author: TARANTO, Circuit Judge.

text:
    ROCKY MOUNTAIN HELIUM, LLC, Plaintiff-Appellant v. UNITED STATES, Defendant-Appellee
    2016-1278
    United States Court of Appeals, Federal Circuit.
    Decided: November 16, 2016

      David Bernard Bush, David B. Bush, LLC, Wheat Ridge, CO, argued for plaintiff-appellant.
    Renee Burbank, Commercial Litigation Branch, Civil Division, United States Department of Justice, Washington, DC, argued for defendant-appellee. Also represented by Allison Kidd-Miller, Benjamin C. Mizer, Robert E. Kirsohman, Jr.
    Before PROST, Chief Judge, TARANTO, and HUGHES, Circuit Judges.

      . We rely here on the record submitted to us in the usual course of this appeal and, in addition, on the letter jointly submitted to us by the parties to clarify matters that arose at oral argument in the appeal. Appellant & Ap-pellee’s Supp. Letter, Oct. 12, 2016. We appreciate the parties' initiative and cooperation in providing the joint clarification. Because we do not go beyond the joint letter, we deny Rocky Mountain's motion to file additional materials responsive to the questions raised at oral argument.

   TARANTO, Circuit Judge.

Rocky Mountain Helium, LLC sued the United States in the United States Court of Federal Claims, asserting breach of two contracts concerning Rocky Mountain’s potential extraction of helium from beneath federal lands—the 1994 Helium Contract and the 2008 Settlement Agreement (the latter resolving a dispute centered on the former). The Court of Federal Claims found lack of jurisdiction over both claims and, in the alternative, dismissed the Helium Contract claim on the merits. We partly reverse the jurisdictional dismissal of the Helium Contract claim but affirm the merits dismissal of that claim. We reverse the jurisdictional dismissal of the Settlement Agreement claim and remand for further proceedings on that claim.

I

In 1994, Rocky Mountain and the United States Bureau of Land Management entered into the Helium Contract, under which the Bureau gave Rocky Mountain the right, for up to 25 years, to extract helium gas from roughly 21,000 acres of federal lands in Colorado arid Utah. The Helium Contract (Federal Helium Contract FLL 94-001) stipulated that Rocky Mountain annually pay to the United States either rent of one dollar per acre (•ie., roughly $21,000) or royalties based on the helium that Rocky Mountain extracted, whichever was greater. The Helium Contract also gave Rocky Mountain certain preferential rights to enter into a new agreement with the Bureau if the Bureau terminated the Helium Contract. If, within a year of such termination, the United States “elects to enter into an agreement [with another company] for the sale, extraction or other disposition of helium” that would be covered by the Helium Contract but for the termination, Rocky Mountain would have the right to step in and take that deal instead of the other company. J.A. 62.

Rocky Mountain never extracted helium from the property—which Rocky Mountain alleges was the result of inadequate cooperation from other firms whose oil and gas mining releases helium for collection. For one year, Rocky Mountain paid the rent due to the Bureau, then it stopped paying. J.A. 82 (“In nearly 15 years, [Rocky Mountain] has made no payment on its contract....”). In December 2004, the Bureau informed Rocky Mountain that it had cancelled the Helium Contract due to nonpayment. Rocky Mountain filed an administrative ' appeal with the Civilian Board of Contracts Appeals (CBCA). On August 29, 2008, before a CBCA decision, the parties entered into a Settlement Agreement.

Under the Settlement Agreement, within specified periods the Bureau had to direct certain oil and gas lessees of federal land to furnish the Bureau with specified information (“the Data”) about gas composition on the federal lands covered by the Helium Contract, and the Bureau then had to provide “the Data” to Rocky Mountain. J.A. 70-71. Within 90 days of receiving “the Data,” Rocky Mountain had to pay $116,579.90 (representing back rent) to the Bureau. J.A. 70. After those events occurred, the 1994 Helium Contract would be reinstated. Additional provisions specified certain interactions between the Bureau, Rocky Mountain, and the oil and gas lessees to produce cooperation leading to actual helium collection.

The Settlement Agreement addresses what would happen if Rocky Mountain failed to make the $116,579.90 payment in the specified time after receiving the contract-specified Data. That failure, the Agreement says, “shall trigger” a “Sunset Provision.” J.A. 70. The Sunset Provision, item III.l of the Agreement, specifies the consequences of such triggering:

[Rocky Mountain] agrees to completely and forever release any and all claims, rights, and/or interest in or arising from Federal Helium Contract FLL 94-001, in their entirety and expressly including any preferential rights detailed therein, and any and all claims against [the Bureau], the Department of the Interior and the United States, relating to Federal Helium Contract FLL 94-001. Furthermore [Rocky Mountain] agrees that upon triggering of the Sunset Provision, [the Bureau] may contract with third parties for Helium recovery on the lands covered by Federal Helium Contract FLL 94-001.

J.A. 73.

Relatedly, the Settlement Agreement contains a disputes clause, which states: “The parties agree that, except in the event of a triggering of the Sunset Provision described at item III(l) herein, disputes or disagreements arising from operation of this Agreement will be submitted to the Honorable Judge Allan Goodman at the CBCA for ADR [Alternative Dispute Resolution] pursuant to CBCA rule 54.” J.A.73. It is undisputed that the cited rule 54 generally provides for CBCA participation in dispute-resolution efforts, which are to be voluntary unless the parties jointly agree to be bound, and that the Settlement Agreement’s disputes clause required only voluntary efforts before Judge Goodman, not submission of a dispute for a binding decision.

Under the Settlement Agreement, the Bureau sought information from oil and gas lessees and provided Rocky Mountain with information on December 5, 2008. Rocky Mountain objected that the information was incomplete, i e., was not “the Data” required by the Agreement. Thus, Rocky Mountain refused to pay the $116,579.90 due within 90 days of delivery of “the Data.”

On March 4, 2009, before the end of that 90-day period for payment, Rocky Mountain informed the Bureau and Judge Goodman that it wanted to pursue mediation, thus invoking the Agreement’s disputes clause. The Bureau “responded that it had supplied all the information necessary and therefore there was no dispute to mediate, but agreed to suspend the settlement payment deadline for ten days for [Rocky Mountain] to either make the payment or to explain exactly what information required by the settlement agreement [the Bureau] had failed to provide.” Appellant & Appellee’s Supp. Letter at 1, Oct. 12, 2016. Rocky Mountain repeated its request for mediation on April 16,2009.

On April 21, 2009, the Bureau sent a letter to Rocky Mountain stating that it was invoking the Sunset Provision of the Settlement Agreement and “considered] federal helium contract FLL-94-001 fully, finally, and permanently terminated.” J.A-82. It added: “Any recovery that [Rocky Mountain] may ultimately seek through litigation will be limited to money damages—and will be vigorously contested by [the Bureau].” Id. Rocky Mountain alleges that, within a year, the Bureau entered into a new lease with another company; the Bureau neither confirms nor denies that allegation.

The parties “continued to discuss possible ADR proceedings” with- Judge Goodman. Appellant & Appellee’s Supp. Letter at 1. In those conversations, “Judge Goodman never made a written or oral determination about whether the sunset provision had been triggered.” Id. “It appears that neither party pursued ADR further after September 2009, and, that the CBCA closed its ADR file in March 2010.” Id. at 2. .

On April 21, 2015, Rocky Mountain filed a complaint in the Court of Federal Claims. Rocky Mountain alleged that the Bureau breached two contracts: (1) the Helium Contract and (2) the Settlement Agreement. The United States filed a motion to dismiss. The trial court granted the motion based on different jurisdictional and merits grounds.

As to the Helium Contract claim: The court first found that Rocky Mountain lacked constitutional standing because the Helium Contract had been terminated, in 2004 and never reinstated. It also dismissed that claim on the merits , for the same reason. As to the Settlement Agreement claim: The court found lack of subject matter jurisdiction on the ground that the disputes clause required submission of the dispute to Judge Goodman.

Rocky Mountain appeals. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(3).

II

We review de novo the dismissal for lack of jurisdiction, which in this case involves no factual findings on material disputed facts, and the dismissal for failure to state a claim. See RadioShack Corp. v. United States, 566 F.3d 1358, 1360 (Fed. Cir. 2009); Trauma Serv. Grp. v. United States, 104 F.3d 1321, 1324 (Fed. Cir. 1997).

Count I of Rocky Mountain’s complaint alleges breach of the Settlement Agreement, while Count II alleges breach of the Helium Contract. Like the Court of Federal Claims, we discuss the 1994 Helium Contract first, then the 2008 Settlement Agreement. Count III of the complaint, seemingly covering both contracts, alleges breach of an implied duty of a good faith and fair dealing. We see no need for separate discussion of Count III. Our rulings on the two simple breach counts shall be taken to extend to Count Ill’s implied-duty claim insofar as that count applies, respectively, to the Helium Contract and Settlement Agreement.

A

As to the Helium Contract, although Rocky Mountain’s complaint might be taken ' to allege breach in 2004, when the United States declared the contract terminated, the complaint principally alleges breach years later. Specifically, it alleges breach on April 21, 2009, when the government stated that it deemed the contract fully, finally, and permanently terminated, and then during the year after April 21, 2009, when (the complaint alleges) the government contracted with another firm for helium extraction on the lands covered by the contract. According to Rocky Mountain, the termination was a breach because it rested on Rocky Mountain’s failure to pay rent and that failure was in fact the result of the Bureau’s own failure to cooperate with Rocky Mountain “to ensure access to gas streams to conserve and recover helium.” Appellant’s Br. at 1. And the government’s alleged contracting with a new firm in the year after April 2009, Rocky Mountain alleges, was a breach because it violated Rocky Mountain’s preferential rights under the Helium Contract, which existed for one year after a termination.

1

The Court of Federal 'Claims first held that Rocky Mountain lacked constitutional standing to assert its claim for breach of the Helium Contract. If correct, that conclusion would support the jurisdictional dismissal. Anderson v. United States, 344 F.3d 1343, 1349 (Fed. Cir. 2003). But the standing conclusion is not correct.

