by placing [brackets] in the instructions. See, for example, Anticipation Instruction No. 1. These instructions were drafted with the hope and expectation that the trial court would add further evenhanded comments to explain to the jury how these instructions relate to the particular factual contentions advanced by the parties.
Copies of these model jury instructions are also available on disk. Requests for disks can be directed to:
American Intellectual Property Law Association
2001 Jefferson Davis Highway
Suite 203
Arlington, VA 22202
(703) 415-0780
April 2, 1998
Richard S. Florsheim
Chairman,
Model Jury Instructions Subcommittee
Federal Litigation Committee
American Intellectual Property Law Association
The contributions of the following attorneys to the drafting and commenting on of these model jury instructions are gratefully acknowledged.
Mark Abate
Ken R. Adams
Joseph Z. Allen
Russell J. Barron
Christopher R. Benson
David J. Brezner
Henry L. Brinks
Robert L. Baechtold
Jeffrey N. Costakos
John F. Delaney
Bradford J. Duft
Donald R. Dunner
Richard D. Fladung
Floyd A. Gibson
Eileen M. Herlihy
Roy E. Hofer
Michael K. Kirschner
Steven S. Korniczky
William E. Lahey
Bradley G. Lane
Robert C. Laurenson
Gary H. Levin
Jeffrey I.D. Lewis
Brent P. Lorimer
Don W. Martens
Alice O. Martin
Clifton E. McCann
Frederick G. Michaud, Jr.
Gaynell C. Methvin
Jeffrey D. Mills
John B. Pegram
Michael F. Petock
Peter H. Priest
Jerrold B. Reilly
Daniel M. Riess
William C. Rooklidge
Alan J. Ross
John M. Skenyon
Allan Sternstein
Lawrence M. Sung
Jennifer A. Tegfeldt
David C. Wright
Members of the jury:
Now that you have been sworn, I have the following preliminary instructions for your guidance on the nature of the case and your role as jurors.
This is a patent case. The patents involved in this case relate to [subject matter] technology. [Briefly describe technology involved] During the trial, the parties will offer testimony to familiarize you with this technology. For your convenience, we will distribute a glossary of some of the technical terms to which the parties may refer during the trial.
The United States Patent and Trademark Office has granted [a/several] patent[s] to [named inventor(s)] for inventions relating to this technology. [Name of party] is the owner [exclusive licensee] of the patent[s], which [is/are] identified by the Patent Office by number: No. X,XXX,XXX (which may be called "the 'XXX patent"); [identify additional patents]. These patents may also collectively be referred to as "the [named inventor(s)] patents." [Identify relationship of any other parties aligned with the patent owner; e.g. exclusive licensee]A valid United States patent gives its owner the right to exclude others from [practicing the patented process], making using, offering to sell, or selling the patented invention [a product made by the patented process] within [or importing the patented invention into] the United States, its territories, and its possessions. During the trial, the parties will offer testimony to familiarize you with how one obtains a patent from the United States Patent and Trademark Office (sometimes referred to as "the PTO"), as well as with the contents of a patent, including the specification or written description and the claim or claims by which the applicant defines the subject matter of his or her invention.
I will briefly describe some of the terms for you so that you have some background in patent terminology. The Patent and Trademark Office, the PTO, is in the Washington, D.C. area and is an agency of the Federal Government. It has more than a thousand technically educated examiners who examine applications for patents.
The application is the initial set of papers filed with the PTO by the applicant[s]. In addition to some other papers such as the inventor's oath, the application includes a specification, which must have a written description of the invention telling what the invention is, how it works, and how to make and use it so as to enable others skilled in the art to do so [IF A BEST MODE DEFENSE IS ASSERTED: and what the inventor believed at the time of filing to be the best way of making his or her invention]. The specification concludes with one or more numbered sentences. These are the claims. The purpose of the claims is to particularly point out what the applicant regards as his or her invention. When the patent is eventually issued by the PTO, the claims define the scope of the patent owner's exclusive rights during the life of the patent. In a few minutes, I will describe for you the meaning of the claim[s] of the '___ patent[s].
After the applicant files the application, a PTO patent examiner who reviews (or examines) the patent application to determine whether the claims are patentable and whether the specification adequately describes the invention claimed. In examining a patent application, the patent examiner makes a search of the PTO records for prior art to the patent application claims. The examiner considers, among other things, whether each claim defines an invention that is new, useful, and not obvious in view of this prior art. The prior art is defined by statute and I will give specific instructions as to what constitutes prior art to [each/the] patent in suit after the close of the evidence. But generally it is technical information and knowledge that was known to the public either before the invention by the applicant or more than a year before the effective filing date of the application.
Following the prior art search and examination of the application, the patent examiner then advises the applicant in writing what the examiner has found and whether he has "allowed" any claim. This writing from the PTO examiner is called an office action. More often than not, the initial office action by the patent examiner rejects the claims. The applicant then responds to this, and sometimes changes the claims or submits new claims. This process may go back and forth between the patent examiner in the PTO and the applicant for several months or even for years until the examiner is satisfied that the application and claims meet the conditions for patentability.
The papers generated during this time of corresponding back and forth between the PTO patent examiner and the applicant is what is called the prosecution history. This history of written correspondence is contained in a file in the PTO, and consequently some people over the course of the trial may call this history the file wrapper.
A [person] [company] is said to be infringing on claims of a patent when they, without permission from the patent owner, make, use, import, offer to sell or sell the patented invention, as defined by the claims, within the United States before the term of the patent expires. A patent owner that believes someone is infringing on his or her exclusive rights under a patent may bring a lawsuit like this to stop the alleged infringing acts and recover damages. The patent owner has the burden to prove infringement of the claims of the patent. The patent owner also has the burden to prove damages caused by that infringement, which are adequate to compensate for the infringement.(1) [IF LOST PROFITS WILL BE SOUGHT: Damages may be measured by the patent owner's lost profits caused by the infringement.] Damages may not be less than a reasonable royalty for the use made of the invention.
A person sued for allegedly infringing a patent can deny infringement, and can also defend by proving the asserted claim[s] of the patent[s] [is/are] invalid [IF UNENFORCEABILITY IS ASSERTED: or unenforceable]. The accused infringer has the burden to prove invalidity by clear and convincing evidence. In evaluating infringement or invalidity, each claim is to be evaluated independently. I will now briefly explain the parties' basic contentions in more detail.
In this case, the plaintiff, _________, contends that the defendant, __________, makes, uses and sells a [product] that infringes claim XX of the '___ patent. [The plaintiff] has the burden of proving that [the defendant] infringes the '___ patent by a preponderance of the evidence. That means that [the plaintiff] must show that it is more likely that [the defendants'] [product] infringes than it does not infringe.
There are two ways in which a patent claim can be directly infringed. First, a claim can be literally infringed. Second, a claim can be infringed under what is called the "doctrine of equivalents," which I will address shortly.
To determine literal infringement, you must compare the accused product [method] with each claim that [plaintiff] asserts is infringed. It will be my job to tell you what the patent claims mean. You must follow my instructions as to the meaning of the patent claims.
A patent claim is literally infringed only if [defendant's] product [method] includes each and every element [method step] in that patent claim. If [defendant's] product [method] does not contain [include] one or more elements [method steps] recited in a claim, [defendant] does not literally infringe that claim. You must determine literal infringement with respect to each patent claim individually.
You may find that [defendant's product or method] infringes a claim of [plaintiff's] patent, even if not every element [step] of that claim is present in [defendant's] [product or method]. However, to do so, you must find that there is an equivalent [component, part or method step] in [defendant's product or method] for each element [step] of the patent claim that is not literally present in [the defendant's] [product or method]. This is called infringement under the doctrine of equivalents.
[The plaintiff] has the burden of proving by a preponderance of the evidence that [the defendant's] [product or method] contains the equivalent of each element of the claimed invention that is not literally present in [the defendant's product or method].
[The defendant] denies that it is infringing the '___ patent. [The defendant] also contends that the '___ patent is invalid for several reasons. [INSERT BRIEF DESCRIPTION OF THE PARTICULAR INVALIDITY DEFENSES BEING ASSERTED].
Invalidity is a defense to infringement. Therefore, even though the PTO examiner has allowed the claims of the '___ patent to issue, you, the jury, have the ultimate responsibility for deciding whether the claims of the '___ patent are valid. [The defendant] bears the burden of proving invalidity by clear and convincing evidence. This is a higher burden than a preponderance of the evidence; on the other hand, this does not require proof beyond a reasonable doubt. It will be your job, at the end of this trial, to determine whether the defendant has met its burden of proving the invalidity of the '___ patent claims. Clear and convincing evidence is evidence that produces in your mind an abiding conviction that the claims are invalid.
We are about to commence the opening statements in the case. Before we do that, I want to explain to you a little bit about the procedures that we will be following during the trial and the format of the trial. This trial, like all jury trials, comes in six stages or phases. We have already been through the first phase, which is to select you as jurors. We are now about to begin the second phase, the opening statements. The opening statements of the lawyers are statements about what each side expects the evidence to show. The opening statements are not evidence in the case.
The evidence comes in the next phase, the third phase, when the witnesses will take the witness stand and the documents will actually be offered and admitted into evidence. In the third phase, the plaintiff goes first in calling witnesses to the witness stand. These witnesses will be questioned by the plaintiff's counsel in what is called direct examination. After the direct examination of a witness is completed, the opposing side has an opportunity to cross-examine the witness. After the plaintiff has presented its witnesses, the defendant will call its witnesses, who will also be examined and cross-examined.
The evidence often is introduced somewhat piecemeal, so you as jurors need to keep an open mind as the evidence comes in. Wait until all the evidence comes in before you make any decision. In other words, keep an open mind throughout the entire trial.
After we conclude the third phase, after the evidence has been presented, then the lawyers again have an opportunity to talk with you in what's called closing argument, which is the fourth phase. Again, what the lawyers say is not evidence. The lawyers' closing arguments to you are for the purpose of helping you in making you determination.
After that phase, we reach the fifth phase of the trial, which is when I read you the jury instructions. In that phase, I will instruct you on the law. I have already explained a little bit about the law to you. But later, in this fifth phase of the trial, I will explain the law in much more detail.
Finally, in the sixth phase of the trial it will be time for you to deliberate. You can then evaluate the evidence, discuss the evidence among yourselves and make a determination in the case. Remember that it will be your duty to find what the facts are from the evidence as presented at the trial. You, and you alone, are the judges of the facts. You have to apply those facts to the law and the patent claims as I instruct you at the close of the evidence.(2)
You are the judges of the facts. I will explain to you the rules of law which apply to this case, and I will also explain to you the meaning and scope of the patent claims. You must follow that law and claim interpretation whether you agree with it or not. Nothing I say or do during the course of the trial is intended to indicate what your verdict should be.
Application - The initial papers filed by the applicant in the United States Patent and Trademark Office (also called the Patent Office or PTO).
Claims - Claims are the numbered sentences appearing at the end of the patent and define the invention. The words of the claims define the scope of the patent owner's exclusive rights during the life of the patent.
File wrapper - See prosecution history below.
License - Permission to use the patented invention, which may be granted by a patent owner (or a prior licensee) in exchange for a fee called a "royalty" or other consideration.
