2018 Clean Working Version 2017-3-15 aipla model Patent Jury Instructions

3. Infringement

3.0 Infringement—Generally

Questions _____ through _____ of the Verdict Form read as follows: [READ TEXT OF INFRINGEMENT VERDICT QUESTIONS].

I will now instruct you as to the rules you must follow when deciding whether [the Plaintiff] has proven that [the Defendant] infringed any of the claims of the [abbreviated patent number] patent.

Patent law gives the owner of a valid patent the right to exclude others from importing, making, using, offering to sell, or selling [[the patented invention] [a product made by a patented method]] within the United States during the term of the patent. Any person or business entity that has engaged in any of those acts without the patent owner’s permission infringes the patent. Here, [the Plaintiff] alleges that [the Defendant]’s [allegedly infringing product] infringes claim[s] [claims in dispute] of [the Plaintiff]’s [abbreviated patent number] patent.

You have heard evidence about both [the Plaintiff]’s commercial [[product] [method]] and [the Defendant]’s accused [[product] [method]]. However, in deciding the issue of infringement you may not compare [the Defendant]’s accused [[product] [method]] to [the Plaintiff]’s commercial [[product] [method]]. Rather, you must compare the [Defendant]’s accused [[product] [method]] to the claims of the [abbreviated patent number] patent when making your decision regarding infringement.

Practice Note: To avoid jury confusion, it is important to distinguish those claims that are allegedly infringed directly from those that are allegedly infringed indirectly. In addition, it is important to distinguish those claims that are allegedly infringed literally from those allegedly infringed under the doctrine of equivalents. Finally, for indirect infringement, induced infringement should be distinguished from contributory infringement. In order to provide the jury with clear guidance and avoid confusion, the Court should only charge the jury on the specific infringement issues that are actually at issue. For example, if only literal infringement is asserted, there is no need to instruct the jury on the doctrine of equivalents.

A patent may be infringed directly or indirectly. As explained further in the following Instructions, direct infringement results if the accused [[product] [method]] is covered by at least one claim of the patent. Indirect infringement results if the defendant induces another to infringe a patent or contributes to the infringement of a patent by another.

35 U.S.C. § 271; Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111 (2014); Merial Ltd. v. CIPLA Ltd., 681 F.3d 1283, 1302-03 (Fed. Cir. 2012); WiAV Solutions LLC v. Motorola, Inc., 631 F.3d 1257, 1264 (Fed. Cir. 2010); WordTech Sys., Inc. v. Integrated Network Solutions, Inc., 609 F.3d 1308, 1313-18 (Fed. Cir. 2010).

3.1 Direct Infringement—Knowledge of the Patent and Intent to Infringe Are Immaterial

In this case, [the Plaintiff] asserts that [the Defendant] has directly infringed the patent. [The Defendant] is liable for directly infringing [the Plaintiff]’s patent if you find that [the Plaintiff] has proven that it is more likely than not that [the Defendant] made, used, imported, offered to sell, or sold the invention defined in at least one claim of [the Plaintiff]’s patent.

A person or entity can directly infringe a patent without knowing of the patent or without knowing that what they are doing is patent infringement. They can also directly infringe a patent even though they believe in good faith that what they are doing does not infringe a patent, or if they believe in good faith that the patent is invalid.

35 U.S.C. § 271(a); Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920 (2015); Medtronic, Inc. v. Mirowski Family Ventures, LLC, 134 S. Ct. 843 (2014); Global-Tech Appliances, Inc. v. SEB, S.A., 131 S. Ct. 2060, 2065 n.2 (2011); Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 35 (1997); DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1330 (Fed. Cir. 2001); Seal-Flex, Inc. v. Athletic Track & Court Constr., 172 F.3d 836, 842 (Fed. Cir. 1999); SmithKline Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988).

3.2 Direct Infringement—Literal Infringement

To determine literal infringement, you must compare the accused [[product] [method]] with each patent claim [the Plaintiff] asserts is infringed, using my instructions as to the meaning of the terms the patent claims use.

A patent claim is literally infringed only if [the Defendant]’s [[product] [method]] includes each and every [[element] [method step]] recited in that patent claim. If [the Defendant]’s [[product] [method]] does not contain one or more [[elements] [method steps]] recited in a claim, [the Defendant] does not literally infringe that claim.

You must determine literal infringement with respect to each patent claim individually.

