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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 1 of 35

4 UNITED STATES DISTRICT COURT

5 NORTHERN DISTRICT OF CALIFORNIA

7 KENU, INC., Case No. 15-cv-01429-JD


Plaintiff,
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FINAL JURY INSTRUCTIONS
v.
9

10 BELKIN INTERNATIONAL, INC.,


Defendant.
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 2 of 35

1 INSTRUCTION NO. 1: DUTY OF JURY

2 Ladies and gentlemen of the jury: It is my duty to instruct you on the law. These are the
final set of instructions which will govern your deliberations.
3
It is your duty to find the facts from all the evidence in the case. To those facts you will
4 apply the law as I give it to you. You must follow the law as I give it to you whether you agree
with it or not. And you must not be influenced by any personal likes or dislikes, opinions,
5 prejudices, or sympathy. That means that you must decide the case solely on the evidence before
you. You will recall that you took an oath to do so.
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In following my instructions, you must follow all of them and not single out some and
7 ignore others; they are all important.
8 Please do not read into these instructions or anything I may say or do that I have an
opinion regarding the evidence or what your verdict should be.
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 3 of 35

1 INSTRUCTION NO. 2: SUMMARY OF CONTENTIONS


2 I will first give you a summary of each side’s contentions in this case. I will then tell you
what each side must prove to win on each of its contentions. Kenu seeks money damages from
3 Belkin for allegedly infringing U.S. Design Patent No. D690,707 by making, using, selling,
offering for sale, and importing into the United States products that Kenu argues are covered by
4 Claim 1 of the ’D707 patent. The products that are alleged to infringe the ’D707 patent is
Belkin’s Vent Mount.
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Belkin denies that it has infringed the ’D707 patent.
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Your job is to decide whether the ’D707 patent has been infringed. If you decide that the
7 ’D707 patent has been infringed, you will then need to decide any money damages to be awarded
to Kenu to compensate it for the infringement. You will also need to make a finding as to
8 whether the infringement was willful. If you decide that any infringement was willful, that
decision should not affect any damage award you make. I will take willfulness into account
9 later.
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 4 of 35

1 INSTRUCTION NO. 3: BURDEN OF PROOF – PREPONDERANCE OF THE EVIDENCE

2 When a party has the burden of proof on any claim or defense by a preponderance of the
evidence, it means you must be persuaded by the evidence that the claim or defense is more
3 probably true than not true.
4 You should base your decision on all of the evidence, regardless of which party presents it.

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1 INSTRUCTION NO. 4: BURDEN OF PROOF – CLEAR AND CONVINCING EVIDENCE

2 When a party has the burden of proving any claim or defense by clear and convincing
evidence, it means you must be persuaded by the evidence that the claim or defense is highly
3 probable. This is a higher standard of proof than proof by a preponderance of the evidence.
4 You should base your decision on all of the evidence, regardless of which party presents it.

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1 INSTRUCTION NO. 5: WHAT IS EVIDENCE

2 The evidence you are to consider in deciding what the facts are consists of:
3 1. the sworn testimony of any witness;
4 2. the exhibits that are admitted into evidence;
5 3. any facts to which the lawyers have agreed; and
6 4. any facts that I may instruct you to accept as proved.
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1 INSTRUCTION NO. 6: WHAT IS NOT EVIDENCE

2 In reaching your verdict, you may consider only the testimony and exhibits received into
evidence. Certain things are not evidence, and you may not consider them in deciding what the
3 facts are. I will list them for you:
4 1. Arguments and statements by lawyers are not evidence. The lawyers are not
witnesses. What they have said in their opening statements, closing arguments, and at
5 other times is intended to help you interpret the evidence. But these arguments and
statements are not evidence. If the facts as you remember them differ from the way
6 the lawyers have stated them, your memory of them controls.
7 2. Questions and objections by lawyers are not evidence. Attorneys have a duty to their
clients to object when they believe a question is improper under the rules of evidence.
8 You should not be influenced by the objection or by the court’s ruling on it.
9 3. Testimony that has been excluded or stricken, or that you have been instructed to
disregard, is not evidence and must not be considered. In addition, sometimes
10 testimony and exhibits are received only for a limited purpose; when I have given a
limiting instruction, you must follow it.
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4. Anything you may have seen or heard when the court was not in session is not
12 evidence. You are to decide the case solely on the evidence received at the trial.
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 8 of 35

