the surgery the district court's decision below reflects two fundamental areas of patent law the first is that having found that afrikaans is demonstrated in one or two g prior invention to tycho or a publication requirement neither obligation exists under one hundred two g b this court's decision in kimberly clark deals with the issue of known to the inventor and into ponce dischord dealt with the known in the art can we can we just for a moment leave the cases aside i know the reader coverage we talk about clemens and kimberly carter and so forth and there's a bit of a dispute but leaving all that aside and just turning to the policy questions isn't there an argument to be made that even though under one o two g s you can't have secret prior like you can't have concealment at least that that's still something different than what we otherwise think up as something being the prior art that there's still some daylight between of known requirement i did to the art or to the patent he could have put that in the statute it did not but we're dealing with one of three here we're talking about whether or not this was prior right under one of three and once and once it is a that is that it is a one on two g prior invention it is prior art and there's no basis upon which to say well it should be in to support the claims but it shouldn't be used in an obviousness analysis because it is prior art that's the point of one or two g and there's no basis to somehow create some distinctions based upon either the way you demonstrate one or two g b of let's go back to the  there was an abandonment of suppression or concealment and here there's no evidence of any of that at the trial court found so you have a straight out proof of one of two g prior invention and once that has been used once that statute stache to a requirement has been satisfied it is prior art and should be treated as prior art for all purposes so what let the district court judge astray here just the language and i believe that's true your honor because certainly tyco didn't even argue below that the heirs of a known in the order are known to the panty requirement what they conceded in their conclusions of law is basically the the art which they were attempting to argue was one of two g there was no reduction to practice but as to another piece of art they found an absent claim six they did found that there had been a reduction to practice in the invalidated that claim so when you look at the holding of clemens it's clear that their discussion of secret prior art is clearly different because it had no bearing on the ultimate decision as to the two underlying pieces of prior art that that were at issue in that case and then following that in cuba leak or it dealt with the issue of does it have to be known to the patentee and they said no and then into ponds they said look there's nothing in the statute that because you could have reduction you could have a reduction too to practice before and it could still be quote unquote secret or you could have it pass the second path with the district or fence i don't think it really that period we have weekly reports we have tests being done they point to a gap they say from september of ninety six to february of ninety seven basically from september and november is i would say irrelevant but if you look at the at the appendix sites in our brief you'll see and look at a critical period let's say november of ninety six to fifty wary of ninety seven you have there's no cause they say there's a gap there gap is there's no weekly report but there is in the record evidence at a one three eight seven five of a december test on to shoot in november of ninety six we have the engineering drawing and the creation of this prototype in january we have tool testing and bench testing and then on february sixth dr our all does his videotaped test with a with a goat so throughout and then from ninety seven a constructive reduction to practice and then ultimately an actual reduction to practice which would come with a commercialized product in early one thousand nine hundred eighty so if we even if we agree with you on whether or not this was proper that the the obviousness analysis changes fundamentally because the district court in its opinion didn't treat it as a prior invention and therefore started with davis in davis and doesn't have a tube into construction it doesn't have the isn't the preferred embodiment it teaches a way that's contrary to just this panel so this court's law there's no criticism as a matter of fact the concept of the curb late in the section title invention but if you start to get the control of type as the closest piece of prior art which it clearly is because it has all the elements you start from a fundamentally different place and the claims obvious and let me explain why when you start to get a concret type you have all the elements it's the closest piece of prior art what you're lacking is a curved place you don't have to go now to disparate  to find the concept of a curb plate it's right there in the next closest piece of prior art davison it teaches it now the district court in attempting to distance davi you make it basically you want to enlarge the size of the plate and plate size is not an element of the claim they just went to two cans it went from one to two so that's fundamentally different then the district courts approach because it didn't consider the ethicon prototype as prior art it started with davison which doesn't have a cam and then went to our  six two prior reference which is a surgical staple now we would disagree with district court efforts to distinguish e p six six two because it's not an energy based device energy has nothing to do with the teaching of six six t jaw for any type of surgical mechanical instrument but you don't even need to go there your honor because we would we would submit it is obvious to simply go from one ca too now there experts said well yes that would be the obvious if what you consider the at the conference type as a prior art reference yes it would be obvious to go from one to take it from the bottom going to large as our experts playing here some simple mechanical choices here if we disagree with you about it have to get to the p p do we have to send out a determination i think you are in the motivation of i would have to court just read the summary of invention e p six six two it says basically look we're giving you and your structure and a mechanical a simple mechanical means to open and close this this device and it can be used and then it type shit what you might know i get a good result what's here we know we got a good result because you got a