source: Caselaw Access Project

author: WALLACH, Circuit Judge.

license: Public Domain

text:
    U.S. WATER SERVICES, INC., Roy Johnson, Plaintiffs-Appellants v. NOVOZYMES A/S, Novozymes North America, Inc., Defendants-Cross-Appellants
    2015-1950, 2015-1967
    United States Court of Appeals, Federal Circuit.
    Decided: December 15, 2016

      Miohelle Marie Umberger, Perkins Coie, LLP, Madison, WI, argued for plaintiffs-appellants. Also represented by John Singleton Skilton, Autumn N. Nero, David J. Harth, Brandon Michael Lewis; Colin Gene Sandercock, Washington, DC.
    David Keith Tellekson, Fenwick & West LLP, Seattle, WA, argued for defendants-cross-appeliants. Also represented by Ewa M. Davison, Phillip Decker, Elizabeth B. Hagan; Virginia Kay DeMarchi, Michael C. Saunders, II, Mountain View, CA.
    Before WALLACH, HUGHES, and STOLL, Circuit Judges.

      . A continuing patent application is “an application filed subsequently to another application, while the prior application is pending, disclosing all or a substantial part of the subject-matter of the prior application and containing claims to subject-matter common to both applications, both applications being filed by the same inventor or his legal representative.” In re Febrey, 135 F.2d 751, 757 (CCPA 1943) (internal quotation marks and citation omitted).

   WALLACH, Circuit Judge.

U.S. Water Services, Inc. and Roy Johnson (together, “U.S. Water”) sued Novozymes A/S and, Novozymes North America, Inc. (together, “Novozymes”) in the U.S. District Court for the Western District of Wisconsin (“District Court”), alleging indirect infringement of U.S. Patent Nos. 8,415,137 (“the ’137 patent”) and 8,609,399 (“the ’399 patent”) (together, “the Patents-in-Suit”). Novozymes counterclaimed for declaratory judgment of noninfringement, invalidity, and inequitable conduct. The parties later filed cross-motions for summary judgment. The District Court granted Novozymes’s Motion in part, finding claims 1, 6, and 12-13 of the ’137 patent and claims 1-2, 5-12, 16-22, 25, 28-32, and 34-35 of the ’399 patent (collectively, “the Asserted Claims”) invalid as inherently anticipated by various pri- or art references. U.S. Water Servs., Inc. v. Novozymes A/S, 120 F.Supp.3d 861, 868-82 (W.D. Wis. 2015). However, the District Court denied Novozymes’s Motion as to inequitable conduct by U.S. Water. Id. at 882-83.

U.S. Water appeals the District Court’s anticipation finding. Novozymes cross-appeals the District Court’s finding of no inequitable conduct. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (2012). We vacate-in-part, affirm-in-part, and remand for further proceedings consistent with this opinion.

BACKGROUND

I. The Relevant Patents

The technology at issue relates to the production of ethyl alcohol (i.e.,. ethanol) from a milled grain. Ethanol production yields an insoluble byproduct that deposits on, or “fouls,” the processing equipment. See, e.g., ’399 patent col. 1 ll. 34-38; J.A. 1376-90 (Confidential Material). The Patents-in-Suit disclose methods for reducing or preventing fouling. See ’399 patent col. 3 11. 21-24; ’137 patent col. 1 ll. 50-53.

The Patents-in-Suit sharé a common specification and are related to one another as continuations of the application that also led to U.S. Patent No. 8,039,244 (“the ’244 patent”) (collectively, “the Patent Family”). J.A, 135, 144. The Patent Family generally claims methods of reducing fouling through the use of phytase.

Each patent discloses the addition of the enzyme phytase at various points in the ethanol production process. For example, the ’244 patent is entitled “Reducing Insoluble Deposit Formation in Ethanol Production” and discloses the addition of phy-tase after fermentation has finished. See ’244 patent col. 12 11. 9-13 (reciting “adding phytase to ,.. thin stillage, back-set, or [a] mixture thereof containing phytic acid or salts of phytic acid under conditions suitable for converting the insoluble phytic acid or phytic acid salts to soluble products”); id, col. 1 11. 65-67 (“In an embodiment, the present method includes adding an enzyme with phytase activity to the ethanol-processing fluids after fermentation....”). The ’399 patent is entitled “Reducing Insoluble Deposit Formation in Ethanol Production” and the ’137 patent is entitled “Preventing Phytate Salt Deposition in Polar Solvent Systems.” The - patents’ claims disclose the introduction of phytase into the production process under certain conditions, but they do not disclose precisely when the phytase should be added and under what conditions. See, e.g., ’399 patent col. 12 11. 44-48 (reciting “providing ... phytase in the ethanol processing fluid” to reduce “the formation of insoluble deposits of phytic -acid and/or salts of phytic acid”); ’137 patent col. 12 11. 33-38 (reciting “adding phytase to an ethanol processing fluid ... under conditions suitable for converting the insoluble phytic acid or phytic acid salts to soluble products”). But see id. col. 1 11, 58-60 (“The method can include: adding an agent to the ethanol-processing fluids after fermentation .... ” (emphasis added)),

II. The Prior Art

The District Court found that either International Publication No. WO 01/62947 Al (“Veit”), J.A. 1580-610, or U.S. Patent No. 5,756,714 (“Antrim”) inherently anticipated the Asserted Claims. U.S. Water, 120 F.Supp.3d at 878-82. Veit is entitled “Fermentation with a Phytase” and explains that ethanol production from whole grains involves four steps: (1) milling, (2) liquefaction, (3) saccharification, and (4) fermentation. Veit p. 2 ll. 24-29. Veit discloses that adding phytase during the sac-charification and fermentation stages of ethanol production can result in “increases [in] the fermentation and ethanol yields.” Id. p. 5 1. 29; see id. p. 111. 7-8, p. 2 ll. 15-19, p. 8 ll. 4-11 (further describing the process for adding, phytase at either step). Antrim is entitled “Method for Liquefying Starch” and discloses a method for liquefying corn starch that “relates to the removal, and/or inactivation of an enzyme inhibiting composition from a granular starch prior to or during liquefaction.” Antrim col. 1 ll. 14-16. The enzyme inhibiting composition is “comprise[d of] a form of phy-tate” that “acts to inhibit [alpha]-amylase hydrolysis of a starch solution during low pH liquefaction.” Id. col. 5 ll. 30-36. Antrim is directed at a more efficient liquefaction process through the use of enzymes. See id. col. 4 ll. 6-21 (summarizing the objectives of the invention).

Discussion

U.S. Water argues that the District Court erred in granting summary judgment of invalidity based on inherent anticipation because the District Court expressly acknowledged the existence of a disputed material fact. Novozymes challenges the District Court’s inequitable conduct finding. After discussing the applicable standard of review, we address these arguments in turn.

I. Standard of Review

This court reviews the grant of summary judgment under the law of the regional circuit in which the district court sits. Classen Immunotherapies, Inc. v. Elan Pharm., Inc., 786 F.3d 892, 896 (Fed. Cir. 2015). The Seventh Circuit reviews a district court’s grant of summary judgment de novo. Greer v. Bd. of Educ., 267 F.3d 723, 726 (7th Cir. 2001). Summary judgment is proper only “if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a); see Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). A genuine dispute exists when “the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

II. Anticipation

U.S. Water argues that the District Court erred in granting summary judgment based on a finding that the Patents-in-Suit are inherently anticipated by Veit and Antrim. That is so, U.S. Water contends, because the District Court acknowledged the existence of a genuine dispute as to a material fact. Appellants’ Br. 35. We agree with U.S. Water.

A. Legal Framework

Although “the anticipation inquiry first demands a proper claim construction,” Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1294 (Fed. Cir. 2002), claim construction is not an issue in this case, see Appellants’ Br. 29-52. Thus, we begin with the prior art. A reference is anticipatory under 35 U.S.C. § 102(b) (2006) if “the prior art reference ... disclose[s] each and every feature of the claimed invention, either explicitly or inherently.” Eli Lilly & Co. v. Zenith Goldline Pharm., Inc., 471 F.3d 1369, 1375 (Fed. Cir. 2006) (citation omitted).

