IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEBRASKA

GERALD A. KELLOGG, ) 8:07CV70)

Plaintiff, ))

v. ) FINAL) JURY INSTRUCTIONS

NIKE, INC., an Oregon corporation, and )NIKE USA, INC., an Oregon corporation, )

) Defendants. )

INSTRUCTION NO. 1

DUTY

It will be your duty to decide from the evidence whether the plaintiff is entitled to a

verdict against the defendants. From the evidence, you will decide what the facts are.

You are entitled to consider the evidence in the light of your own observations and

experiences in life. You may use reason and common sense to draw deductions from

facts established by the evidence. You will then apply those facts to the law which I give

you in these and the other instructions. In that way, you will reach your verdict. You are

the sole judges of the facts; but you must follow the law as stated in my instructions,

whether you agree or disagree with the law stated in the instructions.

Do not allow sympathy or prejudice to influence you. The law requires that your

verdict be unaffected by anything except the evidence, your common sense, and the law

stated in these and other instructions.

Anything that I may say or do during the trial must not be taken by you as an

indication of what I think of the evidence or what I think your verdict should be.

INSTRUCTION NO. 2

EVIDENCE

The word "evidence" includes the testimony of witnesses; documents and other

things received as exhibits; any facts that have been stipulated, that is, formally agreed

to by the parties; and any facts that have been judicially noticed, that is, facts which I say

you must accept as true.

The following things are not evidence:

1. Statements, arguments, questions and comments by lawyers

are not evidence.

2. Objections are not evidence.

Lawyers have an obligation to their clients to object when they believe that the

evidence being offered is improper under the rules of evidence. You should not be

influenced by the lawyer’s objection or by my ruling on it. If I sustain an objection to a

question, ignore the question. If I overrule the objection, treat the answer like any other

answer. If so, do not attempt to draw any inference in favor of either side as the result of

any ruling I make. Finally, if I instruct you that some item of evidence is received for a

limited purpose only, you must follow that instruction. Pay particularly close attention to

this sort of limiting instruction, because it may not be available to you in writing later in

the jury room.

3. Testimony that I strike from the record or tell you to disregard

is not evidence and must not be considered.

4. Anything you see or hear about this case outside this courtroom is

not evidence and must be disregarded.

Finally, some of you may have heard the phrases or terms "direct evidence" and

"circumstantial evidence." Direct evidence is direct proof of a fact, such as testimony by

an eye witness. Circumstantial evidence is proof of facts from which you may infer or

conclude that other facts exist. The law makes no distinction between the weight to be

given to either direct or circumstantial evidence. You should give the evidence the

weight that you believe the evidence is entitled to receive.

INSTRUCTION NO. 3

BENCH CONFERENCES AND RECESSES

During the trial it may become necessary for me to talk with the lawyers outside

your hearing, either by having a bench conference while you are present in the

courtroom, or by calling a recess. Please understand that while you are waiting, the

court and counsel are working. The purpose of these conferences is to decide how

certain evidence is to be treated under the rules of evidence or to decide a particular

procedure to be followed in the case. We will, of course, do what we can to minimize

the number and length of these conferences.

INSTRUCTION NO. 4

JURY QUESTIONS

While evidence is being presented, you are not allowed to raise your hands to

ask questions about that evidence. However, if you do have questions about something

you hear during the examination of a witness, you may write your questions down on a

piece of paper. When attorneys have finished examining that witness, you may

submit your written question or questions. I will review each question with the attorneys.

You may not receive an answer to your question because I may decide that the question

is not proper under the rules of evidence. The attorneys may choose to answer your

questions by asking more questions of the witness. But even if the question is proper,

you may not get an immediate answer to your question. For instance, a witness or an

exhibit that you will see later in the trial may answer your question.

INSTRUCTION NO. 5

NOTE-TAKING

If you wish, you may take notes to help you remember what witnesses said.

Notes may be helpful to you because at the end of the trial, you must make your

decision based on what you recall of the evidence. You will not have a written transcript

to consult, and it may not be practical for the court reporter to read back lengthy

testimony. Therefore, you should pay close attention to the testimony as it is given.

If you do take notes, please keep them to yourself until you and the other jurors

go to the jury room to decide this case. However, do not let note-taking distract you to

the point that you miss hearing other testimony from the witness.

During the trial, documents or other physical items may be received into

evidence. At the present, however, you will not be supplied with a list of exhibits which

are received in evidence. Therefore, you may wish to make notes about the exhibits,

especially their description and number, so that you can refer to those exhibits while you

are deliberating.

