Mark Lemley loses at CAFC; the intersection of KSR and design patents

The outcome of the case was that LKQ (represented by Mark Lemley; MARK A. LEMLEY, Lex Lumina PLLC, New York, NY, argued for appellants. ) lost its appeal:



LKQ Corp. and Keystone Automotive Industries, Inc. (collectively, “LKQ”) appeal from a final written decision of the U.S. Patent and Trademark Office Patent Trial and Appeal Board (“the Board”) holding that LKQ failed to show by a preponderance of the evidence that U.S. Patent D797,625 (the “’625 patent”) was anticipated or would have been obvious over the cited prior art before the effective filing date. See LKQ Corp. v. GM Glob. Tech. Operations LLC, IPR2020-00534, Paper 28 (P.T.A.B. Aug. 4, 2021) (“Decision”), J.A. 1–60. For the reasons provided below, we affirm.



Judge Lourie wrote additional views to the per curiam opinion.



The panel resolves this case by determining that substantial evidence supports the Board’s conclusion that the claims of the ’625 patent are not unpatentable as anticipated or obvious. I agree. I write separately to respond to the assertion by appellant that the Board improperly relied on our predecessor court’s Rosen decision for its rationale in deciding its case. Appellant argues that Rosen, whatever its validity at the time it was decided, is inconsistent with, and hence was implicitly overruled, by the Supreme Court in KSR. The panel resolves the case without having to reach this issue, but I comment separately on the argument appellant raises, but which we do not reach. Rosen was decided by the Court of Customs and Patent Appeals in 1982, sitting with its usual en banc panel of Judges Markey, Rich, Baldwin, Miller, and Nies, hardly a group unversed in patent law. Rosen, in reversing the Patent Office’s Board of Appeals, stated that “there must be a reference, a something in existence, the design characteristics of which are basically the same as the claimed design in order to support a holding of obviousness.” In re Rosen, 673 F.2d 388, 391 (C.C.P.A. 1982) (citing In re Jennings, 182 F.2d 207, 208 (C.C.P.A. 1950)). Appellant argues that the Supreme Court in reviewing Teleflex, Inc. v. KSR Int’l Co., 119 Fed. Appx. 282 (Fed. Cir. 2005), a non-precedential decision of ours that recited almost as boilerplate the longstanding requirement that, in evaluating a combination of references asserted to render a claimed invention obvious, there must be some teaching, suggestion, or motivation shown in the prior art to combine the references, overruled Rosen. The Court stated, “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation . . . .” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). The Court did note that the teaching, suggestion, and motivation test “captured a helpful insight,” but it found it overly “rigid.” Id. at 418. That essentially is the broad concept that appellant now asserts has overruled an almost forty-year-old design patent decision that this court has been bound to follow and has continued to follow in the decade since KSR was decided. I disagree. First, KSR did not involve design patents, which is the type of patent we have here before us. Utility patents and design patents are distinct types of patents. Utility patents protect processes, machines, manufactures, compositions of matter, and improvements thereof. But their inventions must be “useful.” 35 U.S.C. § 101. A design patent protects ornamentation, the way an article looks, 35 U.S.C. § 171. See M.P.E.P. § 1502.01. Claims and claim construction in design patents are thus quite different compared with utility patents. See Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1294 (Fed. Cir. 2010) (questioning how “a court could effectively construe design claims, where necessary, in a way other than by describing the features shown in the drawings.”); Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc) (citing Dobson v. Dornan, 118 U.S. 10, 14 (1886)) (finding that a design is better represented by an illustration than a description).