1 INSTRUCTION NO. 7: DIRECT AND CIRCUMSTANTIAL EVIDENCE

2 Evidence may be direct or circumstantial. Direct evidence is direct proof of a fact, such
as testimony by a witness about what that witness personally saw or heard or did. Circumstantial
3 evidence is proof of one or more facts from which you could find another fact. You should
consider both kinds of evidence. The law makes no distinction between the weight to be given to
4 either direct or circumstantial evidence. It is for you to decide how much weight to give to any
evidence.
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 9 of 35

1 INSTRUCTION NO. 8: RULING ON OBJECTIONS

2 There are rules of evidence that control what can be received into evidence. When
lawyers ask questions or offer exhibits into evidence, and a lawyer on the other side thinks that it
3 is not permitted by the rules of evidence, that lawyer may object. If I overrule the objection, the
question is answered or the exhibit received. If I sustain the objection, the question is not
4 answered, and the exhibit is not received. Whenever I sustained an objection to a question, you
must ignore the question and not try to guess what the answer might have been.
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Sometimes I may have ordered that evidence be stricken from the record and that you
6 disregard or ignore the evidence. That means that when you are deciding the case, you must not
consider the evidence that I told you to disregard.
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 10 of 35

1 INSTRUCTION NO. 9: CREDIBILITY OF WITNESSES

2 In deciding the facts in this case, you may have to decide which testimony to believe and
which testimony not to believe. You may believe everything a witness said, or part of it, or none
3 of it. Proof of a fact does not necessarily depend on the number of witnesses who testified about
it.
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In considering the testimony of any witness, you may take into account:
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1. the opportunity and ability of the witness to see or hear or know the things testified
6 to;
7 2. the witness’s memory;
8 3. the witness’s manner while testifying;
9 4. the witness’s interest in the outcome of the case and any bias or prejudice;
10 5. whether other evidence contradicted the witness’s testimony;
11 6. the reasonableness of the witness’s testimony in light of all the evidence; and
12 7. any other factors that bear on believability.
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13 Sometimes a witness may have said something that is not consistent with something else
he or she said. Sometimes different witnesses will give different versions of what happened.
14 People often forget things or make mistakes in what they remember. Also, two people may see
the same event but remember it differently. You may consider these differences, but do not
15 decide that testimony is untrue just because it differs from other testimony.
16 However, if you decide that a witness has deliberately testified untruthfully about
something important, you may choose not to believe anything that witness said. On the other
17 hand, if you think the witness testified untruthfully about some things but told the truth about
others, you may accept the part you think is true and ignore the rest.
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The weight of the evidence as to a fact does not necessarily depend on the number of
19 witnesses who testify. What is important is how believable the witnesses were, and how much
weight you think their testimony deserves.
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 11 of 35

1 INSTRUCTION NO. 10: DEPOSITION IN LIEU OF LIVE TESTIMONY

2 At times during the trial, you may have heard testimony by a witness in the form of
previously recorded deposition rather than live here in court. A deposition is the sworn
3 testimony of a witness taken before trial. The witness is placed under oath to tell the truth and
lawyers for each party may ask questions. The questions and answers are recorded.
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You should consider deposition testimony, presented to you in court in lieu of live
5 testimony, insofar as possible, in the same way as if the witness had been present to testify.
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 12 of 35

