Saturday, March 28, 2020

CAFC affirms PTAB in In re Clarke: the doctrine of prosecution history estoppel is inapplicable during prosecution

The technology at issue in Clarke:

The invention disclosed in the ’625 application is useful
for storing and ripening fruits that ripen “when exposed to
ethylene or another [ethylene ripening agent].” J.A. 163.
Such fruits include bananas, tomatoes, avocados, Bartlett
pears, kiwis, melons, peppers, and mangos. These fruits
are often picked when unripe and commercially ripened
near a final point of sale via exposure to ethylene in a ripening room.
The commercial ripening process can pose a
problem, however, because produce is shipped in sealed
bags that must be opened to allow ethylene exposure and
because ripening can occur rapidly once fruits are exposed
to ethylene.

The ’625 application discloses a fruit ripening container that
“mitigate[s] or overcome[s]” these problems by
“provid[ing] a pathway for oxygen, carbon dioxide and
ethylene to enter or leave the container.” J.A. 147. Specifically, it discloses containers that:
include at least one atmosphere control member
which provides a pathway for O2 and CO2, and
which preferably comprises a gas-permeable membrane comprising
(1) a microporous polymeric film, and
(2) a polymeric coating on the microporous film.
J.A. 161. The atmosphere control member (“ACM”) is
“preferably a control member as described in one or more
of U.S. Patent Nos. 6,013,293 [De Moor] and 6,376,032 and
International Publication No. W000/04787 . . . . ” Id. The
specification discloses two types of control members, Type
S and Type A, with differing oxygen permeabilities. The
ACM is secured to a portion of the container, usually a bag,
in which one or more round holes has been cut. J.A. 168.
It may be secured on the interior or exterior of the bag. J.A.

Of burdens:

The Board cited In re Woodruff, 919 F.2d 1575,
1578 (Fed. Cir. 1990), for the proposition that, once it is
shown that the prior art provides guidance on optimal
ranges, the burden shifts to the applicant to show that the
claimed range achieved unexpected results. Thus, because
“both oxygen permeability and ethylene permeability were
known to have an effect,” the Board explained that the burden was on Clarke to establish that the result of the
claimed invention was unexpected—a burden he failed to
carry. J.A. 24.


We review the Board’s factual findings for substantial
evidence and its ultimate determination of obviousness
without deference. Gartside, 203 F.3d at 1315–16. “Substantial evidence is more than a mere scintilla. It means
such relevant evidence as a reasonable mind might accept
as adequate to support a conclusion.” Consol. Edison Co.
v. NLRB, 305 U.S. 197, 229 (1938).

Of language "consists of":

We find no error in the Board’s analysis. While prior
art elements must be arranged in the same manner as the
claim, “the reference need not satisfy an ipsissimis verbis
test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
Here, although De Moor contains structures in addition to
those found in the proposed claims, substantial evidence
supports a finding that each element of each of the claims
is present in the prior art.

Accordingly, we see no error in the Board’s analysis of
De Moor’s disclosure, and reject Clarke’s contention that
the “consists of” language of the claim somehow excludes
De Moor’s ACM as a matter of law.

Of prosecution history estoppel:

Clarke’s argument fails, however, because the doctrine of prosecution
history estoppel is inapplicable during prosecution. Instead, the doctrine is applicable only to issued patents and
available only to patentees. See Omega Eng’g, Inc, v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003) (“[W]here
the patentee has unequivocally disavowed a certain meaning to obtain his patent, the doctrine of prosecution disclaimer attaches and narrows the ordinary meaning of the
claim congruent with the scope of the surrender.” (emphases added)). To receive the benefit (or detriment) of a prosecution history disclaimer, an applicant must persuade an
examiner that his claims are, as a matter of fact,
distinguishable from the prior art. Clarke has failed to do
so in this case. We, therefore, find no legal error in the
Board’s analysis of the scope of the proposed claims.

Perry Mason as intellectual property attorney?

The Perry Mason episode The Case of the Tarnished Trademark [Season 5, episode 18] sounds in intellectual property, but, in fact, the plot line is a bit of a paradox. One has a Danish immigrant Axel Norstaad [played by Karl Swenson] who started a furniture factory, developed a reputation for high-quality goods, and thus created a valuable trademark. Wanting money to create a hospital, Axel sells the factory [and trademark rights] to Martin Somers [played by Dennis Patrick]. Martin has some cash flow problems. The paradox is that Martin immediately starts to make inferior goods under the tradename, and telegraphs that intent to the wholesalers [by the low prices], which causes the wholesalers to get back to Axel. For Martin's scheme to work, you don't let buyers know in advance that the product is inferior. Martin does get killed, but it is not about the trademark issue. Two other notable aspects of this episode. Axel's dismissive attitude toward Mason. The final interchange between Perry and Della, nominally about Axel and Edie, which is more about Perry and Della.

Della: Ah, such a pity that a man like that should have to wait all those years to get married. Don’t you agree?
Perry: You’ve been my legal secretary long enough to know that that’s a leading question.

In "The case of Gambling Lady" [Season 8, episode 26], there is an allusion to a [prior] patent infringement case done by Perry on behalf of client Peter Warren (played by actor Peter Breck), who owns a novelty game shop. The 1965 episode concerns casino chips. Were they counterfeited by Warren? For all the allegations of fake chips, it turns out they are all genuine and a different culprit is identified.

Tuesday, March 24, 2020

ND Cal reversed by CAFC in Illumina case

The outcome:

Illumina, Inc. and Sequenom, Inc. (collectively, “Illumina”) appeal from a decision of the United States District
Court for the Northern District of California that claims 1–
2, 4–5, and 9–10 of U.S. Patent 9,580,751 (the “’751 patent”) and claims 1–2 and 10–14 of U.S. Patent 9,738,931
(the “’931 patent”) are invalid under 35 U.S.C. § 101 as directed to an ineligible natural phenomenon. Illumina, Inc.
v. Ariosa Diagnostics, Inc., 356 F. Supp. 3d 925 (N.D. Cal.
2018) (“Decision”). Because we conclude that the claims
are directed to patent-eligible subject matter, we reverse.