Office action - Communication from the patent examiner regarding the specification of the patent application and/or the claims pending in the patent application.
Patent Examiners - Personnel employed by the PTO who review (examine) patent applications, each in a specific technical area, to determine whether the claims of a patent application are patentable and whether the disclosure adequately describes the invention.
Prior art - Knowledge that is available to the public either prior to the invention by applicant or more than a year prior to the effective filing date of his/her application. [If 102(g) prior art that was not publicly available before these dates will be introduced at trial, add to this instruction.]
Prosecution history - The written record of proceedings in the United States Patent and Trademark Office ("PTO") between the applicant and the PTO. It includes the original patent application and later communications between the PTO and applicant. The prosecution history may also be referred to as the "File wrapper" of the patent during the course of this trial.
References - Any item of prior art used to determine patentability.
Specification - The specification is the information which appears in the patent and concludes with one or more claims. The specification includes the written text, the claims and the drawings. In the specification, the inventor sets forth a description telling what the invention is, how it works, and how to make and use it so as to enable others skilled in the art to do so [and what the inventor believed at the time of filing to be the best way of making his or her invention].
Ordinary Skill In Art - ______________________________
[To be agreed upon between the parties]
Claim Construction and Infringement No. 1
Claim Construction and Infringement - Generally
[The plaintiff] has accused [the defendant] of infringing the _____ patent. [The plaintiff] has the burden of proving infringement by a preponderance of the evidence.
Before you decide whether or not [the defendant] has infringed the claims of [the plaintiff's] patent or whether or not [the plaintiff's] patent is valid, you will have to understand the patent "claims." The patent claims are numbered paragraphs at the end of the patent. The patent claims involved here are claims _____, beginning at column ___, line ___ of the patent, which is exhibit ___ in evidence. The claims are "word pictures" intended to define, in words, the boundaries of the invention described and illustrated in the patent. Only the claims of the patent can be infringed. Neither the written description, which we have already discussed, nor the drawings of a patent can be infringed. Each of the claims must be considered individually, and not all claims of a patent have to be infringed for the patent to be infringed. To prove patent infringement, [plaintiff] need only establish by a preponderance of the evidence that one claim is infringed.
You have heard evidence about both [the plaintiff's] commercial product [process] and [the defendant's] commercial product [process]. However, in deciding the issue of infringement you may not compare [the defendant's] accused product [process] to [the plaintiff's] commercial product [process]. Rather, you must compare [the defendant's] accused product [process] with the claims of the _____ patent when making your decision regarding infringement.
35 U.S.C. 112; Panduit Corp. v. Dennison Mfg. Co., 836 F.2d 1329, 5 USPQ2d 1266 (Fed. Cir. 1987); Smithkline Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878, 8 USPQ2d 1468 (Fed. Cir. 1988); Amstar Corp. v. Envirotech Corp., 823 F.2d 1538, 3 USPQ2d 1412 (Fed. Cir. 1987); Datascope Corp. v. SMEC, Inc., 879 F.2d 820, 11 USPQ2d 1321 (Fed. Cir. 1989), cert. denied, 493 U.S. 1024 (1990).
Claim Construction and Infringement No. 2
To decide the questions of infringement and validity, you must first understand what the claims of the patent cover, that is, what they prevent anyone else from doing. You must use the same claim meaning for both your decision on infringement and your decision on validity.
In this case [the plaintiff] and [the defendant] agree about the meaning of several parts of the claims. [The plaintiff] and [the defendant] do not agree about the meaning of other parts of the claims. It is my duty to interpret these contested words and groups of words for you.
I will now tell you the meanings of the following words and groups of words from the patent claims. You must use these meanings in your deliberations concerning both infringement and invalidity.
[READ STIPULATIONS AND COURT'S CLAIM CONSTRUCTIONS]
Smithkline Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878, 8 USPQ2d 1468 (Fed. Cir. 1988); Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 223 USPQ 1264 (Fed. Cir. 1984); Markman v. Westview Instruments, Inc., 52 F.3d 967, 34 USPQ2d 1321 (Fed. Cir. 1995).
Claim Construction and Infringement No. 3
Construction of Means-Plus-Function Claims
The following clause used in claim(s) _____ of the _____ patent is in a special form called a "means-plus-function" ["step-plus-function"]: ["________________"] clause. This clause requires a special interpretation under the patent law. The law says that those words shall not cover all means [steps] which perform the recited function of "____________", but shall cover only the structure [step] described in the patent specification and drawings that performs the function of "_____" or an equivalent of that structure [step].
35 U.S.C. 112; Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 223 USPQ 1264 (Fed. Cir. 1984); Read Corp. v. Portec, Inc., 970 F.2d 816, 23 USPQ2d 1426 (Fed. Cir. 1992); Valmont Indus., Inc. v. Reinke Mfg., Inc., 983 F.2d 1039, 1042-43, 25 USPQ2d 1451, 1454 (Fed. Cir. 1993); Carroll Touch, Inc. v. Electro Mechanical Sys., Inc., 15 F.3d 1573 (Fed. Cir. 1993).
Claim Construction and Infringement No. 4
Infringement - Generally
Questions _____ of the Special Verdict read as follows: "[Read text of infringement verdict questions]."
I will now instruct you as to the rules you are to follow in arriving at your decisions as to whether [the defendant] has infringed any of the claims of [the plaintiff's] patent.
The patent law gives the owner of a valid patent the right to exclude others from making, using [offering for sale] [importing] or selling the patented invention during the term of the patent. The patent law provides that any person or business entity which, without the patent owner's permission, makes, uses, [offers for sale] or sells within the United States [or imports into the United States] any product or method that is covered by at least one claim of a patent before the patent expires, infringes the patent. Here, [the plaintiff] alleges that [defendant's] product [method] infringes one or more claims of [plaintiff's] U.S. Patent No. _____.
There are three ways to infringe a patent. One can: (1) directly infringe a patent; (2) induce others to infringe a patent; or (3) contribute to the infringement of a patent by another. I will now explain in more detail each type of infringement alleged in this case.
35 U.S.C. 281, 271.
Claim Construction and Infringement No. 5
Direct Infringement - Knowledge of Patent or Intent to Infringe is Immaterial.
In this case, [the plaintiff] asserts that [the defendant] has directly infringed the patent. [Defendant] would be liable for directly infringing [plaintiff's] patent if you find that [plaintiff] has proven by a preponderance of the evidence that [defendant] has made, used [offered for sale] [imported] or sold the invention defined in at least one claim of [plaintiff's] patent.
A person can directly infringe a patent without knowing that what it is doing is an infringement of the patent. It may also infringe even though in good faith it believes that what it is doing is not an infringement of any patent.
35 U.S.C. 271(a); Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 478, 181 USPQ 673, 677 (1974); Filmways Pictures, Inc. v. Marks Polarized Corp., 552 F. Supp. 863, 868, 220 USPQ 870, 873 (S.D.N.Y. 1982).
Claim Construction and Infringement No. 6
Inducing Patent Infringement
[The plaintiff] asserts that [the defendant] has induced infringement. To show inducement, [the plaintiff] must prove by a preponderance of the evidence that someone has directly infringed the patent. If there is no direct infringement by anyone, [the defendant] has not induced infringement. If you find that someone has directly infringed the _____ patent, it is not necessary to show that [the defendant] itself has directly infringed, if [the plaintiff] proves by a preponderance of the evidence that [the defendant] actively and knowingly aided and abetted that direct infringement. [The plaintiff] must show that [the defendant] actually intended to cause the acts that constitute direct infringement and that [the defendant] knew or should have known that its actions would induce actual infringement. [The defendant] cannot be liable for inducing infringement if it had no reason to be aware of the existence of the patent.
If you find that someone has directly infringed the _____ patent and that [the defendant] knew or should have known that its actions would induce direct infringement, [you may find that [the defendant] induced another to infringe [plaintiff's] patent if it provided instructions and directions to perform the infringing act through labels, advertising or other sales methods.] [you may find that [the defendant] induced infringement even if there is an express warning against the infringement, if the material containing the warning nonetheless invites the infringing activities under the circumstances.] [you may find that [the defendant] induced infringement by supplying the components or ingredients that are used in an infringing method or apparatus with the knowledge and intent that its customer would directly infringe by using the components or ingredients to make, use or sell the patented invention.]
NOTE: Use those portions, if any, of the final paragraph that are applicable to the case. This instruction should be tailored to relate to the facts in a particular case. Special verdicts or interrogatories to the jury may be appropriate on the issue of inducing infringement.
4 Donald S. Chisum, Patents 17.04 (1992); Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 15 USPQ2d 1525 (Fed. Cir. 1990); Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 16 USPQ2d 1587 (Fed. Cir. 1990); CR Bard, Inc. v. Advanced Cardiovascular Sys., Inc., 911 F.2d 670, 15 USPQ2d 1540 (Fed. Cir. 1990).
Claim Construction and Infringement No. 7
Contributory Infringement
[The plaintiff] [also] asserts that [the defendant] is liable for contributory infringement. [The plaintiff] has the burden to prove contributory infringement by a preponderance of the evidence. To establish contributory infringement by [the defendant], [plaintiff] must first show that someone directly infringed the [_____] patent; however, [the plaintiff] does not need to prove that [the defendant] itself directly infringed. If there is no direct infringement by anyone, there can be no contributory infringement.
If you find someone has directly infringed the patent, then contributory infringement exists if [plaintiff] proves that:
(1) [the defendant] sold or supplied;
(2) a material component of the patented invention that is not a staple article of commerce capable of substantial noninfringing use;
(3) with knowledge that the component was especially made or adopted for use in an infringing product [method].
A "staple article of commerce capable of substantial noninfringing use" is something that has uses other than as a part or component of the patented product [other than in the patented method] and that those other uses that are not occasional, farfetched, impractical, experimental or hypothetical.
Preemption Devices, Inc. v. Minnesota Mining & Mfg. Co., 630 F. Supp. 463, 229 USPQ 255 (E.D. Pa. 1985), aff'd in part, vacated in part, and remanded, 803 F.2d 1170, 231 USPQ 297 (Fed. Cir. 1986); In re Certain Molded-In Sandwich Panel Inserts, 218 USPQ 832 (Ct. Int'l. Trade 1982), aff'd, 721 F.2d 1305, 219 USPQ 1142 (1983); Oxy Metal Indus. Corp. v. Quin-Tec, Inc., 216 USPQ 318, 324 (E.D. Mich. 1982); 4 Donald S. Chisum, Patents 17.03[3], at n.6 (1992).
Claim Construction and Infringement No. 8
Two Types of Direct Infringement; Literal Infringement
There are two ways in which a patent claim can be directly infringed. First, a claim can be literally infringed. Second, a claim can be infringed under what is called the "doctrine of equivalents," which I will address shortly.
To determine literal infringement, you must compare the accused product [method] with each claim that [plaintiff] asserts is infringed, using my instructions as to the meaning of the patent claims.
A patent claim is literally infringed only if [defendant's] product [method] includes each and every element [method step] in that patent claim. If [defendant's] product [method] does not contain [include] one or more elements [method steps] recited in a claim, [defendant] does not literally infringe that claim. You must determine literal infringement with respect to each patent claim individually.
