Model Jury - Section 16
CIVIL INSTRUCTIONS
__________
16. PATENTS
16.00 PRELIMINARY JURY INSTRUCTION FOR PATENT CASES
The plaintiff, , the owner of a patent, seeks damages against the defendant, , for patent infringement. The defendant denies infringing the patent and contends it is invalid. To help you understand the evidence that will be presented in this case, I will explain some of the legal terms you will hear during this trial.
DEFINITION OF A PATENT
A patent is a legal document issued by the United States to the inventor. The inventor, as the owner of the patent, has the right to exclude any other person from making, using, or selling the invention covered by the patent anywhere in the United States for 17 years from the date the patent was issued.
An invention is a new, useful, and nonobvious process, machine, or product. An invention is also a new, useful, and nonobvious improvement of a process, machine, or product.
[Not every invention can be patented. Before an invention can be patented certain conditions must be met.]
[Inventions that involve processes, machines, manufactures, and compositions of matter, and any improvement thereof, can be patented.]
[The invention must be new, useful, and, even though new, it must have been nonobvious at the time it was invented.]
[Novelty and nonobviousness are judged against everything publicly known before the invention, as shown in earlier patents and other published material. This body of public knowledge is called "prior art."]
[PATENT INTERESTS]
[The patent owner may transfer, sell, or convey to another person the owner's property interest in the patent, that is, the right to exclude others from making, using, or selling the invention. The person to whom this right is transferred is called an assignee.
One who owns a patent as patentee or assignee, having the right to exclude others from making, using, or selling what is claimed, may agree to let another do one or more of those acts. This is called a license, and the person allowed to do the set of acts is a licensee.
A licensee does not possess any part of the patentee's right to exclude others unless it is a special form of license known as an exclusive license.]
[HOW A PATENT IS OBTAINED]
[The law makes a patent a kind of bargain between the inventor and the Government, who represents the public. The patent will be granted in exchange for a full disclosure of the invention. This is a further condition on the grant. The disclosure is made in an application for a patent filed in the Patent and Trademark Office, which keeps the application secret until the patent is issued.
The application, in addition to some formal parts, contains a specification that describes the invention and explains what it is, how it works, and how to make or to use it to enable others to practice it. The specification concludes with one or more claims particularly pointing out what the applicant claims to have invented. The application also usually contains drawings which illustrate one or more devices containing the invention to aid one's understanding of the written description.
The patent office examines the application in order to determine whether the claimed invention is new, useful, and nonobvious. The record before the patent examiners is called the prosecution history.]
[THE SIGNIFICANCE OF CLAIMS]
[The purpose of the examination of the application by the Patent and Trademark Office is not just to see that the description is adequate to understand the invention and to enable one to practice it, but also to see that what the application is claiming meets the conditions for patentability--that is, whether it is new, useful, and nonobvious in view of the prior art. Examination is also to assure that the claims are supported by the specification. These separate paragraphs at the end of the specification, called claims, are in fact definitions of what the patent covers--what its limits are--and the claims alone determine what is or is not an infringement of the patent. Claims have been compared to the description in a deed to land, which points out what the boundaries are. Within those boundaries, one who enters without permission of the owner is a trespasser. One who comes within the scope of a claim is comparable to a trespasser and is called an infringer. In law, patent infringement is a form of trespass.]
[THE PATENT RIGHT AS PROPERTY]
[The law says that "patents shall have the attributes of personal property." One such attribute is that they can be bought and sold. If an inventor makes an agreement with someone, an employer, for example, to sell his patent right and records an assignment in the Patent and Trademark Office before an application is issued as a patent, the Patent and Trademark Office will issue the patent directly to the assignee and it will own the patent. Otherwise it is issued to the applicant.]
[THE PROSECUTION HISTORY]
[In examining a patent application, an Examiner in the Patent and Trademark Office makes a search in the prior art to determine whether the invention as claimed is or is not new and nonobvious. The Examiner advises the applicant by an "Office Action" of what was found and whether the Examiner has "allowed" any claim. More often than not, the initial action is a rejection of all claims. The applicant then responds, sometimes amending claims or submitting new ones and this may go on for some time, even for several years, until the Examiner is satisfied. The papers built up in this procedure become the prosecution history. It may later be very important in determining just what the claims mean and what they cover--that is to say, what has been patented. All of this material becomes available to the public when the patent issues.]
PLAINTIFF'S BURDEN OF PROOF
In this case, the plaintiff, , contends that the defendant, , has infringed claims , , and of U.S. Patent . The plaintiff has the burden of proving by a preponderance of the evidence that the accused [product] [process] [apparatus] [composition] infringes one or more claims of the patent. Preponderance of the evidence means that you must be persuaded by the evidence that it is more probably true than not true that the claim[s] of the patent [was] [were] infringed.
Based on the evidence submitted to you, you will be asked to find whether or not the accused [product] [process] [apparatus] [composition] infringes at least one of the claims of the patent.
LIABILITY FOR INFRINGEMENT
One who makes, uses, or sells a patented invention within the United States during the term of the patent, infringes the patent, unless licensed by the patentee. This is called direct infringement. A person may be a direct infringer without knowing about the patent or intending to infringe it.
Each claim is treated as a separate patent. A patent is infringed if any claim is infringed. To determine infringement, you must look at the words of each claim separately. The words of the claim set out the requirements of the patented invention. To find infringement, you must find that each and every one of these requirements, usually called "elements" or "limitations," is found in the accused [product] [process] [apparatus] [composition] either exactly or by a substantial equivalent.
[A patent may also be infringed by [actively inducing infringement] [and] [contributorily infringing].]
[INDUCING INFRINGEMENT]
[A person who purposely or intentionally persuades a direct infringer to make, use, or sell the invention without the patent owner's consent is liable for inducing patent infringement.
No one can be liable for inducing patent infringement by another person, unless that other person directly infringes the patent.]
[CONTRIBUTORY INFRINGEMENT]
[A person who sells a material component of a patented invention, knowing that the component was especially made for use in an infringement of the patent and that the component is not a staple article of commerce, is liable for contributory infringement.
A person cannot be liable for contributory infringement unless someone else directly infringes the patent.]
[DEFENDANT'S BURDEN OF PROOF]
[The defendant contends that the patent is invalid. A patent is presumed to be valid. The defendant has the burden of proving by clear and convincing evidence that the patent is invalid. The clear and convincing evidence standard is a heavier burden than the preponderance of the evidence standard. Clear and convincing evidence means that you must be persuaded by the evidence that it is highly probable that the asserted facts that would make the patent invalid are true. The defendant has this heavier burden because of the presumption that the United States Patent and Trademark Office issued a valid patent.]
Comment
See generally 35 U.S.C. §§ 101-03, 111-12, 154, 261, 271-72, 282, 301-07.
The committee recommends that this preliminary instruction be given after the jury has been sworn and before the attorneys' opening statements. It might be repeated before giving specific instructions at the end of the trial.