Rocky Mountain met the constitutional standing requirement because it alleged a legally cognizable injury in fact that is “concrete and particularized” and “actual or imminent,” causation of that injury by the conduct complained’ of, and redressability of the injury by a favorable decision on the merits of the claim. Lujan v. Defenders of Wildlife, 504 U.S. 555, 560-61, 112 S.Ct. 2130, 119 L.Ed.2d 351 (1992). Here, no issue is or could be raised about any component of that familiar standard except the requirement of cognizable injury in fact. On that component of the standing test, Rocky Mountain alleges economic harm from a breach of contract. That allegation asserts a cognizable injury in fact: “palpable economic injuries have long been recognized as sufficient to lay the basis for standing.” Sierra Club v. Morton, 405 U.S. 727, 733, 92 S.Ct. 1361, 31 L.Ed.2d 636 (1972). Rocky Mountain’s allegations thus suffice to establish standing.

In concluding otherwise, the Court of Federal Claims relied on its determination that Rocky Mountain “was in default of the Helium Contract on August 1, 1996, when the annual rental payment was due,” which led the Bureau to declare the contract terminated. J.A. 9. But that determination is a merits determination: it rejects Rocky Mountain’s claim that the Helium Contract termination was a breach, a claim resting on the assertion that the non-payment of rent resulted from the Bureau’s own deficient conduct. Such a merits determination is not a permissible one for the standing analysis, which assumes the merits of a litigant’s claim and determines whether “even though the claim may be correct the litigant advancing it is not properly situated to be entitled to its judicial determination.” 13A Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 3531 (3d ed. 2008 & Supp. 2016); see, e.g., Warth v. Seldin, 422 U.S. 490, 500, 95 S.Ct. 2197, 45 L.Ed.2d 343 (1975) (“[Standing in no way depends on the merits of the plaintiffs contention that particular conduct is illegal.”). The jurisdictional dismissal for lack of standing is therefore incorrect.

There is, however, a different jurisdictional bar to Rocky Mountain’s claim of breach of the Helium Contract, but only to a limited extent. The jurisdiction of the Court of Federal Claims is limited by the six-year statute of limitations of 28 U.S.C. § 2501. See John R. Sand & Gravel Co. v. United States, 552 U.S. 130, 134, 128 S.Ct. 750, 169 L.Ed.2d 591 (2008) (holding that § 2501 states a jurisdictional limit). Rocky Mountain did not bring this action until April 2015—which was more than six years after any 2004 termination and the expiration of preferential rights one year after any such 2004 termination. The six-year limitations rule thus bars jurisdiction insofar as Rocky Mountain alleges that the Bureau wrongfully terminated the contract in 2004. On the other hand, there is no time bar insofar as Rocky Mountain alleges that the termination occurred on April 21, 2009, or later.

To the extent, then, that Rocky Mountain alleges a 2004 termination, we affirm the dismissal of the Helium Contract claim for lack of jurisdiction. Whether or not such a termination was wrongful, Rocky Mountain is out of time in challenging a 2004 termination. We otherwise reverse the jurisdictional dismissal.

2

The Court of Federal Claims separately dismissed Rocky Mountain’s' Helium Contract claim for failure to state a claim on which relief can be granted. It concluded that it is beyond reasonable dispute that the Helium Contract was in fact terminated in 2004 and never reinstated. That merits conclusion defeats Rocky Mountain’s breach claim, which is timely only to the extent it alleges that there was no termination until April 21, 2009. We agree with the termination conclusion and the merits dismissal based on it.

There is no dispute that the Court of Federal Claims was permitted to rely on the documents from which it drew its conclusion about the 2004 termination. Court of Federal Claims Rule 10(c) states (in words identical to Federal Rule of Civil Procedure 10(c)) that “[a] copy of a written instrument that is an exhibit to a pleading is a part of the pleading for all purposes.” The Supreme Court has ruled that a court “must consider the complaint in its entirety, ... in particular, documents incorporated into the complaint by reference, and matters of which a court may take judicial notice.” Tellabs, Inc. v. Makor Issues & Rights, Ltd., 551 U.S. 308, 322, 127 S.Ct. 2499, 168 L.Ed.2d 179 (2007). And the leading commentary has explained: “the contents of any attached writing must be considered by the court in a wide variety of contexts—for example, in determining the sufficiency of the statement of a claim for relief or a defense on a motion to dismiss under Rule 12(b)(6)”; the court “obviously is not bound to accept the pleader’s allegations as to the effect of the exhibit, but can independently examine the document and form its own conclusions as to the proper construction and meaning to be given the attached material”; and “[i]t appears to be well settled that when a disparity exists between the written instrument annexed to the pleadings and the allegations in the pleadings, the terms of the written instrument will control, particularly when it is the instrument being relied upon by the party who made it an exhibit.” 5A Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 1327 (3d ed. 2004 & Supp. 2016).

Here, the complaint itself recounts that the Bureau on December 29, 2004, notified Rocky Mountain “that it had can-celled the Helium Contract for non-payment.” J.A. 26. Moreover, the Settlement Agreement recites that the Bureau “canceled the Contract on December 29, 2004.” J.A. 69. And it is beyond dispute that no reinstatement of the Helium Contract ác-tually occurred.

Rocky Mountain’s complaint may allege that the Settlement Agreement should have led to a reinstatement of the Helium Contract but that breach of the Settlement Agreement prevented such reinstatement. Such an allegation, however, would at most be relevant to the claim of Settlement Agreement breach, with whatever consequences may follow if that claim is proved. It does not support an allegation, contrary to the plain facts just stated, that the Helium Contract actually was in force until April 21, 2009, rather than having been terminated in 2004 (the only alternative on this record).

The motioh-to-dismiss record thus requires the conclusion that the Helium Contract was terminated in 2004 and never reinstated. 1 To the extent that Rocky Mountain alleges that the termination did not occur until 2009, that allegation is one on which relief cannot be granted. Therefore, insofar as the Helium Contract breach claim rests on that allegation, we affirm the merits dismissal of the Helium Contract breach claim—that claim otherwise being properly dismissed as jurisdic-tionally untimely.

B

Rocky Mountain’s claim of breach of the Settlement Agreement asserts that the Bureau did not provide Rocky Mountain all of “the Data” it was obliged to provide under that agreement. As a result, Rocky Mountain asserts, a contractual precondition to its obligation to make the $116,679.90 payment was not met. According to Rocky Mountain, the government therefore breached the agreement when it invoked the Sunset Provision on April 21, 2009, based on Rocky Mountain’s faitee to make that payment.

The Court of Federal Claims dismissed the Settlement Agreement breach claim for lack of jurisdiction, coricluding that the disputes clause required Rocky Mountain to submit its challenge to the adequacy of the Bureau-furnished information to Judge Goodman of the CBCA. It is anything but clear that the premise would support the conclusion: we have seen no authority for treating a requirement like this one, which reaches no further than a requirement to invoke non-binding settlement assistance, as an override of an otherwise-clear jurisdictional grant to the court. But we need not decide that question. The parties, in them joint post-argument letter, have now made clear that Rocky Mountain did invoke Judge Goodman’s assistance under CBCA Rule 54 and, in fact, did so before its $116,579.90 payment was due. The disputes clause was satisfied. At least on these newly established facts, the Court of Federal Claims did not lack jurisdiction over the Settlement Agreement breach claim based on the disputes clause.

The United States makes an alternative argument for lack of jurisdiction. It invokes the established principle that the source of law underlying a Tucker Act claim must be money-mandating, i.e., be one that “can fairly be interpreted as mandating' compensation by the Government for the damages sustained.” United States v. Mitchell, 463 U.S. 206, 217, 103 S.Ct. 2961, 77 L.Ed.2d 580 (1983); see, e.g., Higbie v. United States, 778 F.3d 990, 993 (Fed. Cir. 2015). The United States asserts that the Settlement Agreement is not money-mandating.

We reject that contention. Where there is. a breach of a government contract, “as with private agreements, there is a presumption in the civil context that a damages remedy will be available upon the breach of an agreement.” Sanders v. United States, 252 F.3d 1329, 1334 (Fed. Cir. 2001)., Typically, based on that presumption, “no further inquiry is required” into whether money damages are available. Holmes v, United States, 657 F.3d 1303, 1314 (Fed. Cir. 2011). We have found that money damages are not available in a breach of contract case only in a limited number of situations—e.g., where a contract expressly disavows money damages, see id. (distinguishing such cases), where the breach alleged was of a confidentiality provision in an agreement defining the terms of an alternative dispute resolution process, Higbie, 778 F.3d at 995, where the agreement concerned a criminal defendant’s release on bail, Sanders, 252 F.3d at 1331, and where a special government cost-sharing agreement, rather than a procurement or sales contract, was at issue, Rick’s Mushroom Serv., Inc. v. United States, 521 F.3d 1338, 1344-46 (Fed. Cir. 2008).

This case involves no exceptions we have recognized. The Settlement Agreement is a commercial contract whereby the two parties set the terms for launching a continuing commercial arrangement, based on initial provision -of information, followed by payment if- the information was complete, and then the taking of further steps designed to lead to mutually beneficial commercial exploitation of valuable resources. This kind of commercial contract comes within the core of the strong background rule making monetary remedies available for contract breaches even when there is no express contract provision so stating.

Conclusion

For the foregoing reasons, we affirm in part and reverse in part, and we remand the case for further proceedings consistent with this opinion.

No costs.

AFFIRMED IN PART, REVERSED IN PART, AND REMANDED

      . Rocky Mountain argues that the Court of Federal Claims also dismissed its Settlement Agreement breach claim for failure to state a claim. We do not agree. The court's discussion of Rocky Mountain’s obligation to pay the $116,579.90 payment related to its merits dismissal' of the Helium Contract breach claim (as never reinstated), not to the Settlement Agreement breach claim.


source: Caselaw Access Project

license: Public Domain

text:
    IN RE: REARDEN LLC, Rearden MOVA LLC, MO2, LLC, MOVA, LLC, Petitioners
    2016-125
    United States Court of Appeals, Federal Circuit.
    November 17, 2016

      James M. Wagstaffe, Esq., Frank Busch, Attorney, Kerr & Wagstaffe, LLP, San Francisco, CA, for Petitioners.
    Jon Michaelson, Scott Kolassa, Attorneys, Frances Bruen Cox, Kilpatrick Townsend & Stockton LLP, Menlo Park, CA, Darius C. Samerotte, Kilpatrick Townsend & Stockton LLP, San Francisco, CA, for Respondent Virtue Global Holdings Limited.
    Before MOORE, HUGHES, and STOLL, Circuit Judges.
   ORDER

The defendants in the underlying case, Rearden LLC, Rearden MOVA LLC, M02, LLC, and MOVA, LLC, petition for a writ of mandamus to challenge the district court’s order compelling them to produce allegedly privileged documents. We conclude we have jurisdiction to decide their petition. We further conclude that petitioners’ arguments fail to carry the high burden required on mandamus to overturn the district court’s discovery determination. We therefore deny their petition.

