Free Proposed Jury Instructions - District Court of Delaware - Delaware

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

LML PATENT CORP. Plaintiff, vs. TELECHECK SERVICES, INC. ELECTRONIC CLEARING HOUSE, INC., XPRESSCHEX, INC., AND NOVA INFORMATION SYSTEMS, INC.

Civil Action No.

04-858-SLR

Judge Sue L. Robinson

Defendants.

PROPOSED FINAL JURY INSTRUCTIONS

RED = LML'S PROPOSED LANGUAGE BLUE = DEFENDANTS' PROPOSED LANGUAGE BLACK = AGREED UPON LANGUAGE

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TABLE OF CONTENTS GENERAL INSTRUCTIONS .........................................................................................................1 1.1 INTRODUCTION ...................................................................................................1 1.2 JUROR'S DUTIES ..................................................................................................2 1.3 BURDENS OF PROOF...........................................................................................3 1.4 EVIDENCE DEFINED ...........................................................................................4 1.5 DIRECT AND CIRCUMSTANTIAL EVIDENCE ................................................5 1.6 CONSIDERATION OF EVIDENCE ......................................................................6 1.7 CREDIBILITY OF WITNESSES ...........................................................................7 1.8 NUMBER OF WITNESSES ...................................................................................9 1.9 EXPERT WITNESSES .........................................................................................10 1.10 DEPOSITION TESTIMONY................................................................................11 THE PARTIES AND THEIR CONTENTIONS ...........................................................................12 2.1 THE PARTIES.......................................................................................................12 2.2 PLAINTIFF'S CONTENTIONS ...........................................................................13 2.3 DEFENDANTS' CONTENTIONS .......................................................................15 INFRINGEMENT..........................................................................................................................18 3.1 THE ASSERTED CLAIMS ..................................................................................18 3.2 DEPENDENT AND INDEPENDENT CLAIMS .................................................19 3.3 OPEN ENDED OR "COMPRISING" CLAIMS...................................................20 3.4 CONSTRUCTION OF CLAIMS ..........................................................................21 3.5 PATENT INFRINGEMENT GENERALLY ........................................................22 3.6 LITERAL INFRINGEMENT................................................................................23 3.7 INFRINGEMENT UNDER THE DOCTRINE OF EQUIVALENTS..................25 3.8 WILLFUL INFRINGEMENT ...............................................................................27 VALIDITY ....................................................................................................................................28 4.1 AFFIRMATIVE DEFENSE OF INVALIDITY GENERALLY...........................28 4.2 PRIOR ART...........................................................................................................30 4.3 EFFECTIVE PATENT APPLICATION DATE ...................................................31 4.4 ANTICIPATION ...................................................................................................34 4.4 ANTICIPATION BY PRINTED PUBLICATION OR A PRIOR PATENT........36 4.5 ON-SALE BAR .....................................................................................................37 4.6 ON-SALE BAR - COMMERCIAL OFFER FOR SALE .....................................39 4.7 ON-SALE BAR - EXPERIMENTAL USE EXCEPTION ...................................41 4.8 OBVIOUSNESS ....................................................................................................44 4.9 OBVIOUSNESS - SCOPE AND CONTENT OF THE PRIOR ART ..................45 4.10 OBVIOUSNESS - DIFFERENCES OVER THE PRIOR ART............................46 4.11 OBVIOUSNESS - LEVEL OF ORDINARY SKILL ...........................................48 4.12 OBJECTIVE CRITERIA CONCERNING OBVIOUSNESS (SECONDARY CONSIDERATIONS).................................................................49 4.13 OBVIOUSNESS - HINDSIGHT...........................................................................50 4.14 OBVIOUS TO TRY ..............................................................................................51 -i-

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4.15 4.16 4.17 4.18 4.19

INDEPENDENT INVENTION BY OTHERS......................................................52 ENABLEMENT ....................................................................................................53 WRITTEN DESCRIPTION...................................................................................55 PRIOR INVENTION.............................................................................................56 INDEFINITENESS................................................................................................58

DAMAGES....................................................................................................................................60 5.1 COMPENSATORY DAMAGES IN GENERAL .................................................60 5.2 FORESEEABIILTY ..............................................................................................61 5.3 REASONABLE CERTAINTY .............................................................................62 5.4 REASONABLE ROYALTY AS A MEASURE OF DAMAGES ........................63 5.5 THE HYPOTHETICAL NEGOTIATION ............................................................65 5.6 FACTORS FOR DETERMINING REASONABLE ROYALTY ........................66 5.7 CLOSING STATEMENT - DAMAGES ..............................................................68 5.8 CURATIVE INSTRUCTION................................................................................69 DELIBERATION AND VERDICT ..............................................................................................70 6.1 INTRODUCTION .................................................................................................70 6.2 UNANIMOUS VERDICT.....................................................................................71 6.3 DUTY TO DELIBERATE ....................................................................................73 6.4 COURT HAS NO OPINION.................................................................................75

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GENERAL INSTRUCTIONS 1.1 INTRODUCTION

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. I will explain the positions of the parties and the law you will apply in this case. 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 have a written copy of these instructions with you in the jury room for your reference during your deliberations. You will also have a verdict form, which will list the questions that you must answer to decide this case. Based on: Charge to the Jury, Praxair, Inc. v. ATMI, Inc., Civil Action No. 03-1158-SLR (D. Del. Dec. 7, 2005); Charge to the Jury, IMX, Inc. v. Lendingtree, LLC, Civil Action No. 03-1067SLR (D. Del. Jan. 20, 2006).

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1.2

JUROR'S DUTIES

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 that 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 each of the issues presented. It is my job to instruct you about the law, and about what the claims of the patents mean. 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 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. Based on: Charge to the Jury, Praxair, Inc. v. ATMI, Inc., Civil Action No. 03-1158-SLR (D. Del. Dec. 7, 2005); Charge to the Jury, IMX, Inc. v. Lendingtree, LLC, Civil Action No. 03-1067SLR (D. Del. Jan. 20, 2006); Proposed Uniform Jury Instructions for Patent Cases in the United States District Court for the District of Delaware, 2004.

