Columbia v. Seirus - Final Jury Instructions

Case 3:17-cv-01781-HZ Document 378 Filed 09/29/17 PageID.
16560 Page 1 of 48
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF CALIFORNIA
COLUMBIA SPORTSWEAR NORTH No. 3:17-cv-01781-HZ
AMERICA, INC., an Oregon Corporation, JURY INSTRUCTIONS
Plaintiff,
v.
SEIRUS INNOVATIVE ACCESSORIES,
INC., a Utah corporation,
Defendant.
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1- JURY INSTRUCTIONS
Case 3:17-cv-01781-HZ Document 378 Filed 09/29/17 PageID.16561 Page 2 of 48
Table of Contents
No. 1. Final Jury Instructions Instructions on Your Duties ................................................ 4
No. 2. What is Evidence ........................................................................................................... 5
No. 3. What is Not Evidence .................................................................................................... 6
No. 4. Direct and Circumstantial Evidence .............................................................................. 7
No. 5. Depositions .................................................................................................................... 8
No. 6. Credibility of Witnesses ................................................................................................ 9
No. 7. Expert Opinion ............................................................................................................ 10
No. 8. Summary of Contentions ............................................................................................. 12
No. 9. Measure of Damages ................................................................................................... 14
No. 10. Measure of Damages Article of Manufacture ...................................................... 15
No. 11. Measure of Damages Defendants Total Profit .................................................... 17
No. 12. Design Patent Damages Reasonable Royalty Entitlement .............................. 18
No. 13. Reasonable Royalty Definition ............................................................................ 19
No. 14. Design Patent Willful Infringement ..................................................................... 24
No. 15. Interpretation of Claims............................................................................................. 26
No. 16. Utility Patents Infringement Generally ................................................................ 28
No. 17. Direct Infringement ................................................................................................... 29
No. 18. Literal Infringement .................................................................................................. 31
No. 19. Invalidity Burden of Proof ................................................................................... 33
No. 20. Utility Patent Anticipation.................................................................................... 34
No. 21. Utility Patent Obviousness ................................................................................... 36
No. 22. Utility Patent Damages Burden of Proof .............................................................. 41
No. 23. Utility Patent Damages Reasonable Royalty Definition ................................. 42
No. 24. Utility Patent Willful Infringement ...................................................................... 44
No. 25. Deliberations ............................................................................................................. 46
GENERAL INSTRUCTIONS
No. 1. Final Jury Instructions Instructions on Your Duties
Members of the Jury: Now that you have heard all of the evidence and the arguments of
the attorneys, it is my duty to instruct you as to the law of the case.
It is your duty to find the facts from all the evidence in the case. You must follow the law
as I give it to you whether you agree with it or not. You must not be influenced by your own
likes or dislikes, opinions, prejudices, sympathy or public opinion. They have no place in your
deliberations, for all parties are equal before the law. Likewise, do not decide this case on guess
work, conjecture, or speculation.
This means that you must decide the case solely on the evidence before you and
according to the law. You will recall that you took an oath promising to do so at the beginning of
the case.
In following my instructions, you must follow all of them and not single out some and
ignore others; they are all equally important. And you must not read into these instructions or
into anything I may have said or done during the trial, any suggestion as to what verdict you
should returnthat is a matter entirely for you to decide.
You may use your notes taken during the trial to assist your memory. Notes, however,
should not be a substitute for your memory and you should not be overly influenced by them.
Keep in mind that each party is entitled to the considered decision of each juror. Therefore you
should not give undue weight to another jurors notes if those notes conflict with your
recollection of the evidence.
No. 2. What is Evidence
The evidence you are to consider in deciding what the facts are consists of:
1. The sworn testimony of witnesses, both on direct and cross-examination, including

