Free Proposed Jury Instructions - District Court of Delaware - Delaware

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE ) ) ) ) ) ) ) ) ) ) )

AFFYMETRIX, INC., Plaintiff/Counter-Defendant, v. ILLUMINA, INC., Defendant/Counter-Plaintiff.

Civil Action No.: 04-901-JJF

ILLUMINA, INC.'S PROPOSED FINAL JURY INSTRUCTIONS Pursuant to D. Del. L.R. 51.1(a), Illumina, Inc. submits the attached Proposed Final Jury Instructions in triplicate. The parties have reached agreement with respect to Jury Instruction Nos. 1.1, 1.2, 1.4, 1.5, 1.5.1, 1.6, 1.7, 1.8, 1.10, 1.11, 3.1, 3.2, 4.2, 4.3, 4.9, 5.13, 5.15, 5.16, 5.19, 7.12, 7.13, 7.14, 7.15, 9.1, 9.2, 9.3, 9.4. Illumina will submit its proposed instructions

electronically in WordPerfect format at an appropriate time to be determined by the Court.

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TABLE OF CONTENTS Page 1. GENERAL INSTRUCTIONS ..........................................................................................5 1.1. INTRODUCTION [AGREED] ..............................................................................5 1.2. JURORS' DUTIES [AGREED] .............................................................................6 1.3. BURDEN OF PROOF [DISPUTED] .....................................................................7 1.4. EVIDENCE DEFINED [AGREED].......................................................................9 1.5. CONSIDERATION OF EVIDENCE [AGREED] ................................................10 1.5.1. USE OF NOTES [AGREED] ...................................................................11 1.6. DIRECT AND CIRCUMSTANTIAL EVIDENCE [AGREED] .........................12 1.7. CREDIBILITY OF WITNESSES [AGREED] ....................................................13 1.8. NUMBER OF WITNESSES [AGREED] ............................................................14 1.9. EXPERT WITNESSES [DISPUTED] .................................................................15 1.10. DEPOSITION TESTIMONY [AGREED] ...........................................................16 1.11. DEMONSTRATIVE EXHIBITS [AGREED] .....................................................17 THE PARTIES AND THEIR CONTENTIONS...........................................................18 2.1. THE PARTIES [DISPUTED]...............................................................................18 2.2. AFFYMETRIX'S CONTENTIONS .....................................................................19 2.3. ILLUMINA'S CONTENTIONS ...........................................................................20 2.4. SUMMARY OF ISSUES [DISPUTED] ..............................................................22 THE PATENT CLAIMS.................................................................................................24 3.1. PATENT CLAIMS GENERALLY [AGREED] ...................................................24 3.2. INDEPENDENT AND DEPENDENT CLAIMS [AGREED].............................26 3.3. OPEN ENDED OR "COMPRISING" CLAIMS [DISPUTED]...........................27 3.4. "CONSISTING OF" CLAIMS [DISPUTED] ......................................................28 3.5. CONSTRUCTION OF CLAIMS [DISPUTED] ..................................................29 PATENT INFRINGEMENT ..........................................................................................32 4.1. PATENT INFRINGEMENT GENERALLY [DISPUTED] ................................32 4.1.1. PATENT OWNERSHIP [DISPUTED]....................................................33 4.2. DIRECT INFRINGEMENT -- KNOWLEDGE OF PATENT OR INTENT TO INFRINGE IS IMMATERIAL [AGREED] ...................................34 4.3. LITERAL INFRINGEMENT [AGREED] ...........................................................35 4.4. DOCTRINE OF EQUIVALENTS [DISPUTED] ................................................36 4.5. SITUATIONS WHERE RESORT TO DOCTRINE OF EQUIVALENTS IS NOT PERMITTED [DISPUTED] ...................................................................38 4.5.1. REVERSE DOCTRINE OF EQUIVALENTS [DISPUTED]..................39 4.6. PROSECUTION LACHES [DISPUTED] ............................................................40 4.7. INDIRECT INFRINGEMENT -- GENERALLY [DISPUTED]........................41 4.8. INDUCING PATENT INFRINGEMENT [DISPUTED] ....................................42 4.9. CONTRIBUTORY INFRINGEMENT [AGREED] ............................................43 4.10. WILLFUL INFRINGEMENT [DISPUTED] .......................................................44

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5.

VALIDITY........................................................................................................................45 5.1. VALIDITY [DISPUTED] ....................................................................................45 5.2. PRESUMPTION OF VALIDITY [DISPUTED]..................................................46 5.3. DERIVATION [DISPUTED]...............................................................................47 5.4. ENABLEMENT [DISPUTED] ............................................................................48 5.5. WRITTEN DESCRIPTION [DISPUTED]...........................................................50 5.6. DEFINITENESS UNDER 35 U.S.C. § 112 [DISPUTED] ..................................52 5.7. ANTICIPATION -- GENERALLY [DISPUTED] .............................................53 5.8. DATE OF INVENTION [DISPUTED]................................................................55 5.9. PRIOR PUBLICATION [DISPUTED] ................................................................58 5.10. PRIOR PUBLIC KNOWLEDGE [DISPUTED] ..................................................59 5.11. PRIOR PUBLIC USE [DISPUTED] ....................................................................60 5.11.1. PRIOR INVENTION [DISPUTED].........................................................61 5.12. PRIOR UNITED STATES APPLICATION [DISPUTED] .................................63 5.13. OBVIOUSNESS [AGREED] ...............................................................................64 5.14. SCOPE AND CONTENT OF THE PRIOR ART [AGREED] ............................65 5.15. DIFFERENCES OVER THE PRIOR ART [AGREED]......................................66 5.16. LEVEL OF ORDINARY SKILL [AGREED] .....................................................67 5.17. MOTIVATION TO COMBINE [DISPUTED] ....................................................68 5.18. [LEFT INTENTIONALLY BLANK] ...................................................................72 5.19. OBJECTIVE CRITERIA CONCERNING OBVIOUSNESS [AGREED] ...........73 INEQUITABLE CONDUCT ..........................................................................................75 6.1. INEQUITABLE CONDUCT [DISPUTED].........................................................75 6.2. MATERIALITY [DISPUTED] .............................................................................77 6.3. INTENT [DISPUTED] .........................................................................................79 6.4. BALANCING OF MATERIALITY AND INTENT [DISPUTED] ....................80 PATENT DAMAGES......................................................................................................81 7.1. COMPENSATORY DAMAGES IN GENERAL [DISPUTED] .........................81 7.2. BURDEN OF PROOF -- REASONABLE CERTAINTY [DISPUTED] ...........82 7.3. DATE DAMAGES MAY BEGIN -- MARKING [DISPUTED] .......................83 7.4. METHODS FOR COMPUTING DAMAGES [DISPUTED]..............................84 7.5. LOST PROFITS -- LOST SALES [DISPUTED] ................................................85 7.6. LOST PROFITS -- PANDUIT FACTORS -- DEMAND [DISPUTED] ..........86 7.7. LOST PROFITS -- PANDUIT FACTORS -- ACCEPTABLE NON-INFRINGING SUBSTITUTES [DISPUTED] ...........................................87 7.8. LOST PROFITS -- PANDUIT FACTORS -- CAPACITY [DISPUTED] ........88 7.9. AMOUNT OF LOST PROFITS [DISPUTED]....................................................89 7.10. REASONABLE ROYALTY [DISPUTED] ..........................................................91 7.11. FACTORS FOR DETERMINING REASONABLE ROYALTY [AGREED].............................................................................................................92 7.12. INTEREST [AGREED].........................................................................................94 7.13. CLOSING STATEMENT -- DAMAGES [AGREED].......................................95 7.14. CURATIVE INSTRUCTION [AGREED]...........................................................96 UNFAIR COMPETITION AND TORTIOUS INTERFERENCE CLAIMS ............97 iii

