court error in failing to give an instruction under section one twelve paragraph six relating to a means plus function element in the claims and whether as a result of that a new trial should be ordered the second issue is whether in denying lss motion for judgment as a matter of law based upon the lack of substantial evidence supporting the jury's verdict in the final issue is the cro appeal by gen light regarding the additional damage is that the court which it worded and then removed based on his prior instructions to the jury is a little bit of background though i'm sure you have read the papers construction is the court set forth said that the leading light is to direct more light in a downward direction to a reading area than in an outward or  direction the second fixture known as the ambient fixture second fixture is to direct more light in a downward and outward direction to the wall then in an upward direction and these are two different fixtures two different descriptions of the way at the racks more like i don't see why they are different i have to say i mean i'm reading from your proposed three more light in a downward direction then an upward or outward direction fifty six percent i think is the number that the evidence showed down forty four to the side ok check that one satisfied the second one before we get away from this i'm going to i want this i'm really concerned that that there's just a logical flaw in your argument here i want to see if i'm wrong in thinking that i want to know exactly what now that you would you agree that a fifty six percent down forty four percent to the wall claim limitation one is satisfied except for your honor that you can have forty four percent to the wall going to fifty six to direct or a more light in a downward and outward direction then in an upward direction that seems to me by its plain terms to say moore's going down and out then is going up period when a mission you missed out the term going to the wall it's more like going to the wall it down it downward outward direction to the wall and so the point here is you've got to target areas you've got one target area says i want more like two the reading area and one target areas i want more like to the wall and that's what the court said now they have their lawyer to the wall there and then right pattern the pan is obviously talking about a pencil line like you have an airplane you know come down on your book or in a bed and that's what the first one was supposed to be and the second one is a broader lied to broadcast down which says there can't be two identical fixtures that then have more light going to raise a ration of light and broadcast the same air broadcasts the same pattern because then the claim would cover every fixture that exists in the world that's that's a problem that it seems it's a problem that we can't really get at in this case because if if one read the claims construction  who he gave them the act he told them to look at the patent as i understand it didn't address the question of whether the two fixtures could be the same or him to be different though he did not address that specifically  on how this claim and you didn't object to the jerk i didn't not object to the charge with respect to the claim construction because the claim construction as i understood it said that more light was required to go down to the reading area from one fixture and downward and outward to the wall from the other fixed up with the question assuming that you lose in that the interpretation that he really doesn't help the remains of the question of whether when he told the jury to look at the claims whether there is a question as to whether the jury could find that identical fixtures looking at the claims infringed in other words did the court give a complete claim construction or did he leave this issue of identity to the jury under the reading of the claim language itself  i think that's where we come in here that the jury was left with clearly could only have been left with the thought that they could find that two identical fixtures in french under the doctrine of equivalent one how could they i know one way or the other on the identity of the fixtures in other words it wasn't an issue covered by the chart or yes if that's what you reject what i have said about the interpretation of the claim is he gave it to them he did say that to look to the claims themselves and them to the question is then what are we supposed to do in these circumstances if the charge doesn't address the identity question said how are we supposed to review the jury under those circumstances for fixtures that are identical and is stated in our grief in our opinion the claims cannot cover pictures that are identical we don't understand the court's charge to be that they didn't but that would require an objection to the jury right that's correct you are causing me i think all the time charges are given to the jury it turns out later say boy that was a wrong charge and under that charge the jury could have found me guilty but i instructed that they needed to compare the structures in the specification to the structures in the accused product and that was a jury instruction that  proposed to the judge which he refused to give and that was objected to were of the proposed instruction one of the proposed instruction was in in the first your instructions  right so it is no there was an instruction requested the judge refused to give that instruction as part of the charge conference after the jury had been charged at sidebar objected again  the jury could not make a decision on section one twelve six because they were not instructed as the law as to that means for sealing mounting the the bottom and fixtures into a t bar grid system which is not mentioned anywhere european or expert testified that the only disputed issue was with respect to the second like fixture he was only addressing the second of the fixtures  well the question was when