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1.3

BURDENS OF PROOF

This is a civil case in which LML is charging Defendants with patent infringement and LML is seeking damages for the alleged infringement. LML has the burden of proving patent infringement and proving its damages, if any, by what is called a preponderance of the evidence. That means LML has to produce evidence which, when considered in light of all of the facts, leads you to believe that what LML claims is more likely true than not. To put it differently, if you were to put LML's and Defendants' evidence on the opposite sides of a scale, the evidence supporting LML's claims would have to make the scale tip somewhat to LML's side in order for LML to meet its burden. LML is also charging TeleCheck, ECHO, and Nova with willful infringement. LML has the burden of proving willful infringement by clear and convincing evidence.1 In this case, TeleCheck, ECHO, and Nova contend that the asserted claims of the patentin-suit are invalid. Since a patent is presumed to be valid, Defendants have the burden of proving by clear and convincing evidence that an asserted claim is invalid. 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 a higher burden than proof by a preponderance of the evidence. Based on: Charge to the Jury, Praxair, Inc. v. ATMI, Inc., Civil Action No. 03-1158-SLR (D. Del. Dec. 7, 2005); Charge to the Jury, IMX, Inc. v. Lendingtree, LLC, Civil Action No. 03-1067SLR (D. Del. Jan. 20, 2006); Proposed Uniform Jury Instructions for Patent Cases in the United States District Court for the District of Delaware, 2004.
1

Defendants disagree that the doctrine of equivalents, willfulness, financial issues, and damages should be included in these jury instructions. Nevertheless, Defendants have inserted comments for these issues in the event such instructions are included.

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1.4

EVIDENCE DEFINED

You must make your decision based only on the evidence that you saw and heard here in the courtroom. 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, the exhibits that I allowed into evidence, and any facts that the parties agreed to by stipulation. Nothing else is evidence. The lawyers' statements and arguments are not evidence. Their questions and objections are not evidence. My legal rulings are not evidence. None of my comments or questions are evidence. The notes taken by any juror are not evidence. Certain charts and graphics have been used to illustrate testimony from witnesses. Unless I have specifically admitted them into evidence, these charts and graphics are not themselves evidence even if they refer to or identify evidence. During the trial I may not have let you hear the answers to some of the questions that the lawyers asked or I may have struck things from the record. I also may have ruled that you could not see some of the exhibits that the lawyers wanted you to see. 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 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. Based on: Charge to the Jury, Praxair, Inc. v. ATMI, Inc., Civil Action No. 03-1158-SLR (D. Del. Dec. 7, 2005); Charge to the Jury, IMX, Inc. v. Lendingtree, LLC, Civil Action No. 03-1067SLR (D. Del. Jan. 20, 2006); Proposed Uniform Jury Instructions for Patent Cases in the United States District Court for the District of Delaware, 2004.

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1.5

DIRECT AND CIRCUMSTANTIAL EVIDENCE

Some of you may have heard the terms "direct evidence" and "circumstantial evidence." Direct evidence is simply evidence like the testimony of any eyewitness which, if you believe it, directly proves a fact. If a witness testified that he or she saw it raining outside, and you believed him or her, 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 weights 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. Based on: Charge to the Jury, Praxair, Inc. v. ATMI, Inc., Civil Action No. 03-1158-SLR (D. Del. Dec. 7, 2005); Charge to the Jury, IMX, Inc. v. Lendingtree, LLC, Civil Action No. 03-1067SLR (D. Del. Jan. 20, 2006); Proposed Uniform Jury Instructions for Patent Cases in the United States District Court for the District of Delaware, 2004.

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1.6

CONSIDERATION OF EVIDENCE

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. Based on: Charge to the Jury, Praxair, Inc. v. ATMI, Inc., Civil Action No. 03-1158-SLR (D. Del. Dec. 7, 2005); Charge to the Jury, IMX, Inc. v. Lendingtree, LLC, Civil Action No. 03-1067SLR (D. Del. Jan. 20, 2006).

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1.7

CREDIBILITY OF WITNESSES

You, the jurors, are the sole judges of the credibility, or the believability, of the witnesses you have seen during the trial and the weight their testimony deserves. You should carefully scrutinize all the testimony each witness has given and every matter of evidence which tends to show whether he or she is worthy of belief. Consider each witness's intelligence, motive, and state of mind, as well as his or her demeanor while on the stand. Consider the witness's ability to observe the matters as to which he or she has testified and whether he or she impresses you as having inaccurate recollection of these matters. Consider also any relation each witness may bear to each side of the case, the manner in which each witness might be affected by the verdict, the interest any witness may have in the verdict, and the extent to which, if at all, each witness is either supported or contradicted by other evidence in the case. Discrepancies in the testimony of different witnesses may, or may not, cause you to discredit such testimony. Two or more persons witnessing an incident or transaction may see or hear it differently. Likewise, the testimony of a witness may be discredited or impeached by showing that the witness has made an incorrect statement or has given a prior statement or testimony which is inconsistent with his or her testimony at this trial. It is the province of the jury to determine whether an incorrect statement or prior inconsistent statement discredits the witness's testimony. But bear in mind that an innocent misrecollection, like failure of recollection, is not an uncommon experience. In weighing the effect of a discrepancy, always consider whether it

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pertains to a matter of importance or to an unimportant detail, and whether the discrepancy results from innocent error or intentional falsehood. Based on: Charge to the Jury, Praxair, Inc. v. ATMI, Inc., Civil Action No. 03-1158-SLR (D. Del. Dec. 7, 2005); Charge to the Jury, IMX, Inc. v. Lendingtree, LLC, Civil Action No. 03-1067SLR (D. Del. Jan. 20, 2006); Proposed Uniform Jury Instructions for Patent Cases in the United States District Court for the District of Delaware, 2004.

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1.8

NUMBER OF WITNESSES

One more point about the witnesses. Sometimes jurors wonder if the number of 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. Based on: Charge to the Jury, Praxair, Inc. v. ATMI, Inc., Civil Action No. 03-1158-SLR (D. Del. Dec. 7, 2005); Charge to the Jury, IMX, Inc. v. Lendingtree, LLC, Civil Action No. 03-1067SLR (D. Del. Jan. 20, 2006).