The committee's suggested definition of "clear and convincing" evidence is based on Buildex Inc. v. Kason Indus., 849 F.2d 1461, 1463 (Fed. Cir. 1988).
16.01.01 INVENTION DEFINED (35 U.S.C. §§ 101, 103)
[An invention is a new, useful, and nonobvious [product] [process] [apparatus] [composition].] [An invention is a new, useful, and nonobvious improvement of a [product] [process] [apparatus] [composition].]
[A product is something which is produced by physical act or labor.]
[A [process] [method] is a way to produce a specific result by an act or series of acts which change an object into a different state or thing.]
[An apparatus is an appliance or device designed for a particular use and produced by physical act or labor.]
[A composition is matter formed by the intermixture of two or more ingredients. A composition possesses new properties not found in these ingredients separately.]
Comment
As used in patent law, process and method are used interchangeably. See Comment to Instruction 16.05.05. Throughout these instructions, the committee has bracketed these terms so that the court may choose which term it prefers.
16.01.02 PATENT INTERESTS--OWNER (35 U.S.C. §§ 111-112)
A patent is a property right granted by the United States. To obtain this right, the inventor must file a patent application and be granted a patent by the Patent and Trademark Office. The patent gives its owner the right to exclude others from making, using, or selling the invention anywhere in the United States for a 17-year period.
The patent owner may enforce this right to exclude others in an action for patent infringement.
Comment
35 U.S.C. §§ 261, 281.
16.01.03 PATENT INTERESTS--ASSIGNEE (35 U.S.C. § 261)
The patent owner may transfer, sell, or convey to another person all or part of the owner's property interest in the patent, that is, the right to exclude others from making, using, or selling the invention. The person to whom this right is transferred is called an assignee. An assignee may enforce this right to exclude others in an action for patent infringement.
[The plaintiff is an assignee of the '_ _ _ patent.]
[The plaintiff has the burden of proving by a preponderance of the evidence that the plaintiff is an assignee of the '_ _ _ patent.]
Comment
Calgon Corp. v. Nalco Chem. Co., 726 F. Supp. 983, 986 (D. Del. 1989) ("[T]he only transfers that qualify as an assignment are transfers of: (1) entire patent ...; (2) an undivided, fractional portion of all rights embraced by the ... patent (such as a 30% interest); or (3) all the rights embraced by [the] ... patent to any specified part of the United States." (citing Waterman v. Mackenzie, 138 U.S. 252, 255 (1891))).
Carl Schenck, A.G. v. Nortron Corp., 713 F.2d 782, 784 (Fed. Cir. 1983) ("Patents and licenses are exemplifications of property rights.").
Construction of patent license and assignment agreements is governed by state law. Lear, Inc. v. Adkins, 395 U.S. 653 (1969).
16.01.04 PATENT INTERESTS--EXCLUSIVE LICENSEE UNDISPUTED
An exclusive licensee may bring an action for patent infringement. The plaintiff is an exclusive licensee.
Comment
Where the status of the plaintiff as an exclusive licensee is disputed, see Instruction 16.01.05.
16.01.05 PATENT INTERESTS--EXCLUSIVE LICENSEE DISPUTED
(35 U.S.C. § 261)
A patent owner may enter into an agreement that permits another person to make, use, or sell the patented invention for [a fixed period of time] [or] [specify other restriction]. This type of agreement is called a license.
Such an agreement may also contain a promise that others, including the patent owner, will be excluded from making, using or selling the patented invention [within that period of time] [or] [specify other restriction]. This type of agreement is called an exclusive license.
An exclusive licensee may bring an action for patent infringement against any person who makes, uses, or sells the invention [within the period of time covered by the agreement] [or] [specify other restriction].
Comment
Spindelfabrik Suessen-Schurr v. Schubert & Salzer, 829 F.2d 1075, 1081 (Fed. Cir. 1987) ("A patent license agreement is in essence nothing more than a promise by the licensor not to sue the licensee."), cert. denied, 484 U.S. 1063 (1988); Sanofi, S.A. v. Med-Tech Veterinarian Prods., 565 F. Supp. 931, 936-37 (D.N.J. 1983) (exclusive license contains promise that others will be excluded).
[A] transfer of (1) all rights under the patent, (2) an undivided (e.g., 30%) interest in the patent, or (3) all patent rights as to any specified part of the United States is an assignment. A "transfer" of fewer rights than these is a license and not an assignment. Waterman v. MacKenzie, 138 U.S. 252, 255 (1891). Various types of limitations or restrictions may be placed on the patent rights transferred. See, e.g., Atari Games Corp. v. Nintendo of Am., Inc., 897 F.2d 1572, 1578 (Fed. Cir. 1990) (restriction on quantity of units licensee may sell and restriction on export); Barr Rubber Prods. Co. v. Sun Rubber Co., 277 F. Supp. 484, 506 (S.D.N.Y. 1967), aff'd, 425 F.2d 1114 (2d Cir. 1970) (owner of a patent for method of casting plastic may license use of the process to make hobbyhorses).
Dreamlite Holdings Ltd. v. Kraser, 705 F. Supp. 98, 101-102 (E.D.N.Y. 1988) (An exclusive licensee "could sue the patentee for infringement within the area of the license" where agreement with patentee conveyed, in part, "the exclusive right to defend and enforce the Patent and to prevent [its] infringement.").
16.02.01 INFRINGEMENT GENERALLY (35 U.S.C. § 271(a))
Anyone who, without the patent owner's permission, makes, uses or sells any [product] [process] [apparatus] [composition] defined by at least one valid claim of a patent before the patent expires, infringes that patent. The [product] [process] [apparatus] [composition] which allegedly infringes the plaintiff's patent is referred to as the "accused" [product] [process] [apparatus] [composition].
In deciding whether the plaintiff's patent has been infringed, you must determine whether the accused [product] [process] [apparatus] [composition] comes within any of the claims in the plaintiff's patent. This means that the combination of [steps] [elements] that are recited in a claim in the plaintiff's patent must also be found in the accused [product] [process] [apparatus] [composition]. In making this determination, you must consider each claim separately.
[A patent is infringed if the accused [product] [process] [apparatus] [composition] contains every element of at least one claim of the patent. This type of infringement is called literal infringement.]
[Even if there is no literal infringement, a patent is [also] infringed if the accused [product] [process] [apparatus] [composition] performs substantially the same (1) function in substantially the same (2) way to achieve substantially the same (3) [result] [qualities] as at least one claim of the patent. This type of infringement is called [infringement under the doctrine of equivalents].]
Comment
Read Corp. v. Portec, Inc., 970 F.2d 816, 822 & n.2 (Fed Cir. 1992) (discussing the doctrine of equivalents).