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8.1. 8.2. 8.3. 8.4. 8.5. 8.6. 8.7. 8.8. 8.9. 9.

UNFAIR COMPETITION - GENERALLY [DISPUTED] ..................................98 INTENTIONAL INTERFERENCE WITH CONTRACTUAL RELATIONS [DISPUTED] ..................................................................................99 INTENTIONAL INTERFERENCE WITH PROSPECTIVE RELATIONS [DISPUTED]........................................................................................................100 PRIVILEGE OF COMPETITION [AGREED]...................................................101 WRONGFUL CONDUCT/MEANS [DISPUTED] ............................................102 CALIFORNIA BUSINESS CODE 17.200 - RESTITUTION [DISPUTED]........................................................................................................105 TORTIOUS INTERFERENCE DAMAGES [DISPUTED] .............................106 PUNITIVE DAMAGES [DISPUTED] ..............................................................107 AMOUNT OF PUNITIVE DAMAGES [DISPUTED]......................................108

DELIBERATION AND VERDICT .............................................................................109 9.1. INTRODUCTION [AGREED] ..........................................................................109 9.2. UNANIMOUS VERDICT [AGREED]..............................................................110 9.3. DUTY TO DELIBERATE [AGREED]..............................................................111 9.4. COURT HAS NO OPINION [AGREED]..........................................................112

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1. 1.1.

GENERAL INSTRUCTIONSA

INTRODUCTION [AGREED]1

Members of the jury, now it is time for me to instruct you about the law that you must follow in deciding this case. I will start by explaining your duties and the general rules that apply in every civil case. Then I will explain some rules that you must use in evaluating particular testimony and evidence. Then I will explain the positions of the parties and the law you will apply in this case. And last, I will explain the rules that you must follow during your deliberations in the jury room and the possible verdicts that you may return. Please listen very carefully to everything I say. You will also have a verdict form, which will list the questions that you must decide in this case.

1 Source: Adapted from Uniform Jury Instructions For Patent Cases In The United States District Court For The District Of Delaware (March 1993) (hereinafter "1993 Delaware Uniform Instructions"), §1.1; Final Jury Instructions Power Integrations, Inc. v. Fairchild Semiconductor Int'l Inc., C.A. No. 04-1371-JJF, §1.1 (Oct. 6, 2006) (hereinafter "Power Integrations Final Instructions").

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1.2.

JURORS' DUTIES [AGREED]2

You have two main duties as jurors. The first one is to decide what the facts are from the evidence that you saw and heard here in court. Deciding what the facts are is your job, not mine, and nothing I have said or done during this trial was meant to influence your decision about the facts in any way. Your second duty is to take the law that I give you, apply it to the facts and decide under the appropriate burden of proof, which party should prevail on any given issue. It is my job to instruct you about the law, and you are bound by the oath that you took at the beginning of the trial to follow the instructions that I give you, even if you personally disagree with them. This includes the instructions that I gave you before and during the trial, and these instructions. All of the instructions are important, and you should consider them together as a whole. Perform these duties fairly. Do not let any bias, sympathy or prejudice that you may feel toward one side or the other influence your decision in any way.

2 Source: 1993 Delaware Uniform Instructions, §1.2.

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1.3.

BURDEN OF PROOF [DISPUTED]3

This is a civil case in which Affymetrix, Inc. is alleging that Illumina, Inc. is infringing Affymetrix's patents, and in which Illumina is asserting that it does not infringe, and that Affymetrix's patents are invalid and unenforceable. In addition, Illumina alleges that Affymetrix has engaged in unfair competition, and has intentionally interfered with Illumina's contractual and prospective business relations. Affymetrix has the burden of proving patent infringement and its claim of damages by what is called a preponderance of the evidence. That means Affymetrix has to produce evidence which, when considered in light of all of the facts, leads you to believe that what Affymetrix claims is more likely true than not. To put it differently, if you were to put Affymetrix's evidence and Illumina's evidence on the opposite sides of a scale, the evidence supporting Affymetrix's claims would have to make the scales tip somewhat on Affymetrix's side. If Affymetrix fails to meet its burden for a particular claim, your verdict must be for Illumina on that claim. In this case, Affymetrix is also alleging that Illumina's infringement was willful. Affymetrix must prove its claims of willful infringement by clear and convincing evidence and not by a preponderance of the evidence, the standard that applies to Affymetrix's other claims in this case. Clear and convincing evidence is evidence that produces an abiding conviction that the truth of a factual contention is highly probable. Proof by clear and convincing evidence is thus a higher burden than proof by a preponderance of the evidence.

3 Affymetrix's proposed instruction does not address Illumina's defenses and counterclaims in this case. To reflect the issues in this case, Illumina has adapted model instructions from the 1993 Delaware Uniform Instructions, §1.3, and Draft Uniform Jury Instructions for Patent Cases in the United States District Court For The District of Delaware (2004) (hereinafter "2004 Draft Delaware Model Instructions").