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1.9

EXPERT WITNESSES

When knowledge of technical or financial subject matter might be helpful to the jury, a person who has special training or experience in that technical or financial field - he or she is called an expert witness - is permitted to state his or her opinion on those technical or financial matters. However, you are not required to accept that opinion. As with any other witness, it is up to you to judge the credentials and credibility of the expert witness and decide whether to rely upon his or her testimony. You should consider each expert opinion received in evidence in this case, and give it such weight as you think it deserves. If you decide that the opinion of an expert witness is not based upon sufficient education and experience, or if you conclude that the reasons given in support of the opinion are not sound, or if you feel that the opinion is outweighed by other evidence, you may disregard the opinion in whole or in part. Based on: Charge to the Jury, Praxair, Inc. v. ATMI, Inc., Civil Action No. 03-1158-SLR (D. Del. Dec. 7, 2005); Charge to the Jury, IMX, Inc. v. Lendingtree, LLC, Civil Action No. 03-1067SLR (D. Del. Jan. 20, 2006); Proposed Uniform Jury Instructions for Patent Cases in the United States District Court for the District of Delaware, 2004.

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1.10

DEPOSITION TESTIMONY

During the trial, certain testimony was presented to you through depositions that were read into evidence or played on videotape. This testimony is entitled to the same consideration you would give it had the witness personally appeared in court. Like the testimony of a live witness, the statements made in deposition are made under oath and are considered evidence that may be used to prove particular facts. Based on: Charge to the Jury, Praxair, Inc. v. ATMI, Inc., Civil Action No. 03-1158-SLR (D. Del. Dec. 7, 2005); Charge to the Jury, IMX, Inc. v. Lendingtree, LLC, Civil Action No. 03-1067SLR (D. Del. Jan. 20, 2006).

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THE PARTIES AND THEIR CONTENTIONS 2.1 THE PARTIES

I will now review for you the parties in this action and the positions of the parties that you will have to consider in reaching your verdict. Plaintiff is LML Patent Corp., which I will refer to as "LML." Defendants are TeleCheck Services, Inc., which I will refer to as "TeleCheck," Electronic Clearing House, Inc. and Xpresschex, Inc. which I will collectively refer to as "ECHO," and Nova Information Systems, Inc., which I will refer to as "Nova." LML is the current owner of United States Patent No. 5,484,988, which I will refer to as "the `988 patent" or "the patent-in-suit." The `988 patent relates generally to electronic check conversion at the point of sale. As the owner of the `988 patent, LML has the right to exclude others from making, using selling, offering for sale and importing any electronic check conversion product, system or service that is covered by the `988 patent. TeleCheck, ECHO, and Nova have each made, marketed, sold, offered for sale, and used point of sale, electronic check conversion systems and services. Based on: Charge to the Jury, Praxair, Inc. v. ATMI, Inc., Civil Action No. 03-1158-SLR (D. Del. Dec. 7, 2005); Charge to the Jury, IMX, Inc. v. Lendingtree, LLC, Civil Action No. 03-1067SLR (D. Del. Jan. 20, 2006).

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2.2

PLAINTIFF'S CONTENTIONS

LML contends that TeleCheck, ECHO, and Nova have each infringed claims 1, 2, 4, 5, 6, 9, 10, 11, 14, 16, and 18 of the `988 patent by making, using, selling or offering for sale point of sale, electronic check conversion systems and services. LML further contends that each of the Defendants' infringement of the `988 patent was willful. LML also contends that, as a result of the infringement of the `988 patent by Defendants, Defendants are liable to LML for damages. Specifically, LML contends that it is entitled to damages in the form of a reasonable royalty for each electronic check conversion transaction conducted by each Defendant. LML contends that TeleCheck's Electronic Check Acceptance service infringes one or more of the asserted claims. The Electronic Check Acceptance service may be referred to as "TeleCheck's Accused Service." LML contends that the following ECHO services infringe one or more of the asserted claims:
·

XpressConversion CHEXpedite Electronic Payments Solution ECHO's VISA POS Check Service.

·

·

These products may be referred to together as "ECHO's Accused Services." LML contends that Nova's Electronic Check Service infringes one or more of the asserted claims. The Electronic Check Service may be referred to as "Nova's Accused Service."

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Based on: Charge to the Jury, Praxair, Inc. v. ATMI, Inc., Civil Action No. 03-1158-SLR (D. Del. Dec. 7, 2005); Charge to the Jury, IMX, Inc. v. Lendingtree, LLC, Civil Action No. 03-1067SLR (D. Del. Jan. 20, 2006); Proposed Uniform Jury Instructions for Patent Cases in the United States District Court for the District of Delaware, 2004.

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2.3

DEFENDANTS' CONTENTIONS2

TeleCheck, ECHO, and Nova each contend that their accused services do not infringe any of the asserted claims of the `988 patent. TeleCheck, ECHO, and Nova also contend that the asserted claims of the `988 patent are invalid because: (1) each asserted claim of the `988 patent is anticipated by the prior art; (2) each asserted claim of the `988 patent would have been obvious to a person of ordinary skill in the art as of the date the invention was made based on one or a combination of references; (3) the `988 patent lacks an enabling disclosure for each asserted claim; (4) the `988 patent contains an inadequate written description of the invention of each asserted claim; (5) each asserted claim of the `988 patent is indefinite; (6) the invention of each asserted claim of the `988 patent was invented by others; (7) each asserted claim of the `988 patent contains new matter; (8) each asserted claim of the `988 patent is subject to the on-sale bar.

2 LML disagrees that indefiniteness, prior invention, and on-sale bar are issues that should be included in these jury instructions. Nevertheless, LML has inserted comments on these issues throughout these instruction should the Court decide they are properly included.

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Based on: Charge to the Jury, Praxair, Inc. v. ATMI, Inc., Civil Action No. 03-1158-SLR (D. Del. Dec. 7, 2005); Charge to the Jury, IMX, Inc. v. Lendingtree, LLC, Civil Action No. 03-1067SLR (D. Del. Jan. 20, 2006).