Do not use the fourth paragraph unless plaintiff raises the claim of infringement under the doctrine of equivalents and presents evidence on all three elements of the doctrine: function, way (or means), and result. Lear Siegler, Inc. v. Sealy Mattress Co., 873 F.2d 1422, 1425 (Fed. Cir. 1989) ("The party asserting infringement must present `evidence and argument concerning the doctrine [of equivalents] and each of its elements.'" (citation omitted) (emphasis supplied by the Lear court).)
Where the product is a chemical mixture or compound, use "qualities" instead of "result" in the last paragraph. See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609 (1950); Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1579 (Fed. Cir. 1984).
16.02.02 LITERAL INFRINGEMENT
To determine whether the accused [product] [process] [apparatus] [composition] literally infringes at least one claim of plaintiff's patent, you must compare the accused [product] [process] [apparatus] [composition] with each claim allegedly infringed. If you find by a preponderance of the evidence that each [element] [step] of at least one claim is found in the accused [product] [process] [apparatus] [composition], then it has literally infringed plaintiff's patent claim, even if the accused [product] [process] [apparatus] [composition] includes additional [elements] [steps] beyond those in the claim.
16.02.03 LIMITATION ON LITERAL INFRINGEMENT (REVERSE DOCTRINE OF EQUIVALENTS)
If you find the accused [product] [process] [apparatus] [composition] falls within the literal words of one or more claims, it still would not infringe the claim if it is so far changed in principle that it performs the same or a similar function in a substantially different way.
Therefore, to find literal infringement, you must find by a preponderance of the evidence both of the following:
1. the accused [product] [process] [apparatus] [composition] literally infringes one or more claims of the plaintiff's patent; and
2. the accused [product] [process] [apparatus] [composition] performs the same or a similar function in substantially the same way.
Comment
The reverse doctrine of equivalents is a defense that may be raised to a claim of literal infringement. See Moleculon Research Corp. v. CBS, Inc., 872 F.2d 407, 409 (Fed. Cir. 1989). It does not appear, however, that this is an affirmative defense on which defendant bears the burden of proof. The cases describe defendant's burden as one of "going forward." Smithkline Diagnostics v. Helena Lab. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988) ("[Defendant] may establish the fact of noninfringement by carrying its burden of going forward to show its device `has been so far changed in principle that it performs the same or similar function in a substantially different way.'" (citation omitted)); SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1123-24 (Fed. Cir. 1985) ("When a patentee establishes literal infringement, the accused infringer may undertake the burden of going forward to establish the fact of non-infringement under the reverse doctrine of equivalents. If the accused infringer makes a prima facie case, the patentee, who retains the burden of persuasion on infringement, must rebut that prima facie case." (emphasis added)).
Although the reverse doctrine of equivalents is an equitable doctrine, its application may depend on factual questions appropriate for a jury to decide. See Scripps Clinic & Research Found. v. Genentech, 927 F.2d 1565 (Fed. Cir. 1991) (factual questions underlying application of reverse doctrine of equivalents defeated summary judgment).
16.02.04 INFRINGEMENT BY APPLICATION OF THE DOCTRINE OF EQUIVALENTS
If [an element] [a step] disclosed in the patent is not present in an accused [product] [process] [apparatus] [composition], infringement may still exist by application of the doctrine of equivalents.
On plaintiff's claim for infringement under the doctrine of equivalents, plaintiff has the burden of proving by a preponderance of the evidence each of the following:
1. the accused [product] [process] [apparatus] [composition]:
a. has substantially the same overall function,
b. operates in substantially the same way, and
c. achieves substantially the same [result] [qualities]
as the [product] [process] [apparatus] [composition] disclosed in the patent claim; and
2. every element of the patent claim either is literally present, or has some substantially equivalent corresponding element in the accused [product] [process] [apparatus] [composition].
If you find that each of these things has been proved, the accused [product] [process] [apparatus] [composition] infringes that claim. If one or more elements of a claim are not substantially performed as to function, way, and [result] [qualities], then there is no infringement under the doctrine of equivalents.
Comment
Do not use this instruction unless plaintiff raises the claim of infringement under the doctrine of equivalents and presents evidence on all three elements of the doctrine: function, way (or means), and result. Lear Siegler, Inc. v. Sealy Mattress Co., 873 F.2d 1422, 1425 (Fed. Cir. 1989) ("The party asserting infringement must present `evidence and argument concerning the doctrine [of equivalents] and each of its elements.'" (citation omitted) (emphasis supplied by the Lear court).)
Notwithstanding Lear, the Federal Circuit may not hold strictly to this three-step equivalency analysis. See Malta v. Schulmerich Carillons, Inc., 952 F.2d 1320, 1326 (Fed. Cir. 1991) ("[W]hile comparison of function/way/result is an acceptable way of showing that a structure in an accused device is the `substantial equivalent' of a claim limitation, it is not the only way to do so."). In Malta, the court held that evidence must show not only (1) what the function, way, and result of the claimed invention and of the accused device are, but also (2) why these functions, ways, and results are similar. Id. at 1327 & n.5. Without sufficient evidence on the second requirement, the jury finding of infringement could not stand. Id.
Becton Dickinson and Co. v. C.R. Bard, Inc., 922 F.2d 792, 798 (Fed. Cir. 1990) ([A]ll limitations in a claim are material and must be met exactly or equivalently in an accused device to find that the accused device works in the same way."); Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 935 (Fed. Cir. 1987) ("[T]he district court correctly relied on an element-by-element comparison to conclude that there was no infringement under the doctrine of equivalents....").
When construing the claim, and particularly when applying the doctrine of equivalents, it is important that the claim not be interpreted to include any of the prior art. Senmed, Inc. v. Richard-Allan Medical Indus., 888 F.2d 815, 821 (Fed. Cir. 1989) ("[A] claim cannot be given a range of equivalents so wide as to cause the claim to encompass anything in the prior art."). Although the application of this "prior art limitation" is a matter of law for the trial judge, there may be fact issues for the jury as to what the prior art is. Wilson Sporting Goods Co. v. David Geoffrey & Assocs., 904 F.2d 677, 683 (Fed. Cir. 1990) ("This issue--whether an asserted range of equivalents would cover what is already in the public domain--is one of law...."); Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 870 (Fed. Cir. 1985) (applied as question of law). Regarding prior art, see 35 U.S.C. § 102.
Where the product is a chemical mixture or compound, use "qualities" instead of "result" in the last paragraph. See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609 (1950); Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1579 (Fed. Cir. 1984).
16.03.01 CLAIMS IN GENERAL (35 U.S.C. § 112)
A patent claim defines in words the boundaries of the invention so that the public will know what the invention is and can avoid infringing it.
[As I explained earlier,] patent claims are comparable to the description in a deed to land. The description points out where the boundaries are. A person who crosses boundaries without the owner's permission is a trespasser. In patent law, infringement is a form of trespass, and a person whose [product] [process] [apparatus] [composition] infringes the scope of a valid claim is comparable to a trespasser and is called an infringer.
