IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEBRASKA

STRECK LABORATORIES, INC., ) 8:06CV458 a Nebraska corporation, )

) Plaintiff, )

)vs. ) INITIAL JURY INSTRUCTIONS

) RESEARCH & DIAGNOSTIC SYSTEMS, ) INC., a Minnesota Corporation, and ) TECHNE CORPORATION, a Minnesota ) 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 defendant. 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 is a case involving corporations. The case should be considered and

decided by you as an action between two persons of equal standing and worth in the

community, persons holding the same or similar position in life. A corporation is entitled

to the same fair trial at your hands as a private individual. All parties, whether business

organizations or individuals, stand equal before the law, and are to be dealt with as

equals in a court of justice.

INSTRUCTION NO. 7

BURDEN OF PROOF - PREPONDERANCE OF THE EVIDENCE

When a party has the burden of proof on any claim or defense by a

preponderance of the evidence, it means the evidence must persuade you that the claim

or defense is more probable than not.

You should base your decision on all of the evidence, regardless of which party

presented it.

INSTRUCTION NO. 8

BURDEN OF PROOF - CLEAR AND CONVINCING EVIDENCE

When a party has the burden of proving any claim or defense by clear and

convincing evidence, it means the evidence has persuaded you that the claim or

defense is highly probable.

Such evidence requires a higher standard of proof than proof by a preponderance

of the evidence. Again, you should base your decision on all of the evidence, regardless

of which party presented it.

It is a higher burden than proof by a preponderance of the evidence, but is not as

high as “proof beyond a reasonable doubt,” which 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 “proof beyond a reasonable doubt,” out of your minds.

INSTRUCTION NO. 9

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. 10

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. 11

DEPOSITION TESTIMONY

During this trial, some testimony will be presented by deposition. Testimony in a

deposition is under oath and is entitled to the same fair and impartial consideration that

you give to other testimony from the witness stand in this courtroom.

INSTRUCTION NO. 12

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. 13reading 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.

Further, you are not to communicate between yourselves or with anyone else about the

case via cellphone, text-message, e-mail, twitter, or otherwise, or to access the Internet

with those devices to do research or otherwise investigate the 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. 13

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 her 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. 14

BACKGROUND OR OVERVIEW

The trial of the issues between the parties in this case requires the application of

the laws governing United States patents. You have probably some general ideas

about patents and some of you may have yourselves obtained patents or had licenses

or otherwise learned something about patent law but I think it is helpful to give some

general explanation about the patent system before proceeding to opening statements.

So before moving to opening statements, we will play a video for you that gives a

general explanation about the United States Patent and Trademark Office and the patent

process.

We will now watch the video on the United States Patent and Trademark Office. I

will then briefly explain the parties' basic contentions in more detail.

INSTRUCTION NO. 15

POSITIONS OF THE PARTIES

The plaintiff in this case is named Streck, Inc., whom I shall refer to as “Streck”

throughout these instructions. The defendants in this case are Research and Diagnostic

Systems, Inc. and Techne Corporation, whom I shall refer to collectively as “R&D”

throughout these instructions. The patents involved in this case relate to biological

substances used as “controls” in machines that analyze blood samples in medical

laboratories. These control solutions are used by labs to make sure these blood testing

machines are performing properly and rendering reliable results. In other words,

hematology reference controls tell an instrument operator whether a hematology

instrument is functioning properly.

Plaintiff, Streck Inc., is the owner of certain patents granted by the United States

Patent and Trademark Office to Dr. Wayne Ryan and John Scholl for inventions in

connection with such control solutions. A patent is identified by the Patent Office by

number and is often referred to by the last three digits in that number. During this case,

we will generally refer to the patents by their last three digits. Streck contends that

R&D makes, uses, offers for sale and sells certain integrated hematology control

products (the “CBC-XE,” the “CBC-4K Plus Retics,” and the "CBC-5D Plus Retics"

hematology controls, sometimes referred to as “the accused products”) that infringe

certain claims of its patents.

It has been determined that sale of R&D's accused products infringe claims 28 and

29 of the '500 patent, claims 1, 5, 6, 8, and 13 of the '668 patent, and claim 13 of the

'388 patent, if those claims are valid. All of R&D's accused products infringe at least one

claim of each patent. The court has also determined that the claims of the patents

contain an adequate written description of the claimed invention.