BACKGROUND

A.

The central, underlying dispute in this case is one of ownership. Both sides claim ownership of visual effects technology known as “MOVA Contour Reality Capture” or “MOVA.” MOVA technology can capture an actor’s facial performance for use in motion picture special effects and video games. The technology is secured by trademarks, copyrights, trade secrets, and patents, including U.S. Patent Nos. 7,548,-272 (the '272 patent), 7,567,293 (the '293 patent), 7,605,861 (the '861 patent), and 8,659,668 (the '668 patent), and the technology is reflected in hardware, source code, and other physical assets, all of which we will refer to collectively as the “MOVA assets.” Both sides assert ownership of the MOVA assets. Because the facts are so fiercely contested, we first set forth the basic versions of events of the parties.

According to respondent Virtue Global Holding Limited’s (“VGHL”) version of events, Steve Perlman, the head of Rear-den LLC and the other petitioners, declined an offer from OL2, Inc. to acquire the MOVA assets and proposed OL2 sell the assets instead to then-Rearden employee, Greg LaSalle. Perlman promised to provide legal resources to get the business off the ground and introduced LaSalle to Rearden’s corporate attorney who helped LaSalle establish his own company, M02, LLC, and negotiate the asset transfer with OL2.

In February 2013, respondent says Perl-man demanded that LaSalle turn over the MOVA assets to Rearden. LaSalle’s refusal to turn over the assets resulted in his termination of employment with Rearden. M02, acting through LaSalle, then sold the MOVA assets to Shenzhenshi Haitie-cheng Science and Technology Co., Ltd. (“SHST”) on May 8, 2013. SHST hired LaSalle, and through SHST’s subsidiary, Digital Domain 3.0 (“DD3”), began to sell the technology to movie and videogame studios. LaSalle then filed paperwork to dissolve M02. VGHL subsequently obtained the MOVA assets from SHST.

Petitioners agree that the MOVA assets were transferred to M02 but assert that SHST never obtained ownership. They contend that Perlman and Rearden, not LaSalle, formed original M02 to acquire the MOVA assets and hired LaSalle to file the corporate paperwork, acquire the MOVA assets, and manage, all on Rear-den’s behalf. They contend that, pursuant to his employment agreements, LaSalle assigned any rights in the MOVA assets to Rearden. They say that LaSalle was terminated before May 8, 2013, and lacked authority to act on M02’s behalf. And, in any event, they assert, original M02 transferred the MOVA assets to Rearden MOVA LLC before the purported agreement between LaSalle and SHST.

B.

This case began in February 2015. SHST filed a complaint in the United States District Court for the Northern District of California, alleging that petitioners had made “false or misleading representations of fact concerning the ownership of the MOVA Assets in a campaign to mislead the public and actual and prospective users and licensees of those assets,” including forming a second “M02 LLC” named entity, falsely recording assignments of the MOVA patents from original M02 to Rearden MOVA LLC, and making statements that they owned the assets. SHST sought a declaration that it owned the MOVA assets and that petitioners’ patent assignments were invalid. SHST also sought damages for alleged violations of California’s false advertising and unfair competition statutes.

Petitioners answered that the claims were waived because SHST “knew that authority from at least one of the Defendants was required for the proper transfer of the MOVA Assets.” Petitioners also counterclaimed, seeking a declaration that they owned the MOYA assets, and seeking damages against SHST for, among other things, infringement of the '272, '293, '861, and '668 patents. SHST soon thereafter purportedly sold the assets to respondent VGHL. With SHST stipulating that it would remain in the case as a counterclaim defendant, the district court granted a motion to substitute in March 2016, and VGHL filed an amended complaint raising the same charges as raised in SHST’s complaint. Petitioners responded to the amended complaint by filing the same answers and counterclaims against SHST while adding a claim under the California Uniform Fraudulent Transfer Act.

During discovery, respondent moved to compel petitioners to produce documents exchanged between original M02 and the corporate attorney that Perlman had introduced to LaSalle. The magistrate judge granted the request, concluding that petitioners had not shown they could assert attorney-client privilege on behalf of original M02 and that LaSalle waived the privilege when he shared the documents with DD3. Petitioners objected to the magistrate judge’s ruling. But the objections, the district court determined, did not establish that the magistrate judge’s findings and conclusions were clearly erroneous or contrary to law. The district court therefore denied the objections. In doing so, the district court declined to consider an additional declaration from Perlman because it was not before the magistrate judge.

Discussion

A.

We turn first to respondent’s threshold argument, namely, that issuing mandamus here would not be “in aid of’ our “jurisdietion[ ]” but instead that of the United States Court of Appeals for the Ninth Circuit. 28 U.S.C. § 1651(a); see In re BBC Int’l, Ltd., 99 F.3d 811, 812-13 (7th Cir. 1996) (“Mandamus anticipates an appeal. ... But this assumes that the court from which mandamus is sought is the one that will hear the ultimate appeal.”).

Our jurisdiction over cases from federal district courts is governed by 28 U.S.C. § 1295(a), which states that the Federal Circuit has appellate jurisdiction “in any civil action arising under, or in any civil action in which a party has asserted a compulsory counterclaim arising under, any Act of Congress relating to patents.” § 1295(a)(1). “Because the concept of what constitutes a ‘compulsory counterclaim’ now directly impacts our jurisdiction, it is governed by Federal Circuit law, rather than by that of the regional circuits.” Vermont v. MPHJ Tech. Invs., LLC, 803 F.3d 635, 644 n.2 (Fed. Cir. 2015).

Congress amended our jurisdictional statute through the America Invénts Act to broaden our jurisdiction to include compulsory counterclaims “arising under” patent law. Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat.. 284 (2011). Previously, the Supreme Court’s decision in Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc., 535 U.S. 826, 834, 122 S.Ct. 1889, 153 L.Ed.2d 13 (2002), had effectively limited our jurisdiction to patent law claims asserted in a well-pleaded complaint. It was explained that the amendment to our jurisdictional statute, would counteract the potential for Holmes Group to “lead to an erosion in the uniformity or coherence in patent law that has been steadily building since the [Federal] Circuit’s creation in 1982.” H.R. Rep. No. 109-407, at 5 (2006), subsequently “reaffirm[ed]” by H.R. Rep. No. 112-98, at 81 (2011). The amendment was “intended to provide federal courts, and this court specifically, with a broader range of jurisdiction; that is, with jurisdiction over claims arising under the patent laws even when asserted in counterclaims, rather than in an original complaint.” Vermont, 803 F.3d at 644. But while Congress extended our jurisdiction to ensure uniformity in patent law, that extension did not reach permissive counterclaims. Expressing the concern about the “possibility] that a defendant could raise unrelated and unnecessary patent counterclaims simply in order to manipulate appellate jurisdiction,” it has been argued that Congress limited our appellate jurisdiction to compulsory counterclaims relating to patent law. 157 Cong. Rec. S1379 (daily ed. Mar. 8,2011) (statement of Sen. Kyi).

To determine whether a particular counterclaim is compulsory, we look to Federal Rule of Civil Procedure 13(a). It provides that a compulsory counterclaim “arises out of the transaction or occurrence that is the subject matter of the opposing party’s claim.” Fed. R. Civ. P. 13(a)(1)(A). The requirement that a party must raise “counterclaims arising out of the same transaction or occurrence ... was designed to prevent multiplicity of actions and to achieve resolution in a single lawsuit of all disputes arising out of common matters.” S. Constr. Co. v. Pickard, 371 U.S. 57, 60, 83 S.Ct. 108, 9 L.Ed.2d 31 (1962) (per curiam). Courts interpreting the scope of Rule 13(a)’s “transaction or occurrence” test “generally have agreed that these words should be interpreted liberally in order to further the general policies of the federal rules and carry out the philosophy of Rule 13(a).” 6 Wright & Miller, Federal Practice & Procedure § 1410, at 50-51 (3d ed. 2010).

“[0]ur court has utilized three tests to determine whether the ‘transaction or occurrence’ test of Rule 13(a) is met: (1) whether the legal and factual issues raised by the claim and counterclaim are largely the same; (2) whether substantially the same evidence supports or refutes both the claim and the counterclaim; and (3) whether there is a logical relationship between the claim and the counterclaim.” Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320, 1325 (Fed. Cir. 2008); see also In re EMC Corp., 677 F.3d 1351, 1358 (Fed. Cir. 2012). Here, the claims and counterclaims involve the same patents, they share overlapping legal and factual issues, and substantially the same evidence could refute both the claims of ownership and the counterclaims of infringement. The patent infringement counterclaims share a critical factual dispute with plaintiffs state law claims: whether SHST obtained ownership of the MOVA assets on May 8, 2013. To make a case for patent infringement, coun-terclaimants will need to show that they, not respondent, own the MOVA assets. The success of plaintiffs state law claims will similarly depend on how these factual issues are resolved. Moreover, the infringement claims rely in part on SHST’s unauthorized use of the disputed MOVA assets, including physical assets, whose ownership is in dispute. So the claims and counterclaims share a close, logical relation: the ownership and rightful use of the technology claimed and disclosed in the MOVA patents. See Vermont, 803 F.3d at 644. And plaintiffs claims and petitioners’ counterclaims share substantial evidentia-ry overlap. See Nasalok, 522 F.3d at 1325. Petitioners’ counterclaims thus arise from the same transaction or occurrence as plaintiffs claims. See Fed. R. Civ. P. 13(a). Finally, we note that concerns about not allowing defendants to manipulate jurisdiction through the addition of permissive counterclaims are not implicated here. See 157 Cong. Rec. S1379 (daily ed. Mar. 8, 2011) (statement of Sen. Kyi). Rather, the counterclaims arise out of, and are indeed contingent upon, the very dispute and the same patent rights asserted in the complaint. We thus find petitioners’ patent infringement counterclaims to be compulsory. As such, we have jurisdiction over any appeal of these claims and, hence, jurisdiction over this petition.