While 35 U.S.C. § 103, which deals with obviousness, does not differentiate between types of inventions, and hence applies to all types of patents, the considerations involved in determining obviousness are different in design patents. Obviousness of utility patents requires considerations such as unexpected properties, utility, and function. Design patents, on the other hand, relate to considerations such as the overall appearance, visual impressions, artistry, and style of ornamental subject matter. Ornament is in the eyes of the beholder. Functional utility is objective. What is the utility or function of something that is ornamental? To be sure, it may also be functional and have use, as do the fenders in the case before us, but that function is beside the point when considering whether its ornamental features would have been obvious. And what is an unexpected property in the context of design patents, for it must be related to ornament, as function is not to be considered in evaluating obviousness of a design? Obviousness of an ornamental design thus requires different considerations from those of a utility invention. KSR did not address any of these considerations, and it did not even mention design patents. Surely, it did not intend to speak to obviousness of designs, and what was said about a test long applied to utility inventions was not indicated to apply to design patents. It cannot reasonably be held to have overruled a precedent of one of our predecessor courts involving a type of patent it never mentioned. A comprehensive review of obviousness in design patents, Overcoming the “Impossible Issue” of Nonobviousness in Design Patents, supports the view that “KSR has very limited, if any, applicability to design patents.” Janice M. Mueller and Daniel Harris Brean, 99 KY. L. J., 419, 518 (2011). It further states that, “[m]ost of the KSR Court’s discussion is completely irrelevant to what design patents protect.” Id. It notes that “[t]he subject matter of a design patent is fundamentally different from a utility patent, as evidenced by the separate statutory provisions that define the eligible subject matter of each type of patent.” Id. “Indeed, a patented design ‘need not have any practical utility,’ the antithesis of a utility invention.” Id. Second, while Rosen may have overstated its point in adding to the quoted Jennings language such as that the primary reference must have design characteristics that are “basically the same” as those of the claimed design, this statement hardly reflects the rigidity the Court was condemning in KSR. 673 F.2d at 391. And finally, Rosen was not essentially incorrect. In any obviousness analysis, the question is whether the claimed invention was obvious, but obvious over what. One has to start from somewhere. See K/S Himpp v. Hear-Wear Techs., 751 F.3d 1362, 1366 (Fed. Cir. 2014) (finding that an examiner may not rely on his common knowledge without a supporting prior art reference) (citing M.P.E.P. § 2144.03).

Uanticipated hazards in the court house

A lot can go wrong when one goes to court.


One thing one does not usually worry about is a killer soap dispenser, the squirts one's torso, rather than hands.

CAFC overrules conclusion of indefiniteness in Grace Instrument case

The outcome:


Grace Instrument Industries, LLC (Grace) appeals a claim construction order issued by the United States District Court for the Southern District of Texas finding the term “enlarged chamber” indefinite and construing the term “means for driving said rotor to rotate located in at least one bottom section.” As a result of the district court’s order, the parties stipulated that asserted claims 1, 2, 4, 5, 7–9, 11, 14, 15, and 17 of U.S. Patent No. 7,412,877 (’877 patent) are invalid and that claims 4, 5, 7–9, 11, 14, 15, and 17 are not infringed, and the court entered final judgment in favor of Chandler Instruments Company, LLC (Chandler). Because the district court erred in its analysis of the term “enlarged chamber,” we vacate the district court’s determination that “enlarged chamber” is indefinite and remand for further proceedings consistent with this opinion. We affirm the district court’s construction of “means for driving said rotor to rotate located in at least one bottom section.”


AND


A “patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014). “The ultimate conclusion that a claim is indefinite under 35 U.S.C. § 112, ¶ 2 is a legal conclusion, which we review de novo.” Cox Commc’ns, Inc. v. Sprint Commc’n Co., 838 F.3d 1224, 1228 (Fed. Cir. 2016) (citation omitted). “As in claim construction, we review a district court’s underlying factual determinations for clear error.” Id. (citations omitted). Moreover, “[a]ny fact critical to a holding on indefiniteness . . . must be proven by the challenger by clear and convincing evidence.” Id. (alteration in original) (citation and internal quotation marks omitted).


(...)


Thus, although “enlarged chamber” is not a term of art, the intrinsic record sufficiently guides a skilled artisan to the meaning of that term as used in the ’877 patent. The district court erred in its reliance on extrinsic evidence— i.e., dictionary definitions—that contradict the scope and meaning of “enlarged chamber” that a skilled artisan would ascertain by reading the intrinsic record. See Phillips, 415 F.3d at 1322–23; see also id. at 1316 (“[O]ur cases recognize that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess.”); Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016) (“The only meaning that matters in claim construction is the meaning in the context of the patent.”).


THUS


In sum, we find the term “enlarged chamber” in the ’877 patent to mean “a chamber that is large enough to contain excess test sample prior to pressurization to prevent mixing of the test sample and pressurization fluid in the lower measurement zone when the test sample is pressurized to maximum rated pressure.” We thus vacate the district court’s determination that “enlarged chamber” is indefinite, vacate the district court’s invalidity determinations based thereon, and remand for further proceedings consistent with this opinion.