Comment
General Foods v. Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1274 (Fed. Cir. 1992) (general explanation of patent claims in terms of boundaries).
16.03.02 INTERPRETATION OF CLAIMS
In determining whether the accused [product] [process] [apparatus] [composition] infringed a claim of the patent, you must first resolve the questions of fact to determine how to interpret the words used in the claim. You must decide whether:
1. the ordinary meaning of [insert disputed term] is [plaintiff's interpretation] or [defendant's interpretation];
2. the inventor used the term [insert disputed term] in the specification [, in other claims in the patent,] and in the prosecution history to mean [plaintiff's interpretation] or [defendant's interpretation]; and
3. persons of ordinary skill in the art understand the term [insert disputed term] to mean [plaintiff's interpretation] or [defendant's interpretation].
Comment
This instruction was drafted on the assumption that in the useage at bar there is a factual dispute underlying the interpretation of one or more words in the claim, which would be an issue for the jury to decide. Presently there is conflicting opinion in the Federal Ciricuit on whether construction or interpretation of a term in a claim is a question of law to be determined by the trial court or a question of fact to be determined by the trier of fact. Compare Tol-O-Matic v. Proma Produkt-Und Marketing Gesellschaft m.b.H., 945 F.2d 1546, 1550 (Fed. Cir. 1991) ("When the meaning of a term in a patent claim is unclear, subject to varying interpretations, or ambiguous, the jury may interpret the term en route to deciding the issue of infringement.") with Read Corp. v. Portec, Inc., 970 F.2d 816, 822-23 & n.3 (Fed. Cir. 1992) (the court should interpret the claim and then instruct the jury on what the claim means, explicitly disagreeing with Tol-O-Matic). Accordingly, this instruction should be used with caution. See Marsh-McBirney, Inc. v. Montedoro-Whitney Corp., 882 F.2d 498, 504 (Fed. Cir. 1989) ("Claim construction is a matter of law; however, interpretation of the claim may depend on evidentiary material about which there is a factual dispute."); Johnston v. IVAC Corp., 885 F.2d 1574, 1579-80 (Fed. Cir. 1989) ("Where ... no underlying fact issue must be resolved, claim interpretation is a question of law .... [A] mere dispute over the meaning of a term does not itself create an issue of fact. This is true even where the meaning cannot be determined without resort to the specification, the prosecution history or other extrinsic evidence provided upon consideration of the entirety of such evidence the court concludes that there is no genuine underlying issue of material fact .... [A]ny broad statement in our precedent which could be read to say that a disagreement over the meaning of a term in a claim ipso facto raises an issue of fact is not the law of this circuit ...."). See also Senmed, Inc. v. Richard-Allan Medical Indus., 888 F.2d 815, 818 (Fed. Cir. 1989) ("Construction of claim scope (claim interpretation), however, is a question of law for decision by the trial judge on motion for JNOV .... That a jury has answered a legal question [i.e., interpreted a claim] may not in itself require reversal.").
If the trial judge determine that there is no underlying factual issue to be submitted to the jury, the judge should explain to the jury the court's interpretation of the claims. Jamesbury Corp. v. Litton Indus. Prods., 756 F.2d 1556, 1564-65 (Fed Cir. 1985); Structural Rubber Prods. v. Park Rubber Co., 749 F.2d 707, 721 (Fed. Cir. 1984).
Smithkline Diagnostics v. Helena Lab. Corp., 859 F.2d 878, 882 (Fed. Cir. 1988) ("To ascertain the meaning of the claims, we look to the claim language, the specification, and the prosecution history .... Also relevant are the other claims and expert testimony .... Moreover, the claims should be construed as one skilled in the art would construe them.").
Claims must also be interpreted in light of the prior art. Water Technologies Corp. v. Calco, Ltd., 850 F.2d 660, 667 (Fed. Cir.) ("We must construe claims `in the light of the claim language, the other claims, the prior art, the prosecution history, and the specification.'" (quoting SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1118 (Fed. Cir. 1985))), cert. denied, 488 U.S. 968 (1988).
16.03.03 LIMITATION ON INTERPRETATION OF CLAIMS (PROSECUTION HISTORY ESTOPPEL)
The claims must be consistent with all the limitations to the claims that the patent owner added by amendment or argument in order to obtain the patent, as shown in the prosecution history.
[For example, if a patent applicant represented to the Patent Examiner that a term in a claim meant something specific, and the Examiner would not have allowed the patent without that representation, then the patent owner cannot say that the term means anything different from what was represented to the Examiner.]
The prosecution history contains the entire record of the proceedings in the Patent and Trademark Office, including all written arguments or statements made to convince the Patent Examiner that the [product] [process] [apparatus] [composition] is patentable. It also includes any amendments to the patent claims.
Therefore, you must determine from the prosecution history whether [insert element or interpretation] was [added] [abandoned] in order to obtain the patent, and whether the Patent and Trademark Office would have issued the patent absent that [addition] [interpretation].
Comment
This instruction relates to claim interpretation, which is currently the subject of dispute within the Federal Circuit. See Comment to Instruction 16.03.02. It should be used with caution, therefore, and only when there are disputed issues of fact underlying application of the estoppel doctrine. Id. Prosecution history estoppel, however, arises only in the application of the doctrine of equivalents; it is irrelevant if there is literal infringement. Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 1571 (Fed. Cir. 1983); Biodex Corp. v. Loredan Biomedical, Inc., 946 F.2d 850, 862 (Fed. Cir. 1991) ("It is technically correct that ... the doctrine of prosecution history estoppel is `irrelevant' to determination of literal claim scope."); Water Technologies Corp. v. Calco, Ltd., 658 F. Supp. 961, 976 (N.D. Ill. 1986) ("Under the law, if there is literal infringement, then file wrapper estoppel [prosecution history estoppel] is not even applicable or relevant.").
4 Donald S. Chisum, Patents §§ 15.02 & 15.03(2)(e) (1991) (A patentee may not change the claims so as to recapture subject matter intentionally surrendered to obtain the original patent); Shepard v. Carrigan, 116 U.S. 593 (1886) ("where an applicant for a patent to cover a new combination is compelled by the rejection of his application by the patent office to narrow his claim by the introduction of a new element, he cannot after the issue of the patent, broaden his claim by dropping the element which he was compelled to include in order to secure his patent."); Tee-Pack, Inc. v. St. Regis Paper Co., 491 F.2d 1193, 1199 (6th Cir. 1974) ("[A] patentee may not recapture what he has abandoned intentionally at the insistence of the Patent Office in order to secure a patent.").
Biodex, 946 F.2d at 862-63 ("There is a clear line of distinction between using the contents of the prosecution history to reach an understanding about disputed claim language and the doctrine of prosecution history estoppel which `estops' or limits later expansion of the protection accorded by the claim to the patent owner under the doctrine of equivalents when the claims have been purposefully amended or distinguished over relevant prior art to give up scope.... `[T]he two uses of the prosecution history must not be confused.'" (citations omitted)).