You must be certain to compare [defendant's] accused product [method] with each claim it is alleged to infringe. It should be compared to the intentions described in the patent claim, not to [plaintiff's] preferred or commercial embodiment of the claimed invention.
Martin v. Barber, 755 F.2d 1564, 1567, 225 USPQ 233, 234-35 (Fed. Cir. 1985); Amstar Corp. v. Envirotech Corp., 730 F.2d 1476, 1484, 221 USPQ 649, 655 (Fed. Cir.), cert. denied, 469 U.S. 924 (1984); Mannesmann Demag Corp. v. Engineered Metal Prods. Co., 793 F.2d 1279, 1281-82, 230 USPQ 45, 46 (Fed. Cir. 1986).
Claim Construction and Infringement No. 9
Infringement of Means-Plus-Function Claims
I have previously instructed you that claims _____ of the patent contain means-plus-function [step-plus-function] clauses. These clauses read as follows: "_____." To determine whether [the plaintiff] has proven infringement of these claims, you must first determine whether or not [plaintiff] has shown that any structure [step] in [defendant's] product [method] performs the function of "_____." If you find that it does, you must then determine whether or not [the plaintiff] has shown that that structure [step] is identical to any structure [step] disclosed in the patent specification for performing the function of _____. If you find that it is, then the means-plus-function [step-plus-function] clause of [plaintiff's] patent is found in [defendant's] product [method]. If you find that the structure of [defendant's] product [step] is not identical to a structure [step] that performs that function in the patent specification, then you must consider whether or not [defendant's] product [method] has a structure [step] that is equivalent to any structure described in the patent specification for performing that function.
Comment - The Federal Circuit has not really defined equivalents for 112-6. Until they do, I think we have to leave it alone.
To show infringement, it is [the plaintiff's] burden to prove, by a preponderance of the evidence, that the part of [defendant's] product [step in defendant's method] that performs the function of "_____" is identical to, or equivalent to, a structure [step] described in the specification for performing the function of "_____."
35 U.S.C. 112; Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 223 USPQ 1264 (Fed. Cir. 1984); Texas Instruments, Inc. v. U.S. Int'l Trade Comm'n, 805 F.2d 1558, 231 USPQ 833 (Fed. Cir. 1986); Read Corp. v. Portec, Inc., 970 F.2d 816, 23 USPQ2d 1426 (Fed. Cir. 1992); Valmont Indus., Inc. v. Reinke Mfg., Inc., 983 F.2d 1039, 1042-43, 25 USPQ2d 1451, 1454 (Fed. Cir. 1993); Carroll Touch, Inc. v. Electro Mechanical Sys., Inc., 15 F.3d 1583 (Fed. Cir. 1993); Rite-Hite Corp. v. Kelley Co., 819 F.2d 1120, 1124-25, 2 USPQ2d 1915, 1918 (Fed. Cir. 1987).
Claim Construction and Infringement No. 10
Infringement of Dependent Claims
There are two different types of claims in the patent. One type of claim is called an independent claim. The other type of claim is called a dependent claim.
An independent claim is a claim that does not refer to any other claim of the patent. An independent claim must be read separately from the other claims to determine the scope of the claim.
A dependent claim is a claim that refers to at least one other claim in the patent. A dependent claim incorporates all of the elements of the claim to which the dependent claim refers, as well as the elements recited in the dependent claim itself.
For example, Claim 1 is an independent claim and recites several elements. Claim 2 is a dependent claim that refers to Claim 1 and includes an additional element or limitation. [Identify the differences between Claim 1 and Claim 2.] Claim 2 requires each of the elements of Claim 1, as well as the additional elements identified in Claim 2 itself.
To establish literal infringement of claim 2, [plaintiff] must show by a preponderance of the evidence that [the defendant's] product [method] includes each and every element of claim 2 as I have interpreted it for you.
If you find that the independent claim from which claim 2 depends is not literally infringed, then you cannot find that dependent claim 2 is literally infringed.
Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 626, 225 USPQ 634, 642-43 (Fed. Cir.), cert.dismissed, 474 U.S. 976 (1985); Wilson Sporting Goods v. David Geoffrey & Assocs., 904 F.2d 677, 14 USPQ2d 1942 (Fed. Cir.); 35 U.S.C. 112; cert. denied 498 U.S. 992 (1990); Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 219 USPQ 1137 (Fed. Cir. 1983); SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 227 USPQ 577 (Fed. Cir. 1985); Tandon Corp. v. U.S. Int'l Trade Comm'n, 831 F.2d 1017, 1023-24, 4 USPQ2d 1283, 1288-89 (Fed. Cir. 1987).
Claim Construction and Infringement No. 11
Infringement of Open Ended or "Comprising" Claims
The preamble to claim(s) _____ use(s) the phrase [recite the preamble] "comprising." The word "comprising" means "including the following but not excluding others." Comprising claims are open-ended.
If you find that [defendant's] product [method] includes all of the elements in any one of claims _____, the fact that [defendant's] product [method] might include additional components [method steps] would not avoid literal infringement of such claims.
Amstar Corp. v. Envirotech Corp., 730 F.2d 1476, 1484, 221 USPQ 649, 655 (Fed. Cir.), cert. denied, 469 U.S. 924 (1984); AB Dick Co. v. Burroughs Corp., 713 F.2d 700, 703, 218 USPQ 965, 967-68 (Fed. Cir. 1983), cert. denied, 464 U.S. 1042 (1984); Mannesmann Demag Corp. v. Engineered Metal Prods. Co., 793 F.2d 1279, 1283, 230 USPQ 45, 47 (Fed. Cir. 1986); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1271, 229 USPQ 805, 812 (Fed. Cir. 1986), cert. denied, 479 U.S. 1030 (1987).
Claim Construction and Infringement No. 12
Infringement of "Consisting Essentially of" Claims
The preamble to claim(s) _____ use(s) the language [recite the preamble] "consisting essentially of" certain elements [method steps]. The words "consisting essentially of" do not mean the same thing as "including" or "containing." Rather, the words "consisting essentially of" must be interpreted to mean including only the elements specified in the claims and other elements [method steps] that do not materially affect the basic and novel characteristics of the invention defined in those claims. You are instructed that to prove literal infringement of such claim, [the plaintiff] must show by a preponderance of the evidence that [the defendant's] product [method] includes every element recited in the claim and that any additional elements [method steps] in [the defendant's] product but not recited in the claim do not materially affect the basic and novel functional characteristics of the invention defined in that claim.
In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (C.C.P.A. 1976).
Claim Construction and Infringement No. 13
Infringement of "Consisting of" Claims
The preamble to claim(s) _____ use(s) the language [recite the preamble] "consisting of" certain elements [method steps]. These words "consisting of" do not mean the same thing as "including" or "containing." Rather, the words "consisting of" must be interpreted to mean only the elements [method steps] recited in the claim and no additional elements [steps]. You are instructed that to prove literal infringement of such a claim, [the plaintiff] must show by a preponderance of the evidence that [the defendant's] product [method] includes every element recited in the claim and no additional elements [method steps].
In re Certain Slide Fastener Stringers & Machs., Etc., 216 USPQ 907, 915-16 (Ct. Int'l. Trade 1981); 2 Donald S. Chisum, Patents 8.06[1][b], at 8-75 (1985); ______________ Rosenberg, Patent Law Fundamentals 14.05[2], at 14-16.1 -- 14-17 (1985).
Claim Construction and Infringement No. 14
Reverse Doctrine of Equivalents
Question(s) _____ of the Special Verdict reads as follows: "[Read Special Verdict questions regarding reverse doctrine of equivalents]."
You are to answer Question(s) _____ of the Special Verdict only if you have answered "Yes" to Question(s) _____ of the Special Verdict [the literal infringement questions].
You are instructed that even if you find that the accused product [method] includes all the elements of [plaintiff's] patent claim, if you also find that the accused product [method] is so far changed in principle that although it performs the same or a similar function as that defined by that patent claim, it does so in a substantially different way, you must find that [the defendant] has not infringed that patent claim.
Boyden Power-Brake Co. v. Westinghouse, 170 U.S. 537, 569 (1898); Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608, reh'g denied, 340 U.S. 845 (1950); Leesona Corp. v. United States, 530 F.2d 896, 192 USPQ 672 (Ct. Cl. 1976); SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1122-25, 227 USPQ 577, 586-88 (Fed. Cir. 1985).
NOTE: This instruction should be given only if the accused infringer has established a prima facie case of non-infringement under the reverse doctrine of equivalents. SRI International, supra, at 1123-24, 227 USPQ at 587-88.
You may find that [defendant's product or method] infringes a claim of [plaintiff's] patent, even if not every element [step] of that claim is present in defendant's [product or method]. However, to do so, you must find that there is an equivalent [component, part or method step] in [defendant's product or method] for each element [step] of the patent claim that is not literally present in the defendant's [product or method]. This is called infringement under the doctrine of equivalents.(3)
The plaintiff has the burden of proving by a preponderance of the evidence that the defendant's [product or method] contains the equivalent of each element [step] of the claimed invention that is not literally present in [the defendant's product or method].(4) You are to determine whether there is infringement under the doctrine of equivalents based upon the claims of the patent as I have interpreted them for you. If you find that any element [step] of a claim of the patent is simply not present in the [defendant's product or method] either literally or equivalently, then you may not find that the claim is infringed.(5) You may consider the testimony of the experts or others who testified in this case, and the documents introduced into evidence, including the prior art, and the like.
