Case 1:23-cv-00324-ADA Document 351-8 Filed 12/18/24 Page 1 of 14
`
`Joint Pretrial Order
`
`Exhibit 16
`
`Carbyne’s Proposed Jury
`Verdict Form
`
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8 Filed 12/18/24 Page 2 of 14
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`
`AUSTIN DIVISION
`CARBYNE BIOMETRICS, LLC,
`Plaintiff, Civil Action No. 1:23-cv-00324
`Vs.
`APPLE INC., JURY TRIAL
`Defendant.
`
`[CARBYNE’S PROPOSED]| JURY VERDICT FORM
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8 Filed 12/18/24 Page 3 of 14
`
`JURY VERDICT FORM!
`
`When answering the following questions and filling out this Verdict Form, please follow
`the directions provided throughout the Verdict Form. Your answer to each question must be
`unanimous. Some of the questions contain legal terms that are defined and explained in detail in
`the Jury Instructions. Please refer to the Jury Instructions as you answer the questions below. As
`used herein, the following terms have the corresponding meanings provided:
`
`e “Carbyne” means Carbyne Biometrics, LLC
`
`e “Apple” means Apple Inc.
`
`e “’105 Patent” means U.S. Patent Number 11,475,105
`
`e ‘138 Patent” means U.S. Patent Number 11,514,138
`
`e “’010 Patent” means U.S. Patent Number 9,972,010
`
`e 656 Patent” means U.S. Patent Number 10,713,656
`
`e ‘886 Patent” means U.S. Patent Number 11,526,886
`
`e “Fraud Reduction Patents” means the 010 Patent, the *656 Patent, and the *886 Patent.
`
`e “Authentication Patents” means the *105 Patent and the *138 Patent.
`
`o “Asserted Patents” means the *105 Patent, the *138 Patent, the 010 Patent, the *656 Patent,
`and the *886 Patent.
`
`e The “Asserted Claims” refers collectively to claims 1, 9, 14, and 35 of the 105 Patent;
`claims 1, 7, 8, and 25 of the 138 Patent; claims 1, 6 and 9 of the ’010 Patent; claims 1 and
`
`8 of the 656 Patent; and claims 1, 12, and 14 of the 886 Patent.
`
`! This verdict form is based on—and similar to—the form the Court has used in a number of cases. See,
`e.g., EcoFactor, Inc. v. Google LLC, No. 6:20-cv-75-ADA (W.D. Tex. Feb. 10, 2022) (Dkt. 215); VLSI
`Technology LLC v. Intel Corp., No. 6:21-cv-299-ADA (W.D. Tex. Apr. 21, 2021) (Dkt. 549); Trackthings
`LLCv. Amazon.com Services LLC et al., No. 6:23-cv-133-ADA (W.D. Tex. Oct. 11, 2024)(Dkt. 203).
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8 Filed 12/18/24 Page 4 of 14
`
`IT IS VERY IMPORTANT THAT YOU FOLLOW THE INSTRUCTIONS PROVIDED
`
`IN THIS VERDICT FORM.
`
`ANSWER QUESTION NO. 1 FIRST AND PROCEED BASED UPON THE
`
`INSTRUCTIONS THEREAFTER.
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8 Filed 12/18/24 Page 5 of 14
`
`We, the jury, unanimously agree to the answers to the following questions and return
`them as our verdict in this case:
`
`QUESTION 1:
`
`Has Carbyne proven, by a preponderance of the evidence, that Apple has infringed the
`following claims of the Asserted Patents?
`
`Answer “Yes” or “No” for each claim.
`“Yes” is a finding for Carbyne. “No” is a finding for Apple.
`
`Authentication Patents
`
`’105 Patent Yes No
`
`Claim 1
`
`Claim 9
`
`Claim 14
`
`Claim 35
`
`’138 Patent Yes No
`
`Claim 1
`
`Claim 7
`
`Claim 8
`
`Claim 25
`
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8 Filed 12/18/24 Page 6 of 14
`
`Fraud Reduction Patents:
`
`’010 Patent Yes No
`
`Claim 1
`
`Claim 6
`
`Claim 9
`
`’656 Patent Yes No
`
`Claim 1
`
`Claim 8
`
`’886 Patent Yes No
`
`Claim 1
`
`Claim 12
`
`Claim 14
`
`Proceed to the next page.