16.03.04 DEPENDENT CLAIMS (35 U.S.C. § 112)
The patent includes dependent claims. A dependent claim incorporates each of the limitations of a previous claim but also contains additional limitations not found in the other claim.
[If you find that an independent claim is not infringed, then you must find claims dependent on it are not literally infringed.]
[If you find that an independent claim has been infringed, you must separately determine whether a dependent claim has been infringed.]
Comment
See Marsh-McBirney, Inc. v. Montedoro-Whitney Corp., 882 F.2d 498, 504 (Fed. Cir. 1989) (provides useful example of difference between independent and dependent claims).
Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1552 n.9 (Fed. Cir. 1989) ("One may infringe an independent claim and not infringe a claim dependent on that claim. The reverse is not true. One who does not infringe an independent claim cannot infringe a claim dependent on (and thus containing all the limitations of) that claim.").
The Federal Circuit suggests that even if an independent claim was not infringed, the claims dependent on it may be infringed by application of the doctrine of equivalents. See Wilson Sporting Goods Co. v. David Geoffrey & Assocs., 904 F.2d 677, 685-86 (Fed. Cir. 1990). Although the asserted range of equivalents for the independent claim encompassed prior art, the dependent claims were narrower than the independent claims. Therefore, the dependent claims could have a range of equivalents that did not include prior art and could be infringed by an equivalent product. Id.
16.03.05 MEANS PLUS FUNCTION CLAIMS (35 U.S.C. § 112)
Patent claim designates [a] [an] [physical part] [component] [assembly of parts] as a "means" for performing a specific function, [specify function].
The "means" claim is infringed only if:
1. the function of the accused device is identical to that disclosed in the patent; and
2. the [structure] [component] [material] which performs that function is the same as, or the equivalent of, the [structure] [component] [material] disclosed in the patent.
Comment
Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992) (setting forth the two-part test); Intel Corp. v. U.S. Int'l Trade Comm'n, 946 F.2d 821, 841 (Fed. Cir. 1991) ("To meet a means plus function limitation literally, an accused device must (1) perform the identical function claimed for the means element, and (2) perform that function using the structure disclosed in the specification or an equivalent structure.").
Spindelfabrik Suessen-Schurr v. Schubert & Salzer Maschinenfabrik AG, 829 F.2d 1075, 1085 (Fed. Cir. 1987) ("A finding of literal infringement of a claim expressed in terms of a series of means for performing particular functions ... involves interpreting the claim to define the recited function. If, as a threshold matter, the recited functions are not performed by the accused device, there can be no literal infringement. On the other hand, if an accused device is found to perform the recited functions, one must determine under § 112 para. 6 whether the means by which the accused device performs each function is the same as or equivalent to the means disclosed in the specification for performing each function."), cert. denied, 484 U.S. 1063 (1988).
Johnston v. IVAC Corp., 885 F.2d 1574, 1580 (Fed. Cir. 1989) ("[S]ection 112 ¶ 6 operates to cut back on the types of means which could literally satisfy the claim language.")
16.04.01 DIRECT INFRINGEMENT (35 U.S.C. § 271(a))
A patent owner may enforce the right to exclude others from making, using, or selling the patent invention in an action for patent infringement. Anyone who, without the owner's consent, makes, uses, or sells in the United States any [product] [process] [apparatus] [composition] that is legally protected by at least one claim in the owner's patent is liable for [direct] infringement of the patent.
A person may [directly] infringe a patent without knowing of the patent or intending to infringe it. Good faith is not a defense to a claim of [direct] infringement.
Comment
35 U.S.C. §§ 271, 281.
16.04.02 PLAINTIFF'S ELEMENTS AND BURDEN OF PROOF--DIRECT INFRINGEMENT
On plaintiff's claim for patent infringement, the plaintiff has the burden of proving each of the following by a preponderance of the evidence:
1. the plaintiff is the [owner] [assignee] [exclusive licensee] of the '_ _ _ patent; and
2. the defendant infringed one or more claims of the patent by making, using, or selling the accused [product] [process] [apparatus] [composition] without the plaintiff's consent.
[Add appropriate concluding paragraphs from Instructions 5.03, 5.04, or 5.05.]
Comment
Use Instruction 5.01 for the definition of "preponderance of the evidence."
16.04.03 INDUCING INFRINGEMENT (35 U.S.C. § 271(b))
A person who intentionally induces a direct infringer to make, use, or sell an invention without the patent owner's consent is liable for patent infringement.
Comment
See Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990) (to establish active inducement, the evidence must show an "actual intent" to induce an infringement). But see Manville Sales Corp. v. Paramount Sys., 917 F.2d 544, 553-54 (Fed. Cir. 1990) (plaintiff must prove that the defendant has a "specific intent" or, alternatively, that the defendant "knew or should have known his actions would induce actual infringements" (emphasis added)).
Water Technologies Corp. v. Calco, Ltd., 850 F.2d 660, 668 (Fed. Cir.) ("Although section 271(b) does not use the word `knowing,' the case law and legislative history uniformly assert such a requirement.... While proof of intent is necessary, direct evidence is not required; rather, circumstantial evidence may suffice." (citations omitted)), cert. denied, 488 U.S. 968 (1988)).
16.04.04 PLAINTIFF'S ELEMENTS AND BURDEN OF PROOF--INDUCING INFRINGEMENT
On plaintiff's claim for inducing infringement, the plaintiff has the burden of proving each of the following by a preponderance of the evidence:
1. the plaintiff was the [owner] [assignee] [exclusive licensee] of the
'_ _ _ patent;
2. the defendant intentionally [persuaded] [induced] another person to make, use, or sell the accused [product] [process] [apparatus] [composition] without the plaintiff's consent; and
3. the accused product infringed one or more of the plaintiff's claims.
[Add appropriate concluding paragraphs from Instructions 5.03, 5.04, or 5.05.]
Comment
Use Instruction 5.01 for the definition of "preponderance of the evidence."
16.04.05 CONTRIBUTORY INFRINGEMENT (35 U.S.C. § 271(c))
A person who sells a material component of a patented invention, knowing that the component was [especially made] [or] [especially adapted] for use in the infringement of the patent and that it is not a staple article [or] [commodity] of commerce suitable for substantial noninfringing use, is liable for contributory infringement.
A staple article of commerce is a component that is suitable for substantial noninfringing use.
An item is not a staple article [or] [commodity] of commerce if it was [especially made] [or] [especially adapted] for use in an infringement of the patent and is not suitable for substantial noninfringing use.
A person cannot be liable for contributory infringement unless the evidence shows that another person directly infringed the patent.
[Add appropriate concluding paragraphs from Instructions 5.03, 5.04, or 5.05.]
