AppleLG Juryinstructions

Case 3:10-cv-02618-H-KSC Document 661 Filed 11/26/12 Page 1 of 116
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Juanita R. Brooks (SBN 75934), brooks@fr.com Christopher S. Marchese (SBN 170239), marchese@fr.com Lara S. Garner (SBN 234701), lgarner@fr.com Justin M. Barnes (SBN 217517), barnes@fr.com Francis J. Albert (SBN 247741), albert@fr.com Alex Eaton-Salners (SBN 239750), eaton-salners@fr.com Fish & Richardson P.C. 12390 El Camino Real San Diego, CA 92130 Telephone: (858) 678-5070 Facsimile: (858) 678-5099 Kelly C. Hunsaker (SBN 168307), hunsaker@fr.com Fish & Richardson P.C. 500 Arguello Street, Suite 500 Redwood City, CA 94063 Telephone: (650) 839-5070 Facsimile: (650) 839-5071 Michael J. McKeon (admitted Pro Hac Vice), mckeon@fr.com Richard A. Sterba (admitted Pro Hac Vice), sterba@fr.com Michael C. Tyler (admitted Pro Hac Vice), tyler@fr.com Fish & Richardson P.C. 1425 K Street, N.W., 11th Floor Washington, D.C. 20005 Telephone: (202) 783-5070 Facsimile: (202) 783-2331 Attorneys for Defendants Apple Inc. and LG Electronics, Inc., LG Electronics U.S.A., Inc., LG Electronics Mobilecomm U.S.A., Inc. UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA MULTIMEDIA PATENT TRUST, Plaintiff, v. APPLE, INC.; CANON, INC.; CANON U.S.A., INC.; LG ELECTRONICS, INC.; LG ELECTRONICS U.S.A., INC.; LG ELECTRONICS MOBILECOMM U.S.A., INC., Defendants, Case No. 10-CV-2618 H (KSC) APPLE AND LGS PRELIMINARY PROPOSED JURY INSTRUCTIONS Courtroom: 13, 5th Floor Hon. Marilyn L. Huff
Case No. 10-CV-2618 H (KSC)
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I.
APPLE AND LG PROPOSED PRELIMINARY JURY INSTRUCTIONS
Courts Instruction No. _____ WHAT A PATENT IS AND HOW ONE IS OBTAINED This case involves a dispute relating to a United States patent. Before summarizing the positions of the parties and the issues involved in the dispute, let me take a moment to explain what patent is and how one is obtained. Patents are granted by the United States Patent and Trademark Office (sometimes called the PTO). A valid United States patent gives the patent holder the right for up to 20 years from the date the patent application was filed to prevent others from making, using, offering to sell, or selling the patented invention within the United States, or from importing it into the United States, without the patent holders permission. A violation of the patent holders rights is called infringement. The patent holder may try to enforce a patent against persons believed to be infringers by a lawsuit filed in federal court. The process of obtaining a patent is called patent prosecution. To obtain a patent, one must first file an application with the PTO. The PTO is an agency of the Federal Government and employs trained Examiners who review applications for patents. The application includes what is called a specification, which contains a written description of the claimed invention telling what the invention is, how it works, how to make it, and how to use it. The specification concludes with one or more numbered sentences. These are the patent claims. When the patent is eventually granted by the PTO, the claims define the boundaries of its protection and give notice to the public of those boundaries. After the applicant files the application, an Examiner reviews the application to determine whether or not the claims are patentable (appropriate for patent protection) and whether or not the specification adequately describes the invention claimed. In examining a patent application, the Examiner reviews certain information about the state of the technology at the time the application was filed. The PTO searches for and reviews information that is publicly available or that is submitted by the applicant. This information is called prior art. The Examiner reviews this prior art to determine whether or not the invention is truly an advance over the state of the art at the 1
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time. Prior art is defined by law, and I will give you, at a later time during these instructions, specific instructions as to what constitutes prior art. However, in general, prior art includes information that demonstrates the state of technology that existed before the claimed invention was made or before the application was filed. A patent lists the prior art that the Examiner considered; this list is called the cited references. After the prior art search and examination of the application, the Examiner informs the applicant in writing of what the Examiner has found and whether the Examiner considers any claim to be patentable and, thus, would be allowed. This writing from the Examiner is called an Office Action. If the Examiner rejects the claims, the applicant has an opportunity to respond to the Examiner to try to persuade the Examiner to allow the claims, and to change the claims or to submit new claims. This process may go back and forth for some time until the Examiner is satisfied that the application meets the requirements for a patent and the application issues as a patent, or that the application should be rejected and no patent should issue. Sometimes, patents are issued after appeals within the PTO or to a court. The papers generated during these communications between the Examiner and the applicant are called the prosecution history. The fact that the PTO grants a patent does not necessarily mean that any invention claimed in the patent, in fact, deserves the protection of a patent. For example, the PTO may not have had available to it all other prior art that will be presented to you. A person accused of infringement has the right to argue here in federal court that a claimed invention in the patent is invalid because it does not meet the requirements for a patent. It is your job to consider the evidence presented by the parties and determine independently whether or not Apple and/or LG have proven that the patent is invalid.
Source: Federal Circuit Bar Associate Model Instruction No. A.1
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Courts Instruction No. _____ SUMMARY OF CONTENTIONS To help you follow the evidence, I will now give you a summary of the positions of the parties. The parties in this case are Multimedia Patent Trust, Apple and LG. The case involves the following United States Patents: United Sates Patent No. 4,959,226 was obtained by the inventors named on the first page, and the inventors transferred the patent to AT&T Bell Laboratories, which transferred the patent to Lucent Technologies, which transferred the patent to Multimedia Patent Trust. For your convenience, the parties and I will often refer to this patent number 4,959,226 by the last three numbers of the patent number, namely, as the 226 patent. United Sates Patent No. 5,136,377 was obtained by the inventors named on the first page, and the inventors transferred the patent to AT&T Bell Laboratories, which transferred the patent to Lucent Technologies, which transferred the patent to Multimedia Patent Trust. For your convenience, the parties and I will often refer to this patent number 5,136,377 by the last three numbers of the patent number, namely, as the 377 patent. United Sates Patent No. 5,227,878 was obtained by the inventors named on the first page, and the inventors transferred the patent to AT&T Bell Laboratories, which transferred the patent to Lucent Technologies, which transferred the patent to Multimedia Patent Trust. For your convenience, the parties and I will often refer to this patent number 5,227,878 by the last three numbers of the patent number, namely, as the 878 patent. Multimedia Patent Trust filed suit in this court seeking money damages from Apple and LG for allegedly infringing the 226, 377, and 878 patents by making, importing, using, selling, or offering for sale in the United States products that Multimedia Patent Trust argues are covered by claim 12 of the 226 patent; claims 1, 2, 4, 8, 26, and 27 of the 377 patent; and claims 13, 15, 31, and 32 of the 878 patent. These are the asserted claims of the 226, 377, and 878 patents. The Apple product groupings that Multimedia Patent Trust alleges to infringe are:
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Claim 12 of the 226 Patent - iPhone 3GS, iPod Nano (5th Generation), and iPod Touch (3rd Generation) for the use of the VXD 375 decoder;
Claims 1, 2, 4, 8, 26, and 27 of the 377 patent - iPhone 3GS, iPhone 4, iPod Nano (5th Generation), and iPod Touch (4rd Generation) for the use of the 720p encoder;
Claims 1, 2, 4, 8, 26, and 27 of the 377 patent - iMac, MacBook, MacBook Pro, MacBook Air, Mac Mini, Mac Pro for the use of the JVTLib (QuickTime codec);
Claims 13 and 15 of the 878 patent - iPhone 3GS, iPhone 4, iPod Touch (4th generation) for use of the VXD 375 decoder and 720p encoder;
Claims 13, 15, 31 and 32 of the 878 patent - iPad 2, iPhone 4S for the use of the VXD 390 decoder and VXE 380 encoder;
Claims 13 and 15 of the 878 patent iPad, iPod Touch (3rd generation), AppleTV (2nd generation) for the use of the VXD 375 decoder;
Claims 31 and 32 of the 878 patent - iPod Nano (5th generation) for the use of the 720p encoder.
The LG product groups that Multimedia Patent Trust alleges to infringe are: Claims 1, 2, 8, 26, and 27 of the 377 patent - Bliss UX700, Touch AX8575, Lotus Elite LX610, Mystique UN610, Samba LG8575, Chocolate Touch VX8575 for the inclusion of the Qualcomm MSM6575 chip; Claims 1, 2, 26, and 27 of the 377 patent - Neon GT365, Prime GS390, Encore GT550 for the inclusion of the Aricent codec. Claims 13, 31, and 32 of the 878 patent - Bliss UX700, Touch AX8575, Lotus Elite LX610, Mystique UN610, Samba LG8575, Chocolate Touch VX8575 for the inclusion of the Qualcomm MSM6575 chip; Claims 31 and 32 of the 878 patent - Neon GT365, Prime GS390, Encore GT550 for the inclusion of the Aricent codec. Apple and LG deny that they have infringed claim 12 of the 226 patent; claims 1, 2, 4, 8, 26, and 27 of the 377 patent; and claims 13, 15, 31, and 32 of the 878 patent. Apple and LG also assert that claim 12 of the 226 patent; claims 1, 2, 4, 8, 26, and 27 of the 377 patent; and claims 4
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13, 15, 31, and 32 of the 878 patent are invalid. There are several ways that you may find a patent invalid, and I will instruct you later on these ways. In general, however, a patent is invalid if it is not new or is obvious in view of the state of the art or technology at the relevant time, or if the patent description does not meet certain requirements. Your job will be to decide whether or not claim 12 of the 226 patent; claims 1, 2, 4, 8, 26, and 27 of the 377 patent; and claims 13, 15, 31, and 32 of the 878 patent have been infringed and whether or not those claims are invalid. If you decide that any claim of the 226, 337, and 878 patent has been infringed and is not invalid, you will then need to decide any money damages to be awarded to Multimedia Patent Trust to compensate it for the infringement.
Source: Federal Circuit Bar Associate Model Instruction No. A.2; Doc. No. Doc. No. 650 (pretrial order).
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Courts Instruction No. _____ PATENT AT ISSUE I have already determined the meaning of the claims of the 226, 377, and 878 patents. You have been given a document reflecting those meanings. For a claim term for which I have not provided you with a definition, you should apply the ordinary meaning. You are to apply my definitions of these terms throughout this case. However, my interpretation of the language of the claims should not be taken as an indication that I have a view regarding issues such as infringement and invalidity. Those issues are yours to decide. I will provide you with more detailed instructions on the meaning of the claims before you retire to deliberate your verdict.
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Courts Instruction No. _____ OVERVIEW OF APPLICABLE LAW In deciding the issues I just discussed, you will be asked to consider specific legal standards. I will give you an overview of those standards now and will review them in more detail before the case is submitted to you for your verdict. The first issue you will be asked to decide is whether Apple and LG have infringed the claims of the 226, 377, and 878 patents. Infringement is assessed on a claim-by-claim basis. Therefore, there may be infringement as to one claim but not infringement as to another. There are a few different ways that a patent may be infringed. I will explain the requirements for each of these types of infringement to you in detail at the conclusion of the case. In general, however, Apple and LG may infringe the 226, 377, and 878 patents by making, using, selling, or offering for sale in the United States, or by importing into the United States, a product meeting all the requirements of a claim of the 226, 377, and 878 patents. Another issue you will be asked to decide is whether the 226, 377, and 878 patents are invalid. A patent may be invalid for a number of reasons, including because it claims subject matter that is not new or is obvious. For a claim to be invalid because it is not new, Apple and/or LG must show, by clear and convincing evidence, that all of the elements of a claim are present in a single previous device or method, or sufficiently described in a single previous printed publication or patent. We call these prior art. If a claim is not new, it is said to be anticipated. Another way that a claim may be invalid is that it may have been obvious. Even though every element of a claim is not shown or sufficiently described in a single piece of prior art, and thus the claim is not anticipated, the claim may still be invalid if it would have been obvious to a person of ordinary skill in the field of technology of the patent at the relevant time. You will need to consider a number of questions in deciding whether the asserted claims in the 226, 377, and 878 patents are obvious. I will provide you detailed instructions on these questions at the conclusion of the case. A patent may also be invalid if its description in the specification does not meet certain requirements. To be valid, a patent must meet the written description requirement. In order to 7
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meet this written description requirement, the description of the invention in the specification portion of the patent must be detailed enough to demonstrate that the applicant actually possessed the invention as broadly as claimed in the claims of the issued patent. The disclosure of a patent must also meet the enablement requirement. To meet this requirement, the description in the patent has to be sufficiently full and clear to have allowed persons of ordinary skill in the field of technology of the patent to make and use the invention without undue experimentation, at the time the patent application was originally filed. If you decide that any claim of the 226, 377, and 878 patents has been infringed and is not invalid, you will then need to determine a reasonable royalty to be awarded to Multimedia Patent Trust. I will instruct you later on the meaning of a reasonable royalty. The reasonable royalty you award is meant to compensate Multimedia Patent Trust and not to punish Apple and/or LG. You may not include in your award any fine or penalty. You may only award what is necessary to compensate Multimedia Patent Trust for the infringement, and may not make any award to punish Apple and/or LG. I will give you more detailed instructions on the calculation of reasonable royalty at the conclusion of the case.
Source: Federal Circuit Bar Associate Model Instruction No. A.4.
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Courts Instruction No. _____ OUTLINE OF TRIAL The trial will now begin. First, each side may make an opening statement. An opening statement is not evidence. It is simply an opportunity for the lawyers to explain what they expect the evidence will show. There are two standards of proof that you will apply to the evidence, depending on the issue you are deciding. On some issues, you must decide whether certain facts have been proven by a preponderance of the evidence. A preponderance of the evidence means that the fact that is to be proven is more likely true than not, i.e., that the evidence in favor of that fact being true is sufficient to tip the scale, even if slightly, in its favor. On other issues that I will identify for you, you must use a higher standard and decide whether the fact has been proven by clear and convincing evidence, i.e., that you have been left with a clear conviction that the fact has been proven. These standards are different from what you may have heard about in criminal proceedings where a fact must be proven beyond a reasonable doubt. On a scale of these various standards of proof, as you move from preponderance of the evidence, where the proof need only be sufficient to tip the scale in favor of the party proving the fact, to beyond a reasonable doubt, where the fact must be proven to a very high degree of certainty, you may think of clear and convincing evidence as being between the two standards. After the opening statements, Multimedia Patent Trust will present its evidence in support of its contention that the asserted of the claims of the 226, 377, and 878 patent have been infringed by Apple and LG. To prove infringement of any claim, Multimedia Patent Trust must persuade you by a preponderance of the evidence that Apple and/or LG have infringed that claim. Apple and LG will then present their evidence that the claims of the 226, 377, and 878 patent are invalid. To prove invalidity of any claim, Apple and/or LG must persuade you by clear and convincing evidence that the claim is invalid. In addition to presenting its evidence of invalidity, Apple and LG will put on evidence that their products do not infringe and rebutting Multimedia Patent Trusts evidence of infringement. 9
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Multimedia Patent Trust may then put on additional evidence responding to Apple and LGs evidence that the claims of the 226, 377, and 878 patent are invalid. This is referred to as rebuttal evidence. After the evidence has been presented, the attorneys will make closing arguments and I will give you final instructions on the law that applies to the case. These closing arguments by the attorneys are not evidence. After the closing arguments and instructions, you will then decide the case.
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II.
APPLE AND LG PROPOSED FINAL JURY INSTRUCTIONS
Courts Instruction No. _____ DUTY OF JURY Members of the Jury: Now that you have heard all of the evidence and the arguments of the attorneys, it is my duty to instruct you as to the law of the case. A copy of these instructions will be sent with you to the jury room when you deliberate. You must not infer from these instructions or from anything I may say or do as indicating that I have an opinion regarding the evidence or what your verdict should be. It is your duty to find the facts from all the evidence in the case. To those facts you will apply the law as I give it to you. You must follow the law as I give it to you whether you agree with it or not. And you must not be influenced by any personal likes or dislikes, opinions, prejudices, or sympathy. That means that you must decide the case solely on the evidence before you. You will recall that you took an oath to do so. In following my instructions, you must follow all of them and not single out some and ignore others; they are all important.
Source: Ninth Circuit Model Instruction 1.1C
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Courts Instruction No. _____ WHAT IS EVIDENCE The evidence you are to consider in deciding what the facts are consists of: 1. 2. 3. the sworn testimony of any witness; the exhibits which are received into evidence; and any facts to which the lawyers have agreed.
Source: Ninth Circuit Model Instruction 1.6
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Courts Instruction No. _____ WHAT IS NOT EVIDENCE In reaching your verdict, you may consider only the testimony and exhibits received into evidence. Certain things are not evidence, and you may not consider them in deciding what the facts are. I will list them for you: (1) Arguments and statements by lawyers are not evidence. The lawyers are not
witnesses. What they have said in their opening statements, closing arguments, and at other times is intended to help you interpret the evidence, but it is not evidence. If the facts as you remember them differ from the way the lawyers have stated them, your memory of them controls. (2) Questions and objections by lawyers are not evidence. Attorneys have a duty to
their clients to object when they believe a question is improper under the rules of evidence. You should not be influenced by the objection or by the courts ruling on it. (3) Testimony that has been excluded or stricken, or that you have been instructed to
disregard, is not evidence and must not be considered. In addition sometimes testimony and exhibits are received only for a limited purpose; when I have given a limiting instruction, you must follow it. (4) Anything you may have seen or heard when the court was not in session is not
evidence. You are to decide the case solely on the evidence received at the trial.
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Courts Instruction No. _____ DIRECT AND CIRCUMSTANTIAL EVIDENCE Evidence may be direct or circumstantial. Direct evidence is direct proof of a fact, such as testimony by a witness about what that witness personally saw or heard or did. Circumstantial evidence is proof of one or more facts from which you could find another fact. You should consider both kinds of evidence. The law makes no distinction between the weight to be given to either direct or circumstantial evidence. It is for you to decide how much weight to give to any evidence.
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Courts Instruction No. _____ EVIDENCE FOR LIMITED PURPOSE Some evidence may have been admitted for a limited purpose only. When I instruct you that an item of evidence has been admitted for a limited purpose, you must consider it only for that limited purpose and for no other.
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Courts Instruction No. _____ RULING ON OBJECTIONS There are rules of evidence that control what can be received into evidence. When a lawyer asks a question or offers an exhibit into evidence and a lawyer on the other side thinks that it is not permitted by the rules of evidence, that lawyer may object. If I overrule the objection, the question may be answered or the exhibit received. If I sustain the objection, the question cannot be answered, and the exhibit cannot be received. Whenever I sustain an objection to a question, you must ignore the question and must not guess what the answer might have been. Sometimes I may order that evidence be stricken from the record and that you disregard or ignore the evidence. That means that when you are deciding the case, you must not consider the evidence that I told you to disregard.
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Courts Instruction No. _____ CREDIBILITY OF WITNESSES In deciding the facts in this case, you may have to decide which testimony to believe and which testimony not to believe. You may believe everything a witness says, or part of it, or none of it. Proof of a fact does not necessarily depend on the number of witnesses who testify about it. In considering the testimony of any witness, you may take into account: (1) to; (2) (3) (4) (5) (6) (7) the witnesss memory; the witnesss manner while testifying; the witnesss interest in the outcome of the case and any bias or prejudice; whether other evidence contradicted the witnesss testimony; the reasonableness of the witnesss testimony in light of all the evidence; and any other factors that bear on believability. the opportunity and ability of the witness to see or hear or know the things testified
The weight of the evidence as to a fact does not necessarily depend on the number of witnesses who testify about it.
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Courts Instruction No. _____ EXPERT OPINION Some witnesses, because of education or experience, are permitted to state opinions and the reasons for those opinions. Opinion testimony should be judged just like any other testimony. You may accept it or reject it, and give it as much weight as you think it deserves, considering the witnesss education and experience, the reasons given for the opinion, and all the other evidence in the case.
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Courts Instruction No. _____ DEPOSITION IN LIEU OF LIVE TESTIMONY A deposition is the sworn testimony of a witness taken before trial. The witness is placed under oath to tell the truth and lawyers for each party may ask questions. The questions and answers are recorded. When a person is unavailable to testify at trial, the deposition of that person may be used at the trial. You should consider deposition testimony, presented to you in court in lieu of live testimony, insofar as possible, in the same way as if the witness had been present to testify.
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Courts Instruction No. _____ CHARTS AND SUMMARIES NOT RECEIVED IN EVIDENCE Certain charts and summaries not received in evidence have been shown to you in order to help explain the contents of books, records, documents, or other evidence in the case. They are not themselves evidence or proof of any facts. If they do not correctly reflect the facts or figures shown by the evidence in the case, you should disregard these charts and summaries and determine the facts from the underlying evidence.
