Free Declaration - District Court of Arizona - Arizona

EXHIBIT F
S€pt€Hlb€l‘ 12, 2005
Final Jury Instruction N0. 28
Case2:O2-cv-02575-DGC Document 251-6 FiIed12/05/2005 Page10f4

1. . ,1
· FILED ___ LQMED
__ Recewao _____ copy
I SEP 1 2 ZU05
ctam u s uasmzcr coum
DISTRICT OF ARIZONA
BY—...._..____ oepuw
IN THE UNITED STATES DISTRICT COURT
DISTRICT OF ARIZONA
Eberle Design, Inc., and Electronic)
Devices, Inc., )
)
Plaintiff/Counterdefendant, ) No. CIV-02-2575 PHX DGC
) CIV 03-0883 PHX DGC
v. ) (Consolidated)
)
Reno A&E, )
)
Defendant/Counterclaixnant. )
)
_.._.._;._......)
FINAL JURY INSTRUCTIONS
DATED: September 9, 2005
I UNITED STATES DISTRICT JUDGE
l
Case 2:02-cv-02575-DGC Document 251-6 Filed 12/05/2005 Page 2 of 4

IURY INSTRUCTION 28
hrequitable Conduct
Eberle asserts that the ‘964 patent is unenforceable because Reno engaged in
inequitable conduct. I will explain the law that applies to this issue.
After a patent application is tiled, it is assigned to an Examiner, who examines the
application and attempts to determine whether or not the application and the claims meet all
of the requirements of the patent laws.
In conducting this examination, the Examiner must consider the description of the
invention in the application, which may involve highly technical subject matter, and search
for and consider the prior art. The Examiner has only a limited amount of time and resources
available and, therefore, must rely on information provided by the applicant with respect to
the technical tield of the invention and the prior 8,11.
Because the Patent and Trademark Office must rely on the patent application for
information, applicants for patents have a duty of honesty and good faith in their dealings
with the Patent and Trademark Office. Persons who have this duty include the inventor
named on the patent application, persons who represent the inventor before the Patent and
Trademark Oftice, and other persons involved in a substantial way with the application.
This duty of honesty and good faith exists from the time the application is tiled and
continues for the entire time that an application is pending before the Patent and Trademark
Oflice. It requires that the applicant, the applicant’s representatives, and others involved in
a substantial way with the application fully disclose to the Patent and Trademark Office all
information of which they are aware that is material to examination of the application,
including all material prior art. I will explain to you in a moment how you may determine
whether or not information is material.
Intentional failure to fulfill this duty of honesty and good faith is called inequitable
conduct. When inequitable conduct occurs during the course of obtaining a patent, the patent
is unenforceable. This means that the patent owner may not prevent others from using the
invention covered by the claims of the patent and may not collect damages for patent
infringement.
Eberle Design has the burden of proving inequitable conduct by the highly probable
standard. Eberle Design must prove that the inventors, the inventors’ representatives, or
someone involved in a substantial way with the application withheld or misrepresented
information that was material to the examination of the ‘964 patent application and did so
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Case 2:02-cv-02575-DGC Document 251 -6 Filed 12/05/2005 Page 3 of 4

with an intent to deceive or mislead the Patent Examiner.
I will now explain to you the requirements of materiality and intent. I will then
explain how you should balance any materiality and intent that you End in order for you to
determine whether or not there was inequitable conduct.
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