testimony in depositions, regardless of who called the witness;
2. The exhibits which have been received into evidence; and
3. Any facts to which all the lawyers have agreed by stipulation.
No. 3. What is Not Evidence
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
facts are. I will list them for you:
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
other times is intended to help you interpret the evidence, but it is not evidence. If the
facts as you remember them differ from the way the lawyers have stated them, your
memory of them controls.
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.
You should not be influenced by the objection or by the court's ruling on it.
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
testimony or exhibits are received only for a limited purpose; when I have given a
limiting instruction, you must follow it.
4. Anything you may have seen or heard when the court was not in session is not
evidence. You are to decide the case solely on the evidence received at trial.
No. 4. Direct and Circumstantial Evidence
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
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
either direct or circumstantial evidence. It is for you to decide how much weight to give to any
evidence.
No. 5. Depositions
A deposition is the sworn 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.
No. 6. Credibility of Witnesses
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 says, or part of it, or none
of it. Proof of a fact does not necessarily depend on the number of witnesses who testify about it.
In considering the testimony of any witness, you may take into account:
1. The opportunity and ability of the witness to see or hear or know the things testified
to;
2. The witness's memory;
3. The witness's manner while testifying;
4. The witness's interest in the outcome of this case or any bias or prejudice;
5. Whether other evidence contradicted the witness's testimony;
6. The reasonableness of the witness's testimony in light of all the evidence; and
7. Any other factors that bear on believability.
The weight of the evidence as to a fact does not necessarily depend on the number of
witnesses who testify about it.
No. 7. Expert Opinion
Some witnesses, because of education or experience, are permitted to state opinions and
the reasons for their opinions.
Opinion testimony should be judged just like any other 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 opinions, and all the other evidence in the case.


No. 8. Summary of Contentions
I will first give you a summary of each sides contentions in this case. I will then tell you
what each side must prove to win on each of its contentions. As I previously told you, Columbia
seeks money damages from Seirus for allegedly infringing U.S. Patent No. 8,453, 270 (Utility
Patent). by importing, selling, and offering for sale products that Columbia argues are covered
by claims 2 and 23 of the Utility Patent These are the asserted claims of the Utility Patent. The
products that are alleged to infringe contain the HeatWave material.
Seirus denies that it has infringed the asserted claims of the Utility Patent and argues that,
in addition, the claims are invalid.
Your job is to decide whether the asserted claims of the Utility Patent have been
infringed and whether any of the asserted claims of the Utility Patent are invalid.
You will then need to decide any money damages to be awarded to Columbia to
compensate it for the infringement of U.S. Patent No. D657,093 (Design Patent), as well as for
any claim of the Utility Patent that you decide have been infringed and are not invalid. In
addition, you will also need to make a finding as to whether infringement of the Design Patent or
the Utility Patent 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 later.

DESIGN PATENT

No. 9. Measure of Damages
The Court has previously found that Seirus infringes the Design Patent by importing,
offering for sale, and selling products that incorporate its HeatWave material. I will now instruct
you about the measure of damages for Seiruss infringement of Columbia Design Patent.
You must determine the amount of money damages to award to Columbia to adequately
compensate it for Seiruss infringement. In relation to design patents, the patent law provides by
statute that Columbia is entitled to either the total profits made by Seirus from sales of any
articles of manufacture to which the patented design is applied or a reasonable royalty as the
measure of recovery with respect to the sale of each unit of an infringing product.