Even if a prior art reference does not explicitly disclose all features of the claimed invention, we have found that the reference inherently may do so. See Schering Corp. v. Geneva Pharm., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003). “Anticipation by inherent disclosure is appropriate only when the [single prior art] reference discloses prior art that must necessarily include the unstated limitation.” Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002) (citation omitted). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (internal quotation marks and citations omitted). Rather, “[t]he inherent result must inevitably result from the disclosed steps....” In re Montgomery, 677 F.3d 1375, 1380 (Fed. Cir. 2012).

B. The District Court’s Finding

The District Court analyzed the Asserted Claims of the Patents-in-Suit and found seven common elements shared by these claims. U.S. Water Servs., 120 F.Supp.3d at 868. After comparing these common elements with the disclosures in Veit and Antrim, the District Court concluded that “[t]he evidence of record show[ed] beyond genuine dispute that the expressly disclosed elements, one through six, [were] disclosed in Veit and Antrim.” Id. at 872; see id. at 868. As to the last element, “thereby reducing the formation of insoluble deposits,” the District Court determined that “the critical issue” was whether Veit or Antrim inherently disclosed “adding phytase for the purpose of reducing deposits.” Id. at 872.

In addressing this issue, the District Court explained that “the critical facts that are relevant to the court’s anticipation analysis are not in dispute.” Id. at 881. In particular, the District Court observed that “[t]he [P]atents-in-[S]uit describe a method for using phytase in terms of ranges for dosage, temperature, and pH; Veit and Antrim disclose the same method, using overlapping and often narrower ranges.” Id. On this basis, the District Court determined that “summary judgment [was] appropriate because the evidence of record established] that deposit reduction [was] a natural result of the methods for adding phytase during ethanol production that Veit and Antrim disclose.” Id. at 878. The District Court added that, although “Veit and Antrim do not expressly identify the benefit that U.S. Water’s patents identify, they nevertheless inherently disclose that benefit.” Id. at 879. Thus, the District Court determined either Veit or Antrim inherently disclose element seven.

C. A Genuine Dispute as to a Material Fact Bars Summary Judgment Based on Inherent Anticipation

We must determine whether the District Court overlooked a genuine dispute about a material fact — whether the reduction of “insoluble deposits of phytic acid or salts of phytic acids” as recited in the Asserted Claims was inherent in either Veit or Antrim through the use of phytase. In reaching this conclusion, “we must view the evidence and draw all inferences in a way most favorable to the nonmoving party.” Bombard v. Fort Wayne Newspapers, Inc., 92 F.3d 560, 562 (7th Cir. 1996) (citation omitted).

The District Court correctly identified that “[t]he issue on which this case, ultimately turns is whether Veit [or] An-trim inherently disclose using phytase to reduce deposits in ethanol production machinery.” U.S. Water Servs., 120 F.Supp.3d at 878. However, it erred in finding no genuine dispute of material fact as to whether the Patents-in-Suit are inherently anticipated because “the prior art discloses the conditions that will necessarily result in phytase reducing deposits.” Id. at 879. The District Court erred in deeming; irrelevant the fact that “U.S. Water ... adduced evidence[, including expert testimony,] ... that practicing Veit and Antrim will not always result in deposit reduction.” Id. The District Court recognized this was conflicting evidence that went to the core of an inherent anticipation analysis, but concluded this evidence did not preclude summary judgment. Id. at 879. By disregarding this evidence, the District Court improperly made credibility determinations and weighed conflicting evidence. See Anderson, 477 U.S. at 255, 106 S.Ct. 2505 (“Credibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge, [when] he is ruling on a. motion for summary judgment....”).

We find that the record evidence demonstrates that “there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party,” id. at 249, 106 S.Ct. 2505 (citation omitted), and that summary judgment was therefore inappropriate. Specifically, the testimony of U.S. Water’s experts (i.e., Eric Dorn, Dr. George Reed, and Rodney Simms) demonstrates that there is a dispute as to whether adding phytase in the manner disclosed in Antrim or Veit will necessarily lead to a reduction of insoluble organometallic salt deposits as claimed in the Patents-in-Suit. For example, these experts testified that there are numerous factors affecting the ultimate reduction of insoluble organome-tallic salt deposits. See J.A. 760 (Dr. Reed stating that “[njumerous factors can impact the ability of phytases to convert phytic acid to its hydrolysis products during ethanol processing”), 854 (Mr. Dorn stating that “if the treatment specifics and process conditions are not correct, no process fouling reduction may be observed in the plant” and that, if “the phytase dosage is reduced below its critical dosage value or a process condition or parameter is changed and not corrected for appropriately,” the fouling can reappear as if no phy-tase had been added), 855 (Mr. Dorn also stating that “one can remove a large majority of the phytate and not have any measureable effect on the rate of process fouling”), and 1025 (Mr.. Simms stating that “one can employ phytase enzyme according to Antrim ... and Veit in ways that could sufficiently affect the phytic acid and phytates present to improve liquefaction and fermentation, but which would be insufficient to have any effect on the formation of deposits—”). The testimony from U.S. Water’s experts demonstrates that a genuine dispute as to a material fact remained and that, consequently, the District Court improperly granted summary judgment on inherent anticipation.

III. Inequitable Conduct

Novozymes argues that the District Court erred in granting summary judgment of no inequitable conduct. See Cross-Appellants’ Br. 56-68. In particular, Novozymes contends that the District Court failed to recognize a genuine dispute as to a fact material to the inequitable conduct inquiry. Id. at 63-68. We disagree.

A. Legal Framework

“Inequitable conduct is an equitable defense to patent infringement that, if proved, bars enforcement of a patent.” Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1285 (Fed. Cir. 2011) (en banc). A finding of inequitable conduct as to “any single claim renders the entire patent unenforceable” and may “render unenforceable other related patents and applications in the same technology family.” Id. at 1288 (internal quotation marks and citations omitted). “Inequitable conduct occurs when a patentee breaches his or her duty to the [U.S. Patent and Trademark Office (‘USPTO’)] of candor, good faith, and honesty.” Ferring B.V. v. Barr Labs., Inc., 437 F.3d 1181, 1186 (Fed. Cir. 2006) (internal quotation marks and citation omitted); see 37 C.F.R. § 1.56(a) (2015) (explaining that a party appearing before the USPTO has “a duty to disclose ... all information known to that individual to be material to patentability”).

“A party seeking to prove inequitable conduct must show ... that the patent applicant made misrepresentations or omissions material to patentability, that he did so with the specific intent to mislead or deceive the [US] PTO, and that deceptive intent was the single most reasonable inference to be drawn from the evidence.” Ohio Willow Wood Co. v. Alps S., LLC, 813 F.3d 1350, 1357 (Fed. Cir. 2016) (citations omitted). “To prove the element of materiality, a party claiming inequitable conduct ordinarily must show that the patentee withheld or misrepresented information that, in the absence of the withholding or misrepresentation, would have prevented a patent claim from issuing.” Id. (internal quotation marks and citation omitted). “Specific intent to commit acts constituting inequitable conduct may bé inferred from indirect and circumstantial evidence[,] ... [b]ut deceptive intent must be the single most reasonable inference drawn from the evidence.” Id. at 1358 (internal quotation marks and citations omitted).