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8 Filed 12/18/24 Page 7 of 14
`
`IF YOU ANSWERED “NO” FOR EVERY ASSERTED CLAIM IN QUESTION 1, THEN
`SKIP QUESTION NOS. 2 THROUGH 4. PROCEED TO THE FINAL PAGE OF THE
`
`VERDICT FORM AND FOLLOW THE INSTRUCTIONS GIVEN THERE.
`
`IF YOU ANSWERED “YES” FOR AT LEAST ONE ASSERTED CLAIM IN QUESTION
`NO. 1, PLEASE PROCEED TO QUESTION NOS. 2 AND 3. YOU MAY ANSWER
`
`QUESTION NOS. 2 AND 3 IN ANY ORDER.
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8 Filed 12/18/24 Page 8 of 14
`
`QUESTION 2:
`
`Has Apple proven, by a clear and convincing evidence, that the following claims of the
`Asserted Patents are invalid?
`
`Answer “Yes” or “No” for each claim.
`“Yes” is a finding for Apple. “No” is a finding for Carbyne.
`
`Authentication Patents
`
`’105 Patent Yes No
`
`Claim 1
`
`Claim 9
`
`Claim 14
`
`Claim 35
`
`’138 Patent Yes No
`
`Claim 1
`
`Claim 7
`
`Claim 8
`
`Claim 25
`
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8
`
`Fraud Reduction Patents
`
`Filed 12/18/24
`
`Page 9 of 14
`
`’010 Patent
`
`Yes
`
`Claim 1
`
`Claim 6
`
`Claim 9
`
`’656 Patent
`
`Yes
`
`No
`
`Claim 1
`
`Claim 8
`
`’886 Patent
`
`Yes
`
`No
`
`Claim 1
`
`Claim 12
`
`Claim 14
`
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8 Filed 12/18/24 Page 10 of 14
`
`QUESTION 3:
`
`Has Apple proven, by a clear and convincing evidence, that the elements of the Asserted Claims,
`when taken individually and when taken as an ordered combination, involve only activities or
`technology which a person of ordinary skill in the art would have considered to be well-
`understood, routine, and conventional as of the priority date of the invention??
`
`Answer “Yes” or “No” for each claim.
`
`“Yes” is a finding for Apple. “No” is a finding for Carbyne.
`
`Authentication Patents
`
`’105 Patent Yes No
`
`Claim 1
`
`Claim 9
`
`Claim 14
`
`Claim 35
`
`’138 Patent Yes No
`
`Claim 1
`
`Claim 7
`
`Claim 8
`
`Claim 25
`
`2 Near verbatim from the Jury Verdict at 3, 4imondNet, Inc. et al v. Amazon.com, Inc. et al, Case
`No. 6:21-cv-00898, Dkt. 279 (W.D. Tex. June 14, 2024) (Albright, J.).
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8
`
`Fraud Reduction Patents
`
`Filed 12/18/24
`
`Page 11 of 14
`
`’010 Patent
`
`Yes
`
`No
`
`Claim 1
`
`Claim 6
`
`Claim 9
`
`’656 Patent
`
`Yes
`
`No
`
`Claim 1
`
`Claim 8
`
`’886 Patent
`
`Yes
`
`No
`
`Claim 1
`
`Claim 12
`
`Claim 14
`
`Before Proceeding to the next page, please review questions 1-3 above to ensure that all questions
`have been answered unanimously.
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8 Filed 12/18/24 Page 12 of 14
`
`IF YOU HAVE REACHED THIS POINT IN THE VERDICT FORM, YOU SHOULD
`HAVE ANSWERED QUESTION NOS. 1 TO 3.IF YOU HAVE NOT ANSWERED
`QUESTION NOS. 1, 2, AND 3, PLEASE GO BACK AND ANSWER THEM BEFORE
`
`PROCEEDING.?
`
`IF YOU ANSWERED “YES” FOR EACH ASSERTED CLAIM IN EITHER QUESTION
`NOS. 2 OR 3, THEN SKIP QUESTION NO. 4. PROCEED TO THE FINAL PAGE OF
`
`THE VERDICT FORM AND FOLLOW THE INSTRUCTIONS GIVEN THERE.
`
`YOU SHOULD ONLY ANSWER QUESTION NO. 4 IF YOU ANSWERED “YES” IN
`QUESTION NO. 1 AND “NO” TO QUESTION NOS. 2 AND 3 FOR AT LEAST ONE
`
`ASSERTED CLAIM.