Synqor loses at CAFC in appeal related to DC to DC conversion

In Synqor v. Vicor, the final result at the CAFC was:


In 2017, we affirmed-in-part, vacated-in-part, and remanded the Patent Trial and Appeal Board’s (Board) decision in an inter partes reexamination of U.S. Patent No. 8,023,290 (’290 patent). Vicor Corp. v. SynQor, Inc., 869 F.3d 1309, 1312 (Fed. Cir. 2017) (SynQor III). On remand, the Board held all of the ’290 patent’s claims unpatentable under 35 U.S.C § 103 over two different combinations of references. Because the Board’s fact findings are supported by substantial evidence and its unpatentability determination is correct as to the second combination of references, we affirm.


The technology


The ’290 patent is entitled “High Efficiency Power Converter” and claims a system for DC-DC power conversion— i.e., converting a direct current (DC) source from one voltage level to another. ’290 patent col. 17 l. 9 – col. 18 l. 35. The ’290 patent is part of a patent family owned by SynQor, Inc. (SynQor) involving DC-DC conversion, and we have previously discussed that technology in SynQor III. See 869 F.3d at 1312–15. The ’290 patent family describes a “two-stage architecture” for DC-DC converters, which SynQor refers to as “Intermediate Bus Architecture” (IBA). Id. at 1314. The ’290 patent claims a particular type of IBA converter implemented using switching regulators. Id.; ’290 patent col. 17 ll. 26–30


Overview of arguments


We review the Board’s ultimate obviousness determination de novo and its underlying factual findings for substantial evidence. PersonalWeb Techs., LLC v. Apple, Inc., 917 F.3d 1376, 1381 (Fed. Cir. 2019) (citation omitted). Relevant here, factual findings underlying an obviousness determination include: (1) whether a skilled artisan would have been motivated to modify the teachings of a reference, and (2) whether there is a nexus between secondary considerations of nonobviousness and the claimed invention. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327, 1331– 32 (Fed. Cir. 2016). A patentee may establish nexus by showing that the secondary considerations evidence is a “direct result of the unique characteristics of the claimed invention.” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373–74 (Fed. Cir. 2019) (quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)). For patents claiming combinations of prior art features, a patentee must show that the secondary considerations evidence is “attributable to the claimed combination of [prior art features], as opposed to, for example, prior art features in isolation or unclaimed features.” Id. at 1378 (citing Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023, 1034 (Fed. Cir. 2016)).


Of secondary considerations


SynQor’s arguments fail because it has not shown that its relied-on success, skepticism, adoption, or praise, etc., were a “direct result of the unique characteristics of the claimed invention”—in this case, were “attributable to the claimed combination of [prior art features], as opposed to, for example, prior art features in isolation or unclaimed features.” Fox Factory, 944 F.3d at 1373–74, 1378 (citation omitted). We do not discern any showing by SynQor on appeal before this court or in the Board proceeding that there was a nexus between its secondary considerations evidence and the claimed combination of features in the ’290 patent—i.e., an IBA converter using switching regulators.


Of waiver of arguments


SynQor did not make either of these arguments in its opening brief, and thus these arguments are waived. See SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1319 (Fed. Cir. 2006) (“[A]rguments not raised in the opening brief are waived.”). AND SynQor’s remaining two arguments were not presented to the Board: (1) skilled artisans would not have been motivated to select Steigerwald ’090’s circuit for modification because two-stage architectures had been discredited, Appellant’s Br. 57–58; and (2) Pressman teaches away from using a two-stage architecture, id. 61–62, 65. SynQor forfeited these arguments by not first raising them to the Board, and we decline to address these fact-bound contentions in the first instance. See In re Google Tech. Holdings LLC, 980 F.3d 858, 863 (Fed. Cir. 2020) (explaining that an argument not presented to the tribunal under review is forfeited absent exceptional circumstances).

"Sign of the Times" in the 21st century

IPBiz posted a "sign of the times" reference on empty showrooms of car dealers:

Thu, Jul 22, 2021 at 4:12 PM IPBiz: "Sign of the Times," revisited in 2021 http://ipbiz.blogspot.com/2021/07/sign-of-times-revisited-in-2021.html


See also: https://youtu.be/rhKTqdSwx2I


Now, as to more fundamental things, such as food (rather than cars), note the folloing

Dionex v. Agilent: interference case

The outcome of the interference case:


Dionex Softron GmbH (“Dionex”) appeals the Patent Trial and Appeal Board’s (“Board”) judgment in an interference proceeding, awarding priority to Agilent Technologies, Inc. (“Agilent”). The parties dispute priority, claim construction, written description support, conception, and reduction to practice. We affirm.