When we take our recess each day for the lunchtime break and when we take our

recess each night, please take your notes to the jury room and leave your notes there.

The courtroom deputy will take custody of your notes and secure them.

No one will read your notes but you. Your notes will be destroyed after the trial is

over.

INSTRUCTION NO. 6

ALL PERSONS ARE EQUAL BEFORE THE LAW

This case should be considered and decided by you as an action between

persons of equal standing and worth in the community, persons holding the same or

similar position in life. A company or agency is entitled to the same fair trial at your

hands as a private individual. All persons stand equal before the law, and therefore

must be treated as equals in a court of justice.

INSTRUCTION NO. 7

BURDENS OF PROOF

Your verdict depends on whether you find certain facts have been proven. There

are two burdens of proof in this case, depending on the issue to be decided:

“preponderance of the evidence” and “clear and convincing evidence.” The burden of

proving a fact is upon the party whose claim or defense depends on that fact.

The party who has the burden of proving a fact by a preponderance of the

evidence must prove it by the greater weight of the evidence. By a "preponderance of

the evidence," I mean the greater weight of credible evidence. This is not determined by

which party has the greater number of witnesses testifying about the facts and

circumstances or by the number of exhibits. Preponderance of the evidence is

determined by the amount of evidence which on the whole, when fully, fairly and

impartially considered, makes the stronger impression on your mind and is more

convincing as to its truth when weighed against the evidence the other party has

presented.

To prove something by a preponderance of evidence is to prove that it is more

likely true than not. Each party is entitled to the benefit of any evidence tending to

establish a claim, even though the other party introduced that evidence. If the evidence

is equally balanced, a preponderance is not established.

Certain issues will need to be proved by clear and convincing evidence. This is a

higher standard than by a preponderance of the evidence. Clear and convincing

evidence is evidence that shows it is highly probable that the fact is true.

You may have heard the term “proof beyond a reasonable doubt.” That is a

stricter standard that applies in criminal cases. It does not apply in civil cases such as

this one. You should, therefore, put the term out of your minds.

INSTRUCTION NO. 8

WITNESSES

In deciding what the facts are, you may have to decide what testimony you

believe and what testimony you do not believe. You may believe all of what a witness

said, or only part of it, or none of it.

In deciding what testimony to believe, consider the witness’s intelligence, the

opportunity the witness had to have seen or heard the things testified about, the

witness’s memory, any motives that witness may have for testifying a certain way, the

manner of the witness while testifying, whether that witness said something different at

an earlier time, the general reasonableness of the testimony, and the extent to which

the testimony is consistent with any evidence that you believe.

In deciding whether or not to believe a witness, keep in mind that people

sometimes hear or see things differently and sometimes forget things. You need to

consider therefore whether a contradiction is an innocent misrecollection or lapse of

memory or an intentional falsehood, and that may depend on whether it has to do with

an important fact or only a small detail.

The fact that one side may use a greater number of witnesses or present a

greater quantity of evidence should not affect your decision. Rather, determine which

witness or witnesses and which evidence appears accurate and trustworthy. It is the

weight of the evidence that counts -- not the number of witnesses.

If the testimony of a single witness produces in your minds a belief in the likely

truth of any fact and would justify a verdict in accordance with the witness’s testimony,

even though a number of witnesses may have testified to the contrary, and you have

considered

all of the evidence in the case, then you hold greater belief in the accuracy and reliability

of this single witness.

INSTRUCTION NO. 9

EXPERT WITNESS

A witness who has special knowledge, skill, experience, training, or education in a

particular area may testify as an expert in that area. An expert may state opinions in the

witness’s area of expertise and may also state the reasons for those opinions.

You determine what weight, if any, to give to an expert's testimony just as you do

with the testimony of any other witness. You should consider the expert's credibility as a

witness, the witness' qualifications as an expert, including the witness’s education and

experience, the sources of the expert's information, the soundness of the reasons given

for any opinions expressed by the expert, the acceptability of the methods used, and all

the other evidence in the case.

If you decide that the opinion of an expert is not based upon sufficient education

or experience, or if you conclude that the reasons given in support of the opinion are not

sound, or if you conclude that the opinion is outweighed by other evidence including that

of another expert witness, you may disregard the opinion in part or in its entirety.

INSTRUCTION NO. 10

DEPOSITION TESTIMONY

During the trial, certain testimony might be presented to you by way of deposition.