1 INSTRUCTION NO. 11: IMPEACHMENT EVIDENCE – WITNESS

2 The evidence that a witness lied under oath or gave different testimony on a prior
occasion may be considered, along with all other evidence, in deciding whether or not to believe
3 the witness and how much weight to give to the testimony of the witness and for no other
purpose.
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 13 of 35

1 INSTRUCTION NO. 12: NO TRANSCRIPT AVAILABLE / TAKING NOTES

2 During deliberations, you will have to make your decision based on what you recall of
the evidence. You will not get a transcript or recording of the trial during your deliberations.
3
To help you remember the evidence, you were allowed to take notes during the trial. You
4 were to keep the notes to yourself until you and your fellow jurors went to the jury room to
decide the case. During deliberations, when you leave each day, leave the binder and any notes
5 in the jury room. No one will read or look at them. At the end of the case, they will be
destroyed in a secure fashion.
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Whether or not you took notes, you should rely on your own memory of the evidence.
7 Notes are only to assist your memory. You should not be overly influenced by your notes or
those of your fellow jurors.
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 14 of 35

1 INSTRUCTION NO. 13: USE OF INTERROGATORIES OF A PARTY

2 Evidence may have been presented to you in the form of answers of one of the parties to
written interrogatories submitted by the other side. These answers were given in writing and
3 under oath, before the actual trial, in response to questions that were submitted in writing under
established court procedures. You should consider the answers, insofar as possible, in the same
4 way as if they were made from the witness stand.
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 15 of 35

1 INSTRUCTION NO. 14: EXPERT OPINION

2 Some witnesses, because of education or experience, were permitted to state opinions and
the reasons for those opinions. Opinion testimony should be judged just like any other
3 testimony. You may accept it or reject it, and give it as much weight as you think it deserves,
considering the witness’s education and experience, the reasons given for the opinion, and all the
4 other evidence in the case.
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 16 of 35

1 INSTRUCTION NO. 15: CHARTS AND SUMMARIES NOT RECEIVED IN EVIDENCE

2 Certain charts and summaries not received in evidence may have been shown to you in
order to help explain the contents of books, records, documents, or other evidence in the case.
3 Charts and summaries are only as good as the underlying evidence that supports them. You
should, therefore, give them only such weight as you think the underlying evidence deserves.
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1 INSTRUCTION NO. 16: CHARTS AND SUMMARIES IN EVIDENCE

2 Certain charts and summaries may have been received into evidence to illustrate
information brought out in the trial. You may use those charts and summaries as evidence, even
3 though the underlying documents and records are not here. You should give them only such
weight as you think they deserve.
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 18 of 35

1 INSTRUCTION NO. 17: ’D707 PATENT – INFRINGEMENT BURDEN OF PROOF

2 I will now instruct you on the rules you must follow in deciding whether Kenu has
proven that Belkin has infringed the asserted claim of the ’D707 patent. To prove infringement,
3 Kenu must persuade you that it is more likely than not that Belkin has infringed the claim.
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 19 of 35

1 INSTRUCTION NO. 18: ’D707 PATENT – INFRINGEMENT – COMPARISONS

2 In deciding the issue of infringement you must compare Belkin’s accused products to the
design patent. In addition, you may have heard evidence about certain Kenu products and
3 models. If you determine that any of Kenu’s products or models are substantially the same as the
’D707 patent design, and that the product or model has no significant distinctions with the
4 design, you may compare the product or model directly to the accused Belkin products. This
may facilitate your determination of whether the accused products infringe the ’D707 patent
5 design. If you determine that a particular Kenu product or model does not embody a patented
design, you may not compare it to the accused devices.
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 20 of 35