This was a summary judgment case:

We review a grant of summary judgment according to
the law of the regional circuit. Kaneka Corp. v. Xiamen
Kingdomway Grp. Co., 790 F.3d 1298, 1303 (Fed. Cir. 2015)
(citing Halo Elecs., Inc. v. Pulse Elecs., Inc., 769 F.3d 1371,
1377 (Fed. Cir. 2014)). In the Ninth Circuit, a grant of
summary judgment is reviewed de novo. Leever v. Carson
City, 360 F.3d 1014, 1017 (9th Cir. 2004) (citing Hargis v.
Foster, 312 F.3d 404, 409 (9th Cir. 2002)). Summary judgment is appropriate when “there is no genuine dispute as
to any material fact and the movant is entitled to judgment
as a matter of law.” Fed. R. Civ. P. 56.

The CAFC said this was NOT a diagnostic case:

This is not a diagnostic case. And it is not a method of
treatment case. It is a method of preparation case.

Under Mayo, we have consistently held diagnostic
claims unpatentable as directed to ineligible subject matter. See Athena Diagnostics, Inc. v. Mayo Collaborative
Servs., LLC, 927 F.3d 1333, 1352 (Fed. Cir. 2019) (Moore,
J., dissenting from denial of rehearing en banc) (“Since
Mayo, we have held every single diagnostic claim in every
case before us ineligible.”); see also, e.g., Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC, 915 F.3d 743
(Fed. Cir. 2019); Cleveland Clinic Found. v. True Health
Diagnostics LLC, 859 F.3d 1352 (Fed. Cir. 2017); Cleveland
Clinic Found. v. True Health Diagnostics LLC, 760 F. App’x
1013 (Fed. Cir. 2019). In contrast, we have held that
method of treatment claims are patent-eligible. See Endo
Pharm. Inc. v. Teva Pharm. USA, Inc., 919 F.3d 1347 (Fed.
Cir. 2019); Natural Alternatives Int'l, Inc. v. Creative Compounds, LLC, 918 F.3d 1338 (Fed. Cir. 2019); Vanda
Pharm. Inc. v. West-Ward Pharm. Int’l Ltd., 887 F.3d. 1117
(Fed. Cir. 2018). The claims in this case do not fall into
either bucket, and we consider the claims under the Alice/Mayo test.


As an initial matter, there are differences between the
district court and the parties about how to articulate the
natural phenomenon that the inventors discovered. The
district court appeared to find that the relevant natural
phenomenon is either the “testable quantity” of fetal DNA
or “test results” obtained from that fetal DNA. Decision,
356 F. Supp. 3d at 933. Roche’s articulation of the natural
phenomenon was a moving target throughout its briefing
and at oral argument, but appears to be the “size distribution” of fetal to maternal cell-free DNA in a mother’s blood
reflected in Table 1 of the specification, with a particular
focus on the number “500 base pairs” as the critical dividing line between the two. See Appellee’s Br. 14, 18, 21; Oral
Arg. 27:58, 28:35, 29:16. And Illumina asserts more simply
that the inventors’ discovery was that “fetal cell-free DNA
tends to be shorter than maternal cell-free DNA.” Appellant’s Br. 24; see also id. at 8 (“[I]n a sample of cell-free
DNA from a pregnant woman, the DNA that arises from
the fetus is smaller on average than the DNA that arises
from the mother.”).

Facebook v. Windy City; Facebook loses on joinder issues

The outcome:

For the reasons explained below, we hold that the
Board erred in allowing Facebook to join itself to a
proceeding in which it was already a party, and also erred
in allowing Facebook to add new claims to the IPRs through
that joinder.

We also hold that the Board’s obviousness determinations on the originally
instituted claims are supported by substantial evidence. We therefore affirm-inpart and vacate-in-part the Board’s final written decisions
on the ’245 and ’657 patents, affirm the Board’s final written decision on the ’552 patent, and affirm-in-part the
Board’s final written decision on the ’356 patent. We dismiss as moot Facebook’s appeal of the Board’s final written
decision on the ’356 patent with respect to claims 14 and

The issue on joinder:

Windy City argues that § 315(c) does not authorize
same-party joinder and also that it does not authorize
joinder of new issues material to patentability, such as new
claims or new grounds.

The CAFC noted:

As described above, the plain language of § 315(c) allows the Director “to join as a party [to an already instituted IPR] any person” who meets certain requirements.
35 U.S.C. § 315 (emphases added). When the Board instituted Facebook’s later petitions and granted its joinder motions, however, the Board did not purport to be joining
anyone as a party. Rather, the Board understood Facebook
to be requesting that its later proceedings be joined to its
earlier proceedings. J.A. 8163 (“Facebook filed a Motion for
Joinder . . . requesting that this proceeding by joined with
[its prior IPR]”). It granted this request accordingly.
J.A. 8172 (“Further Ordered that IPR2017-00709 is hereby
joined with IPR2016-01156”). In other words, an essential
premise of the Board’s decision was that § 315(c) authorizes
two proceedings to be joined, rather than joining a person
as a party to an existing proceeding.

That understanding of § 315(c) is contrary to the plain
language of the provision.

Arthrex stands

The CAFC denied the petition for re-hearing in Arthrex:

1) The petitions for panel rehearing are denied.
2) The petitions for rehearing en banc are denied.

from the dissent of Judge Dyk:

DYK, Circuit Judge, with whom NEWMAN and WALLACH,
Circuit Judges join, and with whom HUGHES, Circuit
Judge, joins as to Part I.A, dissenting from the denial of
rehearing en banc.

I respectfully dissent from the court’s decision not to
rehear this case en banc.

The panel here holds that the appointment of Administrative Patent Judges (“APJs”),
when conducted in accordance with the America Invents Act (“AIA”), would be
unconstitutional if those APJs were protected by the removal provisions of Title 5. The panel avoids this result
by severing the Title 5 removal provisions as applied to
APJs, and thereby “render[ing] the APJs inferior officers
and remedy[ing] the constitutional appointment problem.”
Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, 1325
(Fed. Cir. 2019).