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2.4

SUMMARY OF PATENT ISSUES

In this case, you must decide several things according to the instructions that I shall give you. They include: 1. Whether LML has proven by a preponderance of the evidence that TeleCheck, ECHO, and Nova have each infringed any asserted claims of its `988 patent, either literally or under the doctrine of equivalents? 2. Whether LML has proven by clear and convincing evidence that each of TeleCheck's, ECHO's, and Nova's alleged infringement was willful? 3. Whether TeleCheck, ECHO, and Nova have proven by clear and convincing evidence that each and every asserted claim of LML's `988 patent is invalid? 4. The amount of damages LML is entitled to recover as compensation for TeleCheck's, ECHO's and Nova's alleged infringement, if any. Do not make any decisions based on the number of claims LML has asserted. What is important is whether LML has proven that the accused services infringe any of the asserted claims and whether TeleCheck, ECHO, and Nova have proven that any of the asserted claims are invalid. Concentrate on that, not on the number of claims. Based on: Charge to the Jury, Praxair, Inc. v. ATMI, Inc., Civil Action No. 03-1158-SLR (D. Del. Dec. 7, 2005); Charge to the Jury, IMX, Inc. v. Lendingtree, LLC, Civil Action No. 03-1067SLR (D. Del. Jan. 20, 2006); Boston Scientific Corp. v. Cordis Corp., D. Del., C.A. No. 03-027SLR (June 30, 2005).

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INFRINGEMENT 3.1 THE ASSERTED CLAIMS

Before you can decide whether or not any of the Defendants have infringed the `988 patent, you will have to understand the patent "claims." The patent claims are the numbered paragraphs at the end of the patent. The purpose of the claims is to provide notice to the public of what a patent covers and does not cover. The claims are intended to describe, in words, the boundaries of the invention described and illustrated in the patent. The claims define the patent owner's property rights. Infringement is the act of trespassing on those rights. 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. In addition, the claims of a patent do not have to cover every feature of the patented invention. Each claim is a separate statement of the patented invention and, therefore, each of the asserted claims must be considered individually. To show infringement of a particular patent, LML needs only to establish that one of the asserted claims in that patent has been infringed. There are a number of claims involved here. LML asserts that each Defendant infringes claims 1, 2, 4, 5, 6, 9, 10, 11, 14, 16, and 18 of the `988 patent. Claim 1 begins at column 11, line 36 of LML's `988 patent which is PTX1 in evidence. These claims shall be referred to hereafter as "the asserted claims." Based on: Charge to the Jury, Praxair, Inc. v. ATMI, Inc., Civil Action No. 03-1158-SLR (D. Del. Dec. 7, 2005); Charge to the Jury, IMX, Inc. v. Lendingtree, LLC, Civil Action No. 03-1067SLR (D. Del. Jan. 20, 2006).

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3.2

DEPENDENT AND INDEPENDENT CLAIMS

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 alone to determine its scope. The second type, a "dependent" claim, refers to 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 1 of the `988 patent is an "independent" claim. You know this because claim 1 does not refer to any other claim. Accordingly, the words of this claim are read by themselves in order to determine what the claim covers. On the other hand, claim 2 of the `988 patent is a" dependent" claim. If you look at claim 2, it refers to claim 1. Therefore, to determine what claim 2 covers, you must consider both the words of claims 1 and 2 together. If you find that a claim to which a dependent claim refers is not infringed, then you must find that the dependent claim is 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. Based on: Charge to the Jury, Praxair, Inc. v. ATMI, Inc., Civil Action No. 03-1158-SLR (D. Del. Dec. 7, 2005); Charge to the Jury, IMX, Inc. v. Lendingtree, LLC, Civil Action No. 03-1067SLR (D. Del. Jan. 20, 2006); Proposed Uniform Jury Instructions for Patent Cases in the United States District Court for the District of Delaware, 2004.

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3.3

OPEN ENDED OR "COMPRISING" CLAIMS

Some of the asserted claims of the `988 patent use the transitional term, "comprising." "Comprising" is interpreted the same as "including" or "containing." In patent claims, "comprising" means that the claims are open-ended. As such, the claim is not limited to only what is in the claim. Based on this explanation, if you find that any of Defendants' accused services includes all of the limitations in any one of the asserted claims of the `988 patent, but also include additional elements, the fact that it may also include additional elements is irrelevant. The presence of additional elements in the accused service does not mean that the service or method of operation does not infringe a patent claim. Similarly, if you find that the prior art includes all of the limitations in any of the asserted claims that use the term "comprising," the fact that it may also include additional elements is irrelevant. Based on: Charge to the Jury, Praxair, Inc. v. ATMI, Inc., Civil Action No. 03-1158-SLR (D. Del. Dec. 7, 2005); Charge to the Jury, IMX, Inc. v. Lendingtree, LLC, Civil Action No. 03-1067SLR (D. Del. Jan. 20, 2006); Boston Scientific Corp. v. Cordis Corp., D. Del., C.A. No. 03-027SLR (June 30, 2005).

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3.4

CONSTRUCTION OF CLAIMS

To decide the questions of infringement and validity, you must first understand what the claims of the patent cover. It is my duty under the law to define what the patent claims mean. I have made my determination on the meaning of each asserted claim. I will now instruct you on the meaning of the asserted claims. You must use the same meaning for each claim for both your decisions on infringement and your decisions on validity. You must ignore any different interpretations given to these terms by the witnesses or attorneys. If I have not provided a specific definition for a given term, you are to use the ordinary meaning of the term. I instruct you that the following claim terms have the following definitions: [[INSERT CLAIM CONSTRUCTION]] Based on: Charge to the Jury, Praxair, Inc. v. ATMI, Inc., Civil Action No. 03-1158-SLR (D. Del. Dec. 7, 2005); Charge to the Jury, IMX, Inc. v. Lendingtree, LLC, Civil Action No. 03-1067SLR (D. Del. Jan. 20, 2006); Proposed Uniform Jury Instructions for Patent Cases in the United States District Court for the District of Delaware, 2004.