No. 10. Measure of Damages Article of Manufacture
Determining Seiruss total profit attributable to the infringement of the Design Patent
involves two steps. First, identify the article of manufacture to which the infringed design has
been applied. The article of manufacture may be the product as a whole or a component of that
product. Second, calculate the infringers total profit made on that article of manufacture.
Columbia bears the initial burden of producing evidence identifying the article of
manufacture for which it seeks profits. Columbia may meet that burden by showing that Seirus
applied the patented design to a product that was sold and further proving Seiruss total profit
from the sale. Seirus bears the burden of proving that the article of manufacture is something less
than the entire product. If the product as sold to consumers is a single-component product then
that product is the relevant article of manufacture. If the product as sold to consumer is a multi-
component product then you must use the factors listed below to determine whether the article
of manufacture is the whole product or a component of that product.
1. The scope of the design in the Design Patent, including the drawings and written
description. This factor provides insight into which portions of the underlying
product the design is intended to cover, and how the design relates to the product
as a whole.
2. The relative prominence of the design within the product as a whole. If a design is
a minor component of a product, for example a latch on a refrigerator, or if the
product has many other components unaffected by the design, that fact suggests
that the article of manufacture should be the component bearing the design. On
the other hand, if the design is a significant attribute of the entire product,
affecting the appearance of the product as a whole, that fact might suggest that the
article of manufacture should be the entire product.
3. Whether the design is conceptually distinct from the product as a whole. If a
product contains other components that are conceptually distinct, it may be
appropriate to conclude that the component is the article of manufacture. For
example, a book binding and the literary work contained within it are
conceptually distinct and different articles of manufacture.
4. The physical relationship between the patented design and the rest of the product.
If the component bearing the design can be physically separated from the product
as a whole by the user or seller, that fact suggests that the article of manufacture
may be the component.
In weighing these factors, your objective should be to identify the article of manufacture
that most fairly can be said to embody Seiruss appropriation of Columbias innovation.

No. 11. Measure of Damages Defendants Total Profit
A stated above, the second step is to calculate the total profit Seirus made from sales of
any articles of manufacture bearing the patented design.
The term total profit means the entire profit on the sale of the article of manufacture to
which the patented design is applied. Profit is determined by deducting certain expenses from
gross revenue. Gross revenue is all of Seiruss receipts from the sales of any articles of
manufacture using the Design Patents design. Columbia bears the burden of proving Seiruss
gross revenue from the article of manufacture by a preponderance of the evidence.
Deductible expenses include costs incurred in producing the article of manufacture, such
as the cost of the goods, packing costs, and shipping costs. Certain fixed costs that do not vary
with increases in the production or sale, such as taxes, insurance, rent, and administrative
overhead, should not be subtracted from the gross revenue. 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 products and the expense. Seirus bears the
burden of proving deductible expenses by a preponderance of the evidence.
If you determine that the article of manufacture is the entire product as sold to the
consumer, then you must determine the amount of Seiruss total profit that is attributable to the
entire product. If you determine that the article of manufacture is something less than what
Columbia claims it is, in other words a component of the entire product, then you must determine
the amount of Seiruss total profit that is attributable to that component.

No. 12. Design Patent Damages Reasonable Royalty Entitlement
Columbia seeks a reasonable royalty for the infringement of its Design Patent. Total
profit and reasonable royalty are alternative remedies available to Columbia. They are not both
available in the same case. However, you must determine the amounts for both Seiruss total
profit and a reasonable royalty. The Court will determine which is available in this case after you
provide the Court with the amounts.

No. 13. 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. This right is called a license. A reasonable royalty is the payment
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
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
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
royalty would have resulted from the hypothetical negotiation and not simply what either party
would have preferred.
A royalty can be calculated in several different ways and it is for you to determine which
way is the most appropriate based on the evidence you have heard. 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 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 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 the hypothetical negotiation is 1%, then the
royalty would be $2, or the rate of 0.01 times the base revenue of $200. By contrast, if you find

the rate to be 5%, the royalty would be $10, or the 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.
If the claimed invention covers only part of the product that the infringer sells, then the
base would normally be only that feature or component. For example, if you find that for a $100
car, the patented feature is the tire which sells for $5, the base revenue would be $5. However, if
Columbia proves that the claimed invention creates the basis for customer demand or
substantially creates the value of the component parts, the base revenue would be the value of the
whole product.
In determining a reasonable royalty, you may consider the following factors:
(1) The royalties received by the patentee for the licensing of the patent-in-suit,
proving or tending to prove an established royalty.
(2) The rates paid by the licensee for the use of other patents comparable to the
patent-in-suit.
(3) The nature and scope of the license, as exclusive or nonexclusive, or as restricted
or nonrestricted in terms of territory or with respect to whom the manufactured
product may be sold.
(4) The licensors established policy and marketing program to maintain his or her
patent monopoly by not licensing others to use the invention or by granting
licenses under special conditions designed to preserve that monopoly.