1 INSTRUCTION NO. 19: ’D707 PATENT – INTERPRETATION OF PATENT CLAIMS

2 Before you decide whether Belkin infringed Kenu’s asserted ’D707 design patent, you
will have to understand what the ’D707 patent covers. A design patent only protects the
3 particular ornamental design claimed by the inventor and allowed by the Patent Office. It
protects the overall ornamental visual impression of the claimed design. It does not protect a
4 broad general design concept of the accused product.
5 The scope of the claim is defined by the drawings in the ’D707 design patent, not just by
one feature of the claimed design. The scope of the claimed design encompasses its visual
6 appearance as a whole and in particular the overall visual impression it creates. Taking into
account all figures in the patent, you should consider all of the visual features of the ’D707
7 design patent as a whole and not merely isolated portions or individual features of the claimed
design.
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Since a claimed design is better represented by its drawings rather than a description, I
9 will not attempt to “construe” the claim of the ’D707 design patent by providing a detailed verbal
description of the claimed design. However, there are certain functional features you should not
10 take into account. The functional features of the ’D707 patent include:
11 1. That the mount depicted holds a phone and can be adjusted to hold phones of different
sizes;
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2. That the mount clips into a car’s air vent; and


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3. That the mount can rotate to hold a phone in different orientations.
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Functional features can be part of the claimed design based on how they contribute to the
15 overall visual appearance, but the functionalities themselves are not protected by the design
patent. The fact that Belkin’s product has these functionalities that I listed for you should not
16 play any role in your determination about whether or not the product infringes Kenu’s ’D707
patent.
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 21 of 35

1 INSTRUCTION NO. 20: ’D707 PATENT – INFRINGEMENT

2 To determine infringement, you must compare the overall appearances of the accused
Belkin design and the ’D707 design patent. Before conducting your infringement analysis, you
3 must familiarize yourself with each of the prior art designs that have been brought to your
attention in this litigation. In view of this prior art, if you find, by a preponderance of the
4 evidence, that the overall appearance of the accused design is substantially the same as the
overall appearance of the claimed design, then you must find that the accused Belkin design
5 infringes Kenu’s design patent.
6 Two designs are substantially the same if, in the eye of an ordinary observer, giving such
attention as a purchaser usually gives, the resemblance between the two designs is such as to
7 deceive an ordinary observer, inducing him or her to purchase one supposing it to be the other.
You do not need, however, to find that any purchasers actually were deceived or confused by the
8 appearance of the accused Belkin product.
9 When evaluating designs, be it the design claimed in the ’D707 patent, Belkin’s accused
design, or prior art designs, you should always focus on the overall appearance of a design, and
10 not individual features. You should consider and weigh any perceived similarities and
differences. Minor differences should not prevent a finding of infringement.
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In conducting your analysis, you may find the following guidelines helpful:
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1. The placement and ornamentation of a logo may alter the overall design. However,
13 the use of a mark or logo to identify the source of an otherwise infringing design will
not avoid infringement.
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2. When the claimed design is visually close to the prior art designs, small differences
15 between the accused design and the claimed design may be important to your analysis
as to whether the overall appearance of the accused design is substantially the same as
16 the overall appearance of the claimed design.
17 3. If the accused design includes a particular feature of the claimed design that departs
conspicuously from the prior art, you may find the inclusion of that feature important
18 to your analysis as to whether the overall appearance of the accused design is
substantially the same as the overall appearance of the claimed design.
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4. If the accused design is visually closer to the claimed design than it is to the closest
20 prior art, you may find this comparison important to your analysis as to whether the
overall appearance of the accused design is substantially the same as the overall
21 appearance of the claimed design.
22 While these guidelines may be helpful to your analysis, the sole test for infringement is
whether you believe that the overall appearance of the accused design is substantially the same
23 as the overall appearance of the claimed design.
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 22 of 35

1 INSTRUCTION NO. 21: QUESTIONS TO WITNESSES BY JURORS

2 You were allowed to propose written questions to witnesses after the lawyers had
completed their questioning of each witness.
3
If I did not ask a proposed question, or if I rephrased it, do not speculate as to the reasons.
4 Do not give undue weight to questions you or other jurors proposed. You should evaluate the
answers to those questions in the same manner you evaluate all of the other evidence.
5
By giving you the opportunity to propose questions, I was not requesting or suggesting
6 that you do so. It will often be the case that a lawyer has not asked a question because it is
legally objectionable or because a later witness may be addressing that subject.
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1 INSTRUCTION NO. 22: STIPULATIONS OF FACT