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Illumina contends that Affymetrix's patents-in-suit are invalid and unenforceable. Because a patent is presumed to be valid and enforceable, Illumina has the burden of proving that the patent-in-suit is invalid and/or unenforceable by clear and convincing evidence. In addition, Illumina is alleging that Affymetrix has engaged in unfair competition, and has intentionally interfered with Illumina's prospective and contractual business relations. Illumina must prove these claims by a preponderance of the evidence. Those of you who are familiar with criminal cases will have heard the term "proof beyond a reasonable doubt." That burden does not apply in a civil case and does not play any part in this case. Therefore, you should not consider it at all in your deliberations.

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1.4.

EVIDENCE DEFINED [AGREED]4

You must make your decision based only on the evidence that you saw and heard here in court. Do not let rumors, suspicions, or anything else that you may have seen or heard outside of court influence your decision in any way. The evidence in this case includes only what the witnesses said while they were testifying under oath (including deposition testimony that has been played or read to you), the exhibits that I allowed into evidence, the stipulations that the lawyers agreed to, and the facts that I have judicially noticed. Nothing else is evidence. The lawyer' statements and arguments are not evidence. Their questions and objections are not evidence. My legal rules are not evidence. Any of my comments or questions are not evidence. During the trial I may have not let you hear the answers to some of the questions that the lawyers asked. I also may have ruled that you could not see some of the exhibits that the lawyers wanted you to see. And, sometimes I may have ordered you to disregard things that you saw or heard, or I struck things from the record. You must completely ignore all of these things. Do not even think about them. Do not speculate about what a witness might have said or what an exhibit might have shown. These things are not in evidence, and you are bound by your oath not to let them influence your decision in any way. Make your decision based only on the evidence, as I have defined it here, and nothing else.

4 Source: 1993 Delaware Uniform Instructions; Power Integrations Final Instructions.

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1.5.

CONSIDERATION OF EVIDENCE [AGREED]5

You should use your common sense in weighing the evidence. Consider it in light of your everyday experience with people and events, and give it whatever weight you believe it deserves. If your experience tells you that certain evidence reasonably leads to a conclusion, you are free to reach that conclusion.

5 Source: 1993 Delaware Uniform Instructions; Power Integrations Final Instructions.

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1.5.1. USE OF NOTES [AGREED]6 You may use notes taken during trial to assist your memory. However, you should use caution in consulting your notes. There is always a tendency to attach undue importance to matters that you have written down. Some testimony that is considered unimportant at the time presented, and thus not written down, takes on greater importance later on in the trial in light of all the evidence presented. Therefore, you are instructed that your notes are only a tool to aid your own individual memory and you should not compare notes with other jurors in determining the content of any testimony or in evaluating the importance of any evidence. Your notes are not evidence, and are by no means a complete outline of the proceedings or a list of the highlights of the trial. Above all, your memory should be the greatest asset when it comes time to deliberate and render a decision in this case.

6 Source: Power Integrations Final Instructions.

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1.6.

DIRECT AND CIRCUMSTANTIAL EVIDENCE [AGREED]7

Now, some of you may have heard the terms "direct evidence" and "circumstantial evidence." Direct evidence is simply evidence like the testimony of an eyewitness which, if you believe it, directly proves a fact. If a witness testified that he saw it raining outside, and you believed him, that would be direct evidence that it was raining. Circumstantial evidence is simply a chain of circumstances that indirectly proves a fact. If someone walked into the courtroom wearing a raincoat covered with drops of water and carrying a wet umbrella, that would be circumstantial evidence from which you could conclude that it was raining. It is your job to decide how much weight to give the direct and circumstantial evidence. The law makes no distinction between the weight that you should give to either one, nor does it say that one is any better evidence than the other. You should consider all the evidence, both direct and circumstantial, and give it whatever weight you believe it deserves.

7 Source: 1993 Delaware Uniform Instructions; Power Integrations Final Instructions;.

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1.7.

CREDIBILITY OF WITNESSES [AGREED]8

In determining the weight to give to the testimony of a witness, you should ask yourself whether there was evidence tending to prove that the witness testified falsely about some important fact, or whether there was evidence that at some other time the witness said or did something or failed to say or do something that was different from the testimony he gave at the trial. You should remember that a simple mistake by a witness does not necessarily mean that the witness was not telling the truth. People may tend to forget some things or remember other things inaccurately. If a witness has made a misstatement, you must consider whether it was simply an innocent lapse of memory or an intentional falsehood, and that may depend upon whether it concerns an important fact or an unimportant detail.

8 Source: 1993 Delaware Uniform Instructions; Power Integrations Final Instructions.

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1.8.

NUMBER OF WITNESSES [AGREED]9 Sometimes jurors wonder if the number of

One more point about the witnesses. witnesses who testified makes any difference.

Do not make any decisions based only on the number of witnesses who testified. What is more important is how believable the witnesses were, and how much weight you think their testimony deserves. Concentrate on that, not the numbers.

9 Source: 1993 Delaware Uniform Instructions; Power Integrations Final Instructions.

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1.9.

EXPERT WITNESSES [DISPUTED]10

When scientific, technical or other specialized knowledge may be helpful to a jury, a person who has special knowledge, skill, education, training, or experience in that technical field, called an expert witness, is permitted to state an opinion on those matters. The value of this kind of testimony depends upon the qualifications and skill of the witness, the source of the witness's information, and the reasons supplied for any opinions given. You should consider this kind of testimony like all other testimony you hear and weigh it by the same tests. However, as with any other witness, you are not required to accept any expert's opinions. It will be up to you to decide whether to rely upon them.

10 Affymetrix's instruction is loosely based on the Power Integrations Final Instructions adaptation of the 1993 Delaware Uniform Instructions, but improperly omits selected portions of the instruction. Illumina's proposed instruction adopts in its entirety the 2004 Draft Delaware Model Instructions, "Expert Witnesses."

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1.10.

DEPOSITION TESTIMONY [AGREED]11

During the trial, certain testimony was presented to you by the reading of a deposition transcript or the playing of video tape excerpts from a deposition. This testimony is entitled to the same consideration you would give it had the witnesses personally appeared in court.

11Source: 1993 Delaware Uniform Instructions; Power Integrations Final Instructions.

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1.11.