As discussed in Part I, I conclude that even if the panel
were correct that the present structure of IPR proceedings
violates the Appointments Clause, the draconian remedy
chosen by the panel—invalidation of the Title 5 removal
protections for APJs—rewrites the statute contrary to Congressional intent.
That remedy should not be invoked
without giving Congress and the United States Patent and
Trademark Office (“PTO”) itself the opportunity to devise a
less disruptive remedy. In Part II, I conclude that even if
the Title 5 remedy were adopted, this would not require
invalidation of preexisting Board decisions. In Part III, I
address the question of whether APJs are principal officers.

The panel’s invalidation of Title 5 removal protections
and severance is not consistent with Supreme Court precedent. Severability analysis requires “looking to legislative
intent.” United States v. Booker, 543 U.S. 220, 246 (2005)
(collecting cases). In performing this analysis, the court
cannot sever portions of the statute that would be consistent with “Congress’ basic objectives in enacting the
statute.” Booker, 543 U.S. at 259. Severance is appropriate
if the remaining statute “will function in a manner consistent with the intent of Congress.” Alaska Airlines, Inc.
v. Brock, 480 U.S. 678, 685 (1987) (emphasis omitted). The
panel departs from these requirements. By eliminating Title 5 removal protections for APJs, the panel is performing
major surgery to the statute that Congress could not possibly have foreseen or intended

Monday, March 16, 2020

Judge Newman's separate opinion in Hafco

In a separate opinion, Judge Newman wrote:

Jury damages awards, unless clearly unreasonable or
based on error in the jury instructions, are not readily modified.
See Fox v. Gen. Motors Corp., 247 F.3d 169, 180 (4th
Cir. 2001) (“A jury’s award of damages stands unless it is
grossly excessive or shocking to the conscience.”) (quotation
omitted). Hafco offers some theories why the jury could
have measured damages by GMS’ sales, for the jury was
not told that this evidence was irrelevant.

Hafco acknowledges that the jury instructions limited
damages to Hafco’s lost profits. The district court correctly
so observed. However, Hafco suggests that remittitur to
Hafco’s lost profits of $110,000 would be a more reasonable
action than remittitur to zero, for $110,000 reasonably
implements the jury’s verdict and intent. See Minks v. Polaris
Indus., Inc., 546 F.3d 1364, 1371 (Fed. Cir. 2008) (“[W]here
a portion of a verdict is for an identifiable amount that is
not permitted by law, the court may simply modify the
jury’s verdict to that extent and enter judgment for the correct amount.”
(quoting Johansen v. Combustion Eng’g, Inc.,
170 F.3d 1320, 1330 (11th Cir. 1999) (citing N.Y., L.E. &
W.R. Co. v. Estill, 147 U.S. 591 (1893)))).

I would simply correct the district court’s judgment,
and remit the damages award to the undisputed amount of
$110,000. A new trial, on undisputed facts, is not needed
to serve the purposes of the jury verdict.

Within the per curiam court opinion:

Standards of Review

We review the denial of a motion for judgment as a
matter of law (“JMOL”) under the law of the regional
circuit where the appeal from the district court would
normally lie. Orion IP, LLC v. Hyundai Motor Am., 605
F.3d 967, 973 (Fed. Cir. 2010). In the Fourth Circuit, the
district court’s ruling on a motion for JMOL receives
plenary review. Anderson v. G.D.C., Inc., 281 F.3d 452, 457
(4th Cir. 2002). The “decision to grant or deny a new trial
is within the sound discretion of the district court, and we
respect that determination absent an abuse of discretion.”
Cline v. Wal-Mart Stores, Inc., 144 F.3d 294, 301 (4th Cir.

On review of the jury’s factual findings, the evidence is
viewed in the light most favorable to the jury’s verdict.
Dotson v. Pfizer, 558 F.3d 284, 292 (4th Cir. 2009). The
Fourth Circuit, in which this trial was held, “accord[s] the
utmost respect to jury verdicts and tread[s] gingerly in
reviewing them.” Lack v. Wal-Mart Stores, Inc., 240 F.3d
255, 259 (4th Cir. 2001); Price v. City of Charlotte, 93 F.3d
1241, 1250 (4th Cir. 1996). See United States v. Foster, 507
F.3d 233, 244 (4th Cir. 2007) (“A jury’s verdict must be
upheld on appeal if there is substantial evidence in the
record to support it.”

Note the standard for review of summary judgment, expressed in Centrak v. Solitor:

A district court’s grant of summary judgment is reviewed under the law of the regional circuit. Profectus
Tech. LLC v. Huawei Techs. Co., 823 F.3d 1375, 1379 (Fed.
Cir. 2016). “The Third Circuit reviews grants and denials
of motions for summary judgment de novo, applying the
same standard of review as the district court.” MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1164
(Fed. Cir. 2015) (citing Gonzalez v. Sec’y of Dep’t of Homeland Sec., 678 F.3d 254, 257 (3d Cir. 2012)). When reviewing a grant of summary judgment, we view the facts in the
light most favorable to the nonmoving party and draw all
inferences in that party’s favor. Gonzalez, 678 F.3d at 257.


Based on the evidence of record, there is a material dispute of fact as to whether the named inventors actually
possessed an ultrasonic RTL system at the time they filed
their patent application or whether they were “leaving it to
the . . . industry to complete an unfinished invention.” Novozymes A/S v. DuPont Nutrition Biosciences APS, 723
F.3d 1336, 1350 (Fed. Cir. 2013) (quoting Ariad, 598 F.3d
at 1353). Thus, the district court erred in granting summary judgment.

Separately, from University of Rochester v. Searle, 358 F.3d 916 (Fed. Cir. 2004) :

Summary judgment is appropriate when there are no genuine issues of material fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c); Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342, 1353 (Fed. Cir. 1998). We review a district court's grant of summary judgment de novo, reapplying the summary judgment standard. Conroy v. Reebok Int'l, 14 F.3d 1570, 1575 (Fed. Cir. 1994). In contrast, "when a district court denies summary judgment, we review that decision with considerable deference to the court," and "will not disturb the trial court's denial ... unless we find that the court has indeed abused its discretion in so denying." SunTiger, Inc. v. Scientific Research Funding Group, 189 F.3d 1327, 1333 (Fed. Cir. 1999). Additionally, " [w]hen evaluating a motion for summary judgment, the court views the record evidence through the prism of the evidentiary standard of proof that would pertain at a trial on the merits." Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 962 (Fed. Cir. 2001) ("Barr"). In that process, we draw all justifiable inferences in the nonmovant's favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986).