The accused [[product] [method]] should be compared to the invention described in each patent claim it is alleged to infringe. The same [[element] [method step]] of the accused [[product] [method]] may satisfy more than one element of a patent claim.

Limelight Networks, Inc. v. Akamai Techs., Inc., ___ U.S. ___, 134 S. Ct. 2111, 2117 (2014); Intellectual Sci. & Tech. v. Sony Elect., 589 F.3d 1179, 1183 (Fed. Cir. 2009); Hutchins v. Zoll Med. Corp., 492 F.3d 1377, 1380 (Fed. Cir. 2007); DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1330-31 (Fed. Cir. 2001); Gen. Mills, Inc. v. Hunt-Wesson, Inc., 103 F.3d 978, 981 (Fed. Cir. 1997); Martin v. Barber, 755 F.2d 1564, 1567 (Fed. Cir. 1985); Amstar Corp. v. Envirotech Corp., 730 F.2d 1476, 1481-82 (Fed. Cir. 1984).

3.2.1 Direct Infringement—Joint Infringement⁶

In this case, [the Defendant] is accused of direct infringement. [The Defendant] asserts that it has not directly infringed the [abbreviated patent number] patent because it did not perform each step of a claimed method or did not perform all the steps necessary to make, sell, offer for sale, or import [allegedly infringing product], because [another party] performed one or more of the acts necessary to infringe. If you find that one or more of the steps cannot be attributed to [the Defendant], then you must find that there is no joint infringement. For example, if you find that several parties have collectively committed the acts necessary to infringe but no single party has committed all of the required acts, then you must find that there is no joint infringement.

However, if you find that [the Defendant] personally performed all acts necessary to infringe, or that the steps performed by the other party are attributable to [the Defendant], then [the Defendant] directly infringed. You may find that the steps are attributable to [the Defendant] if you find that either (a) [the Defendant] exercised direction or control over [the other party] when it performed these acts or (b) [the Defendant] and [the other party] formed a joint enterprise. A joint enterprise requires proof of four elements:

(1) an agreement, express or implied, among the members of the group;

(2) a common purpose to be carried out by the group;

(3) a community of pecuniary interest in that purpose, among the members; and

(4) an equal right to a voice in the direction of the enterprise, which gives an equal right of control.

If you do not find that either (a) [the Defendant] exercised direction or control over [the other party] when it performed these acts or (b) [the Defendant] and [the other party] formed a joint enterprise, then you must find that [the Defendant] did not directly infringe.

Limelight Networks, Inc. v. Akamai Techs., Inc., ___ U.S. ___, 134 S. Ct. 2111 (2014); Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1023 (Fed. Cir. 2015) (en banc); Eli Lilly and Co. v. Teva Parenteral Meds., 845 F.3d 1357, 1364-65 (Fed. Cir. 2017); Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008).

Practice Note: The concepts of direct infringement based on joint infringement and indirect infringement based on inducement to infringe (Instruction 3.10) are closely related and may be confusing to the jury. Care should be taken to be clear regarding the Instructions on each issue and what findings the jury is being asked to make. Only if these theories of infringement are alleged and have been adequately supported by sufficient evidence should these Instructions be given. If both Instructions are being given, consideration should be given to instructing on joint infringement and inducement to infringe (Instruction 3.10) back-to-back and in a manner that readily allows the jury to appreciate the difference between the two theories, the evidence required to support each, and the specific findings they are being asked to make on each.

3.3 Literal Infringement of Means-Plus-Function or Step-Plus-Function Claims⁷

The Court has instructed you that claims _____ through _____of the [abbreviated patent number] patent contain [[means-plus-function] [step-plus-function]] clauses. To establish infringement, [the Plaintiff] must prove that it is more likely than not that the [[part of the Defendant’s product] [step in the Defendant’s method]] (1) performs the recited function of “__________________________________________________________________________”, and (2) is identical or equivalent to the [[structure] [step]] described in the patent specification and drawings for performing this recited function, namely, “_____________________________________.”

In deciding whether [the Plaintiff] has proven that [the Defendant]’s [[product] [method]] includes structure covered by a [[means-plus-function] [step-plus-function]] requirement, you must first decide whether the [[product] [method]] has any [[structure] [step]] that performs the specific function [step] that I just described to you. If not, the claim containing that means-plus-function [or step-plus-function] requirement is not infringed.