DEMONSTRATIVE EXHIBITS [AGREED]12

During the course of this trial, you have seen many exhibits. Many of these exhibits were admitted as evidence. You will have these admitted exhibits in the jury room for your

deliberations. The remainder of the exhibits (including charts and animations) were offered to help illustrate the testimony of the various witnesses. These illustrative exhibits, called

"demonstrative exhibits," have not been admitted, are not evidence, and should not be considered as evidence. Rather, it is the underlying testimony of the witness that you heard when you saw the demonstrative exhibits that is the evidence in this case.

12 Source: 1993 Delaware Uniform Instructions; Power Integrations Final Instructions.

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2. 2.1.

THE PARTIES AND THEIR CONTENTIONS

THE PARTIES [DISPUTED]13

This case involves an action for patent infringement arising under the patent laws of the United States, and an action for unfair competition, and intentional interference with contractual and prospective business relations. In the patent infringement action, the plaintiff is Affymetrix, Inc. and the defendant is Illumina, Inc. In the actions for unfair competition and intentional interference with contractual and prospective business relations, the plaintiff is Illumina, Inc. and the defendant is Affymetrix, Inc. I will refer to Affymetrix, Inc. as "Affymetrix" and to Illumina, Inc. as "Illumina."

13

Affymetrix's proposed instruction does not address Illumina's counterclaims in this litigation.

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2.2.

AFFYMETRIX'S CONTENTIONS14

Affymetrix contends that Illumina has directly infringed and continues to directly infringe various claims of Affymetrix's five patents. Affymetrix also contends that Illumina has indirectly infringed its patents. I will explain the elements of both direct and indirect

infringement shortly. Specifically, Affymetrix alleges that Illumina has infringed, and continues to infringe: [list asserted claims.] I will refer to these five patents collectively as the patents-in-suit, or individually by the last three numbers of the patents. Affymetrix further contends that Illumina's infringement was willful. Affymetrix also contends that it is entitled to damages for Illumina's infringement in the form of lost profits on some Illumina sales and a reasonable royalty on other Illumina sales.

14

Illumina disputes the contentions that Affymetrix identifies in this instruction.

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2.3.

ILLUMINA'S CONTENTIONS

With respect to the patent infringement action, Illumina denies that its products or uses of its products infringe, literally or under the doctrine of equivalents, any of the asserted claims of the patents-in-suit. Illumina also denies that it either contributed to, or induced, infringement of any claim. Illumina also contends that the claims of the patents-in-suit are invalid for a number of reasons, including that the inventions claimed were not new, but were instead previously made by others. Illumina contends that the claims are invalid as "anticipated" by the prior art and that Affymetrix derived the claims from the work and publications of others. Illumina also contends that the patents-in-suit are invalid because the claimed invention would have been obvious to a person of ordinary skill in the field of the invention at the time it was made. Illumina also contends that the patents-in-suit are invalid because the patents do not contain a description of each and every limitation of the patent claims, because the patents-in-suit do not contain enough information to teach a skilled person how to make and use the claimed invention without undue experimentation, and because the claims are not definite enough that a skilled person reading them would know what is covered by the claims and what is not. If Illumina is found to infringe, Illumina contends that Affymetrix is only entitled to a reasonable royalty on the accused products that Affymetrix has proven Illumina made, used, sold, or offered for sale within the United States because Affymetrix lacks sufficient evidence to show that it lost specific sales, that its products competed in the same market, or to quantify any lost profits. If found to infringe, Illumina also contends that such infringement was not willful since Illumina had a good faith belief that the asserted patents were invalid or not infringed. In addition, Illumina contends that Affymetrix has engaged in unfair competition and intentionally interfered with prospective and contractual business relations in a manner that has

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caused Illumina to suffer monetary and irreparable damages, including injury to Illumina's good will and reputation in the marketplace.

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2.4.

SUMMARY OF ISSUES [DISPUTED]15

In this case, you must decide the issues according to the instructions I give you. With regard to the patent infringement action, in general these issues are: 1. Whether Affymetrix has proven by a preponderance of the evidence that Illumina has infringed any of the asserted claims of the patents-in-suit. 2. Whether Illumina has proven by clear and convincing evidence that Affymetrix's patents are invalid. 3. Whether Illumina has proven by clear and convincing evidence that Affymetrix's patents are unenforceable. 4. If you find that any of the asserted claims of the patents-in-suit are infringed, not invalid and not unenforceable, whether Affymetrix has proven by clear and convincing evidence that Illumina's infringement of that claim or claims was willful. 5. If you find that any of the asserted claims of the patents-in-suit are infringed, not invalid and not unenforceable, the amount of damages that Affymetrix has proven by a preponderance of the evidence is due to it. With regard to the actions for unfair competition and intentional interference with contractual and prospective business relations, in general, the issues are: 1. Whether Illumina has proven that Affymetrix's actions were such that they constitute unfair competition. 2. Whether Illumina has proven that Affymetrix intentionally interfered with Illumina's existing contractual relations and/or prospective business relations.

15

Affymetrix's proposed instruction does not address Illumina's counterclaims in this litigation.

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3.

If you find that Affymetrix is liable for unfair competition or intentional interference with contractual or prospective business relations, the amount of monetary relief and damages that Illumina has proved by a preponderance of the evidence is due to it.

I will instruct you first regarding the patent infringement action. Once I have read those instructions, I will then instruct you regarding the actions for unfair competition and intentional interference with contractual and prospective business relations.

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3. 3.1.

THE PATENT CLAIMS

PATENT CLAIMS GENERALLY [AGREED]16

Deciding whether a claim has been directly infringed is a two-step process. First, the meaning of the patent claim is determined as a matter of law. That job is for the Court, and I will tell you shortly what the key terms of the asserted claims mean as a matter of law. In the second step, you must compare each claim as I have interpreted it to each of the accused products to determine whether every element of the claim can be found in that accused product. This element-by-element comparison is your responsibility as the jury for this case. Before you can decide whether or not Illumina has infringed any of Affymetrix's patents, you will have to understand that patent "claims." Patent claims are the numbered paragraphs at the end of a patent. The patent claims involved here are: [list asserted claims] The claims are "word pictures" intended to define, in words, the boundaries of the invention described and illustrated in the patent. Only the claims of the patent can be infringed. Neither the specification, which is the written description of the invention, nor the drawings of the patent can be infringed. Claims may be directed to products or they may be directed to methods for making or using a product. Claims are typically divided into parts called "elements." For example, a claim that covers the invention of a table may recite the tabletop, four legs and the glue that secures the legs to the table top. The table top, legs and glue are each a separate element of the claim. When making your decision regarding infringement, you should not compare Illumina's products with any specific example set out in the patents-in-suit, or with any product

16 Source: 1993 Delaware Uniform Instructions; Power Integrations Final Instructions.

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manufactured by Affymetrix. Rather, you must only compare Illumina's products with the asserted claims of the patents-in-suit. Each of the claims must be considered individually, and to show infringement of a given patent by a given product, Affymetrix need only establish that one claim of that patent has been infringed by that product.