B. Relevant Facts

Novozymes bases its inequitable conduct charge on representations made by U.S. Water about the application that led to the ’244 patent and, thus, the Patent Family. Specifically, following the examiner’s rejection of certain claims in the application as obvious over certain prior art such as Veit, U.S. Water amended the .proposed claims in the application to change the stage at which phytase was added. See J.A. 2222-30 (Amendments to the Claims), 2309-17 (further Amendments to the Claims). U.S. Water narrowed its claims to add phytase specifically to “the thin stillage, backset, or mixture thereof.” J.A. 2222-26. As a result, U.S. Water argued the amended claims overcame Veit, where “phytase is added before fermentation” to “release nutrients so that yeast are more efficient at fermentation.” J.A. 2228, 2229. The ’244 patent subsequently issued in October 2011 with the amended claim language. J.A. 1344.

Around the same time, U.S. Water was involved in litigation against ChemTreat, Inc. (“ChemTreat”) for unrelated claims. See, e.g., J.A. 4888-902 (Complaint, Order, and Joint Motion for Dismissal). As part of the litigation, ChemTreat moved for summary judgment of non-infringement of the ’244 patent, arguing that the ’244 patent’s claims were limited to adding phytase after fermentation while ChemTreat instructed its customers to add phytase during fermentation. See J.A. 2941. U.S. Water argued that adding phytase during fermentation was equivalent to adding phytase to the backset, i.e., the post-fermentation fluid, because it is recycled back into fermentation. See J.A. 2941; see also J.A 3285 (Declaration). During a hearing, the presiding judge questioned U.S. Water about the seemingly contradictory statements it had made to the court in the Declaration and those it made to the USP-TO during prosecution of the ’244 patent. See J.A. 2962 (The court: “It seemed to me that you ... repeatedly and very clearly kept saying our process isn’t about adding phytase at the fermentation stage.”), 2964 (similar), 2966 (similar). The court ultimately found that ChemTreat did not infringe the ’244 patent because it taught its customers to add phytase before or during fermentation. J.A. 4898.

While the litigation with ChemTreat remained ongoing and after the court identified the apparent, discrepancy, U.S. Water amended the continuation application that led to the ’137 patent. This amendment canceled all pending claims and replaced them with new claims. J.A. 2540-53 (Amendment dated July 20, 2012). The new claims broadly required “adding phytase to an ethanol processing fluid in the plant.” J.A. 2541, 2545. -The amended claims also identified the differences with claim 1 of the ’244 patent, which sought to narrow the claimed subject matter. See J.A. 2545.

A third-party later identified this purported distinction to the USPTO during the prosecution of the ’399 patent. See J.A. 5046-68, 5399-404. In particular, the third-party asserted that the claims of the ’399 patent were not limited by where the phy-tase was added. See J.A. 5051-52 (“The claims in the present application [i.e., the application that led to the ’399 patent] recite adding phytase to ethanol processing fluids with no further limitation to the type of fluid to which the phytase is added.”). The examiner noted in the file history that she reviewed the third-party’s submission along with Veit and other prior art references. See J.A. 5399-404.

C. The District Court Did Not Err in • Finding a Lack of Materiality

The District Court determined that Novozymes failed to demonstrate a genuine dispute over either materiality or intent, and that the law did not require a finding of inequitable conduct. U.S. Water Servs., 120 F.Supp.3d at 883. As to materiality, the District Court determined that “Novozymes falls short of establishing the but-for materiality” of the information disclosed in the ChemTreat litigation. Id. Specifically, the District Court observed that the amendment of the continuation application that led to the ’137 patent “set out the amended claim with differences with claim 1 of the ’244 patent highlighted,” such that it “would have been amply clear to the examiner thdt the patentees were seeking a claim that was broader in the sense that the after-fermentation limitation was removed.” Id. Furthermore, the District Court determined that “th[e] third-party submission provides one more reason that the examiner knew she had to evaluate the allowability of the broader claims over the prior art, particularly Veit....” Id.

Novozymes argues that “[t]here is at least a genuine issue of fact that the ChemTreat litigation documents withheld by U.S. Water from the [USPTO] are material.” Cross-Appellants’ Br. 63 (emphasis omitted). Novozymes contends that the Patents-in-Suit would not have issued had the examiner been aware of these documents and disclosures. Id. at 64-65.

There is no genuine dispute about this material fact. The record contains no suggestion that, but-for the disclosures made during the ChemTreat litigation, the examiner would not have issued the Patents-in-Suit. Instead, the record shows that the examiner was aware of the differences between the pending claims of the Patents-in-Suit and the ’244 patent, whether as discussed in U.S. Water’s Declaration or the third-party’s submission. See J.A. 5399-404. The examiner reviewed the third-party’s submission and the relevant prior art, see J.A. 5399-404, but found that the evidence did not affect the ultimate patentability determination. U.S. Water did not withhold or misrepresent information to the USPTO. See Fiskars, Inc. v. Hunt Mfg. Co., 221 F.3d 1318, 1327 (Fed. Cir. 2000) (“An applicant is not required to tell the [US] PTO twice about the same prior art, on pain of loss of the patent for inequitable conduct.”).

Finally, Novozymes also contests the District Court’s finding of no intent to deceive the USPTO. Cross-Appellants’ Br. 66-68. However, because we find no error in the District Court’s determination under the materiality prong of the inequitable conduct analysis, we need not address intent. See Ohio Willow Wood, 813 F.3d at 1357 (explaining that a party alleging inequitable conduct must prove materiality and intent); Therasense, 649 F.3d at 1290 (same).

Conclusion

We have considered the parties’ remaining arguments and find them unpersuasive. Accordingly, the decision of the U.S. District Court for the Western District of Wisconsin is

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

Costs

Each party shall bear its own costs.

      . "Phytase is an enzyme known to be capable of breaking down the phytic acid found in plant material.'' '399 patent col. 5 ll, 39-40.

      . Liquefaction is the process of breaking down (i,e„ hydrolyzing) the milled grain material into sugars, “The hydrolysis may be carried out ... enzymatically by alpha-amylase treatment [e.g., phytase].” Veit p. 3 11. 9-11.

      , Saccharification is a process for "producing] low molecular sugars ,.. [extracted during liquefaction] that can be metabolized by yeast [after further hydrolysis].” Veit. p. 3 11. 28-30.

      . In passing the Leahy-Smith America Invents Act (“AIA”), Congress amended § 102. See Pub. L. No. 112-29, § 3(b), 125 Stat. 284, 285-87 (2011). However, because the applications that led to the Patents-in-Suit were filed before March 16, 2013, the pre-AIA § 102(b) applies. See id. § 3(n)(1), 125 Stat. at 293.


text:
    INTERNATIONAL CUSTOM PRODUCTS, INC., Plaintiff-Appellee v. UNITED STATES, Defendant-Appellant
    2016-1024
    United States Court of Appeals, Federal Circuit.
    Decided: December 15, 2016

      GREGORY Hugh Teufel, OGC Law, LLC, Pittsburgh, PA, argued for plaintiff-appel-lee.
    Claudia Burke, Commercial Litigation Branch, Civil Division, United.States Department of Justice, Washington, DC, argued for defendant-appellant. Also represented by Benjamin C. Mizer, Jeanne E. Davidson; Amy Rubin, Edward Francis Kenny, New York, NY; Yelena Slepak, Office of Assistant Chief Counsel, International Trade Litigation, United States Bureau of Customs and Border Protection, New York, NY. .
    Before REYNA, LINN, and WALLACH, Circuit Judges.
   WALLACH, Circuit Judge.

Appellant United States (“the Government”) appeals the decision of the U.S. Court of International Trade (“CIT”) awarding attorney fees to Appellee International Custom Products, Inc. (“ICP”) pursuant to the Equal Access to Justice Act (“EAJA”), 28 U.S.C. § 2412(d)(1)(A) (2012). See Int’l Custom Prods., Inc. v. United States (ICP VII), 77 F.Supp.3d 1319, 1335 (Ct. Int’l Trade 2015). We have jurisdiction over the appeal pursuant to 28 U.S.C. § 1295(a)(5). We affirm.