(5) The commercial relationship between the licensor and licensee, such as whether
they are competitors in the same territory in the same line of business, or whether
they are inventor and promoter.
(6) The effect of selling the patented specialty in promoting sales of other products of
the licensee, the existing value of the invention to the licensor as a generator of
sales of his nonpatented items, and the extent of such derivative or convoyed
sales.
(7) The duration of the patent and the term of the license.
(8) The established profitability of the product made under the patents, its
commercial success, and its current popularity.
(9) The utility and advantages of the patented property over the old modes or devices,
if any, that had been used for working out similar results.
(10) The nature of the patented invention, the character of the commercial embodiment
of it as owned and produced by the licensor, and the benefits to those who have
used the invention.
(11) The extent to which the infringer has made use of the invention and any evidence
probative of the value of that use.

(12) The portion of the profit or of the selling price that may be customary in the
particular business or in comparable business to allow for the use of the invention
or analogous inventions.
(13) The portion of the realizable 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.
(14) The opinion and testimony of qualified experts.
(15) The amount that a licensor (such as the patentee) and a licensee (such as the
infringer) would have agreed upon (at the time the infringement began) if both
had been reasonably and voluntarily trying to reach an agreement; that is, the
amount which a prudent licenseewho desired, as a business proposition, to
obtain a license to manufacture and sell a particular article embodying the
patented inventionwould have been willing to pay as a royalty and yet be able
to make a reasonable profit and which amount would have been acceptable by a
prudent patentee who was willing to grant a license.
It is up to you, based on the evidence, to decide what type of royalty is appropriate in this
case.

DESIGN PATENT
Willfulness

No. 14. Design Patent Willful Infringement
In this case, Columbia argues that Seirus willfully infringed the Design Patent. The Court
has already determined that Seirus infringed the Design Patent. You must determine whether
Columbia has proven willful infringement by a preponderance of the evidence. Willful
infringement means that Seiruss infringement was done intentionally or recklessly. When
making this determination, you should keep in mind Seiruss knowledge and subjective intent at
the time of the challenged conduct. Acting intentionally means that the actor desires to cause the
consequences of its act or believes them to be substantially certain to result from it. Acting
recklessly means knowing or having reason to know of the facts that would lead a reasonable
actor to realize that its actions are unreasonably risky.
In deciding whether Seirus willfully infringed the Design Patent, you should consider all
of the facts surrounding the alleged infringement, including, but not limited to, the following
factors.
(1) Whether Seirus acted in a manner consistent with the standards of commerce for its
industry.
(2) Whether Seirus intentionally copied a product of Columbia covered by the patent.
(3) Whether Seirus reasonably believed that the Design Patent was invalid or that it did not
infringe the patent.
(4) Whether Seirus tried to cover up its infringement.

UTILITY PATENT

No. 15. Interpretation of Claims
Before you decide whether Seirus has infringed claims 2 or 23 of the Utility Patent or
whether the claims are invalid, you will need to understand the patent claims. As I mentioned,
the patent claims are numbered sentences at the end of the patent that describes the boundaries of
the patents protection. It is my job as judge to explain to you the meaning of any language in the
claims that needs interpretation.
I have interpreted the meaning of some of the language in the patent claims involved in
this case. You must accept those interpretations as correct. My interpretation of the language
should not be taken as an indication that I have a view regarding the issues of infringement or
invalidity. The decisions regarding infringement and invalidity are yours to make.
For claim language where I have not provided you with any meaning, you should apply
the claims plain and ordinary meaning.
Claim Term Meaning

2 & 23 surface area ratio of the amount of surface area of a side of the base material
heat-directing elements that is covered by the heat directing elements divided by the
to base material total surface area of the side of the base material onto which
the elements are attached.
2 & 23 heat heat seen as a form of energy that may be transferred by
conduction, convection or radiation.
2 & 23 adapted to or suited by design to or suited by design for.
adapted for

2 & 23 adapted for use with suited by design for use with body gear.
body gear
2& 23 adapted to allow, suited by design to allow, impede, and/or restrict passage.
impede, and/or restrict
passage
2& 23 direct heat alter the direction of heat;
2& 23 heat-directing elements that alter the direction of heat;
elements
2& 23 reflect heat alter the direction of heat by reflection;
2& 23 heat-reflecting elements that alter the direction of heat by reflection.
elements
2& 23 discontinuous array an arrangement of multiple, [discrete heat-directing
elements], whereby some of the base fabric is exposed
between adjacent elements.