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3.2.

INDEPENDENT AND DEPENDENT CLAIMS [AGREED]17

There are two different types of claims in a patent. The first type is called an independent claim. An independent claim does not refer to any other claim of the patent. An independent claim is read separately to determine its scope. On the other hand, a dependent claim refers to and depends upon at least one other claim in the patent and thus incorporates whatever that other claim says. Accordingly, to determine what a dependent claim covers, you must read both the dependent claim and the claim or claims to which it refers. For example, claim 14 of the `243 patent is an independent claim. You know this because it mentions no other claims. Accordingly, the words of this claim are read by

themselves in order to determine what the claim covers. On the other hand, claim 15 of the `243 patent is a dependent claim. It refers to independent claim 14. For an Illumina product to infringe dependent claim 15 of the `243 patent, the Illumina product must have all the elements of both claim 14 and claim 15. Therefore, if you find that an independent claim is not infringed, you must also find that all claims depending on that claim are not infringed. Some claims of the patents-in-suit are broader than other claims. You are not to read limitations or words of a narrower or dependent claim into a broader or independent claim if the broader claim does not explicitly contain the same limitations.

17 Source: 1993 Delaware Uniform Instructions; Power Integrations Final Instructions (modified).

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3.3.

OPEN ENDED OR "COMPRISING" CLAIMS [DISPUTED]18

The claims of the patents-in-suit use the transitional term "comprising" or "comprises." "Comprising" and "comprises" are interpreted the same as "including" or "containing." In patent claims, "comprising" or "comprises," mean that the claims are open ended. For example, a claim to a table comprising a tabletop, four legs and the glue, would be infringed by a table that includes those elements, even if the table also includes additional elements such as wheels on the table's legs.

18 Affymetrix's instruction incorporates redundant and unnecessary language from the model instructions for the 1993 Delaware Uniform Instruction and 2004 Delaware Model Instructions. Illumina's proposed instruction is adapted from the 2004 Draft Delaware Model Instructions, § 3.11. Illumina's instruction is consistent with the model instruction, and eliminates redundant and prejudicial language.

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3.4.

"CONSISTING OF" CLAIMS [DISPUTED]19

Certain claims of the patents-in-suit use the language "consisting of." In interpreting patent claims, these words do not mean the same thing as "comprising," "including," "containing" or "consisting essentially of." Any patent claim including the language "consisting of" is narrower and will be infringed only if you find Illumina's product or use of that product includes all but no more than the components set forth in the patent claim or clause with this language.

19 Affymetrix did not proposed an instruction for "consisting of" claims. The source for Illumina's proposed instruction is the 1993 Delaware Uniform Instructions §3.13 (adapted).

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3.5.

CONSTRUCTION OF CLAIMS [DISPUTED]20

It is the Court's duty under the law to define what patent claims mean. I have made my determinations and I will now instruct you on the meaning of the claims. You must apply the meaning that I give in each patent claim to decide if the claim is infringed. You must ignore any different interpretations given to these terms by the witnesses or the attorneys. It may be helpful to refer to the copy of the patents-in-suit that you have been given as I discuss the claims at issue here. The claims of the patents are toward the end of each patent. You are advised that the following definitions for the following terms must be applied in the following patents-in-suit: `243 Patent · The term "substrate," as used in the claims of U.S. Patent No. 6,646,243, means "a material having a rigid or semi-rigid surface." · The term "target nucleic acids," as used in the claims of U.S. Patent No. 6,646,243, means "nucleic acids that are deliberately exposed to the nucleic acids attached to the substrate."

20 Illumina preserves its objections and its right to appeal any and all claim constructions that differ from those proffered by it in its Markman briefing and argument. Illumina's proposed instruction follows the model instruction regarding claim construction from the 2004 Draft Delaware Model Instructions. Affymetrix's proposed instruction includes text that is neither included in the Draft Delaware Model Instructions, nor is it consistent with applicable law. In particular, Affymetrix's proposed instruction includes statements that are inconsistent with the following Federal Circuit precedent that provides that claim language is interpreted from the perspective of one of ordinary skill in the art: MBO Labs v. Becton, Dickinson & Co., No. 2006-1062, 2007 WL 163068 (Fed. Cir. 2007) (noting that "[a]scertaining the meaning of the claims requires that they be viewed in the context of those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean"); see also Philips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (holding "[t]he most relevant source is the patent's specification, which is `the single best guide to the meaning of a disputed term," and "[t]he words of patent claims have the meaning and scope with which they are used in the specification and the prosecution history.").

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`365 Patent · The phrase "biological polymers immobilized on a surface," as used in the claims of U.S. Patent No. 6,399,365, means "two or more surface-immobilized biological polymers that are recognized by a particular target." · The term "housing," as used in the claims of U.S. Patent No. 6,399,365, means "a structure that covers, protects, and supports the probe array." `432 Patent · The phrase "said beads being coded with an encoding system," as used in the claims of U.S. Patent No. 6,355,432, means "said beads having a property associated with each bead (separate from the binding polymer) that can be used to distinguish one bead from another." · The term "target specific sequence," as used in the claims of U.S. Patent No. 6,355,432, means "a known polymer sequence that has affinity for another sequence." `531 Patent · The term "probe array," as used in the claims of U.S. Patent No. 5,545,531, means "a collection of probes, at least two of which are different, arranged in a spacially defined and physically addressable manner." · The phrase "arranged in a spacially defined and physically addressable manner," as used in the claims of U.S. Patent No. 5,545,531, means "located in a particular location and capable of being addressed." `716 Patent · The term "probe," as used in the claims of U.S. Patent No. 5,795,716, means "a nucleic acid of known sequence that is capable of hybridizing to its complementary sequence."

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·

The term "probe intensity," as used in the claims of U.S. Patent No. 5,795,716, means "intensity from a labeled sample nucleic acid hybridized to a probe location."

·

The phrase "indicating an extent of hybridization," as used in the claims of U.S. Patent No. 5,795,716, means "indicating the relative strength of binding."