2 The parties have agreed to the facts below that will be read to you. You must therefore
treat these facts as having been proved.
3
1. Plaintiff Kenu is a corporation organized and existing under the laws of Delaware,
4 with its principal place of business at 560 Alabama Street, in San Francisco, California 94110,
with its website address as www.kenu.com.
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2. Kenu is registered to do business in California, and is doing business in the
6 Northern District of California.
7 3. Defendant Belkin is a corporation organized and existing under the laws of
Delaware, with its principal place of business at 12045 East Waterfront Drive, Playa Vista,
8 California 90094, with its website address as www.belkin.com.
9 4. Belkin is registered to do business in California, and is doing business in the
Northern District of California.
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5. U.S. Design Patent No. D690,707, entitled “Dashboard Vent Mount for an
11 Electronic Device,” was filed on November 20, 2012, issued October 1, 2013. Kenneth Minn and
David Yao are identified on the face of the patent as the named inventors on this patent.
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6. Belkin produced an adjustable portable device holder referred to by Belkin as Vent


13 Mount.
14 7. Belkin released its Vent Mount for sale in October 2014.
15 8. Kenu accuses Belkin’s Vent Mount’s ornamental design of infringing the ’D707
patent.
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9. Kenu AIRFRAME practices the ’D707 design patent.
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10. Belkin’s total net units sold of the accused Vent Mount in the U.S. between
18 October 2014 through March 2017 are as shown in the second page of Trial Exhibit 94.
19 11. Belkin’s total net sales for net units sold of the accused Vent Mount in the U.S.
between October 2014 through March 2017 are as shown in the second page of Trial Exhibit 94.
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12. The aggregate dollar value of net sales of Belkin Vent Mounts summarized and
21 shown on the last page of Trial Exhibit 94 (i.e., page with footer title “Customer Sales Summary”)
is true and accurate.
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13. The dollar value of Belkin Vent Mount sales to individual Belkin customers
23 summarized on the last page of Trial Exhibit 94 (i.e., page with footer title: “Customer Sales
Summary”) is true and accurate.
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14. The summary of net units of Belkin’s Vent Mount products sold to individual
25 Belkin customers summarized on the last page of Trial Exhibit 94 (i.e., page with footer title:
“Customer Sales Summary”) is true and accurate.
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15. Trial Exhibit 686, which is U.S. Patent Publication No. 2010/0019059 A1
27 (otherwise known as Bulsink ’059) is prior art to the ’D707 patent.
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16. Trial Exhibit 687, which is U.S. Patent Publication No. 2010/0051771 A1
1 (otherwise known as Huang) is prior art to the ’D707 patent.
2 17. Trial Exhibit 690, which is U.S. Patent No. 6,514,467 (otherwise known as Bulsink
‘467) is prior art to the ’D707 patent.
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 25 of 35