Sunday, March 15, 2020

CTDI loses at CAFC on "first to file" issue

The case involves negotiations involving the patentee [Contec] and a declaratory judgment action by the [potential] infringer [CTDI].

The [district] court found that, although CTDI “had
every right, in its business and legal judgment, to break off
negotiations and resort to litigation,” it was not permitted
to “string Contec along just long enough to get the judicial
drop and file this lawsuit in its own backyard.” Id. at 358.
The court noted that CTDI’s communications before and
after its filing reveal its “nefarious motive,” and ultimately
determined that “CTDI’s conduct was inconsistent with the
policy of promoting extrajudicial dispute resolution, not to
mention sound judicial administration and the conservation of judicial resources.” Id. at 357, 358.

The CAFC noted

When one of two competing suits in a first-to-file analysis is a declaratory judgment action, district courts enjoy a
“double dose” of discretion
: discretion to decline to exercise
jurisdiction over a declaratory judgment action and discretion when considering and applying the first-to-file rule
and its equitable exceptions. See Kerotest Mfg. Co. v. C-OTwo Fire Equip. Co., 342 U.S. 180, 183–84 (1952) (noting
that, in questions of priority between similar proceedings,
“an ample degree of discretion, appropriate for disciplined
and experienced judges, must be left to the lower courts”).
Although district courts can, in the exercise of that discretion, dispense with the first-to-file rule, there must “be
sound reason that would make it unjust or inefficient to
continue the first-filed action.” Genentech, 998 F.2d at 938.
With this framework in mind, we turn to the district court’s
Here, the district court carefully considered the record
of the parties’ dispute, up to and including the competing
filings, and concluded that several factors warranted departure from the first-to-file rule.

Footnote 4 gets into appropriate content for a reply brief:

Although CTDI attempts to challenge the district
court’s characterization of its complaint as anticipatory for
the first time in its reply brief, counsel for CTDI conceded
at oral argument that it failed to raise this argument in the
opening brief. Oral Arg. at 7:07–18, available at
2019-1672.mp3. It is well established that an issue not
raised by an appellant in its opening brief is waived.
Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 800
(Fed. Cir. 1990); see also Amhil Enters. Ltd. v. Wawa, Inc.,
81 F.3d 1554, 1563 (Fed. Cir. 1996) (“A reply brief, which
should ‘reply to the brief of the appellee,’ see Fed. R. App.
P. 28(c), is not the appropriate place to raise, for the first
time, an issue for appellate review.”).

PTAB claim construction reversed in KAKEN PHARMACEUTICAL CO case

The case is about U.S. Patent No. 7,214,506 which describes and claims methods
for topically treating fungal infections in human nails.
The Patent Trial and Appeal Board of the Patent and
Trademark Office ultimately determined that all claims of
the ’506 patent are unpatentable for obviousness. Acrux
DDS Pty. Ltd. v. Kaken Pharm. Co., Ltd., No. IPR2017-
00190, 2018 WL 2761408 (P.T.A.B. June 6, 2018).

PTAB's decision did NOT stand.

The outcome was that the Board's construction was reversed, the decision vacated, and the case remanded:

The Director of the Patent and Trademark Office, who intervened after Acrux withdrew, defends
the Board’s decision. We agree with Kaken on its principal
contention—that the Board erred in its claim construction
of one claim limitation. Because the Board’s obviousness
analysis materially relied on its erroneous claim construction,
we cannot affirm the Board’s unpatentability determination. We reverse the claim construction, vacate the
Board’s decision, and remand the matter to the Board.

The issue:

Kaken challenges the Board’s construction of “treating
a subject having onychomycosis.” According to Kaken, the
Board’s construction ignores the ’506 patent’s core innovation—a topical
treatment that can easily penetrate the
tough keratin in the nail plate. Kaken asks us to reverse
the claim construction and either to reverse the obviousness determination
or to vacate it and remand for application of the proper construction.

The CAFC noted:

Prosecution history plays this role in applying the
broadest-reasonable-interpretation standard. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298
(Fed. Cir. 2015), overruled on other grounds by Aqua
Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017)
(en banc). In this case, Kaken’s statements during prosecution, followed by the examiner’s statements, make clear
the limits on a reasonable understanding of what Kaken
was claiming.


The examiner credited Kaken’s explanation and withdrew the rejection. In allowing the claims, the examiner
stated, under the heading “Examiner’s Reasons for Allowance,” that “unexpectedly and in contrast to previously
evaluated compositions/methods, the instantly claimed
method cures the onychomycosis because the medicament
upon direct administration to the nail, penetrates through
the nail plate and eradicates the infection at the site.” Notice of Allowability dated Dec. 26, 2006, at 5, in Appl. No.
10/685,266 (emphasis added); J.A. 1608. The examiner
also suggested that Kaken cancel claim 18 and make claim
19 independent, which Kaken did, and the resulting claims
19 and 20 became claims 1 and 2 of the issued ’506 patent.
Compare Notice of Allowability dated Dec. 26, 2006, at 3–4
with ’506 patent, col. 17, line 34 through col. 18, line 32.
This exchange would leave a skilled artisan with no
reasonable uncertainty about the scope of the claim language in the respect at issue here. Kaken is bound by its
arguments made to convince the examiner that claims 1
and 2 are patentable. See Standard Oil, 774 F.2d at 452.
Thus, Kaken’s unambiguous statement that onychomycosis affects the nail plate, and the examiner’s concomitant
action based on this statement, make clear that “treating
onychomycosis” requires penetrating the nail plate to treat
an infection inside the nail plate or in the nail bed under

Note also

The foregoing determinations are infected by the erroneous claim construction.
In this court, the Director has
sought to support the Board’s factual findings with little or
no reliance on the claim construction we have held to be
erroneous. But that effort is more a reconstruction of the
Board’s analysis than a description of the Board’s actual
We conclude that the appropriate course in this
case, as in so many others involving a reversal of a Board
claim construction, is to vacate the Board’s decision and remand the matter.
See, e.g., Arista Networks, Inc. v. Cisco
Sys., Inc., 908 F.3d 792, 798 (Fed. Cir. 2018); Dell Inc. v.
Acceleron, LLC, 818 F.3d 1293, 1300 (Fed. Cir. 2016).

PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.: statements made in prosecution can define a claim term

The issue:

On appeal, PMC challenges the Board’s construction of
“an encrypted digital information transmission including
encrypted information.”1 We review de novo the Board’s
ultimate claim constructions and any supporting determinations
based on intrinsic evidence. Knowles Elecs. LLC
v. Cirrus Logic, Inc., 883 F.3d 1358, 1361–62 (Fed. Cir.
2018). We review any subsidiary factual findings involving
extrinsic evidence for substantial evidence. Id. at 1362.


The broadest reasonable interpretation standard applies in this IPR proceeding.2
Thus, the Board’s interpretation must be reasonable in light of the specification,
prosecution history, and the understanding of one skilled
in the art. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
1292, 1298 (Fed. Cir. 2015), overruled on other grounds by
Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017)
(en banc). The broadest reasonable interpretation must
also take into account “the context of the entire patent.”
Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1374
(Fed. Cir. 2019) (quoting Phillips, 415 F.3d at 1312–13); see
also In re Translogic Tech., Inc., 504 F.3d 1249, 1256–58
(Fed. Cir. 2007) (applying Phillips “best practices” to claim
construction under broadest reasonable interpretation


footnote 2: Per recent regulation, the Board applies the Phillips claim construction standard
to IPR petitions filed on or
after November 13, 2018. See Changes to the Claim Construction Standard for Interpreting Claims
in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed.
Reg. 51,340 (Oct. 11, 2018) (codified at 37 C.F.R.
§ 42.100(b)). Because Apple filed its IPR petition before
November 13, 2018, we apply the broadest reasonable interpretation standard.

Footnote 3 as to "ordinary meaning":

Unfortunately, the ordinary meaning of “encrypted” does not impart a more precise understanding of
the claim limitation. As the Board found, the meaning of
“encryption”—and particularly whether it applied to analog or digital data—was “in flux” in the 1980s. Decision,
2017 WL 4175018, at *14. Neither party challenges this
finding on appeal.

As to defining a claim term via prosecution history:

We disagree with the Board’s legal analysis and conclusion. Even where “prosecution history statements do
not rise to the level of unmistakable disavowal, they do inform the claim construction.” Shire, 787 F.3d at 1366. An
applicant’s repeated and consistent remarks during prosecution can define a claim term—especially where, as here,
there is “no plain or ordinary meaning to the claim term”
and the specification provides no clear interpretation.
Sunovion, 731 F.3d at 1276–77. Similarly, an applicant’s
amendment accompanied by explanatory remarks can define a claim term where, as here, the claim language and
specification fail to provide meaningful guidance. Tempo
Lighting, 742 F.3d at 977–78. Thus, the Board erred by
effectively requiring the prosecution history evidence to
rise to the level of a disclaimer in order to inform the meaning of the disputed claim term.
Assuming without deciding
that PMC’s statements and amendments were inadequate
to give rise to a disclaimer, we still find that the prosecution history provides persuasive evidence that informs the
meaning of the disputed claim phrase and addresses an
ambiguity otherwise left unresolved by the claims and


The applicant asserted that the amended claims should be allowed because
the prior art “does not teach the encryption of an entire digital signal transmission.” Id. (emphasis added). Accordingly, we conclude that the applicant’s repeated and
consistent statements during prosecution, along with its
amendment to the same effect, are decisive as to the meaning of the disputed claim term—even if those statements
do not rise to the level of a disclaimer. See Shire, 787 F.3d
at 1366; Tempo Lighting, 742 F.3d at 977–78; Sunovion,
731 F.3d at 1276–77.

Friday, March 06, 2020

Customedia loses appeal to CAFC under 35 USC 101

The outcome of the Customedia case:

Customedia Technologies, LLC appeals the Patent
Trial and Appeal Board’s final written decisions holding
claims 1–6, 8, 17, and 23 of U.S. Patent No. 8,719,090 and
claims 1–4, 6–7, 16–19, 23–24, 26–28, 32–36, and 41 of U.S.
Patent No. 9,053,494 ineligible under 35 U.S.C. § 101 and
finding claims 1 and 5 of the ’090 patent unpatentable under 35 U.S.C. § 102.
Because the claims are ineligible under § 101, we affirm the Board’s determinations.
We do not reach the Board’s § 102 findings.

Of analysis under 35 USC 101:

Section 101 provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement
thereof,” may obtain a patent. 35 U.S.C. § 101. The Supreme Court has held that “[l]aws of nature, natural phenomena, and abstract ideas are not patent eligible.” Alice
Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Assoc. for Molecular Pathology v. Myriad Genetics,
Inc., 569 U.S. 576, 589 (2013)). We follow the Supreme
Court’s two-step framework for determining patent-eligibility under § 101. Id. at 217. First, we determine whether
the claims are directed to a “patent-ineligible concept,”
such as an abstract idea. Id. If so, we “consider the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78–79 (2012)).

Of Alice step one:

Here, for
instance, Customedia argues that its claims are eligible because they “provide for improvements to the operation and
functioning of computer systems.” Appellant’s Br. 71, Nos.
18-2239, -2309. We do not agree. The claims at issue here
are directed to the abstract idea of using a computer to deliver targeted advertising to a user, not to an improvement
in the functioning of a computer.

To be a patent-eligible improvement to computer functionality, we have required the claims to be directed to an
improvement in the functionality of the computer or network platform itself. In Ancora Techs. Inc. v. HTC America, Inc., for example, we held that claims directed to
storing a verification structure in computer memory were
directed to a non-abstract improvement in computer functionality because they improved computer security. 908
F.3d 1343, 1347–49 (Fed. Cir. 2018). We determined the
claims addressed the “vulnerability of license-authorization software to hacking” and were thus “directed to a solution to a computer-functionality problem.” Id. at 1349.
Likewise, in Finjan, Inc. v. Blue Coat System, Inc., we held
that claims to a “behavior-based virus scan” provided
greater computer security and were thus directed to a patent-eligible improvement in computer functionality. 879
F.3d 1299, 1304–06 (Fed. Cir. 2018).