Background

The facts and procedural history of this appeal are extensive, and a brief explanation of the nature of the action is warranted. ICP’s- request for attorney fees stems from litigation

regarding the classification of certain white sauce imports under the Harmonized Tariff Schedule of the United States (“HTSUS”), Following a request from [ICP], the United States Customs and Border ‘ Protection (“Customs”) issued New York Ruling Letter D86228 (“the Ruling Letter”) classifying ICP’s white sauce as “sauces and preparations therefor” under HTSUS 2103.90.9060 (1999). Years later, Customs issued a notice of action reclassifying all pending and future entries of white sauce as “[b]utter and ... dairy spreads” under HTSUS 0405.20.3000 (2005) (“the Notice of Action”), which increased the tariff by approximately 2400%.
After protesting and paying duties on a single entry, ICP filed a claim in the CIT, alleging the Notice of Action improperly revoked the Ruling Letter without following the procedures required by Í9 U.S.C. § 1625(c) (2006).

Int’l Custom Prods., Inc. v. United States (ICP VI), 748 F.3d 1182, 1182-83 (Fed. Cir. 2014). Since ICP filed its first action in 2005, the CIT has issued five separate opinions on the matter, two of which were appealed to us. See generally Int’l Custom Prods., Inc. v. United States (ICP I), 29 C.I.T. 617, 374 F.Supp.2d 1311 (2005) (exercising jurisdiction pursuant to 28 U.S.C. § 1581(i)(4) (2000) and finding the Notice of Action null and void); Int’l Custom Prods., Inc. v. United States (ICP II), 467 F.3d 1324 (Fed. Cir. 2006) (reversing the CIT’s exercise of jurisdiction in ICP I, vacating on the merits, and remanding with instructions to dismiss); Int’l Custom Prods., Inc. v. United States (ICP III), 32 C.I.T. 302, 549 F.Supp.2d 1384 (2008) (granting-in-part and denying-in-part the Government’s motion to dismiss ICP’s Complaint in a new action); Int’l Custom Prods., Inc. v. United States (ICP IV), 33 C.I.T. 79, 2009 WL 205860 (2009) (denying the parties’ cross-motions for summary judgment); Int’l Custom Prods., Inc. v. United States (ICP V), 878 F.Supp.2d 1329 (Ct. Int’l Trade 2012) (finding the Notice of Action null and void pursuant to § 1625(c)(1) and ordering Customs to reliquidate pursuant to the Ruling Letter); ICP VI, 748 F.3d 1182 (affirming ICP V); ICP VII, 77 F.Supp.3d 1319 (awarding attorney fees to ICP pursuant to the EAJA). The case now returns to us for the third time.

Disoussion

I. Legal Standard and Standard of Review

The EAJA provides that “a court shall award to a prevailing party other than the United States fees and other expenses ... unless the court finds that the position of the United States was substantially justified or that special circumstances make an award unjust.” 28 U.S.C. § 2412(d)(1)(A). The Government’s position is substantially justified if it is “justified to a degree that could satisfy a reasonable person” and has a “reasonable basis both in law and fact.” Pierce v. Underwood, 487 U.S. 552, 565-66, 108 S.Ct. 2541, 101 L.Ed.2d 490 (1988) (internal quotation marks and citations omitted). The Government’s position includes the prelitigation actions of the relevant administrative agency, as well as the U.S. Department of Justice’s litigation arguments. See Smith v. Principi, 343 F.3d 1358, 1361-62 (Fed. Cir. 2003). Although the Government’s position involves both preli-tigation and litigation conduct, “only one threshold determination for the entire civil action is to be made.” INS v. Jean, 496 U.S. 154, 159, 110 S.Ct. 2316, 110 L.Ed.2d 134 (1990) (footnote omitted).

We review the CIT’s determination to award attorney fees under the EAJA for abuse of discretion. See Chiu v. United States, 948 F.2d 711, 713 (Fed. Cir. 1991). “[O]nly if the [CIT] erred in interpreting the law or exercised its judgment on clearly erroneous findings of material fact, or its decision represents an irrational judgment in weighing the relevant factors can its decision be overturned.” Id. (citations omitted).

II. The CIT Did Not Abuse Its Discretion by Awarding Attorney Fees to ICP

The CIT found that the Government’s position was not substantially justified and, consequently, awarded attorney fees to ICP. ICP VII, 77 F.Supp.3d at 1329-31, 1335. The CIT determined that “[t]he record, considered as a whole, established] that the [G]overment position was rooted in a desire to avoid the timely revocation process” by using the Notice of Action, rather than following the procedures of § 1625(c)(1), to improperly revoke the Ruling Letter. Id. at 1331. Thus, the CIT held that “the [Government’s position was not founded on ‘a reasonable basis both in law and fact,’ ‘justified to a degree that could satisfy a reasonable person.’ ” Id. (quoting Pierce, 487 U.S. at 565, 108 S.Ct. 2541).

The Government argues that the CIT abused its. discretion by committing five legal errors: (1) “using an improperly heightened legal standard,” Appellant’s Br. 9; (2) “reject[ing] the nqtion that surviving a motion to dismiss or a motion for summary judgment indicates that the surviving party has presented significant evidence that its position is substantially justified,” id. at 11-12; (3) “improperly minimizfing] the significance of [the Government’s] trial evidence because of [the Government’s] post-trial decision not to appeal adverse factual findings,” id. at 16; (4) “rejecting the Government’s position that an EAJA award was not warranted in light of the novel or unsettled area of law upon which one of the Government’s defenses was based,” id. at 18; and (5) “find[ing] that [Customs] was not substantially justified in its actions during the administrative phase of the matter,” id. at 21. We address these arguments in turn.

A. The CIT Did Not Apply a Heightened Legal Standard

The Government first argues that the CIT misapplied the “substantially justified” standard when it stated that “the substantial justification standard is ‘slightly more stringent than a simple reasonableness standard,’ and requires that the Government show that its position ‘was clearly reasonable,’ ” because the Supreme Court rejected the “slightly more” and “clearly” standards in Pierce. Id. at 10-11 (quoting ICP VII, 77 F.Supp.3d at 1324-25). According to the Government, the recitation of the “slightly more” and “clearly’-’ standards “undermines the [CIT]’s entire substantial justification review” and, thus, “the fee award should be vacated and the matter remanded ... with instructions to apply the proper legal standard.” Id. at 11. We disagree.

The Government is correct that the CIT erred by reciting in the standard of review section of its opinion the “slightly more” and “clearly” standards, which the Supreme Court rejected in Pierce. See 487 U.S. at 567-68, 108 S.Ct. 2541 (rejecting the “slightly more” and “clearly” standards (internal quotation marks and citation omitted)). However, a single reference to an incorrect legal standard does not undermine a final decision, only its application does. Although the CIT referenced the “slightly more” and “clearly” standards once, ICP VII, 77 F.Supp.3d at 1324-25 (internal quotation marks and citation omitted), it repeatedly applied the correct “substantially justified” standard,'evaluating whether the Government’s position was “justified to a degree that could satisfy a reasonable person” and had a “reasonable basis both in law and fact,” Pierce, 487 U.S. at 565-66, 108 S.Ct; 2541 (internal quotation marks and citations omitted). Indeed, the CIT repeated the word “reasonable” or its variants no less than nine times when evaluating the Government’s position. See ICP VII, 77 F.Supp.3d at 1324 n.1, 1329 n.3, 1330-31.

In contrast, there are no instances where the CIT actually applied the “slightly more” and “clearly” standards, as the Government acknowledged during oral argument. See Oral Argument at 1:33-2:11, http://oralarguments.cafc.uscourts.gov/ default.aspx?fl=2016-1024.mp3 (stating that “it’s true that when the [CIT] made its actual findings, it used the word ‘reasonableness’ and didn’t restate the ‘clearly reasonable[ ]’ standard or restate the ‘slightly more stringent’ standard”). The Government nevertheless argues that the CIT’s recitation of the heightened standards “infected” the CIT’s entire analysis. Id. at 2:38. However, the Government cites no affirmative evidence in support of its argument, and speculation does not demonstrate reversible error. See Rogers v. United States, 877 F.2d 1550, 1557 (Fed. Cir. 1989) (holding that speculation cannot demonstrate an abuse of discretion). As a result, the CIT’s lone recitation of the “slightly more” and “clearly” standards, when viewed against the remainder of the CIT’s analysis, did not constitute an abuse of its discretion.