functional commercialized product so their expert opinion doesn't have pressed to come up here and complain about the entire market value when your experts all of a lie but your honor we don't we don't bear that burden and we and we moved for jama well on that point that there were they couldn't rely on it yes our experts did but they bear the burden of proof on that point and here what they did was they took a they took a bunch of features and they threw me up on the wall taking the risk that the district court might say well you know most of those who are in the pro are invalidated in the prior art they never sought to show the distinct value the incremental value of this court has noted in lucent and subsequent cases that what we're really trying to do in this case is let's figure out what's the incremental value of a curve late and have a dual camp and this courts and the just reported well you know it may be driving  driving some consumer demand no evidence of that as a dual camps and what the district court ended up relying on because their experts didn't do it they said well their system masonic five percent license and because your competitors were going to occurred late and so that again courts started with a fund that would have a fundamental problem which is it started out with a lot with looking at licenses covering the entire spectrum of the device when hear what the district the con is right about the prototype properly being considered prior or not is not fatal to our case because indeed the court considered the prototype in finding non obviousness of the dual cam and per plate claims i was just about to get into that but on the one of the two g one o three issue it wasn't just that the court said well it's not prior art because it wasn't published as ethicon is trying to say indeed the court specifically said that clark the court specifically stated quote the dispositive issue in clemens as here was whether there had been a prior reduction to practice that's a page four hundred forty four after saying that kimberly clark considered the work of two inventors champagne and mobley for champagne and said champagne has proved a production of practice so that can be considered prior art from overly there was no card after the practice it was not considered for art at the authority for that let's assume we reject that and you say your argument is still left with the good obviousness case because the common absolutely first of all even if you can consider the prototype as prior art with respect to t design which wasn't working to incorporate dual cams is an insignificant change that eight to nine six six eight two nine six nine the only others and it was just a general and the only other thing that dr similar testified to was that there were a limited number of types of clamping mechanisms being scamming mechanisms rod linkage mechanisms and gear rack mechanisms that would make the dual of ham an obvious design choice to add to the prototypes that's based on a small fine a number of things mechanism would be an obvious choice but that doesn't go to the actual structure and variations of structures needed in fact at the cons own or indeed documents and employed testimony contradicted dr summers opinion because in july one thousand nine hundred seven when they went from the single tab design didn't work to do a cam they considered over forty different than redesign ideas moreover and more importantly in response to dr sim dr dirk he testified at length about why the tool camp was not obvious he says you know it may be obvious to try but that in itself does not teach how to actually achieve an effective mechanism he says doesn't teach how to achieve an effective  due in part to the presence of the vibration rod the runs down the middle he talked about the difficulty of getting the cam system to operate where there had to be a balance of strength and clamp force  talked about the complexity of getting each of the chemicals equally sharing the load on and on and on so what happened here was simply the court credited dr derby's testimony over doctors mr someone else testimony found out that the it was they're adding all these difficulties and said that further evidence that it wasn't obvious to go through the will cam in fact if they were having all these problems for two years and they say it's so obvious to go to a dual cam as a solution why did take two years implement so there was evidence on the record specifically addressing whether the dual cams were obvious in view of the prototypes that were standing there suggesting it wasn't there but for at the least and not cases how can you justify the district court here having relied on the entire market value ok that's an excellent question base indeed it was the instrument itself now the instrument itself as a sole and unitary function that sold in unitary function is to cut and quickly to ship nothing more rationale for invoking the entire market value as a matter of law is that a correct statement in the end it doesn't matter because she rejected the lost profits now says and when you get to the world you know moses which he basically was is this instrument that has a single function to clamp cut and seal and that's performed by the very patent features we're talking about so when you come down to it this is a small saleable patent practicing unit no question and more importantly there was no evidence whatsoever provided by either party frankly that there's any way to further separate out the future from the invention so this is similar to laser dynamics where if you use the old d d that would be a small sell pad practicing unit the mistake was to go to the full software for the full computer now we could have done something larger we did which is very smallest piece so in what happened was and it reflects market market reality and regional office because if you look at the license agreements that are available to the court and available to both experts they focus on the instruments so they do the very same thing and what the court did here specifically was take the doors of civic factors which includes nine in ten which go to the value of the patented feature and also eleven which goes to devalue the patent the trip to africa and the court factored out of that when the when the experts had their review of the facts and came up with their opinions their expert says you know what topic can be five percent our protest on lawrence to twelve percent the court found as a percentage and did exactly what was unsaid to do court will only consider the role of the curve blade technology and add power of the dual cam design which are features that may have played a role