·

The phrase "comparison of said plurality of probe intensities to each other," as used in the claims of U.S. Patent No. 5,795,716, means "an examination of the probe intensities of two or more probes in relation to each other."

·

The phrase "generates a base call identifying said unknown base," as used in the claims of U.S. Patent No. 5,795,716, means "determines which nucleotide is most likely to be present at a particular position in a nucleic acid sequence."

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4. 4.1.

PATENT INFRINGEMENT

PATENT INFRINGEMENT GENERALLY [DISPUTED]21

A patent owner may enforce its right to stop others from making, using, selling, or offering to sell the patented invention in the United States by filing a lawsuit for patent infringement. Here, Affymetrix, the alleged patent owner, has sued Illumina, the accused

infringer, and has alleged that Illumina's products and services infringe one or more claims of Affymetrix's patents-in-suit. Patent law provides that any person or business entity which makes, uses, sells or offers to sell, without the patent owner's permission, any product, apparatus or method legally protected by at least one claim of a patent within the United States before the patent expires, infringes the patent. There are several ways to infringe a patent. One may: (1) directly infringe a patent; (2) knowingly induce others to infringe a patent, in which case the inducer is liable for infringement as well as the direct infringer; or (3) contribute to the infringement of a patent by another by supplying a component specially designed for the patented invention, in which case both the direct infringer and the contributory infringer would be liable for patent infringement. Next I will explain each type of infringement more completely.

21 Affymetrix's proposed instruction alters unnecessarily the model instruction of the 1993 Delaware Uniform Instructions to add redundant language regarding infringement that is disclosed in Instruction No. 4.3. The source for Illumina's proposed instruction is the 1993 Delaware Uniform Instructions, §4.1. Illumina, however, adapts the model instruction to address the recent en banc Federal Circuit holding of DSU Med. Corp. v. JMA Co., 471 F.3d 1293, 1306 (Fed. Cir. 2006) (en banc) (holding that "...inducement requires that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another's infringement."). Illumina's proposed instruction more closely follows the model instruction of the 1993 Delaware Uniform Instructions while correctly reflecting the Federal Circuit's en banc articulation of the law on inducement in DSU.

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4.1.1.

PATENT OWNERSHIP [DISPUTED]22

In order to establish that Illumina is liable for infringement, Affymetrix must prove by a preponderance of the evidence that Affymetrix is the owner, assignee or exclusive licensee of the patent-in-suit. In order to become a patent owner, an inventor must file a patent application and be granted a patent by the U.S. Patent and Trademark Office. Whether Affymetrix is the patent owner is an issue of fact for you to decide. In order to show that Affymetrix was the assignee of the patent owner, Affymetrix must prove, by a preponderance of the evidence, that the patent owner in fact assigned Affymetrix the ownership rights in the patent-in-suit.

22

Affymetrix does not propose an instruction for patent ownership. The source for Illumina's proposed instruction is O'Malley, et. al., Federal Jury Practice & Instructions, 5th ed. § 158.21.

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4.2.

DIRECT INFRINGEMENT -- KNOWLEDGE OF PATENT OR INTENT TO INFRINGE IS IMMATERIAL [AGREED]23

Illumina would be liable for directly infringing Affymetrix's patents if you find that Affymetrix has proven by a preponderance of the evidence that Illumina has made, used or sold the invention defined in at least one claim of Affymetrix's patent. 35 U.S.C. § 271(a). Illumina may directly infringe a patent without knowledge that what it is doing is an infringement of the patent. Illumina may also infringe even though in good faith it believes that what it is doing is not an infringement of any patent.

23Source: 1993 Delaware Uniform Instructions

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4.3.

LITERAL INFRINGEMENT [AGREED] 24

There are two ways in which a patent claim may be directly infringed. First, a claim may be literally infringed. Second, a claim may be infringed under what is called the "doctrine of equivalents," which I will address shortly. For one of Illumina's products to literally infringe any one of Affymetrix's patent claims, the subject matter of that patent claim must be found in Illumina's product or use of its product. In other words, one of Affymetrix's patent claims is literally infringed if one of Illumina's products or use of its products includes each and every element in that claim. If Illumina's products or use of its products omits any single component recited in a claim of Affymetrix's patents, Illumina does not literally infringe that claim. You must determine literal infringement with respect to each patent claim individually.

24Source: 1993 Delaware Uniform Instructions

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4.4.

DOCTRINE OF EQUIVALENTS [DISPUTED]25

If you do not find literal infringement, you may consider infringement under the doctrine of equivalents. I have referred to the "doctrine of equivalents" before. Now it is time to explain this term. As I have noted, to infringe a patent, every claim element must be present in the accused product. A claim element may be present in an accused product in one of two ways, either literally or under the doctrine of equivalents. A claim element is literally present if it exists in the accused product just as it is described in the claim, either as I have explained that language to you or, if I did not explain it, as you understand it from the evidence presented during trial. A claim element is present in an accused product under the doctrine of equivalents if the differences between the claim element and a corresponding aspect of the accused product are insubstantial. One way to determine this is to look at whether or not the accused structure performs substantially the same function, in substantially the same way, to achieve substantially the same result as the element in the claimed invention. Application of the doctrine of equivalents is on an element-by-element basis, meaning that for Illumina's products or use of its products to infringe any one of Affymetrix's asserted claims under the doctrine of equivalents, the element of a patent claim which is not literally present in the accused product must be present by equivalence. Therefore, the question is whether the accused product contains an equivalent for each element of the claim that is not

25 Illumina's proposed instruction is based upon the 2004 Draft Delaware Model Instructions, and incorporates a provision from the 1993 Delaware Uniform Instructions that reflects Federal Circuit precedent that application of the doctrine of equivalents is the exception, not the rule, and fair notice must be given of what was patented. See Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1480 (Fed. Cir. 1998) (holding "[t]he doctrine of equivalents balances the purpose of fairness to inventors lest the patent be unjustly circumvented, against the purpose of patent claims to state clear boundaries of the patent grant, in fair notice of its scope.").

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literally present in the accused product. The question is not whether the accused product or method as a whole is equivalent to the claimed invention as a whole. Application of the doctrine of equivalents is the exception, however, not the rule. Patent claims must be clear enough so that the public has fair notice of what was patented. Notice permits other parties to avoid actions which infringe the patent and to design around the patent. It is not a requirement under doctrine of equivalents infringement that those of ordinary skill in the art knew of the equivalent when the patent application was filed or when the patent issued. The question of whether Illumina's products or services are equivalent to what is defined in Affymetrix's claims is to be determined as of the time of the alleged infringement.