Claim copying


This case involves an unusual history, in which the parties copied one another’s claims in separate attempts to provoke an interference. First, Agilent substantially copied Dionex’s claims but, nonetheless, failed to provoke an interference.1 Agilent then amended its claims, and Dionex subsequently copied those amended claims verbatim, resulting in the interference at issue. The instituted interference was between Agilent’s U.S. Patent Application No. 15/965,402 and Dionex’s U.S. Patent Application No. 16/016,866.

Gatling guns used by bad guys in TV Westerns

On November 12, 1962, the episode of "The Rifleman" titled "The Assailents" featured a plot in which certain "assailents" planned to munder a U.S. Senator (played by Edward Platt, later "the chief" in "Get Smart"). The weapon was a Gatling gun mounted in the second floor of North Fork's big hotel. Yes, Lucas McCain did "take on" the Gatling gun. Surviving the attack, Platt gives an interesting speech at the end backing statehood for New Mexico.


On March 7, 1971, the episode of Bonanza titled "Terror at 2:00" also involves the attempted attack on Europeans and African Americans planning to sign a peace treaty. The weapon was a Gatling gun on the second floor of a hotel in Virginia City, manned by supposed newspaper men from St. Louis. The key "speech" here was a racist rant by one of the villains (played by Steve Inhat ).

The CAFC does the "collateral order" doctrine

The outcome:


Modern Font Applications LLC seeks an interlocutory appeal to challenge an order of the United States District Court for the District of Utah, which affirmed a magistrate judge’s decision deeming MFA’s in-house counsel a “competitive decisionmaker” and maintaining Alaska Airlines, Inc.’s Attorneys’ Eyes Only designations as to its source code. Mod. Font Applications v. Alaska Airlines, No. 19-cv00561, 2021 WL 364189, at *1 (D. Utah Feb. 3, 2021) (“Magistrate Decision”), aff’d sub nom. Mod. Font Applications LLC v. Alaska Airlines Inc., 2021 WL 3729382 (D. Utah Mar. 2, 2021) (“District Court Order”). Because we lack jurisdiction over MFA’s interlocutory appeal under the collateral order doctrine, we dismiss.


Of the doctrine


The collateral order doctrine is a practical construction of the final judgment rule that permits review of not only judgments that “terminate an action,” but also the “small class” of collateral rulings that are appropriately deemed “final.” Mohawk Indus., Inc. v. Carpenter, 558 U.S. 100, 106 (2009) (citing Cohen v. Beneficial Indus. Loan Corp., 337 U.S. 541, 545–46 (1949)). Courts of appeals may allow interlocutory appeals of decisions that (1) are “conclusive;” (2) “resolve important questions separate from the merits;” and (3) are “effectively unreviewable on appeal from the final judgment in the underlying action.” Swint v. Chambers Cnty. Comm’n, 514 U.S. 35, 42 (1995) (citing Cohen, 337 U.S. at 546).


Judge Newman said


The panel majority holds that we do not have jurisdiction to consider this appeal of the district court’s evidentiary ruling. However, our authority to review this ruling is not a matter of appellate jurisdiction, but of appellate discretion. A court’s jurisdiction is established by statute, and the question concerning this particular protective order is within our jurisdiction and subject to our discretion to review and resolve. I believe that in the circumstances hereof it is preferable to exercise this discretion and decide the question concerning this protective order. Nonetheless, the panel majority holds that we do not have jurisdiction, and relegates our decision of this aspect until after final judgment—thus creating inefficiency and possible injustice. I respectfully dissent.