`
`IN OTHER WORDS, ANSWER QUESTION NO. 4 ONLY IF
`AT LEAST ONE CLAIM IS INFRINGED (QUESTION NO. 1) AND
`
`IS NOT INVALID (QUESTION NOS. 2 AND 3).
`
`3 Adapted from EcoFactor, Inc. v. Google LLC, No. 6:20-cv-75-ADA (W.D. Tex. Feb. 10, 2022)
`(Dkt. 215).
`
`10
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8 Filed 12/18/24 Page 13 of 14
`
`QUESTION 4: DAMAGES
`
`A. Damages
`
`If you found any Asserted Claim of the patents listed below BOTH infringed AND not
`invalid, what amount of reasonable royalty damages did Carbyne did prove, by a preponderance
`of evidence, would compensate Carbyne for Apple’s infringement?
`
`1. For the 105 and/or 138 (“Authentication”) Patent(s):
`
`$
`
`2. For the ’010, 656, and/or ’886 (“Fraud Reduction”) Patent(s):
`
`B. Type of Royalty
`
`Are the amounts you found in Question No. 4(A) a running royalty or a one-time lump sum
`
`royalty for past and future sales?* Check ONLY one of the following:
`
`[ ]Running royalty
`-OR-
`
`[ ]One-time lump sum royalty
`
`PROCEED TO THE FINAL PAGE OF THE VERDICT FORM.
`
`4 Adapted from SVV Technology Innovations Inc. v. Acer Inc., Case No. 6:22-cv-00640, Dkt. No.
`158 (W.D. Tex. June 6, 2024) (Albright, J.).
`
`11
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8 Filed 12/18/24 Page 14 of 14
`
`You have now reached the end of the verdict form and should review it to ensure it
`accurately reflects your unanimous determinations. After you are satisfied that your unanimous
`answers are correctly reflected above, your Jury Foreperson should then sign and date this Verdict
`Form in the spaces below. Once that is done, notify the Court Security Officer that you have
`reached a verdict. The Jury Foreperson should retain possession of the verdict form and bring it
`
`when the jury is brought back into the courtroom.
`
`I certify that the jury unanimously concurs in every element of the above verdict.
`
`SIGNED this day of February 2025.
`
`JURY FOREPERSON
`
`12
`
`
`
`
`
`
`
`
`
`
`Joint Pretrial Order
`
`Exhibit 16
`
`Carbyne’s Proposed Jury
`Verdict Form
`
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8 Filed 12/18/24 Page 2 of 14
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`
`AUSTIN DIVISION
`CARBYNE BIOMETRICS, LLC,
`Plaintiff, Civil Action No. 1:23-cv-00324
`Vs.
`APPLE INC., JURY TRIAL
`Defendant.
`
`[CARBYNE’S PROPOSED]| JURY VERDICT FORM
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8 Filed 12/18/24 Page 3 of 14
`
`JURY VERDICT FORM!
`
`When answering the following questions and filling out this Verdict Form, please follow
`the directions provided throughout the Verdict Form. Your answer to each question must be
`unanimous. Some of the questions contain legal terms that are defined and explained in detail in
`the Jury Instructions. Please refer to the Jury Instructions as you answer the questions below. As
`used herein, the following terms have the corresponding meanings provided:
`
`e “Carbyne” means Carbyne Biometrics, LLC
`
`e “Apple” means Apple Inc.
`
`e “’105 Patent” means U.S. Patent Number 11,475,105
`
`e ‘138 Patent” means U.S. Patent Number 11,514,138
`
`e “’010 Patent” means U.S. Patent Number 9,972,010
`
`e 656 Patent” means U.S. Patent Number 10,713,656
`
`e ‘886 Patent” means U.S. Patent Number 11,526,886
`
`e “Fraud Reduction Patents” means the 010 Patent, the *656 Patent, and the *886 Patent.
`
`e “Authentication Patents” means the *105 Patent and the *138 Patent.
`
`o “Asserted Patents” means the *105 Patent, the *138 Patent, the 010 Patent, the *656 Patent,
`and the *886 Patent.
`
`e The “Asserted Claims” refers collectively to claims 1, 9, 14, and 35 of the 105 Patent;
`claims 1, 7, 8, and 25 of the 138 Patent; claims 1, 6 and 9 of the ’010 Patent; claims 1 and
`
`8 of the 656 Patent; and claims 1, 12, and 14 of the 886 Patent.