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Courts Instruction No. _____ SUMMARY OF CONTENTIONS I will first give you a summary of each sides contentions in this case. I will then provide you with detailed instructions on what each side must prove to win on each of its contentions. Multimedia Patent Trust seeks money damages from Apple and LG for allegedly infringing the 226, 377, and 878 patents by making, importing, using, selling, and offering for sale products that Multimedia Patent Trust argues are covered by claim 12 of the 226 patent; claims 1, 2, 4, 8, 26, and 27 of the 377 patent; and claims 13, 15, 31, and 32 of the 878 patent. These are the asserted claims of the 226, 377, and 878 patents. The Apple product groupings that Multimedia Patent Trust alleges to infringe are: Claim 12 of the 226 Patent - iPhone 3GS, iPod Nano (5th Generation), and iPod Touch (3rd Generation) for the use of the VXD 375 decoder; Claims 1, 2, 4, 8, 26, and 27 of the 377 patent - iPhone 3GS, iPhone 4, iPod Nano (5th Generation), and iPod Touch (4rd Generation) for the use of the 720p encoder; Claims 1, 2, 4, 8, 26, and 27 of the 377 patent - iMac, MacBook, MacBook Pro, MacBook Air, Mac Mini, Mac Pro for the use of the JVTLib (QuickTime codec); Claims 13 and 15 of the 878 patent - iPhone 3GS, iPhone 4, iPod Touch (4th generation) for use of the VXD 375 decoder and 720p encoder; Claims 13, 15, 31 and 32 of the 878 patent - iPad 2, iPhone 4S for the use of the VXD 390 decoder and VXE 380 encoder; Claims 13 and 15 of the 878 patent iPad, iPod Touch (3rd generation), AppleTV (2nd generation) for the use of the VXD 375 decoder; Claims 31 and 32 of the 878 patent - iPod Nano (5th generation) for the use of the 720p encoder. The LG product groups that Multimedia Patent Trust alleges to infringe are: Claims 1, 2, 8, 26, and 27 of the 377 patent - Bliss UX700, Touch AX8575, Lotus Elite LX610, Mystique UN610, Samba LG8575, Chocolate Touch VX8575 for the inclusion of the Qualcomm MSM6575 chip; 21
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Claims 1, 2, 26, and 27 of the 377 patent - Neon GT365, Prime GS390, Encore GT550 for the inclusion of the Aricent codec.
Claims 13, 31, and 32 of the 878 patent - Bliss UX700, Touch AX8575, Lotus Elite LX610, Mystique UN610, Samba LG8575, Chocolate Touch VX8575 for the inclusion of the Qualcomm MSM6575 chip;
Claims 31 and 32 of the 878 patent - Neon GT365, Prime GS390, Encore GT550 for the inclusion of the Aricent codec.
Apple and LG deny that they have infringed the asserted claims of the 226, 377, and 878 patents and assert that, in addition, claim 12 of the 226 patent; claims 1, 2, 4, 8, 26, and 27 of the 377 patent; and claims 13, 15, 31, and 32 of the 878 patent are invalid Your job will be to decide whether or not claim 12 of the 226 patent; claims 1, 2, 4, 8, 26, and 27 of the 377 patent; and claims 13, 15, 31, and 32 of the 878 patent have been infringed and whether or not those claims are invalid. If you decide that any claim of the 226, 337, and 878 patent has been infringed and is not invalid, you will then need to decide any money damages to be awarded to Multimedia Patent Trust to compensate it for the infringement.
Source: Federal Circuit Bar Associate Model Instruction No. B 1; Doc. No. Doc. No. 650 (pretrial order).
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Courts Instruction No. _____ THE ROLE OF THE CLAIMS OF A PATENT Before you can decide many of the issues in this case, you will need to understand the role of patent claims. The patent claims are the numbered sentences at the end of each patent. The claims are important because it is the words of the claims that define what a patent covers. Each claim is effectively treated as if it were a separate patent, and each claim may cover more or less than another claim. Therefore, what a patent covers depends, in turn, on what each of its claims covers. You will first need to understand what each claim covers in order to decide whether or not there is infringement of the claim and to decide whether or not the claim is invalid. The law says that it is my role to define the terms of the claims and it is your role to apply my definitions to the issues that you are asked to decide in this case. Therefore, I have determined the meaning of the claims and I will provide to you my definitions of certain claim terms. You must accept my definitions of these words in the claims as being correct. It is your job to take these definitions and apply them to the issues that you are deciding, including the issues of infringement and validity.
Source: Federal Circuit Bar Associate Model Instruction No. B 2.1.
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Courts Instruction No. _____ HOW A CLAIM DEFINES WHAT IT COVERS I will now explain how a claim defines what it covers. A claim sets forth, in words, a set of requirements. Each claim sets forth its requirements in a single sentence. If a device or a method satisfies each of these requirements, as construed by the Court, then it is covered by the claim. There can be several claims in a patent. Each claim may be narrower or broader than another claim by setting forth more or fewer requirements. The coverage of a patent is assessed claim-by-claim. In patent law, the requirements of a claim are often referred to as claim elements or claim limitations. When a thing (such as a product or a process) meets all of the requirements of a claim, the claim is said to cover that thing. In other words, a claim covers a product or process where each of the claim elements or limitations is present in that product or process. Sometimes the words in a patent claim are difficult to understand, and therefore it is difficult to understand what requirements these words impose. It is my job to explain to you the meaning of the words in the claims and the requirements these words impose. As I just instructed you, there are certain specific terms that I have defined and you are to apply the definitions that I provide to you. By understanding the meaning of the words in a claim and by understanding that the words in a claim set forth the requirements that a product must meet in order to be covered by that claim, you will be able to understand the scope of coverage for each claim. Once you understand what each claim covers, then you are prepared to decide the issues that you will be asked to decide, such as infringement and invalidity.
Source: Federal Circuit Bar Associate Model Instruction No. B 2.2.
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Courts Instruction No. _____ INTERPRETING SECTION 112, PARAGRAPH 6 CLAIMS All of the claims asserted by Multimedia Patent Trust in this casethat is, claim 12 of the 226 patent; claims 1, 2, 4, 8, and 26 of the 377 patent; and claims 13, 15, 31, and 32 of the 878are written in a specific format frequently referred to as means-plus-function. These claims use the phrase means for, and then after that phrase a function is stated. This means for phrase has a special meaning in patent lawit does not cover every possible means that could perform the stated function. Rather, the means for phrase has a specific structure from the patent specification that I have defined and will describe to you later in my instructions. For each meansplus-function element in each claim, you should apply my definition of the function and the specific structures I have identified as you would apply my definition of any other claim term. Later on I will inform you of how to apply the function and structures in considering whether the accused products infringe the means-plus-function claims of the 226, 377, and 878 patents.
Source: Federal Circuit Bar Associate Model Instruction No. B 2.3a; 35 U.S.C. 112, 6; Allvoice Computing PLC v. Nuance Commcns, Inc., 504 F.3d 1236, 1240-41 (Fed. Cir. 2007); Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1266-67 (Fed. Cir. 1999).
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Courts Instruction No. _____ INDEPENDENT AND DEPENDENT CLAIMS This case involves two types of patent claims: independent claims and dependent claims. An independent claim sets forth all of the requirements that must be met in order to be covered by that claim. Thus, it is not necessary to look at any other claim to determine what an independent claim covers. In this case, claim 12 of the 226 patent; claims 1and 26 of the 377 patent; and claims 13, 31, and 32 of the 878 patent are each independent claims. The remaining claims in the 226, 377, and 878 patents are dependent claims. A dependent claim does not itself recite all of the requirements of the claim but refers to another claim for some of its requirements. In this way, the claim depends on another claim. A dependent claim incorporates all of the requirements of the claim(s) to which it refers. The dependent claim then adds its own additional requirements. To determine what a dependent claim covers, it is necessary to look at both the dependent claim and any other claim(s) to which it refers. A product that meets all of the requirements of both the dependent claim and the claim(s) to which it refers is covered by that dependent claim.
Source: Federal Circuit Bar Associate Model Instruction No. B 2.2a.
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Courts Instruction No. _____ THE COURTS CLAIM INTERPRETATION In attachment A to these instructions, I provide you with the Courts determination as to the meaning of some of the words of the claims in this case, including the identified function and disclosed structures for the means-plus-function claims. As I have previously instructed you, you must accept my definition of these words in the claims as correct. For any words in the claim for which I have not provided you with a definition, you should apply their common meaning based on the understanding of a person of ordinary skill in the art in question at the time of the invention. You should not take my definition of the language of the claims as an indication that I have a view regarding how you should decide the issues that you are being asked to decide, such as infringement and invalidity. These issues are yours to decide.
Source: Federal Circuit Bar Associate Model Instruction No. B 2.3, Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc) (ordinary and customary meaning is based on the understanding of a person of ordinary skill in the art in question at the time of the invention).
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Courts Instruction No. _____ INFRINGEMENTBURDEN OF PROOF I will now instruct you on the rules you must follow in deciding whether or not Multimedia Patent Trust has proven that claim 12 of the 226 patent; claims 1, 2, 4, 8, 26, and 27 of the 377 patent; and claims 13, 15, 31, and 32 of the 878 patent are infringed. In order to prove infringement of any of these asserted claims, Multimedia Patent Trust must prove by a preponderance of the evidence that each requirement of the claim is present in the product accused of infringement.
Source: Federal Circuit Bar Associate Model Instruction No. B 3.1; Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1341 (Fed. Cir. 2001); Braun Inc. v. Dynamics Corp., 975 F.2d 815, 819 (Fed. Cir. 1992); Southwall Tech., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed. Cir. 1995).
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Courts Instruction No. _____ INFRINGEMENT GENERALLY I will now instruct you how to decide whether or not Apple and/or LG have infringed the 226, 377, and/or 878 patents. Infringement is assessed on a claim-by-claim basis. Therefore, there may be infringement as to one claim but no infringement as to another.
Source: Federal Circuit Bar Associate Model Instruction No. B 3.1; Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1341 (Fed. Cir. 2001); Braun Inc. v. Dynamics Corp., 975 F.2d 815, 819 (Fed. Cir. 1992); Southwall Tech., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed. Cir. 1995).
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Courts Instruction No. _____ INFRINGEMENT BY LITERAL INFRINGEMENT In order to prove infringement, Multimedia Patent Trust must prove by a preponderance of the evidence that Apple and/or LG made, used, sold, offered for sale within, or imported into the United States a product that meets all of the requirements of a claim and did so without the permission of Multimedia Patent Trust during the time the patents-in-suit were in force. You must compare each accused product with each and every one of the requirements of a claim to determine whether all of the requirements of that claim are met by the accused product. You must determine, separately for each asserted claim, whether or not there is infringement. There is one exception to this rule. If you find that a claim on which other claims depend is not infringed, there cannot be infringement of any dependent claim that refers directly or indirectly to that independent claim. On the other hand, if you find that an independent claim has been infringed, you must still decide, separately, whether the product meets additional requirements of any claims that depend from the independent claim, thus, whether those claims have also been infringed. A dependent claim includes all the requirements of any of the claims to which it refers plus additional requirements of its own.
Source: Federal Circuit Bar Associate Model Instruction No. B 3.1a; Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1341 (Fed. Cir. 2001); Braun Inc. v. Dynamics Corp., 975 F.2d 815, 819 (Fed. Cir. 1992); Southwall Tech., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed. Cir. 1995).
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Courts Instruction No. _____ INFRINGEMENT BY LITERAL INFRINGEMENT OF SECTION 112, PARAGRAPH 6 CLAIM REQUIREMENTS As I have previously explained, claim 12 of the 226 patent; claims 1, 2, 4, 8, and 26 of the 377 patent; and claims 13, 15, 31, and 32 of the 878 patent include requirements that are in means-plus-function form. A product meets a means-plus-function requirement of a claim if: (1) it has a structure that performs the identical function recited in the claim, and (2) that structure is either identical or equivalent to the specific structure that I defined earlier as performing the required function. If the product does not perform the specific function recited in the claim, the means-plus-function requirement is not met, and the product does not infringe the claim. Alternatively, even if the product has a structure that performs the function recited in the claim but the structure is not either identical or equivalent to the specific structure that I defined to you as being described in the 226, 377, and 878 patents and performing this function, the product does not infringe the asserted claim. A structure in an accused product may be found to be equivalent to the specific structure I have defined if a person having ordinary skill in the field of technology of the 226, 377, and 878 patents would have found the accused structure performed the function in substantially the same way to accomplish substantially the same result. In deciding whether the differences would be insubstantial, one factor you may consider is whether a person having an ordinary level of skill in the field of technology of the patent would have known of the interchangeability of the accused structure and the specific structure identified for the claim. Interchangeability itself is not sufficient; in order for the structures to be considered to be interchangeable, the interchangeability of the two structures must have been known to persons of ordinary skill in that art at the time the patent issued. Moreover, although two structures that perform the same function may be substituted for one another, the question of interchangeability, known to persons of ordinary skill in the art, is not whether both structures serve the same function, but whether it was known that one structure was an equivalent of the other 31
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and performed the same function in substantially the same way to yield substantially the same result. An accused structure is not equivalent to the specific claimed structure I have defined if the accused structure was not available at the time the relevant patent issued. In other words, if Multimedia Patent Trust argues that a particular structure in one of the Apple or LG accused products is equivalent to the specific structure I have identified for a means-plus-function element, the accused structure will not be equivalent if it was not available at the time the patent issued. The fact that an accused structure is known now and you believe it is equivalent, that is not enough. The structure must also have been available at the time the patent issued. The availability of a general purpose processor, or tools to create a general purpose or special purpose processor, does not render a processor programmed with a specific algorithm available if that algorithm was not known by those in the art at the time the relevant patent issued. In this case, you will have to decide issues regarding field of technology and level of ordinary skill in the art. I will instruct you later how to decide this. In order to prove infringement of a means-plus-function limitation, Multimedia Patent Trust must prove the above requirements are met by a preponderance of the evidence.
Source: Federal Circuit Bar Associate Model Instruction No. B 3.1b; 35 U.S.C. 112, 6; Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1266-67 (Fed. Cir. 1999) (the statutory equivalence analysis requires a determination of whether the way the assertedly substitute structure performs the claimed function, and the result of that performance, is substantially different from the way the claimed function is performed by the corresponding structure, acts, or materials described in the specification, or its result.); Chiuminatta Concrete Concepts, Inc. v. Cardinal Industries, Inc., 145 F.3d 1303, 1307-10 (Fed. Cir. 1998); Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361 (Fed. Cir. 2012) (finding control means terms as indefinite for failure to disclose corresponding structure); General Protecht Group, Inc. v. International Trade Com'n, 619 F.3d 1303, 1313 (Fed. Cir. 2010); Toro Co. v. Deere & Co., 355 F.3d 1313, 32
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1323-34 (Fed. Cir. 2004); Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364-65 (Fed. Cir. 2000); WMS Gaming, Inc. v. International Game Technology, 184 F.3d 1339, 1349 (Fed. Cir. 1999) (In a means-plus-function claim in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.); Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005) (holding that corresponding structure of the time domain processing means cannot be merely a symbol processor but must incorporate the disclosed algorithm); Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 521 F.3d 1328, 1333 (Fed. Cir. 2008) (In cases involving a computer-implemented invention in which the inventor has invoked means-plus-function claiming, this court has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor. The point of the requirement that the patentee disclose particular structure in the specification and that the scope of the patent claims be limited to that structure and its equivalents is to avoid pure functional claiming.).
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Courts Instruction No. _____ INVALIDITYBURDEN OF PROOF I will now instruct you on the rules you must follow in deciding whether or not Apple and/or LG have proven that claim 12 of the 226 patent; claims 1, 2, 4, 8, 26, and 27 of the 377 patent; and claims 13, 15, 31, and 32 of the 878 patent are invalid. To prove that any claim of a patent is invalid, Apple and/or LG must persuade you by clear and convincing evidence.
Source: Federal Circuit Bar Associate Model Instruction No. B 4.1; 35 U.S.C. 282; Microsoft Corp. v. i4i Limited Partnerhsip, 131 S.Ct. 2238 (2011).
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Courts Instruction No. _____ WRITTEN DESCRIPTION REQUIREMENT The patent law contains certain requirements for the part of the patent called the specification. Apple and LG contend that claim(s) 13, 15, and 31 of Multimedia Patent Trusts 878 patent are invalid because the specification of the 878 patent does not contain an adequate written description of non-interlaced fields. To succeed, Apple and/or LG must show by clear and convincing evidence that the specification fails to meet the laws requirements for written description of non-interlaced fields. In the patent application process, the applicant may keep the originally filed claims, or change the claims between the time the patent application is first filed and the time a patent is issued. An applicant may amend the claims or add new claims. These changes may narrow or broaden the scope of the claims. The written description requirement ensures that the issued claims correspond to the scope of the written description that was provided in the original application. In deciding whether the patent satisfies this written description requirement, you must consider the description from the viewpoint of a person having ordinary skill in the field of technology of the patent when the application was filed. The written description requirement is satisfied if a person having ordinary skill reading the original patent application would have recognized that it describes the full scope of the claimed invention as it is finally claimed in the issued patent and that the inventor actually possessed that full scope by the filing date of the original application. The written description requirement may be satisfied by any combination of the words, structures, figures, diagrams, formulas, etc., contained in the patent application. The full scope of a claim or any particular requirement in a claim need not be expressly disclosed in the original patent application if a person having ordinary skill in the field of technology of the patent at the time of filing would have understood that the full scope or missing requirement is in the written description in the patent application. However, the written description requirement is not satisfied simply because non-interlaced fields would have theoretically been known to one of ordinary skill in the art. 35
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Source: Federal Circuit Bar Associate Model Instruction No. B 4.2a; 35 U.S.C. 112, 1, 2; Lizard Tech., Inc. v. Earth Res. Mapping Inc., 424 F.3d 1336 (Fed. Cir. 2005); ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1372-79 (Fed. Cir. 2009).
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Courts Instruction No. _____ ENABLEMENT The patent law contains certain requirements for the part of the patent called the specification. Apple and LG contend that claim(s) 13, 15, and 31 of Multimedia Patent Trusts 878 patent are invalid because the specification does not contain a sufficiently full and clear description of how to make and use non-interlaced fields. To succeed, Apple and/or LG must show by clear and convincing evidence that the 878 patent does not contain a sufficiently full and clear description of non-interlaced fields. To be sufficiently full and clear, the description must contain enough information to have allowed a person having ordinary skill in the field of technology of the patent to make and use the non-interlaced fields at the time the patent application was filed. This is known as the enablement requirement. If a patent claim is not enabled, it is invalid. In order to be enabling, the patent must permit persons having ordinary skill in the field of technology of the patent to make and use the full scope of the claimed invention at the time of filing without having to conduct undue experimentation. However, some amount of experimentation to make and use the invention is allowable. In deciding whether a person having ordinary skill would have to experiment unduly in order to make and use the invention, you may consider several factors: (1) the time and cost of any necessary experimentation; (2) how routine any necessary experimentation is in the field of video processing; (3) whether the patent discloses specific working examples of the claimed invention; (4) the amount of guidance presented in the patent; (5) the nature and predictability of the field of video processing; (6) the level of ordinary skill in the field of video processing; and (7) the scope of the claimed invention. No one or more of these factors is alone dispositive. Rather, you must make your decision whether or not the degree of experimentation required is undue based upon all of the evidence presented to you. You should weigh these factors and determine whether or not, in the context of 37
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this invention and the state of the art at the time of the application, a person having ordinary skill would need to experiment unduly to make and use the full scope of the claimed invention.
Source: Federal Circuit Bar Associate Model Instruction No. B 4.2b; 35 U.S.C. 112, 1; LizardTech Inc. v. Earth Resource Mapping Pty Ltd., 424 F.3d 1336, 1344-45 (Fed. Cir. 2005); AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1244-45 (Fed. Cir. 2003).
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Courts Instruction No. _____ PRIOR ART Prior art may include items that were publicly known or that have been used or offered for sale, publications, or patents that disclose the claimed invention or elements of the claimed invention. To be prior art, the item or reference must have been made, known, used, published, or patented either before the invention was made or more than one year before the filing date of the patent application. For the claim to be invalid because it is not new, Apple and/or LG must show that all of the requirements of that claim were present in a single previous device or method that was known of, used, or described in a single previous printed publication or patent. We call these things anticipating prior art. To anticipate the invention, the prior art does not have to use the same words as the claim, but all of the requirements of the claim must have been disclosed, either stated expressly or implied to a person having ordinary skill in the art in the technology of the invention, so that looking at that one reference, that person could make and use the claimed invention. In this case, you must also determine the date of conception and/or reduction to practice for the inventions claimed in the 878 patent. The date of invention is either when the invention was reduced to practice or when conceived, provided the inventors were diligent in reducing the invention to practice. Diligence means working continuously, though not necessarily every day. Conception is the mental part of an inventive act, i.e., the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice, even if the inventor did not know at the time that the invention would work. Conception of an invention is complete when the idea is so clearly defined in the inventors mind that, if the idea were communicated to a person having ordinary skill in the field of the technology, he or she would be able to reduce the invention to practice without undue research or experimentation. This requirement does not mean that the inventor has to have a prototype built, or actually explained her or his invention to another person. But, there must be some documentary evidence beyond the inventors own testimony that confirms the date on which the inventor had the