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3.5

PATENT INFRINGEMENT GENERALLY

A patent owner may enforce its right to exclude others from making, using, offering to sell, or selling the patented invention by filing a lawsuit for infringement. Here, LML, the patent owner, has alleged that each of TeleCheck's, ECHO's, and Nova's accused services infringe each of the asserted claims of the `988 patent. LML has the burden of proving by a preponderance of the evidence that each Defendant has infringed at least one of the asserted claims. A company may infringe a patent without knowledge that what it is doing is an infringement of the patent. A company may also infringe even though, in good faith, it believes that what it is doing is not an infringement of any patent. Knowledge or intent to infringe is not relevant. Based on: Charge to the Jury, Praxair, Inc. v. ATMI, Inc., Civil Action No. 03-1158-SLR (D. Del. Dec. 7, 2005).

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3.6

LITERAL INFRINGEMENT

There are two ways in which a patent claim may be 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 an accused service to literally infringe an asserted claim, the subject matter of the claim must be found in the accused service. In other words, an asserted claim is literally infringed if the accused service includes each and every limitation in the patent claim. Literal infringement must be determined with respect to each asserted claim individually by comparing the accused service to each of the asserted claims. If the accused service omits any single limitation recited in a given claim, that service does not literally infringe that claim. Therefore, in determining whether each of TeleCheck's, ECHO's, and Nova's accused services literally infringe any asserted claim, you must: First, determine the scope of the asserted claim by reading the claim language, limitation by limitation, as those limitations have been construed by the court or, if they have not been specifically construed, according to their meaning to one of ordinary skill in the art. Second, compare the accused service to each of the limitations of the asserted claim. If you find each and every limitation of the asserted claim in TeleCheck's, ECHO's, and Nova's accused services, you must return a verdict of literal infringement as to that claim for that Defendant. If you do not find each and every limitation of the asserted claim in TeleCheck's, ECHO's, and Nova's accused services, you many not return a verdict of literal infringement as to that claim for that Defendant.

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You must repeat the above analysis with every asserted claim. Remember, the question is whether TeleCheck's, ECHO's, and Nova's accused services infringe any of the asserted claims, and not whether the accused services are identical or even similar to a product made by LML. Accordingly, you must be certain to compare each Defendants' accused services with the claims it is alleged to infringe and not with any product made by LML. LML's products are irrelevant to the infringement issues in this case. Based on: Charge to the Jury, Praxair, Inc. v. ATMI, Inc., Civil Action No. 03-1158-SLR (D. Del. Dec. 7, 2005); Charge to the Jury, IMX, Inc. v. Lendingtree, LLC, Civil Action No. 03-1067SLR (D. Del. Jan. 20, 2006).

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3.7

INFRINGEMENT UNDER THE DOCTRINE OF EQUIVALENTS3

If you do not find literal infringement, you may consider infringement under the "doctrine of equivalents." Under the doctrine of equivalents, an accused service or method can infringe an asserted claim if it includes elements that are identical or equivalent to the limitations of the claim. Under the patent law, an infringing equivalent is not treated any differently than a service or method that literally infringes the limitations of the asserted claims. The test to determine equivalence under the doctrine of equivalents is whether the differences between the claim limitation which you have found not to be literally present and the element present in the accused service are insubstantial. In determining whether the differences are substantial or insubstantial, you may consider whether or not the claim limitation and the element in the accused service perform substantially the same function in substantially the same way to produce substantially the same result. If you find only insubstantial differences between the claim limitation and the corresponding element in the accused service, then you will have determined that the corresponding element in the accused service is equivalent to the claim limitation. On the other hand, if you find that the claim limitation and the corresponding element in the accused service have substantial differences, then you will have determined that the corresponding element in the accused service is not equivalent to the claim limitation.

3

The parties agree that they will discuss this jury instruction after the Court's orders on claim construction and motions for summary judgment.

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The doctrine of equivalents must be applied to the individual limitations of the claims In this case, the doctrine of equivalents may only be applied to the ______ limitations of the asserted claims, but not to the invention as a whole. Thus, if you find that a claim limitation the ______ limitations is are not literally infringed, you must compare that claim limitation to the corresponding element in the accused service to determine equivalence. You must not attempt to compare the entire accused service to the entire claimed invention. Based on: Charge to the Jury, IMX, Inc. v. Lendingtree, LLC, Civil Action No. 03-1067-SLR (D. Del. Jan. 20, 2006).

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3.8

WILLFUL INFRINGEMENT

If you find, on the basis of the evidence and the law as I have explained it that one or more of the Defendants infringes at least one claim of the `988 patent, you must further decide whether or not LML has proven by clear and convincing evidence that such infringement was willful. Willful infringement is established where LML has proven two things: first, that the Defendant was aware of the `988 patent; and second, that the Defendant had no reasonable good faith basis for concluding that it did not infringe the `988 patent or that the `988 patent was invalid. To determine whether each Defendant acted with a reasonable good faith belief or whether it willfully infringed the `988 patent, you should consider the totality of the circumstances and all the facts. Based on: Charge to the Jury, IMX, Inc. v. Lendingtree, LLC, Civil Action No. 03-1067-SLR (D. Del. Jan. 20, 2006).

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VALIDITY 4.1 AFFIRMATIVE DEFENSE OF INVALIDITY GENERALLY

TeleCheck, ECHO, and Nova contend that all of the asserted claims of the `988 patent are invalid. The granting of a patent by the Patent Office carries with it the presumption that the patent is valid. From issuance of the patent, it is presumed that its subject matter is new, useful, and constitutes an advance which was not, at the time the invention was made, obvious to one of ordinary skill in the art. The law presumes, in the absence of clear and convincing evidence to the contrary, that the Patent 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 Office has said or done, consistent with these instructions on the law. This presumption of validity puts the burden of proving invalidity on Defendants, which they must prove by clear and convincing evidence. Each of the asserted claims is presumed valid independently of the validity of each other claim. Only a valid patent may be infringed. For a patent to be valid, the invention claimed in the patent must be new, useful, and non-obvious. A patent cannot take away from people their right to use what was known or what would have been obvious when the invention was made. The terms "new," "useful," and "non-obvious" have special meanings under the patent laws. I will explain these terms to you as we discuss TeleCheck's, ECHO's, and Nova's grounds for asserting invalidity. The invention claimed in a patent must also be adequately described. In return for the right to exclude others from making, using, selling, or offering for sale the claimed invention, the - 28-