A deposition consists of sworn recorded answers to questions asked of a witness in

advance of the trial by one or more of the attorneys for the parties to the case. The

testimony of a witness who, for some reason, cannot be present to testify from the

witness stand may be presented in writing under oath. Such testimony is entitled to the

same consideration, and is to be judged as to credibility, and weighed, and otherwise

considered by the jury, insofar as possible, in the same way as if the witness had been

present and had testified from the witness stand.

INSTRUCTION NO. 11

CONDUCT OF THE JURY

To insure fairness, jurors are asked to obey the following rules:

First, do not talk among yourselves about this case, or about anyone involved

with this case, until the end of the case when you go to the jury room to decide on your

verdict.

Second, do not talk with anyone else about this case, or about anyone involved

with it, until the trial has ended and you have been discharged as jurors.

Third, during this trial when you are outside this courtroom, do not listen to or let

anyone try to tell you anything about this case. Do not let anyone talk to you about

anyone involved with this case until the trial has ended and I have accepted your verdict.

If anyone tries to talk to you about this case during the trial, please promptly report the

matter to me.

Fourth, during the trial you should not talk with or speak to any of the parties,

lawyers or witnesses involved in this case, which means that you should not even pass

the time of day with any of them. If a person from one side of the lawsuit sees you

talking to a person from the other side, even if it is on a matter unconnected with this trial

or simply to pass the time of day, such contact might arouse an unwarranted suspicion

about your fairness. If a lawyer, party or witness does not speak to you when you pass

in the hall, ride the elevator, or encounter each other elsewhere while this trial is taking

place, do not think he or she is being rude. Those persons are not supposed to talk or

visit with you, either.

Fifth, you must decide this case on the basis of evidence presented in the

courtroom. Therefore, do not read any news stories or articles about the case, or about

anyone involved with this case, or listen to any radio or television reports about the case

or about anyone involved with it. In fact, until the trial is over you should probably avoid

INSTRUCTION NO. 12reading any newspapers or news journals, and avoid listening to any TV or radio

newscasts. There might not be any news reports of this case, but, if there are, you

might find yourself inadvertently reading or listening to something before you realize

what you are doing.

Sixth, do not do any research, on the Internet or otherwise, or make any

investigation on your own concerning this case. Do not use or refer to a dictionary or

any law books concerning any aspect of this case, including any evidence introduced.

Do not visit the scene of any incident that may have been mentioned in this case.

Seventh, do not form an opinion about any fact or issue in the case until you have

received all of the evidence, have heard arguments of counsel, have been instructed as

to the law of the case, and have retired to the jury room. Consequently, do not make up

your mind during the trial about what the verdict should be. Keep an open mind until

after you have gone to the jury room to decide the case and have discussed the

evidence with the other jurors.

Finally, do not be influenced by sympathy or prejudice. Do not indulge in any

speculation, guess, or conjecture. And do not make any inferences which are not

supported by the evidence.

INSTRUCTION NO. 12

OUTLINE OF TRIAL

The trial will proceed in the following manner:

First, the attorney for the plaintiff may make an opening statement. Next, the

attorney for the defendants may make an opening statement. An opening statement is

not evidence or argument. It is an outline of what the party intends to prove, a summary

of what the attorney expects the evidence to be.

The plaintiff's attorney will then present evidence through a direct examination of

a witness. The defendants’ attorney may then cross-examine that witness. After the

cross- examination, the plaintiff’s attorney may ask additional questions on re-direct.

The defendants’ attorney may also ask questions on re-cross. After the plaintiff has

presented all his witnesses, the plaintiff will rest. The defendants will then present their

case. The defendants may present evidence through direct examination of witnesses

and plaintiff’s attorney may cross-examine those witnesses. Re-direct and re-cross

examinations may also take place.

After the evidence is completely presented, the attorneys will make their closing

arguments to summarize and interpret the evidence for you. Just as with opening

statements, these closing arguments are not evidence. I will then instruct you further on

the law. After that you will retire to the jury room to deliberate on your verdict.

INSTRUCTION NO. 13

BACKGROUND OR OVERVIEW

This case involves a United States design patent. Before outlining the positions

of the parties and the legal issues involved in the dispute, let me take a moment to

explain what a design patent is and how one is obtained.

Design patents are granted by the United States Patent and Trademark Office

(sometimes called the "PTO"). A design must be new, original and ornamental in order

to be patentable. A design patent gives the owner the right to exclude others from

making, using, offering to sell, or selling the patented design within the United States

or from importing it into the United States.