R&D asserts claims 28 and 29 of the '500 patent, claims 1, 5, 6, 8 and 13 of the

'668 patent, and claim 13 of the '388 patent are invalid for failing to enable others skilled

in the art to make and use the invention and because Dr. Alan Johnson of R&D was the

first to invent the claimed invention. Streck denies that Dr. Johnson was the first to

invent the integrated controls claimed in those patents. Streck asserts that Dr.

Johnson did not exercise reasonable diligence in reducing its claimed invention to

practice.

Invalidity is a defense to infringement. Therefore, even though the United States

Patent Office (“PTO”) examiner has allowed the claims of the Streck patents to issue,

you, the jury, will have the ultimate responsibility for deciding whether the claims of the

patents are valid. Because a patent issued by the United States Patent Office, and

each of its claims, is presumed to be valid, R&D bears the burden of proving invalidity by

clear and convincing evidence.

It is my job to tell you what the patent claims mean. You must follow my

instructions as to the meaning of the patent claims. I will provide you with the meanings

of certain important terms in a few moments.

If you decide that R&D has not proved by clear and convincing evidence that any

one of the asserted claims of the patents is invalid, then you will also be asked to

determine damages. You may also need to decide whether the infringement was willful.

If you decide that any infringement was willful, that decision should not affect any

damage award you make. The court will take willfulness into account later. You will

be provided further instructions on damages issues after you have heard the evidence.

INSTRUCTION NO. 16

UNCONTROVERTED FACTS

The plaintiff and the defendants have stipulated, that is, they have agreed to the

following facts. You should accept them as true.

1. Plaintiff Streck, Inc., is a corporation having a place of business at 7002 South

109th Street, LaVista, NE 68128.

2. Defendants Research & Diagnostic Systems, Inc., and Techne Corporation,

are corporations having their principal places of business at 614 McKinley Place NE,

Minneapolis, MN 55413.

3. Research & Diagnostic Systems, Inc. is a wholly-owned subsidiary of Techne

Corporation.

4. Streck is the owner by assignment of three patents at issue in this lawsuit:

U.S. Patent No. 6,200,500 Bl issued on March 31, 2001 (the "'500 patent"); U.S.

Patent No.

6,221,668 Bl issued on April 24, 2001 (the '''668 patent"); and U.S. Patent No. 6,399,388

Bl issued on June 4, 2002 (the '''388 patent"), each entitled "Hematology Control and

System for Multi-Parameter Hematology Measurements."

5. Hematology is the branch of science that relates to the study of blood. Several

other companies, not parties to this lawsuit, make automated hematology analyzers that

detect and count the various components of human blood.

6. Automated hematology analyzers are used by clinical laboratories to analyze

patient blood samples. These analyzers count the various cellular components of whole

blood such as red blood cells, white blood cells and reticulocytes. Controls for these

analyzers allow laboratories to periodically monitor the accuracy and consistency of

these automated hematology analyzers.

7. A hematology control composition is a preparation of one or more blood

components, including naturally occurring blood components, or analogs thereof, which

sufficiently simulate the relevant characteristics of whole blood when measured by the

hematology analyzer. Each component of a control appears to the analyzer as its

corresponding component in whole blood when examined by the particular analyzer.

8. Control manufacturers like Streck and Research & Diagnostic Systems, Inc.,

run a sample from each large batch or "lot" of control product that they make through

their in-house, calibrated analyzers to determine the number of cells in each type of cell

component in that particular lot of control. These numbers will then be listed on an

"assay sheet" that goes with each vial of control made from that lot of product when it is

sold to customers. A customer then uses the control to determine the accuracy of his

analyzer by running the control through the analyzer, and comparing the values reported

by his analyzer to the values on the assay sheet provided by the control manufacturer.

If the values generated by the customer's analyzer are within the range of acceptable

values provided on the assay sheet, this indicates that the customer's analyzer is

functioning properly.

9. The asserted claims of the patents-in-suit are directed to a specific type of

control, called an "integrated control" by the parties, that contains at least a white blood

cell component capable of exhibiting a five-part differential combined with a reticulocyte

component.

10. Both Streck and Research & Diagnostic Systems, Inc., currently make, use,

sell, and offer for sale in the United States integrated reticulocyte controls.

11. Research & Diagnostic Systems, Inc. currently makes and sells three

integrated reticulocyte control products: "CBC-4K Plus Retics," "CBC-XE," and "CBC-5D

Plus Retics" (collectively "the Accused Products").