B. Surviving Summary Judgment Alone Does Not Prove that the Government’s Position Was Substantially Justified '

The Government next contends that “surviving a motion for summary judgment strongly suggests that the Government’s position [was] substantially justified for EAJA purposes” and that, consequently, the CIT erred by holding otherwise. Appellant’s Br. 12. In particular, the Government alleges that the CIT “committed legal error” because it presented sufficient evidence to survive summary judgment, which it alleges demonstrates that the Government’s position during trial was substantially justified. Id. at 16. In support, the Government cites to the summary judgment standards of proof articulated by the Supreme Court in Anderson v. Liberty Lobby, Inc., id. at 12 (citing 477 U.S. 242, 249-50, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)), and to precedent from the Seventh Circuit indicating that surviving a motion to dismiss or motion for summary-judgment may indicate that a'position was substantially justified, id. at 13-14 (citing United States v. Pecore, 664 F.3d 1125, 1135 (7th Cir. 2011); United States v. Thouvenot, Wade & Moerschen, Inc., 596 F.3d 378, 382 (7th Cir. 2010)).

As an initial matter, the Government “bears the burden of proving its position was substantially justified” to avoid the award of attorney fees under the EAJA, Libas, Ltd. v. United States, 314 F.3d 1362, 1365 (Fed. Cm. 2003), and Anderson does not hold or otherwise suggest that this burden shifts if the Government survives summary judgment. Rather, Anderson concerns standards of proof at the summary judgment stage, not the award of attorney fees under the EAJA. See 477 U.S. at 247-57, 106 S.Ct. 2505.

As the Government acknowledges, we have not yet directly considered whether surviving summary judgment ipso facto demonstrates that the Government’s position was substantially justified. When our precedent is silent on a particular question, “we may look to another circuit for guidance and may be persuaded by its analysis,” though “decisions from other circuits are not binding on this court.” Amerikohl Mining, Inc. v. United States, 899 F.2d 1210, 1214 (Fed. Cir. 1990).

We first turn to the approach taken by the Seventh Circuit, which .the Government cites. Under the Seventh Circuit’s approach, surviving summary judgment may weigh in favor of finding that the Government’s position was “substantially justified,” but it is not dispositive. See Pecore, 664 F.3d at 1135 (stating that surviving summary judgment is “objective, although not necessarily conclusive, evidence” of a substantially justified position (emphasis added) (citation and footnote omitted)). Indeed, the Seventh Circuit has recognized that, while surviving summary judgment creates a “presumption” of a substantially justified position under the EAJA, “something might emerge at trial that showed that the [Gjoverment really had no case at all[,] [o]r the [trial] judge might on reflection decide that he had erred grievously in refusing to grant the ... motion to dismiss or motion for summary judgment.” Thouvenot, 596 F.3d at 382. Thus, even if the CIT were bound by the Seventh Circuit’s standard, the CIT did not abuse its discretion by determining that the Government’s position was not substantially justified. Instead, the CIT properly considered “the entirety of the record ... and the positions taken by the [Gjoverment as a whole,” including evidence and arguments presented after the CIT denied ICP’s motion to dismiss and motion for summary judgment, and determined that “the [G]overnment’s position was not substantially justified.” ICP VII, 77 F.Supp.3d at 1329.

Our discussion of Seventh Circuit case law does not mean that we have adopted the “presumption” articulated in those decisions. Indeed, avoiding summary judgment does not necessarily mean that the position taken at that stage has a reasonable basis in law and fact. For example, pursuant to Federal Rule of Civil Procedure 56(d), “the court may ... defer consideration of] the motion or deny it” when “a nonmovant shows by affidavit or declaration that, for specified reasons, it cannot present facts essential to justify its opposition.” Such circumstances may arise because, inter alia, the party asserting Rule 56(d) did not possess all of the requisite information, necessitating discovery, or the party moving for summary judgment presented temporarily unverifiable or otherwise unusable evidence. The circumstances also may arise simply because final resolution may require the trier of fact to observe witnesses and determine their credibility. Thus, rather than attach a presumption to the Government’s conduct based on a single action taken, we find it more appropriate to assess the Government’s conduct in .light of the entire record, as the Supreme Court has instructed. See Jean, 496 U.S. at 159, 110 S.Ct. 2316 (explaining that 28 U.S.C. § 2412(d)(1)(A) does not refer “to separate parts of the litigation” and that courts should consider all stages of the dispute before making a single determination about the Government’s conduct).

C. The Government’s Remaining Arguments Are Unpersuasive

The Government’s remaining arguments similarly do not demonstrate an abuse , of discretion.. The Government argues that the CIT incorrectly determined that the Government conceded a factual issue (i.e., that white sauce conformed to the Ruling Letter) by deciding not to appeal this, adverse factual finding. Appellant’s Br. 16-18. And the Government correctly asserts that courts' should not consider the Government’s decision not to appeal an issue as a concession on the issue’s merits. See Oral Argument at 3:52-5:26, http://oralarguments.cafc.uscourts. gov/default.aspx?fl=2016-1024.mp3; see also United States v. Mendoza, 464 U.S. 154, 161, 104 S.Ct. 568, 78 L.Ed.2d 379 (1984) (“Unlike a private litigant ..., the Solicitor General considers a variety of factors, such as the limited resources of the [Government and the crowded dockets of the courts, before authorizing an appeal.”). However, the issue was one of many reasons the CIT determined that the Government’s position was not “substantially justified” for purposes of the EAJA, and the CIT provided numerous other reasons why Customs “not only knew that it was effectively revoking the Ruling Letter, but it unreasonably ignored the requirement that a ruling letter governs liquidations until revoked.” ICP VII, 77 F.Supp.3d at 1330; see id. at 1329 (noting that “[m]ultiple officials at [Customs] saw an obvious nexus between a rate advance of the white sauce entries in a Notice of Action and revocation of the Ruling Letter and raised warnings about doing that” and that the decision “was based not on complying with the legal restraints identified by others, but on expedience” (footnote omitted)).

The Government next contends that the CIT improperly found the Government’s position unjustified because “it was unsettled whether a Customs Form 29, Notice of Action, could be characterized as an ‘interpretive ruling or decision’ under ... § 1625(c) such that its issuance could trigger notice and comment procedures required for the revocation of a ruling letter.” Appellant’s Br. 19. According to the

Government, the CIT also improperly relied on the vacated decision in ICP I in finding the Government’s position unjustified. Id. at 19-20. However, the CIT’s decision primarily relied on Customs officials’ statements — made before the Notice of Action issued — that notice and comment was required. See ICP VII, 77 F.Supp.3d at 1332 (“But more importantly for the question of special circumstances, the purely legal arguments about the nature of a Notice of Action, pursued to final decision by the [G]overnment’s attorneys, do not appear to have been a basis for the [GJovernment’s position at the time [Customs] issued the Notice of Action. The Court thus finds, that the [G]overnment’s position here was a post-hoc attempt to justify a rate advance [Customs] knew to be contrary to the governing legal frame-work_” (emphases added)).

Finally, the Government contends that the CIT abused its discretion by finding that Customs’s decision to issue the Notice of Action was not “substantially justified.” Appellant’s Br. 21-23. This argument is meritless. Customs was aware that notice and' comment was - required but, despite the legal ramifications, deliberately decided to forego it. See, e.g., ICP VI, 748 F.3d at 1188-89 (discussing Customs’s deliberations and affirming the CIT’s finding that Customs was required to comply with § 1625(c)(1));, ICP. III, 32 C.I.T. at 309, 549 F.Supp.2d at 1392 (explaining the “months-long deliberative process” during which many Customs officials stated that the Notice of Action must comply with § 1625(c)(1)). Therefore, the CIT was well within its discretion to make this finding.