To obtain a design patent, an application for a design patent must be filed with

the PTO. The application includes a specification, which must include a preamble

stating name of the applicant, title of the design, and a brief description of the nature and

intended use of the article in which the design is embodied; a cross-reference to related

applications; a description of the figure or figures of the drawing; a feature description

and a single claim. The patent claim is the ornamental design for the article,

specifying its name, as shown or as shown and described. The purpose of the claim is

to particularly point out what the applicant regards as the design and to define the scope

of the design patent owner's exclusive rights. Only one claim is permitted in a design

patent. In the application, the design must be represented by a drawing that contains a

sufficient number of views to constitute a complete disclosure of the appearance of the

design. Also, the title of the design must designate the particular article.

An application for a design patent is reviewed by a trained PTO examiner. The

examiner reviews (or examines) the patent application to determine whether the claim is

patentable and whether the drawing and specification adequately describe the invention

claimed. In examining a patent application, the patent examiner searches records

available to the PTO for what is referred to as "prior art," and he or she also reviews

prior art submitted by the applicant. Generally, prior art is technical information and

knowledge that was known to the public either before the design by the applicant or

more than a year before the filing date of the patent application. The patent examiner

considers, among other things, whether the design is new and not obvious in view of this

prior art.

Following the prior art search and examination of the application, the patent

examiner advises the applicant in writing what the patent examiner has found and

whether the claim is patentable (in other words, "allowed"). This writing from the patent

examiner is called an "office action." More often than not, the initial office action by

the patent examiner rejects the claim. The applicant then responds to the office action

and sometimes changes the claim or submits a new claim. This process may go back

and forth between the patent examiner and the applicant several times until the patent

examiner is satisfied that the application and claims are patentable.

The collection of papers generated by the patent examiner and the applicant

during this time of corresponding back and forth is called the “prosecution history.” You

may also hear the "prosecution history" referred to as the “file history” or the “file

wrapper.”

A patent is infringed when a person or company, without permission from the

patent owner, imports, makes, uses, offers to sell, or sells the patented design, as

defined by the claim, within the United States before the term of the patent expires,

which in the case of a design patent is fourteen years. A patent owner who believes that

the exclusive rights

of the patent are being infringed may bring a lawsuit like this to stop the alleged

infringing acts and to recover damages, which generally will be money paid by the

infringer to the patent owner to compensate for the harm caused by the infringement.

The patent owner must prove infringement of the claim of the design patent and the

need for damages by a preponderance of the evidence.

A person sued for allegedly infringing a patent can deny infringement and can

also defend against the action by proving that the design patent is invalid. A patent,

once granted, is presumed to be valid, but that presumption of validity can be overcome

if an alleged infringer challenges the patent and presents clear and convincing evidence

that it is invalid. I will now briefly describe the parties' basic contentions in more detail.

INSTRUCTION NO. 14

STATEMENT OF THE CASE

The plaintiff in this case is named Gerald Kellogg, whom I shall refer to as

“Kellogg” throughout these instructions. The defendants in this case are Nike, Inc. and

Nike USA, Inc., whom I shall refer to collectively as “Nike” throughout these instructions.

Kellogg is the owner of the design patent, which is identified by United States Patent

Office No.

384,190 and may be referred to as "the ‘190 patent" or “the Kellogg patent.” The design

patent relates to the ornamental design for a vented cap.

Kellogg contends that Nike makes, uses, offers to sell, or sells a product or

products that infringe the ‘190 patent. These products are sometimes referred to as the

“the accused products.”

Nike denies infringing the design patent. Nike does not challenge the validity of

the plaintiff’s patent.

INSTRUCTION NO. 15

UNCONTROVERTED FACTS

The parties have agreed that the following may be accepted as established facts

for the purposes of this case only:

Plaintiff, Gerald Kellogg, is an individual who lives and works in Omaha

Nebraska. Defendants Nike Inc. and Nike USA, Inc. are Oregon corporations with their

headquarters in Beaverton, Oregon. Nike sells its products in the state of Nebraska.

On December 14, 1995, Kellogg filed a design patent application with the United

States Patent and Trademark Office. On September 30, 1997, the PTO issued United

State Patent No. 384,190 entitled “vented cap” (“the ‘190 patent”) to Kellogg. Kellogg is

the owner of all rights to the ‘190 patent.