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patent owner must provide the public with a complete description in the patent of the invention and how to make and use it. TeleCheck, ECHO, and Nova have challenged the validity of the asserted claims on a number of grounds. The Defendants must prove that a patent claim is invalid by the highly probably standard. I will now explain to you each of the Defendants' grounds for invalidity in detail. In making your determination as to invalidity, you should consider each claim separately. Based on: Charge to the Jury, Praxair, Inc. v. ATMI, Inc., Civil Action No. 03-1158-SLR (D. Del. Dec. 7, 2005); Charge to the Jury, IMX, Inc. v. Lendingtree, LLC, Civil Action No. 03-1067SLR (D. Del. Jan. 20, 2006); Proposed Uniform Jury Instructions for Patent Cases in the United States District Court for the District of Delaware, 2004 Fed. Cir. Bar Ass'n, Model Patent Jury Instructions 10.1; Morton Int'l v. Cardinal Chem. Co., 5 F.3d 1464, 1471-72 (Fed. Cir. 1993); Avia Group Int'l, Inc. v. L.A. Gear Cal., 853 F.2d 1557, 1562 (Fed. Cir. 1988); DMI, Inc. v. Deere & Co., 802 F.2d 421, 427 (Fed. Cir. 1986); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1534 (Fed. Cir. 1983).

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4.2

PRIOR ART4

You have heard the term "prior art" used throughout this trial, particularly in connection with the issue of the validity of the `988 patent. The term "prior art" is a legal term of art in the patent law and I will explain this term to you. Prior art is the legal term used to describe what others had done in the field before the time the invention was made, which is not the same time as when the patent application was filed. Prior art is the general body of knowledge in the public domain. To constitute prior art for the purposes of invalidating a patent, the knowledge must be publicly accessible. TeleCheck, ECHO and Nova have the burden of proving that a reference is publicly accessible by clear and convincing evidence.

Based on: Federal Circuit Bar Association Model Patent Jury Instruction 10.6; 35 U.S.C. § 102; Lindemann Machinenfabrik GmbH v. American Hoist & Derrick Co., 730 F.2d 1452, 1459-60 (Fed. Cir. 1984); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1534 (Fed. Cir. 1983); Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1576 (Fed. Cir. 1996); Minnesota Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1306 (Fed. Cir. 2002).

4

TeleCheck, ECHO, and Nova disagree with LML's proposed jury instruction. Defendants present their own version of this instruction immediately following this instruction.

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4.2

PRIOR ART5

Under the patent laws, a person is entitled to a patent only if the invention claimed in the patent is new and unobvious in light of what came before. That which came before is referred to as the "prior art." TeleCheck, ECHO, and Nova are relying on various items of prior art. TeleCheck, ECHO, Nova, and LML all agree that some references, such as U.S. Patent No. 5,175,682 to Higashiyama, and U.S. Patent Nos. 4,678,896; 4,758,714; and 5,053,607 to Carlson, are prior art, and there is no dispute that these items came before the effective patent application date, which I will explain later. Other references, such as the SGS CheckMate System and the Manta System references, are in dispute. For those references that are in dispute, TeleCheck, ECHO, and Nova must prove by clear and convincing evidence that the references fall within one or more of the different categories of prior art recognized by the patent laws. The categories include: 1. A public use in the United States more than one year prior to the effective patent

application date, where the use is not limited by obligations of secrecy or other restrictions; 2. A sale or offer for sale in the U.S. more than one year prior to the effective patent

application date;

5

LML disagrees with TeleCheck, ECHO, and Nova's proposed jury instruction and LML does not believe all issues presented in this instruction are properly in the case. LML does not believe that these generic categories of prior art should be listed as Defendants have not disclosed invalidating prior art from each of the categories. To the extent that the Court is inclined to list prior art, LML believes that only the specific prior art defenses (i.e. references or combinations of references) that Defendants have disclosed should be listed. LML presents its own version of this instruction immediately preceding this instruction.

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3.

Patents issued more than one year prior to the effective patent application date for

the patent in suit; 4. Printed publications having a publication date more than one year prior to the

effective patent application date; 5. 6. Information known or used by others in the U.S. before the invention date; U.S. patents filed before the effective patent application date regardless of

issuance date of the patents. Based on: Fed. Cir. Bar Ass'n, Model Patent Jury Instructions 10.6; Boston Scientific Corp. v. Cordis Corp., D. Del., C.A. No. 03-027-SLR (June 30, 2005).

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4.3

EFFECTIVE PATENT APPLICATION DATE6

The parties dispute the effective patent application date, or the "priority date" of the asserted claims of the `988 patent. TeleCheck, ECHO, and Nova contend that the effective patent application date is June 8, 1994. LML contends that the effective patent application date is November 13, 1992. The effective patent application date is the date at which the application provides a sufficient written description of the claimed invention. To meet the written description requirement, the application does not have to describe the claimed invention in the same words. Instead, the application only needs to reasonably convey to one skilled in the art that the inventors had possession of the claimed invention. In deciding the issue, the patent as a whole must be considered. Drawings alone may provide a written description of an invention. TeleCheck, ECHO, and Nova must demonstrate by clear and convincing evidence that the asserted claims of the `988 patent in issue are not entitled to LML's asserted effective patent application date. Based on: Boston Scientific Corp. v. Cordis Corp., D. Del., C.A. No. 03-027-SLR (June 30, 2005).