INSTRUCTION NO. 17

THE MEANING OF CLAIM TERMS

I have defined certain words and phrases in the patent claims. During your

deliberations you must apply these meanings. You must follow my interpretation of the

patent claim language even if you do not agree with it.

Control composition: a preparation of one or more blood components,

including naturally occurring blood components, or analogs thereof, which sufficiently

simulate the relevant characteristics of whole blood when measured by the hematology

instrument.

Component: an element forming measurable part of the whole.

A fixed and stabilized w hite blood cell component: white blood cells or

analogs thereof that have been preserved to stabilize the cell morphology analyzed by

the hematology instrument.

Reticuloc y te: immature anucleate red blood cells containing some ribonucleic

acid.

Stabilized reticuloc y te component: a component that appears to the

instrument as immature, anucleate red blood cells containing a detectable amount of

ribonucleic acid, and that has been treated so as to inhibit undue diminishment of its

utility as a component of a hematology control.

Reticulated platelet component: a component that appears to the instrument

as platelet cells containing some ribonucleic acid enclosed within the membrane.

White blood cells for cellular t y pes: white blood cells that simulate the relevant

characteristics of the following: lymphocytes, monocytes, neutrophils, eosinophils or

basophils.

Wh it e b l ood cells for all phenot y pes: white blood cells in which antigenic sites

have been preserved for a useful period of time.

Reticuloc y te analogs: particles made from a source other than naturally

occurring reticulocytes, such particles appearing to the instrument as reticulocytes that

naturally occur in the whole blood for which the instrument is intended.

INSTRUCTION NO. 18

INVALIDITY - GENERALLY

Patent invalidity is a defense to patent infringement. Even though the PTO

examiner has allowed the claims of a patent, you have the ultimate responsibility for

deciding whether the claims of the patent are valid.

I will now instruct you on the invalidity issues you should consider. As you

consider these issues, remember that R&D must prove that the claims are invalid by

clear and convincing evidence.

INSTRUCTION NO. 19

INVALIDITY - ENABLEMENT

R&D contends that claims 28 and 29 of the '500 patent, claims 1, 5, 6, 8 and 13 of

the '668 patent, and claim 13 of the '388 patent are invalid because the patent does not

disclose sufficient information to enable one skilled in the field of the invention, at the

time the application was filed—August 20, 1999—to make and use the claimed

invention. This requirement is known as the enablement requirement. If a patent claim

is not enabled, it is invalid. Each claim must be analyzed for compliance with the

enablement requirement. R&D must prove that it is highly probable that the claim was

not enabled.

In considering whether a patent claim satisfies the enablement requirement, you

must keep in mind that patents are written for persons of skill in the field of the invention.

Thus, a patent need not expressly state information that skilled persons would be likely

to know or could obtain. R&D bears the burden of establishing lack of enablement by

showing that it is highly probable that a person skilled in the art, upon reading the patent

document, would not be able to make the invention work without undue experimentation.

The fact that some experimentation may be required for a skilled person to make or use

the claimed invention does not mean that a patent’s written description fails to meet the

enablement requirement. Factors you may consider in determining whether making the

invention would require undue experimentation include:

1. the quantity of experimentation necessary;

2. the amount of direction or guidance disclosed in the patent;

3. the presence or absence of working examples in the patent;

4. the nature of the invention;

5. the state of the prior art;

6. the relative skill of those in the art;

7. the predictability of the art; and

8. the breadth of the claims.

It is often said that the scope of a claim must be commensurate with the scope of

the disclosure in the specification, i.e., the "full scope" must be enabled. It is important,

however, to remember that the state of the art as of the filing date is used to determine

the scope of enablement. Moreover, the "full scope" maxim does not mean that

commercially acceptable embodiments must be enabled; noncommercial prototypes are

sufficient. Similarly, there is no requirement to enable the product accused of

infringement. If you find that one or more of these claims did not comply with the

enablement requirement, you must find each such claim invalid.

INSTRUCTION NO. 20

INVALIDITY – ANTICIPATION (INVENTED BY SOMEONE ELSE)

R&D contends that claims 28 and 29 of the '500 patent, claims 1, 5, 6, 8 and 13 of

the '668 patent, and claim 13 of the '388 patent are invalid because the invention in each

of those claims was first invented by someone else, namely, Dr. Alan Johnson, before

Dr. Wayne Ryan and/or John Scholl invented his invention. A patent claim is invalid if

the invention defined by that claim was invented by another person in the United States

before it was invented by the patentee, and that other person did not conceal the

invention or keep it secret. If someone other than Dr. Wayne Ryan or John Scholl made

or invented the invention described in one or more such patent claims involved in this

lawsuit, then each such claim was “anticipated” by the other invention, and each such

claim is invalid.