On March 12, 1997, Kellogg wrote Nike a letter stating, “My name is Gerald

Kellogg II, and I am the inventor of the enclosed vented designed cap that has been fully

patented for commercial use and distribution. I would like to solicit your company’s

interest in utilizing my invention for commercial use. I am therefore requesting that you

evaluate my product and design for potential commercial use. Enclosed is a diagram of

my invention showing how your company can incorporate my design into your product

line(s). The vents in the design can also be used to put collegiate or professional logos

(See Diagram on Page Two). If you are interested in pursuing my design please contact

me at the following address/number.” On May 28, 1997, Nike Vice-President Andy

Mooney wrote to Kellogg, stating, in part, “Thank you for your recent letter regarding

your invention of vented caps. Although we appreciate your idea it is not an opportunity

we are interested in pursuing at this time.”

In 2004, Kellogg became aware that Nike was manufacturing caps with a design

that he believed to be substantially similar to that depicted in the ‘190 patent.

Kellogg brought this lawsuit against Nike alleging patent infringement. Nike

denies that it infringes the ‘190 patent. Jurisdiction and venue are proper with this court.

INSTRUCTION NO. 16

ESTABLISHED FACTS

The court has already ruled on certain legal issues and deemed certain facts as

established. You are not to concern yourselves with the reasons for these rulings. You

are instructed that the patent at issue is valid and enforceable.

INSTRUCTION NO. 17

CLAIM CONSTRUCTION

Before you decide whether the defendants have infringed the plaintiff's design

patent, you will have to understand the design patent claim. The claim of a design

patent is shown in drawings. The claim defines the boundaries of what is covered in the

design patent. It is my job to provide to you a description, in words, of the design that is

claimed in the patent and in the illustrations of the plaintiff’s design patent. This is

known as a claim construction. You must accept the description I give you and use it

when you decide whether the patent has been infringed. I will now describe the design

patent:

An ornamental design for a vented baseball-styled cap as defined by the overall visual impressions as shown in figures1 through 4. The cap has a hemispherical cap portion with a brim extending generally from one side of the cap portion. The hemispherical cap portion has four oblong-shaped vents that have sharply narrowing v-shaped ends. The vents are symmetrically shaped and extend along the seams of the panels of the cap in a generally “X”-shaped fashion with the center of the “X” being located at the top center of the cap.

A copy of the design patent is attached to this instruction.

INSTRUCTION NO. 18

DESIGN PATENT INFRINGEMENT - ESSENTIAL ELEMENT

To determine infringement, you must compare the accused products with the

illustrated design in the plaintiff’s design patent.

In order to prevail on his claim of design patent infringement, the plaintiff must

prove, by a preponderance of evidence, the following essential element:

1. That in the eye of the ordinary observer familiar with the prior art, giving

such attention as a purchaser usually gives, the two designs are

substantially the same and the resemblance is such as to deceive such an

observer and sufficient to him to purchase the alleged infringing product

supposing it to be the patented design.

If you find, by a preponderance of the evidence, that the plaintiff has proved this

essential element, your verdict will be for the plaintiff on his design patent infringement

claim. If you find that the plaintiff has not proved, by a preponderance of the evidence,

this essential element, then your verdict will be for the defendants.

INSTRUCTION NO. 19

WILLFUL INFRINGEMENT

If you find by a preponderance of the evidence that the defendants infringed the

plaintiff's patent, then you must further determine if this infringement was willful. To

prove willful infringement, the plaintiff must prove, by clear and convincing evidence,

that the defendants acted in reckless disregard of the plaintiff’s patent. This is a higher

standard than a preponderance of the evidence, but it does not require proof beyond a

reasonable doubt. Clear and convincing evidence is evidence that shows it is highly

probable that the infringement was willful.

To demonstrate reckless disregard, the plaintiff must show:

1. That the defendants acted despite an objectively high likelihood that their

actions infringed a valid and enforceable patent.

2. This objectively high likelihood of infringement was either known or so

obvious that it should have been known to the defendants.

In making the determination as to willfulness, you must consider the totality of the

circumstances. The totality of the circumstances comprises a number of factors, which

include, but are not limited to whether the defendants intentionally copied the claimed

invention or a product covered by the plaintiff's patent, whether the defendants relied on

competent legal advice, and whether the defendants presented a substantial defense to

infringement, including the defense that the patent is invalid or unenforceable.

INSTRUCTION NO. 20

DAMAGES - GENERALLY

If you find that the defendants’ product infringes the ‘190 patent, then you must

determine the amount of damages to be awarded the plaintiff for the infringement. On

the other hand, if you find that the accused product does not infringe the ‘190 patent,

then you need not address damages in your deliberations. The fact that I am instructing

you as to the proper measure of damages should not be construed as intimating any

view of the court as to which party is entitled to prevail in this case.

