paragraph six everybody agrees that an algorithm must be disclosed to satisfy that and the issue is what is the algorithm various positions very straightforward  algorithm is spelled out in column five for the patent question that our rhythm is described in terms of words like requirements in terms of words like an important is an aspirational statement it's an introductory statement it's preceded by the words as will be discussed fully and those words are followed by column five which starts out by saying detection of motion of the patient which is why this clause is all about and then it describes what the invention is he says certain requirements are involved the requirements are detection of to do shoes  using using templates of fine tuning tracking using templates and then determining the direction and movement of the fiduciary those of steps not structure of correct these it is structure because it's described in terms of what is done as shown in figure six which shows that there are four steps involving structure tracking which is also done using equipment and involves using templates to determine the direction and extent of movement where the span of contention that the part you run there's been no contention that we're not talking about line that's exactly right your honor and harris versus erickson case which was relied on by the special master and the district court for the opposite reason actually helps very in this in that case there was a two step algorithm and the special master and the district court judge said well two steps in harris first erickson two steps here that case supports us what the district court in the glass did to notice and what the special master neglected to note was that in person erickson those two steps were described as the invention and that's exactly what these four steps are described in this case as the invention now it is also argued that there is a claim differentiation issue here because some of the sub steps that templates the fine tuning and whatever are set forth in dependent clients but the fact is that the basic rule in a means plus function situation is that you don't look at claim differentiation and while there is one case the that is relied on the wenger case which said that there are certain situations where the functions don't originally below you argued that there needed to be thirty step in the structure crack we argued both thirty steps and four steps and we argued thirty steps which i think would be appropriate following  figure six which is the overview of the into our system and we also argued that a a preferred algorithm is the four steps because those steps are described in column five succeeding columns as required and being specially important so we think it would be appropriate to find very steps and we think this case could be decided with four steps and the fact is undisputed that pensions being necessary but where we are does the specifications say that about two hundred which i guess of as one of the other thing signals and that appears in column eight lines seven through seventeen and the reason that is included it's one of the four steps in the overview chart which is in figure six but the first three steps do not provide the bottom line of the claim for bottom line of claim that it has to include movement associated with freezing by said patient and the only place with that appears is the m step two hundred which is described in the column a language that i describe which ends with this would include movement associated with breathing or tremor of the patient without that honor there are three aspects to that point the first aspect is that claim twenty is a intended use claim it's a claim that talks about the reason it is not a suitable basis whether to resist several reasons one is the district court provided the jury instruction that called for two separate worlds one for the bean generator and one for the r p m we have found no support for a single claim providing for double royalty and not only that we think it is grossly improper to do that because what they're able to argue before the jury was exactly what this court prohibited in the uniloc case revolved different facts you argue you can see that rule that kind thirty eight would encompass to the generator and the operation within the beam within the system that that includes the center we do your honor but the problem is that claim thirty eight came in after reexamination during the reexamination so if claim twenty two does not cover a  generator but is merely an intended use like barred him three systems which we think is totally analogous then the damages would start to run after the reexamination and that would cut the damages by ninety percent so  very significant as to whether or not claim twenty two covers had been ten years saying that there's nothing in claim twenty two that goes beyond claim twenty except the fact that you could use it in conjunction with a beam generator claim twenty two has to be two provisions that go beyond claim twenty one is intended use with a beam generator and then also getting means which is in which is  your honor claim twenty is generic yes it is a jerry claim which would cover anything but the question is what out what is the royalty base for crying twenty if you want to use your  argument doesn't depend on whether the beam generator is is described and points on your client point to him you're saying whether it's described there as part of the combination or not you still have to satisfy the right your honor that's not quite that's not true but that is not you asked me what our position is our position is based on two grounds one is that the garrison case which which is the combination that you because it's not new it's not something that's novel under this patent that you can't get damages with respect to it unless you show that the sale of the accelerator is driven by this component now your honor that is true except let me clarify the point we say the garrison case has spawned two lines of cases one is based on the entire market  rule in which what you said is exactly true another one is not based on the entire market theory rule and it's supported by the second third six cases in some recent cases the data quo case in the pace case the data quo case interpreted that second line of cases where you have a combination where the elements are in the combination and where one of the elements is an old element and an old system that exists that existed like a windshield wiper in a car if you  table right and it would be a different announced that you're gerritsen second line announce crack not correct for this reason the data call case has that kind of a situation had a combination claim and it said they applied the entire market value will we say even if the entire market didn't apply on the gerritsen there's a second line of cases that says that when you have a combination consisting of something like we have here a beam generator or a linear accelerator which is what it's part of which existed before which was sold independently and which is billed independently we say that the the the damages base should