6 LML disagrees that priority date is an issue in this case and does not believe this instruction should be included.

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4.4

ANTICIPATION7

TeleCheck, ECHO and Nova contend that the asserted claims of the `988 patent are invalid because the inventions as described in those claims are not new. A person cannot obtain a patent on an invention if someone else has already made the same invention. If someone else has already made the same invention, we say that the invention of the asserted claim is "anticipated" by the prior art. An invention that is anticipated by the prior art is not entitled to patent protection. In order to prove that a claim is anticipated, all of the limitations of the claim must be found in a single prior art reference or public use by clear and convincing evidence. Although a duplication of the claimed invention that was accidental, or unrecognized, unappreciated and incidental to some other purpose is not an invalidating anticipation, a prior art reference or public use anticipates a claim if it discloses the claimed invention sufficiently that a person of ordinary skill in the art could take its teachings, together with his or her own knowledge of the art, and be in possession of the claimed invention. A prior art reference sufficiently discloses the claimed invention to enable a person of ordinary skill in the art to be in possession of the claimed invention where it describes the invention at a level of detail similar to that in the patent. A claim also is anticipated if the invention defined in the claim was disclosed in a prior patent application. A patent may be found invalid if the claimed invention was described in a

7 LML's disagrees with this instruction in its entirety and has proposed the anticipation instruction that immediately follows this one.

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patent granted on an application as filed by another in the United States before the invention was made by LML in the United States. You may not combine two or more items of prior art to make out an anticipation. You should, however, take into consideration not only what is expressly disclosed or embodied in the particular item of prior publication, public use, invention, or patent, but also what is inherent as a natural result of the practice of the prior art. Where the description in a reference is silent about an asserted inherent characteristic, such a gap in a prior art reference may be filled with recourse to other clear and convincing evidence that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill in the field of the invention. You must determine invalidity with respect to each asserted claim individually.

Based on: Boston Scientific Corp. v. Cordis Corp., D. Del., C.A. No. 03-027-SLR (June 30, 2005); IMX, Inc. v. Lendingtree, LLC, D. Del., C.A. No. 03-1067-SLR (Jan. 20, 2006).

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4.4

ANTICIPATION BY PRINTED PUBLICATION OR A PRIOR PATENT8

TeleCheck, ECHO, and Nova contend that the asserted claims of the `988 patent are invalid because they are anticipated by certain prior patents or publications. An invention that is "anticipated" by such prior art is not entitled to patent protection because the invention is not new. A party challenging the validity of a patent must prove anticipation by clear and convincing evidence. For an asserted patent claim to be anticipated by such prior art, each and every limitation of the claim must be present within a single item of prior art, whether that prior art is a publication or a prior patent. You may not find that the prior art anticipates a patent claim by combining two or more items of prior art. There must be no difference between the limitations of the asserted claims and the features of the prior art. A prior art disclosure that almost meets the claim does not anticipate. In order to anticipate, the prior art must enable one skilled in the art to practice the invention such that it is available to the public. In deciding whether a single item of prior art anticipates a patent claim, you should consider both that which is expressly stated or present in the item of prior art, and also that which is inherently present. Something is inherent in an item of prior art if it is necessarily present in the art. Based on: Charge to the Jury, Praxair, Inc. v. ATMI, Inc., Civil Action No. 03-1158-SLR (D. Del. Dec. 7, 2005.)
8

TeleCheck, ECHO, and Nova disagree with this instruction in its entirety and have proposed the anticipation instruction that immediately precedes this one.

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4.5

ON-SALE BAR9

TeleCheck, ECHO, and Nova also contend that the asserted claims are invalid because of the on-sale bar. It is against public policy to allow an inventor to commercially exploit his invention by selling or offering it for sale more than one year before the effective filing date of the patent, because this would have the effect of extending the term of the patent as fixed by Congress. Thus, the on-sale bar applies when: (i) an embodiment of the patent is the subject of a commercial offer for sale more than one year before the effective patent application date; and (ii) the invention was ready for patenting at that time. In this case, the parties dispute the effective patent application date. Defendants contend that the effective patent application date is June 8, 1994. Under Defendants' effective patent application date, the `988 patent is invalid if you find that the invention claimed in the patent was "on sale" before June 8, 1993. LML contends that the effective patent application date is November 13, 1992. Under LML's effective patent application date, the `988 patent is invalid if you find that the invention claimed in the patent was "on sale" before November 13, 1991. If you find that such offers for sale were made, then the responsibility shifts to LML to prove that the offers were for an experimental use or did not involve completely functional machines or processes.

9 LML disagrees that on-sale bar is an issue in this case and does not believe this instruction should be included.

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Based on: Proposed Uniform Jury Instructions for Patent Cases in the United States District Court for the District of Delaware, 2004; 2003 DSBA IP Section Model Patent Jury Instruction Subcommittee; 35 U.S.C. § 102(b); Pfaff v. Wells Elecs., Inc., 525 U.S. 55 (1998); Special Devices, Inc. v. OEA, Inc., 270 F.3d 1353 (Fed. Cir. 2001); 1993 District of Delaware Instructions; Pechiney Rhenalu v. Alcoa, Inc., C.A. No. 99-301-SLR (Jan. 18, 2001); Linear Technology Corp. v. Micrel, Inc., 275 F.3d 1040, 2001 WL 1669382 (Fed. Cir. 2001).

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4.6

ON-SALE BAR - COMMERCIAL OFFER FOR SALE10

In order for there to be an offer for sale, two requirements must be met: (i) the product must have been the subject of a commercial offer for sale; and (ii) the product must be "ready for patenting." To establish a commercial offer for sale, TeleCheck, ECHO, and Nova must demonstrate that there was a definite sale or offer for sale in the United States more than one year before the effective patent application date, and that the subject matter of the sale or offer for sale anticipated the claimed invention, or would have rendered the claimed invention obvious in combination with prior art. A commercial offer for sale occurs when an offer can be accepted in order to make a binding contract. Determining if a commercial offer has been made requires looking closely at the language of the proposal itself and the interaction between the parties. An invention is ready for patenting either through a reduction to practice or by proof that the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention. A single sale or even a single offer to sell primarily for profit, rather than for experimental purposes, is sufficient to trigger the on-sale bar, even if the offer is not accepted.

10 LML disagrees that on-sale bar is an issue in this case and does not believe instructions related to the on-sale bar should be included. However, if the instruction 4.5 is included, instruction 4.6 should also be included. The parties provide their respective edits if instruction 4.6 is included.