Even if you find that [the Defendant]’s [[product] [method]] includes some [[structure] [step]] that performs this specific function, you must next decide whether the [[structure] [step ]] in [the Defendant]’s [[product] [method]] is the same as, or equivalent to, the structure recited in the specification for performing this specific function.

Whether the [[structure] [act]] of the accused product is equivalent to a [[structure] [act]] described in the patent specification is decided from the perspective of a person of ordinary skill in the art. If a person of ordinary skill in the art would consider the differences between the [[structure] [act]] found in [the Defendant]’s product and a [[structure] [act]] described in the patent specification to be insubstantial, the [[structures] [acts]] are equivalent. One way of showing that an element is only insubstantially different is to show that it performs the same function, in substantially the same way, to achieve substantially the same result as would be achieved by the element that is not literally present in the accused [[structure] [act]].

Only if you find both that [the Defendant]’s [[product] [method]] has the same or equivalent claimed [[structure] [step]] for performing the specific claimed function can you find that the claim containing the [means-plus-function] or [step-plus-function] limitation is infringed. If you find that either the recited [[structure] [step]] is not performed or that the [[structure] [step]] in [the Defendant]’s product that performs this specific function is not the same and is not equivalent, you must find that the claim containing the means-plus-function limitation is not infringed.

35 U.S.C. § 112; Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc); Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1457 (Fed. Cir. 1998) (en banc); In re Donaldson Co., Inc., 16 F.3d 1189, 1193 & 1195 (Fed. Cir. 1994) (en banc); Chicago Bd. Options Exchange, Inc. v. Int’l Secs. Exchange, LLC, 677 F.3d 1361, 1366-69 (Fed. Cir. 2012); Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1304-05 (Fed. Cir. 2011); General Protecht Gp., Inc. v. Int’l Trade Comm’n., 619 F.3d 1303, 1312-13 (Fed. Cir. 2010); Baran v. Med. Device Tech., Inc., 616 F.3d 1309, 1316-17, (Fed. Cir. 2010); Intellectual Sci. and Tech., Inc. v. Sony Elecs., Inc., 589 F.3d 1179, 1183 (Fed. Cir. 2009); Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333-34 (Fed. Cir. 2006); Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1307-09 (Fed. Cir. 1998); Kraft Foods Inc. v. Int’l Trade Comm., 203 F.3d 1362, 1371-73 (Fed. Cir. 2000); Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1266-68 (Fed. Cir. 1999); A1-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1319-21 (Fed. Cir. 1999).

3.4 Infringement of Dependent Claims

There are two different types of claims in the patent. One type is called an independent claim. The other is called a dependent claim.

An independent claim does not refer to any other claim of the patent. For example, [Independent Claim] is an independent claim. An independent claim must be read separately from the other claims to determine the scope of the claim.

A dependent claim refers to at least one other claim in the patent. For example, [Dependent Claim] is a dependent claim that refers to claim [Independent Claim]. A dependent claim includes all of the elements recited in the dependent claim, as well as all of the elements of [Independent Claim], the claim to which it refers.

To establish literal infringement of [Dependent Claim], [the Plaintiff] must show that it is more likely than not that the [Defendant]’s [[product] [method]] includes each and every element of [Independent Claim] and [Dependent Claim].

If you find that [Independent Claim] from which [Dependent Claim] depends is not literally infringed, then you must find that [Dependent Claim] is also not literally infringed.

Wolverine World Wide v. Nike Inc., 38 F.3d 1192, 1196-99 (Fed. Cir. 1994) (citing Johnston v. IVAC Corp., 885 F.2d 1574, 1577-89 (Fed. Cir. 1989)); Wilson Sporting Goods v. David Geoffrey & Assocs., 904 F.2d 677, 685-86 (Fed. Cir. 1990); Wahpeton Canvas Co., Inc. v. Frontier, Inc., 870 F.2d 1546, 1552-53 n.9 & n.10 (Fed. Cir. 1989); Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 626 (Fed. Cir. 1985).

3.5 Infringement of “Comprising of”, “Consisting of”, and “Consisting Essentially of” Claims

(Alternative 1: “comprising”) The preamble to claim _____ uses the phrase [RECITE THE PREAMBLE “_________ comprising”]. The word “comprising” means “including the following but not excluding others.”