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complete idea. Conception may be proven when the invention is shown in its complete form by drawings, disclosure to another person, or other forms of evidence presented at trial. A claimed invention is reduced to practice when it has been constructed, used, or tested sufficiently to show that it will work for its intended purpose or when the inventor files a patent application. An invention may also be reduced to practice even if the inventor has not made or tested a prototype of the invention if it has been fully described in a filed patent application.
Source: Federal Circuit Bar Associate Model Instruction No. B 4.3a; 35 U.S.C. 102(a)-(g); Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed.Cir.1996); Gasser Chair Co. v. Infanti Chair Mfg. Corp., 60 F.3d 770, 776 (Fed.Cir.1995).
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Courts Instruction No. _____ PRINTED PUBLICATION In this case, you must determine whether certain references constitute printed publications. Whether a given reference is a printed publication depends on whether it was publicly accessible. A reference does not need to be accessible to all to be publicly accessible. A given reference is publicly accessible upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it.
Source: Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1377-78 (Fed. Cir. 2006); Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560 (Fed. Cir. 1988); In re Hall, 781 F.2d 897, 898899 (Fed. Cir. 1986); Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1305-6 (Fed. Cir. 2006); Massachusetts Institute of Technology v. AB Fortia, 774 F.2d 1104, 1108-09 (Fed. Cir. 1985); In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir. 2004).
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Courts Instruction No. _____ ANTICIPATION In order for someone to be entitled to a patent, the invention must actually be new. Apple and LG contend that the asserted claims of the 226, 377, and 878 patents are invalid because the claimed invention(s) are anticipated. Apple and/or LG must convince you of this by clear and convincing evidence. Whether the claims are invalid because the claimed invention(s) are anticipated must be determined on a claim-by-claim basis. Here is a list of ways that Apple and/or LG can show that a patent claim was not new. (1) An invention is not new if it was known to or used by others in the United States before the date of invention. An invention is known when the information about it was reasonably accessible to the public on that date. The date of invention you are to use for the 226 patent is September 27, 1989, which is the filing date of the patent, and for the 377 patent the date of invention is December 11, 1990, which is also the filing date of the patent. Multimedia Patent Trust contends that the date of invention of the 878 patent is before the patent was filed on November 15, 1991, and that the invention was conceived no later than May 10, 1991. An inventor's oral testimony regarding conception must be corroborated by contemporaneous documents which show that the inventor disclosed to others his completed thought expressed in such clear terms as to enable those skilled in the art to make the claimed invention. Apple and LG contend that the evidence does not establish an invention date for the 878 patent before November 15, 1991, the date the 878 patent was filed. (2) An invention is not new if it was already patented or described in a printed publication, anywhere in the world before the date of the invention. I have already described how to determine the date of invention for each patent. (3) Multimedia Patent Trust has lost its rights if the claimed invention was already patented or described in a printed publication, anywhere in the world by anyone, more than a year before the filing date of the application for the patent. An invention was patented by another if the other patent describes the same invention claimed by Multimedia Patent Trust to a person having ordinary skill in the technology. As I have already indicated, the filing dates for the patents-in-suit 42
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are September 27, 1989 for the 226 patent; December 11, 1990 for the 377 patent; and November 15, 1991 for the 878 patent. (4) An invention is not new if the claimed invention was described in a patent granted on an application for patent by another filed in the United States and the application was filed before the date of reduction to practice of the invention or, if the reduction to practice date is not shown, the filing date of the application for the patent. For the 226 and 377 patents, you are to use the filing dates: September 27, 1989 for the 226 patent and December 11, 1990 for the 377 patent. Multimedia Patent Trust contends that the reduction to practice date of the 878 Patent is no later than September 1991, which is before the 878 patent was filed on November 15, 1991. Apple and LG contend that the evidence does not supports a reduction to practice date for the878 patent before November 15, 1991, the date the patent was filed.
Source: Federal Circuit Bar Associate Model Instruction No. B 4.3b; 35 U.S.C. 102(a)-(g); Lewmar Marine, Inc. v. Barient, Inc., 827 F.2d 744, 747 (Fed. Cir. 1987); Spansion, Inc. v. International Trade Com'n, 629 F.3d 1331, 1356 (Fed. Cir. 2010) (Because it is a mental act, an inventor's oral testimony regarding conception must be corroborated by evidence which shows that the inventor disclosed to others his completed thought expressed in such clear terms as to enable those skilled in the art to make the invention.).
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Courts Instruction No. _____ OBVIOUSNESS Even though an invention may not have been identically disclosed or described before it was made by an inventor, in order to be patentable, the invention must also not have been obvious to a person of ordinary skill in the field of technology of the patent at the time the invention was made. Apple and/or LG may establish that a patent claim is invalid by showing, by clear and convincing evidence, that the claimed invention would have been obvious to persons having ordinary skill in the art at the time the invention was made in the field of video processing. In determining whether a claimed invention is obvious, you must consider the level of ordinary skill in the field video processing that someone would have had at the time the claimed invention was made or one year before the filing date, the scope and content of the prior art, and any differences between the prior art and the claimed invention. Keep in mind that the existence of each and every element of the claimed invention in the prior art does not necessarily prove obviousness. In considering whether a claimed invention is obvious, you may but are not required to find obviousness if you find that at the time of the claimed invention or one year before the filing date there was a reason that would have prompted a person having ordinary skill in the field of the invention to combine the known elements in a way the claimed invention does, taking into account such factors as (1) whether the claimed invention was merely the predictable result of using prior art elements according to their known function(s); (2) whether the claimed invention provides an obvious solution to a known problem in the relevant field; (3) whether the prior art teaches or suggests the desirability of combining elements claimed in the invention; (4) whether the prior art teaches away from combining elements in the claimed invention; (5) whether it would have been obvious to try the combinations of elements, such as when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions; and (6) whether the change resulted more from design incentives or other market forces. To find it rendered the invention obvious, you must find that the prior art
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provided a reasonable expectation of success. Obvious to try is not sufficient in unpredictable technologies. In determining whether the claimed invention was obvious, consider each claim separately. Do not use hindsight, i.e., consider only what was known at the time of the invention or one year before the filing date. In making these assessments, you should take into account any objective evidence (sometimes called secondary considerations) that may have existed at the time of the invention or one year before the filing date and afterwards that may shed light on the obviousness or not of the claimed invention, such as: a. Whether the invention was commercially successful as a result of the merits of the claimed invention (rather than the result of design needs or market-pressure advertising or similar activities); b. Whether the invention satisfied a long-felt need; c. Whether others had tried and failed to make the invention; d. Whether others invented the invention at roughly the same time; e. Whether others copied the invention; f. Whether there were changes or related technologies or market needs contemporaneous with the invention; g. Whether the invention achieved unexpected results; h. Whether others in the field praised the invention; i. Whether persons having ordinary skill in the art of the invention expressed surprise or disbelief regarding the invention; j. Whether others sought or obtained rights to the patent from the patent holder; and k. Whether the inventor proceeded contrary to accepted wisdom in the field. In deciding what the level of ordinary skill in the field of video processing is, you should consider all the evidence introduced at trial, including but not limited to: (1) the levels of education and experience of the inventor and other persons actively working in the field; (2) the types of problems encountered in the field; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; and (5) the sophistication of the technology. 45
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In considering whether the claimed invention was obvious at the time it was made, you should consider the scope and content of the following prior art: (1) (2) (3) (4) (5) Micke Thesis; H.261 Document 103R; H.261 Document 22; H.261 Document 78; "Front/Rear Frame Adaptive Predictive Encoding System Suitable for Storage
Media" by Sugiyama; (6) (7) (8) (9) (10) (11) (12) (13) (14) (15) MPEG Document 90/176; "Digital Pictures, Representation and Compression"; "A Perceptually Tuned Sub-band Image Coder" by Safranek and Johnston; Japanese Patent Publication No. H2-237368; H.261 document 408; H.261 Document 373; U.S. Patent No. 5,091,782; U.S. Patent No. 5,093,720; Digicipher HDTV System Description; "Fixed and Adaptive Predictors for Hybrid Predictive/Transform Coding," by
Steffan Ericsson; and (16) MPEG Document 91/006.
Source: Federal Circuit Bar Associate Model Instruction No. B 4.3c; 35 U.S.C. 103(a); KSR International Co. v. Teleflex Inc., 550 U.S. 398, 407 (2007); Eisai Co. v. Dr. Reddys Labs. Ltd., 533 F.3d 1353, 1356-57 (Fed. Cir. 2008); Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1356-64 (Fed. Cir. 2007).
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Courts Instruction No. _____ DAMAGESINTRODUCTION If you find that Apple or LG infringed any valid claim of the 226, 377, and 878 patents, you must then consider what amount of damages to award to Multimedia Patent Trust. I will now instruct you about the measure of damages. By instructing you on damages, I am not suggesting which party should win this case, on any issue. The damages you award must be adequate to compensate Multimedia Patent Trust for the alleged infringement. Damages may not be awarded to punish Apple or LG. Your damages award, if you reach this issue, should only provide Multimedia Patent Trust with compensation. Multimedia Patent Trust has the burden to establish the amount of its damages by a preponderance of the evidence. In other words, you should award only those damages that Multimedia Patent Trust establishes that it more likely than not suffered. In this case, Multimedia Patent Trust seeks reasonable royalty. A reasonable royalty is defined as the money amount the patent holder and the alleged infringer would have agreed upon as a fee for use of the invention at the time prior to when alleged infringement began. I will give more detailed instructions regarding damages shortly.
Source: Federal Circuit Bar Associate Model Instruction No. B 6.1; Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1340 (Fed. Cir. 2009).
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Courts Instruction No. _____ REASONABLE ROYALTYENTITLEMENT If you find that Multimedia Patent Trust has established infringement, Multimedia Patent Trust is entitled to a reasonable royalty to compensate it for that infringement to the extent Multimedia Patent Trust establishes that royalty by a preponderance of the evidence.
Source: Federal Circuit Bar Associate Model Instruction No. B 6.5; 35 U.S.C. 284; Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1340 (Fed. Cir. 2009); Lindemann Maschinenfabrik GmbH v. American Hoist & Derrick Co., Harris Press & Shear Div. 895 F.2d 1403, 1406-8 (Fed. Cir. 1990); Lucent Tech., Inc. v. Microsoft Corp., 837 F.Supp.2d 1107 (S.D.Cal. 2011) (granting judgment as a matter of law and reducing damages award).
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Courts Instruction No. _____ REASONABLE ROYALTYDEFINITION A royalty is a payment made to a patent holder in exchange for the right to make, use, or sell the claimed invention. A reasonable royalty is the amount of royalty payment that a patent holder and the infringer would have agreed to in a hypothetical negotiation taking place at a time just before the infringement first began. In considering this hypothetical negotiation, you should focus on what the expectations of the patent holder and the infringer would have been had they entered into an agreement at that time, and had they acted reasonably in their negotiations. In determining this, you must assume that both parties believed the patent was valid and infringed and the patent holder and infringer were willing to enter into an agreement. The reasonable royalty you determine must be a royalty that would have resulted from the hypothetical negotiation, and not simply a royalty either party would have preferred. The resulting royalty should be reasonable something that would be accepted by a prudent licensee who wished to obtain a license and a prudent patent owner who wished to grant a license. In this case, the parties agree that the hypothetical negotiation would take place in January 2005 for Apple. In determining the amount of damages, however, Multimedia Patent Trust is not entitled to damages from Apple before March 15, 2007. LG asserts that the hypothetical negotiation between LG and Multimedia Patent Trust would have occurred in June 2009. Multimedia Patent Trust asserts that the hypothetical negotiation between LG and Multimedia Patent Trust would have occurred in May 2009.
Source: Federal Circuit Bar Associate Model Instruction No. B 6.6; Lucent Technologies, Inc. v. Microsoft Corporation, S.D. Cal. Case No. 3:07-cv-02000-H, Final Jury Instructions, Doc. No. 1392 at Instruction No. 14; Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120-22 (S.D.N.Y. 1970); Lucent Technologies, Inc. v. Gateway, Inc., 580 F. 3d 1301, 1334 (Fed. Cir. 1999).
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Courts Instruction No. _____ NO CONSIDERATION OF OVERALL PROFITS / REVENUES; APPORTIONMENT OF REASONABLE ROYALTY In making your decision on what the reasonable royalty should be in this case, you may not consider the overall revenues for the accused products at issue. Also, in making your decision on what the reasonable royalty should be in this case, you may not consider the profitability of the accused products at issue. You also may not consider the overall revenues, profitability, or market position of Apple or LG. These numbers are not relevant to your damages analysis, and you should not consider or speculate on them in your deliberations. Each of the Apple and LG accused products is made up of many features, and the accused technology is just one component of many in extremely complex products with thousands of features. Therefore, for each of the accused products, damages cannot be calculated on the whole accused product for the reason that the entire value of the whole product, as a marketable article, is not properly attributable to the patented feature. Multimedia Patent Trust must give evidence to separate or apportion between the patented feature and the unpatented features, and such evidence must be reliable and tangible and not conjectural or speculative.
Source: Doc. No. 653 at 11 (MPT is precluded from stating or providing evidence showing Defendants revenues or profits.); 35 U.S.C. 284 (a reasonable royalty for the use made of the invention by the infringer); Garretson v. Clark, 111 U.S. 120, 121 (1881); Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011); Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1337 (Fed. Cir. 2009); Garretson v. Clark, 111 U.S. 120, 121 (1884); Lucent Technologies, Inc. v. Microsoft Corporation, S.D. Cal. Case No. 3:07-cv-02000-H, Final Jury Instructions, Doc. No. 1392 at Instruction No. 28.
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Courts Instruction No. _____ REASONABLE ROYALTYFORM Payment of a reasonable royalty can be structured in different ways, and you may decide whatever payment structure you find is supported by a preponderance of the evidence. One way to calculate a royalty is to determine what is called a running royalty. To determine a running royalty you must determine the royalty on a per-unit basis. Another way to calculate a royalty is to determine a one-time lump sum payment that the infringer would have paid at the time of the hypothetical negotiation for a license covering all sales of the licensed product. This differs from payment of an running royalty because, with a running royalty, the licensee pays based on the number of licensed products it sells. When a one-time lump sum is paid, the infringer pays a single price for a license at the outset of the infringement It is for you to determine which form of royalty is appropriate in this case, based on all of the evidence you have heard.
Source: 35 U.S.C. 284; Lucent Technologies, Inc. v. Gateway, Inc., 580 F. 3d 1301 (Fed. Cir. 2009); (Fed. Cir. 1983) (discussing lump sum and running royalties); N.D.Cal. Model Patent Jury Instructions 5.7.
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Courts Instruction No. _____ REASONABLE ROYALTYPERMISSIBLE FACTORS In determining the reasonable royalty, you should consider all the facts known and available to the parties at the time the alleged infringement began. I will now discuss some of the factors that you may consider in making your determination. The first two factors are: (1) The royalties received by the patentee for the licensing of the patents-in-suit. (2) The rates paid by the licensee for the use of other patents comparable to the patents-insuit. When evaluating evidence about amounts paid under licenses, you should consider whether and to what extent such licenses were comparablethat is, were the technology exchanged and the terms of the license similar in terms and scope to the technology of the patents-in-suit and the license for the patents in the hypothetical negotiation. When a license for the patents-in-suit conveys rights broader than the patent rights, the license may not be relevant to determining a reasonable royalty. In addition, in evaluating whether licenses are comparable to the hypothetical negotiation, you may consider: - how many patents were licensed, - the type of technology licensed and whether it is similar or dissimilar to the technology of the patents-in-suit, - what products were covered by the license, - whether the licensed technology was important to the licensed product or was only a small component or feature of the product, - whether the license provided for an up-front lump sum royalty payment, or for running royalty payments based on the licensee's sales or usage of the licensed technology. - whether the type of payment lump sum or running royalty is the same as the same type requested in the lawsuit. When evaluating evidence about amounts paid under other licenses or sales, you should also consider whether those amounts were paid against a backdrop of litigation. License fees negotiated in the face of a threat of high litigation costs may be strongly influenced by a desire to avoid full litigation.
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Other factors you may consider in making your determination as to the form and amount of a reasonable royalty are: (3) The nature and scope of the license, as exclusive or nonexclusive, or as restricted or nonrestricted in terms of territory or with respect to whom the manufactured product may be sold. (4) The licensors efforts to preserve its monopoly as the sole practitioner of the invention by not licensing others to use the invention or by granting licenses under special conditions designed to preserve that monopoly. (5) The commercial relationship between the licensor and licensee, such as whether they are competitors in the same territory in the same line of business, or whether they are inventor and promoter. (6) The duration of the patent and the term of the license. (7) The utility and advantages of the patented property over the old modes or devices, if any, that had been used for working out similar results. (8) The nature of the patented invention and the benefits to those who have used the invention. (9) The extent to which the alleged infringer has made use of the invention and any evidence probative of the value of that use. (10) The portion of the profit or of the selling price that may be customary in the particular business or in comparable business to allow for the use of the invention or analogous inventions. (11) The portion of the realizable profits that should be credited to the invention as distinguished from nonpatented elements, the manufacturing process, business risks, or significant features or improvements added by the alleged infringer. (12) The opinion and testimony of qualified experts. (13) The amount that a licensor (such as the patentee) and a licensee (such as the alleged infringer) would have agreed upon (at the time the alleged infringement began) if both had been reasonably and voluntarily trying to reach an agreement; that is, the amount which a prudent licenseewho desired, as a business proposition, to obtain a license to manufacture and sell a particular article embodying the patented inventionwould have been willing to pay as a royalty 53
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and yet be able to make a reasonable profit and which amount would have been acceptable by a prudent patentee who was willing to grant a license. The above factors are overlapping and are not prioritized. No one factor is dispositive and you can and should consider the evidence that has been presented to you in this case on each of these factors. You may also consider any other factors which in your mind would have increased or decreased the royalty the alleged infringer would have been willing to pay and the patent holder would have been willing to accept, acting as normally prudent business people. The final factor (number 13) establishes the framework which you should use in determining a reasonable royalty, that is, the payment that would have resulted from a negotiation between the patent holder and the alleged infringer taking place at a time prior to when the alleged infringement began.
In the Alternative In this case Multimedia Patent Trust has conceded that the accused features do not provide the basis for customer demand. Thus, based on the facts of this case, providing Georgia-Pacific factor 8 to the jury violates the entire market value. Under Lucent and Uniloc the overall profitability of the product made under the patents, its commercial success, and its current popularity are irrelevant where Multimedia Patent Trust has failed to allege the patented features form the basis of customer demand. If the Court disagrees, however, then Apple and LG offer that the Court should add Georgia-Pacific factor (8) as (8) The established profitability of the patented feature in the accused products, the commercial success of the patented features, and the current popularity of the patented features with the list renumbered accordingly. In this case Multimedia Patent Trust has failed to assert let alone show that the accused features promote sales of other products of the licensee. Thus, based on the facts of this case, providing Georgia-Pacific factor 6 would be misleading. If the Court disagrees, however, then Apple and LG offer that the Court should add Georgia-Pacific factor (6) as (6) The effect of selling the patented specialty in promoting sales of other products of the licensee, the existing