No. 16. Utility Patents Infringement Generally
I will now instruct you on the rules you must follow in deciding whether Columbia has
proven that Seirus has infringed one or more of the asserted claims of the Utility Patent. To
prove infringement of any claim, Columbia must persuade you that it is more likely than not that
Seirus has infringed that claim.

No. 17. Direct Infringement
A patents claims define what is covered by the patent. A product directly infringes a
patent if it is covered by at least one claim of the patent.
Deciding whether a claim has been directly infringed is a two-step process. The first step
is to decide the meaning of the patent claim. I have already made this decision and I have already
instructed you as to the meaning of the asserted patent claims. The second step is to decide
whether Seirus has sold, offered for sale or imported within the United States a products covered
by a claim of the Utility Patent. If it has, it infringes. You, the jury, make this decision.
With one exception, you must consider each of the asserted claims of the patent
individually, and decide whether Seiruss product infringes that claim. The one exception to
considering claims individually concerns dependent claims. A dependent claim includes all of
the requirements of a particular independent claim, plus additional requirements of its own.
Claim 2 from the Utility Patent is a dependent claim. Claim 2 includes all of the requirements
from claim 1. As a result, if you find that an independent claim is not infringed, you must also
find that its dependent claims are not infringed. On the other hand, if you find that an
independent claim has been infringed, you must still separately decide whether the additional
requirements of its dependent claims have also been infringed.
You have heard evidence about both Columbias commercial product and Seiruss
accused products. However, in deciding the issue of infringement you may not compare Seiruss
accused products to Columbias commercial product. Rather, you must compare the Seiruss

accused products to the claims of the claims of the Utility Patent when making your decision
regarding infringement
Whether or not Seirus knew its products infringed or even knew of the patent does not
matter in determining direct infringement.

No. 18. Literal Infringement
To decide whether Seiruss products literally infringe a claim of the Utility Patent, you
must compare that product with the patent claim and determine whether every requirement of the
claim is included in that product. If so, Seiruss product literally infringes that claim. If, however,
Seiruss product does not have every requirement in the patent claim, Seiruss product does not
literally infringe that claim. You must decide literal infringement for each asserted claim
separately.
If the patent claim uses the term comprising, that patent claim is to be understood as an
open claim. An open claim is infringed as long as every requirement in the claim is present in
Seiruss product. The fact that Seiruss product also includes other parts will not avoid
infringement as long as it has every requirement in the patent claim.

UTILITY PATENT
Validity

No. 19. Invalidity Burden of Proof
I will now instruct you on the rules you must follow in deciding whether Seirus has
proven that claims 2 or 23 of the Utility Patent are invalid. Before discussing the specific rules, I
want to remind you about the standard of proof that applies to this defense. To prove invalidity
of any patent claim, Seirus must persuade you that the claim is invalid by clear and convincing
evidence, in other words, that it is highly probable that the claim is invalid.

No. 20. Utility Patent Anticipation
A patent claim is invalid if the claimed invention is not new. If a patent claim is not new
we say it is anticipated by a prior art reference. In patent law, prior art references refer to
previous devices, methods, publications or patents. In order for a patent claim to be anticipated
by the prior art, each and every limitation of the claim must be present within a single item of
prior art. You may not find that the prior art anticipates a patent claim by combining two or more
items of prior art.
A prior art reference will not anticipate unless it contains a description of the invention
covered by the patent claims that is sufficiently detailed to teach a person of ordinary skill in the
art how to make and use the invention without undue experimentation. That means that a person
skilled in the field of the claimed invention reading the printed publication or patent would be
able to make and use the invention using only an amount of experimentation that is appropriate
for the complexity of the field of the invention and for the level of expertise and knowledge of
persons skilled in that field.
In deciding whether or not a single item of prior art anticipates a patent claim, you should
consider 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 always present in the prior
art or always the result from the practice of the prior art, and if a person skilled in the field of the
invention would understand that to be the case.