CONCLUSION

We review the CIT’s determinations on whether the Government’s position was “substantially justified” for abuse of discretion, see Chiu, 948 F.2d at 713, and the CIT did not abuse its discretion. We have considered the Government’s remaining arguments and find them unpersuasive. For these reasons, the final decision of the U.S. Court of International Trade is

AFFIRMED

Costs

Costs to ICP.

      . The Seventh Circuit’s statement in Pecore about surviving motions to dismiss and for summary judgment was dicta. See 664 F.3d at 1135 (stating that the comment was a "final point[] ... [that] bearfe] mentioning” after having determined that "the intense nature of th[e] debate suggests ... that either party’s position could be accepted as true by a reasonable person"),

      . The Seventh Circuit cited the Eighth Circuit’s decision in EEOC v. Liberal R-II School District to support the application of a presumption. Thouvenot, 596 F.3d at 382 (citing 314 F.3d 920, 926 (8th Cir. 2002)), We are not aware of any other circuits having applied a presumption similar to the Seventh and Eighth Circuits.


text:
    UNITED CONSTRUCTION PRODUCTS, INC., D/B/A Bison Innovative Products, Plaintiff-Appellee v. TILE TECH, INC., Defendant-Appellant
    2016-1392
    United States Court of Appeals, Federal Circuit.
    Decided: December 15, 2016

      David von Gunten, von Gunten Law LLC, Denver, CO, argued for plaintiff-appellee. Also represented by Michelle Correll, Smith Correll LLP, Los Angeles, CA.
    Kelly W. Cunningham, Cislo & Thomas LLP, Los Angeles, CA, argued for defendant-appellant.
    Before MOORE, WALLACH, and STOLL, Circuit Judges.
   WALLACH, Circuit Judge.

Tile Tech, Inc. (“Tile Tech”) appeals the decision of the U.S. District Court for the Central District of California (“District Court”) granting default judgment and a permanent injunction to United Construction Products, Inc., doing business as Bison Innovative Products (“United”), on claims of patent infringement and unfair competition. See United Constr. Prods., Inc. v. Tile Tech, Inc., No. 2:14-cv-08570-R-VBK, 2015 WL 7776795, at *6-8 (C.D. Cal. Dec. 1, 2015). We affirm.

BACKGROUND

This case comes to our court following a series of delays, missed deadlines, and other procedural missteps by Tile Tech that are necessary to describe in full. United brought suit against Tile Tech claiming infringement of U.S. Patent No. 8,302,356 (“the ’356 patent”), which is entitled “Support Pedestal Having an Anchoring Washer for Securing Elevated Surface Tiles.” ’356 patent col. 1 11. 1-3. Following transfer of the case to the District Court, United, 2015 WL 7776795, at *1, United served Tile Tech with its first set of discovery requests, including interrogatories, requests for admission, and requests for production, J.A. 140, 149, 282. Tile Tech missed the deadline to respond to the discovery requests, and when contacted by United, it claimed that it had not received the requests. United, 2015 WL 7776795, at *2. Although service of the requests was valid, United granted Tile Tech twenty additional days to respond. Id. Tile Tech then requested two additional extensions and finally served initial responses to United nearly one month after the original response deadline. Id.

Tile Tech’s responses to United’s discovery requests were deficient. Id. United requested a conference regarding the responses and Tile Tech agreed, but two hours before the scheduled conference, Tile Tech requested that it be rescheduled. Id. United agreed and provided a five hour time frame on Tile Tech’s proposed date; Tile Tech responded on the proposed rescheduled date and again asked to postpone. Id. The conference was postponed a third time, and eventually occurred following United’s warning to Tile Tech that it would file a motion to compel if Tile Tech did not commit to a time for the conference. Id. At the conference, Tile Tech agreed to “supplement virtually every response to [Unitedj’s Discoveiy Requests] and to produce all responsive documents” by an agreed-upon date. Id.

The agreed-upon date passed with no response from Tile Tech. Id. United offered to give Tile Tech ten additional days beyond the agreed-upon date to adequately respond. Id. at *3. When Tile Tech again failed to respond to the discovery requests, United filed a Motion to Compel Further Responses to Written Discovery and Production of Documents and for Sanctions (“Motion to Compel”). Id.; J.A. 221. Tile Tech never responded to the Motion to Compel. United, 2015 WL 7776795, at *3. It instead served supplemental responses to the discovery requests, which were still deficient, including unverified responses to the inteiTogatories. Id. The District Court took the Motion to Compel under submission, and Tile Tech proceeded to provide a third set of deficient supplemental responses. Id.

The District Court issued an Order to Compel on October 5, 2015. J.A. 421-23. It found that, inter alia, Tile Tech had “failed to produce a single document in response to [Unitedj’s document requests and ha[d] failed to supplement its deficient discovery responses,” and such actions “create ... a waste of this [cjourt’s time.” J.A. 421, 422. The District Court ordered Tile Tech to respond to the discovery requests, imposed monetary sanctions, and warned that it would enter default judgment if Tile Tech did not comply with the Order by October 12, 2015. J.A. 422. United’s attorney stated in his declaration, and the District Court found, that he informed Tile Tech’s attorney during a deposition on October 9, 2015, that the Order to Compel had issued and that it included sanctions. J.A. 918; United, 2015 WL 7776795, at *4.

Tile Tech failed to respond to the Order. On October 12, 2015, United filed its Motion for Entry of Default Judgment. J.A. 756-65. Tile Tech responded and claimed that it had not known of the Order’s response deadline; that it had produced a set of supplemental responses to the discovery requests; and that it required an expert opinion to fully respond to part of the discovery requests, which would be forthcoming. J.A. 813-14. The District Court found that Tile Tech’s claim of producing additional responses was a “misrepresentation to the [c]ourt” because no responses had been served as of the filing of Tile Tech’s Opposition to Motion for Default Judgment. United, 2015 WL 7776795, at *4. In addition, the District Court held Tile Tech’s claim that it would provide an expert witness was “facially insufficient and unjustified” because the time to designate an expert witness hád “long passed.” Id, Moreover, although Tile Tech had produced only two documents during the prolonged discovery period, both of which were non-responsive, and had not disclosed any persons with relevant knowledge in response to interrogatories pursuant to Federal Rule of Civil Procedure 26(a)(1), it nonetheless listed over a dozen exhibits and over a dozen potential trial witnesses in its Joint Exhibit and Witness Lists- disclosed at the end of the discovery period. Id.

On November 2, 2015, Tile Tech finally served another, set of supplemental responses, which contained information disclosing its destruction of a previously undisclosed mold used to make one key component of the disputed support pedestal. Id. at *5. United filed a Motion for Spoliation Sanctions, J.A. 1090-97, and filed an unopposed Amended Complaint adding a claim for unfair competition, to which Tile Tech never responded, J.A. 404-11 (Amended Complaint); United, 2015 WL 7776795, at *5 (finding that Tile Tech never responded to the Amended Complaint). The District Court later entered default judgment, granted relief for all of United’s claims, and entered a permanent injunction. United, 2015 WL 7776795, at *6-8.

Tile Tech timely appealed. This court has jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (2012).