We note that this case stands in contrast to one where a plaintiff brings a suit contesting patent ownership and defendants have an infringement claim that matures after the filing of the complaint. In that situation, defendants are permitted to bring that claim in a later suit or, under Rule 13(e), to seek leave to add the claim. See Fed. R. Civ. P. 13(e). The rule provides that “[t]he court may permit a party to file a supplemental pleading asserting a counterclaim that matured or was acquired by the party after serving an earlier pleading.” Id. That determination is, however, case specific. But here, where petitioners counterclaimed that plaintiff infringed the very patents over which both parties seek a declaration of ownership, and where the alleged infringing activity was Jcnown by petitioners at the time of filing, petitioners’ claims are compulsory counterclaims.

B.

Applying regional circuit law, we review a denial of a request for an eviden-tiary hearing and a denial to supplement the record for an abuse of discretion, see United States v. Howell, 231 F.3d 615, 621 (9th Cir. 2000), and the district court’s factual findings for clear error, United States v. Graf, 610 F.3d 1148, 1157 (9th Cir. 2010). Moreover, because petitioners seek relief by way of mandamus, our review is particularly deferential: we will overturn the district court’s determinations on these issues only upon a showing of a “clear and indisputable” right to relief and no adequate alternative legal channels through which petitioners may obtain the same relief. Kerr v. U.S. Dist. Court, 426 U.S. 394, 403, 96 S.Ct. 2119, 48 L.Ed.2d 725 (1976). Petitioners have fallen short of meeting that standard.

Petitioners first argue that the district court erred on review of the magistrate judge’s order in not accepting a supplemental declaration from Perlman and not holding an evidentiary hearing on the issue. Petitioners, however, have hot shown any error in these regards that is mandamus-worthy. While a district court may accept additional evidence and hold an evidentiary hearing, no case, including those cited by petitioners, holds that such a hearing or supplementation is a requirement. See Howell, 231 F.3d at 621 (“[A] district court has discretion, but is not required, to consider evidence presented for the first time in a party’s objection to a magistrate judge’s recommendation”); see also id. at 620 (discussing hearings).

Petitioners, moreover, have not shown a clear abuse of discretion on the part of the district court in refusing their requests. The magistrate judge granted petitioners’ request to consider Perlman’s first declaration that was submitted to address the central issue in this discovery dispute—the ownership of the MOVA assets and control of original M02 prior to when LaSalle entered into an agreement to sell the MOVA assets to SHST. Petitioners failed to explain to the district court why they could not have submitted any added information to the magistrate judge or explain why a hearing in addition to the one held by the magistrate judge was necessary.

Petitioners also suggest that the magistrate judge and district court erred in not deferring a ruling on the privilege issue until after conclusively resolving who controlled the original M02, and thus who had the right to assert the privilege. Yet petitioners cite no case that suggests that the magistrate judge and district court had no legal authority to enter their orders and render preliminary factual determinations on the ownership issue in order to resolve the privilege issue. Rather, they cite one case, United States v. Matt, 178 F.3d 1058, 1065 (9th Cir. 1999), which is not on point and states only the basic proposition that “hard cases should be resolved in favor of the privilege, not in favor of disclosure/’

Petitioners’ remaining arguments largely challenge the district court’s conclusion that they could not assert the privilege, on behalf of original M02. Those arguments, at bottom, are attacks on the district court’s preliminary factual findings regarding whether Rearden MOVA acquired the MOVA assets from original M02 before LaSalle entered an agreement with SHST and whether Perlman and Rearden LLC (as opposed to LaSalle only) controlled and managed original M02 such that they could assert the privilege. We decline to entertain mandamus relief on these arguments because petitioners rely heavily on Perlman’s extra-record declaration and petitioners have alternative avenues to obtain meaningful review of these arguments after trial. See Mohawk Indus., Inc. v. Carpenter, 558 U.S. 100, 109, 130 S.Ct. 599, 175 L.Ed.2d 458 (2009).

Accordingly,

It Is Ordebed That:

The petition is denied.

      . There are two separate entities named “M02, LLC” involved in this case: this M02 entity, which we will also refer to as original M02, and the later-formed "M02, LLC” that is a named defendant and petitioner,

      . While the district court subsequently entered default against SHST for not participating in discovery and set aside its substitution order, now allowing VGHL to assert the claims only as intervenor, we still look to die plaintiff's operative complaint and the counterclaims at the time of filing to determine jurisdiction. See Jang v. Boston Sci. Corp., 767 F.3d 1334, 1338 (Fed. Cir. 2014) C‘[T]he Federal Circuit’s exclusive appellate jurisdiction is predicated on the cause of action and the basis of the facts as they existed at the time the complaint or any compulsory counterclaim was filed.”).


author: HUGHES, Circuit Judge. NEWMAN, Circuit Judge,

text:
    ALFRED E. MANN FOUNDATION FOR SCIENTIFIC RESEARCH, Advanced Bionics, LLC, Plaintiffs-Cross-Appellants v. COCHLEAR CORPORATION, NKA Cochlear Americas, Cochlear Ltd., Defendants-Appellants
    2015-1580, 2015-1606, 2015-1607
    United States Court of Appeals, Federal Circuit.
    Decided: November 17, 2016

      Thomas M. Peteeson, Morgan, Lewis & Bockius LLP, San Francisco, CA, argued for plaintiff-cross-appellant Alfred E. Mann Foundation for Scientific Research. Also represented by Michael John Lyons, Ehsun Forghany, Jason Evan Gettleman, Corey Ray Houmand, Jacob Joseph Orion Minne, Lindsey M. Shinn, Palo Alto, CA; Esther K. Ro, Daniel Grunfeld, Los An-geles, CA.
    Donald Manwell Falk, Mayer Brown, LLP, Palo Alto, CA, for plaintiff-cross-appellant Advanced Bionics, LLC. Also represented by Paul Whitfield Hughes, Washington, DC.
    J. Michael Jakes, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC, argued for defendants-appellants. Also represented by David Mroz; Bruce G. Chapman, Sheppard, Mullin, Richter & Hampton LLP, Los Angeles, CA.
    Before NEWMAN, CHEN, and HUGHES, Circuit Judges.
   Opinion concurring in part, dissenting in part filed by Circuit Judge NEWMAN.

HUGHES, Circuit Judge.

The Alfred E. Mann Foundation for Scientific Research sued Cochlear Corporation and Cochlear Ltd. for infringing claims 1 and 10 of U.S. Patent No. 5,609,-616 and claims 6-7 of U.S. Patent No. 5,938,691, which cover implantable cochlear stimulators. After conducting a jury trial and a bench trial on separate issues, the district court entered judgment finding claim 10 of the '616 patent infringed and claim 1 of the '616 patent and claims 6-7 of the '691 patent invalid for indefiniteness. The court also granted Cochlear’s JMOL of no willful infringement and its motion for a new trial on damages. Both parties appeal. Because we find that the district court did not err in its infringement determination or in finding claims 6-7 indefinite, but did err in finding claim 1 indefinite, we affirm-in-part and reverse-in-part. We vacate and remand the district court’s determination regarding willfulness in light of the Supreme Court’s decision in Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. -, 136 S.Ct. 1923, 195 L.Ed.2d 278 (2016). We also conclude that we do not have jurisdiction over the damages issue.

I

The Alfred E. Mann Foundation for Scientific Research (The Foundation) owns the '616 and '691 patents, and formed Advanced Bionics, LLC (Advanced Bionics) to manufacture implants. The Foundation sued Cochlear Corporation and Cochlear Ltd. (Cochlear) for infringing the '616 and '691 patents, and Advanced Bionics was later added as an involuntary plaintiff. Claims 1 and 10 of the '616 patent and claims 6-7 of the '691 patent are at issue in this appeal.

The patents are directed to an ear implant with telemetry functionality for testing purposes, and generally describe a two-part system comprising an external wearable system with a wearable processor (WP) and headpiece, and an internal implantable cochlear stimulator (ICS). Sound is transmitted from the headpiece to the WP, which processes the transmissions before sending them to the ICS. The ICS processes the sound to stimulate the cochlea—the organ that converts sound to nerve impulses—via implanted electrodes, thereby allowing the user to hear. See '616 patent, col. 3 11. 10-24. In addition, the system allows testers, usually physicians, to measure and adjust various parameters of the implant to assess whether the device is functioning properly. Id. at col. 3211. 34-54. The tester may observe the implant’s functionality through the “physician’s tester.” As depicted in Figure 6, the physician’s tester is a modification of the previously described WP. Id. at col. 51-55.

The tester may interact with the ICS by adjusting various knobs on the control panel 302, such that the physician’s tester measures and displays different parameters on visual display 304. Id. at col. 32 1. 65-col. 33 1. 18. Table 7 of the patents describes “typical parameter settings” for the control knobs, which in turn dictate the parameters that are measured and displayed. Id. at col. 33 11. 14-24. These parameter settings include impedance, voltage, and output current. Id. at col. 33 11. 26-54.

Cochlear’s accused system includes an implant with a pair of electrodes, a speech processor worn behind the patient’s ear, and diagnostic software used to test the implant. After a physician inserts the implant and electrodes, he can use the diagnostic software to send stimulation signals through the electrodes and determine the impedance, which is the resistance to electrical current. The accused system displays the results of the impedance testing by depicting the electrodes as either red or green, where an electrode displayed in red indicates that the electrode has a circuit condition. In addition to displaying a red or green electrode, Cochlear’s system may also display the calculated impedance value. Cochlear’s system does not display the measured voltage across the two electrodes,

On January 23, 2014, the jury found that Cochlear willfully infringed claims 1 and 10 of the '616 patent and claims 6-7 of the '691 patent. The jury also found that all of the asserted claims were not invalid under §§ 102 or 103. The jury awarded approximately $131 million in damages. J.A. 59-70.