In this case, Seirus contends that claims 2 and 23 of the Utility Patent are invalid because
they are anticipated by Fottinger. If you find that Seirus has proved by clear and convincing
evidence that claims 2 and 23 are anticipated, then you must find that the claims are invalid.

No. 21. Utility Patent Obviousness
Not all innovations are patentable. A patent claim is invalid if the claimed invention
would have been obvious to a person of ordinary skill in the field at the time the claimed
invention was made. This means that even if all of the requirements of the claim cannot be found
in a single prior art reference that would anticipate the claim or constitute a statutory bar to that
claim, a person of ordinary skill in the relevant field who knew about all this prior art would
have come up with the claimed invention. You are to consider only the following prior art
references when determining obviousness: Fottinger in view of Halley and/or Blauer and/or
Worley and/or Vaughn.
The ultimate conclusion of whether a claim is obvious should be based upon your
determination of several factual decisions.
First, you must decide the level of ordinary skill in the field that someone would have had
at the time the claimed invention was made. In deciding the level of ordinary skill, you should
consider all the evidence introduced at trial, including:
(1) the levels of education and experience of persons working in the field;
(2) the types of problems encountered in the field; and
(3) the sophistication of the technology.

Second, you must decide the scope and content of the prior art. The parties disagree as to
whether certain prior art references should be included in the prior art you use to decide the
validity of claims 2 and 23 of the Utility Patent. In order to be considered as prior art to the
patent at issue here, these references must be reasonably related to the claimed invention of that
patent. A reference is reasonably related if it is in the same field as the claimed invention or is
from another field to which a person of ordinary skill in the field would look to solve a known
problem.
Third, you must decide what difference, if any, existed between the claimed invention
and the prior art.
Finally, you should consider any of the following factors that you find have been shown
by the evidence:
(1) commercial success of a product due to the merits of the claimed invention;
(2) a long felt need for the solution provided by the claimed invention;
(3) unsuccessful attempts by others to find the solution provided by the claimed invention;
(4) copying of the claimed invention by others;
(5) unexpected and superior results from the claimed invention;
(6) acceptance by others of the claimed invention as shown by praise from others in the field
or from the licensing of the claimed invention; and
(7) independent invention of the claimed invention by others before or at about the same time
as the named inventor thought of it.
The presence of factors 16 may be considered by you as an indication that the claimed
invention would not have been obvious at the time the claimed invention was made, and the
presence of the factor 7 may be considered by you as an indication that the claimed invention
would have been obvious at such time. Although you should consider any evidence of these
factors, the relevance and importance of any of them to your decision on whether the claimed
invention would have been obvious is up to you.
A patent claim composed of several elements is not proved obvious merely by
demonstrating that each of its elements was independently known in the prior art. In evaluating
whether such a claim would have been obvious, you should consider whether Seirus has
identified a reason that would have prompted a person of ordinary skill in the field to combine
the elements or concepts from the prior art in the same way as in the claimed invention. There is
no single way to define the line between true inventiveness on the one hand (which is patentable)
and the application of common sense and ordinary skill to solve a problem on the other hand
(which is not patentable). For example, market forces or other design incentives may be what
produced a change, rather than true inventiveness. You may consider whether the change was
merely the predictable result of using prior art elements according to their known functions, or
whether it was the result of true inventiveness. You may also consider whether there is some
teaching or suggestion in the prior art to make the modification or combination of elements
claimed in the patent. Also, you may consider whether the innovation applies a known technique
that had been used to improve a similar device or method in a similar way. You may also
consider whether the claimed invention would have been obvious to try, meaning that the
claimed innovation was one of a relatively small number of possible approaches to the problem
with a reasonable expectation of success by those skilled in the art. However, you must be
careful not to determine obviousness using the benefit of hindsight; many true inventions might

seem obvious after the fact. You should put yourself in the position of a person of ordinary skill
in the field at the time the claimed invention was made and you should not consider what is
known today or what is learned from the teaching of the patent.