1 INSTRUCTION NO. 23: WILLFUL PATENT INFRINGEMENT

2 Kenu contends that Belkin willfully infringed Kenu’s patent.


3 To prove willful infringement, Kenu must first persuade you that Belkin infringed Kenu’s
design patent. Kenu must also persuade you that it is more likely than not that Belkin
4 intentionally ignored or recklessly disregarded its alleged infringement of that patent. You must
base your decision on the knowledge and actions of Belkin at the time the infringement
5 happened. Evidence that Belkin had knowledge of the patent at the time of infringement by
itself is not sufficient to show willfulness. Rather, to find willfulness, you must determine that
6 Belkin engaged in additional conduct evidencing deliberate or reckless disregard of Kenu’s
patent rights.
7
In deciding whether Belkin willfully infringed, you should consider all of the facts
8 surrounding the alleged infringement including: whether Belkin intentionally copied a product
of Kenu’s that is covered by the patent; whether Belkin knew, or should have known, that its
9 conduct involved an unreasonable risk of infringement; and whether Belkin had a reasonable
belief at the time of infringement that its product did not infringe the asserted patent.
10
Although there was no obligation on Belkin to have obtained an opinion of counsel, you
11 may consider whether Belkin relied on a legal opinion that was well-supported and believable
and that advised Belkin that the product did not infringe Kenu’s patent. You must keep in mind,
12 however, that any evidence you heard about an attorney’s out-of-court statement on this issue
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may not be considered for the truth of what the attorney may have said, for example, that
13 Belkin’s product does not infringe Kenu’s design patent. That an attorney may have said that
outside of this trial should play no role in your determination of whether or not Belkin’s product
14 infringed Kenu’s design patent. You must make that determination for yourself following my
instructions.
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1 INSTRUCTION NO. 24: DAMAGES – BURDEN OF PROOF

2 I will instruct you about the measure of damages. By instructing you on damages, I am
not suggesting which party should win on any issue. If you find that Belkin infringed Kenu’s
3 ’D707 patent, you must then determine the amount of money to be awarded to Kenu to
compensate it for the infringement.
4
Because the ’D707 patent is a design patent, Kenu can prove either actual damages,
5 known as compensatory damages, or it may prove Belkin’s profits as its measure of potential
recovery with respect to the sale of each unit of an infringing product. As compensatory
6 damages, Kenu may prove either its own lost profits or a reasonable royalty. Kenu may not
ultimately recover both compensatory damages and Belkin’s profits on the same sale, but that is
7 not a matter that you should take into consideration in making your determinations; you should
make separate and independent determinations on compensatory damages on the one hand and
8 Belkin’s profits on the other.
9 The amount of damages awarded must be adequate to compensate Kenu for the
infringement. A damages award should put the patent holder in approximately the financial
10 position it would have been in had the infringement not occurred, but in no event may the
damages award be less than a reasonable royalty. You should keep in mind that the damages you
11 award are meant to compensate the patent holder and not to punish an infringer.
12 Kenu has the burden to persuade you of the amount of its damages. You should award
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only those damages that Kenu more likely than not suffered. While Kenu is not required to
13 prove its damages with mathematical precision, it must prove them with reasonable certainty.
Kenu is not entitled to damages that are remote or speculative.
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 27 of 35

1 INSTRUCTION NO. 25: PATENT DAMAGES – LOST PROFITS – GENERALLY

2 In this case, Kenu seeks to recover lost profits for Belkin’s sales of its Vent Mount
product.
3
To recover lost profits for infringing sales, Kenu must show that but for the infringement
4 there is a reasonable probability that it would have made sales that Belkin made of the infringing
product. Kenu must show the share of Belkin’s sales that it would have made if the infringing
5 product had not been on the market.
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 28 of 35

INSTRUCTION NO. 26: PATENT DAMAGES – LOST PROFITS –


1 FACTORS TO CONSIDER
2 Kenu is entitled to lost profits if it proves all of the following:
3 (2) that there was a demand for the patented product;
4 (3) that there were no acceptable non-infringing substitutes for the product for which
Kenu seeks lost profits, or, if there were, the number of sales made by Belkin that
5 Kenu would have made despite the availability of any acceptable non-infringing
substitutes. An acceptable non-infringing substitute may involve modifying
6 Belkin’s product to avoid infringement by adding an available alternative.
7 An alternative may be considered available as a potential substitute even if it was
not actually on sale during the infringement period. Factors suggesting that the
8 alternative was available include whether the material, experience, and know-how
for the alleged substitute were readily available and potential customers would have
9 believed that the alternative was an acceptable substitute. Factors suggesting that
the alternative was not available include whether the material was of such high cost
10 as to render the alternative unavailable, whether potential customers would have
believed that the alternative was an acceptable substitute and whether Belkin had to
11 design or invent around the patented technology to develop an alleged substitute;
12 (4) that Kenu had the manufacturing and marketing capacity to make any infringing
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sales actually made by the infringer and for which Kenu seeks an award of lost
13 profits; and
14 (5) the amount of profit that Kenu would have made if Belkin had not infringed.
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 29 of 35