We have held that it is not enough, however, to merely
improve a fundamental practice or abstract process by invoking a computer merely as a tool. For example, in Affinity Labs. of Texas, LLC v. DIRECTV, LLC, we held that
claims to a method of providing out-of-region access to regional broadcasts were directed to an abstract idea. 838
F.3d 1253, 1258 (Fed. Cir. 2016).


But to be directed
to a patent-eligible improvement to computer functionality,
the claims must be directed to an improvement to the functionality of the computer or network platform itself. See,
e.g., id. 1336–39; DDR Holdings, LLC v., L.P.,
773 F.3d 1245, 1257–59 (Fed. Cir. 2014). Thus, this inquiry
“often turns on whether the claims focus on ‘the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an “abstract idea” for
which computers are invoked merely as a tool.’” Finjan,
879 F.3d at 1303 (quoting Enfish, 822 F.3d at 1335–36).

Of Alice Step Two:

Customedia argues that the claims are eligible under
Alice step two because the use of a programmable receiver
to dedicate a section of storage for storing only “specifically
identified advertising data” was innovative over prior art
approaches. However, the invocation of “already-available
computers that are not themselves plausibly asserted to be
an advance . . . amounts to a recitation of what is well-understood, routine, and conventional.” SAP, 898 F.3d at
1170. The ’090 and ’494 patent claims’ invocation of a conventional receiver is insufficient to supply the required inventive concept. Thus, we conclude the Board did not err
in holding the claims of the ’090 and ’494 patents ineligible
under § 101.

Wednesday, March 04, 2020

Television dramas illustrating a hard way for plagiarism victims to get credit for the work copied by others

Long before the series "Big Bang" started, there was an episode of Law & Order which first aired on March 2, 1994 which was titled "Big Bang." A central plot line concerned a higher-up (a professor) stealing the work of a subordinate (a grad student). An irony of the story (in which the grad student (inadvertently) caused the death of the professor's (separated) wife) was that by confessing to the crime, the grad student finally got credit for the work stolen by the professor.

See earlier discussion in the IPBiz post Story of professor stealing work of student reprises the "Big Bang" episode of "Law and Order" , other IPBiz posts and an article in "Intellectual Property Today."

Of the ironic twist (finally getting credit by confessing to a crime), an episode of Perry Mason, broadcast in 1964 (thirty years before the "Big Bang" episode) titled "The Case of the Tragic Trophy" has actor John Fiedler (later in Bob Newhart) playing the role of a screenwriter whose impressive story is stolen by the producer played by Richard Carlson (earlier of "Black Lagoon"). In this case, the plagiarism victim (Fiedler) kills the thief, but finally gets credit for the authorship in providing the motive for his crime.

[In the Mason episode, the Mason client had struck Carlson without killing him, and Fiedler took advantage of the situation to finish off Carlson knowing that Mason's client would be suspected; the double-attack theme appears in other Mason episodes. In the "Law & Order" episode, the grad student did not intend to kill anyone, but the result of his actions actually threw suspicion for the death onto the separated professor.]

20/20 VISION CENTER loses appeal at CAFC

The outcome was affirmance:

Appellant 20/20 Vision Center, LLC (“20/20 Vision”)
sued Appellees Vision Precision Holdings, LLC, Stanton
Optical Florida, LLC, doing business as Stanton Optical &
My Eyelab, Thomas Campen MD & Associates, PLLC, and
M&D Optical Franchise, LLC (collectively, “Vision Precision”) in the U.S. District Court for the Southern District
of Florida (“District Court”), alleging, inter alia, infringement of claims 13, 14, 15, and 17 (“the Asserted Claims”) of
20/20 Vision’s U.S. Patent No. 9,230,062 (“the ’062 patent”). Following a claim construction hearing, the District
Court entered an order construing all disputed claim terms
in Vision Precision’s favor. See 20/20 Vision Ctr., LLC v.
Vision Precision Holdings, LLC, No. 9:18-CV-80670-RLR,
2018 WL 5807654, at *10–11 (S.D. Fla. Nov. 6, 2018). As a
result, the parties filed a joint motion for entry of final
judgment, which the District Court entered as a consent
judgment of non-infringement. J.A. 21–25 (Consent Judgment).
20/20 Vision appeals. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(1) (2012). We affirm.

Footnote 4:

20/20 Vision contends that the District Court also
erred by misconstruing the terms “eye-care practitioner,”
see Appellant’s Br. 30–42, and “audio response system,” see
id. at 42–51. However, based on parties’ concessions at oral
argument, we need not reach these issues. See Oral Arg.
at 17:07–38, (20/20 Vision agreeing that
affirmance on any one of the three terms at issue is “sufficient basis for affirming a judgment of non-infringement”
of the Asserted Claims); id. at 17:56–18:11 (Vision Precision stating that affirmance on any one claim construction
“be the end of the case”); see also Vivid Techs., Inc. v.
Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
(<“[O]nly those terms need be construed that are in controversy,
and only to the extent necessary to resolve the controversy.”); J.A. 23–24
(Consent Judgment) (providing that
the parties “stipulate and agree” that the District Court’s
construction of each claim term “served as a separate
ground” on which Vision Precision is “entitled to judgment
as a matter of law on the issue of non-infringement” of the
Asserted Claims).

Tuesday, March 03, 2020

CAFC affirms inequitable conduct ruling in GS Cleantech; bad behavior of patent attorneys implicated

The outcome was affirmance of the district court finding of inequitable conduct:

The U.S. District Court for the Southern District of Indiana (“District Court”) found Appellants GS CleanTech
Corporation and Greenshift Corporation’s (together,
“CleanTech”) U.S. Patent Nos. 7,601,858 (“the ’858 patent”), 8,008,516 (“the ’516 patent”), 8,008,517 (“the ’517
patent”), and 8,283,484 (“the ’484 patent”) (together, “the
Patents-in-Suit”) unenforceable due to inequitable conduct. Corrected Memorandum Opinion & Order after
Bench Trial, In re: Method of Processing Ethanol Byproducts & Related Subsystems (’858) Patent Litig., No. 1:10-
ml-02181-LJM-DML (S.D. Ind. Sept. 15, 2016), ECF
No. 1653 (J.A. 236–313) (Opinion and Order); see J.A. 314–
15 (Judgment).