In deciding whether there is infringement under the doctrine of equivalents, each element [step] contained in a patent claim is important. Therefore, the question is whether the [defendant's product or method] contains an equivalent for each element [step] of the claim. The question is not whether the [defendant's product or method] overall is equivalent to the plaintiff's invention as a whole.(6) The doctrine of equivalents does not require complete equivalence for every purpose and in every respect. You must consider the purpose of the [ingredient, step or elements], and the function it is intended to perform.(7) It is not necessary that any single component of [the defendant's product or method] be equivalent to a particular element [step] of the claimed invention; two or more components of [the defendant's product or method] may operate together to be an equivalent of a single element [step] of the claimed invention. What is important is that there must be an equivalent for each element [step] of the claim somewhere in the accused device.(8)
You should consider whether the substituted element [step] represents a change that a person of ordinary skill in the art would have considered insubstantial at the time of the infringement. In determining whether the one or more components of [the defendant's product or method] are equivalent to an element of the claimed invention, you should consider whether at the time of infringement persons reasonably skilled in the art would have known of the interchangeability of that component or those components with the element [step] claimed in the patent claim. Although the known interchangeability of the accused and claimed elements [step] is not necessary in order to find infringement, known interchangeability is evidence that one of ordinary skill in the relevant art would have considered the change insubstantial. Depending on the circumstances, evidence of independent experimentation by the defendant may be considered as evidence that the substituted element [step] was not known to be interchangeable with the element claimed in the patent claim.(9)
Another test you may apply to determine equivalence is whether one of ordinary skill in the art would consider that a [component, part or step] of [defendant's product or method] performs substantially the same function in substantially the same way to produce substantially the same result compared to the corresponding element [step] of plaintiff's claimed [product or method].(10) Exact identity of function, way and result is not required; substantial identity is sufficient.(11)
The question of whether a [component, ingredient or method step] of [defendant's product or method] is equivalent to the corresponding element [step] in plaintiff's claims is to be determined based on the knowledge of one of ordinary skill in the art as of the time of the alleged infringement, not when the patent application was filed or when the patent issues.(12)
Prior Art
You may not find that a component in [the defendant's product or method] is equivalent to an element of the patent claim if by doing so you would extend the coverage of the patent to include inventions that were already in the prior art.(13)
Separate Patentability
[Use if defendant has patent covering the feature of the accused device or method in question. See Note below.](14)
In deciding whether the ____ in the [defendant's method or product] is equivalent to the [claim element] claimed in the ____ patent claims you are entitled to take into account the fact that the defendant has its own patent on this feature of its [product or method]. Evidence that the defendant has its own patent may be relevant to the question of whether there is infringement under the doctrine of equivalents.(15) Depending on the circumstances, this may be evidence that the Patent and Trademark Office found that the substitution of _______ in the defendant's [product or method] was a substantial change from the [component, ingredient or step] claimed in the patent claims.(16) The fact that the defendant has a separate patent does not prevent you from finding infringement.(17) But it may be relevant to what the Patent Office did, or did not, consider to be a substantial change.(18)Prosecution History Estoppel
You are instructed that the doctrine of equivalents is limited by what is called "prosecution history estoppel." As you have already heard, during prosecution of the patent, arguments and amendments are often made in an attempt to convince the Patent Examiner and the Patent Office that the claimed invention is entitled to a patent in view of the prior art before the Examiner. The applicant, in other words, may amend his patent claims or submit arguments in order to define or narrow the meaning of the claims so that they are distinguished from the prior art. Once it has done so, it cannot later argue that it is entitled to patent coverage under the doctrine of equivalents that would be so broad that it would cover the same feature the applicant distinguished from his invention during his prosecution of the patent.(19)In this case, you are instructed that prosecution history estoppel applies because, in obtaining the patent, plaintiff _______________________________________. Specifically, [insert details as to the amendment or argument].
It is up to you to decide whether, in arguing that [defendant's feature] is equivalent to [the claim element], plaintiff is trying to enlarge the coverage of the claims of its patent to cover the same feature that it distinguished from its invention while it was prosecuting its patent.
Anticipation No. 1
Anticipation
One of the requirements for a valid patent is that the invention defined in the claims must be new. This is known as the requirement of novelty. Something that shows that an invention was not new or novel is called an anticipation. There are several categories of events, all defined by the patent laws, that can anticipate and invalidate a patent. In this case, [the defendant] contends that the claims of the _____ patent are anticipated on _____ bases. [DESCRIBE BRIEFLY EACH BASIS FOR [THE DEFENDANT'S] INVALIDITY DEFENSE, FOR EXAMPLE: "FIRST, [THE DEFENDANT] CONTENDS THAT THE INVENTION OF CLAIMS 1, 2 AND 3 OF THE ____ PATENT WAS DESCRIBED IN THE JULY, 1983 ARTICLE PUBLISHED BY JONES IN THE JOURNAL OF ENDOCRINOLOGY."]
I will now instruct you as to the rules of law that you must follow in deciding whether or not the claims of the ____ patent were anticipated.
First, [defendant] has the burden of proving anticipation by clear and convincing evidence.
Second, a [publication] [invention, public use, sale, patent, etc.] anticipates a claim if it discloses the claimed invention sufficiently that a person of ordinary skill in the art could take its teachings together with his own knowledge of the art and be in possession of the claimed invention.(20) To establish that anticipation exists, [the defendant] must show that each of the elements recited in the claim was [disclosed] [embodied] in the particular item claimed to be an anticipation. If every element of the claimed invention is shown to be present in the prior [publication] [invention, patent, public use, etc.], the patent claim is anticipated.(21)
Third, there is no anticipation unless every one of the elements of the claimed invention is found in a single [prior publication], [prior invention] [prior public use] [prior patent], [prior knowledge] [prior sale]. You may not combine two or more items of prior art to make out an anticipation. You should, however, take into consideration not only what is expressly disclosed or embodied in the particular item of prior [publication] [invention, etc], but also what inherently occurred as a natural result of its practice. A party claiming inherency must prove it by clear and convincing evidence. It must show that the [process] [publication] [etc.] always inherently produces a [product] [process] meeting all of the claim limitations. In determining whether or not every one of the elements of the claimed invention is found in the prior [publication] [etc.] you should take into account what a person of ordinary skill in the art would have understood from his or her examination of the particular [publication] [invention, etc.]
You must keep these requirements in mind and apply them to each kind of anticipation you consider in this case. There are additional requirements that apply to the particular categories of anticipation that [the defendant] contends apply in this case. I will now instruct you about those.
Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 220 USPQ 193 (Fed Cir. 1983); In re Felton, 484 F.2d 495, 179 USPQ 295 (C.C.P.A. 1973); Lindemann Maschinenfabrik GmbH v. American Hoist & Derrick Co., 730 F.2d 1452, 221 USPQ 481 (Fed. Cir. 1984); In re Marshall, 578 F.2d 301, 198 USPQ 344 (C.C.P.A. 1978); Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 225 USPQ 634 (Fed. Cir.), cert. dismissed, 474 U.S. 976 (1985); SSIH Equip. S.A. v. U.S. Int'l Trade Comm'n, 718 F.2d 365, 218 USPQ 678 (Fed. Cir. 1983); Tyler Refrigeration v. Kysor Indus. Corp., 777 F.2d 687, 227 USPQ 845 (Fed. Cir. 1985); WL Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984); Buildex, Inc. v. Kason Indus., Inc., 849 F.2d 1461, 7 USPQ2d 1325 (Fed. Cir. 1988); Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 231 USPQ 644, modified on reh'g, 1 USPQ2d 1209 (Fed. Cir. 1986); Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 7 USPQ2d 1057 (Fed. Cir.), cert. denied, 488 U.S. 892 (1988); Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 20 USPQ2d 1746 (Fed. Cir. 1991); Minnesota Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 24 USPQ2d 1321 (Fed. Cir. 1992); Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 21 USPQ2d 1321 (Fed. Cir. 1991), cert. denied 113 S. Ct. 60 (1992); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 2 USPQ2d 1051 (Fed. Cir. 1987); Hughes Aircraft Co. v. United States, 8 USPQ2d 1580 (Ct. Cl. 1988); HK Regar & Sons v. Scott & Williams, Inc., 63 F.2d 229 (2d Cir. 1933); Glaverbel Societe Anonyme v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 33 USPQ2d 1496 (Fed. Cir. 1995).
Anticipation No. 2
Prior Public Knowledge
[The defendant] contends that claim[s] __________ of the __________ patent were anticipated because the invention defined in that claim [those claims] was publicly known in the United States before it was invented by _______.(22)
A patent claim is invalid if the invention recited in that claim was publicly known by others in the United States before the patent applicant invented it. Private or secret knowledge, such as knowledge confidentially disclosed within a small group, is not enough to invalidate a patent claim.(23) Similarly, if something is only publicly known outside of the United States, then the claims are not invalid.
35 U.S.C. 102; Trend Prods. Co. v. Metro Indus., Inc., 10 USPQ2d 1531 (C.D. Cal. 1989); Rosemount, Inc. v. Beckman Instruments, Inc., 727 F.2d 1540, 221 USPQ 1 (Fed. Cir. 1984).
Anticipation No. 3
Prior Public Use
[The defendant] contends that claim[s] __________ of the __________ patent were anticipated because the invention defined in that claim [those claims] was publicly used in the United States [before it was invented by __________] [more than one year before __________ filed his U.S. patent application on _______________, 19___].
A patent claim is invalid if the invention defined by that claim [was publicly used by someone other than [the patentee] in the United States before it was invented by [the patentee], [was publicly used by anyone in the United States more than one year before [the patentee] filed his patent application], that is before [date].
Alternative A - Public Use By A Third Party. Here, [defendant] contends that the claimed invention was in public use by [third party] before ____________. Secret use by a third party is not an invalidating public use. Thus, if the particular device, [composition] [process] was used by [third party], under circumstances of secrecy, that does not invalidate the patent. Likewise, sale by [third party] of a product made by the patented process is not a public use of the process if the process was practiced in secrecy and the public could not learn the process from the product sold.
Alternative B - Public Use By The Patentee. Here, [defendant] contends that the claimed invention was in public use by [patentee] before _______________.
A public use is shown if [patentee] obtained a commercial benefit from the invention, even if the invention was not disclosed, before ____________. (24)35 U.S.C. 102(a), (b); In re Caveney, 761 F.2d 671, 226 USPQ 1 (Fed. Cir. 1985); DL Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144, 219 USPQ 13 (Fed. Cir. 1983); Honeywell, Inc. v. Sperry Rand Corp., 180 USPQ 673 (D. Minn. 1973); In re Smith, 714 F.2d 1127, 218 USPQ 976 (Fed. Cir. 1983); TP Lab., Inc. v. Professional Positioners, Inc., 724 F.2d 965, 220 USPQ 577 (Fed. Cir.), cert. denied, 469 U.S. 826, 224 USPQ 616 (1984); WL Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 229 USPQ 805 (Fed. Cir. 1986); Kinzenbaw v. Deere & Co., 741 F.2d 383, 222 USPQ 929 (Fed. Cir. 1984), cert. denied, 470 U.S. 1004 (1985); JA LaPorte, Inc. v. Norfolk Dredging Co., 787 F.2d 1577, 229 USPQ 435 (Fed. Cir.), cert. denied, 479 U.S. 884 (1986); Grain Processing Corp. v. American Maize-Prods. Co., 840 F.2d 902, 5 USPQ2d 1788 (Fed. Cir. 1988).
Anticipation No. 4
On Sale
Defendant contends that claim[s] __________ of the _____ patent were anticipated because the invention defined in that claim [those claims] was on sale in the United States more than one year before __________ filed his U.S. patent application on __________, 19___.
A patent claim is invalid if the invention defined by that claim was on sale in the United States more than one year prior to the application filing date.
An invention was "on sale," if the claimed invention was embodied in the thing offered for sale. It is not required that a sale was actually made. An offer of sale, solicitation of orders, promotional activities or advertisements can constitute being "on sale," even though no actual sale takes place. The essential question is whether or not there was an attempt to obtain commercial benefit.
In order to be on sale, at the time of the offer for sale the invention must have been developed to the point of demonstrating that it would work for its intended purpose. It need not, however, be fully perfected or in commercial production. It is not necessary that there be a stock or inventory available for sale.
