author: MARCUS, Circuit Judge:

text:
    LIFE OF THE SOUTH INSURANCE COMPANY, Insurance Company of the South, Petitioners, v. Marquetta CARZELL, Luella Carter, Gladys Chege, Respondents.
    No. 16-90006 Non-Argument Calendar
    United States Court of Appeals, Eleventh Circuit.
    03/29/2017

      Lee Edmundson Bains, Jr., Lorrie Lynn Hargrove, Josh Hess, Maynard Cooper & Gale, PC, Birmingham, AL, Prim F. Esca-lona, Alabama Attorney General’s Office, Montgomery, AL, for Petitioners.
    Edward Adam Webb, Matthew C. Klase, Webb Klase & Lemond, LLC, Atlanta, GA, Hassan Zavareei, Tycko & Zavareei, LLP, Washington, DC, for Respondents.
    Before HULL, MARCUS, and ROSENBAUM, Circuit Judges.
   MARCUS, Circuit Judge:

Defendants Life of the South Insurance Company and Insurance Company of the South (“insurance companies”) seek permission to appeal the district court’s order remanding the plaintiffs’ class action lawsuit to state court. After thorough review, we conclude that there is no federal jurisdiction over this action and, therefore, deny their petition to appeal.

On June 4, 2015, plaintiffs Marquetta Carzell, Luella Carter, and Gladys Chege commenced this class action in the Superior Court of Fulton County, Georgia, alleging a variety of state law violations including breach of contract, breach of the covenant of good faith and fair dealing, unconscionability, unjust enrichment, negligence, and bad faith. The defendant insurance companies, which are both incorporated in Georgia and both maintain their principal places of business in Florida, removed the case to the United States District Court for the Northern District of Georgia on July 16, 2015. The plaintiffs voluntarily dismissed their complaint on August 5, 2015. They refiled it in state court the following day after limiting the plaintiff class to include only “Georgia citizens” who were sold certain insurance policies by defendants, were owed refunds based on relevant insurance policies issued by the defendants, or had purchased insurance policies from the defendants for vehicles that were already insured. The insurance companies, again, timely removed the case, asserting two bases for federal jurisdiction under the Class Action Fairness Act of 2005 (CAFA), Pub. L. No. 109-2, 119 Stat. 4: (1) the defendants maintain their principal places of business in Florida, making them minimally diverse from the Georgia-citizen class members under 28 U.S.C. § 1332(d)(2)(A); and (2) the class members include citizens of foreign countries, establishing minimal diversity pursuant to 28 U.S.C. § 1332(d)(2)(B).

On' April 26, 2016, the district court determined that minimal diversity did not exist and remanded the case to state court. The defendants filed an interlocutory petition for permission to appeal under 28 U.S.C. § 1453(c)(1). Because all of the plaintiffs and all of the defendants are citizens of Georgia, we conclude that there is no minimal diversity supporting federal jurisdiction.

“[W]e review de novo whether the district court properly interpreted and applied the provisions of 28 U.S.C. § 1382 in determining whether the [defendants] established diversity jurisdiction.” Underwriters at Lloyd’s, London v. Osting-Schwinn, 613 F.3d 1079, 1085 (11th Cir. 2010). “Factual findings regarding the citizenship of a party are subject to a clearly erroneous standard of review.” MacGinnitie v. Hobbs Grp., LLC, 420 F.3d 1234, 1239 (11th Cir. 2005). The party seeking to invoke a federal forum traditionally bears the burden of persuasion on jurisdictional issues such as establishing the citizenship of the parties. See McNutt v. Gen. Motors Acceptance Corp. of Ind., 298 U.S. 178, 189, 56 S.Ct. 780, 80 L.Ed. 1135 (1936); Burns v. Windsor Ins. Co., 31 F.3d 1092, 1094 (11th Cir. 1994) (“The defendant can remove to federal court if he can show, by a preponderance of the evidence, facts supporting jurisdiction.”). While CAFA is silent on this issue, this Court has held that the same rule applies to CAFA actions. See Evans v. Walter Indus., Inc., 449 F.3d 1159, 1164 (11th Cir. 2006) (“CAFA does not change the traditional rule that the party seeking to remove the case to federal court bears the burden of establishing federal jurisdiction.”). Thus, the defendants bear the burden of demonstrating that the parties are properly in federal court.