you prepared your opinion that discussed earlier your opinion assumes and concedes the existence of all the elements of claim one and claim three except the second light fixture of those claims is that correct sir yes because he was his opinion was limited to consideration of the fixtures issues not the one twelve six issue and it still leaves for the plaintiffs to prove y therefore that he needed he should have instructed the jury under one twelve six so they could make a proper determination of infringement on public what is it with their supposed to be doing are you suggest communicate what i'm saying is as a matter of infringement what what do you think that the jury should have concluded was the structure in the specification that they have to look for a new q s device the most they could look for in the specification was a trucker ok so let's assume that the most favorable construction to you was that the specification only describe an offer and then the question is the substantial evidence support the verdict under that interpretation what there's two questions one is to substantial evidence support the verdict the second is what the jury instructed so that they could make a property terminations in the first place there's there is the instruction issue which is they were not done any better then what we're assuming which is that there had been that the only structure  it angers or wires and so there is a question of can the jury determine that this is based identical or equivalent structure if they've never been told they need to be making that determination of whether this is an equivalent or identical is not there but there was never a claim construction the district court judge never said i i haven't read the  play then just the mere distribution pattern that is emitted by the light signature different outlets a different question that's not my question my question is is there evidence that the accused product to light fixtures in the how can you possibly need this pattern to say that two fixtures with identical light patterns satisfy the claims there is no requirement in the claims construction court n answer my question apologize for i question is forget about the claim construction by the corps just look to the patent itself how can it be that two identical fixtures satisfy the claim limitations of the there is no requirement that they be mutually exclusive and each of them when combined with the oriented to direct feature of the claims can accomplish exactly what the jury the tire context of the patent is to replace the prior art fixtures that used to light a hospital patient room with a ceiling mounted luminaire as it's called construction is goofy because it only has it no no up light in a ceiling mounted system the reason that it's not beauty is because it replaced light patterns that did light and that's why is don't say holy and the other one doesn't say only downwardly an hour later and so the first light fixture if it can broadcast down then goes to a selected area but it does something else to actually record morag in the second one does exactly the same thing the second one does exactly the same thing but because it is oriented different in the total luminaire with respect to the head well if the court will look over to this direction you will see some recessed lights that are down but they're directing light to the well as well and do not understand what you are saying how it's a good figure in this pattern shows two different light patterns how can it be doesn't read on a system that has identical to identical fixtures but what do you mean by oriented is that language doesn't need you mean well let me ask it this the first limitation the second actually is as oriented to direct light down the next one says oriented to direct like downwardly and outward now if the first one is oriented to direct  whether there is language in these two limitations that tells us that these lights have to be pointed in different directions and you started to say well the difference between the two is in the orient which got me to thinking well is he saying that one is pointed down and the other is pointed in a different only in taishan or direction but you now seem to be saying well not oh it doesn't have to be pointed in a different direction they can both be in the first case or needed downward and also outward and the second can be pointed downward and outward and that's good enough to infringe is that what you're saying not quite  unquote the experts said that is a three hundred sixty degree range of horizontal angles but i think blob was more understandable to the jury and to the judge in this case oriented means according to  the judge set or arranged and you set or arrange the fixture within the luminaire such that it accomplishes the different lighting tasks even width the same distribution if it's the same distribution the only thing that would seem to me to produce a different lighting test is brightness because if that if you have two lights of the same brightness and they are both they both have the same distribution then they're performing exactly the same lighting test with a not that they are but i didn't come back to the difference between test mode and field mode which is where the pat here in mr lemons as reported at page eight to ninety eight it is discussed it's discussed as well by mr crane in his own right to ninety eight to ninety eight  it in all of this i am discussing the difference between what the test mode does compared with the luminaire in actual field operation  when you're trying to do the function which is the first light fixture that down really to the reading area in the acute device was at a real bright light or is it a fairly soft light i mean i got the impression some of the recent tension variation here well that was part of the proof that the so called highest intensity which is less than one percent of the total light put out of the fixture but the light intensity