16.04.06 PLAINTIFF'S ELEMENTS AND BURDEN OF PROOF--CONTRIBUTORY INFRINGEMENT
[On plaintiff's claim for contributory infringement,] the plaintiff has the burden of proving each of the following by a preponderance of the evidence:
1. the plaintiff is the [owner] [assignee] [exclusive licensee] of the '_ _ _ patent;
2. the defendant sold a material component of the patented invention;
3. the defendant knew at the time of the sale that the component was [especially made] [or] [especially adapted] for use in the infringement of the '_ _ _ patent;
4. the defendant knew at the time of the sale that the component was not a staple article of commerce suitable for substantial noninfringing use; and
5. the component was used in the accused [product] [process] [apparatus] [composition] by a direct infringer without the plaintiff's consent.
[Add appropriate concluding paragraphs from Instructions 5.03, 5.04, or 5.05.]
Comment
Use Instruction 5.01 for the definition of "preponderance of the evidence."
16.04.07 WILLFUL INFRINGEMENT (35 U.S.C. § 284)
The plaintiff alleges that the defendant's alleged infringement of the plaintiff's patent was willful. If you find that the defendant has infringed one or more claims of the plaintiff's patent, you will be asked in the verdict form whether such infringement was willful. To prove that the defendant acted willfully, the plaintiff has the burden of proving each of the following by clear and convincing evidence:
1. the defendant actually knew of the plaintiff's patent; and
2. the defendant lacked any reasonable basis for believing either (a) that the plaintiff's patent was invalid or (b) that the defendant's [product] [process] [apparatus] [composition] did not infringe one or more claims of the plaintiff's patent.
In deciding whether the defendant acted reasonably, you must consider the totality of the circumstances [, including, but not limited to] [whether the defendant exercised due care to avoid infringing the patent] [whether the defendant obtained and reasonably relied on competent legal advice before beginning its allegedly infringing activities, or before continuing its activities after knowledge of the patent] [whether the defendant made a good faith effort to design around the patent, rather than copy the patented invention].
Comment
This instruction is to be used when the plaintiff has alleged willful infringement. Exemplary damages cannot be awarded by the court unless the jury finds the infringement was willful. 35 U.S.C. § 284; Shiley, Inc. v. Bentley Lab., 794 F.2d 1561, 1568 (Fed. Cir. 1986) ("[I]f a jury finding of willful infringement is not overturned on a motion for JNOV, the court has discretion to award increased damages on the basis of the jury's finding; if the jury finding is that willful infringement did not occur and that finding is not overturned on a motion for JNOV, no basis for assessing increased damages for willful infringement exists ...."), cert. denied, 479 U.S. 1087 (1987). See Instruction 16.06.04.
Use Instruction 5.02 for the definition of clear and convincing.
Ortho Pharmaceutical Corp. v. Smith, 959 F.2d 936, 944-45 (Fed. Cir. 1992) (seeking legal advice); King Instrument Corp. v. Otari Corp., 767 F.2d 853, 867 (Fed. Cir. 1985) (totality of circumstances; effort to design around the patent), cert. denied, 475 U.S. 1016 (1986); Gustafson, Inc. v. Intersystems Indus. Prods., 897 F.2d 508, 510 (Fed. Cir. 1990) (actual knowledge of patent); E.I. Du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1440 (Fed. Cir.) (clear and convincing standard), cert. denied, 488 U.S. 986 (1988); State Indus. v. Mor-Flo Indus., 883 F.2d 1573, 1581 (Fed. Cir. 1989) ("To establish willful infringement, a plaintiff must prove by clear and convincing evidence that the defendant acted with no reasonable basis for believing it had the right to do so."), cert. denied, 493 U.S. 1022 (1990).
16.05.01 DEFENSE OF INVALIDITY--GENERALLY
It is a defense to an action for infringement that the patent claim is invalid. The law presumes that the claims of a patent issued by the United States Patent Office are valid.
In this case, the defendant contends that one or more of the patent claims are invalid because [insert alleged ground for invalidity]. Whether or not you find that the accused product infringed the '_ _ _ patent, you must determine whether any of the patent claims are invalid. The defendant has the burden of proving by clear and convincing evidence that a claim is invalid.
Comment
For the definition of clear and convincing evidence, see Instruction 5.02.
The Supreme Court observed that it "will usually be the better practice" for a district court to examine patent invalidity regardless of whether it concludes the patent was infringed. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327 (1945). It is unclear, however, whether a court must determine patent validity if it concludes the patent is not infringed. Nestier Corp. v. Menasha Corp.--Lewisystems Div., 739 F.2d 1576, 1580-81 (Fed. Cir. 1984) ("`While the better practice is to treat both the validity and infringement issues, particularly in view of the public interest in the validity issue, it is not always necessary to do so. Where, as here, non-infringement is clear and invalidity is not plainly evident, it is appropriate to treat only the infringement issue.'" (citations omitted) (quoting Lockwood v. Langendorf United Bakeries, 324 F.2d 82 (9th Cir. 1963)). See Donofrio, The Disposition of Unreviewable Judgments by the Federal Circuit, 73 J. Pat. [& Trademark] Off. Soc'y 462, 478-80 (1991). In fact, the Supreme Court recently condemned the Federal Circuit's practice of vacating a district court's invalidity conclusion where the circuit court determined that the patent was not infringed. Cardinal Chemical Co. v. Morton Intern., Inc., 1993 WL 155665 (U.S.).
16.05.02 INVALIDITY--ANTICIPATION/LACK OF NOVELTY (35 U.S.C. § 102)
The defendant contends that one or more of the patent claims are invalid because the plaintiff's alleged invention is not new or novel but was anticipated by a single prior invention. A claim is invalid if it is anticipated by a previously existing invention. Anticipated means the plaintiff's alleged invention is not new or novel. Anticipation occurs when all of the elements of the alleged invention are united in a single prior invention and operate in the same manner to perform the same function.
[A claim was anticipated and is invalid if:
[1. the patent owner was not the inventor of the [product] [process] [apparatus] [composition] for which the patent was issued.]
[2. the patent owner was not the first inventor of the [product] [process] [apparatus] [composition] for which the patent was issued.]
[3. the patent owner was not diligent in filing the patent application.]]
Comment
Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1267 (Fed. Cir. 1991) ("Anticipation ... requires that the identical invention that is claimed was previously known to others and thus is not new."); Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991) ("Invalidity for anticipation requires that all of the elements and limitations of the claim are found within a single prior art reference. There must be no difference between the claimed invention and the referenced disclosure, as viewed by a person of ordinary skill in the field of the invention." (citations omitted)).
Definitions of each of the numbered paragraphs can be found in Instructions 16.05.02.01, 16.05.02.02, and 16.05.02.03, which follow.
16.05.02.01 INVENTOR LISTED ON THE PATENT WAS NOT INVENTOR (35 U.S.C. § 102(f))
The defendant contends that the inventor listed on the patent was not the inventor of the [product] [process] [apparatus] [composition] for which the '_ _ _ patent was issued. The claims of a patent are invalid if the listed inventor did not invent the patented [product] [process] [apparatus] [composition].
