Aipla model Patent Jury Instructions

Summary of Invalidity Defense

[The Defendant] contends that the asserted claim[s] of the patent[s]-in-suit are invalid. [The Defendant] must prove that it is highly probable that each asserted claim is invalid.

Claims of an issued patent may be found to be invalid. Thus, you must determine whether each of [the Plaintiff]’s claims is invalid.

[The Defendant] contends that patent claims [insert claim numbers] are invalid for the following reasons:

[Insert invalidity contentions]

I will now instruct you in more detail why [the Defendant] alleges that the asserted claim[s] of the [abbreviated patent number[s]] patent[s] [[is] [are]] invalid.

Practice Note: Jury Instructions on prior art are always complex and potentially confusing. Following implementation of the AIA, different legal principles are applicable to pre-AIA and post-AIA claims, requiring multiple Instructions on similar issues. Consideration should be given by the Court whether to bifurcate the issues of validity of pre-AIA claims from post-AIA claims, or to separately instruct and have the jury deliberate to a verdict on these issues, in order to avoid undue burden and jury confusion. At a minimum, the issues that the jury needs to decide must be clearly identified and the Instructions limited to these issues.

5. Prior Art

5.0 Prior Art Defined

5.0.1 Prior Art Defined (for pre-AIA patent claims)¹⁴

For patent claims having a priority date before March 16, 2013, prior art includes any of the following items received into evidence during trial:

1. 
   any [[product] [method]] that was publicly known or used by others in the United States before the patented invention was made;
   
2. 
   any [[product] [method]] that was in public use or on sale in the United States more than one year before the patent was filed;
   
3. 
   patents that issued more than one year before the filing date of the patent, or before the invention was made;
   
4. 
   publications having a date more than one year before the filing date of the patent, or before the invention was made;
   
5. 
   any [[product] [method]] that was made by anyone in the United States before the patented invention was made by the named inventors where the patented invention was not abandoned, suppressed, or concealed.
   

In this case, [the Defendant] contends that the following items are prior art:

[Identify the prior art admitted into evidence by name]

35 U.S.C. § 102 (pre-AIA).

5.0.2 Prior Art Defined (for post-AIA patent claims)

For patent claims having a priority date after March 16, 2013, prior art includes any of the following items received into evidence during trial:

1. 
   any claimed invention that was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public anywhere in the world before the effective filing date of the current patent; or
   
2. 
   any claimed invention that was described in a patent, or in an application for patent published or deemed published, in which the patent or application names another inventor and was filed before the effective filing date of the current patent.
   

Exceptions to Prior Art:

1. 
   A disclosure made one year or less before the effective filing date of the current claim[s] shall not be prior art to claim[s] ___________ of the [abbreviated patent number] patent if:
   

A. the disclosure was made by the inventor or joint inventor named in the current patent or by another person who obtained the subject matter disclosed directly or indirectly from such inventor; or

B. the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or another person who obtained the subject matter disclosed directly or indirectly from such inventor.

2. 
   A disclosure shall not be prior art to claim[s] _________ of the [abbreviated patent number] patent if:
   

A. the subject matter disclosed was obtained directly or indirectly from the inventor or joint inventor named in the [abbreviated patent number] patent;

B. the subject matter disclosed had, before the effective filing date of the current patent, been publicly disclosed by the inventor or joint inventor named in the [abbreviated patent number] patent or another person who obtained the subject matter disclosed directly or indirectly from such inventor; or

C. the subject matter disclosed and the claimed invention, not later than the effective filing date of the [abbreviated patent number] patent, were owned by the same person or subject to an obligation of assignment to the same person.

Practice Note: While AIA § 102(a) does not use the term “disclosure,” that section expressly identifies things that constitute “prior art” existing before the effective filing date of the application claiming the invention by having been: (i) patented, (ii) described in a printed publication, (iii) in public use, (iv) on sale, or (v) otherwise available to the public. Thus, the term “disclosure” as referred to among the “exceptions” defined in AIA § 102(b) means disclosure by one of the means identified in AIA § 102(a), which made the claimed invention (or elements thereof) publicly accessible. This is consistent with the PTO’s AIA Examination Guidelines, 78 Fed. Reg. 11059, Feb. 14, 2013. Some commentators still question whether the AIA repudiated the doctrine of Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts, 153 F.2d 516 (2d Cir. 1945), which barred patentability where an inventor/patentee (but not third parties) secretly, but commercially, practiced a claimed invention more than one year before its filing date. “Effective filing date” is defined under 35 U.S.C. § 100(i).

In this case, [the Defendant] contends that the following items are prior art: [identify prior art by name].

35 U.S.C. § 102 as amended by the Leahy-Smith America Invents Act of 2011; 35 U.S.C.

§ 100(i) (defining effective filing date).

Practice Note: The issues on which the jury is being asked to make factual findings should be identified clearly and concisely. For example, if the parties dispute the status of a reference as prior art due to its date, public availability, or other factors, these issues should be identified clearly to the jury in the Instructions in order to avoid jury confusion.

5.1 Prior Art Considered or Not Considered by the USPTO

Regardless whether or not a particular prior art reference[s] [[was] [were]] considered by the Patent Examiner during the prosecution of the application which matured into the [abbreviated patent number] patent, [the Defendant] must prove that it is highly probable that the challenged claim[s] [[is] [are]] invalid. This burden of proof on [the Defendant] never changes regardless whether or not the Patent Examiner considered the reference.

Microsoft Corp. v. i4i Ltd. P’ship., 131 S. Ct. 2238, 2251 (2011); Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d 1253, 1260 (Fed. Cir. 2012); SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1355-56 (Fed. Cir. 2000); Group One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297, 1306 (Fed. Cir. 2005).

5.2 Invalidity of Independent and 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.

[IDENTIFY THE DIFFERENCES BETWEEN [Independent Claim] AND [Dependent Claim]. [Dependent Claim] requires each of the elements of [Dependent Claim], as well as all of the additional elements of [Independent Claim].

You must evaluate the invalidity of each asserted claim separately. Even if an independent claim is invalid, this does not mean that the dependent claims that depend from it are automatically invalid. Rather, you must consider the validity of each claim, separately. You must decide this issue of validity on a claim-by-claim basis. However, if you find that a dependent claim is invalid, then you must find that the independent claim from which it depends is also invalid. The dependent claim includes all of the elements of the independent claim from which it depends.

Comaper Corp. v. Antec. Inc., 596 F.3d 1343, 1350 (Fed. Cir. 2010); Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1344 (Fed. Cir. 2009); Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007).

5.3 Person of Ordinary Skill in the Art

The question of invalidity of a patent claim is determined from the perspective of a person of ordinary skill in the art in the field of the asserted invention as of the [effective filing date].

In order to determine the obviousness of the invention, you must determine the level of ordinary skill in the field of the invention. Regardless of whether you decide to articulate in your verdict what you believe was the level of ordinary skill in the field of the invention, you must consider and assess this factor before reaching your conclusion in this case.

35 U.S.C. § 103; KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007).