UTILITY PATENT
Damages

No. 22. Utility Patent Damages Burden of Proof
I will instruct you about the measure of damages for claims of Utility Patent
infringement. By instructing you on damages, I am not suggesting which party should win on
any issue. If you find that Seirus infringed any valid claim of the Utility Patent, you must then
determine the amount of money damages to be awarded to Columbia to compensate it for the
infringement.
The amount of those damages must be adequate to compensate Columbia for the
infringement but in no event may the damages award be less than a reasonable royalty. You
should keep in mind that the damages you award are meant to compensate the patent holder and
not to punish an infringer.
Columbia has the burden to persuade you of the amount of its damages. While Columbia
is not required to prove its damages with mathematical precision, it must prove them with
reasonable certainty. Columbia is not entitled to damages that are remote or speculative.

No. 23. Utility Patent Damages Reasonable Royalty Definition
Columbia seeks a reasonable royalty for the infringement of its Utility Patent. The
definition of a reasonable royalty for Utility Patent infringement is the same as the definition I
explained to you in Jury Instruction No. 13 for Design Patent damages. However, wherever in
that instruction I referred to the patented design or a Design Patent, you should now focus on the
patented invention or the Utility Patent.

UTILITY PATENT
Willfulness

No. 24. Utility Patent Willful Infringement
If you determine that Seirus has infringed any of the Utility Patents asserted claims and
that those claims are valid, you must then determine whether that infringement was willful. You
are only to consider whether infringement of the Utility Patent was willful from June 4, 2013,
through December 4, 2013.The definition of willfulness for Utility Patent infringement is the
same as the definition explained to you in Jury Instruction No. 14 for Design Patent
infringement. However, wherever in that instruction I referred to the patented design or a Design
Patent, you should now focus on the patented invention or the Utility Patent.

DELIBERATIONS

No. 25. Deliberations
Upon returning to the jury room, 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.
The presiding juror presides over the deliberations and votes, but has no greater weight or voice
than any other juror. After selecting your presiding juror, deliberate until you reach your verdict.
Your verdict must be unanimous.
Each of you must decide the case for yourself, but you should do so only after you have
considered all the evidence, discussed it fully with the other jurors, and listened to the views of
your fellow jurors.
Do not be afraid to change your opinion if the discussion persuades you that you should.
But do not come to a decision simply because other jurors think it is right.
It is important that you attempt to reach a unanimous verdict but, of course, only if each
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.
A special verdict form has been prepared for you. It provides you with a road map of the
specific questions that you must determine and answer to reach a complete verdict. After you
have reached unanimous agreement on a verdict, your presiding juror should complete the
special verdict form according to your deliberations, sign and date it, and advise the bailiff that
you are ready to return to the courtroom.

You will note that there are questions. The answer to each question must be the
unanimous answer of the jury. Your presiding juror will write the unanimous answer of the jury
in the spaces provided opposite each question. All jurors should participate in all deliberations
and vote on each question.
The presiding juror will then date and sign the special verdict form as completed and you
will advise the bailiff outside your door that you are ready to return to the courtroom. Court will
then be reconvened and your verdict will be received.
Your verdict must be based solely on the evidence and on the law as I have given it to
you in these instructions. Nothing that I have said or done is intended to suggest what your
verdict should be - that is entirely for you to decide.
Because you must base your verdict only on the evidence received in the case and on
these instructions, I remind you that you must not be exposed to any other information about the
case or to the issues it involves. Except for discussing the case with your fellow jurors during
your deliberations:
Do not communicate with anyone in any way and do not let anyone else communicate
with you in any way about the merits of the case or anything to do with it. This includes
discussing the case in person, in writing, by phone or electronic means, via email, text
messaging, or any Internet chat room, blog, website or other feature. This applies to
communicating with your family members, your employer, the media or press, and the people
involved in the trial. If you are asked or approached in any way about your jury service or