in the man for the accused products but would not be so consideration between the parties or five of the stage the so again this is not like a computer we have various apps and various features all of which have some value but certainly not the value of the computer here you have the cam take a step sideways from that is my understanding of late is not a mix also a stablished that one way to and a proper way to assess the reasonable royalty is through using as a base the and what your main market demand that that consumer demand for that piece of privacy the souls of the of the rather it said pettitte feature that drives consumer demand ok and my understanding and you can certainly correct me if i'm wrong thing that your case is that laser then i'm just steps that it's entirely appropriate to use the smallest saleable patent practicing unit in which case you don't have to show that demand you do if could call a rabbit you know something of an elephant but it's still a rabbit in effect what was applied here by the experts by both sides and by the judge was a royalty base which was indeed the smallest sellable patent practicing unit so whether you call it entire american value rule or close something else the point is in fact it was application of a role to base which reflected the smallest saleable patent practicing unit in fact we pulled away everything that was sold separately even though it was part of the claims basically stripped this down to basically the planting mechanism and the blade there isn't much more other than the housing and the and frankly the vibration rods which ends in a blade you don't sell the separately there's good reason this thing operates a fifty five thousand dollars you wouldn't sell a blade separate that you wouldn't want pieces in fact the blade is part of the vibration rot you buy and you throw it away for good reason you want to have a unitary structure to of cutting privately because of this vibration so we're down to that and that's why we don't need to show customer demand but i believe that our demand for the curve laid the center is shown at our priest between fifty and fifty five and the demand for the fuel camp has shown fifty five to fifty seven i should mention just to make clear that our evidence of the man through the door camp is because as dr dirty testified and the court found and was was one of the additional features the drug demand we saw its fitting done five millimeter and for light and the court specifically factored out that part of the demand and said i'm factoring out those features and i'm left with her on all of the georgia pacific factors the the experts looking at the facts on both sides that's what's what's the base what was it multiplied against it multiplied against the average selling price of that unit that i'm talking about it's the smalle that you have to approach you have to still do the apportionment because even in the smallest syllable union unit there aren't non infringing features that have to be accounted for you can't just say because if it's the smallest syllable unit we can use  entirety and we don't have to account for those other features fairly and i we all we i want the laws there i would agree that you have you cannot get the benefit of the non patent features if they're separable there are going to be times when they're not  case the court found that for example a rotation was separable and it factored out that that is the apportionment so what was the evidence that you say is in the record with respect respect to driving demand so the evidence of driving demand is the myriad of documents produced by ethical and from their marketing documents saying what the surgeons need and that includes rotation the three things that are the parts talked about on driving demand were rotation fitting tycho's conception or reduction in practice so you're talking about really the other cases where she found the other twenty six claims or addressed something to the nation absolutely so conception is this court well knows by definition requires a definite and permanent idea of dr gallagher who is in charge of this testing admitted it was balancing trial and error it was basically trial and error that's what you testified to in july and august one thousand nine hundred seventy the project was placed on hold this is after we conceived and reduced of the device implementing other ts specs so it wasn't until and they never reduced it to practice safe they never came out with as the as is required application in practice so now you have the idea of the d cam which is on a later date that's what they got to work that's when they came up with a complete inoperative invention as if they're after applied in practice and that's what they put to practice ok i think i'm going to need to round it out we got a long morning here and you work on a product that could be commercializing to be used to cut larger vessels yes and that was achieved by going to a larger blade that's what all the elements remain the same and whether it's one came or two to this court did discuss in the context of a simultaneous invention not of prior art but the motivation is you want a larger blade you know now the motivation is to simply go to one of a simple mechanical alternative to a single camp is the dual camp you just move them to the side is there are kids teaches dual camps yes if p six six to now what the district court one that's factually wrong because of the single cam device could fit down it but more importantly the dual cam claims don't require the ability to fit down a five millimeter trocar it's not an element of the claim so in your obviousness analysis you shouldn't look at this ability to fit down a five millimeter trocar that also goes to the damages point they say well you know allowed you to fit in a five millimeter or in the air for that shows i don't see how it shows consumer value but it doesn't it's not even an element of the claim and so it's it's it's a red herring to start talking about the the latter reduction to practice i would call the court's attention to the monsanto case in the monsanto case that it was one of two g was proven by the alternative route of earlier less i know i'm limited to the cross appeal so the only observational make is mr cavanaugh seem to suggest that the sea is the vessels were i'm sorry the size of the vessel was an issue that there was appropriate feeling of small vessels so i just want to say the course specifically concluded in the intended purpose for the prototypes for the reduction to practice analysis is only that the vessels and sort of devices of or able to effectively cut and quickly during surgery and the details