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4.5.

SITUATIONS WHERE RESORT TO DOCTRINE OF EQUIVALENTS IS NOT PERMITTED [DISPUTED]26

There are situations where resort to the doctrine of equivalents to find infringement is not permitted. First, resort to the doctrine of equivalents to find infringement is not permitted if you find that Illumina is merely making, using or selling what was in the prior art prior to the patented invention, or what would have been obvious to persons of ordinary skill in the art in light of what was in the prior art. A patent owner should not obtain, under the doctrine of equivalents, protection that it could not have lawfully obtained from the Patent and Trademark Office. Second, resort to the doctrine of equivalents to find infringement is not permitted if you find that Affymetrix is trying to recapture that which it gave up in the Patent and Trademark Office to distinguish the invention from what was in the public domain prior to the claimed invention. In other words, if Affymetrix, when it was in the process of obtaining its patent, limited the claim in some way in order to argue that it was different from what was in the prior art, then Affymetrix cannot now assert a broader view of the claimed invention by broadening the claims through the doctrine of equivalents in an effort to recapture that which it gave up in order to obtain its patents. Third, you may not find infringement under the doctrine of equivalents if even one limitation of a claim or its equivalent is missing from the accused product or method. Thus, if you determine that a finding of infringement under the doctrine of equivalents would entirely eliminate a particular claimed element, then you should not find infringement under the doctrine of equivalents.
26 Affymetrix did not propose an instruction for situations where the doctrine of equivalents is not permitted. The sources for Illumina's proposed instruction are the 1993 Delaware Uniform Instructions and the 2004 Draft Delaware Model Instructions.

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4.5.1. REVERSE DOCTRINE OF EQUIVALENTS [DISPUTED]27 In some cases, even though an allegedly infringing product or service includes all of the components of at least one of the patent claims, there still may be no infringement. This will be the case where Illumina's product is so far changed in principle that although it performs substantially the same or a similar function to produce substantially the same result as that defined by a patent claim, it does so in a substantially different way.

27 Affymetrix did not propose an instruction for the reverse doctrine of equivalents. The source for Illumina's proposed instruction is the 1993 Delaware Uniform Instructions, § 3.15 (adapted).

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4.6.

PROSECUTION LACHES [DISPUTED]28

Illumina contends that Affymetrix engaged in prosecution laches, and that Affymetrix's patents were issued after an unreasonable and unexplained delay in prosecution. Refiling a patent application solely for the business purpose of delaying its issuance is an abuse of the patent system, and renders the patents unenforceable due to prosecution laches. If, considering the totality of the circumstances, you find that Illumina has proven by a preponderance of the evidence that Affymetrix's patents issued after an unreasonable and unexplained delay in prosecution of the patents, then Affymetrix's patents-in-suit are rendered unenforceable. There is no strict time limitation for determining whether continued refiling of patent applications is a legitimate utilization of the patent process, or an abuse of the patent process. Multiple examples of repetitive refilings that demonstrate a pattern of unjustifiably delayed prosecution may trigger prosecution laches. Likewise, when the totality of the circumstances surrounding the prosecution of a series of related patents suggests delay in issuing claims, prosecution laches may be triggered.

28 Affymetrix did not propose an instruction for prosecution laches. The sources for Illumina's proposed instruction are the following authoritative cases: Symbol Techs., Inc. v. Lemelson Med., Edu. & Research Found., LP, 422 F.3d 1378, 1384-85 (Fed. Cir. 2005) (affirming district court's judgment of unenforceability due to prosecution laches); Intuitive Surgical, Inc. v. Computer Motion, Inc., No. 01-203-SLR, 2002 WL 31833867, at *5 (D. Del. Dec. 10, 2002) (holding preponderance of the evidence standard applies to prosecution laches claims).

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4.7.

INDIRECT INFRINGEMENT -- GENERALLY [DISPUTED]29

In addition to stopping infringement by those who are directly infringing, a patent owner also has the right to stop those who are known as "indirect infringers." There are two types of indirect infringers. First, there are those who knowingly encourage others to infringe a patent with specific intent to cause that infringement; this is known as "inducing infringement." Second, there are those who contribute to infringement by, for example, supplying them with components used in the patented invention. I will explain to you in a moment the precise requirements for finding someone has induced or contributed to infringement by another person. In this case, Affymetrix accuses Illumina of inducing and contributing to the infringement of the patents-in-suit. It is your job to determine whether Affymetrix has proven inducement and/or contributory infringement by a preponderance of the evidence. Keep in mind that there can be no indirect infringement unless someone is directly infringing the patent in the United States. Thus, to prove that Illumina is inducing another person to infringe or contributing to the infringement of another, Affymetrix must prove by a preponderance of the evidence that the other person is directly infringing a claim of the patents. Such proof may be based on circumstantial evidence you have heard in this case, rather than direct evidence of infringement.

29Affymetrix's proposed instruction contains incorrect statements of the law in light of the recent en banc holding of the Federal Circuit in DSU Med. Corp. v. JMA Co.Source: The source for Illumina's proposed instruction is the 2004 Draft Delaware Model Instructions, which has been adapted to reflect the Federal Circuit's recent en banc holding of DSU Med. Corp. v. JMA Co., 471 F.3d 1293, 1306 (Fed. Cir. 2006) (holding "inducement requires that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another's infringement.") (emphasis added).

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4.8.

INDUCING PATENT INFRINGEMENT [DISPUTED]30

Inducement to infringe requires someone purposefully urging or encouraging another to infringe a patent -- inducement to infringe cannot occur unintentionally. This is different from direct infringement, which, as I have told you, can occur without any intent to infringe. To be liable for inducement to infringe, the accused inducer must have known of the patent and actively encouraged or instructed another person how to use a product in a manner that it knew to be infringing and that you, the jury does find infringed the asserted patent claims. Merely having knowledge of the underlying acts of direct infringement by itself is not enough to prove active inducement but rather Affymetrix must prove that Illumina possessed an intent to encourage another to act knowing that such action would infringe the patent. Thus, to prove that Illumina induced infringement of a patent-in-suit, Affymetrix must prove by a preponderance of the evidence the following three things: 1. Illumina intentionally encouraged or instructed another person how to use a

product in a way that Illumina knew to be infringing and that you, the jury, find infringes the patent claims; 2. 3. Illumina knew of the patent-in-suit; The other person infringed an asserted claim of the patent-in-suit.