If you award damages, the amount of those damages must be adequate to

compensate the plaintiff for the infringement. The damages you award are meant to

compensate the plaintiff and not to punish the defendants. The patent owner should

receive full compensation for any damages he has suffered as a result of the

infringement; but, in no event may the damage award be less than a reasonable royalty.

You may not add anything to the amount of damages to punish the accused infringer

or to set an example.

The plaintiff has the burden to prove the amount of his damages by a

preponderance of the evidence. The plaintiff is not entitled to damages that are remote

or speculative. Although the plaintiff is not required to prove its damages with

mathematical precision, damages must be established with reasonable certainty. To the

extent the defendants contend that the amount of damages should be reduced or offset,

the defendants must prove the amount of such reduction or offset by a preponderance

of the evidence. When the amount of damages cannot be ascertained with precision,

any doubts regarding the amount must be resolved against the defendants. Any

adverse

consequences must rest on the defendants when the inability to ascertain damages is dueto the infringer's own failure to keep accurate records.

INSTRUCTION NO. 21

DAMAGES - REASONABLE ROYALTY - DEFINITION

A royalty is a payment made to a patent holder in exchange for the right to make,

use, or sell the claimed invention. A reasonable royalty is the amount of royalty payment

that a patent holder and the infringer would have agreed to in a hypothetical negotiation

taking place at the time when the infringing sales first began. In considering this

hypothetical negotiation, you should focus on what the expectations of the patent holder

and the infringer would have been had they entered into an agreement at that time, and

had they acted reasonably in their negotiations. You must also assume that both parties

believed the patent was valid and that the accused product or products infringed the

patent. In addition, you must assume that patent holder and infringer were willing to

enter into an agreement. Your role is to determine what that agreement would have

been. The measure of damages is what royalty would have resulted from the

hypothetical negotiation, and not simply what royalty either party would have preferred.

Although evidence of the actual profits that the defendants made may aid you in

determining the anticipated profits at the time of the hypothetical negotiation, you may

not limit or increase the royalty based on the defendants’ actual profits.

In determining the reasonable royalty, you should consider all the facts known

and available to the parties at the time the infringement began. Some of the factors that

you may consider in making your determination are:

1. Whether the patent holder had an established royalty for the invention;

whether, in the absence of an established royalty, there is evidence that tends to prove

an established royalty; whether, in the absence of such a licensing history, there are

any

royalty arrangements that were generally used and recognized in the particular industry

at that time;

2. The nature of the commercial relationship between the patent holder and the

licensee such as whether they were competitors or whether their relationship was that of

an inventor and a promoter;

3. The established profitability of the patented product, its commercial success

and its popularity at the time;

4. Whether the patent holder had an established policy of granting licenses or

retaining the patented invention as its exclusive right, or whether the patent holder had a

policy of granting licenses under special conditions designed to preserve his monopoly;

5. The size of the anticipated market for the invention at the time the

infringement began;

6. The duration of the patent and of the license, as well as the terms and scope

of the license, such as whether it is exclusive or nonexclusive or subject to territorial

restrictions;

7. The rates paid by the licensee for the use of other patents comparable to the

plaintiff's patent;

8. Whether the licensee's sales of the patented invention promote sales of its

other products and whether the invention generates sales to the inventor of his

nonpatented items;

9. The extent to which the infringer used the invention and any evidence

probative of the value of such use;

10. The portion of the profits in the particular business that is customarily

attributable to the use of the invention or analogous inventions;

11. The portion of the profits that should be credited to the invention as

distinguished from nonpatented elements, the manufacturing process, business risks or

significant features or improvements added by the infringer;

12. The opinion and testimony of qualified experts and of the patent holder; and

13. Any other factors which in your mind would have increased or decreased the

royalty the infringer would have been willing to pay and the patent holder would have

been willing to accept, acting as normally prudent business people.

No one factor is dispositive and you can and should consider the evidence that

has been presented to you in this case on each of these factors. The final factor

establishes the framework which you should use in determining a reasonable royalty,

i.e., the payment that would have resulted from a negotiation between a patent holder

and the infringer taking place at the time when the infringing sales first began.

INSTRUCTION NO. 22

DAMAGES - PROFITS

In the case of the infringement of a design patent, you may award the plaintiff

additional damages adequate to compensate for the infringement. In addition to

reasonable royalty damages, the law provides that an infringer of a design patent who,

without license of the owner, (1) applies the patented design, or any colorable imitation

thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for

sale any article of manufacture to which such design or colorable imitation has been

applied, is liable to the patent holder to the extent of the infringer’s total profit from the

infringing products.