16.05.02.02 INVENTOR LISTED ON THE PATENT WAS NOT FIRST INVENTOR (35 U.S.C. § 102(a), (e) & (g))
The defendant contends that the inventor listed on the patent was not the first inventor of the patented [product] [process] [apparatus] [composition]. One is not the first inventor if one invents the [product] [process] [apparatus] [composition] after:
[1. that invention was known or used by other persons in the United States ;]
[2. that invention was described in a patent or other printed publication anywhere in the world ;]
[3. that invention was described in another person's United States patent application, which application was ultimately granted;] [or]
[4. that invention was made or reduced to practice in the United States by another person who did not abandon, suppress or conceal it.]
Comment
Regarding the priority of inventions, the trial judge may need to further instruct and submit to the jury such issues as an invention's date of conception and reduction to practice, the exercise of reasonable diligence in reducing an invention to practice, and the abandonment, suppression, or concealment of an invention. 35 U.S.C. § 102(g).
16.05.02.03 PATENT OWNER WAS NOT DILIGENT IN FILING APPLICATION
(35 U.S.C. § 102(b) & (d))
The defendant contends that the [plaintiff] [patent owner] was not diligent in filing the application for the '_ _ _ patent. A patent owner is not diligent in filing a patent application if:
[1. the invention was patented or described in a printed publication anywhere in the world more than one year before the patent owner filed the application.]
[2. the invention was in public use or on sale in the United States more than one year before the patent owner filed the application.]
[3. the invention was patented by the patent owner in a foreign country more than one year before the patent owner filed the application in the United States.]
16.05.03 INVALIDITY--OBVIOUSNESS (35 U.S.C. § 103)
The defendant contends that one or more of the patent claims are invalid because the alleged invention that the patent claims was obvious. A claim to an obvious invention is invalid. An alleged invention is obvious if the invention would have been obvious to a person having ordinary skill in the art relevant to the invention at the time the invention was made.
Prior art means technology and information that was publicly available before the date of the alleged invention.
A person of ordinary skill in the relevant art is one who would be expected to be working to solve problems related to the alleged invention at the time the invention was made.
The court must determine whether an invention claimed in a patent was obvious. In order for the court to make this determination, you must decide:
1. what was the scope and content of the prior art at the time the alleged invention was conceived;
2. what were the differences, if any, between the prior art and the alleged invention, that is, what does this alleged invention add to what was already known; and
3. what was the level of ordinary skill in the prior art at the time the alleged invention was made.
In making these three determinations, you should also consider such surrounding circumstances as:
[1. whether the alleged invention was commercially successful;]
[2. whether the alleged invention satisfied a long felt need in the art;]
[3. whether others were unsuccessful in making the alleged invention;]
[4. whether the alleged invention was copied by others in the art;]
[5. whether the alleged invention received praise from others in the art;]
[6. whether the alleged invention departed from accepted principles of the art.]
Comment
Obviousness is a question of law with underlying factual inquiries. Sakraida v. Ag Pro, Inc., 425 U.S. 273, 280 (1976) ("The ultimate test of patent validity is one of law, but resolution of the obviousness issue necessarily entails several basic factual inquiries." (citations omitted)); In re Hayes Microcomputer Products, Inc. Patent Litigation, 982 F.2d 1527, 1539 (Fed. Cir. 1992) ("Obviousness is a legal determination that may be submitted to the jury with proper instruction."); In re Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991) ("Obviousness is a legal question ... though based on underlying factual findings.").
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966) ("Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved.... Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented"); Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1270 (Fed. Cir. 1991) (citing Graham's obviousness test); Rosemount, Inc. v. Beckman Instruments, Inc., 727 F.2d 1540, 1546 (Fed. Cir. 1984) (considering objective evidence of obviousness based on factors enunciated in Graham).
1 Donald S. Chisum, Patents, G1-12 (1992) (defining "level of ordinary skill" as "the skill ... of a person who would be expected to solve the type of problem in question rather than that of a person who ordinarily uses the product or process.").
16.05.04 INVALIDITY--INSUFFICIENT SPECIFICATION (35 U.S.C. § 112)
The defendant contends that one or more of the patent claims are invalid because the specification is insufficient. If the specification is insufficient as to any claim, that claim is invalid.
In order to be sufficient, the specification must:
1. provide a written description of the invention;
2. describe the manner and process of making the invention;
3. describe the manner and process of using the invention;
4. disclose the best mode contemplated for carrying out the invention; and
5. contain one or more claims particularly pointing out and distinctly claiming the subject matter that the patent owner regards as the invention.
The description in the specification must be in such terms as to enable any person skilled in the art to which the invention pertains, or with which it is most nearly connected, to make and use the invention from the description without unreasonable experimentation or additional skill.
Comment
See, e.g., In re Wands, 858 F.2d 731, 736-37 (Fed. Cir. 1988) ("Enablement is not precluded by the necessity for some experimentation .... However, experimentation needed to practice the invention must not be undue experimentation."); United States v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988) ("A patent may be enabling even though some experimentation is necessary; the amount of experimentation, however, must not be unduly extensive."), cert. denied, 490 U.S. 1046 (1989).
16.05.05 INVALIDITY--[PROCESS] [METHOD] CLAIMS (35 U.S.C. § 102)
The defendant contends that one or more of the plaintiff's patent claims are invalid because [it is] [they are] not a [process] [method] protected by the patent laws. A [process] [method] is a way to produce a specific result by an act, or series of acts, which change an object into a different state or a thing.
A claim is valid if it is a new discovery that advances the prior art and describes and discloses the [process] [method].
The inventor need not know why or how the [process] [method] works. On the other hand, a claim that [merely explains an existing [process] [method] invented by someone else] [or] [merely discovers the scientific theory behind an existing [process] [method]] is invalid because ideas, theories, and scientific principles cannot be patented.
Comment
Commentators refer to these claims variously as "process" claims, "method" claims, and "product-by-process" claims. See Parker v. Flook, 437 U.S. 584, 588 (1978); Gottschalk v. Benson, 409 U.S. 63, 71 (1972); 2 Donald S. Chisum, Patents § 8.05 (1992) ("A `product-by-process' claim is one in which the product is defined at least in part in terms of the method or process by which it is made. Most decisions hold that such a claim is infringed only by a product made through a substantially identical process ....").
The definition of a process is derived from Diamond v. Diehr, 450 U.S. 175, 180-82, (1981) (citing Cochrane v. Deener, 94 U.S. 780, 787-88 (1877)).
Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 1570 (Fed. Cir. 1983) (inventor need not comprehend scientific principles on which practical effectiveness of invention rests).