If you find that [the Defendant]’s [[product] [method]] includes all of the elements in claim _____, even if [the Defendant]’s [[product] [method]] includes additional [[components] [method steps]], you must find that [the Defendant]’s [product] [method] literally infringes claim _____.

(Alternative 2: “consisting of”) The preamble to claim _____ uses the phrase [RECITE THE PREAMBLE “_________ consisting of”]. The word “consisting of” means “including the following and excluding others.”

If you find that [the Defendant]’s [[product] [method]] includes all of the elements in claim _____, and that [the Defendant]’s [[product] [method]] includes additional [[components] [method steps]], you must find that [the Defendant]’s product does not literally infringe claim _____.

(Alternative 3: “consisting essentially of”) The preamble to claim _____ uses the phrase [RECITE THE PREAMBLE “_________ consisting essentially of”]. The words “consisting essentially of” mean “including the following and possibly including unlisted [[components] [method steps]] that do not materially affect the invention.”

If you find that [the Defendant]’s [[product] [method]] includes all of the elements in claim _____, you must find that [the Defendant]’s [[product] [method]] literally infringes claim _____, even if [the Defendant]’s [[product] [method]] includes additional [[components] [method steps]], provided the presence of these additional [[components] [method steps]] does not negate an element of claim _____ or materially affect the basic and novel properties of the invention.

CIAS Inc. v. Alliance Gaming Corp., 504 F.3d 1356 (Fed. Cir. 2007); Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1331 (Fed. Cir. 2004); Invitrogen Corp. v. Biocrest Mfg. LP, 327 F.3d 1364, 1368 (Fed. Cir. 2003); AFG Indus. v. Cardinal IG Co., 239 F.3d 1239, 1244-45 (Fed. Cir. 2001); PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1271 (Fed. Cir. 1986); AB Dick Co. v. Burroughs Corp., 713 F.2d 700, 703 (Fed. Cir. 1983).

Practice Note: If the claim is literally infringed, there is no need to resort to the doctrine of equivalents. Similarly, the doctrine of equivalents is available only if one or more of the claim elements is not literally met. The Court should consider requiring the patentee to state its theory of infringement prior to trial and the jury should be charged on only the theory of infringement—literal and/or equivalents—that is adequately supported by the evidence.

3.6 Direct Infringement—Infringement under the Doctrine of Equivalents⁸

If you decide that [the Defendant]’s [[product] [method]] does not literally infringe an asserted patent claim, you must then decide whether it is more probable than not that [[product] [method]] infringes the asserted claim under what is called the “doctrine of equivalents.” Under the doctrine of equivalents, the [[product] [method]] can infringe an asserted patent claim if it includes [[components] [method steps]] that are equivalent to those elements of the claim that are not literally present in the [[product] [method]]. If the [[product] [method]] is missing an equivalent [[component] [method step]] to even one [[component] [method step]] of the asserted patent claim, the [[product] [method]] cannot infringe the claim under the doctrine of equivalents. Thus, in making your decision under the doctrine of equivalents, you must look at each individual element of the asserted patent claim and decide whether the [[product] [method]] has an equivalent [[component] [method step]] to each individual claim element that is not literally present in the [[product] [method]].

An equivalent of an element is a [[component] [action]] that is insubstantially different from the claimed element. One way of showing that an element is insubstantially different is to show that it performs substantially the same function, in substantially the same way, to achieve substantially the same result as would be achieved by the element that is not literally present in the accused [[product] [method]].

In deciding whether any difference between a claim requirement and the [[product] [method]] is not substantial, you may consider whether, at the time of the alleged infringement, persons of ordinary skill in the field would have known of the interchangeability of the [[component] [method step]] with the claimed requirement. However, known interchangeability between the claim requirement and the [[component] [method step]] of the [[product] [method]] is not necessary to find infringement under the doctrine of equivalents.
[Further, the same [[component] [method step]] of the accused [[product] [method]] may satisfy more than one element of a claim. If you find that all of the remaining elements of the claim are present in the accused [[product] [method]] and, further, that these differences are insubstantial, you may find infringement under the doctrine of equivalents.]

[Further, two [[components] [method steps]] of the accused [[product] [method]] may satisfy a single claim element. If you find that all of the remaining elements of the claim are present in the accused [[product] [method]] and, further, that this difference is insubstantial, you may find infringement under the doctrine of equivalents.]

Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997); Graver Tank & Mfg. Co., v. Linde Air Prods. Co., 339 U.S. 605, 609 (1950); Intendis GmbH v. Glenmark Pharmaceuticals Inc., 822 F.3d 1355 (Fed. Cir. May 16, 2016); Ring & Pinion Serv., Inc. v. ARB Corp., 743 F.3d 831, 834 (Fed. Cir. 2014); Johnson & Johnston Assoc. v. R.E. Serv. Co., 285 F.3d 1046, 1053-54 (Fed. Cir. 2002) (en banc); Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1480 (Fed. Cir. 1998); Dolly, Inc. v. Spalding & Evenflo Cos., 16 F.3d 394, 397 (Fed. Cir. 1994); Datascope Corp. v. SMEC, Inc., 776 F.2d 320, 325 (Fed. Cir. 1985); Cadence Pharm. Inc. v. Exela PharmSci Inc., 780 F.3d 1364, 1371-72 (Fed. Cir. 2015); Eagle Comtronics, Inc. v. Arrow Commc’n. Labs., Inc., 305 F.3d 1303, 1316-17 (Fed. Cir. 2002); DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1332 (Fed. Cir. 2001) (citing Dolly, Inc. v. Spalding & Evenflo Cos., Inc., 16 F.3d 394, 398 (Fed. Cir. 1994)).

7. Limitations on the Doctrine of Equivalents—Prior Art⁹

The patentee is not entitled to a scope of equivalents under the “doctrine of equivalents” that is so broad that the claim would cover [[products] [methods]] that were already in the prior art. In this case, [the Defendant] alleges that the scope of the claim under the doctrine of equivalents asserted by [the Plaintiff] would cover the prior art, namely, __________________ __________________________________________________________________. In order to show that [the Plaintiff] is not entitled to this scope of equivalents, [the Defendant] must put forth evidence for you to consider whether ____________ ______________________ ____________________ ___________ was in the prior art.¹⁰ [The Plaintiff] must prove to you that the scope of the claim under the doctrine of equivalents is patentable over the prior art by a preponderance of the evidence. Preponderance of the evidence means more likely than not. This is different, and lower than the burden Defendant has to prove invalidity, which is by clear and convincing evidence.

If you find that [the Plaintiff] has not met its burden, you may consider that [the Defendant] has established this defense. If you find that the scope of [the Plaintiff]’s claim under the doctrine of equivalents, namely, ______________ _______________________ was not in the prior art, then you must determine whether the [the Plaintiff] has shown that [the Defendant] infringes the claim under the doctrine of equivalents by a preponderance of the evidence.

DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1322-24 (Fed. Cir. 2009); Interactive Pictures Corp. v. Infinite Pictures, Inc., 274 F.3d 1371, 1380-81 (Fed. Cir. 2001); Fiskars, Inc. v. Hunt Mfg. Co., 221 F.3d 1318, 1323 (Fed. Cir. 2000); Conroy v. Reebok Int’l, Ltd., 14 F.3d 1570, 1576-77 (Fed. Cir. 1994); Wilson Sporting Goods Co. v. David Geoffrey & Assocs., 904 F.2d 677, 683-85 (Fed. Cir. 1990).

3.8 Limitations on the Doctrine of Equivalents—Prosecution History Estoppel¹¹

Practice Note: The doctrine of prosecution history estoppel is determined by the Court. The following Instruction should be given only if the Court has determined that the doctrine of prosecution history estoppel applies as a matter of law. Specifically, this requires that the patentee made a representation or argument, or that an amendment to the claim was made for reasons related to patentability, and the presumption that the equivalent subject matter has been surrendered by the patentee has not been rebutted. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 740-741 (2002) (explaining the presumption, and how it can be rebutted); Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359, 1366-67 (Fed. Cir. 2003) (en banc) (same).

In this case, I have determined, as a matter of law, that the doctrine of equivalents cannot be applied to certain elements of the asserted claims; specifically, I am instructing you that the doctrine of equivalents cannot be applied to the following elements of the asserted claims:

[LIST ELEMENTS ON A CLAIM-BY-CLAIM BASIS]

Consequently, each of the elements above must be literally present within [the Defendant]’s [[product] [method]] for there to be infringement of the claim. Unless you find that each of the elements of the claims is literally present in [the Defendant]’s [[product] [method]], you must find that there is no infringement.

