Aipla model Patent Jury Instructions

Glossary of Patent Terms

Application–The initial papers filed by the applicant in the United States Patent and Trademark Office (also called the “USPTO” or “PTO”). [see p.3]

Claims–The numbered sentences or paragraphs appearing at the end of the patent that define the invention. The words of the claims define the scope of the patent owner’s exclusive rights during the life of the patent.

File wrapper–See “prosecution history” below.

License–Permission to use the patented invention(s), which may be granted by a patent owner (or a prior licensee) in exchange for a fee called a “royalty” or other compensation.

Office Action–Communication from the Patent Examiner regarding the specification (see definition below) or the claims in the patent application.

[[Ordinary skill in the art (pre-AIA)–The level of experience, education, or training generally possessed by those individuals who work in the area of the invention at the time of the invention.]

[Ordinary skill in the art (post-AIA)–The level of experience, education, or training generally possessed by those individuals who work in the area of the invention before the effective filing date of the patent.]]

Patent Examiners–Personnel employed by the PTO in a specific technical area who review (examine) the patent application to determine (1) whether the claims of a patent application are patentable over the prior art considered by the examiner, and (2) whether the specification/application describes the invention with the required specificity.

[[Prior art (pre-AIA)–Knowledge that is available to the public either prior to the invention by the applicant or more than one year prior to the filing date of the application.]

[Prior Art (post-AIA)–Knowledge that is publicly available before the effective filing date of the patent application.]]

Prosecution history–The written record of proceedings between the applicant and the PTO, including the original patent application and later communications between the PTO and applicant. The prosecution history may also be referred to as the “file history” or “file wrapper” of the patent during the course of this trial.

References–Any item of prior art used to determine patentability.

Specification–The information that appears in the patent and concludes with one or more claims. The specification includes the written text, the claims, and the drawings. In the specification, the inventor describes the invention, how it works, and how to make and use it.

[Others to be agreed upon between the parties; not all of these definitions will necessarily be pertinent or relevant to a particular action.]

4. Glossary of Technical Terms

[To be agreed upon between the parties]

5. Post-Trial Instructions⁴

1. Summary of Patent Issues

I will now summarize the issues that you must decide and for which I will provide instructions to guide your deliberations. You must decide the following [three] main issues:

1. 
   Whether [the Plaintiff] has proved that [the Defendant] infringed claim[s] [claims in dispute] of the [abbreviated patent number] patent.
   
2. 
   Whether [the Defendant] has proved that claim[s] [claims in dispute] of the [abbreviated patent number] patent are invalid.
   
3. 
   What amount of damages, if any, [the Plaintiff] has proved.
   

[LIST ANY OTHER PATENT ISSUES]

2. Claim Construction

2.0 Claim Construction–Generally

Before you decide whether [the Defendant] has infringed the claims of [the Plaintiff]’s patent or whether [the Plaintiff]’s patent is invalid, you will have to understand the patent claims. The patent claims are numbered sentences at the end of the patent. The patent claims involved here are [claims in dispute], beginning at column ___, line ___ of the patent, which is exhibit ___ in evidence. The claims are intended to define, in words, the boundaries of the inventor’s rights. Only the claims of the patent can be infringed. Neither the written description, nor the drawings of a patent can be infringed. Each of the claims must be considered individually. You must use the same claim meaning for both your decision on infringement and your decision on invalidity.

35 U.S.C. § 112; Source Search Techs., LLC v. LendingTree, LLC, 588 F.3d 1063, 1075 (Fed. Cir. 2009); Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1373 (Fed. Cir. 2008); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc); Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1286 (Fed. Cir. 2002); Amazon. com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001); Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996); SmithKline Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878, 882 (Fed. Cir. 1988).

2.1 Claim Construction for the Case

It is my job as judge to provide to you the meaning of any claim language that must be interpreted. You must accept the meanings I give you and use them when you decide whether any claim has been infringed and whether any claim is invalid. I will now tell you the meanings of the following words and groups of words from the patent claims.

[READ STIPULATIONS AND COURT’S CLAIM CONSTRUCTIONS]

Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc); Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996).

2.2 Construction of Means-Plus-Function Claims for the Case⁵

The patentee may express an element for a claim in the form of a “means” or “step” for performing a function.

The asserted claims of the [abbreviated patent number] patent include the following clause: “____________________________________.” I have determined, as a matter of law, that this is a means-plus-function element, as described in the section of the statute I read to you. This clause requires special interpretation. This element does not cover all [[means] [steps]] that perform the recited function of “____________________________________.” Rather, I have determined that the recited function is “___________________________.” I have determined that [[structure] [step]] described in the patent specification and drawings that perform this recited function is “_________________________________________,” or an equivalent of this [[structure] or [step]]. You must use this interpretation of the means-plus-function [[element] [step]] in your deliberations regarding infringement and validity, as further discussed below.

35 U.S.C. § 112; Chicago Bd. of Options Exchange, Inc. v. Int’l Secs. Exchange, LLC, 677 F.3d 1361, 1366-69 (Fed. Cir. 2012); Mettler-Toledo, Inc. v. B-Tek Scales, LLC, 671 F.3d 1291, 1295-96 (Fed. Cir. 2012); JVW Enters., Inc. v. Interact Accessories, Inc., 424 F.3d 1324, 1330-32 (Fed. Cir. 2005); Utah Med. Prods., Inc. v. Graphic Controls Corp., 350 F.3d 1376, 1381 (Fed. Cir. 2003); Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15 F.3d 1573, 1578 (Fed. Cir. 1993); Valmont Indus., Inc. v. Reinke Mfg. Co., Inc., 983 F.2d 1039, 1042 (Fed. Cir. 1993).