1 INSTRUCTION NO. 27: REASONABLE ROYALTY – ENTITLEMENT

2 If Kenu has not proved its claim for lost profits, or has proved its claim for lost profits for
only a portion of the infringing sales, then Kenu should be awarded a reasonable royalty for all
3 infringing sales for which it has not been awarded lost profits damages.
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 30 of 35

INSTRUCTION NO. 28: PATENT DAMAGES – REASONABLE ROYALTY –


1 DEFINITION
2 A royalty is a payment made to a patent holder in exchange for the right to make, use or
sell the claimed invention. This right is called a “license.” A reasonable royalty is the payment
3 for the license that would have resulted from a hypothetical negotiation between the patent
holder and the infringer taking place at the time when the infringing activity first began. In
4 considering the nature of this negotiation, you must assume that the patent holder and the
infringer would have acted reasonably and would have entered into a license agreement. You
5 must also assume that both parties believed the patent was valid and infringed. Your role is to
determine what the result of that negotiation would have been. The test for damages is what
6 royalty would have resulted from the hypothetical negotiation and not simply what either party
would have preferred.
7
A royalty can be calculated in several different ways and it is for you to determine which
8 way is the most appropriate based on the evidence you have heard.
9 One way to calculate a royalty is to determine what is called an “ongoing royalty.” To
calculate an ongoing royalty, you must first determine the “base,” that is, the product on which
10 the infringer is to pay. You then need to multiply the revenue the defendant obtained from that
base by the “rate” or percentage that you find would have resulted from the hypothetical
11 negotiation. For example, if the patent covers a nail, and the nail sells for $1, and the licensee
sold 200 nails, the base revenue would be $200. If the rate you find would have resulted from
12 the hypothetical negotiation is 1%, then the royalty would be $2, or the rate of 0.01 times the
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base revenue of $200. By contrast, if you find the rate to be 5%, the royalty would be $10, or the
13 rate of 0.05 times the base revenue of $200. These numbers are only examples, and are not
intended to suggest the appropriate royalty rate.
14
Instead of a percentage royalty, you may decide that the appropriate royalty that would
15 have resulted from a hypothetical negotiation is a fixed number of dollars per unit sold. If you
do, the royalty would be that fixed number of dollars times the number of units sold.
16
The ultimate combination of royalty base and royalty rate must reflect the value
17 attributable to the infringing features of the product, and no more. When the accused infringing
products have both patented and unpatented features, measuring this value requires you to
18 identify and award only the value of the patented features.
19 Another way to calculate a royalty is to determine a one-time lump sum payment that the
infringer would have paid at the time of the hypothetical negotiation for a license covering all
20 sales of the licensed product, both past and future. This differs from payment of an ongoing
royalty because, with an ongoing royalty, the licensee pays based on the revenue of actual
21 licensed products it sells. When a one-time lump sum is paid, the infringer pays a single price
for a license covering both past and future infringing sales.
22
It is up to you, based on the evidence, to decide what type of royalty is appropriate in this
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 31 of 35

INSTRUCTION NO. 29: DESIGN PATENT INFRINGEMENT DAMAGES –


1 DEFENDANT’S PROFITS
2 Because this is a design patent case, Kenu may also seek, as an alternative to
compensatory damages, the amount of Belkin’s total profits from sales of the Vent Mount
3 product, if you find that the Vent Mount product infringed Kenu’s design patent.
4 Belkin’s “total profits” means the entire profits on sales of the Vent Mount product, and
not just the portion of profits attributable to the design or ornamental aspects covered by the
5 patent.
6 Profits are determined by deducting certain expenses from gross revenue. Gross revenue
is all of Belkin’s receipts from the sale of the Vent Mount product, if you find that that product
7 infringes Kenu’s design patent. Kenu has the burden of proving Belkin’s gross revenue by a
preponderance of the evidence.
8
Expenses can include costs incurred in producing the gross revenue, such as the cost of
9 the goods. Other costs may be included as deductible expenses if they are directly attributable to
the sale or manufacture of the infringing products resulting in a nexus between the infringing
10 products and the expenses. Belkin has the burden of proving the deductible expenses.
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1 INSTRUCTION NO. 30: DUTY TO DELIBERATE