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value of the invention to the licensor as a generator of sales of his nonpatented items, and the extent of such derivative or convoyed sales with the list renumbered accordingly.
Source: Federal Circuit Bar Associate Model Instruction No. B 6.6; Doc. No. 653 at 11 (MPT is precluded from stating or providing evidence showing Defendants revenues or profits.); Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1329 (Fed. Cir. 2009); Trell v. Marlee Elecs. Corp., 912 F.2d 1443 (Fed. Cir. 1990) (holding that license agreement conveying broader rights than patent-in-suit compelled reversal of damages award); ResQNet. com, Inc. v. Lansa, Inc., 594 F.3d 860 (Fed. Cir. 2010) (commenting that the Georgia-Pacific factors are unprioritized and often overlapping; approving of Trell v. Marlee); Wordtech Sys. v. Integrated Networks Solutions, 609 F.3d 1308 (Fed. Cir. 2010); Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011); LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51 (Fed. Cir. 2012) (noting [t]he propriety of using prior settlement agreements to prove the amount of a reasonable royalty is questionable and finding that Plaintiffs litigation settlement was not comparable).
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Dated: November 26, 2012
FISH & RICHARDSON P.C.
By: s/Francis J. Albert Francis J. Albert (SBN 247741), albert@fr.com Attorneys for Defendants Apple Inc. and LG Electronics, Inc., LG Electronics U.S.A., Inc., LG Electronics Mobilecomm U.S.A., Inc.
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Attachment A
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UNITED STATES PATENT NUMBER 5,227,878 (878 Patent) The 878 Patent is directed to a video encoding and decoding system. The 878 suggests improved compression may be accomplished by adaptive and selective coding of digital signals relating to frames and fields of the video image. 878 Patent Abstract. Claims 13, 15, and 31: frame The specification of the 878 patent expressly defines the term frame as [a] complete set of digital representations for an image. 878 Patent col. 4:7-9. Where, as here, the patentee acts as its own lexicographer to define a term used in the patent claims, and that term is used consistently throughout the specification, one of ordinary skill in the art is properly on notice as to the definition of that term in the context of the patent. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999). Accordingly, the Court construes frame to mean a complete set of digital representation for an image. 2. Claims 13 and 31: fields and Claim 1: interlaced fields Defendants urge the Court to construe fields and interlaced fields coextensively as horizontal rows of picture elements, arranged as either even-numbered horizontal rows or oddnumbered horizontal rows. (Doc. No. 225 at 10-15.) MPT urges the Court to construe the two terms differentlyfields as subsets of a frame consisting of groups of contiguous picture elements and interlaced fields as one of the two (or more) parts into which a frame is divided in interlaced scanning. (Doc. No. 247 at 5-13.) The specification states that [e]ach frame may be considered to be composed of a number of smaller regions generally known as fields; for example, each frame may be composed of two interlaced fields representing odd- and even-number horizontal lines or rows of picture elements in the image. 878 Patent col. 4:9-14; see also col. 2:56-63 (discussing field coding and interlaced field coding as different examples of the invention). Thus, the Court concludes that interlaced
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fields are only one example of fields. Moreover, the terms fields, interlaced fields, and fields of non-contiguous picture elements are separately used in, for example, claims 1, 12, 13 and 23, raising the presumption that the meaning of these terms differsa difference supported by the specification. Comark Commcns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998). Thus, one of ordinary skill in the art would recognize that fields encompasses frame divisions other than just those described as interlaced fields. Furthermore, Figure 1 is a preferred embodiment and is one example of the invention. 878 Patent col. 3:59-61. Although the patentee elected to describe aspects of the invention in the context of interlaced fields in describing Figure 1, it also addressed fields and interlaced fields outside the context of any particular embodiment and informed one of ordinary skill in the art of the distinction between them. Defendants also argue that MPTs proposed construction of fields as subsets of a frame consisting of groups of contiguous picture elements would conflate the separate concepts of macroblocks and blocks. (Doc. No. 225 at 12-13.) Fields, interlaced fields, slices, macroblocks, and blocks are all different terms that describe some sub-division of a frame. See 878 Patent col. 4:7-20, 4:50-59. Thus, their definitions share some similarities. One of ordinary skill in the art, however, would recognize that the distinction between blocks and fields, in the context of the 878 patent, is not the differences in the portion of the frame that they represent, but rather in the way they are used in the encoder. In the 878 patent, macroblocks and blocks are the units that are coded, whereas frames, fields, and interlaced fields describe how those units are coded. See 878 Patent col. 5:61-63, 6:24-34, 6:59-7:19 (describing the embodiment of Fig. 1). To increase the efficiency of coding, a macroblock or block is artificially divided into regions to determine which regions of the macroblock or block have the most similarity. See id. col. 6:34-58. These regions could include, for example, the adjacent lines that make up the entirety of the block (i.e., frame), alternating horizontal lines of the block (i.e., interlaced fields), or other divisions of the blocks,
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such as top and bottom halves of the block (i.e., fields). Depending on which of these frame, field, or interlaced field divisions provide the greatest similarity, the encoder elects to code the blocks using that method. See id. col. 6:59-7:19. Thus, due to the manner in which these terms are used in the patent, there is no concern that one of ordinary skill in the art would be confused regarding the meaning of fields and macroblocks or blocks. Consistent with the full scope of these terms, as disclosed in the specification and as understood by one of ordinary skill in the art, the Court construes fields to mean subsets of a frame consisting of groups of contiguous or noncontiguous picture elements and interlaced fields to mean one of the two (or more) parts into which a frame is divided in interlaced scanning. 3. Claim 31: groups of digital representations Defendants argue that groups of digital representations should be construed as a number of macroblocks, submacroblocks, and blocks of picture elements, for example, 16x16 macroblocks of picture elements, 16x8 subblocks of picture elements, and 8x8 blocks of picture elements. (Doc. No. 241 at 16.) In support, Defendants point to the specification, which describes the division of a frame in this manner. 878 Patent col. 4:7-20. However, simply because groups of digital representations are also divisions of a frame does not mean that they must be divided into macroblocks, submacroblocks, or blocks of picture elements. The specifications states that these divisions are merely exemplary. In discussing digital representations generally, the specification notes that [t]he video input signals comprise a succession of digital words, each representing some information at a particular instant of time about a small region of the image field generally referred to as a picture element. 878 Patent col. 4:3-7. Accordingly, the Court concludes that groups of digital representations should be given its plain and ordinary meaning to one of skill in the art, and therefore does not require construction.
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10.
Claim 13: means responsive to a motion compensation type signal for selectively and
adaptively performing motion compensated decoding of frames of the compressed digital video bit stream and fields of the compressed video bit stream This term is a means-plus-function term governed by 35 U.S.C. 112, 6. The parties agree that the function is selectively and adaptively performing motion compensated decoding of frames of the compressed digital video bit stream and fields of the compressed video bit stream. The parties dispute the structure that performs this function.1 Defendants argue that the following structures should be included: (1) estimation circuit 100; (2) circuit 94; (3) summing element 92; (4) picture stores 100C and 100A; (5) circuit 54; (6) circuit 80; and (7) all interconnections of these elements. Plaintiff agrees only that circuit 100 should be included, but disagrees on the figures that describe estimation circuit 100. Plaintiff further argues that block unformatter 72A and summing element 74 should be included as structures that perform the function. Figure 2 of the 878 patent shows the relevant structures that are at issue:
The Court has construed each term at issue on the merits. The Court alternatively concludes that collateral estoppel applies against MPT concerning the terms from the 878 and 226 patents that this Court previously construed in Lucent Techs., Inc. v. Microsoft Corp., Case No. 06cv0684 (S.D. Cal, filed Mar. 28, 2006) and Lucent Techs., Inc. v. Gateway, Inc., Case No. 07cv2000 (S.D. Cal, filed Oct. 16, 2007). See Hydranautics v. FilmTec Corp., 204 F.3d 880, 885 (9th Cir. 2000); see also RF Delaware, Inc. v. Pac. Keystone Techs., Inc., 326 F.3d 1255, 1261 (Fed. Cir. 2003) (the law of the regional circuit applies to the issue of collateral estoppel).
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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 col. 3 l. 20-23 (FIG. 3 is a block diagram representing the functional specification of a block adaptive motion compensated unidirectional predictor in accordance with this invention.). Fig. 4 is the only structure disclosed in the 878 patent for producing estimates for B-pictures. 878 Patent col. 16 l. 28-32 (FIG. 4 is a block diagram of a block adaptive motion compensated bidirectional predictor 140 in accordance with this invention. The circuit of FIG. 4 produces predictions of Bpictures in accordance with the motion compensation modes identified above for B-pictures.); see also id. col. 3 l. 24-27 (FIG. 4 is a block diagram representing the functional specification of a 62
The parties agree that estimation circuit 100 should be included. However, Defendants argue that both Figures 3 and 4 show the internal circuitry of circuit 100 and must be included as part of the construction. Plaintiff argues that the internal circuitry of circuit 100 be either Figure 3 or Figure 4 or a combination of Figure 3 and 4. Figure 3 is the only enabling structure disclosed in the 878 patent for producing estimates for P-pictures. 878 Patent Fig. 3, col. 15 l. 47-52 (FIG. 3 shows a block diagram of a block adaptive motion compensated predictor 106 in accordance with this invention. . . . The circuit of FIG. 3 produces predictions of P- Pictures in accordance with the motion compensation modes identified above for P-pictures.); see also id.
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block adaptive motion compensated bidirectional predictor in accordance with this invention.). The structures in Fig. 2, which include circuit 100, must decode both P-pictures and B-pictures. 878 Patent col. 4 l. 65-68 (In the examples of the invention shown in FIGS. 1 and 2, . . . . Ipictures, P-pictures, and B-pictures are encoded and decoded.). Furthermore, circuit 100 is titled block adaptive frame/field uni/bi-directional motion compensated prediction selector in part because it is used for both uni-directional (i.e., for P-pictures) and bi-directional (i.e., for Bpictures) motion compensation prediction. 878 Patent Fig. 2. The specification further supports that circuit 100 processes both B-pictures and P-pictures. The estimation circuit 100 is responsive to . . . a picture type signal on line 70 to produce an estimate on line 76 of the video output signal. 878 Patent col. 15 l. 35-42. The picture type signal . . . represents what kind of picture is being produced . . . , either an I-, P-, or B-picture. Id. col. 9:27-30. Circuit 100 receives the picture type signal to inform it whether to operate on P-pictures (using the circuitry shown in Fig. 3) or on Bpictures (using the circuitry shown in Fig. 4). Id. col. 9 l.27-30. Thus, the inclusion of the picture type signal controlling circuit 100 also confirms that the circuitry of both Fig. 3 and Fig. 4 is required for circuit 100 to perform the claimed function. Accordingly, the internal circuitry of circuit 100 includes all internal circuitry shown in Fig. 3 and Fig. 4 as structure linked to the claimed function. The parties disagree as to whether decoder 54 should be an included structure. The specification provides that decoder 54 performs the decoding. 878 Patent col. 14 l. 12-17. The specification explains that FIG. 12 illustrates the operation of a decoder in accordance with this invention with respect to the mscale parameter produced for B-pictures. 878 Patent col. 24 l.4749. The structures in Fig. 2, which include decoder 54, must decode B-pictures. Id. col. 4 l. 65-68. This operation is shown and described only with respect to Fig. 12. Thus, the operation of a
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decoder in accordance with this invention, id. col. 24 l. 47-49, must include Fig. 12, the only illustration of such decoder operation in the 878 patent. Circuit 94 and summing element 92 are also structures that are linked to the claimed function. The specifications directly link circuit 94 to the claim language of responsive to a motion compensation type signalclaim 94 is a motion vector prediction circuit 94 [that] is responsive to a motion compensation type signal on line 88 . . . to produce a prediction of the motion vectors . . . to an estimation circuit 100. 878 Patent col. 15 l. 17-28. The internal circuitry is further shown in Figures 15, 16A, and 16B. See 878 Patent col. 25 l. 26-27 (FIG. 15 . . . illustrat[es] motion vector prediction for P-pictures.); col. 26 l. 8-9 (FIG. 16 . . . illustrat[es] motion vector prediction for B-pictures.). Summing element 92 is also linked to the claimed function of performing motion compensated decoding. Summing element 92 produces the motion vector signals input to circuit 100 for performing motion compensated prediction. 878 Patent col. 15 l. 17-28 (The motion vector prediction circuit 94 is responsive to a motion compensation type signal on line 88 . . . to produce a prediction of the motion vectors which is directed to one of the inputs to the summing element 92. The output of the summing element 92 is a motion vector signal . . . directed to an estimation circuit 100.). Without summing element 92, the motion vector signals cannot be provided to circuit 100, and motion compensated prediction cannot be performed. Picture stores 100C and 100A are also structures linked to the claimed function. Circuit 100 must be coupled to both picture stores 100A and 100C (as shown in both Fig. 2 and Fig. 4). See 878 Patent col. 15:27-42 (The motion vector signals are directed to an estimation circuit 100 on an input line 102. . . . The estimation circuit 100 is responsive to the contents of the stores 100a and 100c, the motion vectors on line 102, the motion compensation type signal on line 88, and a
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picture type signal on line 70 to produce an estimate on line 76 of the video output signal on line 78 in a manner analogous to the estimate produced by the estimation circuit 38 in FIG. 1.). Circuit 80 is also a structure that is clearly linked to the claimed function. The specification explains that circuit 80 produces . . . a motion compensation type signal on line 88, and nowhere does the specification disclose the generation of a motion compensation type signal at a decoder other than in circuit 80. 878 Patent col. 15 l. 4-7. Thus, without the structure of circuit 80, the motion compensation type signal cannot be provided, and the claimed means responsive to a motion compensation type signal for selectively and adaptively performing motion compensated decoding . . . cannot be performed. Finally, the interconnections of these structures are also structures linked to the claimed function. When a claimed function requires multiple structures, it also necessarily encompasses structure that connects [them]. Asyst Techs., Inc. v. Empak, Inc., 268 F.3d 1364, 1372 (Fed. Cir. 2001) (holding that because communication line 51 connected two structures required by the claimed function, the corresponding structure [for the means-plus-function term] that performs the recited functions necessarily includes line 51.). Without all interconnections, a motion compensation type signal could not be generated nor could it be provided to circuit 100 or circuit 94 as required by the claimed function and the motion vectors would not be provided to circuit 100 as required to perform the claimed function. 878 Patent col. 15 l. 17-19 (The motion vector prediction circuit 94 is responsive to a motion compensation type signal on line 88.), col. 15:3540 (The motion estimation circuit 100 is responsive to . . . the motion compensation type signal on line 88 . . . to produce an estimate on line 76 of the video output signal.), col. 15:35-40 (The estimation circuit 100 is responsive to . . . the motion vectors . . . to produce an estimate on line 76 of the video output signal.).
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In addition, the Court concludes that block formatter 72A and summing element 74 are not linked to the claimed function. The specification describes the following regarding operations of block unformatter 72A and summing element 74: The output signal from the transform circuit 72 is directed to the input of a block formatting circuit 72a which performs an unformatting operation which is the inverse of the formatting operation performed by block 15a in FIG. 1. The output of the unformatting circuit 72a is directed to one input of a summing element 74. Another input of the summing element 74 receives an estimate signal on line 76. The output of the summing element 74 is related to the difference between the estimate error signal from the unformatter 72a and the estimate signal on line 76 and comprises a video output on line 78 which is analogous to the video input signal on line 10 in FIG. 1. 878 Patent col. 14 l. 56-58. Block unformatter 72A is responsive to a coding type signal as its control input. Id. Fig. 2. Thus, neither Block unformatter 72A or summing element 74 are responsive to a motion compensation type signal as required by the claim language. Accordingly, they are not structures that perform the claimed function. Thus, the Court construes the structure that performs the claimed function as circuit 100 (as shown in Fig. 2 and its internal circuitry as shown in Figs. 3, 4A, and 4B and as described at col. 15 line 22 to col. 18 line 10); circuit 94 (as shown in Fig. 2 and the circuitry within circuit 94 as shown and described in Figs. 15, 16A, and 16B, and the description of circuit 94 and its internal circuitry set forth in col. 15 lines 11-28 and in col. 25 line 26 to col. 27 line 34); summing element 92; picture stores100C and 100A; circuit 54 (as shown in Fig. 2, and as described in Fig. 12 and at col. 14 lines 5-68 and col. 24 lines 47-60); circuit 80 (as shown in Fig. 2 and as described at col. 15 lines 4-10); and including all interconnections of these elements. 11. Claim 13: adaptively Plaintiff contends this term should be construed as capable of changing in response to the motion compensation type signal. Defendants contend this term should be construed as in a
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manner that changes in response to the motion compensation type signal. Previously, applicants amended claim 13 as follows: a means responsive to a motion compensation [coding] type signal for selectively and adaptively performing motion compensated decoding of frames of the compressed digital video bit stream and fields of the compressed video bit stream. MPT v. DirecTV, Case No. 09cv0278 (S.D. Cal., filed Feb. 13, 2009), Doc. No. 448, 8/16/2011 Declaration of Douglas C. Muth (Muth Decl.), Ex. A, 878 File History, Dec. 22, 1992, Amendment at 4 (underlining and brackets in original).2 The amendment specifically requires the operation of selectively and adaptively performing motion compensated decoding . . . to be performed in response to a motion compensation type signalnot in response to a coding type signal, as previously claimed, or in response to any other signal. Along with an amendment, applicants argued that claim 13 was distinguishable over the prior art Krause patent because: Claims 13-17 specify an apparatus for decoding a compressed digital video signal comprising, among other things, a means responsive to a motion compensation type signal for selectively and adaptively performing motion compensated decoding of frames and fields of a compressed digital video bit stream. The decoder referred to in the Krause patent does not involve any adaptive motion compensated decoding of an input bit stream, and does not need such decoding capability, because there is no adaptive motion compensated coding of video in the encoder shown in the Krause patent. The motion compensated scheme has no adaptation capability in the Krause patent because[,contrary to applicants amended claim 13], it is stated at col. 9, line 67, to col.10, line 1, that the motion compensation does not change regardless of whether field coding or frame coding is used, as discussed above. Id. at 11. Thus, applicants tied the term adaptively in claim 13 to operate in response to the motion compensation type signal when it made the above argument to the Patent Office. See Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 994-95 (Fed. Cir. 2003).
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A court may take judicial notice of [r]ecords and reports of administrative bodies. Barron, 13 F.3d at 1377; see also Reyns Pasta Bella, 442 F.3d at 746 n.6 (stating that courts may take judicial notice of court filings and other matters of public record).
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Accordingly, the Court adopts Defendants proposed construction: in a manner that changes in response to the motion compensation type signal. 14. Claim 15: adaptive Claim 15 states [t]he apparatus of claim 13, in which the decoding comprises . . . a means for producing an adaptive motion compensated estimate of a decoded video signal. 878 Patent col. 90:43:56. Thus, consistent with the Courts construction of the term adaptively in claim 13, the construction for this term is capable of changing in response to the motion compensation type signal. 15. Claim 15: means responsive to a motion compensation type signal and selectively
responsive to frame motion vectors and field motion vectors for producing an adaptive motion compensated estimate of a decoded video signal The parties agree that this term is a means-plus-function term governed by 35 U.S.C. 112, 6 and that the function of this term is, producing an adaptive motion compensated estimate of a decoded video signal. The parties only disagree on the structure that performs this claimed function. The parties agree that the circuit 100 performs this function, but disagree as to what combination of Figure 3 and 4 should be included. Claim 15 states [t]he apparatus of claim 13, in which the decoding comprises . . . means responsive to a motion compensation type signal and selectively responsive to frame motion vectors and field motion vectors for producing an adaptive motion compensated estimate of a decoded video signal 878 Patent col. 90:43:56. Thus, consistent with the Courts construction of Claim 13, the Court construes this terms to include (1) circuit 100 (as shown in Fig. 2 and its internal circuitry as shown in Figs. 3, 4A, and 4B and as described at col. 15 line 22 to col. 18 line 10) and (2) picture stores 100C and 100A; including interconnections of these elements.
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16.
Claim 15: means responsive to the compressed digital video bit stream for producing
a decoded estimate error signal The parties agree that this term is a means-plus-function term governed by 35 U.S.C. 112, 6. The parties further agree that the function of this term is, producing a decoded estimate error signal. As to the structures required to perform the function, the parties agree that the structures include: decoder and demultiplexer 54, inverse scan selector 64, visibility matrix and dequantizer 66, inverse discrete cosine transform circuit 72, and circuit block unformatting circuit 72A. However, the parties dispute the inclusion of interconnections and some internal circuitry for these structures. In particular, MPT argues that Figures 12, 13, and 14 do not provide corresponding structure for the claimed function. (Doc. No. 230 at 24-27.) For decoder and demultiplexer 54, the specification explains that FIG. 12 illustrates the operation of a decoder in accordance with this invention with respect to the mscale parameter produced for B-pictures. 878 Patent col. 24 l. 47-49. The structures in Fig. 2, which include circuit 54, must decode B-pictures. Id. col. 4 l. 65-68. This decoding operation is shown and described only with respect to Fig. 12. Thus, the operation of a decoder in accordance with this invention, id. col. 24 l. 47-49, must include Fig. 12, the only illustration of such decoder operation in the 878. For inverse scan selector 64, the internal circuitry for circuit 64 shown in Fig. 14 is the only internal circuitry for an inverse scan selector disclosed in the 878 patent. 878 Patent col. 25 l. 910 (FIG. 14 is a block diagram of a forward/inverse scan selector in accordance with this invention.). Nowhere else does the 878 patent disclose an actual implementation of the block shown as circuit 64 other than through the internal circuitry shown in Fig. 14. Thus, in order to perform inverse scanning necessary to produce a decoded estimate error signal, the internal circuitry shown in Fig. 14 is required. Similarly, for visibility matrix and dequantizer 66, the