On March 31, 2015, the court conducted a bench trial on equitable estoppel, laches, inequitable conduct, prosecution history, and indefmiteness, and determined that all of the asserted claims except for claim 10 of the '616 patent were invalid for indefiniteness. Id. at 47-56. On the same day, the court denied Cochlear’s JMOL of non-infringement as to claim 10 of the '616 patent, granted Cochlear’s JMOL of no willful infringement, and granted Cochlear’s motion for a new trial on damages. Id. at 10-24.

Cochlear appeals the court’s denial of its JMOL of noninfringement as to claim 10 of the '616 patent. The Foundation and Advanced Bionics (collectively, Cross-Appellants) appeal the court’s indefmiteness findings as to claim 1 of the '616 patent and claims 6-7 of the .'691 patent, grant of Cochlear’s JMOL of no willful infringement, and grant of Cochlear’s motion for a new trial on damages. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

II

We first address the district court’s denial of Cochlear’s JMOL of noninfringement of claim 10 of the '616 patent. We review the denial of a motion for judgment as a matter of law under the law of the regional circuit. Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1331 (Fed, Cir. 2010), The Ninth Circuit reviews the district court’s denial de novo. Rivero v. City & Cty. of San Francisco, 316 F.3d 857, 863 (9th Cir. 2002). Judgment as a matter of law is appropriate where there is no legally sufficient evidentiary basis for a reasonable jury to find for the party on that issue. Fed. R. Civ. P. 50(a)(1). Cochlear raises two arguments on appeal: first, the district court erred in construing claim 10, and second, even under the district court’s construction, Cochlear’s accused system does not infringe. We address each of these arguments in turn.

A

Cochlear argues that claim 10 of the '616 patent requires that an infringing system must display the voltage between two electrodes. Cochlear Br. at 31-32. We review claim construction de novo, arid underlying factual determinatioris concerning extrinsic evidence for clear error. Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. -, 135 S.Ct. 831, 841, — L.Ed.2d - (2015). We do not find Cochlear’s arguments persuasive based on the claim language, specification, and prosecution history. See Phillips v. AWH Corp., 415 F.3d 1303, 1313-14 (Fed. Cir. 2005) (en banc).

Claim 10 of the '616 patent reads, in relevant part:

A method of testing an implantable tissue stimulating system comprising: ...
[f] selectively monitoring the at least one pair of the multiplicity of electrodes, to measure a voltage associated therewith at the same time the stimulation signals are applied thereto;
[g] generating stimulator status-indicating signals representative of the measurements made within the implanted stimulator;
[h] transmitting the stimulator status-indicating signals to an external receiver coupled to the external transmitter;
[i] receiving and processing the status-indicating signals to produce processed status-indicating signals which convey information regarding the status of the implanted stimulator, including the measurements made within the implanted stimulator, and
[j] displaying the processed status-indicating signals, whereby the status of the implanted stimulator, including the results of the measurements made within the implanted stimulator, may be made known.

'616 patent, col. 35 1. 43-col. 36 1. 7 (emphases added).

Cochlear first argues that voltage measurements must be included in the processed status-indicating signals because part (i) of the claim states that “processed status-indicating signals ... convey information ... including the measurements made within the implanted stimulator.” See Cochlear Br. at 36 (emphasis added). Cochlear reasons that part (i) “does not permit processing that calculates impedance values from the voltage measurements without maintaining the voltage measurements for display.” Id. We find Cochlear’s argument unpersuasive in light of the claim language as a whole.

While it is true that the “measurements made within the implanted stimulator” in part (i) are the voltage measurements according to the plain language of the claim and the court’s construction, see J.A. 13, part (g) defines the pre-processed status-indicating signals as merely “representative” of these measurements, see '616 patent, col. 35 11. 60-62. According to part (i), the signals described in part (g) are further processed such that they only “convey information regarding the status of the implanted stimulator.” Id. at col. 35 1. 66-col. 36 1. 3. Parts (g) and (i) together make clear that the status-indicating signals, regardless of whether they are processed or not, only have to convey information about the voltage measurements, but do not require such information to be displayed. Furthermore, Cochlear’s construction would require us to find that to “convey” the voltage measurements, the signals in part (i) must “display” this information. There is no intrinsic support for this definition, which would also render part (j) redundant under Cochlear’s proposed construction. Merck & Co. v. Teva Pharm. USA Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”).

Cochlear next argues that the “whereby” clause in part (j) is material to patent-ability such that voltage must be made available for display. Cochlear Br. at 38. The district court determined that the “whereby” clause merely provides a more illustrative expression of the “displaying the status-indicating signals” limitation, and provides no additional restrictions on the claim. J.A. 26436. We agree. There is no support for Cochlear’s construction, particularly because parts (g) and (i) of claim 10 make clear that the processed status-indicating signals only have to convey information about the voltage measurements, but do not have to include the measurements for display. In addition, Cochlear’s construction would require us to find that the term “may be made known” means “available for display.” There is no support for this interpretation, particularly because the limitation states that only the processed status-indicating signals must be displayed.

Cochlear’s proposed construction also conflicts with the specification. As depicted in Figure 6, the control knob 308 (the right most knob) is one of three knobs that dictate “the parameters measured and displayed by the ICS and Physician’s Tester combination.” '616 patent, col. 33 11. 14-18. Positions 1-3 correspond to the impedance, and are distinct from positions 4-7, which correspond to the voltage. Id. at 11. 36-40 (Table 7). Because the specification envisions that impedance, voltage, or the current may be displayed, the voltage measurement does not have to be displayed as Cochlear argues.

The prosecution history also does not support Cochlear’s proposed claim construction. In response to a § 112 rejection, the patentee amended “voltages/current” to “voltage” in part (f), and in response to a § 103 rejection, added parts (i) and (j). J.A. 15834-36. Cochlear argues that the applicant made this amendment to specify that the voltage must be displayed. Cochlear Br. at 38. But, it is clear that the patentee amended the claim to distinguish the invention from the prior art based on its real-time testing abilities. See J.A. 15843^44 (noting that the invention allowed a physician to perform' real-time testing, where a sensed parameter (voltage) “is sent back to the physician’s tester as part of a feedback signal were [sic] it is displayed or otherwise processed. Such action thereby provides, in effect, a ‘snapshot’, in real time, of the selected parameter .... ”). Though the Examiner allowed the claim because “the prior art does not show or suggest the measuring of the electrode voltage for external display,” id. at 15850, an examiner’s unilateral statement does not give rise to a clear disavowal of claim scope by the applicant, see Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1347 (Fed. Cir. 2005). Here, the patentee did not argue that the voltage must be displayed, instead focusing its arguments on the real-time features of the invention.

In light of the intrinsic evidence, we reject Cochlear’s proposed claim construction.

B

Cochlear argues that even under the district court’s construction, its accused system does not infringe. Infringement is a question of fact that we review for substantial evidence when tried to a jury. Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1309 (Fed. Cir. 2009). Cochlear asserts that even though its system may display the impedance value, the voltage value is not “made known” as required by part (j) of claim 10. Cochlear’s Br. at 43-44. The relationship between voltage, impedance, and current is defined by Ohm’s Law, where voltage = current x impedance. Because there is sufficient evidence that the accused system sets forth the current level associated with each measurement, J.A. 4700, and voltage may be measured by multiplying the current level by the accused system’s displayed impedance value, there is substantial evidence that Cochlear’s accused system infringes claim 10.

Ill

We next turn to Cross-Appellants’ cross-appeal on the court’s indefiniteness determinations. The ultimate determination of indefiniteness is a question of law that we review de novo, although any factual findings by the district court based on extrinsic evidence are reviewed for clear error. UltimatePointer, LLC v. Nintendo Co., 816 F.3d 816, 826 (Fed. Cir. 2016).

To satisfy the definiteness requirement, a means-plus-function claim requires sufficient disclosure of the underlying structure. That task lies with the patentee. E.g., Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003) (“The duty of a patentee to clearly link or associate structure with the claimed function is the quid pro quo for allowing the patentee to express the claim in terms of function under section 112, paragraph 6.”) (citing Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1377 (Fed. Cir. 2001)); Valmont Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1042 (Fed. Cir. 1993) (“The applicant must describe in the patent specification some structure which performs the specified function.”). In cases involving a computer-implemented invention, we have held that the structure must be more than a general purpose computer or a microprocessor, Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008), unless, in the rare circumstance, any general purpose computer without any special programming can perform the function, see Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012). Where the structure is a general purpose computer or microprocessor, “Requiring disclosure of an algorithm properly defines the scope of the claim and prevents pure functional claiming.” Ergo, 673 F.3d at 1364. An “algorithm” is “a step-by-step procedure for accomplishing a given result,” and may be expressed “in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.” Id. at 1365 (citations and internal quotation marks omitted). “Claim definiteness .., depends on the skill level of a person of ordinary skill in the art. In software cases, therefore, algorithms in the specification need only disclose adequate defining structure to render the bounds of the claim understandable to one of ordinary skill in the art.” AllVoice Computing PLC v. Nuance Commc’ns, Inc., 504 F.3d 1236, 1245 (Fed. Cir. 2007) (internal citations omitted).

A

Claim 6 of the '691 patent reads, in relevant part:

A cochlea stimulation system, comprising:
[a] audio signal receiving means;
[b] an externally wearable signal processor (WP) for receiving and processing the audio signals received by the audio signal receiving means and including means for generating data indicative of the audio signal-, ....

'691 patent, col. 34 1. 51-col. 351. 6 (emphasis added).

Claim 7 of the '691 patent is dependent on claim 6, and the reproduced portion of claim 6 is the only part relevant here.

The limitation “means for generating data indicative of the audio signal” is a means-plus-function limitation. Cross-Appellants do not dispute that the function is “generating data indicative of the audio signal,” and the corresponding structure is a microprocessor. See J.A. 53; Foundation Br. at 54; Advanced Bionics Br. at 20-21. A portion of Figure 1, depicting the wearable system 10, is reproduced below, where structure 30 is the microprocessor.

The district court found claims 6-7 indefinite because the specification of the '691 patent fails to disclose the requisite algorithmic structure to perform the “means for generating data indicative of the audio signal” function. J.A. 53-56. Cross-Appellants argue that the claims are not indefinite because the “microprocessor implements a logarithmic conversion algorithm to generate data indicative of an audio signal.” J.A. 54.- According to Cross-Appellants, ■ the algorithm performed by the microprocessor has two steps: first, the microprocessor receives digital data from the A/D converter 28, and second, the microprocessor uses a logarithmic conversion function to format the data. J.A. 33657. The district court found the claims indefinite because the '691 patent does not disclose where the logarithmic conversion function takes place and because the logarithmic conversion function could be implemented through multiple logarithmic algorithms, none of which the specification describes. J.A. 54-55. We agree that the claims are indefinite for these reasons.