anything about this case, you must respond that you have been ordered not to discuss the matter
and to report the contact to the court.
Do not read, watch, or listen to any news or media accounts or commentary about the
case or anything to do with it; do not do any research, such as consulting dictionaries, searching
the Internet or using other reference materials; and do not make any investigation or in any other
way try to learn about the case on your own.
The law requires these restrictions to ensure the parties have a fair trial based on the same
evidence that each party has had an opportunity to address. A juror who violates these
restrictions jeopardizes the fairness of these proceedings. If any juror is exposed to any outside
information, please notify the court immediately.
If it becomes necessary during your deliberations to communicate with me, you may send
a note through the bailiff, signed by your presiding juror or by one or more members of the jury.
No member of the jury should ever attempt to communicate with me except by a signed writing.
Until you have reached your verdict, I will only communicate with jury members on anything
concerning the case either in writing, or orally 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 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
reached a unanimous verdict or have been discharged.

Columbia v. Seirus - Final Jury Instructions

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Columbia v. Seirus - Final Jury Instructions

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Case 3:17-cv-01781-HZ Document 378 Filed 09/29/17 PageID.

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF CALIFORNIA

COLUMBIA SPORTSWEAR NORTH No. 3:17-cv-01781-HZ

AMERICA, INC., an Oregon Corporation, JURY INSTRUCTIONS

SEIRUS INNOVATIVE ACCESSORIES,

INC., a Utah corporation,

No. 1. Final Jury Instructions Instructions on Your Duties

the attorneys, it is my duty to instruct you as to the law of the case.

work, conjecture, or speculation.

should returnthat is a matter entirely for you to decide.

recollection of the evidence.

No. 2. What is Evidence

1. The sworn testimony of witnesses, both on direct and cross-examination, including

2. The exhibits which have been received into evidence; and

3. Any facts to which all the lawyers have agreed by stipulation.

No. 3. What is Not Evidence

facts are. I will list them for you:

No. 4. Direct and Circumstantial Evidence

answers are recorded.

No. 6. Credibility of Witnesses

2. The witness's memory;

3. The witness's manner while testifying;

5. Whether other evidence contradicted the witness's testimony;

7. Any other factors that bear on believability.

witnesses who testify about it.

No. 7. Expert Opinion

the reasons for their opinions.

10- JURY INSTRUCTIONS

11- JURY INSTRUCTIONS

No. 8. Summary of Contentions

products that are alleged to infringe contain the HeatWave material.

in addition, the claims are invalid.

12- JURY INSTRUCTIONS

13- JURY INSTRUCTIONS

No. 9. Measure of Damages

14- JURY INSTRUCTIONS

No. 10. Measure of Damages Article of Manufacture

of manufacture is the whole product or a component of that product.

16- JURY INSTRUCTIONS

No. 11. Measure of Damages Defendants Total Profit

any articles of manufacture bearing the patented design.

gross revenue from the article of manufacture by a preponderance of the evidence.

burden of proving deductible expenses by a preponderance of the evidence.

the amount of Seiruss total profit that is attributable to that component.

17- JURY INSTRUCTIONS

No. 12. Design Patent Damages Reasonable Royalty Entitlement

provide the Court with the amounts.

18- JURY INSTRUCTIONS

No. 13. Reasonable Royalty Definition

would have preferred.

19- JURY INSTRUCTIONS

In determining a reasonable royalty, you may consider the following factors:

proving or tending to prove an established royalty.

or nonrestricted in terms of territory or with respect to whom the manufactured

product may be sold.

patent monopoly by not licensing others to use the invention or by granting

licenses under special conditions designed to preserve that monopoly.

20- JURY INSTRUCTIONS

they are inventor and promoter.

commercial success, and its current popularity.

used the invention.

probative of the value of that use.

21- JURY INSTRUCTIONS