not include the linear generated even if crane thirty eight was in there from the beginning ok so the but isn't it true that with the ga pacific factors that they encompass is all the concept that garrison and progeny were concerned about so for instance you've got your g p s hypothetical and you say well you know you can't just take a g p s off the shelf and stick it on the dashboard but what if the g p s is part of the car and it actually is the mechanism that starts the car or turns the lights on in the car  isn't it true that there could be a value to that g p s when installed in conjunction with the old elements that the greater than just the off the shelf it wouldn't be the total value of the car for sprint but it greater than just the off the shelf  or for as do all the ga pacific factors do not cover a situation where both elements are in the same crane we just we face a point secondly we submit under the second line of garrison cases you should not included it should not be part of the damages based and you should not look at it because it was a separately existing products sold separately billed separately and you should not include thirdly we think it was totally improper even in fact under thirty eight it is this product that actually initiate the beat right turns it on or rather than simply is something that you can measure that the movement of the patient's breathing beam in the machine it is there's no doubt it is used in conjunction in conjunction with the r p m our point is it can be used without this r p m it was used with gating mechanisms before this lawsuit ever started think thirty five years and all i'm suggesting is that under the line of cases we've cited the second third six case six circuit cases and the data quillan pace cases they would not agree with that there can be no incremental greater value from the fact that it does more when in the machine that it would do on its own i think the answer to that is these cases would not include the the accelerator or the beam generator and the most significant it would for the drove the demand for it if it affected the demand for the literate celebrator the people bought more lunar accelerators because they could get the item with then that would be s i would say interesting question if you satisfy the entire market value rule doing that you might argue that one should include it but under no circumstances should you include these two elements as separate aliments and permits the lawyer for their version of pittsburgh to go before the jury and say there is billions of dollars worth of sales here so this royalty is just a small amount of royalty has done a good run over time and that's because we've been asking the questions will give respect to the structure and there's actually several reasons why that that the district court's decision that regardless is appropriate and why variance sort of thirty versus four alternative doesn't give you any basis to find an error there the first that i think i worth noting is that one of the things you are your precedent says we do if we're trying to ascertain what is the relevant structure as we say what would one skilled in the art regard as the relevant structure of the record in this case contains the declaration why why should you get a royalty on something that is not novel and whose demand is unaffected by being combined with this particular component let then to this first does the does the entire market value rule apply in the situation which is what which i think is part of what you are owners of the point is that you can write any claim to include an old element and just say well because we claimed as a combination we ought to get a royalty element as well but think about the question that you're being asked to decide in this case the jury was given the opportunity to conclude by applying the georgia pacific factors that an appropriate warranty on the beam generator was zero in fact the very first question they asked during deliberations is whether they could award zero in this case very and called no expert at all to testify that they weren't told that the  item here had to drive the demand for the accelerator but but they were correct that's true that's true that because that entire market value and entire market value if you entire is a broadening term and we can deliver for years i remember him right the titans a little bit when you're talking about convoy goods correct and this is your view that cases have really sort of reversed the meaning of the word entire and tightened up the the base so to speak i think your honor what your cases have recognized is that the place where you draw the line in thinking about what the relevant royalty base can be is that the point where the patent what the patent covers and that when you venture beyond the scope of the patent that is with convoyed goods with with other non patented items when you go there then you have an entire market value issue because in that scenario then what you have to do is is it is appropriate you're extending the patent protection to things other than what the patent covers  o it's a diner stand your argument and frankly as i understand this with conceded below and by the other side here that if in fact all you're talking about is patented items in in conjunction with an patented item then you're talking about the entire market value that's but if you're talking about claims that include some things that were known in the prior art and that are actually patented because there is part of the claim that you're outside the bounds of the tire market value rule and then the question becomes whether we go down mr dunn or secondly gerritsen type analysis or whether you can apply a broader  n all of the normal factors that would allow us to determine what the value of the of the combination i think your honor has a right with what's being advocated is it is not the entire market second six circuit cases and so on you're talking about cases that were decided back in the early teens of the last century and they're dealing with quite a different problem which is the problem where at that time the path of law recovery was focused on essentially the confiscation of the profit and the courts were struggling with the fact that surely not all profit should be taken here if we move forward to modern time when we're dealing with the royalty regime as your honor i think at least raised as an issue in one of your questions judge o'malley the georgia pacific framework has built into it factors which allowed the jury in this case where as they say it was given the affirmative option of old in the claim your honor i think it is perfectly can i mean the patent if it is something which is permissibly patentable under the patent statute then i think it's a call in terms of deciding what is an appropriately royalty for  that that there's nothing unfair about doing what happened here at that is to give the jury the opportunity on the record to assess the relative contribution of the of the new innovation versus the versus what existed before are you saying it's not just a question of claim drafting a claims well i