Cross-Appellants argue that the logarithmic conversion must be performed in the microprocessor. Foundation Reply Br. 6. This argument conflicts with the testimony of both experts. Dr. Robert Stevenson, Cochlear’s expert, explained that the logarithmic conversion could be placed in the A/D convertor, or “[a]ltematively[,] you could put this algorithm into the microprocessor.” J.A. 2596, 11. 11-15. Dr. Darrin J. Young, Cross-Appellants’ expert, testified that “[t]he patent doesn’t say that”’ the logarithmic conversion must be done in the microprocessor, J.A. 261711. 2-4, and agreed that “[y]ou could implement a logarithmic function into the [A/D] converter.” J.A. 2616, 11. 13-15. Since the patent does not disclose which component performs the logarithmic conversion function, the specification does not disclose “with sufficient particularity the corresponding structure for performing the claimed function ....” Triton Tech of Tex., LLC v. Nintendo of Am., Inc., 753 F.3d 1375, 1378 (Fed. Cir. 2014); see also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1315 (Fed. Cir. 2011); Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1385 (Fed. Cir. 2009) (“The question before us is whether the specification contains a sufficiently precise description of the ‘corresponding structure’ to satisfy section 112, paragraph 6, not whether a person of skill in the art could devise some means to carry out the recited function.”).

These claims are indefinite for another reason: the logarithmic conversion may be implemented through various unspecified algorithms. In describing some additional possible algorithms, Dr. Young testified that logarithmic conversions could be implemented using a binary logarithmic algorithm or a lookup table. J.A. 2618, 11. 12-19. According to Dr. Young, the only limit on the number of algorithms that could be used was how “complicated you want to make the logarithmic function.” J.A. 2617, 11. 5-9. For instance, Dr. Young testified that a logarithmic function implemented in the A/D converter would not be simple but would have “multiplication factors” that would “need[ ] to be programmed.” J.A. 2616,11.13-21.

As the testimony reflects, the '691 patent does not disclose an algorithm, or even a small set of algorithms for performing the claimed logarithmic conversion function. “Disclosing the broad class of [logarithmic conversion] does not limit the scope of the claim to the ‘corresponding structure, material, or acts’ that perform the function, as required by Section 112.” Triton Tech., 753 F.3d at 1379. Although Cross-Appellants argue that a person of ordinary skill in the art would know of potential logarithmic conversion functions to implement, Foundation Br. 59-60, this does not create structure in the patent where there was none to begin with. Triton Tech., 753 F.3d at 1379 (“Although a person of skill in the art might be able to choose an appropriate numerical integration algorithm and program it onto a microprocessor, the [p]atent discloses no algorithm at all.”) (alteration in original). Because the court did not err in finding claims 6-7 indefinite where the specification fails to disclose the requisite structure, we affirm the district court’s indefiniteness finding.

B

Claim 1 of the '616 patent reads, in relevant part:

A physician’s testing system for testing a multichannel cochlear stimulating system, comprising a physician’s tester, an external headpiece/transmitter, and an implanted cochlear stimulator (ICS), ...
[c] the physician’s tester comprising:
external processor means coupled to the transmitting means of the external headpiece/transmitter for receiving and processing the status-indicating signals to derive information therefrom regarding the operation of the implanted stimulator and its plurality of tissue stimulating electrodes-,

'616 patent, col. 34 11. 23-61 (emphases added).

The limitation “external processor means ..... for .... processing- the status-indicating signals to derive information therefrom” is a means-plus-function limitation. It is undisputed that the structure is the microprocessor. J.A. 50.

The district court rejected Cross-Appellants’ argument that the patent discloses a two-step algorithm, where first, the microprocessor accepts signals representative of voltage, and second, the microprocessor applies Ohm’s law to convert the voltage into an impedance value. Id. at 51. The court found claim 1 indefinite because the patent does not explicitly identify Ohm’s law and there are multiple ways of calculating impedance. Id. at 52. We disagree.

The specification discloses that both voltage and current are measured, and that these values are associated with the resulting “status-indicating signal.” See, e.g., '616 patent, col. 32 11. 36-42 (“[T]he system of the present invention provides for ... measurement of different voltages and currents within the ICS in response to commands and data changes transmitted by the WP in response to data telemetered back to the WP in the form of status indicating and measurement signals.”). Both parties’ experts testified that a person of ordinary skill would know to apply Ohm’s law to voltage and current to yield impedance values. See. J.A. 33662 (“[Impedance] is always calculated based on the ratio of voltage to current. One of ordinary skill in the art would readily understand from the disclosure in the '616 patent that this [sic] the algorithm is implemented. The algorithm for calculating impedance is Ohm’s law, which is famous and well known to a person of ordinary skill in the art.”); id. at 2586 at 68:11-18 (“Q: If you know what the current is' that’s being applied and you know what the voltage is being measured, then you could use that information to put it into the Ohm’s law equation and calculate impedance; right? A: In this application where you want to do something like this, you could do that. There are other things you could do.”). The specification also discloses that impedance is calculated based on voltage and current. '616 patent, col. 31 11. 55-58 (“[B]oth the stimulus voltage and current can be measured and, thereby, the impedance of the electrode and the tissue-electrode interface can be measured and transmitted back to the WP.”). Because there is “adequate defining structure to render the bounds of the claim understandable to one of ordinary skill in the art,” AUVoice, 504 F.3d at 1245, we reverse the district court’s indefiniteness finding as to claim 1 of the '616 patent.

IV

The jury found that Cochlear willfully infringed claims 1 and 10 of the '616 patent and claims 6-7 of the '691 patent. J.A. 63, 67. The court set this verdict aside in granting Cochlear’s JMOL of no willful infringement. The court concluded that a reasonable jury could not find that the objective prong of the Seagate inquiry was established by clear and convincing evidence, and that Cochlear had presented several reasonable noninfringement defenses. Id. at 18-19. Although the parties stipulated that “Cochlear was aware of the '691 patent and its subject matter by June 2004” and “was aware of the '616 patent and its subject matter by July 2003[,]” id, 265, the court determined that the Foundation failed to satisfy the subjective prong because (1) the Foundation did not provide pre-suit notice regarding the '691 patent, and (2) Cochlear responded with reasonable infringement defenses after being notified of the '616 patent, id. at 19.

In Halo, the Supreme Court rejected the Seagate test for willful infringement as “unduly rigid” and “impermissibly encumber[ing] the statutory grant of discretion to district courts.” 136 S.Ct. at 1932 (internal citation and quotation marks omitted). The Court rejected the Seagate test’s clear-and-convincing standard of proof, as well as the tripartite framework for appellate review. Id. at 1934 (“As we explained in Octane Fitness, ‘patent-infringement litigation has always been governed by a preponderance of the evidence standard.’ ” (citing Octane Fitness, LLC v. ICON Health & Fitness, 572 U.S. -, 134 S.Ct. 1749, 1758, 188 L.Ed.2d 816 (2014))). The Court also rejected Seagate’s requirement of “a finding of objective recklessness in every case before district courts may award enhanced damages.” Id. at 1932. “Such a threshold requirement excludes from discretionary punishment many of the most culpable offenders, such as the ‘wanton and malicious pirate’ who intentionally infringes another’s patent—with no doubts about its validity or any notion of a defense—for no purpose other than to steal the patentee’s business.” Id. The Court described “[t]he sort of conduct warranting enhanced damages.... as willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, [or] flagrant ..., ” Id.

Cross-Appellants argue that, at a minimum, we should vacate and remand the court’s grant of JMOL on willfulness in light of Halo. We agree. On remand, mindful of Halo’s “preponderance of the evidence standard,” 136 S.Ct. at 1934, the court must consider whether Cochlear’s infringement “constituted an ‘egregious case[] of misconduct beyond typical infringement’ meriting enhanced damages under § 284 and, if so, the appropriate extent of the enhancement.” WesternGeco L.L.C. v. ION Geophysical Corp., 837 F.3d 1358, 1364 (Fed. Cir.2016) (quoting Halo, 136 S.Ct. at 1934).

Accordingly, we vacate the district court’s determination that Cochlear’s infringement of the Foundation’s patents was not willful and remand for further proceedings.

V

Lastly, the court ordered a new trial on damages for claim 10 of the '616 patent and vacated the jury’s damages award. J.A. 23. Cross-Appellants argue that the court abused its discretion in granting Cochlear’s motion. We lack jurisdiction to consider this issue.

Ordinarily, we apply regional circuit law to substantive and procedural issues not “intimately involved in federal patent law.” Verinata Health, Inc. v. Ariosa Diagnostics, Inc., 830 F.3d 1335, 1338 (Fed. Cir. 2016). However, on matters concerning our jurisdiction, “we apply our own law and not the law of the regional circuit.” Spraytex Inc. v. DJS&T, 96 F.3d 1377, 1379 (Fed. Cir. 1996); see also Woodard v. Sage Prods., Inc., 818 F.2d 841, 844 (Fed. Cir. 1987) (“[D]eference [to regional circuit law] is inappropriate on issues of our own appellate jurisdiction. This court has the duty to determine its jurisdiction and to satisfy itself that an appeal is properly before it.”).

“By statute, this court has jurisdiction over an appeal of a decision of a district court if it is ‘final’ under 28 U.S.C. § 1295(a)(1) or if it is an interlocutory order as specified in 28 U.S.C. § 1292.” Orenshteyn v. Citrix Sys., Inc., 691 F.3d 1356, 1357 (Fed. Cir. 2012). One exception to the foregoing is when the judgment is final except for an “accounting.” 28 U.S.C. § 1292(c)(2); see Robert Bosch, LLC v. Pylon Mfg. Corp., 719 F.3d 1305, 1309 (Fed. Cir. 2013) (en banc) (holding that an “accounting” may include a trial on damages).