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internal circuitry for circuit 66 shown in Fig. 13 is the only internal circuitry for a visibility matrix selector and dequantizer disclosed in the 878 patent. 878 Patent col. 24 l. 61-62 (FIG. 13 shows a detailed block diagram of a visibility matrix selector.). Nowhere else does the 878 patent disclose an actual implementation of the block shown as circuit 66 other than through the internal circuitry shown in Fig. 13. Thus, in order to produce a decoded estimate error signal as required by the claimed function, the internal circuitry shown in Fig. 13 is required. For circuit block unformatting circuit 72A, Fig. 7 is the only internal circuitry disclosed for circuit 72A that is linked to the claimed function. The internal circuitry for circuit 72A shown in Fig. 7 is the only block unformatter disclosed in the 878 patent. 878 Patent col. 19 l. 19-20 (FIG. 7 is a diagram of a block unformatter shown both in FIGS. 1 and 2.); see also id. col. 3 l. 32-33 (FIG. 7 is a block diagram of the block unformatter of FIGS. 1 and 2.). Nowhere does the 878 patent disclose an actual implementation of the block shown as circuit 72A other than through the internal circuitry shown in Fig. 7. Thus, in order to perform block unformatting necessary to produce a decoded estimate error signal, the internal circuitry shown in Fig. 7 is required. Thus, the Court construes the structure required to perform the claimed function as (as shown in Figs. 2, 7, 12, 13, and 14 and as described at col. 14 lines 5-68, at col. 19 lines 19-38, and at col. 24 line 47 to col. 25 line 25): circuit 54; circuit 64 (see Fig. 14 for internal circuitry); circuit 66 (see Fig. 13 for internal circuitry); circuit 72; and circuit 72A (see Fig. 7 for internal circuitry); and all interconnections between these elements. 17. Claim 15: means responsive to the adaptive motion compensated estimate and the
estimate error signal for producing a decoded video signal The parties agree that this term is a means-plus-function term governed by 35 U.S.C. 112, 6 and that the function of this term is, producing a decoded video signal. The parties further agree that summing element 74 performs the claimed function. The parties only disagree as to the
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inputs and outputs. Summing element 74 must receive the estimate error signal from the unformatter 72a and the estimate signal on line 76 in order to produce a video output on line 78. 878 Patent col. 14 l. 64-67. Thus, the inputs and outputs are necessary to perform the claimed function and are included in a construction. See, e.g., Asyst, 268 F.3d at 1372. Accordingly, the Court construes the structure as (as shown in Fig. 2 and as described at col. 14 lines 50-68): summing element 74 and including all inputs and outputs of this element. 28. Claim 31: a means for receiving a digital video input signal comprising a succession
of digital representations of picture elements making up at least one video frame, the frame comprising a plurality of fields The parties agree this term is a means-plus-function term governed by 35 U.S.C. 112, 6. The claims function follows from the claim language. The function is: receiving a digital video input signal comprising a succession of digital representations of picture elements making up at least one video frame, the frame comprising a plurality of fields. 29. Claim 31: means responsive to the video input signal prior to encoding for producing
a motion compensation type signal for controlling the adaptive motion compensated encoding means The parties agree this term is a means-plus-function term governed by 35 U.S.C. 112, 6. The claims function follows from the claim language. The function is: producing a motion compensation type signal for controlling the adaptive motion compensated encoding means. This limitation must be responsive to the video input signal and produce a motion compensation type signal. 878 Patent col. 92:34-47. Defendants propose that the corresponding structure for this claim element includes the entirety of estimation circuit 38 (and Figures 3 and 4), picture stores 36a and 36c, motion
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estimation circuit 37, and all of the data inputs to and outputs from each of these elements. MPT, in contrast, identifies prediction analyzer 38a as the corresponding structure.
The specification describes estimation circuit 38 as comprising two independent elements: prediction analyzer 38a and prediction selector 38b. 878 Patent col. 12:17-36. Prediction analyzer 38a receives the motion vectors created by motion estimator 37 and determines which of those motion vectors should be used to perform the motion compensation. Id. col. 12:17-30. It then produces a motion compensation type signal and sends it to prediction selector 38b. Id. col. 12:3033. The motion compensation type signal identifies which method of motion compensation the prediction selector 38b should use to perform motion compensation.36 Id. col. 12:17-30. Thus, by the time that prediction selector 38b takes action, the motion compensation type signal has already been produced. Thus, prediction analyzer 38a, rather than the entirety of estimation circuit 38, is corresponding structure for this claim element. Asyst, 268 F.3d at 1371.
The structural elements of Figures 3 and 4 describe embodiments for predicting a current frame using past or future frames and previously created motion vectors. 878 Patent col. 15:47-18:10. This functionality is equivalent to that
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Defendants propose including picture stores 36a and 36c in the corresponding structure. The picture stores store a previous and next frame, which are used by prediction analyzer 38a to identify the proper motion vectors and produce a motion compensation type signal. 878 Patent col. 12:21-30. Thus, the picture stores merely generate inputs that enable the claimed structure to perform the claimed function. Enabling structure is not corresponding structure under 112, 6. Asyst, 268 F.3d at 1371. Defendants also seek to incorporate input and output data into the corresponding structure. In construing claims under 112, 6, this Court must first identify the claimed function and second identify structures disclosed in the specification that perform that function. Minks, 546 F.3d at 1377. The data inputs and outputs that Defendants seek to include are not structure that perform the claimed function, and thus cannot constitute corresponding structure. Motion estimator 37 is necessary structure for the function. Motion estimator 37 receives the video input signal and estimates the motion between the pictures to produce motion vectors. Id. col. 10:11-39. The motion compensation type signal identifies which one of the motion compensation [m]odes is used to produce an estimation of the video input signal. Id. col. 10:2530.) The specification states the motion estimation circuit 37 thus may produce motion vectors needed to effectuate a variety of motion compensation modes. Accordingly, the specification links motion estimation circuit 37 to the creation of the motion compensation type signal.
performed by prediction selector 38b. Id. col. 12:30-36. Thus, for the same reasons that prediction selector 38b is not corresponding structure, neither are the structural elements of Figures 3 and 4.
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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 30. Claim 31: means for performing adaptive motion compensated encoding The parties agree that this claim should be construed under 112, 6 and that the claimed function is performing adaptive motion compensated encoding of groups of digital representations in the input signal relating to one of frames and fields in the input signal. The parties disagree on the structures required to perform the claimed function. MPT proposes that the corresponding structure include block formatting circuit 15a (and Figure 6), DCT 16, Quantizer 19 (or Figure 13), prediction selector 38b (and either Figure 3 or 4, or both), and summing element 11. Defendants propose that the corresponding structure include motion vector prediction circuit 41 (Figures 15, 16A, and 16B), VWL Encoder 24, summing element 42, and all of the data inputs to and outputs from each of these structures. includes: motion estimation circuit 37 (as shown in Fig. 1B and as described at col. 10, l. 11- 18, col. 12, l. 10-16, and col. 12, l. 37-42) and motion compensated prediction analyzer 38A (as shown in Fig. 1 and as described at col. 12:25-30). Accordingly, the Court determines that the corresponding structure for this claim term
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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 This difference in proposed structures stems from the parties dispute over what information the claim requires to be encoded. MPT argues that the claimed encoder codes the
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prediction error output by the motion compensation process, thus resulting in motion compensated encoding. Defendants, on the other hand, argue that the claim requires encoding the motion compensation, which it equates to encoding the motion vectors. As discussed previously, in the context of claim 28s means for performing motion compensation, motion vectors are the result of performing the process of motion estimation, which determines the degree of movement between a current and a previous/next frame, whereas motion compensation is a process that involves applying certain of the motion vectors created during motion estimation to a previous/next frame to create a prediction of the current frame. Accordingly, motion vectors are not an equivalent to motion compensation, but rather they are an input to that process. Additionally, the claim requires motion compensated encoding of groups of digital representations in the input signal. Motion vector predictor 41 generates a predicted motion vector. 878 Patent col. 12:42-49. Summing element 42 receives this prediction and compares it against the motion vectors created by motion estimation circuit 37 to produce a differential motion vector. Id. col. 12:50-53. These elements achieve the encoding of generated motion vectors, but not the encoding of groups of digital representations in the input signal relating to one of frames and fields in the input signal, as the claim requires. Id. col. 12:37-39. Motion vectors do not exist in the input signal, but are created by the encoder for later use in performing motion compensation. Id. col. 12:10-16. For this additional reason, circuits 41 and 42 are not corresponding structure for the claimed function. In addition, because this claims function requires performing motion compensated encoding, the corresponding structures for this claim must perform motion compensation. The plain language of the claim makes clear that adaptive motion compensated encoding involves adaptive encoding of groups of digital representations using motion compensation. The corresponding structure that performs encoding was addressed above in the discussion of the frame
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coding means of claim 1, and includes the block formatter 15A (and Figure 6), DCT circuit 16, and quantizer 19 (or Figure 13), but not VWL encoder 24. Similarly, the corresponding structure for performing motion compensation was addressed above for the motion compensation means of claim 28, and includes prediction selector 38b (and either Figure 3 or Figure 4, or both) and summing element 11. Because the combination of these structures is adaptive to both a motion compensation type signal (878 Patent col. 12:30-36) and a coding type signal (878 Patent col. 6:62-7:19), this combined structure performs adaptive motion compensated encoding and represents the corresponding structure for this function. Accordingly, the Court construes the function for this claim element to be performing adaptive motion compensated encoding of groups of digital representations in the input signal relating to one of frames and fields in the input signal. The Court concludes that the corresponding structure for this claim term includes: (a) prediction selector 38B (as shown in Fig. 1 and as described at col. 10:23-48, 12:10-36) and either (i) Fig. 3 (as described at col. 15:4716:27, including previous picture store 36c) or (ii) Fig. 4 (as described at col. 16:28-18:10, including previous picture store 36c and next picture store 36a), or (iii) Fig. 3 and Fig. 4 (as described at col. 15:47-18:10, including previous picture store 36c and next picture store 36a); (b) summing element 11 (as shown in Fig. 1 and as described at col. 6:6-22); (c) block formatting circuit 15A (as shown in Fig. 1 and as described at col. 6:59-66, 5:66-6:3), and Fig. 6 (as described at col. 19:1-18); (d) discrete cosine transform circuit 16 (as shown in Fig. 1 and as described at col. 7:5-10); and (e) visibility matrix selector and perceptual quantizer 19 (as shown in Fig. 1 and as described at col. 7:27-45, 5:66- 6:3) or Fig. 13 (as described at col. 24:61-25:8). 31. Claim 32: means for performing variable word length encoding adaptively The parties agree this term is a means-plus-function term governed by 35 U.S.C. 112, 6. The claims function follows from the claim language. The function is: performing variable word
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length encoding adaptively in response to the video input signals. MPT contends that the corresponding structure is choice analyzer 23A or the combination of VWL Encoder 24 and either: (i) scan selector 23, or (ii) Figure 14. Defendants agree that the VWL Encoder 24 and Choice Analyzer 23a are corresponding structure, and further agree that scan selector 23 is corresponding structure, though for a different reason. Specifically, Defendants argue that VWL Encoder 24 performs variable word length encoding and that Choice Analyzer 23a selects and identifies the proper word length table, thus making the variable word length encoding adaptive. (Doc. No. 225 at 17.) Defendants further contend that block formatting circuit 15a, DCT 16, Quantizer 19, and scan selector 23 are necessary to deliver the video input. Id.
Although the parties agree that VWL Encoder 24 and Choice Analyzer 23a are corresponding structure for performing adaptive variable word length encoding, the patent discloses a second structure that also performs this function: VWL Encoder 24 in combination with scan selector 23 (or Figure 14). Scan selector 23 reorders quantized transform coefficients prior to variable word length encoding by VWL encoder 24. 878 Patent col. 8:41-56. Scan selector 23 adapts the manner 78
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of reordering based on the coding type signal (i.e., whether frames or fields are to be coded). Id. Thus, when scan selector 23 is combined with VWL encoder 24, they together perform variable word length encoding adaptivelyi.e., based upon the coding type signal. Therefore, this structure constitutes an alternative structure for performing the claimed function. Ishida, 221 F.3d at 1316. For the reasons previously discussed, Figure 14 describes an alternative embodiment of scan selector 23. Accordingly, the Court finds that the corresponding structure for this claim term includes: a) variable word length choice analyzer 23A (as shown in Fig. 1 and described at col. 9:3-8 and as shown in Figure 10 and as described at col. 21:50-23:23), and encoder and multiplexer 24 (as shown in Fig. 1 and as described at col. 9:8-30); see also col. 4:65-68; or b) encoder and multiplexer 24 (as shown in Fig. 1 and as described at col. 9:8-30) and either (i) scan selector 23 (as described at col. 8:36- 9:8); or (ii) Fig. 14 (as described at col. 25:9-25). 32. Claims 31 and 32: adaptive and adaptively Adaptive and adaptively, in these specific claims, are used in a manner consistent with its ordinary meaning and do not appear to require constructions. See, e.g., Biotech Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc., 249 F.3d 1341, 1349 (Fed. Cir. 2001).
UNITED STATES PATENT NUMBER 5,136,377 (377 Patent) The 377 patent describes an encoder that adaptively quantizes signals in concert with the human visual perception model. 377 Patent Abstract. 1. Claim 1 and 8: coder The specification describes an original input image that has been transformed into representation that requires few bits as an example of a coded image. 377 Patent col. 19:17-22. Accordingly, the proper construction is hardware, which may include a general purpose processor
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programmed with appropriate software, that changes a video signal from one form of representation to another. 2. Claim 1: prediction means responsive to said encoder output signals for predicting a
next frame's signals The parties agree this term is a means-plus-function term governed by 35 U.S.C. 112, 6. The parties dispute the claimed function. MPT proposes that the claimed function be defined as predicting a next frames signals. Defendants include the phrase responsive to said encoder output signals in their proposed definition. However, the responsive to phrase does not identify any function performed by the corresponding structure, and should therefore not be included in the definition of the claimed function. See, e.g., Sun Microsystems, Inc. v. Network Appliance, Inc., 710 F. Supp. 2d 925, 946 (N.D. Cal. 2008) ([R]esponsive to phrase here does not identify any function performed by the structure, but rather identifies a separate limitation). Therefore the Court construes the claimed function as predicting a next frames signals. Defendants proposed corresponding structure includes motion vector generator 13 and motion vector selector/encoder 14 of Figure 1. The specification explains that the motion vector generator 13 and motion vector selector/encoder 14 produce motion vectors that enable subsequent prediction of next frame signals. 377 Patent col. 5:15-18 (Motion vector generator 13 develops motion vectors M(t) that . . . assist in generating an approximation of frame I(t)), col. 5:27-37 (disclosing motion vector selector/encoder 14 outputs motion vectors[] and their coded representations that assist in generating an approximation). The structural element that actually performs the subsequent prediction is the motion compensator 43which Defendants agree is part of the corresponding structure. Motion compensator 43receives the motion vectors and applies them to a previous frame to generate the prediction of a next frames signals. Id. col. 6:28-31
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(Motion compensator 43 is responsive to motion vectors MV(t-4). It produces an estimate of the image signal I(t-4).). Defendants proposed construction attempts to incorporate motion vector generator 13 and motion selector/encoder 14 as corresponding structure under the theory that any reference to the word prediction in the specification is sufficient to clearly link a structure to the claimed function. But the mere reference to prediction and prediction error in the specifications discussion of motion vector generator 13 and motion selector/encoder 14 does not clearly link those structures to the claimed function. Structures are clearly linked to the claimed function only when a person of ordinary skill in the art would understand that they actually perform that function. Biomedino, LLC v. Waters Tech. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007). Motion vector generator 13 and motion selector/encoder 14 do not predict a next frames signals. Rather, these structures perform, and are clearly linked to, the functions of generating and selecting motion vectors that are subsequently used by motion compensator 43 to predict a next frames signals. 377 Patent col. 5:15-18, 5:27-37, 6:28-31. Therefore, the Court concludes that the motion vector generator 13 and motion vector selector/encoder 14 provide inputs that enable the prediction of a next frames signals, but do not themselves perform that function. Accordingly, motion vector generator 13 and motion vector selector/encoder 14 do not constitute corresponding structure. Asyst, 268 F.3d at 1371. Claim 1 makes clear that the prediction means takes the output signals of quantizer vector selector 38 (i.e. encoder output signals) as input and produces an input to the difference means, which includes subtracter 36. 377 Patent col. 25:35-51. Looking at Figure 1, the operative structures that perform this function are adders 41 and 54, subtractor 44, multiplier 45, motion compensator 43, inverse quantizer 39, and inverse DCT 40. The specification links these elements for performing prediction as a single structure called the encoding loop. 377 Patent col. 5:60-63.
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The specification discusses the encoding loop as including the mean signal, leak signal, and their use in the encoding loop for prediction. 377 Patent col. 5:65-6:3, 6:23-24, and 14:3-16. The structures appear in Figure 2 as follows:
3.
Claim 1: means for developing said frame difference signals from applied next frame
signals of an image frame and from output signals of said prediction means The parties agree this term is a means-plus-function term governed by 35 U.S.C. 112, 6. The claims function follows from the claim language. The function is developing the frame difference signals mentioned earlier in the claim from applied next frame signals of an image
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frame and from output signals of said prediction means. The function requires that the prediction means (i.e. the output of multiplier 45) and the applied next frames signal (I(t-4)) are inputs to the means. Subtractors 35 and 36 are necessary to perform this function. In particular, the 377 patent specification describes frame difference signals as the difference between the image I(t-4) and the best estimate of image I(t 4). 377 Patent col. 5:65-6:6. Subtractor 35 receives image I(t-4) and subtracts the frame-mean signal M(t-4). Id. col. 5:63-65, Fig. 2. Subtractor 35 then relays the modified image I(t-4) to subtractor 36 which subtracts the best estimate of image I(t-4). Id. col. 5:65-6:3; (see also Doc. No. 230-3 at 9, Amendment in Response to USPTO Office Action, Jan. 27, 1992, at 8 (Looking at applicants figures, it is clear that some of the elements develop frame difference signals (e.g., subtracter 36 in FIG. 2).)). The specification further describes the import of the mean signal (M(t-4)) introduced through subtractor 35 for reduc[ing] the dynamic range of the signals considered in the DCT . . . 377 Patent col. 12:33-42. This means is input to DCT 37 and thus subtractor 35, which subtracts the mean signal, is necessary to perform the function.
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accordance with a quantization schema that varies with the dictates of a control signal The parties agree this term is a means-plus-function term governed by 35 U.S.C. 112, 6. The claims function follows from the claim language. The parties agree on the function, which is: quantizing the difference signals mentioned earlier in the claim in accordance with a quantization schema that varies with the dictates of a control signal. Quantizer vector selector 38, as shown in Figure 2 and its internal circuitry as shown in Figures 9 and 10, are necessary to perform the function. The specification makes clear that Figures 9 and 10 are internal circuitry to quantizer vector selector 38. The specification delineates an entire section to Quantizer and Vector Selector (QVS) 38. 377 Patent col. 14:63-18:17. In that section, the specification states, [b]efore 84
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proceeding to describe in detail the block diagram of QVS 38, it is convenient to first describe the element within QVS 38 that evaluates the selection error. That element is depicted in FIG. 9 . . . . The scaled signals are then applied in each path to (quantizer) 81 and to subtracter 83. Id. at 15:61-16:3. After further describing Figure 9, the patent then turns back to the detail[ed] block diagram of QVS 38, like the patent foreshadowed in the passage above, and discusses Figure 10. Id. at 18:39-46 (FIG. 10 presents an embodiment of QVS 38 . . . . As described in connection with FIG. 9, each block 80 . . . .). Figures 9 and 10 also link themselves together by co-identifying elements as difference error calculator 80. Id. Figs. 9 and 10. The corresponding structures are illustrated as follows:
5.
Claims 1, 4, 26 and 27: frame The parties agreed that frame should be construed consistently for each of the four
patents. As explained above in connection with the 878 patent, the Court construes frame as a complete set of digital representations for an image. This construction is consistent with the plain language of the 377 patent claims and specification, which discloses that an image frame consists of digital representations of an image or pixels. 377 Patent col. 1:34-39. 85
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6.
Claim 1: quantization schema The term quantization schema is found within the means-plus-function element