R&D must prove by clear and convincing evidence either (1) that before the

patentee invented his invention, Dr. Alan Johnson reduced to practice a product or

method that included all of the elements of claims 28 and 29 of the '500 patent, claims 1,

5, 6, 8 and 13 of the '668 patent, and claim 13 of the '388 patent; or (2) that Dr. Alan

Johnson was first to conceive the invention and that he exercised reasonable diligence

in later reducing the invention to practice.

In addition, R&D must show that Dr. Alan Johnson’s device was sufficiently

developed that one skilled in the art would have recognized that it would work for its

intended purpose.

R&D bears the burden of proving that it is highly probable that the patent claims

are invalid. If you find that R&D has shown that it is highly probable that the invention of

a patent claim was first made or invented by someone else, you must find the patent

claim invalid.

If you find R&D has not shown that it is highly probable that the invention of a

patent claim was first made or invented by someone else, you must find the patent claim

valid.

INSTRUCTION NO. 21

DEFINITION - CONCEPTION

Conception is the formation in the mind of the inventor, of a definite and

permanent idea of the complete and operative invention, as it is to be applied in practice.

Conception is the mental part of an inventive act and is proven when the invention is

shown in its complete form by drawings, disclosure to another or other forms of evidence

presented at trial.

INSTRUCTION NO. 22

DEFINITION - REDUCTION TO PRACTICE

A claimed invention is reduced to practice when it has been shown that it will

work for its intended purpose or when it is fully described in a filed patent application.

INSTRUCTION NO. 23

DEFINITION - REASONABLE DILIGENCE

Reasonable diligence means that the inventor worked continuously on reducing

the invention to practice. Interruptions necessitated by the everyday problems and

obligations of the inventor or others working with him or her do not prevent a finding of

reasonable diligence.

INSTRUCTION NO. 24

PRIOR INVENTOR - TESTIMONY

In order to prove prior invention in this case, R&D is required to present additional

evidence beyond the testimony of the prior inventor. However, you must evaluate all

pertinent evidence, including that testimony, and make a sound determination that the

evidence credibly establishes prior invention.

INSTRUCTION NO. 25

ABANDON OR CONCEAL

If the prior invention was abandoned or kept secret, it does not anticipate the ‘500,

‘668' or ‘388 patent. However, it is not necessary that the patentee had knowledge of

that prior invention. Generally, an invention was not abandoned, suppressed, or

concealed if the invention was made public, sold, or offered for sale, or otherwise used

for a commercial purpose. A period of delay does not constitute abandonment,

suppression, or concealment if the prior inventor was engaged in reasonable efforts to

bring the invention to market.

INSTRUCTION NO. 26

LEVEL OF ORDINARY SKILL

It is up to you to decide the level of ordinary skill in the field of the invention. You

should consider all of the evidence introduced at trial in making this decision, 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.

Streck contends that a person of ordinary skill in the relevant art at the time of the

invention would typically have had a graduate degree in biochemistry or an

undergraduate degree in biological sciences and several years of experience in the field.

This person of ordinary skill in the art would also have had several years work or

research experience directed to designing, preparing or analyzing commercial controls

for hematology instruments, and would have knowledge of the composition and

preparation of prior commercial hematology controls having components that simulate

the properties of blood cells.

R&D contends that a person of ordinary skill in the art at the time of the invention

would typically have an advanced degree, such as a Masters, Ph.D., or equivalent

degree, in biological sciences with 5 to 10 years of postgraduate experience working in

the field of laboratory hematology, assays for determining the number or presence of the

formed elements of blood, control compositions used in performing such assays, and

processes for preparing, and methods for using such controls; or a bachelors of science

or equivalent degree with 15 to 20 years of postgraduate experience working in the field.

INSTRUCTION NO. 27

DAMAGES - GENERALLY

If you find that R&D has not proved by clear and convincing evidence that one or

more of the claims are invalid, you must determine the amount of money damages

Streck is entitled to recover. By instructing you on damages, I do not suggest that one or

the other party should prevail. These instructions are provided to guide you on the

calculation of damages in the event of infringement of a valid patent claim.