There has not been a final decision on the damages issue. We are not persuaded by Cross-Appellants’ argument that the § 1292(c)(2) exception to the rule of finality applies here. Under Bosch, the exception allows us to consider the liability issues in this case, but does not go so far as to permit us to consider the non-final order itself. Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 759 F.3d 1333, 1339 (Fed. Cir. 2014) (“As an exception to the final judgment rule, § 1292(c)(2) is to be interpreted narrowly.”). Clearly, if the parties were only appealing the damages issue, we would not have jurisdiction under § 1295(a)(1). The addition of the' liability issues in this case does not change our jurisdictional reach. Orenshteyn, 691 F.3d at 1363-64 (dismissing as premature portion of invalidity and sanctions appeal relating to sanctions because the district court had not yet made a final determination regarding the amount of the. sanctions).

Cross-Appellants also argue that we have jurisdiction because of the district court’s certification of judgment under Fed. R. Civ. P. 54(b). Foundation Reply Br. 24. The Rule provides in relevant part: “[wjhen an action presents more than one claim for relief ... or when multiple parties are involved, the court may direct entry of a final judgment as to one or more, but fewer than all, claims or parties only if the court expressly determines that there is no just reason for delay.” Rule 54(b) was implemented to specifically “avoid the possible injustice of delaying] judgment on a distinctly separate claim [pending] adjudication of the entire case.” Gelboim v. Bank of Am. Corp. — U.S. -, 135 S.Ct. 897, 902, 190 L.Ed.2d 789 (2015) (alterations in original).

There are three prerequisites for invoking Rule 54(b): (1) multiple claims for relief or multiple parties must be involved; (2) at least one claim or the rights and liabilities of at least one party must be finally decided; and (3) the district court must find that there is no just reason for delaying an appeal. 10 Charles Alan Wright et al., Federal Practice and Procedure § 2656 (3d ed. 2016). Because “the district court has no discretion to authorize an appeal when Rule 54(b) does not apply, its decision that the requirements of the rule have been met is fully reviewable by an .appellate court.” Id. at § 2655.

The district court’s entry of judgment on the damages question does not meet the standards of Rule 54(b) because damages have not been finally decided. In Sears, Roebuck & Co. v. Mackey, the Supreme Court discussed Rule 54(b):

[I]t does not relax the finality required of each decision, as an individual claim, to render it appealable, but it does provide a practical means of permitting’an appeal to be taken from one or more final decisions on individual claims, in multiple claims actions, without waiting for final decisions to be rendered on all the claims in the case.

351 U.S. 427, 435, 76 S.Ct. 895, 100 L.Ed. 1297 (1956). The standard for finality under Rule 54(b) is analogous to the standard under 28 U.S.C. § 1291 (or 28 U.S.C. § 1295). Id. at 438, 76 S.Ct. 895 (“[Rule 54(b) ] scrupulously recognizes the statutory requirement of a ‘final decision’ under § 1291 as a basic requirement for an appeal to the Court of Appeals. It merely administers that requirement in a practical manner in multiple claims actions and does so by rule instead of by judicial decision.”); see also Wright, Federal Practice and Procedure § 2656. The Supreme Court has explained that judgments “where assessment of damages or awarding of other relief remains to be resolved have never been considered to be ‘final’ ” for purposes of Rule 54(b). Liberty Mut. Ins. Co. v. Wetzel, 424 U.S. 737, 744, 96 S.Ct. 1202, 47 L.Ed.2d 435 (1976).

The issue of the propriety of the damages award was not properly certified for appeal under Rule 54(b) because the district court ordered a new trial on damages. A new trial is not a final order that falls within Rule 54(b). See Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 34, 101 S.Ct. 188, 66 L.Ed.2d 193 (1980) (“An order granting a new trial is interlocutory in nature and therefore not immediately ap-pealable.”). Therefore, because the district court's judgment does not fall within the scope of Rule 54(b) or § 1292(c)(2)’s accounting exception, we lack jurisdiction to consider whether the court erred in ordering a new trial on damages.

VI

For the reasons stated herein, we affirm-in-part, reverse-in-part, and vacate-in-part the district court’s judgments and remand the case to the district court to proceed in accordance with the holdings discussed herein.

AFFIRMED-IN-PART, REVERSED-IN-PART, VACATED-IN-PART, AND REMANDED

No costs.

NEWMAN, Circuit Judge,

concurring in part, dissenting in part.

I agree that claim 10 of the '616 patent is valid and infringed, and I agree that claim 1 of the '616 patent is valid. Thus I join Parts II and III-B of the court’s opinion. I also agree that, in view of changed law, remand is appropriate on the issue of willful infringement, and to that extent I join Part IV of the court’s opinion.

However, I do not share the court’s view that claims 6 and 7 of the '691 patent are invalid for indefiniteness. The district court’s finding of indefiniteness was contrary to the testimony of the experts for both sides. I respectfully dissent from the court’s decision in Part III-A.

As for the district court’s vacatur of the jury’s damages verdict and order for a retrial of damages, I do not agree that the order is immune from the appellate review requested by the district court under Rule 54(b). Thus I respectfully dissent from part V of the court’s decision.

I

Indefíniteness of Claims 6 and 7

The court affirms the invalidation of claims 6 and 7 on the ground that the Foundation does not persuasively show that the microprocessor performs a logarithmic conversion function. Maj. Op. at 1343. This position is contrary to the evidence presented by both sides; Cochlear failed to carry its burden to present clear and convincing evidence of invalidity on the ground of indefiniteness.

The court also finds the claims indefinite because the '691 patent does not state which of several known methods was used for the logarithmic conversion. The specification expressly discloses the non-linear mapping steps, and the experts for both sides agreed that persons in the field of the invention know how to perform the simple conversion, which was well-known in the prior art.

The claims at issue, claims 6 and 7 of the '691 patent, are challenged only for the clause here shown in bold:

6. A cochlea stimulation system, comprising:
audio signal receiving means;
an externally wearable signal processor (WP) for receiving and processing the audio signals received by the audio signal receiving means and including means for generating data indicative of the audio signal;
means for transmitting the data to an implanted cochlear stimulator (ICS), the ICS including:
means for transmission from the WP, processor means for processing such transmissions to generate stimulation pulses and for controlling the pulse width of the stimulation pulses,
a plurality of electrically isolated capacitor-coupled cochlea stimulating electrodes for receiving the stimulation pulses,
means in the ICS responsive to data from the WP for selectively monitoring at least one of the electrodes or voltages in the ICS and for generating ICS-status-indicating signals, and
means in the ICS for transmitting such ICS-status-indicating signals to the WP; and
means in the WP for receiving and processing the ICS-status-indicating signals. ■ •

'691 Patent, cl. 6. The structure described in the specification for the “means for generating data indicative of the audio signal” is a microprocessor performing a logarithmic conversion function.

The '691 patent describes all of the claim elements in the form that is customary in computer-facilitated inventions: stating the function and how it is performed, in text, drawings, and flow-charts. The patent explains that the cochlear electrodes mimic sound by outputting stimulation signals in the cochlear electrodes with voltages' between 0 and 2600 microamps. '691 Patent, col. 6 11. 8-48. The specification includes a detailed logarithmic schedule of steps corresponding to the range of sounds. '691 Patent, "col. 4 11.43-64. Sound waves are translated into digital information in the D/A converter and then into the selected output voltage in the microprocessor by a logarithmic conversion. '691 Patent, col. 10, 11. 1-8. The patent teaches that the means for generating “data indicative of the audio signal” is a microprocessor performing a basic logarithmic conversion, for which the specification includes a look-up table. '691 Patent, col. 6 11. 8-48.

Precedent requires that the court views the technology as it would be viewed by persons of skill in the field of the invention. See Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (“[T]he specification must permit one of ordinary skill in the art to ‘know and understand what structure corresponds to the means limitation.’”). The overarching requirement is that the particular factual situation must be viewed, and definiteness evaluated, in the same way as by persons in the field of the invention.

With" respect to software-implemented systems, this court has explained that:

Claim definiteness ... depends on the skill .level of a person of ordinaiy skill in the art. In software cases, therefore, algorithms in the specification need only disclose adequate defining structure to render the bounds of the claim understandable to one of ordinary skill in the art. ■ .

AllVoice Computing PLC v. Nuance Commc’ns, Inc., 504 F.3d 1236, 1245 (Fed. Cir. 2007) (citations omitted). In Typhoon Touch Technologies, Inc. v. Dell, Inc., 659 F.3d 1376, 1386 (Fed. Cir. 2011), the court observed that “known computer-implement[ed] operations ... are readily implemented by persons of skill in computer programming.”

Logarithmic conversion has been known for centuries. The experts for both sides agreed that logarithmic conversion is well-known, and that persons of skill in the field of the invention would understand the description of the logarithmic conversion in the claimed system. Alfred E. Mann Found. for Sci. Res. v. Cochlear Corp., No. 07-8108 FMO (SHx) (Testimony of The Foundation Expert Dr. Young) (Dkt. 454) (‘Your output relationship is well defined. I can’t change the log value. It’s a fixed function.”); Trial Tr. at 75, 11. 1-11, Alfred E. Mann Found. for Sci. Res. v. Cochlear Corp., No. 07-8108 (C.D. Cal. Jan. 22, 2014) (Dkt. 456) (Testimony of Cochlear Expert Dr. Stevenson) (testifying that a logarithmic conversion is used because “at the other end you want this exponential”); The Foundation Expert Dr. Young Deck at ¶ 17, Mann. Found, No. 07-8108 (Dkt. 406) (“That [logarithmic] algorithm is implemented with a simple logarithmic lookup table.”). The '691 patent includes a lookup table containing the results of the calculations. '691 Patent, col. 4 11.43-64.

No witness for either side testified that a person of skill in the field would have difficulty performing the logarithmic conversion. No testimony on examination or cross-examination placed this aspect in dispute. It was not disputed that the conversion of sound into “data indicative of the audio signal” is conventional and was known and used in the operation of prior art cochlear implants. No contrary evidence was presented, and no contrary argument is offered. Nonetheless, my colleagues find the claims indefinite on the ground that there are “multiple logarithmic algorithms[ ] none of which the specification describes.” Maj. Op. at 1343. Precedent does not require that well-known formulas must be stated in the specification, when they are known in the relevant art.