`
`! This verdict form is based on—and similar to—the form the Court has used in a number of cases. See,
`e.g., EcoFactor, Inc. v. Google LLC, No. 6:20-cv-75-ADA (W.D. Tex. Feb. 10, 2022) (Dkt. 215); VLSI
`Technology LLC v. Intel Corp., No. 6:21-cv-299-ADA (W.D. Tex. Apr. 21, 2021) (Dkt. 549); Trackthings
`LLCv. Amazon.com Services LLC et al., No. 6:23-cv-133-ADA (W.D. Tex. Oct. 11, 2024)(Dkt. 203).
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8 Filed 12/18/24 Page 4 of 14
`
`IT IS VERY IMPORTANT THAT YOU FOLLOW THE INSTRUCTIONS PROVIDED
`
`IN THIS VERDICT FORM.
`
`ANSWER QUESTION NO. 1 FIRST AND PROCEED BASED UPON THE
`
`INSTRUCTIONS THEREAFTER.
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8 Filed 12/18/24 Page 5 of 14
`
`We, the jury, unanimously agree to the answers to the following questions and return
`them as our verdict in this case:
`
`QUESTION 1:
`
`Has Carbyne proven, by a preponderance of the evidence, that Apple has infringed the
`following claims of the Asserted Patents?
`
`Answer “Yes” or “No” for each claim.
`“Yes” is a finding for Carbyne. “No” is a finding for Apple.
`
`Authentication Patents
`
`’105 Patent Yes No
`
`Claim 1
`
`Claim 9
`
`Claim 14
`
`Claim 35
`
`’138 Patent Yes No
`
`Claim 1
`
`Claim 7
`
`Claim 8
`
`Claim 25
`
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8 Filed 12/18/24 Page 6 of 14
`
`Fraud Reduction Patents:
`
`’010 Patent Yes No
`
`Claim 1
`
`Claim 6
`
`Claim 9
`
`’656 Patent Yes No
`
`Claim 1
`
`Claim 8
`
`’886 Patent Yes No
`
`Claim 1
`
`Claim 12
`
`Claim 14
`
`Proceed to the next page.
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8 Filed 12/18/24 Page 7 of 14
`
`IF YOU ANSWERED “NO” FOR EVERY ASSERTED CLAIM IN QUESTION 1, THEN
`SKIP QUESTION NOS. 2 THROUGH 4. PROCEED TO THE FINAL PAGE OF THE
`
`VERDICT FORM AND FOLLOW THE INSTRUCTIONS GIVEN THERE.
`
`IF YOU ANSWERED “YES” FOR AT LEAST ONE ASSERTED CLAIM IN QUESTION
`NO. 1, PLEASE PROCEED TO QUESTION NOS. 2 AND 3. YOU MAY ANSWER
`
`QUESTION NOS. 2 AND 3 IN ANY ORDER.
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8 Filed 12/18/24 Page 8 of 14
`
`QUESTION 2:
`
`Has Apple proven, by a clear and convincing evidence, that the following claims of the
`Asserted Patents are invalid?
`
`Answer “Yes” or “No” for each claim.
`“Yes” is a finding for Apple. “No” is a finding for Carbyne.
`
`Authentication Patents
`
`’105 Patent Yes No
`
`Claim 1
`
`Claim 9
`
`Claim 14
`
`Claim 35
`
`’138 Patent Yes No
`
`Claim 1
`
`Claim 7
`
`Claim 8
`
`Claim 25
`
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8
`
`Fraud Reduction Patents
`
`Filed 12/18/24
`
`Page 9 of 14
`
`’010 Patent
`
`Yes
`
`Claim 1
`
`Claim 6
`
`Claim 9
`
`’656 Patent
`
`Yes
`
`No
`
`Claim 1
`
`Claim 8
`
`’886 Patent
`
`Yes
`
`No
`
`Claim 1
`
`Claim 12
`
`Claim 14
`
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8 Filed 12/18/24 Page 10 of 14
`
`QUESTION 3:
`
`Has Apple proven, by a clear and convincing evidence, that the elements of the Asserted Claims,
`when taken individually and when taken as an ordered combination, involve only activities or
`technology which a person of ordinary skill in the art would have considered to be well-
`understood, routine, and conventional as of the priority date of the invention??
`
`Answer “Yes” or “No” for each claim.
`
`“Yes” is a finding for Apple. “No” is a finding for Carbyne.