from all fixtures ls luminaire is approximately the sag but the jury zero you were lying on the bed under the accused device and your desire was to read this piece of paper right here but nothing else like you were in an airplane you got it all pencil mean down which is to use mr gore as were the target of the second like fixture and that's important the bill so you're saying that the orientation is the distance from the wall that's how it cetera arranged that is correct your honor and that the jury saw that these two so called similar like patterns actually emitted different light patterns in the field in set as an oval i don't see where that testimony has what it's in every testimony we've demonstrated the light fixture of each accused fixture honor every feature and limitation of the claims was discussed beginning at page eighty three twenty five and that's describing the heart that in turn is describing the the the way that the light fixtures are used i don't understand what you say i mean you say the light patterns are substantially the same intensity substantially hussein but you seem to be saying there's some sort of differen what's the difference the difference your honor is in the orientation of the light fixtures with respect to the head wall so in other words you've got light number two is closer to the head while therefore poor is more light and had while there flushed reflects more light out into the you have to update that with respect to future events rule twenty six iraq or no rule twenty six he's not talking about that will twenty six he is talking about if you make of the statement and you fail to includ actually responded to that request for coming on the right talking to you about what the rules require i have never understood this rule that you're relying on is just to to mean that you can put in a document requests and that it covers future created documents and i mean i look at my clerks to research this i can't find a single case that suggests that are you aware of one no your honor i agree with you there is no case law but the rule itself says quote a party who has responded to a request for discovery is under a duty to seasonably amend a prior response to an iraq or tory or request for production if the party learns that the response is in some material incomplete if there are additional sales which we express that as an incomplete means incomplete as of the date of the response if you leave something out at that existed at that time if there were sales that existed up to that pond that you left out you have to supplement you can't put in a document with western iraq atory which requires a party to respond with respect to future events if you want  o cover future events you have to put in the new request we did your honor you know even during trial we asked for it was a formal request there was an e mail that was correct it was not a formal request but it history do you didn't have any kind of a court directive or a letter with respect to this correct no there was no order to provide additional materials but you know that they they had to take the trial and they knew they had thirteen percent of their total requests that covers future created documents well it's not created documents you're it's an ongoing tort if you will and i think that that the rules at least in cases that i have done  before it's kind of standard that you continuously update your your sales to time a trial they did supplement what's that's what brought the data to september thirtieth we asked for data after september thirtieth and they said mute now we but you i assume that you must have assumed at least in the absence of representation to the contrary that there were ongoing sets well when you when you ask the question and you get no response i think that we're entitled to rely on the non response that we're dealing with people who are telling the true fact if you got if you got the response that there weren't any sales you would be entitled asked that that much is correct and what i'd like to do if i think you could have gone to the court and said you know we are in in the interest of trying to have the judgment reflect the situation at the time that this case goes to the jury we'd like an order getting additional information we thought we were getting additional information and then what i'd like to do if i may is to relate the judge's actual instruction to the fact quote figure out a reasonable royalty and then apply that royalty to the products that you think infringe over the time that you think they were infringing up to today that's the day of trial and in fairness you will recall that mr tate he was our damages expert said he stopped his analysis back in september of last year that's because that's all the information that it makes so what it is true court said in when ject in your motion to amend the judgment was that the jury could make an estimate under that instruction based on the past date correct what if they had that what the judge said that is what they said but if the court if the jury were given the opportunity to make an estimate they would be off by at least a factor of two during the period of sun humans he could have sent some about you could you could have asked for different instruction you could have asked for supplemental discovery you could yes all sorts of things but you didn't raise any well actually your honor what we had asked for in the original complaint was an accounting and paragraph four of the original judgment says the that they all a they accounted we learn that there were four hundred twelve additional infringing pictures that's thirteen percent of their total product that infringed and it's only six percent of the time and so that you know  works sold prior to entry of the judgment do not bear a royalty and that is contrary to section four of title thirty five it says that they've been shelby no less than a reasonable royalty secondly  it's an error of fact because