A known procedure is not rendered indefinite when there is more than one known way of carrying it out. As stated in Ibormeith IP, LLC v. Mercedes-Benz USA, LLC, 732 F.3d 1376, 1379 (Fed. Cir. 2013): “For a claim to be definite, a recited algorithm, or other type of structure for a section 112(f) claim limitation, need not be so particularized as to eliminate the need for any implementation choices by a skilled artisan.” Here, there was no dispute that persons “skilled in the particular art” would “understand what structure(s) the specification discloses.” Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1382 (Fed. Cir. 1999).

Both parties’ experts and the district court agreed that the invention necessarily employs a logarithmic conversion. See Mann Found., 96 F.Supp. at 1051 (“While it may be necessary for the wearable processor (WP) ... to perform a logarithmic conversion, because the implantable cochlear system includes an exponential D/A converter, it has not been established that the logarithmic conversion must take place in the microprocessor.”). It was not disputed that logarithmic conversion was known for audio data, and had been used in prior art cochlear implants.

My colleagues’ holding that it was necessary to state which of the two or three known logarithmic conversion routines was used, on pain of invalidity, is unsupported by mathematics, reason, or precedent. See S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1371 (Fed. Cir. 2001) (“[PJatent documents need not include subject matter that is known in the field of the invention and is in the prior art, for patents are written for persons experienced in the field of the invention.”); Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366-67 (Fed. Cir. 2003) (implementation choices of “known algorithms” are “properly left to the knowledge of those skilled in the art, and need not be specified in the patent”).

On similar facts, this court has held that claims are not invalid for indefiniteness when expert testimony “sets forth several straightforward ways that the algorithm ... could be implemented by one skilled in the art.” AllVoice, 504 F.3d at 1245. On cross examination at trial, the Foundation’s expert, Dr. Young, explained that no matter how a logarithmic conversion is implemented, the algorithm will' be the same: “your output relationship is well defined. I can’t change the log valué. It’s a fixed function.” Alfred E. Mann Found. for Sci Res. v. Cochlear Corp., No. 07-8108 FMO (SHx) (Testimony of The Foundation Expert Dr. Young) (Dkt. 454).

A finding of invalidity based on indefiniteness requires proof by clear and convincing evidence that persons skilled in the field of the invention would not be “able to perform’the recited function” based oh the description in the specification and the knowledge in the art. Intel Corp., 319 F.3d at 1366. This standard controls, along with the truism that “[p]atent documents are written for persons familiar with the relevant field ..‘. lest every patent be required to be written as á comprehensive tutorial and treatise for the generalist.” Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1119 (Fed. Cir. 2002).

The court errs in finding claims 6 and 7 invalid for indefiniteness, upon new and ill-defined requirements for patent specifications that are unrealistic and unnecessary, adding burdens and pitfalls with no benefit to anyone. The implementing structure “must be sufficiently defined to render the bounds of the claim—declared by section 112(f) .to cover the particular structure and its equivalents—understandable by the implementer.” Ibormeith, 732 F.3d at 1379. As computer-implemented technology continues to provide new public benefits, consistency of judicial view is essential to stability of the law and progress of the technology.

II

Jurisdiction to review the Order for a new trial

The district court vacated the jury’s damages verdict, Judgment at 2, Mann Round, No. 07-8108 (Dkt. 548), and ordered a new trial on damages on the ground that “the damages awarded by the jury were not broken down as to each claim or patent,” Order Re: Post-Trial Motions at 23, Mann Found, No. 07-8108 (Dkt. 540). My colleagues hold that this court lacks jurisdiction to review the district court’s order of vacatur and a new trial, holding that the district court abused its discretion in certifying and entering judgment under Rule 54(b), on the theory that there is not a final, decision on damages. Maj. Op. at 1346. The vacatur order is renewable under either the district court’s Rule 54(b) certification or under 28 U.S.C. § 1292(c)(2). The district court entered “judgment ... in favor of Defendants as to the vacatur of the jury’s damages award,” Judgment at 2. Thus the district court assured that its judgment of vacatur was appealable. Mann. Found, No. 07-8108 (Dkt. 547). Precedent and sound practice counsel that we attend to this appeal requested by the district court.

The Supreme Court does not view the requirement of finality as strictly “jurisdictional,” but as a matter of practical jurisprudence and comity. The Court has counseled that “the requirement of finality is to be given a practical rather than a technical construction.” Gillespie v. United States Steel Corp., 379 U.S. 148, 152, 85 S.Ct. 308, 13 L.Ed.2d 199 (1964) (internal quotations omitted); see American Export Lines, Inc, v. Alvez, 446 U.S. 274, 279, 100 S.Ct. 1673, 64 L.Ed.2d 284 (1980) (“[N]ow that the case is before us ... the eventual costs, as all the parties recognize, will certainly be less if we now pass on the questions presented here rather than send the case back with those issues undecided.” (alterations original) (citing Gillespie, 379 U.S. at 153, 85 S.Ct. 308)). In White v. New Hampshire Department of Employment Security, the Court observed that “district courts have ample authority to deal with” the “problem” of piecemeal appeals. Here, the district court prudently exercised such authority, entering judgment as to the va-catur of the jury’s damages verdict and certifying the issue under Rule 54(b).

The district court vacated the damages verdict that was fully tried on the jury instruction submitted by Cochlear, the party now complaining of the result. The verdict form, proposed and accepted by Cochlear, instructed the jury:

25. If you find that the Cochlear Defendants have infringed a valid claim of either the '616 patent or the '691 patent, what is the reasonable royalty rate that the Cochlear Defendants should pay to the Foundation?

The jury answered: 7.5%. Verdict Form, Mann Found., No. 07-8108 (Dkt. 460). The Foundation argues that the instructions were correct and Cochlear’s post-trial objection waived, and also that the verdict is well supported by the evidence.

Precedent and sound practice provide appellate jurisdiction of the vacatur order. The Ninth Circuit, whose precedent controls as to procedural matters in its district courts, has recognized that appellate review must promote judicial efficiency and sensible litigation economy. See Wabol v. Villacrusis, 958 F.2d 1450, 1455 (9th Cir. 1990) (“Though the remaining issues could eventually ascend to this court, this alone should not prevent our adjudication of important and potentially dispositive questions which have been fully briefed and argued. Such a result would disserve the cause of judicial .economy and therefore frustrate the very purpose of the final judgment rule.”). This is particularly true when, as here, -the district court invokes appellate review. Id. at n.7 (“Significantly, our exercise of jurisdiction will not interfere with the course of the trial. The trial court purported to issue a final judgment.”).

If the proposed new trial were to proceed, it would be on the basis of separating the damages assessment by patent and claim, as the district court apparently was persuaded after the verdict was rendered. However, Cochlear presented the verdict form that the district court accepted and used. The Ninth Circuit counsels reluctance to “allow litigants to play procedural brinkmanship with the jury system and take advantage of uncertainties they could well have avoided.” McCord v. Maguire, 873 F.2d 1271, 1274 (9th Cir. 1989) (holding that litigants have the responsibility to request or submit special verdict forms); see also Mitsubishi Elec. Corp. v. Ampex Corp., 190 F.3d 1300, 1304 (Fed. Cir. 1999) (party forfeited post-trial challenge on the ground that a special verdict should have been obtained, by proposing and accepting a verdict form that did not separate the potential grounds of invalidity).

Nor was the verdict form that was adopted incorrect in law. It was not disputed that the royalty base was the same as to any of the four claims, such that infringement of any claim would produce the same damages calculation. On this premise, the evidence presented by both parties did not differentiate among the four claims and two patents. See TiVo, Inc. v. EchoStar Commc’ns Corp., 516 F.3d 1290, 1312 (Fed. Cir. 2008) (“Because the damages calculation at trial was not predicated on the infringement of particular claims, and because we have upheld the jury’s verdict that all of the accused devices infringe the software claims, we affirm the damages award.”); SK Hynix Inc. v. Rambus Inc., 2013 WL 1915865, at *15 (N.D. Cal. May 8, 2013) (denying new trial where “damages were awarded based upon infringement by particular products, not upon infringement of particular patent claims”).

Cochlear concedes that “[t]he evidence ... did not give the jury any way to assess a royalty rate assuming infringement of fewer claims or patents.” Cross-Appellee Resp. Br. at 28. The concession that the evidence of record provided no way to differentiate among infringement by claim or patent, distinguishes this case from the facts of DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1262 (Fed. Cir. 2014), where this court remanded to determine whether the invalidation of one patent might affect the damages calculation. The evidence, instructions, and damages theories presented led the jury to a single/permissible conclusion: that a reasonable royalty for the invention—back telemetry—was required to compensate the Foundation for infringement of even a single claim:

Precedent and sound practice establish the appellate obligation to review this grant of a new trial. Such review is not barred. From the court’s contrary holding, I respectfully dissent.

      . The patents share substantially the same specification,

      . As the district court noted in evaluating the testimony, this was inconsistent with Dr. Young’s earlier unequivocal declaration that he “kn[e]w of no other way to implement such a logarithmic algorithm in a DSP.” J.A. 55.

      . Since the question of what is "final” is sometimes a difficult question, the Supreme Court has cautioned that the requirement of "finality is to be given a 'practical rather than a technical construction.’ ” Gillespie v. United States Steel Corp., 379 U.S. 148, 152, 85 S.Ct. 308, 13 L.Ed.2d 199 (1964) (quoting Cohen v. Beneficial Indus. Loan Corp., 337 U.S. 541, 546, 69 S.Ct. 1221, 93 L.Ed. 1528 (1949)). But the Supreme Court has noted that "[i]f Gillespie were extended beyond the unique facts of that case, § 1291 would be stripped of all significance.” Coopers & Lybrand v. Live-say, 437 U.S. 463, 477 n.30, 98 S.Ct. 2454, 57 L.Ed.2d 351 (1978). We have similarly held that the " 'exception to finality created by Gillespie is to be very rarely used beyond the unique facts of that case.’ ” Spread Spectrum Screening LLC v. Eastman Kodak Co., 657 F.3d 1349, 1356-57 (Fed. Cir. 2011) (quoting Fairchild Republic Co. v. United States, 810 F.2d 1123, 1126 (Fed. Cir. 1987)). The facts of this case do not fall within the unique circumstances of Gillespie, which involved a claim under Ohio’s wrongful death statute and general maritime law.