35 U.S.C. 102; Barmag Barmer Maschinenfabrik AG v. Murata Mach. Ltd., 731 F.2d 831, 221 USPQ 561 (Fed. Cir. 1984); In re Caveney, 761 F.2d 671, 226 USPQ 1 (Fed. Cir. 1985); Crane Co. v. Goodyear Tire & Rubber Co., 577 F. Supp. 186, 219 USPQ 1100 (N.D. Ohio 1983); DL Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144, 219 USPQ 13 (Fed. Cir. 1983); Pennwalt Corp. v. Akzona, Inc., 740 F.2d 1573, 222 USPQ 833 (Fed. Cir. 1984); In re Theis, 610 F.2d 786, 204 USPQ 188 (C.C.P.A. 1979); Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 225 USPQ 634 (Fed. Cir.), cert. dismissed, 474 U.S. 976 (1985); Buildex, Inc. v. Kason Indus., Inc., 849 F.2d 1461, 7 USPQ2d 1325 (Fed. Cir. 1988); AB Chance Co. v. RTE Corp., 854 F.2d 1307, 7 USPQ2d 1881 (Fed. Cir. 1988); RCA Corp. v. Data Gen. Corp., 887 F.2d 1056, 12 USPQ2d 1449 (Fed. Cir. 1989); King Instrument Corp. v. Otari Corp., 767 F.2d 853, 226 USPQ 402 (Fed. Cir. 1985), cert. denied, 475 U.S. 1016 (1986); Great N. Corp. v. Davis Core & Pad Co., 782 F.2d 159, 228 USPQ 356 (Fed. Cir. 1986); JA LaPorte, Inc. v. Norfolk Dredging Co., 787 F.2d 1577, 229 USPQ 435 (Fed. Cir.), cert. denied, 479 U.S. 884 (1986); Sonoscan, Inc. v. Sonotek, Inc., 936 F.2d 1261, 19 USPQ2d 1156 (Fed. Cir. 1991); Western Marine Elecs., Inc. v. Furuno Elec. Co., 764 F.2d 840, 226 USPQ 334 (Fed. Cir. 1985); Keystone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 27 USPQ2d 1297 (Fed. Cir. 1993); In re Brigance, 792 F.2d 1103, 229 USPQ 988 (Fed. Cir. 1986); UMC Elecs. Co. v. United States, 816 F.2d 647, 2 USPQ2d 1465 (Fed. Cir. 1987), cert. denied, 484 U.S. 1025 (1988).
Anticipation No. 5
Experimental [Use] [Sale]
[The patentee] contends that __________________ should not be considered [a prior public use of his invention] [placing his invention on sale] because that [use] [sale] was experimental. The law recognizes that the inventor must be given the opportunity to develop the invention through experimentation. For this reason, placing the invention ["on sale"] [in "public use,"] more than one year before the application filing date will not invalidate a patent claim if the primary purpose was experimentation rather than commercial benefit. Such activities are experimental if they are a legitimate effort to perfect the invention or to determine if the invention will work for its intended purpose. So long as the primary purpose is experimentation, it does not matter that the public used the invention or that the inventor incidentally derived profit from it. If you find that [the defendant] has shown a [prior public use] [prior sale] by clear and convincing evidence, then the burden is on [the patentee] to come forward with evidence showing that the purpose of [the public use] [sale] was experimental.
Only experimentation by or under the control of the inventor of the patent [or his assignee] qualifies for this exception. Experimentation by [third party], for its own purposes, does not.
The experimentation must relate to the features of the claimed invention, and it must be for the purpose of technological improvement, not commercial exploitation. If any commercial exploitation does occur, it must be merely incidental to the primary purpose of experimentation. A test done primarily for marketing, and only incidentally for technological improvement, is a public use.
In re Corcoran, 640 F.2d 1331, 208 USPQ 867 (C.C.P.A. 1981); City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126 (1877); DL Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144, 219 USPQ 13 (Fed. Cir. 1983); TP Lab., Inc. v. Professional Positioners, Inc., 724 F.2d 965, 220 USPQ 577 (Fed. Cir.), cert. denied, 469 U.S. 826, 224 USPQ 616 (1984); Pennwalt Corp. v. Akzona, Inc., 740 F.2d 1573, 222 USPQ 833 (Fed. Cir. 1984); In re Smith, 714 F.2d 1127, 218 USPQ 976 (Fed. Cir. 1983); In re Theis, 610 F.2d 786, 204 USPQ 188 (C.C.P.A. 1979); Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 16 USPQ2d 1587 (Fed. Cir. 1990); Grain Processing Corp. v. American Maize-Prods. Co., 840 F.2d 902, 5 USPQ2d 1788 (Fed. Cir. 1988); U.S. Envtl. Prods., Inc. v. Westall, 911 F.2d 713, 15 USPQ2d 1898 (Fed. Cir. 1990); Hycor Corp. v. Schlueter Co., 740 F.2d 1529, 222 USPQ 553 (Fed. Cir. 1984); LaBounty Mfg., Inc. v. U.S. Int'l Trade Comm'n, 958 F.2d 1066, 22 USPQ2d 1025 (Fed. Cir. 1992); In re Hamilton, 882 F.2d 1576, 11 USPQ2d 1890 (Fed. Cir. 1989).
Anticipation No. 6
Printed Publication
[The defendant] contends that claim[s] __________ of the __________ patent were anticipated because the invention defined in [that claim] [those claims] was described in a printed publication [more than one year before __________ filed his U.S. patent application on __________, 19___] [before __________ invented his invention.]
A patent claim is invalid if the invention defined by that claim was described in a printed publication [before it was invented by the patentee] [more than one year prior to the filing date of the U.S. application].
A printed publication must be reasonably accessible to those members of the public who would be interested in its contents. It is not necessary that the printed publication be available to every member of the public.
So long as the printed publication was available to the public, the form in which the information was recorded is unimportant. The information must, however, have been maintained in some permanent form, such as [printed or typewritten pages magnetic tape, microfilm, photographs, photocopies]. [Printed publications may include issued patents].
For a printed publication to anticipate a patent claim, it must, when read by a person of ordinary skill in the art, expressly or inherently disclose each element of the claimed invention to the reader. The disclosure must be complete enough to enable one of ordinary skill in the art to practice the invention without undue experimentation. In determining whether the disclosure is enabling, you should take into account what would have been within the knowledge of a person of ordinary skill in the art [one year before the application for the ___ patent was filed] [at the time the invention of the ___ patent was made], and you may consider expert testimony and other publications that shed light on the knowledge such a person would have had.
35 U.S.C. 102; In re Coker, 463 F.2d 1344, 175 USPQ 26 (C.C.P.A. 1972); In re Donohue, 632 F.2d 123, 207 USPQ 196 (C.C.P.A. 1980); Deep Welding, Inc. v. Sciaky Bros., Inc., 417 F.2d 1227, 163 USPQ 144 (7th Cir. 1969), cert. denied, 397 U.S. 1037, 165 USPQ 290 (1970); Phillips Petroleum Co. v. Ladd, 219 F. Supp. 366, 138 USPQ 421 (D.D.C. 1963); In re Samour, 571 F.2d 559, 197 USPQ 1 (C.C.P.A. 1978); Garrett Corp. v. United States, 422 F.2d 874, 164 USPQ 521 (Ct. Cl.), cert. denied, 400 U.S. 951, 167 USPQ 705 (1970); Honeywell, Inc. v. Sperry Rand Corp., 180 USPQ 673 (D. Minn. 1973); Studiengesellschaft Kohle mbH v. Dart Indus., Inc., 726 F.2d 724, 220 USPQ 841 (Fed. Cir. 1984); Tyler Refrigeration Corp. v. Kysor Indus. Corp., 553 F. Supp. 279, 220 USPQ 1033 (D. Del. 1982); In re Wyer, 655 F.2d 221, 210 USPQ 790 (C.C.P.A. 1981); Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 18 USPQ2d 1001, clarif. on recon., 18 USPQ2d 1896 (Fed. Cir. 1991); Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 7 USPQ 1057 (Fed. Cir.), cert. denied, 488 U.S. 892 (1988); Akzo N.V. v. U.S. Int'l Trade Comm'n, 808 F.2d 1471, 1 USPQ2d 1241 (Fed. Cir. 1986), cert. denied, 482 U.S. 909 (1987); In re Hall, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986); In re Donohue, 766 F.2d 531, 226 USPQ 619 (Fed. Cir. 1985); Glaverbel Societe Anonyme v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 33 USPQ2d 1496 (Fed. Cir. 1995).
Anticipation No. 7
Prior Invention(25)
[The defendant] contends that claim[s] __________ of the __________ patent was anticipated because the invention defined in [that claim] [those claims] was invented by another person [X], before [the patentee] invented his invention.(26)
A patent claim is invalid if the invention defined by that claim was invented by another person in the United States, before it was invented by the patentee, and that other person did not abandon, suppress or conceal the invention.
To show anticipation of the [patented] invention, [the defendant] must show by clear and convincing evidence that before [the patentee] invented his invention, [X] actually built a device [practiced a process] [made a composition] that included all of the elements of claim ___ of the ___ patent. In addition, [the defendant] must show that [X]'s device was sufficiently developed that one skilled in the art would have recognized that it would work for its intended purpose. To be an anticipation, all of those acts must have been completed before __________ [the inventor of the patent in suit] invented the invention defined by claim ___ of the ___ patent.
If the prior invention was abandoned, suppressed or concealed, it does not anticipate the ___ patent].(27) However, it is not necessary that [the patentee] had knowledge of that prior invention.35 U.S.C. 102; General Motors Corp. v. Toyota Motor Co., 467 F. Supp. 1142, 205 USPQ 158 (S.D. Ohio1979), aff'd in part & rev'd in part, 667 F.2d 504, 212 USPQ 659 (6th Cir. 1981), cert. denied, 456 U.S. 937, 215 USPQ 95 (1982); Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 223 USPQ 603 (Fed. Cir. 1984); EI du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 7 USPQ2d 1129 (Fed. Cir.), cert. denied, 488 U.S. 986 (1988); RCA Corp. v. Data Gen. Corp., 887 F.2d 1056, 12 USPQ2d 1449 (Fed. Cir. 1989).
Anticipation No. 8
Prior Patent
[The defendant] contends that claim[s] __________ of the __________ patent were anticipated because the invention defined in [that claim] [those claims] was patented by __________ [before it was invented by [the patentee] [more than one year before [the patentee] filed his United States patent application on __________, 19_____.]
A patent claim is invalid if the invention defined by that claim was patented in the United States or a foreign country [before it was invented by [the patentee] [more than one year before [the patentee] filed his United States patent application].
[IF A FOREIGN PATENT IS RELIED ON].(28)
What was "patented" in the [foreign] patent is determined by what is defined by [the foreign patent's] claims, interpreted in the light of the general description contained in the [foreign patent].
To show anticipation of the [patented] invention, [the defendant] must show by clear and convincing evidence that before ___________________ the [X patent] patented an invention that included all of the element of claim _________ of the _______ patent.
35 U.S.C. 102; Bendix Corp. v. Balax, Inc., 421 F.2d 809, 164 USPQ 485 (7th Cir.), cert. denied, 399 U.S. 911, 166 USPQ 65 (1970); In re Ekenstam, 256 F.2d 321, 118 USPQ 349 (C.C.P.A. 1958); In re Monks, 588 F.2d 308, 200 USPQ 129 (C.C.P.A. 1978); In re Fuge, 272 F.2d 954, 124 USPQ 105 (C.C.P.A. 1959).
Anticipation No. 9
Prior U.S. Application
[The defendant] contends that claim[s] __________ of the __________ patent were anticipated because the invention defined in [that claim] [those claims] was described in United States patent _________, and because the application for the ___________ patent was filed before (the patentee) made his invention.(29)
A claim of the ___ patent would be invalid if the invention defined by that claim were described in a United States patent issued on a patent application filed by another person before the invention was made by [the inventor of the patent in suit].