Discussion

Tile Tech raises two principal arguments on appeal, one concerning the entry of default judgment and the other related to the scope of the District Court’s permanent injunction. Appellant’s Br. 14-28, 29-33. “A decision to sanction a litigant [by ordering default judgment] pursuant to Fed[eral] R[ule of] Civ[il] Procedure] 37[] is one that is -not unique to patent law ... and we therefore apply regional circuit law to that issue.... ” ClearValue, Inc. v. Pearl River Polymers, Inc., 560 F.3d 1291, 1304 (Fed. Cir. 2009) (internal quotation marks and citation omitted); see also Drone Techs., Inc. v. Parrot S.A., 838 F.3d 1283, 1297 (Fed. Cir. 2016) (considering an appellant’s challenge to the imposition of default judgment and stating that “[w]e are guided by regional circuit law when reviewing discovery rulings ... and thé imposition of sanctions” (internal citations omitted)). In this case, we look to Ninth Circuit precedent, and the relevant standard is articulated below. Because the injunction “enjoins the violation of a[ ] right secured by a patent ... [it] involves substantive matters unique to patent law and, therefore, is governed by the law of this court.” Hybritech Inc. v. Abbott Labs., 849 F.2d 1446, 1451 n.12 (Fed. Cir. 1988); see Signtech USA, Ltd. v. Vutek, Inc., 174 F.3d 1352, 1356 (Fed. Cir. 1999) (applying Federal Circuit law as the standard of review for the scope of an injunction). We similarly articulate the applicable standard for this issue below.

I. Default Judgment

A. The Malone Factors Support the Grant of Default Judgment

Under Ninth Circuit precedent, a court must consider the following five factors from Malone v. United States Postal Service before entering default judgment: “(1) the public’s interest in expeditious resolution of litigation; (2) the court’s need to manage its docket; (3) the risk of prejudice to the [other party]; (4) the public policy favoring disposition of cases on their merits; and (5) the availability of less drastic sanctions.” 833 F.2d 128, 130 (9th Cir. 1987) (internal quotation marks and citation omitted). “It is not necessary for a district court to make explicit findings to show that it has considered these factors” and, on appeal, the court “may review the record independently” for abuse of discretion. Id. (citations omitted). The sanction of default judgment is “appropriate only ... where the violation is due to willfulness, bad faith, or fault of the party.” Fair Hous. of Marin v. Combs, 285 F.3d 899, 905 (9th Cir. 2002) (internal quotation marks and citation omitted) (reviewing district court’s entry of default judgment based on discovery violations). A default judgment will be overturned “only if [the appeals court] ha[s] a definite and firm conviction that it was clearly outside the acceptable range of sanctions.” Hester v. Vision Airlines, Inc., 687 F.3d 1162, 1169 (9th Cir. 2012) (internal quotation marks and citations omitted). We address these factors in turn.

1. The Public’s Interest in Expeditious Resolution of Litigation

The first Malone factor, the public’s interest in expeditious resolution of litigation, weighs in support of the District Court’s decision to enter default judgment. As in Malone, “[Tile Tech]’s dilatory conduct greatly impeded resolution of the case and prevented the [District [C]ourt from adhering to its trial schedule.” 833 F.2d at 131 (citation omitted). Tile Tech argues that, even if the District Court had granted Tile Tech’s request-for a ninety day extension, the length of time between pleadings and trial still would be less than the national average, such that the resolution could be considered “expeditious” and within the public’s interest. Appellant’s Br. 15, However, comparison to the national average for length of district court proceedings is not the measurement that courts use to weigh the first Malone factor. Rather, “[t]he public’s interest in. expeditious resolution of litigation always favors dismissal.” Pagtalunan v. Galaza, 291 F.3d 639, 642 (9th Cir. 2002) (internal quotation marks and citation omitted).

2. The Court’s Need to Manage Its Docket

As to the second Malone factor, the court’s need to manage its docket, we recognize that “[t]he trial judge is in the best position to determine whether the delay in a particular case interferes with docket management and the public interest.” Id. (citation omitted). Here, the District Court correctly noted that Tile Tech “demonstrated a lack of respect for virtually every ... deadline in this case,” such that “there is no assurance that this matter can proceed to trial on the true facts.” United, 2015 WL 7776795, at *5-6. Contrary to Tile Tech’s characterization of its behavior as “‘hiccups’ in the discoyery process,” Appellant’s Br. 20, Tile Tech missed every deadline to which it had agreed, failed to respond to the District Court’s orders, and produced responses to discovery that were routinely inadequate. More importantly, the District Court could not be assured of the validity of the factual record on which to base a decision. The District Court did not abuse its discretion in finding that its need to manage its docket weighed in favor of United’s default judgment motion. See, e.g., Pagtalunan, 291 F.3d at 642 (“It is incumbent upon the [district court] to manage its docket without being subject to routine noncomplianee of litigants.” (citation omitted)).

3. The Risk of Prejudice to the Other Party

As to the third Malone factor, the risk of prejudice to the other party, Tile Tech states that “the record does hot indicate any prejudice to [United].” Appellant’s Br. 19. We disagree.

“In determining whether [the moving party] has been prejudiced, we examine whether the [non-moving ,party]’s actions injpair the [moving party]’s ability to go to trial or threaten to interfere with the rightful decision of the case.” Malone, 833 F.2d at 131 (emphasis added). Tile Tech focuses on the first clause of the relevant benchmark, i.e., the other party’s ability to go to trial, and claims that its actions did not hinder United’s ability, to proceed to trial in any meaningful way. Appellant’s Br. 17-20 (“While there were some ‘hiccups’ in the discovery process, the case was on track for a trial in early 2016. There was no prejudicial delay at all.... ”). In contrast, the District Court focused on the second clause, i.e., actions that threaten to interfere with the rightful decision of the case, when, it emphasized that “there can never be assurance of proceeding on the true facts” in this case. United, 2015 WL 7776795, at *5 (internal quotation marks and citation omitted).

The District Court did not abuse its discretion in its finding related to the second clause of the prejudice determination, which is sufficient to find prejudice under Malone. See 833 F.2d at 131 (using the disjunctive “or” in articulating the The District Court did not abuse its discretion in its finding related to the second clause of the prejudice determination, which is sufficient to find prejudice under Malone. See 833 F.2d at 131 (using the disjunctive “or” in articulating the

4. The Public Policy Favoring the Disposition of Cases on Their Merits

The fourth Malone factor, public policy favoring disposition of cases on their merits, “always weighs against dismissal.” Dreith v. Nu Image, Inc., 648 F.3d 779, 788 (9th Cir. 2011) (citation omitted). Therefore, this factor favors Tile Tech.

5. The Availability of Less Drastic Sanctions (i.e., Alternatives to Dismissal)

As to the fifth Malone factor, the availability of less drastic sanctions, Tile Tech argues that the District Court abused its discretion when it “fail[ed] to consider ... lesser sanctions” and “simply penalized Tile Tech rather than [ensuring future compliant behavior by Tile Tech’s trial counsel.” Appellant’s Br. 25, 26. As Malone explained, though, “warning a [non-moving party] that failure to obey a court order will result in dismissal can suffice to meet the ‘consideration of alternatives’ requirement.” 833 F.2d at 132 (citations omitted). Here, the District Court gave ample warning to Tile Tech in its Order to Compel that it would enter default judgment if discovery responses were not forthcoming. J.A. 422. The Order still did not “[e]nsur[e] future compliant behavior” from Tile Tech, Appellant’s Br. 26; Tile Tech did not pay the monetary sanction, its third production was again deficient, and it did not respond to the Order in a timely manner. The District Court also concluded that Tile Tech had committed spoliation of evidence, for which Tile Tech admitted its wrongdoing. United, 2015 WL 7776795, at *6; J.A. 1092-93 (“Q: So after you new [sic] of the lawsuit ... you then just threw ... the washers away? A: Correct.”). Finally, the District Court found that Tile Tech allowed deadlines for discovery to pass “without any effort or comment,” despite knowing that supplementation of discovery was necessary and required as of right for the opposing party. United, 2015 WL 7776795, at *5.

The District Court’s opinion demonstrates its thorough consideration of the Malone factors leading to the ultimate decision not to impose lesser sanctions in this ease, a decision which we find was not an abuse of discretion. As the District Court explained,, “[w]here a party so damages the integrity of the discovery process that there can never be assurance of proceeding on the true facts, a case dispositive [remedy] may be appropriate.” Id. (quoting Conn. Gen. Life Ins. Co. v. New Images of Beverly Hills, 482 F.3d 1091, 1097 (9th Cir. 2007)).