2 When you begin your deliberations, you should elect one member of the jury as your
presiding juror. That person will preside over the deliberations and speak for you here in court.
3
You will then discuss the case with your fellow jurors to reach agreement if you can do
4 so. Your verdict must be unanimous.
5 Each of you must decide the case for yourself, but you should do so only after you have
considered all of the evidence, discussed it fully with the other jurors, and listened to the views
6 of your fellow jurors.
7 Do not hesitate to change your opinion if the discussion persuades you that you should.
Do not come to a decision simply because other jurors think it is right.
8
It is important that you attempt to reach a unanimous verdict but, of course, only if each
9 of you can do so after having made your own conscientious decision. Do not change an honest
belief about the weight and effect of the evidence simply to reach a verdict.
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 33 of 35

1 INSTRUCTION NO. 31: COMMUNICATION WITH COURT

2 If it becomes necessary during your deliberations to communicate with me, you may send
a note through the courtroom deputy, Ms. Clark, signed by your presiding juror or by one or
3 more members of the jury. No member of the jury should ever attempt to communicate with me
except by a signed writing; I will communicate with any member of the jury on anything
4 concerning the case only in writing, or here in open court. If you send out a question, I will
consult with the parties before answering it, which may take some time. You may continue your
5 deliberations while waiting for the answer to any question. Remember that you are not to tell
anyone -- including me -- how the jury stands, numerically or otherwise, until after you have
6 reached a unanimous verdict or have been discharged. Do not disclose any vote count in any
note to the court.
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 34 of 35

1 INSTRUCTION NO. 32: RETURN OF VERDICT

2 A verdict form has been prepared for you. After you have reached unanimous agreement
on a verdict, your presiding juror will fill in the form that has been given to you, sign and date it,
3 and advise the court that you are ready to return to the courtroom.
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Case 3:15-cv-01429-JD Document 200 Filed 06/15/18 Page 35 of 35

INSTRUCTION NO. 33: USE OF ELECTRONIC TECHNOLOGY TO CONDUCT


1 RESEARCH ON OR COMMUNICATE ABOUT A CASE
2 During your deliberations, you must not communicate with or provide any information to
anyone by any means about this case. You may not use any electronic device or media, such as
3 the telephone, a cell phone, smart phone, iPhone, Blackberry or computer, the Internet, any
Internet service, any text or instant messaging service, any blog, or website such as Facebook,
4 Instagram, Snapchat, LinkedIn, YouTube or Twitter, to communicate to anyone any information
about this case or to conduct any research about this case until I accept your verdict. In other
5 words, you cannot talk to anyone on the phone, correspond with anyone, or electronically
communicate with anyone about this case. You can only discuss the case in the jury room with
6 your fellow jurors during deliberations. You should advise me immediately if you become
aware that another juror has violated these instructions.
7
You may not use these electronic means to investigate or communicate about the case
8 because it is important that you decide this case based solely on the evidence presented in this
courtroom. Information on the internet or available through social media might be wrong,
9 incomplete, or inaccurate. You are only permitted to discuss the case with your fellow jurors
during deliberations because they have seen and heard the same evidence you have. In our
10 judicial system, it is important that you are not influenced by anything or anyone outside of this
courtroom. Otherwise, your decision may be based on information known only by you and not
11 your fellow jurors or the parties in the case. This would unfairly and adversely impact the
judicial process.
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