CleanTech appeals. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(1) (2012). We affirm.

Background law:

“Inequitable conduct is an equitable issue committed to
the discretion of the trial court and is, therefore, reviewed
by this court under an abuse of discretion standard.” Energy Heating, LLC v. Heat On-The-Fly, LLC, 889
F.3d 1291, 1299 (Fed. Cir. 2018) (citations omitted). We
leave undisturbed the trial court’s inequitable conduct decision unless the appellant establishes “that the ruling is
based upon clearly erroneous findings of fact or a misapplication or misinterpretation of applicable law or that the
ruling evidences a clear error of judgment on the part of the
[trial] court.” Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 876 (Fed. Cir. 1988) (citation omitted) (en banc in relevant part).
To prevail on a claim of inequitable conduct in a patent
case, the accused infringer must prove by clear and convincing evidence that the patentee:
(1) “knew of the reference” or prior commercial sale;
(2) “knew that it was
material”; and
(3) “made a deliberate decision to withhold
it.” See Therasense, Inc. v. Becton, Dickinson & Co., 649
F.3d 1276, 1290 (Fed. Cir. 2011) (en banc). “Proving that
the [patentee] knew of a reference, should have known of
its materiality, and decided not to submit it to the [US]PTO
does not prove specific intent to deceive.” Id. Instead, “the
specific intent to deceive must be the single most reasonable inference able to be drawn from the evidence.” Id. (internal quotation marks and citation omitted).

Of waiver:

Because we apply the law of the regional circuit as to procedural matters, see Info-Hold, Inc. v. Muzak LLC, 783
F.3d 1365, 1371 (Fed. Cir. 2015), here the Seventh Circuit,
we will not decide an issue for the first time on appeal, see
Scheurer v. Fromm Family Foods LLC, 863 F.3d 748, 755
(7th Cir. 2017) (“The well-established rule in th[e Seventh]
Circuit is that a plaintiff waives the right to argue an issue
on appeal if she fails to raise the issue before a lower court.”
(internal quotation marks and citation omitted)).

Deliberate decision to withhold information:

The District Court concluded that CleanTech knew of
the claimed invention’s offer for sale and reduction to practice in the summer of 2003, as well as that information’s
materiality. J.A. 303, 308. The District Court “conclude[d]
that the [I]nventors and the[ir] attorneys intentionally
withheld material information from the [US]PTO during
prosecution” of the Patents-in-Suit, thereby rendering the
Patents-in-Suit unenforceable due to inequitable conduct.
J.A. 312; see Therasense, 649 F.3d at 1290 (explaining that
inequitable conduct requires a showing of clear and convincing evidence that the patentee “knew of the reference,
knew that it was material, and made a deliberate decision
to withhold it”). CleanTech contends that that District
Court erred in its materiality and intent to deceive findings. Appellant’s Br. 104–05. We disagree with CleanTech.


the District Court found that the Inventors and
the attorneys at Cantor Colburn withheld evidence of successful testing in 2003 and made false representations by
implying that the invention was not reduced to practice until 2004. J.A. 302 (“[N]ot providing information regarding
the [I]nventors’ dealings with Agri-Energy or [Mr.] Barlage[’s] bench-top test raises an inference that the patentees intended to deceive the [US]PTO—it was pre-critical
date information that had a direct bearing on the ability of
the [I]nventors to prove that their claims were patentable.”). This finding is supported by the record. Cantor Colburn began representing CleanTech in March 2008 and, by
at least September 2008, were aware of Mr. Barlage’s testing in June and July 2003. J.A. 111075. Mr. Winsness informed Cantor Colburn that the “testing we did in
June 2003” showed that “a sequence of evaporation followed by centrifugation allows for oil recovery[.]”
J.A. 111075. Moreover, the Inventors informed Cantor
Colburn that, based on the summer 2003 testing, the Inventors “believe[d] [that] the process would work on a commercial scale.” J.A. 263 (internal quotation marks
omitted). Cantor Colburn was also in possession of the
Ethanol Oil Recovery System Diagram and the test reports
themselves. J.A. 301. Despite possessing this information,
Cantor Colburn did not provide it to the USPTO during the
prosecution of the Patents-in-Suit and referenced it only to
assert that the claimed invention predated Prevost.
J.A. 301–02, 304–06, 309. Moreover, in June 2009, Cantor
Colburn filed a letter with the USPTO stating that
feasibility testing occurred in May 2004, with no mention
of the documents dated a year earlier. J.A. 303. This letter
was filed in the prosecutions of each of the Patents-in-Suit.
J.A. 304–05. The District Court did not clearly err in its
finding that CleanTech and Cantor Colburn withheld material evidence from the USPTO.
See Molins PLC v. Textron, Inc., 48 F.3d 1172, 1178 (Fed. Cir. 1995) (“[Patentees]
who are not ‘up front’ with the [US]PTO run the risk that,
years later, a fact-finder might conclude they intended to
deceive. This is what appears to have happened here and
we must affirm the trial court.”); see also id. (“Applicants
for patents are required to prosecute patent applications in
the [US]PTO with candor, good faith, and honesty. . . . This
duty extends also to the applicant’s representatives.” (internal footnote and citations omitted)).