You are instructed that the effective filing date of the __________ patent application was _______________, 19___, [the date on which it was filed in the United States].(30)
To show anticipation of the [patented] invention [the defendant] must show by clear and convincing evidence that the application for the [allegedly anticipating patent] described each and every element of claim ________ of the [patent in suit] and that the application for the [allegedly anticipating patent] was filed before the date of invention of the [patent in suit].
35 U.S.C. 102(e); In re Wertheim, 646 F.2d 527, 209 USPQ 554 (C.C.P.A. 1981); Sun Studs, Inc. v. ATA Equip. Leasing, Inc., 872 F.2d 978, 10 USPQ2d 1338, 11 USPQ2d 1479 (Fed. Cir. 1989).
The following instructions recognize the fact that, under controlling Federal Circuit precedent, the Court has the option of: (a) asking the jury to decide the question of obviousness itself, or (b) asking the jury to decide any disputed factual issues underlying the determination of obviousness, and having the Court itself then decide the "legal" question of obviousness on the basis of those factual findings. See, e.g., Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 764, 9 USPQ2d 1417, 1423 (Fed. Cir. 1988), cert. denied 493 U.S. 814 (1989) ("it is not error to submit the question of obviousness to the jury."); accord Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 220 USPQ 193 (Fed. Cir. 1983).
Alternative 1 below is a set of instructions for use in those cases where the jury is to decide only the disputed factual questions that underlie the obviousness determination, with the determination as to obviousness itself to be made by the Court. Alternative 2 may be used when the jury will be asked to decide the question of obviousness.
Alternative 1
Instructions Where the Judge Will Decide the Issue of Obviousness
Under 35 U.S.C. 103
Obvious No. 1
Graham v. John Deere Test
To be patentable an invention must not have been obvious to a person of ordinary skill in the pertinent art at the time that the invention was made. The issue is not whether the claimed invention would have been obvious to you as a layman, to me as a judge. or to a genius in the art. Rather, the question is whether or not it would have been obvious to one of ordinary skill in ________________ [the pertinent field] at the time that it was made.
I must determine whether or not the invention claimed in the patent was obvious. However, in order for me to determine whether [the defendant] has established that the claimed invention was obvious, you must give answers to the following questions:
[List factual issues to be resolved by the jury. See Obviousness Instructions 2 through 6 for examples of specific factual issues that the jury might be asked to resolve.]
35 U.S.C. 103; Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966); Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 217 USPQ 1281 (Fed. Cir. 1983); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983); Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 223 USPQ 1264 (Fed. Cir. 1984).
Obviousness No. 2
Scope and Content of the Prior Art
If there are factual disputes regarding the prior art, the Court should select appropriate specific jury instruction. For example:
Analogous Art
Question __ of the special verdict asks whether or not the _____ [disputed reference] is analogous prior art. An item of prior art is analogous if it comes from the same field of endeavor in which [the patentee] was working, whether or not it concerns the problem [the patentee] was addressing. An item of prior art is also analogous even if it was not from the same field in which [the patentee] was working, so long as it was reasonably pertinent to the particular problem that [the patentee] was trying to solve.
In re Wood, 599 F.2d 1032, 202 USPQ 171 (C.C.P.A. 1979); Wang Lab., Inc. v. Toshiba Corp., 993 F.2d 858, 26 USPQ2d 1767 (Fed. Cir. 1993); In re Clay, 966 F.2d 656, 23 USPQ2d 1058 (Fed. Cir. 1992).
Publication
Question __ of the special verdict asks whether or not the ______ reference was published prior to ______________ [the critical date]. To determine whether a reference was published, you must determine whether it was reasonably accessible to those who would be interested in its contents. It is not necessary that the reference be available to every member of the public. So long as the _______ reference was available to the public, the form in which the information was recorded is unimportant. The information must, however, have been maintained in some permanent form, such as [printed or typewritten pages, magnetic tape, microfilm, photographs, photocopies].
Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 7 USPQ2d 1057 (Fed. Cir.), cert. denied, 488 U.S. 892 (1988); In re Hall, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986); In re Wyer, 655 F.2d 221, 210 USPQ 790 (C.C.P.A. 1981); Deep Welding, Inc. v. Sciaky Bros., Inc., 417 F.2d 1227, 163 USPQ 144 (7th Cir. 1969), cert. denied, 397 U.S. 1037, 165 USPQ 290 (1970); Garrett Corp. v. United States, 422 F.2d 874, 164 USPQ 521 (Ct. Cl.), cert. denied, 400 U.S. 951, 167 USPQ 705 (1970); Honeywell, Inc. v. Sperry Rand Corp., 180 USPQ 673 (D. Minn. 1973); Tyler Refrigeration Corp. v. Kysor Indus. Corp., 553 F. Supp. 279, 220 USPQ 1033 (D. Del. 1982).
Obviousness No. 3
On Sale
Question __ of the special verdict asks whether or not the ___ device was on sale prior to ______ [the critical date]. A device was "on sale," if that device was embodied in the thing sold or offered for sale. It is not required that a sale was actually made. An offer of sale, solicitation of orders, promotional activities or advertisements can constitute being "on sale," even though no actual sale takes place. The essential question is whether or not there was an attempt to obtain commercial benefit.(31)
Barmag Barmer Maschinenfabrik AG v. Murata Mach. Ltd., 731 F.2d 831, 221 USPQ 561 (Fed. Cir. 1984); In re Caveney, 761 F.2d 671, 226 USPQ 1 (Fed. Cir. 1985); DL Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144, 210 USPQ 13 (Fed. Cir. 1983); Pennwalt Corp. v. Akzona, Inc., 740 F.2d 1573, 222 USPQ 833 (Fed. Cir. 1984); Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 225 USPQ 634 (Fed. Cir.), cert. dismissed, 474 U.S. 976 (1985); In re Theis, 610 F.2d 786, 204 USPQ 188 (C.C.P.A. 1979); Buildex, Inc. v. Kason Indus., Inc., 849 F.2d 1461, 7 USPQ2d 1325 (Fed. Cir. 1988); AB Chance Co. v. RTE Corp., 854 F.2d 1307, 7 USPQ2d 1881 (Fed. Cir. 1988); RCA Corp. v. Data Gen. Corp., 887 F.2d 1056, 12 USPQ2d 1449 (Fed. Cir. 1989); King Instrument Corp. v. Otari Corp., 767 F.2d 853, 226 USPQ 402 (Fed. Cir. 1985), cert. denied, 475 U.S. 1016 (1986); Keystone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 27 USPQ2d 1297 (Fed. Cir. 1993).
Obviousness No. 4
Differences Over the Prior Art
The jury will be called upon to decide this factual issue only when there is some factual dispute about the differences between the prior art and the claimed invention, for example, when the parties dispute what one of ordinary skill in the art would understand a particular reference to mean. In these instances, specific special verdicts and accompanying instructions should be used to assist the court in resolving the disputed issue.
Level of Ordinary Skill
Next you must determine the level of ordinary skill in the pertinent art. When determining the level of ordinary skill in the pertinent art, consider all of the evidence submitted by plaintiff and defendant to show:
Question __ of the special verdict asks: "What was the level of ordinary skill in ___________________ [the pertinent field] at the time of ________'s invention."(32) [The plaintiff] contends that the level of ordinary skill in ______________ was ___________. [The defendant] contends that the level of ordinary skill in ____________ was __________. Based on the factors that I have just listed, and the evidence presented, you must determine what was the level of ordinary skill in [the pertinent art], and provide this information to me in your answer to question ____.
Graham v. John Deere Co., 383 U.S. 1 (1966); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 217 USPQ 193 (Fed. Cir. 1983); Environmental Designs Ltd. v. Union Oil Co., 713 F.2d 693, 218 USPQ 865 (Fed. Cir. 1983), cert. denied, 464 U.S. 1043, 224 USPQ 520 (1984).
Obviousness No. 5
Factors Indicating Nonobviousness (Use only those instructions that are appropriate)
Commercial Success
Question ___ of the special verdict asks whether or not [the plaintiff] has shown any commercial success of products covered by the patent in suit due to the merits of the claimed invention. To answer this question "yes," you must be satisfied that there is a causal connection between the evidence showing the commercial success and the claimed invention. For example, if you conclude that commercial success is due to advertising, promotion, salesmanship or the like, or to features of the product other than those claimed in the patent in suit, rather than to the claimed invention, then it is not established that commercial success has a relation to the invention itself.
Long-Felt Need
Question ___ of the special verdict asks whether or not [the plaintiff] has shown a long-felt need in the art that was satisfied by the invention of the ___ patent. You should answer this questions "Yes" if the evidence shows that the merits of the claimed invention satisfied a long-felt need. You should answer this question "No" if the evidence fails to show a long-felt need or if you conclude that the long-felt need was satisfied due to advances in unrelated technology.
Failure of Others
Question ___ of the special verdict asks whether or not [the plaintiff] has shown that others had tried, but failed to solve the problem solved by the invention of the [patent in suit]. To answer this question "yes," you must be satisfied that others had tried and failed and that it was the merits of the claimed invention that allowed the inventors of the ______ patent to succeed where others had failed. For example, if advances in unrelated technology allowed the inventor to succeed where others had failed, then it may not be established that the inventor's success is related to the merits of his invention.
Copying
Question __ of the special verdict asks whether or not [the plaintiff] has shown that others have copied the invention claimed in the ___ patent.
Unexpected Results
Question __ of the special verdict asks whether or not [the plaintiff] has shown unexpected superior results achieved by the invention claimed in the ___ patent. To answer this question "yes," you must be satisfied that it was the claimed invention that caused the unexpected results. For example, if the unexpected results were due to a feature unrelated to the claimed invention, then it would not be established that the unexpected results were achieved by the invention itself.
Acceptance of Licenses
Question __ of the special verdict asks whether or not [the plaintiff] has shown that others have accepted licenses under the patent in suit. To answer this question "yes," you must be satisfied that others agreed to licenses because of the merits of the claimed invention. For example, if the others accepted licenses due to factors such as [the cost of litigation, or the low cost of the license], then it would not be established that the acceptance of licenses was due to the merits of the claimed invention itself.
Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966); Stratoflex, Inc, v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983); Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 221 USPQ 669 (Fed. Cir.), cert. denied, 469 U.S. 857, 225 USPQ 792 (1984); United States v. Adams, 383 U.S. 39, 52, 148 USPQ 479, 483-84 (Ct. Cl. 1966); Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 697, 218 USPQ 865, 869 (Fed. Cir. 1983), cert. denied, 464 U.S. 1043, 224 USPQ 520 (1984); WL Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed.Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Obviousness No. 6
Independent Invention by Others
Question ___ of the special verdict asks whether or not the claimed invention was invented independently by other persons, either before it was invented by [the inventor of the patent in suit] or at about the same time.
In re Farrenkopf, 713 F.2d 714, 219 USPQ 1 (Fed. Cir. 1983); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 217 USPQ 193 (Fed. Cir. 1983); Stewart-Warner Corp. v. City of Pontiac, Inc. v. United States, 153 USPQ 465 (Ct. Cl. 1967); Simmonds Precision Prods., Inc. v. United States, 153 USPQ 465 (Ct. Cl. 1967); Lindemann Maschinenfabrik GmbH v. American Hoist & Derrick Co., 730 F.2d 1452, 221 USPQ 481 (Fed. Cir. 1984).