For patentability of process involving mental participation as compared with that which has physical steps, consult Parker v. Flook, 437 U.S. at 594 ("Respondent's process is unpatentable ... not because it contains a mathematical algorithm ... but because once that algorithm is presumed to be within the prior art, the application ... contains no patentable invention.... [T]he discovery of ... a phenomenon cannot support a patent unless there is some other inventive concept in its application."); Diamond v. Diehr, 450 U.S. at 187-88 (while laws of nature and abstract ideas are not patentable, "an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.").
16.06.01 PATENT--COMPENSATORY DAMAGES (35 U.S.C. § 284)
If you find for the plaintiff on plaintiff's infringement claim, you must determine plaintiff's damages. Plaintiff has the burden of proving damages by a preponderance of the evidence. Damages means the amount of money adequate to compensate for any infringement, but in no event less than the amount of money the plaintiff would have received if the defendant had been paying the plaintiff a reasonable royalty for using the patent during the period of infringement. The law does not permit the award of a greater sum than the monetary loss the plaintiff suffered as a result of the defendant's infringement.
Comment
State Indus. v. Mor-Flo Indus., 883 F.2d 1573, 1580 (Fed. Cir. 1989) (reasonable royalty is not based on infringer's profit margin, but on hypothetical negotiations between willing licensor and licensee), cert. denied, 493 U.S. 1022 (1990); Water Technologies Corp. v. Calco, Ltd., 850 F.2d 660, 673 (Fed. Cir.) (infringer's profits are not measure of patent owner's damages), cert. denied, 488 U.S. 968 (1988).
16.06.02 PATENT--DAMAGES--REASONABLE ROYALTY (35 U.S.C. § 284)
You may award the plaintiff a reasonable royalty.
A royalty is the amount of money a[n] [assignee] [licensee] is required to pay to a patent owner for each article the [assignee] [licensee] [made] [used] [sold] under the patent [assignment] [license].
A reasonable royalty is the amount of money that a willing patent owner and a willing, prospective [assignee] [licensee] would have agreed upon at the time of the infringement for [an assignment] [a license] to [make] [use] [sell] the invention. [The determination of a reasonable royalty does not depend upon the actual willingness of the parties to this lawsuit to engage in such negotiations.]
A reasonable royalty may exceed the alleged infringer's actual profit. In determining a reasonable royalty, you may consider the following:
1. [whether there was an established royalty before the date of infringement. An established royalty is based on what the plaintiff received from actual [assignees] [licensees] for [making] [using] [selling] the invention.]
2. [royalty rates paid for comparable patented inventions.]
3. [whether the plaintiff had a policy and marketing practice of refusing to grant licenses.]
4. [the commercial relationship between the plaintiff and the defendant, such as whether they are competitors.]
5. [the value of the invention as a source of additional sales of related products.]
6. [the duration of the patent period remaining.]
7. [the established profitability of the product made under the patent, its commercial success, and its current popularity.]
8. [advantages of the patented invention over modes or devices previously used.]
9. [the nature of the invention and the benefits to users of the invention.]
10. [the extent to which the defendant has made use of the invention.]
11. [the portion of the profit or selling price normally allowed for use of the invention or similar inventions in comparable businesses.]
12. [the portion of the profit credited to the patented invention, as distinguished from non-patented elements, the manufacturing process, business risks, significant features or improvements added by the defendants.]
13. [the impact of the respective bargaining positions of the parties due to anticipated collateral sales of non-infringing products, the desire to maintain market position, and the desire to enter a new market.]
Comment
Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970), modified and aff'd, 446 F.2d 295 (2d Cir. 1971) (court offers comprehensive list of evidentiary facts generally relevant to determination of reasonable royalty); Nickson Indus. v. Rol Mfg. Co., 847 F.2d 795, 799 (Fed. Cir. 1988) (reasonable royalty should be based on evidence not conjecture).
An established royalty rate generally sets the minimum which the plaintiff should recover for patent infringement. However, to recover under a pure established royalty theory, the plaintiff must meet strict criteria. Rude v. Westcott, 130 U.S. 152 (1889). With the recognition of the reasonable royalty theory, full compliance with the Rude criteria is not so critical; now established royalty is used as a factor in determining a reasonable royalty. 5 Donald S. Chisum, Patents § 20.03[2][b] (1992).
16.06.03 PATENT--DAMAGES--LOST PROFITS (35 U.S.C. § 284)
You may award the plaintiff the amount of profits the plaintiff lost because of diverted sales, price erosion, [and] [or] increased costs. To establish lost profits, the plaintiff must show a reasonable probability that, but for the infringement, the plaintiff would have [made some or all of the infringer's sales] [charged higher prices] [and] [or] [incurred lower expenses].
Lost profits may be shown by
[1.] [the demand for the patented product;]
[2.] [absence of acceptable non-infringing substitutes;]
[3.] [the plaintiff's manufacturing and marketing capability to meet the demand for the product].
The amount of profit the plaintiff would have made may be measured by multiplying the profit lost on the diverted sales by the total sales the plaintiff would have had the capability to manufacture and market.
[Even if only a portion of a patented invention is made up of the patented [product] [process] [apparatus] [composition], damages are based on the entire profit derived from the product, if the evidence shows that a major part of the commercial value of that product depends upon the patented invention.]
Comment
State Indus. v. Mor-Flo Indus., 883 F.2d 1573, 1577 (Fed. Cir. 1989) (standard way of proving lost profits), cert. denied, 493 U.S. 1022 (1990); Water Technologies Corp. v. Calco, Ltd., 850 F.2d 660, 673 (Fed. Cir.) (plaintiff must show causation to recover lost profits), cert. denied, 488 U.S. 968 (1988).
While some older cases required apportionment in cases in which the patented feature was but one part of the infringed product, most recent cases allow recovery based on the value of the entire product or apparatus. TWM Mfg. Co. v. Dura Corp., 789 F.2d 895, 901 (Fed. Cir.), cert. denied, 479 U.S. 852 (1986); Paper Converting Mach. Co. v. Magna-Graphics Corp., 745 F.2d 11, 22-23 (Fed. Cir. 1984).
If absence of acceptable non-infringing substitutes is not shown, lost profits may be proved by market share. The plaintiff must prove its share of the market for its product and the non-infringing substitute. The plaintiff may recover lost profits based on the same share of the defendant's total sales. State Indus., 883 F.2d at 1577-78.
16.06.04 PATENT--DAMAGES--PUNITIVE DAMAGES NOT ALLOWED
If you find for the plaintiff, you may not award the plaintiff more than the monetary loss the plaintiff suffered as a result of the infringement. You may not include an additional amount for the purpose of punishing the defendant or setting an example.
Comment
Although a jury may not award punitive damages, the court may increase the damage award based on a jury finding of willful infringement. See Comment to Instruction 16.04.07.
16.06.05 PATENT--DAMAGES--SPECULATIVE DAMAGES NOT ALLOWED
If you find for the plaintiff, you may not include damages that are speculative, only possible, or that are based on guesswork.
Comment
See Instruction 7.01.