CAFA provides for federal jurisdiction in certain civil actions when “any member of a class of plaintiffs is a citizen of a State different from any defendant.” 28 U.S.C. § 1332(d)(2)(A). Under 28 U.S.C. § 1332(c)(1), “a corporation shall be deemed to be a citizen of every State and' foreign state by which it has been incorporated and of the State or foreign state where it has its principal place of business.” It is undisputed that the plaintiffs are citizens of Georgia. Indeed, the defendants concede that “the class members are citizens of Georgia” and recognize that the district court held that the plaintiff class includes only individuals who are United States citizens and are domiciled in Georgia. See D.E. 20 at 10 n.6. It is also undisputed that because the defendants are incorporated in Georgia and maintain their principal places of business in Florida, they are citizens of both states. However, the defendants maintain that due to their Florida citizenship, they are diverse from the Georgia-citizen plaintiffs. The plaintiffs, meanwhile, claim that the parties are not diverse because they are all citizens of Georgia.

The plaintiffs have the better of the argument. To show that “any member of [the] class of plaintiffs is a citizen of a State different from any defendant,” 28 U.S.C. § 1332(d)(2)(A), the defendants must prove that they are not Georgia citizens. But the record unambiguously establishes that the defendants are incorporated in Georgia. Under the terms of the statute, this means that the defendants are Georgia citizens, just like the plaintiffs. See 28 U.S.C. § 1332(c)(1). Because the defendants cannot establish that the plaintiffs and the defendants are not all citizens of Georgia, it seems clear to- us that federal diversity jurisdiction does not exist.

The Fourth Circuit addressed the same issue in Johnson v. Advance America, 549 F.3d 932 (4th Cir. 2008), affirming the district court’s remand of a class action to state court. Id. at 938. In that case, a class of only South Carolina citizens sued Advance America, a corporation that was a citizen of both South Carolina and Delaware. Id at 934. The court noted that “[t]he language of the statute imposes a requirement on Advance America to prove the negative — i.e. that it is not a citizen of South Carolina” — which it could not do given its dual corporate citizenship. Id at 936 (emphasis in original). Importantly, the court emphasized that § 1332(c)(1) “gives dual, not alternative, citizenship to a corporation whose principal place of business is in a State different from the State where it is incorporated.” Id. at 935 (emphasis added). Accordingly, the corporation could not rely on only its Delaware citizenship and ignore its South Carolina citizenship to establish minimal diversity under CAFA. Id. at 936. The court thus concluded that because Advance America was a citizen of both Delaware and South Carolina, “it [could not] carry its burden of demonstrating that the citizenship of the South Carolina class members [was] different from its own.” Id. (emphasis in original). The First Circuit has likewise expressed skepticism about the argument made by the corporation in Johnson. See In re Hannaford Bros. Co. Customer Data Sec. Breach Litig., 564 F.3d 75, 78 n.2 (1st Cir. 2009) (“[Defendant] therefore argues that its dual citizenship as a Delaware corporation with its principal place of business in Florida creates the requisite minimal diversity for jurisdiction under § 1332(d)(2).... We are skeptical of this argument and note that one other circuit has rejected it.”) (citing Johnson, 549 F.3d at 936).

We agree with the result reached by the Fourth Circuit in Johnson. Under the statute, the defendants are clearly citizens of both Georgia and Florida. To establish federal jurisdiction, they are required to prove that “any member of [the] class of plaintiffs is a citizen of a State different from any defendant.” 28 U.S.C. § 1332(d)(2)(A) (emphasis added). Even though “we may no longer rely on any presumption in favor of remand in deciding CAFA jurisdictional questions,” Dudley v. Eli Lilly & Co., 778 F.3d 909, 912 (11th Cir. 2014), we need not rely on any presumption in construing the plain words of this statute. Giving meaning to its plain words, we read the statute to bar corporate defendants from relying on only one citizenship when their other citizenship would destroy minimal diversity. Because the plaintiffs are Georgia citizens and the corporate defendants are Georgia (and Florida) citizens, there is no plaintiff who is a citizen of a state different from any defendant, and no federal jurisdiction exists.