Alternative 2
Instructions Where the Jury Will Decide the Issue of Obviousness
Obviousness Under 35 U.S.C. 103
Obviousness No. 7
Graham v. John Deere Test
[Defendant] contends that the claims of the ____ patent are invalid because the claimed invention was obvious to one of ordinary skill in the art [at the time the invention was made]. [Defendant] bears the burden of proving this defense by clear and convincing evidence.
To be patentable an invention must not have been obvious to a person of ordinary skill in the pertinent art at the time the invention was made. The issue is not whether the claimed invention would have been obvious to you as a layman, to me as a judge, or to a genius in the art, but whether it would have been obvious to one of ordinary skill in ________________ [the pertinent field] at the time it was made.
You should conclude that the patent in suit is invalid, even though not identically disclosed in a single prior art device or reference, if [the defendant] has established by clear and convincing evidence of facts which show that the claimed invention as a whole would have been obvious to a person of ordinary skill in [the pertinent art] at the time the invention was made.
Before determining whether or not [the defendant] has established obviousness of the claimed invention, you must determine the following factual matters, each of which must be established by clear and convincing evidence:
Against this background of facts you will then make your conclusion whether or not the claimed subject matter would have been obvious to a person of ordinary skill in the art of _______________ at the time the invention was made.
Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966); Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 217 USPQ 1281 (Fed. Cir. 1983); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983); Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 223 USPQ 1264 (Fed. Cir. 1984); Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 764, 9 USPQ2d 1417, 1423 (Fed. Cir. 1988); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 716, 21 USPQ2d 1053 (Fed. Cir. 1991); Nutrition 21 v. United States, 930 F.2d 867, 871 n.2, 18 USPQ2d 1347 (Fed. Cir. 1991).
Obviousness No. 8
Scope and Content of the Prior Art
The prior art includes the following items received into evidence during the trial: [list prior art stipulated to by the parties].
If there are factual disputes regarding the prior art, the court may select an appropriate specific jury instruction. For example:
Analogous Art
[The plaintiff] and [defendant] disagree as to whether the ___ [disputed reference] is analogous prior art. An item of priorart is analogous if it comes from the same field in which [the patentee] was working, whether or not it concerns the problem [the patentee] was addressing. An item of prior art is also analogous even if it was not from the same field in which [the patentee] was working, so long as it was reasonably pertinent to the particular problem that [the patentee] was trying to solve.
If you determine that the __________ reference is not analogous art, then you should ignore it in deciding whether the patent in suit would have been obvious.
In re Wood, 599 F.2d 1032, 202 USPQ 171 (C.C.P.A. 1979); Wang Lab., Inc. v. Toshiba Corp., 993 F.2d 858, 26 USPQ2d 1767 (Fed. Cir. 1993); In re Clay, 966 F.2d 656, 23 USPQ2d 1058 (Fed. Cir. 1992)
Publication
[Plaintiff] and [defendant] dispute whether the ______ [disputed reference] was published before ______________ [the critical date]. To determine whether this reference was published before __________, you must determine whether it was reasonably accessible to those who would be interested in its contents. It is not necessary that the reference be available to every member of the public. So long as it was available to the public, the form in which the information was recorded is unimportant. The information must, however, have been maintained in some permanent form, such as [printed or typewritten pages, magnetic tape, microfilm, photographs, photocopies].
If you decide that the _________ reference was not published prior to ___________________ [the critical date], then you may not consider it in deciding the issue of obviousness.
Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 7 USPQ2d 1057 (Fed. Cir.), cert. denied, 488 U.S. 892 (1988); In re Hall, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986); In re Wyer, 655 F.2d 221, 210 USPQ 790 (C.C.P.A. 1981); Deep Welding, Inc. v. Sciaky Bros., Inc., 417 F.2d 1227, 163 USPQ 144 (7th Cir. 1969), cert. denied, 397 U.S. 1037, 165 USPQ 290 (1970); Garrett Corp. v. United States, 422 F.2d 874, 164 USPQ 521 (Ct. Cl.), cert. denied, 400 U.S. 951, 167 USPQ 705 (1970); Honeywell, Inc. v. Sperry Rand Corp., 180 USPQ 673 (D. Minn. 1973); Tyler Refrigeration Corp. v. Kysor Indus. Corp., 553 F. Supp. 279, 220 USPQ 1033 (D. Del. 1982).
Obviousness No. 9
On Sale
[Plaintiff] and [defendant] dispute whether the ___ device was on sale prior to ______ [the critical date]. A device was "on sale," if that device was embodied in the thing sold or offered for sale. It is not required that a sale was actually made. An offer of sale, solicitation of orders, promotional activities or advertisements can constitute being "on sale", even though no actual sale takes place. The essential question is whether or not there was an attempt to obtain commercial benefit.(33)
If you decide the ________ device was not on sale prior to ________, then you may not consider it in deciding the issue of obviousness.
Barmag Barmer Maschinenfabrik AG v. Murata Mach. Ltd., 731 F.2d 831, 221 USPQ 561 (Fed. Cir. 1984); In re Caveney, 761 F.2d 671, 226 USPQ 1 (Fed. Cir. 1985); DL Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144, 210 USPQ 13 (Fed. Cir. 1983); Pennwalt Corp. v. Akzona, Inc., 740 F.2d 1573, 222 USPQ 833 (Fed. Cir. 1984); Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 225 USPQ 634 (Fed. Cir.), cert. dismissed, 474 U.S. 976 (1985); In re Theis, 610 F.2d 786, 204 USPQ 188 (C.C.P.A. 1979); Buildex, Inc. v. Kason Indus., Inc., 849 F.2d 1461, 7 USPQ2d 1325 (Fed. Cir. 1988); AB Chance Co. v. RTE Corp., 854 F.2d 1307, 7 USPQ2d 1881 (Fed. Cir. 1988); RCA Corp. v. Data Gen. Corp., 887 F.2d 1056, 12 USPQ2d 1449 (Fed. Cir. 1989); King Instrument Corp. v. Otari Corp., 767 F.2d 853, 226 USPQ 402 (Fed. Cir. 1985), cert. denied, 475 U.S. 1016 (1986); Keystone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 27 USPQ2d 1297 (Fed. Cir. 1993).
Obviousness No. 10
Differences Over the Prior Art
In reaching your conclusion as to whether or not the claimed invention was obvious, you should consider any difference or differences between the prior art and the claimed invention. When doing so, each claim must be considered in its entirety and separately from the other claims.
Although it is proper for you to note any differences between the claimed invention and the prior art, you must still determine the obviousness or nonobviousness of the invention as a whole.
Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983); Medtronic, Inc, v. Cardiac Pacemakers, Inc,, 721 F.2d 1563, 220 USPQ 97 (Fed. Cir. 1983).
Obviousness No. 11
Level of Ordinary Skill
In reaching your determination as to whether or not the claimed invention was obvious, you should consider the level of ordinary skill in the art of _____________. When determining the level of ordinary skill in [the pertinent art], consider all the evidence submitted by plaintiff and defendant to show:
[The plaintiff] contends that the level of ordinary skill in ______________ was ___________. [The defendant] contends that the level of ordinary skill in ____________ was __________. Based on the factors I have just listed, and the evidence presented, you must determine what was the level of ordinary skill in the pertinent art.
When you decide the issue of obviousness, you must decide whether or not the invention would have been obvious to one having this ordinary level of skill in [the pertinent art].
Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 217 USPQ 193 (Fed. Cir. 1983); Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 218 USPQ 865 (Fed. Cir. 1983), cert. denied, 464 U.S. 1043, 224 USPQ 520 (1984).
Obviousness No. 12
Obviousness
In determining whether the invention of the patent in suit would have been obvious to a person of ordinary skill in the art, you must presume that person would have known about all of the relevant prior art. A combination of prior art cannot render an invention obvious unless every one of the elements of the claimed invention is disclosed in at least one of those items of prior art. In examining the [prior publications, inventions, etc.] you should take into account not only what they expressly disclose [embody], but also anything that inherently occurred as a result of practicing what was expressly disclosed in that prior art. In this case [the defendant] contends that the [prior art] inherently disclosed ________________. To show that that was inherently disclosed, [the defendant] must show by clear and convincing evidence that process [product] disclosed in the [prior art] always inherently produced [possessed] ___________.
If you find that a combination of items of the prior art showed each of the elements of the claims in suit, you must determine whether or not it would then have been obvious to a person of ordinary skill in the art of ______________ to combine or coordinate these elements in the same manner as the claims of the ________ patent. You must not use hindsight in answering this question. In other words, it is wrong to use the ________ patent as a guide through the prior art references, combining the right references in the right way so as to achieve the result of the claims of the _______ patent. Rather, you must determine whether or not, at the time the invention was made, the invention of the _______ patent would have been obvious to one of ordinary skill in the art having knowledge of all the prior art.
If you conclude that the prior art discloses all the elements of the claimed invention, but those elements are in separate prior art references, you must then consider whether or not it would have been obvious to combine the elements. To answer this question "yes," you must determine that there was some suggestion in the prior art to combine the elements. The suggestion can be expressly stated in a particular reference or it can be within the knowledge that was generally available to one of ordinary skill in [the relevant art].
Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 217 USPQ 193 (Fed. Cir. 1983).
Obviousness No. 13
Obvious to Try
In deciding whether the prior art suggests the combination [composition, etc.] recited in the claims of the ________ patent, you are instructed that if the prior art merely discloses numerous possible combinations but gives no direction as to which of those of many choices is likely to be successful, this does not constitute a suggestion of the claimed combination [composition, etc.] Similarly, if the prior art merely discloses that it would be obvious to explore a new technology or general approach that seemed to be a promising field of experimentation, this would not constitute a suggestion of the claimed combination [composition, etc.].
On the other hand, for the prior art to "suggest" the claimed invention, it is not necessary that one of ordinary skill in the ________ art, looking at the prior art, could predict with certainty that the claimed invention would be successful. Rather, it is sufficient that a person of ordinary skill in the ________ art, looking at the prior art, would have a reasonable expectation that the claimed invention would achieve the desired result.
Mandel Bros., Inc. v. Wallace, 335 U.S. 291, 295, 79 USPQ 220, 221 (1948); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1057-58 (Fed. Cir. 1990); Merck & Co. v. Biocraft Lab., Inc., 874 F.2d 804, 807, 809, 10 USPQ2d 1843, 1846, 1847-48 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re O'Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988); Novo Industri A/S v. Travenol Lab., Inc., 677 F.2d 1202, 215 USPQ 412 (7th Cir. 1982); In re Yates, 663 F.2d 1054, 211 USPQ 1149 (C.C.P.A. 1981); In re Clinton, 527 F.2d 1226, 1228, 188 USPQ 365, 366-67 (C.C.P.A. 1976); and Carter-Wallace, Inc. v. Otte, 474 F.2d 529, 543, 176 USPQ 2, 11-12 (2d Cir. 1972), cert. denied, 412 U.S. 929 (1973)
Obviousness No. 14
Factors Indicating Nonobviousness
Before deciding the issue of obviousness, you must consider certain factors which, if established, weigh in favor of finding that the invention was not obvious.