controllable quantizer means that quantizes said difference signals in accordance with a quantization schema that varies with the dictates of a control signal. 377 Patent col. 2543- 46. Defendants propose that the term be construed as a structured framework for quantizing, relying upon a dictionary definition of the word schema as a diagrammatic presentation; broadly: a structured framework or plan. MPT proposes that quantization schema be construed as a way of quantizing. MPT points to a dictionary definition of the term schema that means an outline, diagram, plan, or preliminary draft. MPT also supports its proposed construction by pointing to the specification of the patent, which discloses several different ways, or schemas, for quantizing data. See, e.g., 377 Patent col. 1:46-52, 3:5-1, 15:61-65. Consistent with these disclosures, the plain language of the claim also uses quantization schema to refer to a different way of quantizing. See 377 Patent, col. 25:35-51, 26:38-46. Therefore, the Court construes quantization schema as a way of quantizing. 7. Claim 1: means, to develop said control signal The Court construes the claimed function for this means-plus-function claim element as developing the control signal, which varies throughout the applied next frame with changes in at least one selected characteristic of the applied next frame signals. Defendants proposed construction for the claimed function seeks to add the additional phrase in response to said applied next frame signals onto the end of the claimed function. However, the in response to phrase does not identify any function performed by the corresponding structure, and should therefore not be included in the definition of the claimed function. See, e.g., Sun Microsystems, 710 F. Supp. 2d at 946 ([R]esponsive to phrase here does not identify any function performed by the structure, but rather identifies a separate limitation).
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MPT and Defendants agree on most aspects of the corresponding structure for this meansplus-function claim element. The parties proposed corresponding structures diverge regarding whether the following three items should be included as corresponding structure: (1) table 111; (2) rate processor 91; and (3) input and output signals of the structural elements. Defendants proposed construction includes threshold look-up table 111 of Figure 13. By contrast, MPT contends that table 111should not be included in the corresponding structure based upon the 377 patent specification. The specification discloses that combiner 99 generates a control signal that is adjusted based upon texture and brightness (i.e., selected characteristics) through correction factors generated by tables 100 and 110. 377 Patent col. 21:53-22:16. Table 111 is not involved in the generation of the control signal by combiner 99, but instead modulates the image signal with the output of table 110. Id. col. 22:13-14. Thus, the specification shows that table 111 does not perform the claimed function of developing the control signal . . . with changes in at least one selected characteristic of the applied next frame signals because the claimed function is completed before table 111. Therefore, the Court concludes that table 111 is not corresponding structure for the claimed function. See Asyst, 268 F.3d at 1371.
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Defendants argue that rate processor 91 should be excluded from the corresponding structure because buffer fullness relates to previous output signals, not the input signals (i.e., applied next frame signals). (Doc. No. 225 at 20.) However, buffer fullness represents the complexity of the applied next frame signals (i.e., the input signals) and is therefore a selected characteristic of those signals upon which the control signal may vary. Defendants also argue that rate processor 91 is not corresponding structure because it does not create a control signal that varies throughout said applied next frame. (Id. at 22.) Defendants assert that the distortion value (D) generated by rate processor 91 is [a] single value [that] cannot vary throughout the next frame. However, the specification discloses that the control signal developed by perceptual coder 49 (of which rate processor 91 is internal structure) must vary based upon buffer fullness to insure that the rate of bits delivered by the QVS 38 (though BFF 56) . . . is essentially constant. 377 Patent col. 22:24-26. The specification describes: The buffer control within the encoder of FIG. 2 is based upon modifying a framewide target distortion within QVS 38. If the buffer fills up to a point higher than some reference level, a larger target distortion is set to allow the buffer to lower its occupancy level. On the other hand, if the buffer fullness is lower than the reference level, then a lower target distortion is set. Id. col. 22:29-35. Rate processor 91 calculates that target distortion (DT) based upon two inputsbuffer fullness (Bt) and standard deviation (). Id. col. 23:29-30 (The computation of equation 20 is performed in processor 91.). Therefore, the specification discloses that rate processor 91 generates a control signal that varies throughout the applied next frame. Defendants further argue that rate processor 91 should not be included as corresponding structure because the inventors overcame the Hoelzlwimmer rejection by arguing that control signal means is nothing like the buffer control means described by Hoelzlwimmer et al. (Doc. No. 225 at 12.) But the prosecution history makes no reference to rate processor 91 and its receipt and use of buffer fullness. (See, e.g., Ex. I & J.) Furthermore, the inventor distinguished claim 1s 88
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use of buffer fullness from the prior art based upon the fact that it changes throughout the next frame with changes in at least one selected characteristic of the next frame signals. (Ex. J at 11.) As explained above, buffer fullness does change with respect to a next frames signals. In addition, unlike the 377 patent, the prior arts quantizer directly receives signals from the buffer. Id., Fig. 2. The 377 patent discloses, however, that buffer fullness is received and analyzed by perceptual coder 49 and rate processor 91, which together derive the overall target distortion that is provided to QVS 38. 377 Patent Fig. 2; 12; col. 7:7-15, 23:29-40. Therefore, the Court concludes that rate processor 91 should be included as corresponding structure for this means-plus-function element.
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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Finally, the Court rejects Defendants proposed inclusion of all interconnections of and inputs and outputs to the corresponding structure. Interconnections between multiple elements of a corresponding structure are considered part of the structure; all other connections to elements outside of that structure are not. Asyst, 268 F.3d at 1372. Inputs and outputs and the lines on which they are carried must not be included in corresponding structure unless they actually perform the claimed function. Id. at 1370; Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346, 1352 (Fed. Cir. 2003) ([I]nput signals and control signals cannot be part of 90
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the structure corresponding because they are not part of the means for monitoring or generating signals). Defendants have not shown that the inputs and outputs of the corresponding structure perform the claimed function. Therefore, the Court construes this means-plus-function element not to include the inputs and outputs to the structural elements of the corresponding structure. 8. Claims 1 and 4: selected characteristic Claim 1 reads in pertinent part: meansto develop said control signal, which control signal varies throughout said applied next frame with changes in at least one selected characteristic of said applied next frame signals. MPT and Defendants agree that texture and brightness are selected characteristics of applied next frame signals. Defendants contend that buffer fullness[] cannot be a selected characteristic because fullness of an output buffer is not a characteristic of a signal, and is not related to the input signal. (Doc. No. 225 at 27.) By contrast, MPT cites to the 377 patent specification to support its argument that buffer fullness is a characteristic of applied next frame signals, and should therefore be included in the construction of selected characteristic. (Doc. No. 196 at 13.) The specification discloses that BFF block 56 receives bits delivered by QVS 38 and accumulates the various segments of data that must be transmittedin other words, the coded data representing the applied next frame signals. 377 Patent col. 22:24, 23:52-53. The quantity of that coded data represents the complexity of the applied next frame signals. Id. col. 19:24-26 (noting that trivial or less complex video requires less data or bits for coding than more complex video). Therefore, the Court concludes that buffer fullness represents the complexity of the applied next frame signals, and is therefore a selected characteristic of those signals. Furthermore, buffer fullness is not the output signal of the BFF block 56; it is a measure of the amount of coded data in the buffer. As the encoder codes the various blocks of the applied next frame, the buffer fullness level changes, and the output of BFF block 56 informs perceptual coder
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49 of the current level of buffer fullness. 377 Patent col. 3:51-54 (The motion estimation principles of this invention start with the proposition that for a given bit budget, a much better overall prediction can be attained by employing blocks of varying sizes.), 7:10-12 (BFF 56 feeds information to perceptual coder 49, to inform it of the level of output buffer fullness). The specification discloses that perceptual coder 49 uses the buffer fullness to adjust the quantization of the blocks of the next frame to control the bit rate for the frame: The [buffer fullness] information is employed in perceptual coder 49 to control QVS 38 and inverse quantizer 39 and, consequently, the bit rate of the next frame. Id. col. 7:12-14, 15:67-16:8 (describing how QVS 38 quantizes superblocks comprised of arrays of 8 x 8 sets of coefficients). Thus, the Court construes selected characteristic as: any of the following characteristics of the applied next frame signals, alone or in combination: (1) a measure of texture, (2) a measure of brightness, or (3) a measure of buffer fullness. 9. Claim 4: means to develop said control signal wherein said selected
characteristic is a measure of texture Defendants proposed constructions for the corresponding structures of claims 4 and 6 include threshold look-up table 111 of Figure 13. By contrast, in connection with independent claim 1 from which claim 4 depends, MPT contends that table 111 should not be included in the corresponding structure based upon the 377 patent specification. The specification discloses that combiner 99 generates a control signal that is adjusted based upon texture and brightness (i.e., selected characteristics) through correction factors generated by tables 100 and 110. 377 Patent col. 21:53-22:16. Table 111 is not involved in the generation of the control signal by combiner 99, but instead modulates the image signal with the output of table 110. Id. col. 22:13-14. Thus, the specification shows that table 111 does not perform the claimed function of developing the control signal . . . with changes in at least one selected characteristic of the applied next frame
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signals because the claimed function is completed before table 111. Therefore, the Court concludes that table 111 is not corresponding structure for the claimed function. See Asyst, 268 F.3d at 1371. 10. Claim 4: The encoder of claim 1 wherein said selected characteristic is a measure of
texture in said applied next frame signals Claim 4 modifies a means-plus-function limitation of claim 1, and thus, is also a means plus- function term governed by 35 U.S.C. 112, 6. The function follows from the claim language of claim 4 and the term it modifies in claim 1. Thus, the function of claim 4 is: developing the control signal, which varies throughout the applied next frame at least with changes to a measure of texture in the applied next frame signals. The claim makes clear that the selected characteristic of claim 1 is a measure of texture. Texture processing is performed inside perceptual processor 49. Looking to the structures that perform texture processing in perceptual processor 49, the corresponding structure is: perceptual coder 49 (as shown in Figure 2) including at least a generator 93 (as shown in Figure 12), where generator 93 includes at least the following internal circuitry: texture processors 96 and 98, combiner 99, and mapping look up table 100 (as shown in Figure 13, and described at 20:32-21:12, 21:42-43, 21:53-22:5:), where texture processors 96 and 98 each include at least lookup table 114 and one of the accumulators 106, 107, or 108 (as shown in Figure 14 and described at col. 21:43-49). See 377 Patent col. 19:1-22:29. The corresponding structures are illustrated as follows:
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11.
Claim 8: means for receiving signals from said output buffer that indicate the level of
buffer fullness of said output buffer The parties agree this term is a means-plus-function term governed by 35 U.S.C. 112, 6. The claims function follows from the claim language. The function is: receiving signals from said output buffer that indicate the level of buffer fullness of said output buffer. The parties agree that the corresponding structure for this means-plus-function claim limitation includes perceptual coder 49. Defendants proposed corresponding structure also includes internal circuitry elements of perceptual coder 49: rate processor 91 and multiplier 92. The specification shows that perceptual coder 49 performs the claimed function of receiving signals from BFF block 56. 377 Patent Fig. 2; col. 7:2-3 (BFF block 56 sends fullness information to perceptual coder 49.). The specification confirms that the multiplier 92 does not receive any signals from the BFF block 56. Id. fig. 12. Rate processor 91 is, at most, an alternative structure that receives signals from BFF block 56. Id. col. 23:32-35. Therefore, the Court construes the corresponding structure for this means-plus-function limitation as perceptual coder 49, and its
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interconnection to BFF block 56, as shown in Figure 2. The Court declines to include all inputs to and outputs from this corresponding structure.
13.
Claim 26: control means for developing said control signal The parties agree this term is a means-plus-function term governed by 35 U.S.C. 112, 6.
The claims function follows from the claim language. The function is: developing said control signal in response to said encoder output signals to control the number of bits generated by said coder means while encoding the applied frame signals. The parties agree that the corresponding structure should include perceptual coder 49 and rate processor 91. Defendants also seek to include BFF block 56. The Court determines that BFF block 56 should not be included because it does not perform the claimed function. The specification does not disclose that BFF clock 56 performs any portion of the function of developing said control signal. BFF block 56 sends fullness information to perceptual coder 49. 377 Patent col. 7:2-3. The perceptual coder 49 and rate processor 91 perform the claimed function of developing said control signal using the information from BFF block 56. Id. col. 7:714, 19:56-61, Fig. 2. Therefore, the Court concludes that BFF block 56 does not perform the claimed function because it does not develop a control signal, and BFF block 56 is only enabling structure that should not be included in the corresponding structure. Asyst, 268 F.3d at 1371. 95
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14.
Claim 26: prediction means responsive to output signals of said encoder, for
developing frame prediction signals The parties agree this term is a means-plus-function term governed by 35 U.S.C. 112, 6. The claims function follows from the claim language: developing frame prediction signals in response to output signals of the encoder. Although the functions are slightly different, the inputs, outputs and corresponding structures limitations for both claim 1 and claim 26 of the 377 Patent are the same. See 377 Patent col. 25:35-51. Accordingly, for the reasons discussed above, the corresponding structures include: adders 41 and 54, subtractor 44, multiplier 45, inverse quantizer 39, inverse DCT 40, and motion compensator 43. 15. Claim 26: means for developing frame difference signals in response to said frame
prediction means and applied frame signals The parties agree this term is a means-plus-function term governed by 35 U.S.C. 112, 6. The claims function follows from the claim language: developing frame difference signals in response to said frame prediction means and applied frame signals. Although the functions are slightly different, the inputs, outputs and corresponding structures limitations for both claim 1 and claim 26 of the 377 Patent are the same. See 377 Patent col. 25:35-51. Accordingly, the corresponding structures are identical. Thus, for the reasons discussed above, the corresponding structures include: subtracters 35 and 36. 16. Claim 26: coder means, responsive to said frame difference signals and to a control
signal, for encoding frame difference signals under direction of said control signal, where said coder means codes different portions of said frame difference signals with different coding schemas, where different coding schemas yield different numbers of bits when coding any given signal, said coder means thereby generates a number of bits when encoding said applied frame signals
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The parties agree this term is a means-plus-function term governed by 35 U.S.C. 112, 6. The claims function follows from the claim language, which is: encoding the frame difference signals under direction of the control signal mentioned earlier in the claim. The parties also agree that corresponding structures include at least: (1) a quantizer and (2) a variable length encoder 46 and/or variable length encoder 47. Quantizer vector selector 38, in part, encodes the frame difference signals and is thus necessary to the claimed function. See, e.g., 377 Patent col. 16:4453. For the reasons discussed above with respect to claim 1, quantizer vector selector 38 includes the internal circuitry shown in Figures 9 and 10. The Court construes this term to include both variable length encoders 46 and 47. Variable length encoders 46 and 47 create the bits in the limitation. 377 Patent col. 22:23-45 (explaining that bits come into BFF 56 from variable length encoders 46 and 47). The 377 does not treat variable length encoder 46 and 47 as alternative structures. Rather, they are a coordinated pair, complementing each other. During odd frames most of the signals are routed to variable length encoder 47 for superior treatment, and during even frames most of the signals are routed to variable length encoder 46 for poorer treatment. Id. col. 17:56-59. The specification further confirms that both are essential: [t]he reason two are used is because the information directed to encoder 47 needs to be encoded in a manner that will guarantee a better chance of an error-free reception of the encoded signal. Therefore, the encoding within encoder 47 may be different from the encoding within encoder 46. Id. col. 18:21-27. Either even frames are sent to one encoder and odd frames sent to the other, or high frequency components are sent to one encoder and low frequency components are sent to the other. 377 col. 17:47-18:7. Accordingly, a person of ordinary skill in the art would understand the corresponding structure to require both variable length encoders 46 and 47.
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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 compensated interpolation, and transmitting differences between an original, camera frame and an interpolated frame produced by the motion compensated interpolation. 226 Patent Abstract, col. 1:20-45, 4:33-34. 1. Claim 12: frame The parties agree that frame should be construed consistently for each of the four patents. As explained above in connection with the 878 patent, the Court construes frame as a complete set of digital representations for an image. This construction is consistent with the plain language of the 226 patent claims and specification. The specification discloses that a frame consists of blocks of picture elements (pels), which are digital representations of an image. 226 Patent col. 1:21-23. 9. Claim 12: means for developing block approximations from said codes that describe UNITED STATES PATENT NUMBER 4,958,226 (226 Patent) The 226 patent discusses techniques for using motion compensated prediction, motion
deviations from approximated blocks This term is a means-plus-function term governed by 35 U.S.C. 112, 6. The parties agree that the function of this term is, developing block approximations [the combinations of predicted 98
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blocks with differences between the actual blocks and the predicted blocks] from said codes that describe deviations from approximated blocks. When a claimed function requires multiple structures, it also necessarily encompasses structure that connects [them]. See Asyst, 268 F.3d at 1372 (holding that because communication line 51 connected two structures required by the claimed function, the corresponding structure [for the means-plus-function term] that performs the recited functions necessarily includes line 51.). All interconnections of Decoder 22, DCT-1 24, Adder 27, and Shift Circuit 26 connect structures linked to the claimed function. Because these structures are linked to the claimed function, the corresponding structure that performs the recited functions necessarily includes all interconnections of these elements. Asyst, 268 F.3d at 1372. Thus, the structure linked to the claimed function is, Decoder 22, DCT-1 24, Adder 27, and Shift Circuit 26, including all inputs and outputs of these elements related to the claimed function (See Fig. 2; col. 4:3-10, 26-32; col. 4:63-5:7). 10. Claim 12: means responsive to said block approximations and to said codes that
describe deviations from interpolated blocks to develop said interpolated blocks This term is a means-plus-function term governed by 35 U.S.C. 112, 6. The identified function must preserve the relationship of to develop said interpolated blocks as being responsive to said block approximations and to said codes that describe deviations from interpolated blocks. These two phrases are linked to one another in functional language in the claim term: means responsive to said block approximations and to said codes that describe deviations from interpolated blocks to develop said interpolated blocks. 226 Patent col. 6:55-66, see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (In construing the claims we look to the language of the claims.); Eaton Corp. v. Rockwell Intl Corp., 323 F.3d 1334, 1343 n.1 (Fed. Cir. 2003) (holding in response to said output signals from said processing unit included as part of claimed function of means-plus-function term). Thus, the function of this
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term is, to develop said interpolated blocks responsive to said block approximations [the combinations of predicted blocks with differences between the actual blocks and the predicted blocks] and to said codes that describe deviations from interpolated blocks. The specification shows that the development of interpolated blocks is clearly linked and necessarily tied to the block approximations and codes that describe deviations from interpolated blocks. Figure 2 of the specification shows that the collective structures of Decoder 25, DCT-1 34, Adder 35, and Shift Circuits 31 and 39, and Averager 32 (corresponding with the second claim term) require, for example, the block approximations produced by the collective structures of Decoder 22, DCT-1 24, Adder 27, and Shift Circuit 26 (corresponding with the first claim term), in order to develop interpolated blocks. 226 Patent Fig. 2. Furthermore, the 226 patent file history confirms the link between the above phrases in this term. See Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 994-95 (Fed. Cir. 2003) (holding that an argument made to the PTO to overcome prior art is binding on the patent owner). In order to distinguish claim 12 over the prior art, applicants argued in an amendment to the Patent Office that these two phrases were necessarily tied together as a two-stage arrangement for developing interpolated blocks, as follows: Claim 12 further defines a means for developing block approximations from those codes in the coded video signals that describes deviations from approximated blocks. It also defines means for developing interpolated blocks, from the block approximations, with the aid of those codes in the coded video signals that describe deviations from the interpolated blocks. Such a two-stage arrangement for developing interpolated blocks, using the two types of information codes contained in the coded video signals, is suggested by neither of the [prior art] references; taken separately or together. MPT v. DirecTV, Case No. 09cv0278 (S.D. Cal., filed Feb. 13, 2009), Doc. No. 448, Muth