INSTRUCTION NO. 28

DAMAGES - BURDEN OF PROOF

Streck has the burden to prove its damages by a preponderance of evidence.

Streck must prove the amount of damages with reasonable certainty, but need not prove

the amount of damages with mathematical precision. Streck is not entitled to damages

that are remote or speculative.

You must determine the amount of damages that are adequate to compensate

Streck for any infringement by R&D, as measured by the reasonable royalty for all

infringing sales.

Your damages determination must not include additional sums to punish R&D or

to set an example. You may award compensatory damages only for the loss that

Streck proves was more likely than not caused by R&D’s infringement.

INSTRUCTION NO. 29

DAMAGES - WHEN DAMAGES BEGIN

In this case, you should assess damages beginning on December 13, 2004.

Streck and R&D have agreed upon this date.

INSTRUCTION NO. 30

REASONABLE ROYALTY - DEFINITION

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

use or sell the claimed invention.

A reasonable royalty is the payment that would have resulted from a negotiation

between a patent holder and a company in the position of the defendants just before the

infringement began. In considering the nature of this negotiation, the focus is on what

the expectations of the patent holder and infringer would have been had they entered

into an agreement at that time and acted reasonably in their negotiations. You should

also assume that both parties to that negotiation understood the patent to be valid and

infringed and were willing to enter into a license. Your role is to determine what that

agreement 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.

In determining the royalty that would have resulted from the hypothetical

negotiation you may consider real world facts including the following to the extent they

are helpful to you:

• Licenses or offers to license the patent at issue in this case

• Licenses involving comparable patents

• The licensing history of the parties

• Licensing practices in the relevant industry

• Whether the patent owner had an established policy of refusing to license

the patent at issue.

• The relationship between the patent owner and alleged infringer, including

whether or not they were competitors

• The significance of the patented technology in promoting sales of the

alleged infringer's products and earning it profit

• Alternatives to the patented technology and advantages provided by the

patented technology relative to the alternatives.

• The portion of the alleged infringer's profit that should be credited to the

invention as distinguished from nonpatented features, improvements or

contributions.

• Any other economic factor that a normally prudent businessperson would,

under similar circumstances, take into consideration in negotiating the

hypothetical license.

INSTRUCTION NO. 31

GLOSSARY OF TERMS

Some of the terms in this glossary will be defined in more detail in the legal

instructions you are being given, or will be given at the close of all the evidence.

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

Claims: The numbered sentences appearing at the end of the patent that define the invention. The words of the claims define the scope of the patent holder's exclusive rights during the life of the patent. Claims can be independent or dependent. An independent claim stands alone; it is self-contained. An independent claim is self-contained. A dependent claim refers back to an earlier claim and includes the requirements of the earlier claim.

Examination: Procedure before the U.S. Patent and Trademark Office whereby a Patent Examiner reviews the filed patent application to determine if the claimed invention is patentable.

File wrapper: Another term for the "prosecution history," defined below.

License: Permission to use or make the patented invention, or perform any of the other exclusive rights granted by the patent, which may be granted by a patent holder (or a prior licensee) in exchange for a fee called a “royalty” or other types of payment.

Office action: Communication from the patent examiner regarding the patent application.

Ordinary skill in the art: The level of experience, education, and/or training that those individuals who worked in the area of the invention ordinarily possessed at the time of the effective filing date of the patent application.

Patent and Trademark Office (PTO): An administrative branch of the U.S. Department of Commerce that is charged with overseeing and implementing the federal laws of patents and trademarks. It is responsible for examining all patent applications and issuing all patents in the United States.

Patent examiners – Personnel employed by the PTO who review (examine) patent applications, each in a specific technical area, to determine whether the claims of a patent application are patentable and whether the specification adequately describes and enables the claimed invention.

Prior Art: Prior art is not art as one might generally understand the word art. Rather, prior art is a technical term relating to patents. In general, it includes things that existed before the claimed invention and might typically be a patent or a printed publication.

Prosecution history: The written record of proceedings in the Patent Office between the applicant and the PTO, including the original patent application and later communications between the PTO and applicant.

Specification: The part of the patent application or patent which describes the invention and concludes with one or more claims. The specification includes the written text and the drawings (if any). In the specification, the inventor should provide a description telling what the invention is, how it works, and how to make and use it so as to enable others skilled in the art to do so, and what the inventor believed at the time of filing to be the best way of making the invention.