(Use only those instructions which are appropriate)
Commercial Success
One of the factors you should consider is whether or not [the plaintiff] has shown any commercial success of products covered by the patent in suit due to the merits of the claimed invention. To prove this, [the plaintiff] would have to satisfy you that there is a causal connection between the evidence showing the commercial success and the claimed invention. For example, if you conclude that commercial success is due to advertising, promotion, salesmanship or the like, or to features of the product other than those claimed in the patent in suit, rather than to the claimed invention, then it is not established that commercial success has a relation to the invention itself. If, however, you were to find that the invention of the _____ patent achieved commercial success and that the merits of the invention caused the commercial success this would tend to indicate that the invention was not obvious.
Long-Felt Need
Another factor you should consider is whether or not [the plaintiff] has shown a long felt need in the art which was satisfied by the invention of the [patent in suit]. To prove this [the plaintiff] must show that it was the merits of the claimed invention that satisfied a long-felt need. For example, if you were to conclude that there was no long-felt need or that the long-felt need was satisfied due to advances in unrelated technology, then [the plaintiff] would not have carried its burden of proof on this issue. If, however, you were to find that the merits of the invention solved a long-felt need, this would tend to indicate that the invention was not obvious.
Failure of Others
Another factor you should consider is whether or not [the plaintiff] has shown that others had tried, but failed to solve the problem solved by the invention of the [patent in suit]. To prove this [the plaintiff] must show that others had tried and failed and that it was the merits of the claimed invention that allowed the inventors of the ______ patent to succeed where others had failed. For example, if advances in unrelated technology allowed the inventor of the _______ patent to succeed where others had failed, then [the plaintiff] would not have carried his burden of proof on this issue. If, however, you were to find that the merits of the invention allowed the inventor to succeed where others had failed, this would tend to indicate that the invention was not obvious.
Copying
Another factor you should consider is whether or not [the plaintiff] has shown copying by others of the invention claimed in the [patent in suit]. If you were to find that others copied the invention because of its merits this would tend to indicate that the invention was not obvious.
Unexpected Results
Another factor you should consider is whether or not [the plaintiff] has shown unexpected superior results achieved by the invention claimed in the [patent in suit]. To prove this [the plaintiff] must show that it was the claimed invention that caused the unexpected results. For example, if there were not unexpected superior results or the unexpected results were due to a feature unrelated to the claimed invention, then [the plaintiff] would not have carried its burden of proof on this issue. If, however, you were to find that there were unexpected superior results which were related to the claimed invention, this would tend to indicate that the invention was not obvious.
Acceptance of Licenses
Another factor you should consider is whether or not [the plaintiff] has shown that others have accepted licenses under [the patent in suit]. To prove this [the plaintiff] must show that others agreed to licenses because of the merits of the claimed invention. For example, if the others accepted licenses due to factors such as [the cost of litigation, or the low cost of the license], then it has not been established that the acceptance of licenses was due to the merits of the invention itself. If, however, you were to find that others took licenses as a result of the merits of the claimed invention, this would tend to indicate that the invention was not obvious.
Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966); Stratoflex Inc, v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983); Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 221 USPQ 669 (Fed. Cir.), cert. denied, 469 U.S. 857, 225 USPQ 792 (1984); United States v. Adams, 383 U.S. 39, 52, 148 USPQ 479, 483-84 (Ct. Cl. 1966); Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 697, 218 USPQ 865, 869 (Fed.Cir. 1983), cert. denied, 464 U.S. 1043, 224 USPQ 520 (1984); WL Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed.Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Obviousness No. 15
Independent Invention by Others
In reaching your determination on the issue of obviousness, you should also consider whether or not the claimed invention was invented independently by other persons, either before it was invented by [the inventor of the patent in suit] or at about the same time. Just as the failure of others to make the invention may be evidence that an invention was not obvious, independent making of the invention by persons other than the inventor about the same time may be evidence that the invention was obvious.
The simultaneous or near simultaneous invention by two or more persons working independently may or may not be an indication of obviousness when considered in light of all the circumstances.
In re Farrenkopf, 713 F.2d 714, 219 USPQ 1 (Fed. Cir. 1983); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 217 USPQ 193 (Fed. Cir. 1983); Stewart-Warner Corp. v. City of Pontiac, 767 F.2d 1563, 226 USPQ 676 (Fed. Cir. 1985); Simmonds Precision Prods., Inc. v. United States, 153 USPQ 465 (Ct. Cl. 1967); Lindemann Maschinenfabrik GmbH v. American Hoist & Derrick Co., 730 F.2d 1452, 221 USPQ 481 (Fed. Cir. 1984).
Under the U.S. patent laws, a patent must disclose sufficient information to enable those skilled in the art to make and use the claimed invention.(34) This requirement is known as the enablement requirement.
The defendant in this case has asserted that the plaintiff's patent is invalid for failure to satisfy the enablement requirement. As with assertions of patent invalidity on other grounds, the defendant bears the burden of establishing nonenablement by clear and convincing evidence.(35)
To determine whether a patent is enabling, one must look to the time the application for that patent was filed.(36) A patent is enabling if its disclosure is sufficient to enable a person of ordinary skill in the art to make and use the claimed invention.(37) A patent need not disclose what is well known in the art.(38)
A patent is enabling even if some experimentation would be required to achieve the claimed invention, so long as that amount of experimentation is routine and would not be considered undue by those skilled in the art.(39) Factors to be considered in determining whether a disclosure would require undue experimentation include: (1) the quantity of experimentation necessary; (2) the amount of direction or guidance disclosed in the patent; (3) the presence or absence of working examples in the patent; (4) the nature of the invention; (5) the state of the prior art; (6) the relative skill of those in the art; (7) the predictability of the art; and (8) the breadth of the claims.(40)
You must determine whether the inventor disclosed the "best mode" of practicing the claimed invention to the U.S. Patent and Trademark Office within the contents of the patent application. The law requires that "the specification shall set forth the best mode contemplated by the inventor of carrying out his invention."(41) If the inventor had specific processes, techniques, compositions, material or conditions that he or she recognized at the time of filing as the best way of carrying out the invention, then he or she must include that information in the patent disclosure.(42)
The purpose of this requirement is to ensure that a patent applicant "plays fair and square"(43) with the patent system by restraining inventors "from applying for patents while at the same time concealing from the public preferred embodiments of their invention which they have in fact conceived."(44) An inventor must disclose his or her best mode to the public in exchange for patent protection. The law does not give an inventor the right to exclude others from practicing the invention unless he or she has provided an adequate disclosure of the best way known to him or her at the time of filing of the application of carrying out the invention.(45) To determine whether the inventor complied with the best mode requirements you must answer two questions.(46)
Part 1
Question ____ of the Special Verdict form reads:
Did the Defendant prove by clear and
convincing evidence that the inventor
was aware of a best mode for practicing
the claimed invention when he filed his
patent application?Answer yes or no: ________
To answer this question you must determine whether the inventor knew of a way to practice the claimed invention which he or she considered to be better than any other at the time the application was filed.(47) The best mode inquiry focuses on the state of mind of the particular inventor and the knowledge he or she possessed at the time the application was filed. There is no objective standard for determining whether the inventor contemplated a best mode.(48) This inquiry is wholly subjective. You must determine the inventor's state of mind based on the evidence provided.(49)
Keep in mind that the commercial embodiment adopted by the patentee is not necessarily the best mode contemplated by the inventor at the time the patent application was filed.(50) For example, a selection made for commercial expediency (such as the availability of certain materials, prior relationships with certain suppliers, and other routine manufacturing choices) may be the "best" decision in a manufacturing circumstance but may have been chosen by someone other than the inventor or may not be considered by the inventor to be the best mode of carrying out the invention.(51) Any manufacturing process requires the selection of specific processes and materials, but only those selections which the inventor believes are important to obtaining the best results from the invention are considered to be part of the best mode disclosure.(52)
If the inventor realizes after the patent application is filed that a better way exists to practice the invention, he or she is not required to update the "best mode."(53) In addition, if the inventor contemplated a best mode before he or she filed the patent application and left it out of the application, an amendment after the filing will not cure an original omission of the best mode disclosure.(54)
Finally, if the inventor is an employee of a corporation or other entity, the inventor is not presumed to know or be aware of that entity's collective knowledge regarding the best mode.(55) Nor is the inventor required to search for the actual best mode.(56)
Part 2
Question ____ of the Special Verdict reads:
If a best mode was known to the inventor
at the time of filing, did the specification
adequately disclose what the inventor
contemplated as the best mode so that those
skilled in the art can practice the invention?Answer yes or no: _______
(Answer this question only if you answered YES to question ____)
To answer this question you must determine whether the inventor adequately disclosed his or her best mode in the patent specification. To make this determination, you must compare what was in the mind of the inventor (as determined in Question 1) with what appeared in the specification when the patent was filed. The disclosure in the specification must be adequate to allow one of ordinary skill in the art to make and use the best mode of the invention contemplated by the inventor.(57)
In determining whether the patentee's disclosure is adequate, you should consider the scope of the claimed invention and the level of skill in the art.(58)
Merely because a technique was known in the art does not relieve a patentee of his or her duty to identify it as a best mode. An inventor cannot assume that those skilled in the art would know the necessary components that enable him or her to practice the best mode of the invention.(59)
Knowledge of those skilled in the art may only be used to fill in gaps or provide details that are helpful and may not be used for those that are necessary to practicing the invention.(60)Further, merely because the invention is available commercially does not relieve the inventor of his or her obligation to include the best mode in the specification. (61)Those skilled in the art should not have to look to the commercial embodiment in order to practice the best mode.(62)
It is not necessary for you to find that the patentee intentionally concealed the best mode in order to find a best mode violation. An intent to conceal is not required. In other words, you may find that the disclosure doe not comply with the best mode requirement if it is so objectively inadequate as to effectively conceal the best mode from the public.(63) Further, supplier and trade name information must be provided when a skilled artisan could not practice the best mode of the claimed invention without this information.(64)
Information necessary to practice the best mode must be disclosed even if it is a trade secret.(65) Failure to disclose the nature of a trade secret may only be excused if the component is available to the public by disclosing information sufficient for the public to obtain the item.(66)
Patent Damages No. 1
General
If you find that [the accused device or method] infringes at least one of the claims of the patent in suit, and if you also find that [the accused infringer] has not proven each infringed claim to be invalid, you must determine the amount of damages to be awarded [the patentee] for the infringement. The amount of those damages must be adequate to compensate [the patentee] for the infringement. Your damage award should put [the patentee] in approximately the financial position it would have been in had the infringement not occurred; but in no event may the damage award be less than a reasonable royalty.
I will now explain how you should determine an appropriate damage award.
Authority:
35 U.S.C. 284; Fromson v. Western Litho Plate & Supply Co., 853 F.2d 1568, 1574, 7 USPQ2d 1606, 1612 (Fed. Cir. 1988); Milgo Elec. Corp. v. United Business Communications, Inc., 623 F.2d 645, 664, 206 USPQ 481, 496 (10th Cir.), cert. denied, 449 U.S. 1066, 208 USPQ 376 (1980); Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 507, 141