`
`Authentication Patents
`
`’105 Patent Yes No
`
`Claim 1
`
`Claim 9
`
`Claim 14
`
`Claim 35
`
`’138 Patent Yes No
`
`Claim 1
`
`Claim 7
`
`Claim 8
`
`Claim 25
`
`2 Near verbatim from the Jury Verdict at 3, 4imondNet, Inc. et al v. Amazon.com, Inc. et al, Case
`No. 6:21-cv-00898, Dkt. 279 (W.D. Tex. June 14, 2024) (Albright, J.).
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8
`
`Fraud Reduction Patents
`
`Filed 12/18/24
`
`Page 11 of 14
`
`’010 Patent
`
`Yes
`
`No
`
`Claim 1
`
`Claim 6
`
`Claim 9
`
`’656 Patent
`
`Yes
`
`No
`
`Claim 1
`
`Claim 8
`
`’886 Patent
`
`Yes
`
`No
`
`Claim 1
`
`Claim 12
`
`Claim 14
`
`Before Proceeding to the next page, please review questions 1-3 above to ensure that all questions
`have been answered unanimously.
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8 Filed 12/18/24 Page 12 of 14
`
`IF YOU HAVE REACHED THIS POINT IN THE VERDICT FORM, YOU SHOULD
`HAVE ANSWERED QUESTION NOS. 1 TO 3.IF YOU HAVE NOT ANSWERED
`QUESTION NOS. 1, 2, AND 3, PLEASE GO BACK AND ANSWER THEM BEFORE
`
`PROCEEDING.?
`
`IF YOU ANSWERED “YES” FOR EACH ASSERTED CLAIM IN EITHER QUESTION
`NOS. 2 OR 3, THEN SKIP QUESTION NO. 4. PROCEED TO THE FINAL PAGE OF
`
`THE VERDICT FORM AND FOLLOW THE INSTRUCTIONS GIVEN THERE.
`
`YOU SHOULD ONLY ANSWER QUESTION NO. 4 IF YOU ANSWERED “YES” IN
`QUESTION NO. 1 AND “NO” TO QUESTION NOS. 2 AND 3 FOR AT LEAST ONE
`
`ASSERTED CLAIM.
`
`IN OTHER WORDS, ANSWER QUESTION NO. 4 ONLY IF
`AT LEAST ONE CLAIM IS INFRINGED (QUESTION NO. 1) AND
`
`IS NOT INVALID (QUESTION NOS. 2 AND 3).
`
`3 Adapted from EcoFactor, Inc. v. Google LLC, No. 6:20-cv-75-ADA (W.D. Tex. Feb. 10, 2022)
`(Dkt. 215).
`
`10
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8 Filed 12/18/24 Page 13 of 14
`
`QUESTION 4: DAMAGES
`
`A. Damages
`
`If you found any Asserted Claim of the patents listed below BOTH infringed AND not
`invalid, what amount of reasonable royalty damages did Carbyne did prove, by a preponderance
`of evidence, would compensate Carbyne for Apple’s infringement?
`
`1. For the 105 and/or 138 (“Authentication”) Patent(s):
`
`$
`
`2. For the ’010, 656, and/or ’886 (“Fraud Reduction”) Patent(s):
`
`B. Type of Royalty
`
`Are the amounts you found in Question No. 4(A) a running royalty or a one-time lump sum
`
`royalty for past and future sales?* Check ONLY one of the following:
`
`[ ]Running royalty
`-OR-
`
`[ ]One-time lump sum royalty
`
`PROCEED TO THE FINAL PAGE OF THE VERDICT FORM.
`
`4 Adapted from SVV Technology Innovations Inc. v. Acer Inc., Case No. 6:22-cv-00640, Dkt. No.
`158 (W.D. Tex. June 6, 2024) (Albright, J.).
`
`11
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 351-8 Filed 12/18/24 Page 14 of 14
`
`You have now reached the end of the verdict form and should review it to ensure it
`accurately reflects your unanimous determinations. After you are satisfied that your unanimous
`answers are correctly reflected above, your Jury Foreperson should then sign and date this Verdict
`Form in the spaces below. Once that is done, notify the Court Security Officer that you have
`reached a verdict. The Jury Foreperson should retain possession of the verdict form and bring it
`
`when the jury is brought back into the courtroom.
`
`I certify that the jury unanimously concurs in every element of the above verdict.
`
`SIGNED this day of February 2025.
`
`JURY FOREPERSON
`
`12
`
`
`
`
`
`
`
`
`
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