All three of these things must be proven by either direct or circumstantial evidence before you may find that Illumina induced patent infringement.

30Affymetrix's proposed instruction is an incorrect statement of the law in light of the recent en banc holding of the Federal Circuit. See DSU Med. Corp. v. JMA Co., 471 F.3d 1293, 1306 (Fed. Cir. 2006) (holding that "...inducement requires that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another's infringement."). The source for Illumina's proposed instruction is the 2004 Draft Delaware Model Instructions, which has been adapted to reflect the Federal Circuit's recent en banc holding of DSU Med. Corp. DSU Med. Corp. v. JMA Co., 471 F.3d 1293, 1306 (Fed. Cir. 2006).

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4.9.

CONTRIBUTORY INFRINGEMENT [AGREED]31 Contributory

A second form of indirect infringement is contributory infringement.

infringement can occur when someone supplies a part that is used to infringe one of the patent claims. The necessary proof to show contributory infringement is focused on the intent of the person supplying the part and the nature of that part. Specifically, to prove contributory

infringement by Illumina, Affymetrix must prove by a preponderance of the evidence the following three things: 1. The part supplied by Illumina is not simply a common part used for significant

non-infringing uses, but rather, the part is especially made or adapted for a use that infringes the claimed invention. 2. Illumina knew of the patent and sold the accused part knowing that the part was

especially made for use in an infringement of the patent. 3. Someone then bought the part and actually used it in a way that infringes each

limitation of an asserted claim of the patent. All three of these things must be proven by direct or circumstantial evidence before you may find that Illumina contributed to the patent infringement.

31Source: Adapted from 2003 Delaware Uniform Instructions; 35 U.S.C.§271(c).

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4.10.

WILLFUL INFRINGEMENT [DISPUTED]32

Affymetrix contends that Illumina has willfully infringed the asserted claims of the patents-in-suit. When a person becomes aware that a patent may have relevance to their activities, that person has a duty to exercise due care and investigate whether or not their activities infringe any valid claim of the patent. If that person does not do so and infringes the patent claims, then the infringement is willful. To prove willful infringement, Affymetrix must prove by the higher burden of clear and convincing evidence, and in view of the totality of the circumstances, that: 1. 2. Illumina was aware of, and acted in disregard of, the patent. Illumina proceeded with its activities without a reasonable good faith belief that

the patent was invalid, unenforceable, or that the patent was not infringed. Keep in mind that a determination by you that Illumina has infringed the patent does not automatically mean that the infringement was willful. As I have explained, the infringement is not willful if Illumina had a good faith belief that it did not infringe or that the patent was invalid, and if its belief was reasonable under all the circumstances.

32 Affymetrix's proposed instruction is contrary to Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337 (Fed. Cir. 2004) (en banc). To reflect the holding of the Federal Circuit in Knorr-Bremse that there can be no adverse inference suggested due to the decision of an alleged infringer not to rely on the advice of counsel defense, Illumina's proposed instruction adopts certain revisions to the model instruction of the 2004 Draft Delaware Model Instructions as incorporated into the Tristata Tech., Inc. v. Mary Kay, Inc., C.A. No. 01-127-JJF, Final Jury Instructions. Accordingly, Illumina's proposed instruction is consistent with Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337 (Fed. Cir. 2004) (en banc) (holding that there can be no adverse inference suggested due to the decision of an alleged infringer not to rely on the advice-of-counsel defense).

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5. 5.1. VALIDITY [DISPUTED]33

VALIDITY

Illumina contends that the asserted claims of the patents-in-suit are invalid for failure to satisfy the legal requirements of patentability. In particular, Illumina contends that the asserted claims are invalid for the following reasons: · · · · · · · Anticipation Derivation Obviousness Lack of Written Description Lack of Enablement Non-Inventorship Indefiniteness

I will now instruct you on each defense.

33Affymetrix did not propose an introductory instruction regarding Illumina's invalidity contentions. This instruction was added in the 2004 Draft Delaware Model Instructions and provides an introduction to the jury of the validity instructions that follow. The source for Illumina's proposed instruction is the 2004 Draft Delaware Model Instructions (adapted).

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5.2.

PRESUMPTION OF VALIDITY [DISPUTED]34

The granting of a patent by the Patent and Trademark Office carries with it the presumption that the patent is valid. The law presumes, in the absence of clear and convincing evidence to the contrary, that the Patent and Trademark Office acted correctly in issuing the patent. Nevertheless, once the validity of a patent has been put in issue, it is the responsibility of the jury to review what the Patent and Trademark Office has done consistent with these instructions on the law.

34 Affymetrix's proposed instruction is loosely based on the 2004 Draft Delaware Model Instructions, but alters the model instruction to add redundant and prejudicial language regarding the burden of proof, which is properly discussed in Instruction No. 1.3. Illumina's proposed instruction more closely follows the model instruction of the 2004 Draft Delaware Model Instructions than Affymetrix's.

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5.3.

DERIVATION [DISPUTED]35

The patent laws require that the inventor on a patent be the true inventor of the invention covered by the patent claims. An inventor on a patent is not the true inventor if he "derived" the invention from someone else. An invention is said to be "derived" from another person if that other person conceived of claimed subject matter and communicated that conception to the inventor named on the patent. Conception of claimed subject matter occurs when the inventor has formed the idea of how to make and use every aspect of the claimed subject matter, and all that is required is that it be made, without the need for further inventive effort. Derivation may be of the claimed subject matter itself, or of an obvious variation of the subject matter. If an inventor derived the patented invention from someone else, then the patent claims covering the invention are invalid. In this case, Illumina contends that certain claims of the patents-in-suit are invalid because the inventor derived the invention of those claims from someone else. If you find that Illumina has proved that it is highly probable that the inventor of a patent-in-suit derived the invention covered by a claim then you must find that the claim is invalid.

35 Affymetrix did not propose an instruction regarding derivation. The source for Illumina's proposed instruction is the Federal Circuit Bar Association Model Patent Jury Instructions, § 10.7 (adapted).

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5.4.

ENABLEMENT [DISPUTED]36

Illumina contends that certain claims of the patents-in-suit are invalid because the patent specification lacked an enabling disclosure. Patent law requires that the disclosure or written description portion of a patent be sufficiently detailed to enable those skilled in the art