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Decl., Ex. B, 226 File History, Feb. 6, 1990, Amendment at 2.4 During reexamination of the 226 patent, applicants argued that both the function and the corresponding structure of this term require interpolation circuits that perform interframe interpolation by averaging two block approximations and that are received from the first means-plus-function term of claim 12, as follows, in an attempt to avoid having the 226 patent invalidated: The Request relies on the interpolation circuits 526 and 527 of Figure 12 in Ericsson in an attempt to identify identical or equivalent structure to the structure recited in claim 12 of the Haskell Patent. . . . But those interpolation circuits do not perform interframe interpolation by averaging two block approximations as required by both the function and the corresponding structure of the second means-plus-function limitation in claim 12 of the Haskell Patent. (Id. at 21). Because the above structures are linked to the claimed function, the corresponding structure that performs the recited functions necessarily includes all interconnections of these elements. Asyst, 268 F.3d at 1372. Thus, the structure linked to the claimed function is, Decoder 25, DCT-1 34, Adder 35, and Shift Circuits 31 and 39, and Averager 32, including all inputs and outputs of these elements related to the claimed function. 226 Patent Fig. 2; col. 4:63-65; col. 5:7-23 (description of the structure and inputs that correspond to these elements is at col. 4:38-50).
28
A court may take judicial notice of [r]ecords and reports of administrative bodies. Barron, 13 F.3d at 1377; see also Reyns Pasta Bella, 442 F.3d at 746 n.6 (stating that courts may take judicial notice of court filings and other matters of public record).
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Claim Construction Chart U.S. Patent No. 5,227,878 United States District Court, Southern District of California Case No. 10-cv-2618 H (KSC)
Claim Term
13. An apparatus for decoding a compressed digital video signal, comprising: a means for receiving a compressed digital video bit stream; and
Courts Construction
means for receiving a compressed digital video bit stream: Function: receiving a compressed digital video bit stream Corresponding Structure: input line 50 (as shown in Fig. 2 and described at col. 14, lines 8-10)
a means responsive to a motion compensation type signal for selectively and adaptively performing motion compensated decoding of frames of the compressed digital video bit stream and fields of the compressed video bit stream.
means responsive to a motion compensation type signal for selectively and adaptively performing motion compensated decoding of frames of the compressed digital video bit stream and fields of the compressed video bit stream: Function: selectively and adaptively performing motion compensated decoding of frames of the compressed digital video bit stream and fields of the compressed video bit stream Corresponding Structure: circuit 100 (as shown in Fig. 2 and its internal circuitry as shown in Figs. 3, 4A, and 4B and as described at col. 15 line 22 to col. 18 line 10); circuit 94 (as shown in Fig.2 and the circuitry within circuit 94 as shown and described in Figs. 15, 16A, and 16B, and the description of circuit 94 and its internal circuitry set forth in col. 15 lines 11-28 and in col. 25 line 26 to col. 27 line 34); summing element 92; picture stores 100C and 100A; circuit 54 (as shown in Fig. 2, and as described in Fig. 12 and at col. 14 lines 5-68 and col. 24 lines 47-60); circuit 80 (as shown in Fig. 2 and as described at col. 15 lines 4-10); and including all interconnections of these elements selectively: in a manner that selects from among two or more options
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motion compensation type signal: a signal that identifies one of two or more available modes of motion compensation to be used in motion compensated decoding of a video signal frame: a complete set of digital representations for an image fields: subsets of a frame consisting of groups of contiguous or noncontiguous picture elements adaptively: in a manner that changes in response to the motion compensation type signal motion compensated decoding: decoding a compressed video signal using data representing motion vectors that was produced and transmitted during the compression process, where decoding means taking a compressed version of a video signal and reproducing either the original video signal or an estimate of the original video signal decoding: taking a compressed version of a video signal and reproducing either the original video signal or an estimate of the original video signal selectively and adaptively performing motion compensated decoding: performing motion compensated decoding in a manner that selects from among two or more options and that changes in response to the motion compensation type signal
Claim Term
Courts Construction
15. The apparatus of claim 13, in which decoding: the decoding means comprises: taking a compressed version of a video signal and reproducing either the original video signal or an estimate of the original video signal a means responsive to a motion compensation type signal and selectively responsive to frame motion vectors and field motion means responsive to a motion compensation type signal and selectively responsive to frame motion vectors and field motion vectors for producing an adaptive motion compensated estimate of a 103
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vectors for producing an adaptive motion compensated estimate of a decoded video signal;
decoded video signal Function: producing an adaptive motion compensated estimate of a decoded video signal Corresponding Structure: circuit 100 (as shown in Fig. 2 and its internal circuitry as shown in Figs. 3, 4A, and 4B and as described at col. 15 line 22 to col. 18 line 10); and picture stores 100C and 100A; including interconnections of these elements selectively: in a manner that selects from among two or more options frame motion vectors: motion vectors for producing signals representing frames of picture elements frame: a complete set of digital representations for an image motion compensation type signal: a signal that identifies one of two or more available modes of motion compensation to be used in motion compensated decoding of a video signal decoded video signal: a video signal that has been decoded adaptive: capable of changing in response to the motion compensation type signal field motion vectors: motion vectors for producing signals representing fields of picture elements means responsive to the compressed digital video bit stream for producing a decoded estimate error signal Function: producing a decoded estimate error signal Corresponding Structure: 104
a means responsive to the compressed digital video bit stream for producing a decoded estimate error signal; and
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 a means for performing adaptive motion compensated encoding of groups of digital representations in the input signal relating to one of frames and fields in the input signal; and, a means responsive to the adaptive motion compensated estimate and the estimate and the estimate error signal for producing a decoded video signal
(as shown in Figs. 2, 7, 12, 13, and 14 and as described at col.14 lines 5-68, at col. 19 lines 19-38, and at col. 24 line 47 to col. 25 line 25): circuit 54; circuit 64 (see Fig. 14 for internal circuitry); circuit 66 (see Fig. 13 for internal circuitry); circuit 72; and circuit 72A (see Fig. 7 for internal circuitry); and all interconnections between these elements means responsive to the adaptive motion compensated estimate and the estimate and the estimate error signal for producing a decoded video signal Function: producing a decoded video signal Structure: (as shown in Fig. 2 and as described at col. 14 lines 50-68): summing element 74 and including all inputs and outputs of this element
Claim Term
31. An apparatus for encoding digital video signals, comprising: a means for receiving a digital video input signal comprising a succession of digital representations of picture elements making up at least one video frame, the frame comprising a plurality of fields;
Courts Construction
means for receiving a digital video input signal comprising a succession of digital representations of picture elements making up at least one video frame Function: receiving a digital video input signal comprising a succession of digital representations of picture elements making up at least one video frame, the frame comprising a plurality of fields Corresponding Structure: input line 10 (as shown in Fig. 1 and described at col. 3:61-65) fields: subsets of a frame consisting of groups of contiguous or noncontiguous picture elements means for performing adaptive motion compensated encoding of groups of digital representations in the input signal relating to one of frames and fields in the input signal Function: performing adaptive motion compensated encoding 105
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 a means responsive to the video input signal prior to encoding for producing a motion compensation type signal for controlling the adaptive motion compensated encoding means.
of groups of digital representations in the input signal relating to one of frames and fields in the input signal Corresponding Structure: (a) prediction selector 38B (as shown in Fig. 1 and as described at col. 10:23-48, col. 12:10-12:36) and (i) Fig. 3 (as described at col. 15:47-col. 16:27, including previous picture store 36c) or (ii) Fig. 4 (as described at col. 16:28-col. 18:10, including previous picture store 36c and next picture store 36a), or (iii)Fig. 3 and Fig. 4 (as described at col. 15:4718:10, including previous picture store 36c and next picture store 36a); (b) summing element 11 (as shown in Fig. 1 and as described at col. 6:6-22); (c) block formatting circuit 15A (as shown in Fig. 1 and as described at col. 6:59-66, col. 5:66-6:3), and Fig. 6 (as described at col. 19:1-18); (d) discrete cosine transform circuit 16 (as shown in Fig. 1 and as described at col. 7:5-col. 7:10); and (e) visibility matrix selector and perceptual quantizer 19 (as shown in Fig. 1 and as described at col. 7:2745, col. 5:66- 6:3) or Fig. 13 (as described at col. 24:61-col. 25:8). adaptive: No construction is necessary. This term should be given its ordinary meaning. frame: a complete set of digital representations for an image groups of digital representations: This term should be given its plain meaning to one of skill in the art, and therefore does not require construction. means responsive to the video input signal prior to encoding for producing a motion compensation type signal for controlling the adaptive motion compensated encoding means Function: producing a motion compensation type signal for controlling the adaptive motion compensated 106
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 a means for performing variable word length encoding adaptively in response to the video input signals
encoding means Corresponding Structure: motion estimation circuit 37 (as shown in Fig. 1B and as described at col. 10, lines 11-18, col. 12, lines 10-16, and col. 12, lines 37-42) motion compensated prediction analyzer 38A (as shown in Fig. 1 and as described at col. 12:25-30) motion compensation type signal: a signal that identifies one of two or more available modes of motion compensation to be used in motion compensated encoding of a video signal
Claim Term
32. An apparatus for encoding digital video signals, comprising: a means for receiving digital video input signals
Courts Construction
means for receiving digital video input signals Function: receiving digital video input signals Corresponding Structure: input line 10 (as shown in Fig. 1 and described at col. 3:61-65) means for performing variable word length encoding adaptively in response to the video input signals Function: performing variable word length encoding adaptively in response to the video input signals. Corresponding Structure: a) variable word length choice analyzer 23A (as shown in Fig. 1 and described at col. 9:3-8 and as shown in Figure 10 and as described at col. 21:5023:23), and encoder and multiplexer 24 (as shown in Fig. 1 and as described at col. 9:8-30); see also col. 4:65-68; or b) encoder and multiplexer 24 (as shown in Fig. 1 and as described at col. 9:8-30) and scan selector 23 (as described at col. 8:36- 9:8); or Fig. 14 (as described at col. 25:9-25) adaptively: No construction is necessary. This term should be given its ordinary meaning.
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Amended Claim Construction Charts U.S. Patent No. 5,136,377 United States District Court, Southern District of California Case No. 10-cv-2618-H (KSC)
Claim Term
Courts Construction
1. An encoder including a coder for frame: developing encoder output signals from a complete set of digital representations for an image frame difference signals, coder: hardware, which may include a general purpose processor programmed with appropriate software, that changes a video signal from one form of representation to another prediction means responsive to said prediction means responsive to said encoder output signals for predicting encoder output signals for predicting a next a next frames signals, and frames signals: Function: predicting a next frames signals Corresponding Structure: As shown in Figure 2 and as described in those portions of 5:60-7:20 describing these elements: adders 41 and 54; subtractor 44; multiplier 45; motion compensator 43; inverse quantizer 39; inverse DCT 40; and including all inputs, outputs, and interconnections of these elements necessary to the claimed function. means for developing said frame difference signals from applied next frame signals of an image frame and from output signals of said prediction means, the improvement comprising: means for developing said frame difference signals from applied next frame signals of an image frame and from output signals of said prediction means Function: developing the frame difference signals mentioned earlier in the claim from applied next frame signals of an image frame and from output signals of said prediction means Corresponding Structure: As shown in Figure 2 and described at 5:63-6:3: subtractors 35 and 36, and all inputs, outputs, and interconnections of these elements necessary to the claimed function said coder including controllable controllable quantizer means that quantizes said 108
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quantizer means that quantizes said difference signals in accordance with a quantization schema that varies with the dictates of a control signal; and
difference signals in accordance with a quantization schema that varies with the dictates of a control signal Function: Quantizing the difference signals mentioned earlier in the claim in accordance with a quantization schema that varies with the dictates of a control signal Corresponding Structure: Quantizer vector selector 38 (QVS). The QVS is shown in context in Figure 2, and its general role is described at 5:60-6:12. (The other elements cited in this passage are not part of the corresponding structure for this element.) The internal circuitry of the QVS is shown in Figures 9 and 10, and described at 15:57-17:34. The elements shown in Figures 9 and 10 are part of the overall corresponding structure for this element. Certain components in the QVS are described further at 17:34-18:16. (The variable length encoders 46 and 47 discussed in this passage are not part of the corresponding structure for this element.) quantization schema: a way of quantizing
said coder including means, responsive to said applied next frame signals, to develop said control signal, which control signal varies throughout said applied next frame with changes in at least one selected characteristic of said applied next frame signals.
said coder including means, responsive to said applied next frame signals, to develop said control signal, which control signal varies throughout said applied next frame with changes in at least one selected characteristic of said applied next frame signals: Function: developing the control signal, which varies throughout the applied next frame with changes in at least one selected characteristic of the applied next frame signals Corresponding Structure: Perceptual coder 49 (as shown in Figure 2) including at least one of the following sets of internal circuitry: (1) generator 93 (as shown in Figure 12), where generator 93 includes at least texture processors 96 109
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and 98, combiner 99, and mapping look up table 100 (as shown in Figure 13, and described at 20:3221:12, 21:42-43, 21:53-22:5), and where texture processors 96 and 98 each include at least look-up table 114 and one of the accumulators 106, 107, or 108 (as shown in Figure 14 and described at 21:4349); (2) generator 93 (as shown in Figure 12), where generator 93 includes at least: adder 101, brightness correction truncation circuit 97, and brightness correction look-up table 110 (as Shown in Figure 13, and described at 21:27-34, 22:6-10); or (3) rate processor 91 (as shown in Figure 12 and described at 22:36-23:40) selected characteristic: Any of the following characteristics of the applied next frame signals, alone or in combination: (1) a measure of texture, (2) a measure of brightness, or (3) a measure of buffer fullness.
Claim Term
means, responsive to said applied next frame signals, to develop said control signal, which control signal varies throughout said applied next frame with changes in at least one selected characteristic of said applied next frame signals ... 4. The encoder of claim 1 wherein said selected characteristic is a measure of texture in said applied next frame signals.
Courts Construction
wherein said selected characteristic is a measure of texture in said applied next frame signals Function: developing the control signal, which varies throughout the applied next frame at least with changes to a measure of texture in the applied next frame signals Corresponding Structure: Perceptual coder 49 (as shown in Figure 2) including at least a generator 93(as shown in Figure 12), where generator 93 includes at least the following internal circuitry: texture processors 96 and 98, combiner 99, and mapping look up table 100 (as shown in Figure 13, and described at 20:32-21:12, 21:42-43, 21:53-22:5), where texture processors 96 and 98 each include at least lookup table 114 and one of the accumulators 106, 107, or 108 (as shown in Figure 14 and described at 21:43-49)
Claim Term
8. The encoder of claim 1 further coder: 110
Courts Construction
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comprising an output buffer for receiving said encoder output signals, and said coder comprising means for receiving signals from said output buffer that indicate the level of buffer fullness of said output buffer.
hardware, which may include a general purpose processor programmed with appropriate software, that changes a video signal from one form of representation to another means for receiving signals from said output buffer that indicate the level of buffer fullness of said output buffer: Function: receiving signals from said output buffer that indicate the level of buffer fullness of said output buffer Corresponding Structure: Perceptual coder 49, and its interconnection to BFF block 56, as shown in Figure 2
Claim Term
26. An encoder comprising: prediction means responsive to output signals of said encoder, for developing frame prediction signals
Courts Construction
prediction means responsive to output signals of said encoder, for developing frame prediction signals: Function: developing frame prediction signals in response to output signals of the encoder Corresponding Structure: adders 41 and 54; subtractor 44; multiplier 45; inverse quantizer 39; inverse DCT 40; and motion compensator 43 (as shown in Figure 2 and as described at col. 6:9-31, 40-46) frame: a complete set of digital representations for an image Function: developing frame difference signals in response to said frame prediction means and applied frame signals Structure: subtractors 35 and 36 (as shown in Figure 2 and described at col 5:63-6:4, 40-46)
means for developing frame difference signals in response to said frame prediction means and applied frame signals
coder means, responsive to said frame difference signals and to a control signal, for encoding frame difference signals under direction of said control signal, where said coder
coder means, responsive to said frame difference signals and to a control signal, for encoding frame difference signals under direction of said control signal, where said coder means codes different portions of said frame difference signals 111
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means codes different portions of said frame difference signals with different coding schemas, where different coding schemas yield different numbers of bits when coding any given signal, said coder means thereby generates a number of bits when encoding said applied frame signals; and
with different coding schemas, where different coding schemas yield different numbers of bits when coding any given signal, said coder means thereby generates a number of bits when encoding said applied frame signals Function: encoding the frame difference signals under direction of the control signal mentioned earlier in the claim Corresponding Structure: (a) Quantizer vector selector 38 (QVS). The QVS is shown in context in Figure 2, and its general role is described at 5:60-6:12. (The other elements cited in this passage are not part of the corresponding structure for this element.) The internal circuitry of the QVS is shown in Figures 9 and 10, and described at 15:57-17:34. The elements shown in Figures 9 and 10 are part of the overall corresponding structure for this element. Certain components in the QVS are described further at 17:34- 18:16; (b) variable length encoder 46 and 47 (as shown in Fig. 2 and described at cols. 17:46- 8:33), including the quantized superblock vector signals input to this element and codebook vectors and quantized superblock vectors output by this element
control means for developing said control signal in response to said encoder output signals, to control the number of bits generated by said coder means while encoding said applied frame signals
control means for developing said control signal in response to said encoder output signals, to control the number of bits generated by said coder means while encoding said applied frame signals: Function: developing said control signal in response to said encoder output signals to control the number of bits generated by said coder means while encoding the applied frame signals Corresponding Structure: perceptual coder 49 (as shown in Figure 2), including rate processor 91 (as shown in Figure 12 and described at 22:36-23:40)
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Claim Construction Chart U.S. Patent No. 4,958,226 United States District Court, Southern District of California Case No. 10-cv-2618-H (KSC)
Claim Term
12. A circuit responsive to coded video signals where the video signals comprise successive frames and each frame includes a plurality of blocks and where the coded video signals comprise codes that describe deviations from approximated blocks and codes that describe deviations from interpolated blocks, comprising;
Courts Construction
circuit: any path that can carry electrical current coded: change from one form of representation to another approximated blocks: predicted blocks blocks: sets of pixels (picture elements also called pels) that constitute a portion of a frame frame: a complete set of digital representations for an image deviations: differences
means for developing block approximations from said codes that describe deviations from approximated blocks; and
means for developing block approximations from said codes that describe deviations from approximated blocks: Function: developing block approximations [the combinations of predicted blocks with differences between the actual blocks and the predicted blocks] from said codes that describe deviations from approximated blocks. Corresponding Structure: Decoder 22, DCT-1 24, Adder 27, and Shift Circuit 26, including all inputs and outputs of these elements related to the claimed function (See Fig. 2; Col. 4, lines 3-10, 26-32, Col. 4, line 63 to Col. 5, line 7). deviations: differences
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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 means responsive to said block approximations and to said codes that describe deviations from interpolated blocks to develop said interpolated blocks
block approximations: the combinations of predicted blocks with differences between the actual blocks and the predicted blocks approximated blocks: predicted blocks means responsive to said block approximations and to said codes that describe deviations from interpolated blocks to develop said interpolated blocks: Function: to develop said interpolated blocks responsive to said block approximations [the combinations of predicted blocks with differences between the actual blocks and the predicted blocks] and to said codes that describe deviations from interpolated blocks. Corresponding Structure: Decoder 25, DCT-1 34, Adder 35, and Shift Circuits 31 and 39, and Averager 32, including all inputs and outputs of these elements related to the claimed function (See Fig. 2; Col. 4, lines 63-65; Col. 5, lines 7-23 [description of the structure and inputs that correspond to these elements is at Col. 4, lines 38-50]). block approximations: the combinations of predicted blocks with differences between the actual blocks and the predicted blocks deviations: differences
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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Dated: November 26, 2012
CERTIFICATE OF SERVICE The undersigned hereby certifies that a true and correct copy of the above and foregoing document has been served on November 26, 2012 to all counsel of record who are deemed to have consented to electronic service via the Court's CM/ECF system per Fed. R. Civ. P. 5(b)(3). Any other counsel of record will be served by electronic mail, facsimile and/or overnight delivery.
By:
s/Francis J. Albert Francis J. Albert (SBN 247741), albert@fr.com
Attorneys for Defendants Apple Inc. and LG Electronics, Inc., LG Electronics U.S.A., Inc., LG Electronics Mobilecomm U.S.A., Inc.
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Case 3:10-cv-02618-H-KSC Document 661 Filed 11/26/12 Page 1 of 116