As for the remaining elements of the asserted claims not listed above, you are permitted to find these elements with the doctrine of equivalents analysis that I instructed you on earlier.

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002); Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 30-34 (1997); Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359, 1366-67 (Fed. Cir. 2003) (en banc).

3.9 Limitations on the Doctrine of Equivalents—Subject Matter Dedicated to the Public¹²

When a patent discloses subject matter but does not include it within its claims, the patentee has dedicated the unclaimed subject matter to the public. If [the Patentee] alleges that a [[component] [method step]] of [the Defendant]’s [[product] [method]] that [the patent] discloses but does not claim is equivalent to an element of the claim that is missing from [the Defendant]’s [[product] [method]], the [[component] [method step]] cannot be an equivalent. Instead, the subject matter that was disclosed but not claimed is dedicated to the public. This is true even if the failure to claim the subject matter was wholly unintentional.

In this case, I have determined, as a matter of law, that certain subject matter from the patent has been dedicated to the public, and I am instructing you that the doctrine of equivalents cannot be applied to the following elements of the asserted claims:

[LIST ELEMENTS ON A CLAIM-BY-CLAIM BASIS]

Consequently, each of the elements above must be literally present within [the Defendant]’s [[product] [method]] for there to be infringement of the claim. Unless you find that each of the elements of the claims is literally present in [the Defendant]’s [[product] [method]], you must find that there is no infringement.

SanDisk Corp. v. Kingston Tech. Co., 695 F.3d 1348, 1363-64 (Fed. Cir. 2012); Pfizer, Inc. v. Teva Pharms., USA, Inc., 429 F.3d 1364, 1378-79 (Fed. Cir. 2005); PSC Computer Prods. v. Foxconn Int’l, Inc., 355 F.3d 1353 (Fed. Cir. 2004); Toro Co. v. White Consol. Indus., Inc., 383 F.3d 1326 (Fed. Cir. 2004); Johnson & Johnston Assocs. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1054-55 (Fed. Cir. 2002) (en banc).

3.10 Actively Inducing Patent Infringement

Practice Note: The concepts of direct infringement based on joint infringement (Instruction 3.2) and indirect infringement based on inducement to infringe are closely related and may be confusing to the jury. Care should be taken to be clear regarding the Instructions on each issue and what findings the jury is being asked to make. Only if these theories of infringement are alleged and have been adequately supported by sufficient evidence should these Instructions be given. If both Instructions are being given, consideration should be given to instructing on joint infringement (Instruction 3.2) and inducement to infringe back-to-back and in a manner that readily allows the jury to appreciate the difference between the two theories, the evidence required to support each, and the specific findings they are being asked to make on each.

In this case, [the Defendant] is accused of actively inducing [alleged direct infringer] to directly infringe [the Plaintiff]’s patent, either literally or under the doctrine of equivalents. To find that [the Defendant] actively induced infringement, it is not necessary to show that [the Defendant] personally directly infringed, provided (1) a single actor is responsible for direct infringement, namely, all of the [[components] [method steps]] of the [[product] [method]] accused of infringing the patent, and (2) [the Defendant] actively induced these acts of infringement by [alleged direct infringer]. If you do not find that there is direct infringement by a single actor, or if you do not find that [the Defendant] actively induced these acts, you must find that [the Defendant] did not induce infringement of the patent.

To prove active inducement, [the Plaintiff] must establish that it is more likely than not that:

1. 
   [the Defendant] aided, instructed, or otherwise acted with the intent to cause acts by [alleged direct infringer] that would constitute direct infringement of the patent;
   

4. 
   [the Defendant] knew of the patent, or showed willful blindness to the existence of the patent, at that time;
   
5. 
   [the Defendant] knew, or showed willful blindness, that the actions of the [alleged direct infringer] would infringe at least one claim of the patent; and
   
6. 
   [alleged direct infringer] infringed at least one patent claim.
   

To find willful blindness (1) [the Defendant] must have subjectively believed that there was a high probability that a patent existed covering the accused [[product] [method]], and (2) [the Defendant] must have taken deliberate actions to avoid learning of the patent.