Jurisdiction is a rigorous concept, for it establishes “a tribunal’s power to hear a case, a matter that can never be forfeited or waived.” Union Pac. R.R. Co. v. Brotherhood of Locomotive Eng’rs & Trainmen Gen. Comm. of Adjustment, Cent. Region, 558 U.S. 67, 81 (2009) (quoting United States v. Cotton, 535 U.S. 625, 630 (2002)). The Supreme Court explained: Recognizing that the word “jurisdiction” has been used by courts, including this Court, to convey “many, too many, meanings,” Steel Co. v. Citizens for Better Environment, 523 U.S. 83, 90 (1998), we have cautioned, in recent decisions, against profligate use of the term. Not all mandatory “prescriptions, however emphatic, are . . . properly typed jurisdictional,” we explained in Arbaugh v. Y & H Corp., 546 U.S. 500, 510. Id. (citations omitted). The Court has discussed the difference between subject matter jurisdiction and a claim-processing matter, see Kontrick v. Ryan, 540 U.S. 443, 456 (2004), and the distinction between a court’s jurisdiction founded on legislative action, and a court’s discretion to act on matters within its jurisdiction. See Bowles v. Russell, 551 U.S. 205, 211–12 (2007) (“This Court’s treatment of its certiorari jurisdiction also demonstrates the jurisdictional distinction between court-promulgated rules and limits enacted by Congress.”).


Appellate courts have jurisdiction to resolve issues that arise in cases within their appellate assignment. Appellate review is a matter of appellate discretion, as illustrated in Metlin v. Palastra, 729 F.2d 353, 355 (5th Cir. 1984) (“Our jurisdiction can, in the interest of judicial economy, extend as a matter of discretion to review of the closely related denial of qualified immunity.”). See also, e.g., Blackie v. Barrack, 524 F.2d 891, 900 (9th Cir. 1975) (“Because the record is hazy, because we have granted the extensions, and because the issues have now been briefed and argued and are ripe for decision, we think the preferable course is for us to decide the appeal and provide guidance to the trial court.”). In A. Olinick & Sons v. Dempster Bros., Inc., 365 F.2d 439 (2d Cir. 1966) the appellate court discussed its discretion to accept or reject a certified question and applicability of the writ of mandamus, and stated that “the Court of Appeals has total discretion—akin to that exercised by the Supreme Court on petitions for certiorari—in deciding whether or not to permit review.” Id. at 442. Protective orders concerning confidentiality and discovery have been reviewed, applying the standard of abuse of discretion. The court in SEC v. Merrill Scott & Assocs., Ltd., 600 F.3d 1262, 1271 (10th Cir. 2010) stated that “ordinarily requests to modify [a protective order] are directed to the district court’s discretion and subject to review only for abuse of discretion,” quoting 8 Charles Alan Wright, Arthur R. Miller & Richard L. Marcus, Federal Practice & Procedure § 2044.1 at 575–76 (2d ed. 1994), and stating: “We conclude that we have jurisdiction to address the merits of the challenged order of the district court.” Id. at 1270. Other circuits have acted similarly. E.g., SEC v. TheStreet.Com, 273 F.3d 222, 228 (2d Cir. 2001) (concluding that the appellate court has jurisdiction to review modification of a protective order); Moorman v. UnumProvident Corp., 464 F.3d 1260, 1272 (11th Cir. 2006) (“Under § 1292(b), appellate review, even for certified questions, is discretionary . . . . By extension, review by appellate courts of noncertified questions is also discretionary.”). We discussed this discretion in In re Convertible Rowing Exerciser Patent Litig., 903 F.2d 822 (Fed. Cir. 1990): The granting of the appeal is also discretionary with the court of appeals which may refuse to entertain such an appeal in much the same manner that the Supreme Court today refuses to entertain applications for writs of certiorari. Id. at 822. We explained that appellate review of an interlocutory order is a matter of discretion: It should be made clear that if application for an appeal from an interlocutory order is filed with the court of appeals, the court of appeals may deny such application without specifying the grounds upon which such a denial is based. It could be based upon a view that the question involved was not a controlling issue. It could be denied on the basis that the docket of the circuit court of appeals was such that the appeal could not be entertained for too long a period of time. But, whatever the reason, the ultimate determination concerning the right of appeal is within the discretion of the appropriate circuit court of appeals. Id. (citing S. Rep. No. 2434 (1958), 85th Cong., 2d Sess. 3, 4, reprinted in 1958 U.S.C.C.A.N. 5255). We have applied these principles to discovery matters. In In re Deutsche Bank Trust Co. Americas, 605 F.3d 1373, 1377 (Fed. Cir. 2010), we recited that “[f]inal decisions concerning discovery matters are reviewed by this court under the abuse of discretion standard.” See also Baystate Technologies, Inc. v. Bowers, 283 F. App’x 808 (Fed. Cir. 2008) (per curiam) (reviewing denial of a motion to modify a protective order, applying the standard of abuse of discretion). The collateral order doctrine is a guide to discretion, not a rule of jurisdiction The collateral order doctrine, on which the panel majority relies, recites factors relevant to discretionary review of aspects within the court’s jurisdiction. See Kell v. Benzon, 925 F.3d 448, 453 (10th Cir. 2019) (“[T]he collateralorder doctrine would ordinarily apply only if an appellate court would probably not need to consider the merits a second time.”). Applying this guidance, in Board of Regents of the University of Texas System v. Boston Scientific Corp., 936 F.3d 1365 (Fed. Cir. 2019), we held that a transfer order was immediately appealable, rather than requiring the appellant to wait for final judgment. Id. at 1370. In Apple Inc. v. Samsung Electronics Co., 727 F.3d 1214 (Fed. Cir. 2013), we exercised our discretion and accepted immediate appeal concerning the unsealing of certain discovery documents, reasoning that the harm of erroneous unsealing could not be undone if appeal were delayed. Id. at 1220. The Supreme Court has explained that “[t]he collateral order doctrine is best understood not as an exception to the ‘final decision’ rule laid down by Congress in § 1291, but as a ‘practical construction’ of it.” Swint v. Chambers Cty. Comm’n, 514 U.S. 35, 41–42 (1995) (quoting Dig. Equip. Corp. v. Desktop Direct, Inc., 511 U.S. 863, 867 (1994)); id. (“tentative, informal, or incomplete” rulings are not immediately appealable)) (quoting Cohen v. Beneficial Indus. Loan Corp., 337 U.S. 541, 546 (1949)). Imprecise usage of “jurisdiction” is not a new phenomenon, as the Court acknowledged in John R. Sand & Gravel Co. v. United States, 552 U.S. 130, 134 (2008) (“As convenient shorthand, the Court has sometimes referred to the time limits in such statutes as ‘jurisdictional.’”). My colleagues appear to have adopted this convenient shorthand, for their holding that we do not have jurisdiction over this appeal is otherwise unsupported.