Case No. 10-CV-2618 H (KSC)

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APPLE AND LG PROPOSED PRELIMINARY JURY INSTRUCTIONS

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Source: Federal Circuit Bar Associate Model Instruction No. A.1

Case No. 10-CV-2618 H (KSC)

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Case No. 10-CV-2618 H (KSC)

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Case No. 10-CV-2618 H (KSC)

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Source: Federal Circuit Bar Associate Model Instruction No. A.3

Case No. 10-CV-2618 H (KSC)

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Source: Federal Circuit Bar Associate Model Instruction No. A.4.

Case No. 10-CV-2618 H (KSC)

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Source: Federal Circuit Bar Associate Model Instruction No. A.5

Case No. 10-CV-2618 H (KSC)

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APPLE AND LG PROPOSED FINAL JURY INSTRUCTIONS

Source: Ninth Circuit Model Instruction 1.1C

Case No. 10-CV-2618 H (KSC)

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Source: Ninth Circuit Model Instruction 1.6

Case No. 10-CV-2618 H (KSC)

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Source: Ninth Circuit Model Instruction 1.7

Case No. 10-CV-2618 H (KSC)

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Source: Ninth Circuit Model Instruction 1.9

Case No. 10-CV-2618 H (KSC)

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Source: Ninth Circuit Model Instruction 1.8

Case No. 10-CV-2618 H (KSC)

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Source: Ninth Circuit Model Instruction 1.10

Case No. 10-CV-2618 H (KSC)

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Source: Ninth Circuit Model Instruction 1.11

Case No. 10-CV-2618 H (KSC)

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Source: Ninth Circuit Model Instruction 2.11

Case No. 10-CV-2618 H (KSC)

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Source: Ninth Circuit Model Instruction 2.4

Case No. 10-CV-2618 H (KSC)

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Source: Ninth Circuit Model Instruction 2.12

Case No. 10-CV-2618 H (KSC)

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Case No. 10-CV-2618 H (KSC)

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Source: Federal Circuit Bar Associate Model Instruction No. B 2.1.

Case No. 10-CV-2618 H (KSC)

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Source: Federal Circuit Bar Associate Model Instruction No. B 2.2.