35 U.S.C. § 271(b); Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920 (2015); Limelight Networks, Inc. v. Akamai Techs., Inc., ___ U.S. ___, 134 S. Ct. 2111 (2014); Global-Tech Appliances, Inc. v. SEB, S.A., 131 S. Ct. 2060 (2011); Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1021 (Fed. Cir. 2015) (en banc); Takeda Pharms., USA v. West-Ward Pharm. Group, 785 F.3d 625, 630-631 (Fed. Cir. 2015); Info-Hold, Inc. v. Muzak LLC, 783 F.3d 1365, 1372-1373 (Fed. Cir. 2015); DSU Medical Corp. v. JMS Co., 471 F.3d 1293, 1304-05 (Fed. Cir. 2006) (en banc) (quoting Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913, 936 (2005)); Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1365 (Fed. Cir. 2004); Ferguson Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1342 (Fed. Cir. 2003); Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 553 (Fed. Cir. 1990); Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468-69 (Fed. Cir. 1990).

Practice Note: Each of the theories of indirect infringement has a number of elements and the Instructions tend to be complex. In order to avoid the risk of jury confusion, it is important to instruct the jury on only those issues that are properly before the Court. Consideration should be given to using case management techniques, such as charging the jury and having the jury deliberate on specific issues separately, to reduce the risk of confusion.

3.11 Infringement by Supply of All or a Substantial Portion of the Components of a Patented Invention to Another Country (§ 271(f)(1))

[The Plaintiff] asserts that [the Defendant] infringed the [abbreviated patent number] patent by supplying [or causing to be supplied] all or a substantial portion of the components of the patented product from the United States to another country and actively inducing the assembly of those components into a product that would infringe the [abbreviated patent number] patent if they had been assembled in the United States.

To show infringement under Section 271(f)(1), [the Plaintiff] must prove that each of the following is more likely than not:

1. 
   the product, as it was intended to be assembled outside the United States, [[included] [would have included]] all elements of at least one of claims ____ of the [abbreviated patent number] patent;
   
2. 
   [the Defendant] supplied [or caused to be supplied] components from the United States that made up all or a substantial portion of the invention of any one of claims _____ of the [abbreviated patent number] patent; and
   
3. 
   [the Defendant] specifically intended to induce the combination of the components into a product that would infringe the [abbreviated patent number] patent if the components had been combined in the United States.
   

A substantial portion of components requires a quantitative, not a qualitative, assessment. The export of a single component of a multi-component invention cannot create liability under § 271(f)(1).

35 U.S.C. § 271(f)(1); Life Techs. Corp. v. Promega Corp., ___ U.S. ____, 137 S. Ct. 734 (2017); Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc. 576 F.3d 1348, 1359-67 (Fed. Cir. 2009); Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 453-56 (2007); Minn. Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1304-05 (Fed. Cir. 2002).

3.12 Contributory Infringement

[The Plaintiff] asserts that [the Defendant] has contributed to infringement by another person.

To find contributory infringement, it is not necessary to show that [the Defendant] has directly infringed as long as you find that someone has directly infringed. If you find that there is no direct infringement by any one single entity, you must find that [the Defendant] did not contribute to the infringement of the patent.

To establish contributory infringement, [the Plaintiff] must prove that it is more likely than not that [the Defendant] had knowledge of both the patent and direct infringement of that patent. Plaintiff must prove that each of the following is more likely than not:

1. 
   someone other than [the Defendant] has directly infringed the [abbreviated patent number] patent;
   
2. 
   [the Defendant] sold, offered for sale, or imported within the United States a component of the infringing product or an apparatus for use in the infringing method;
   
3. 
   the component or apparatus is not a staple article or commodity of commerce capable of substantial non-infringing use;
   
4. 
   the component or apparatus constitutes a material part of the patented invention; and
   
5. 
   [the Defendant] knew that the component was especially made or adapted for use in an infringing [[product] [method]].
   

A “staple article or commodity of commerce capable of substantial non-infringing use” is something that has uses [[other than as a part or component of the patented product] [other than in the patented method]], and those other uses are not occasional, farfetched, impractical, experimental, or hypothetical.

Proof of [the Defendant]’s knowledge may be shown with evidence of willful blindness where [the Defendant] consciously ignored the existence of both the patent and direct infringement of that patent. To find willful blindness (1) [the Defendant] must have subjectively believed that there was a high probability that a patent existed covering the accused [[product] [method]], and (2) [the Defendant] must have taken deliberate actions to avoid learning of the patent.