INSTRUCTION NO. 23

PROFITS - MEASURE OF DAMAGES

The infringer's “total profit” means the entire profit on the sale of the article to

which the patented design is applied, and not just the portion of profit attributable to the

design or ornamental aspects of the patent. “Total profits” do not include profits

attributable to other products that may be sold in association with an infringing article

embodying the patented design. A design patent owner can recover the profits not only

of the manufacturer or producer of an infringing article, but also of other sellers in the

chain of distribution.

The plaintiff is entitled to any profits earned by the defendants that are

attributable to the infringement. Profit is determined by deducting all expenses from

gross revenue. Gross revenue is all of defendants’ receipts from using the design in the

sale of the infringing products. The plaintiff has the burden of proving a defendants’

gross revenue by a preponderance of the evidence.

Expenses are all operating, overhead, and production costs incurred in producing

the gross revenue. The defendants have the burden of proving the expenses and the

portion of the profit attributable to factors other than use of the infringed design by a

preponderance of the evidence.

Unless you find that a portion of the profit from the sale of the infringing product is

attributable to factors other than use of the design, you shall find that the total profit is

attributable to the infringement.

INSTRUCTION NO. 24

GLOSSARY OF TERMS

To aid you during the trial and in your deliberations, a glossary of some common

terms has been prepared. The definitions in the glossary must be followed and must

control your deliberations.

Applicants: The named inventors who are applying for the patent.

Application: The initial papers filed by the applicant in the United States Patent andTrademark Office (also called the Patent Office or PTO).

Claims: The claim defines the scope of the patent owner's exclusive rights during the life of the patent.

Design: In a design patent application, the subject matter which is claimed is the design embodied in or applied to an article of manufacture (or portion thereof) and not the article itself.

File wrapper – See "prosecution history" below.

License – Permission to use the patented invention(s), which may be granted by a patent owner (or a prior licensee) in exchange for a fee called a "royalty" or other compensation.

Office action – Communication from the patent examiner regarding the specification (see definition below) and/or the claims in the patent application.

Ordinary skill in the art – The level of experience, education, and/or training generally possessed by those individuals who work in the area of the invention at the time of the invention.

Patent Examiners – Personnel employed by the PTO in a specific technical area who review (examine) the patent application to determine (1) whether the claims of a patent application are patentable over the prior art considered by the examiner, and (2) whether the specification/application describes the invention with the required specificity.

Prior art – Knowledge that is available to the public either prior to the invention by the applicant or more than one year prior to the filing date of the application.

Prosecution history – The written record of proceedings between the applicant and the PTO, including the original patent application and later communications between the PTO and applicant. The prosecution history may also be referred to as the "file history" or "file wrapper" of the patent during the course of this trial.

References – Any item of prior art used to determine patentability.

Specification – The information that appears in the patent and concludes with the claim. In a design patent, the specification includes a preamble, stating the name of the applicant, title of the design, and a brief description of the nature and intended use of the article in which the design is embodied; cross-reference to related applications (unless included in the application data sheet); a statement regarding federally sponsored research or development; a description of the figure or figures of the drawing; feature description; and a single claim.

INSTRUCTION NO. 25

INTRODUCTION

Now that you have heard the evidence and the attorneys’ arguments, it is my duty

to inform you of the legal principles and considerations you are to use in arriving at a

proper verdict.

It is your duty to follow the law given you in this charge and to apply these rules of

law to the facts as you find them from the evidence. Do not single out one instruction

alone as stating the law, but consider the instructions as a whole.

Do not be concerned with the wisdom of any rule of law that the court states.

Regardless of any opinion you may have about what the law ought to be, it would violate

your sworn duty to base a verdict upon a view of the law different from the one given in

these instructions, just as it would violate your sworn duty as judges of the facts to base

a verdict upon anything but the evidence in the case and the reasonable inferences

arising from such evidence.

INSTRUCTION NO. 26

EXPLANATORY

Members of the jury, most of the instructions I gave at the beginning of the trial

and during the trial remain in effect. Some instructions have been deleted from your

preliminary set and those instructions should not be considered. I will now give you

some additional instructions.

Other than the instructions that have been deleted from your preliminary set, you

must continue to follow the instructions that I gave you earlier, as well as those I give

you now. You must not single out some instructions and ignore others, because a ll are

important. This is true even though some of those I gave you at the beginning of trial

are not repeated here.

The instructions I am about to give you now as well as those I gave you earlier,

other than the deleted instructions, are in writing and will be available to you in the jury

room.