[As to source code]


With respect to MFA’s access to Alaska’s source code, the district court observed that the source code “contains both sensitive and valuable information,” id. at *4, and held that MFA had not adequately explained why it needs Alaska’s source code. It is well-recognized that source code may be a company’s “crown jewels,” Unwired Planet LLC v. Apple, Inc., 2013 WL 1501489, at *5 (D. Nev. Apr. 11, 2013), and “its secrecy is of enormous commercial value,” Viacom Int’l Inc. v. YouTube Inc., 253 F.R.D. 256, 259 (S.D.N.Y. 2008). In Deutsche Bank we stated: A determination of the risk of inadvertent disclosure or competitive use does not end the inquiry. Even if a district court is satisfied that such a risk exists, the district court must balance this risk against the potential harm to the opposing party from restrictions imposed on that party’s right to have the benefit of counsel of its choice. U.S. Steel, 730 F.2d at 1468; Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1470 (9th Cir. 1992). In balancing these conflicting interests the district court has broad discretion to decide what degree of protection is required. Seattle Times Co. v. Rhinehart, 467 U.S. 20, 36 (1984); Brown Bag Software, 960 F.2d at 1470. 605 F.3d at 1380. These principles, as applied by the district court, are appropriate for our review. The panel majority states its concern that “[permitting] MFA’s interlocutory appeal here would encourage parties to ‘unduly delay the resolution of district court litigation and needlessly burden’ this court by seeking appellate review of any pretrial discovery dispute in any patent case.” Maj. Op. at 10 (quoting Mohawk Indus., Inc. v. Carpenter, 558 U.S. 100, 112 (2009)). This policy concern is not a criterion of appellate jurisdiction, but of appellate discretion as applied to an appeal of which we have subject matter jurisdiction. The panel majority, while denying this court’s appellate jurisdiction, discusses the merits of MFA’s argument but nonetheless declines to make a final decision, citing MFA’s ability to request “review[] after final judgment.” Maj. Op. at 7. In my view, the preferable path at this stage of this case is to exercise our discretion and finally resolve these confidentiality and protective order issues, for if MFA’s in-house counsel is indeed entitled to receive this information, the information should be available before, not after, trial. From the ruling that we do not have jurisdiction, I respectfully dissent.