Third, the District Court determined that CleanTech
and Cantor Colburn “threatened” Agri-Energy to coerce its
regarding the critical date for the Patents-in-Suit,
after the July 2003 Proposal surfaced and during the pendency of the ’516 and ’517 patents. J.A. 308. Specifically,
in June 2009, Mr. Winsness traveled to Agri-Energy and
“offered Agri-Energy a royalty-free license in exchange for
Agri-Energy’s willingness to admit that the pending patents were valid.” J.A. 269. In July 2009, Cantor Colburn
sent Agri-Energy an email offering “a release of liability for
any prior use of an extraction system” and indemnification
“against any liability” in return “for cooperating with
[CleanTech] and for clarifying the use of the corn oil system
in 2004.” J.A. 110322. Moreover, Cantor Colburn requested a statement “confirming and clarifying” certain
facts relating to the offer. J.A. 110322–23. Agri-Energy’s
manager testified that he “did not accept the offer from
[Cantor Colburn and CleanTech] because the statements
were not true.” J.A. 271. Notably, Cantor Colburn “failed
to request that Agri-Energy provide any documents” regarding its interactions with the Inventors. J.A. 271.

See also the post at PatentlyO:

As background, from :

A district court’s findings of fact are reviewed under the clearly erroneous standard. See Fed. R. Civ. P. 52(a)(6); United States v. Cazares, 121 F.3d 1241, 1245 (9th Cir. 1997) (standard applied in both civil and criminal proceedings). “Findings of fact are made on the basis of evidentiary hearings and usually involve credibility determinations, which explains why they are reviewed deferentially under the clearly erroneous standard.” Rand v. Rowland, 154 F.3d 952, 957 n.4 (9th Cir. 1998) (en banc). Special deference is paid to a trial court’s credibility findings. See Anderson v. City of Bessemer, 470 U.S. 564, 573 (1985); McClure v. Thompson, 323 F.3d 1233, 1241 (9th Cir. 2003).

Review under the clearly erroneous standard is significantly deferential, requiring a “definite and firm conviction that a mistake has been committed.” See Easley v. Cromartie, 532 U.S. 234, 242 (2001); Fisher v. Tucson Unified Sch. Dist., 652 F.3d 1131, 1136 (9th Cir. 2011); United States v. Comprehensive Drug Testing, Inc., 621 F.3d 1162, 1175 (9th Cir. 2010) (en banc) (per curiam); see also Miller v. Thane Int’l, Inc., 519 F.3d 879, 888 (9th Cir. 2008) (concluding the district court clearly erred). If the district court’s account of the evidence is plausible in light of the entire record, the court of appeals may not reverse, even if it would have weighed the evidence differently. See Husain v. Olympic Airways, 316 F.3d 829, 835 (9th Cir. 2002); see also United States v. McCarty, 648 F.3d 820, 824 (9th Cir. 2011); Katie A., ex. Rel. Ludin v. Los Angeles County, 481 F.3d 1150, 1155 (9th Cir. 2007). “Where there are two permissible views of the evidence, the factfinder’s choice between them cannot be clearly erroneous.” United States v. Elliott, 322 F.3d 710, 715 (9th Cir. 2003); see also United States v. Stanley, 653 F.3d 946, 952 (9th Cir. 2011); United States v. Al Nasser, 555 F.3d 722, 727 (9th Cir. 2009).


Abuse of Discretion

“An abuse of discretion is a plain error, discretion exercised to an end not justified by the evidence, a judgment that is clearly against the logic and effect of the facts as are found.” Rabkin v. Oregon Health Sciences Univ., 350 F.3d 967, 977 (9th Cir. 2003) (citation and internal quotation marks omitted); see also In re Korean Air Lines Co., Ltd., 642 F.3d 685, 698 n.11 (9th Cir. 2011). Under the abuse of discretion standard, a reviewing court cannot reverse absent a definite and firm conviction that the district court committed a clear error of judgment in the conclusion it reached upon a weighing of relevant factors. See McCollough v. Johnson, Rodenburg & Lauinger, LLC, 637 F.3d 939, 953 (9th Cir. 2011); Valdivia v. Schwarzenegger, 599 F.3d 984, 988 (9th Cir. 2010) (citing SEC v. Coldicutt, 258 F.3d 939, 941 (9th Cir. 2001)); Harman v. Apfel, 211 F.3d 1172, 1175 (9th Cir. 2000) (noting reversal under abuse of discretion standard is possible only “when the appellate court is convinced firmly that the reviewed decision lies beyond the pale of reasonable justification under the circumstances”). The abuse of discretion standard requires an appellate court to uphold a district court determination that falls within a broad range of permissible conclusions. See Kode v. Carlson, 596 F.3d 608, 612-13 (9th Cir. 2010) (per curiam); Grant v. City of Long Beach, 315 F.3d 1081, 1091 (9th Cir. 2002), amended by 334 F.3d 795 (9th Cir. 2003) (order).

A district court abuses its discretion when:

· District court does not apply the correct law or rests its decision on a clearly erroneous finding of a material fact. See Jeff D. v. Otter, 643 f.3d 278 (9th Cir. 2011) (citing Casey v. Albertson’s Inc., 362 F.3d 1254, 1257 (9th Cir. 2004)).

· District court rules in an irrational manner. See Chang v. United States, 327 F.3d 911, 925 (9th Cir. 2003); see also Cachil Dehe Band of Wintun Indians of the Colusa Indian Cmty. v. California, 618 F.3d 1066, 1084 (9th Cir. 2010) (concluding district court did not rule in an irrational manner).

· District court makes an error of law. See Koon v. United States, 518 U.S. 81, 100 (1996); Strauss v. Comm’r of the Soc. Sec. Admin., 635 F.3d 1135, 1137 (9th Cir. 2011) (citing Koon); Forest Grove School Dist. v. T.A., 523 F.3d 1078, 1085 (9th Cir. 2008) (applying Koon); United States v. Martin, 278 F.3d 988, 1001 (9th Cir. 2002) (applying Koon). Thus, the court abuses its discretion by erroneously interpreting a law, United States v. Beltran‑Gutierrez, 19 F.3d 1287, 1289 (9th Cir. 1994), or by resting its decision on an inaccurate view of the law, Richard S. v. Dep’t of Dev. Servs., 317 F.3d 1080, 1085-86 (9th Cir. 2003). See also Fox v. Vice, 131 S. Ct. 2205, 2211 (2011) (recognizing trial court has wide discretion “but only when, it calls the game by the right rules”).

· Record contains no evidence to support district court’s decision. See Oregon Natural Res. Council v. Marsh, 52 F.3d 1485, 1492 (9th Cir. 1995).