Four factors favor dismissal and one weighs against dismissal. Under these circumstances, we cannot say that the District Court abused its discretion.

B. Willfulness Is Sufficient to Uphold a Grant of Default Judgment

In addition, Tile Tech argues that a default judgment was not appropriate because the District Court did not find bad faith on Tile Tech’s part. Appellant’s Br. 26-29. In support of its position, Tile Tech correctly notes that the District Court, in a separate Order Denying Plaintiffs Motion for Award of Attorney’s Fees, stated that “while defense counsel perhaps handled the case unreasonably, this [c]ourt does not attribute that to bad faith, but instead a complete lack of preparation.” J.A. 1611.

However, Tile Tech omits the full test for default judgment,, which is whether a party’s conduct was due to “willfulness, bad faith, or fault.” Fjelstad v. Am. Honda Motor Co., 762 F.2d 1334, 1341 (9th Cir. 1985) (emphasis added). Fjelstad further explained that willfulness may be satisfied simply by finding “disobedient conduct not shown to be outside the control of the litigant.” Id. (internal quotation marks omitted). While Tile Tech has argued that its trial attorney had “unfamiliarity” with federal court practice, it has not offered any evidence to suggest that its dilatory actions were outside of its attorney’s control. Appellant’s Br. 24. We therefore uphold the District Court’s grant of default judgment.

II. The District Court’s Injunction Was Not Overly Broad

Finally, Tile Tech makes three arguments for why the permanent injunction is overbroad and should be modified, claiming: (1) it enjoins “substantially similar” products that do not necessarily infringe on the ’356 patent; (2) it requires Tile Tech to surrender the notched washer mold even though the washer by itself does not directly infringe; and (3) it prohibits Tile Tech from using images of United’s products in any marketing materials, even if there is no likelihood of confusion. Id. at 29-33. We disagree with each argument.

To determine the scope of an injunction, we look to Rule 65(d) of the Federal Rules of Civil Procedure, which sets out the proper form and scope of an injunction issued by a district court to be one that “states[s] the reasons why it issued,” “state[s] its terms specifically,” and “describe[s] in reasonable detail — and not by referring to the complaint or other document — the act or acts restrained or required.” “Whether the terms of an injunction fulfill the mandates of Rule 65(d) is a question of law that we review without deference.” Int’l Rectifier Corp. v. IXYS Corp., 383 F.3d 1312, 1315 (Fed. Cir. 2004) (citations omitted). As the Supreme Court has stated, “one basic principle built into Rule 65 is that those against whom an injunction is issued should receive fair and precisely drawn notice of what the injunction actually prohibits.” Granny Goose Foods, Inc. v. Bhd. of Teamsters & Auto Truck Drivers Local No. 70 of Alameda Cty., 415 U.S. 423, 444, 94 S.Ct. 1113, 39 L.Ed.2d 435 (1974) (footnote omitted). In the patent infringement context, this court has held that injunctions have satisfactory scope when they prohibit “infringement of the patent by the adjudicated devices and infringement by devices not more than colorably different from the adjudicated devices.” Int’l Rectifier Corp., 383 F.3d at 1316.

Turning to the terms of the subject permanent injunction, we do not find them overly broad. The injunction prohibits Tile Tech from

any and all acts of infringement of the [’356 patent], including making, using, importing, selling, offering for sale, advertising, marketing or promoting the sale of any adjustable building surface support product incorporating the [’356 patent], or any substantially similar adjustable building surface support product sold, advertised, marketed or promoted in the United States.

United, 2015 WL 7776795, at *6 (emphasis added). The plain language of the injunction prohibits all acts of infringement,-with specific ' hypothetical examples following the term “including.” To the extent that sale, advertisement, marketing,, or promotion of a substantially similar product to United’s would constitute infringement if evaluated under the two-step test that this court set out in TiVo Inc. v. EchoStar Corp:, such actions would be prohibited. 646 F.3d 869, 882 (Fed. Cir. 2011) (“[T]he party seeking to enforce the injunction must prove both that the newly accused product is hot more than colorably different from the product found to infringe and that the newly accused product actually infringes.”). We see no problem with the use of the term “substantially similar” in the injunction to the extent that it prevents Tile Tech from infringing United’s patent as assessed under this court’s standard and, thus, find that the District Court did not err in issuing this injunction.

We also find the requirement to surrender “any mold, or other device, by which any notched washer utilized with the [’356 patent] was made” an acceptable means of preventing future infringement to United. United, 2015 WL 7776795, at *6. United submitted that the notched washer was a “crucial” component of the patented support pedestal, Appellee’s Br. 31, which Tile Tech acknowledged when it intentionally destroyed all molds and notchéd washers upon learning of this litigation, J.A. 1092-94. Tile Tech’s President acknowledged that Tile Tech voluntarily changed its product’s washer to a full washer from the notched washer “based upon .,. notification of the patent.” J.A. 467. He also testified that Tile Tech has never sold a notched washer. J.A. 467. Putting aside the fact that such an injunction does not immediately present any potential disruption to Tile Tech’s non-infringing business products, we note that United’s counsel also stated at argument that. United would not seek to enforce the injunction should Tile Tech use notched washers or their molds for non-infringing purposes. Oral Argument at 20:49-21:35, http://oralarguraents, cafc.uscourts.gov/default.aspx?fl=2016-1392,mp3, As such, the requirement to surrender the molds for washers is appropriate,

Finally, we construe the language of the injunction with respect to the unfair competition claim in a manner consistent with the rights of Tile Tech. United alleged violations of unfair competition under both common law and section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (2012). J.A. 418. “It is well established that the Lanham Act does not prevent one from using a competitor’s mark truthfully to identify the competitor’s goods.... ” Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1065 (9th Cir. 1999) (citation omitted). The language of the injunction permanently enjoins Tile Tech and its representatives or agents from “any and all acts of unfair competition, including using images of [United]’s products, projects[,] and drawings on its website and in any other marketing materials.” United, 2015 WL 7776795, at *8 (emphasis added). The District Court found that the current use of United’s products in Tile Tech’s marketing materials violates section 43(a) of the Lanham Act because it “misrepresents that such products, projects, and drawings are the products, projects, and drawings of Tile [Tech],” J.A. 418, and such advertising should be removed. To the extent that in the future Tile Tech’s advertising clearly distinguishes its product from that of United’s in a comparative advertisement, in a way that is not “an act of unfair competition,” we read the injunction to not prohibit such uses. At oral argument, United agreed with this interpretation of the injunction. Oral Argument at 25:00-26:15, http://oralarguments.cafc.uscourts.gov/ default.aspx?fl=2016-1392.mp3. In sum, we find that the injunction is not over-broad as written under the facts presented.

Conclusion

We have considered Tile Tech’s remaining arguments and find them unpersuasive. Accordingly, the decision of the U.S. District Court for the Central District of California is

AFFIRMED

      . Counsel for Tile Tech acknowledged at Oral Argument that the sanctions mandated in the Order still have not been paid. See Oral Argument at 1:25-2:05, http://oralarguments.cafc. uscourts.gov/default.aspx?fl=2016-13 92.mp3.

      . Federal Rule of Civil Procedure 26(a)(1) states, inter alia:
      [A] party must, without awaiting a discovery request, provide to the other parties: (i) the name and, if known, the address and telephone number of each individual likely to have discoverable information ... [and] (ii) a copy — or a description by category and location — of all documents, electronically stored information, and tangible things that the disclosing party has in its possession....

      . Federal Rule of Civil Procedure 37(b)(2)(A)(vi) provides that "[i]f a party ... fails to obey an order to provide or permit discovery, ... the court where the action is pending may issue further just orders ... [including] rendering a default judgment against the-disobedient party....”