You will also receive a “Special Interrogatories and Verdict Form” to use in

conjunction with these instructions.

INSTRUCTION NO. 27

AGENCY

A corporation acts only through its agents or employees and any agent or

employee of a corporation may bind the corporation by acts and statements made while

acting within the scope of the authority delegated to the agent by the corporation, or

within the scope of his or her duties as an employee of the corporation.

INSTRUCTION NO. 28

JUDGE’S OPINION

In the trial of this case and in these instructions, I have in no way attempted to

express my opinion about who should prevail upon the issues submitted to you. You

must not construe any statement, action, or ruling on my part during the trial as an

indication of my opinion about the proper outcome of your verdict. During the course of

a trial, I might have occasionally asked questions of a witness to bring out facts not fully

covered in the testimony. Do not assume that I hold any opinion on the matters to which

the questions related.

INSTRUCTION NO. 29

EVIDENCE AND OBJECTIONS

During the trial I have ruled on objections to certain evidence. You must not

concern yourselves with the reason for such rulings since they are controlled by rules of

law.

You must not speculate or form or act upon any opinion about how a witness

might have testified in answer to questions which I rejected during the trial, or upon any

subject matter to which I forbade inquiry.

In coming to any conclusion in this case, you must be governed by the evidence

before you and by the evidence alone. You may not indulge in speculation, conjecture or

inference not supported by the evidence.

The evidence from which you are to find the facts consists of the following: (1)

the testimony of the witnesses; (2) documents and other things received as exhibits; and

(3) any facts that have been stipulated -- that is, formally agreed to by the parties.

The following things are not evidence: (1) statements, comments, questions and

arguments by lawyers for the parties; (2) questions by jurors; (3) objections to questions;

(4) any testimony I told you to disregard; and (5) anything you may have seen or heard

about this case outside the courtroom.

INSTRUCTION NO. 30

REASONABLE INFERENCES

While you should consider only the evidence in the case, you are permitted to

draw such reasonable inferences from the testimony and exhibits as you feel are

justified in the light of common experience. In other words, you may make deductions

and reach conclusions which reason and common sense lead you to draw from the facts

which have been established by the testimony and evidence in the case.

INSTRUCTION NO. 31

NOTE-TAKING

Throughout the course of the trial you have been allowed to take notes of the

testimony. You may take your notes into the jury room for use in your deliberations.

Remember, however, your notes are not evidence. The courtroom deputy is charged

with the task of keeping the official record of all exhibits received into evidence during

the trial. At the close of trial, she will deliver all exhibits you are to consider in your

deliberations.

Your notes should be used only as aids to your memory. You should not give

your notes precedence over your independent recollection of the evidence. You should

rely on your own independent recollection of the proceedings, and you should not be

influenced by the notes of other jurors. Your notes are not entitled to any greater weight

than each juror’s recollection or impression of the testimony given during this trial. After

you have reached a verdict, your notes will be destroyed.

INSTRUCTION NO. 32

DELIBERATIONS AND VERDICT

In conducting your deliberations and returning your verdict, there are certain rules

you must follow.

First, when you retire to the jury room, first select one of your number to be

foreperson to preside over your discussions and to speak for you here in court.

Second, it is your duty, as jurors, to discuss this case with one another in the jury

room. You should try to reach agreement because a verdict—whether liable or not liable

—must be unanimous. Each of you must make your own conscientious decision, but

only after you have considered all the evidence, discussed it fully with your fellow jurors,

and listened to the views of your fellow jurors. Do not be afraid to change your opinions

if the discussion persuades you that you should. But do not come to a decision simply

because other jurors think it is right, or simply to reach a verdict.

Third, you will take with you when you retire for your deliberations an official

verdict form on which you will indicate a verdict. Please follow the directions carefully

when filling it out. A verdict must be agreed to by all of you, that is, it must be

unanimous. Your verdict must be signed by the foreperson.

Fourth, if you need to communicate with me during your deliberations, you may

send a note to me through the courtroom deputy, signed by one or more jurors. I will

respond as soon as possible either in writing or orally in open court. Your answer may

not come immediately because I may need to assemble the attorneys and confer with

them before I respond. Remember that you should not tell anyone—including me—how

your votes stand numerically.

Finally, when you arrive at your verdict and the form of verdict has been

completed, you will have concluded your task. Notify my chambers and I will receive

your verdict promptly. If you do not agree on a verdict by 5:00 this evening, you may

separate and return for further deliberations tomorrow. You may separate for meals

whenever you choose. If you do separate, you are not allowed to discuss this case with

anyone, even another juror.