there is no earthly way that that jury could have applied to use the judge's words in his instructions could have applied the royalty that they had think to the palm we didn't think we needed to because of the comment about fairness and that's exactly what you do about fairness yes me and in fairness you will recall that mr tate said he stopped his analysis back in september of last year and that is precisely the reason that paragraph the floor is in the original judge women i'm confused now with  in the state and more than occasional stay here for me i'm afraid but when the judge gave that instruction what protection did you think you were getting against the possibility that there had been additional sales to protection drawn or the first protection is that the instruction expressly says to apply the royalty to the props that you think infringed up to the time of trial ok four hundred twelve of those were not disclosed well but to get the time you said fine that's good well you had evidence i mean you didn't  didn't we didn't object because of the very next sentence and in fairness you will recall that mr tate said he stopped his analysis back in september ok let me do you think that sentence was giving you that you didn't have without that senate four of the original language where does that give you in other words you thought that what you were getting with that sentence was a promise from the judge that if additional sales turned up that the judge would put themselves into the judgment no not exactly your honor what i thought we were getting by that was a recognition of the request for an accounting that had always been pleadings and that's exactly what paragraph four of the judgment directed a l s to do and only when that accounting was tendered more than a month after trial did we learn for the first time that four hundred twelve infringing fixtures were sold and because of the striking of paragraph or those fixtures even though they infringe do not bear royalty and we suggest that is the erroneous part of the law with regard to those instructions and you did you think that with respect to this the fairness and its that the jury was it was that i mean i think that was what the judge well the alternative then and if that's what the jury may have done and maybe the judge it right in saying you got all you were entitled to book the point about the arithmetic thirteen versus it is that even under the thirteen versus thirteen percent of sales versus six percent of the infringing time if they had done just kind of a linear estimate that that might suggest there would still be a substantial number of infringing fixtures that do not bear a royalty at all and that is what we think the court should  with respect to this is to reinstate paragraph oh let me ask you this question and in this must come up a lot and i honestly don't know exactly how this is and all i've seen some instances suppose that i think the trial ended on february first or january thirty eighth her something like that yes or ok in the judgment the actual injunction was not entered told a week later well the as i recall trial ended up thursday  and that's when we got the first and the very next court date was february first and in that period of time we reviewed the record and prepared a tender cases such as this and injunction and there may be sales that occur in between now isn't it normally the course that you initiate it what it amounts to an ancillary proceeding to certified accounting to generalize of all sales of the mt to a empty to be empty one d multi met hospital patient room lights from september thirtieth two thousand and six to the date and the date  two quick statements your honor with regard to this issue of the testing version business being different than the actual application on a three seven forty seven mr  lemons testified on direct examination about the difference between the meeting in the ambient fixtures as it doesn't matter which one you call which says because the patterns of light from both the very similar say the fixture so i could say that this is the first light fixture to provide light down to the reading area and the other is the second like fixture provides light onto the wall that is reflected over a broader area so he considered that as a testimony there was a considered in the same just trying to get at the problem of what you do i mean obviously if things are continuing to build on a commercial setting there is going to come a time in which you can't put in evidence as to what's happening out on the street today and the question is what do you do with that situation in this case what happened right by it and whether it was should have happened or not is as of september thirtieth that's was the cutoff point and the question is what to do with the sales between that time and february first and then they tried to put it into the judgment and my question was really going to what would they have been the title to say well ok you know we tried this case up till september thirtieth those were the only sales we had at that time but that doesn't mean we're foreclosed forever from getting recovery for the sales that occurred after that except for the judge instructed the jury to consider sales up through the time of their decision and  that and make a guess and they can make an estimate of what it was they had monthly sales figures throughout the entire time period they can make an estimate of what that was you know the ls it's supplement at each request except for the one that was done in the middle of trial there was a request in september which they then updated through september thirtieth there was a later request for all of the customer  files which was given to them through the end of november but that was not a production of a number of sales right that was just access to documents that was that because that's what they requested was access to the documents it was given to them there was was a final request