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Based on: Proposed Uniform Jury Instructions for Patent Cases in the United States District Court for the District of Delaware, 2004; 2003 DSBA IP Section Model Patent Jury Instruction Subcommittee; 35 U.S.C. § 102(b); Pfaff v. Wells Elecs., Inc., 525 U.S. 55 (1998); Special Devices, Inc. v. OEA, Inc., 270 F.3d 1353 (Fed. Cir. 2001); 1993 District of Delaware Instructions; Pechiney Rhenalu v. Alcoa, Inc., C.A. No. 99-301-SLR (Jan. 18, 2001); Linear Technology Corp. v. Micrel, Inc., 275 F.3d 1040, 2001 WL 1669382 (Fed. Cir. 2001).

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4.7

ON-SALE BAR - EXPERIMENTAL USE EXCEPTION11,12 The law recognizes that it is beneficial to permit the inventor the time and

opportunity to develop his invention. As such, there is an "experimental use" exception to the on-sale bar. TeleCheck, ECHO, and Nova must demonstrate that a sale or offer for sale occurred before the critical date. If they can carry their initial burden, LML must come forward with evidence that the experimental use exception applies. At all times, however, the burden of persuasion remains with Defendants. An experimental use is one performed to perfect or complete an invention to the point of determining that it will work for its intended purpose as stated in the patent. Any commercial exploitation that is not incidental to the primary purpose of experimentation is not an experimental use, even if the invention was still in its experimental stage. However, experimental use ends with a reduction to practice. To determine whether a sale or offer for sale constitutes an experimental use rather than a commercial use, you may consider a variety of factors, including whether:

11 LML disagrees that on-sale bar is an issue in this case and does not believe instructions related to the on-sale bar should be included. However, LML has proposed this instruction should the issue go to the jury.
12

LML never raised experimental use prior to seeking this jury instruction and TeleCheck, ECHO, and Nova do not believe such an instruction is warranted even if on-sale bar is an issue in this case.

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1. intended use; 2. 3.

The invention reasonably required evaluation under the actual conditions of

Records of the testing were kept during the experimentation process; All the test results were reported back to the inventors and the inventors kept

records of those results; 4. The product was subjected to destructive testing; that is, testing in which the

product sample was entirely or partially destroyed; 5. the inventor; 6. The patentee was simultaneously engaged in other activities to commercially There is a custom in the industry of having customers conduct testing on behalf of

exploit the invention; 7. 8. 9. Payment was made for the product that was tested; There was an obligation of confidentiality between the parties; and The inventor conducted or controlled the testing. Inventor control is an important

but not determinative factor. Testing a product in order to determine whether it is suitable for a particular customer application is not an experimental use that will avoid the on-sale bar. Rather, for the experimental use exception to apply, the testing must be to determine whether the product will work for its intended purpose as stated in the patent claims.

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Based on: Proposed Uniform Jury Instructions for Patent Cases in the United States District Court for the District of Delaware, 2004

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4.8

OBVIOUSNESS

TeleCheck, ECHO, and Nova also contend that the asserted claims are invalid as being obvious. In order to be patentable, an invention must not be obvious to a person of ordinary skill in the art at the time the invention was made. The issue is not whether the claimed invention would be obvious to you as a layman, to me as a judge, or to a genius in the art, but whether it would have been obvious to one of ordinary skill in the art at the time it was made without the teachings of the patent in suit. In determining obviousness or nonobviousness of the claimed subject matter of the asserted claim, the following steps should be taken by you: First, you should determine the scope and content of the prior art; Second, you should identify the differences between the asserted claim and the prior art; Third, you should determine the level of ordinary skill in the pertinent art at the time the claimed invention was made; and Fourth, you should consider objective evidence of nonobviousness, if any which I will explain in further detail in a few minutes. Against this background, and without using hindsight, you will make your decision as to whether the claimed subject matter would have been either obvious or nonobvious to a person of ordinary skill in the pertinent art at the time the invention was made. Based on: Charge to the Jury, Praxair, Inc. v. ATMI, Inc., Civil Action No. 03-1158-SLR (D. Del. Dec. 7, 2005); Charge to the Jury, IMX, Inc. v. Lendingtree, LLC, Civil Action No. 03-1067SLR (D. Del. Jan. 20, 2006); Proposed Uniform Jury Instructions for Patent Cases in the United States District Court for the District of Delaware, 2004.

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4.9

OBVIOUSNESS - SCOPE AND CONTENT OF THE PRIOR ART

In arriving at your decision on the issue of whether or not the claimed invention is obvious to one of ordinary skill in the art, you must first determine the scope and content of the prior art. This means that you must determine what prior art was reasonably pertinent to the particular problem with which the inventor was faced. The scope and content of the prior art includes references that would be considered by a person with ordinary skill in the art to solve a particular problem. A person of ordinary skill in the art knows of all such references. In considering whether a claim is obvious, you should also consider the categories of prior art identified previously in the Prior Art section. Based on: Charge to the Jury, Praxair, Inc. v. ATMI, Inc., Civil Action No. 03-1158-SLR (D. Del. Dec. 7, 2005); Charge to the Jury, IMX, Inc. v. Lendingtree, LLC, Civil Action No. 03-1067SLR (D. Del. Jan. 20, 2006); Proposed Uniform Jury Instructions for Patent Cases in the United States District Court for the District of Delaware, 2004; Boston Scientific Corp. v. Cordis Corp., D. Del., C.A. No. 03-027-SLR (June 30, 2005).

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4.10

OBVIOUSNESS - DIFFERENCES OVER THE PRIOR ART

In reaching your conclusion as to whether or not the claimed invention was obvious, you should consider the difference or differences between the prior art and the claimed invention. When doing so, each claim must be considered in its entirety and separately from the other claims. Although it is proper for you to note the differences between the claimed invention and the prior art, you must still determine the obviousness or nonobviousness of the invention as a whole. The fact that the claimed invention incorporates or combines elements already known in the prior art, in and of itself, does not render the claim obvious. If you find that that individual limitations of an asserted claim are present in the art, you must further determine whether it would have been obvious to a person of ordinary skill in the art to combine or modify the prior art elements in the same manner as that asserted in the claim.13 For the prior art to suggest the invention of a claim, it is not necessary that one of ordinary skill in the art, looking at the prior art, could predict with certainty that the invention of the claim would be successful. Rather, it is sufficient that the prior art would have suggested to one of ordinary skill that the invention of the