think your honor i guess what i would say is that if that's a problem then i think maybe the way that gets dealt with is through other techniques i mean it it including the question of how claims get defined originally perhaps and here vets limited to the means plus function issue we don't have a definite issue with respect to the the means plus function determination i think it implicates other protections like the daubert scrutiny that one would do at the gatekeeper function for expert testimony on the subject and here of course there was no expert from the other side who even debated the subject of what the world team would be being generated they simply took the position that it was an all or nothing proposition and as i read your expert testimony as i understand it he didn't say just give me some percentage or whatever that the big ducktails exactly into certain of the georgia pacific factors i don't think i can quote thirteen entirely but if you look at the last part of it it has a specific reference to what else was contributed into the machine itself and that's true of other factors as well and again what what what variant is advocating in this case is essentially an all or nothing proposition they're asking you to say that we should adopt a rule which which conclusively sort of  context of a situation where lighting conditions and other wires are going to require that kind of fine tuning in and i think the point is that if you look back to this court's precedent about what we're looking for as the required structure relooking for what's necessary it isn't necessary it isn't required under the court's precedent to talk about entirely everything that's necessary to make the thing work and so i think you have to that doesn't have to  that's i think that's the normal case which is cited in our briefs it's not it's not essential to include but but i guess my predominant point here is that it's it's not something which is going to be required whenever you use the machine necessary to perform the function of shapes appearances and lighting conditions to which the food are subjected and it goes on to talk about how these things can be modified to accommodate conditions if you furthe required by the particular lighting and other conditions that are present and i commend to you independent claims nineteen and two to look with in comparison because if you look for example at independent claim nineteen what you're going to see under the processing means is the discussion about the use of templates and a successive process of zeroing in on what's going to be tracked and so i think that that's a means plus function claim as well now claim twenty is a broad claim and i think the question then of how the court decides what is the relevant part of the structure i'm sorry the specification which point you have a general claim twenty it doesn't have this filtering limitation you'll find that in some of these other narrower independent claims those are means plus function claims as well you have to select a structure to associate with provisions so it talks about that that the generator is configured to provide computer controlled multi beam khan a formal dynamic radiotherapy so in that sense i think it's a little bit that's the from the point of view of doing this in a claim construction exercise i think that's how you differentiate the two i'm trying to understand what the difference is that it's just different than the way you saying you know a rose by some other name what is the difference i think it what it does it's designed it's designed to be more specific in describing what the what the beam generator is going to be doing in effect what its purpose plan thirty for the comprised treatment with the being generated by being generated by the little there are there is your honor but but i don't but i don't want you to think that the comprising language plays some crucial part here because let's focus on the other part of what claim twenty two requires first it speaks about the fact that there will be actuation that is of the beam generator which which which is a controlling function and the other thing it does which is important to keep in mind here is it let me respond to that your honor there's we did not we did not purport to comply with the entire market certainly but there's all sorts of evidence in the record that varian regarded this variant when this when it started selling r it regarded it as a huge competitive advantage it described it as giving itself a unique competitive edge on others it described these this combination as a total solution for customers which would enhance its ability to be in the marketplace so there's there's not i don't i can't say because because it's not really not relevant it's i can't say we satisfied the drove all the demand juries example of mind the car because  should be taken into account as damages and one last question if if we were to conclude that your construction of client twenty two was not correct would you be able to receive any frank i believe it's the case that the record here and the relevant figures with respect to sales were broken out so one could ascertain how this royalty would work if you limited it to the to the reissue patent time period with respect to the current damage award but but i i i can't i'm sorry i don't know whether there's been some new technology or other change maybe mr downer has an answer to that thank you mr fayed assumes to donna has three minutes for a bubble and you start with my last question and you start with my last question because before i asked you about same thirty eight you said it didn't matter because of intervening right so that there wouldn't be anything left and so what is your question if in fact we agreed with you that claim twenty two does not really cover that that the full apparatus and the system and we're to say that that the only way that that  generator would be compassed with in any possible recovery of damages would be under claim thirty eight would they be able to get anything under thirty eight claim thirty eight would cover a small percentage about ten percent of the total damages if claim twenty two was not available to them to cover the system and we cover damages after reexamination assuming that they got past the hurdle of the current construction issue let me just talk about a few things one judge dyke i think you are exactly right on when you focused on the language in common five mr peterson is talking about special lighting conditions that isn't what column five is talking about column five says in order to practice the invention with fine tuning with templates and so on in order to get robust results you need to do all these things fine tuning is talked about the advantage in various literature the very end of this combination if you look at the testimony in question they were talking not of the linear accelerator or the beam generator but of other accessories they added clue same question was asked why i think judge o'malley says why did you add queen thirty eight given your viewpoint twenty two well i think the simple answer here is a testimony that says that it's