35 U.S.C. § 271(c); Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920, 1926-28 (2015); Global-Tech Appliances, Inc. v. SEB, S.A., 131 S. Ct. 2060, 2068-70 (2011); Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 488 (1964); Akamai Techs. Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1021 (Fed. Cir. 2015) (en banc); Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1362 (Fed. Cir. 2012); R+L Carriers, Inc. v. DriverTech LLC, 681 F.3d 1323, 1337 (Fed. Cir. 2012); Spansion, Inc. v. Int’l Trade Comm’n, 629 F.3d 1331, 1353 (Fed. Cir. 2010); Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 1326 (Fed. Cir. 2010).

3.13 Infringement by Supply of Components Especially Made or Adapted for Use in the Patented Invention into Another Country (§ 271(f)(2))

[The Plaintiff] asserts that [the Defendant] infringed the [abbreviated patent number] patent by supplying [or causing to be supplied] [[a component][components]] of an invention covered by at least one claim of the [abbreviated patent number] patent from the United States into a foreign country, where the exported component[s] [[was][were]] especially made or especially adapted for use in an invention covered by the [abbreviated patent number] patent and [[has] [have]] no substantial non-infringing use[s], and where [the Defendant] knew the component[s] [[was] [were]] especially made or adapted for use in the patented invention and intended for the component[s] to be combined in a way that would have infringed the [abbreviated patent number] patent if the combination had occurred in the United States.

To show infringement under Section 271(f)(2), [the Plaintiff] must prove that each of the following is more likely than not:

1. 
   [the Defendant] actually supplied the components from the United States into a foreign country or caused them to be supplied from the United States to a foreign country;
   
2. 
   [the Defendant] knew or should have known that the components were especially made or adapted for use in a product that infringes the [abbreviated patent number] patent;
   
3. 
   those components have no substantial non-infringing use; and
   
4. 
   [the Defendant] intended for the components to be combined into that product. It is not necessary for you to find that the components actually were combined into an infringing product, as long as you find that [Defendant] intended the components to be combined into a product that would have infringed the [abbreviated patent number] patent if they had been combined in the United States.
   

35 U.S.C. § 271(f)(2); Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 576 F.3d 1348, 1359-67 (Fed. Cir. 2009); Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 453-56 (2007); Waymark Corp. v. Porta Sys. Corp., 245 F.3d 1364, 1367-69 (Fed. Cir. 2001); Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1257-58 (Fed. Cir. 2000).

3.14 Infringement by Import, Sale, Offer for Sale or Use of Product Made by Patented Process (§ 271(g))

[Plaintiff] asserts that [Defendant] infringed the [abbreviated patent number] patent by [[importing] [selling] [offering for sale] [using]] a product that was made by a process covered by one or more claims of the [abbreviated patent number] patent.

To show infringement under Section 271(g), [the Plaintiff] must prove that each of the following is more likely than not:

1. 
   [the Defendant] [[imported] [sold] [offered for sale] [used]] a product that was made by a process that includes all steps of at least one claim of the [abbreviated patent number] patent;
   
2. 
   the product was made between [issue date of patent] and [[expiration date of patent] [date of trial]]; and
   
3. 
   [the Defendant] [[imported] [sold] [offered for sale] [used]] the product between [issue date of patent] and [[expiration date of patent] [date of trial]].
   

You must decide whether the evidence presented at trial establishes that the product [[imported] [sold] [offered for sale] [used]] by the Defendant was “made by” the patented process. However, if you find that either: (a) the product [[imported] [sold] [offered for sale] [used]] was materially changed by later processes, or (b) the product is only a trivial or non-essential part of another product, you must find that the product [[imported] [sold] [offered for sale] [used]] by the Defendant was not “made by” the patented process.¹³

35 U.S.C. § 271(g); Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340 (Fed. Cir. 2009); Mycogen Plant Sci., Inc. v. Monsanto Co., 252 F.3d 1306 (Fed. Cir. 2001) (judgment vacated on other grounds); Biotec Biologische Naturvenpackungen GmbH v. BioCorp., Inc., 249 F.3d 1341 (Fed. Cir. 2001); Eli Lilly & Co. v. Am. Cyanamid Co., 82 F.3d 1568 (Fed. Cir. 1996); Bio-Technology Gen. Corp. v. Genentech, Inc., 80 F.3d 1553 (Fed. Cir. 1996).

4.