We can find no basis for concluding that Congress intended corporate defendants like the insurance companies involved here to be able to remove class action suits like this one — in which all of the parties involved are citizens of the same state and the issues are of local rather than national importance — to federal court. As we have previously recognized, “[a]n important historical justification for diversity jurisdiction is the reassurance of fairness and competence that a federal court can supply to an out-of-state defendant facing suit in state court.” Davis v. Carl Cannon Chevrolet-Olds, Inc., 182 F.3d 792, 797 (11th Cir. 1999). But because the defendants, like the plaintiffs, are citizens of Georgia, they face no risk of any conceivable local bias in Georgia courts. As we see it, the defendants are urging us to apply a minimal diversity test that is inconsistent with the statute so that their corporate dual citizenship would create minimal diversity and allow them to remove state-based claims from state court. We are unpersuaded and agree with the district court’s conclusion that the defendants’ dual citizenship is an insufficient basis to create federal diversity jurisdiction under CAFA when the defendants share a state of citizenship with all of the plaintiffs.

Alternatively, the defendants offer that minimal diversity jurisdiction still exists because some of the putative class members are foreign citizens who maintain dual citizenship with the United States and a foreign country. The presence of foreign citizens might, in some cases, result in class actions properly being in federal court because CAFA provides federal jurisdiction when “any member of a class of plaintiffs is a foreign state or a citizen or subject of a foreign state and any defendant is a citizen of a State.” 28 U.S.C. § 1332(d)(2)(B). But in this case, again we disagree with the defendants’ claim that they have established minimal diversity.

Notably, the plaintiffs restricted their class to “Georgia citizens.” The Supreme Court has explained that “[i]n order to be a citizen of a State within the meaning of the diversity statute, a natural person must both be a citizen of the United States and be domiciled within the State.” Newman-Green, Inc. v. Alfonzo-Larrain, 490 U.S. 826, 828, 109 S.Ct. 2218, 104 L.Ed.2d 893 (1989) (emphasis in original). Thus, any Georgia citizen eligible for class membership under the terms of the complaint is also a United States citizen. It does not matter that some class members may hold dual citizenship with another country. As we’ve recognized, “[t]he courts of appeals deciding this issue have uniformly held that, for diversity purposes, courts should consider only the United States citizenship of individuals who are dual citizens.” Molinos Valle Del Cibao, C. por A. v. Lama, 633 F.3d 1330, 1341 (11th Cir. 2011) (citing cases from the Second, Third, Fifth, Sixth, Seventh, and Ninth Circuits). We said in. Molinos that we were “persuaded by the reasoning of these courts.” Id; see also, e.g., Sadat v. Mertes, 615 F.2d 1176, 1187 (7th Cir. 1980) (“[T]he risk of entanglements with other sovereigns that might ensue from failure to treat the legal controversies of aliens on a national level is slight when an American citizen is also a citizen of another country and therefore he ordinarily should only be regarded as an American citizen for purposes of 28 U.S.C. § 1332(a).”) (citation and quotation omitted). Thus, we held “that an individual who is a dual citizen of the United States and another nation is only a citizen of the United States for the purposes of diversity jurisdiction under § 1332(a).” Molinos, 633 F.3d at 1341.

The defendants argue nevertheless that the complete diversity jurisdiction provision addressed in Molinos — 28 U.S.C. § 1332(a) — is different from CAFA’s minimal diversity jurisdiction provision found in § 1332(d)(2)(B). Specifically, they note that § 1332(a)(2) destroys diversity jurisdiction for cases “between citizens of a State and citizens or subjects of a foreign state who are lawfully admitted for permanent residence in the United States and are domiciled in the same State,” which, they claim, suggests that § 1332(a) employs differing standards of diversity than CAFA does. That exception is not found in § 1332(d)(2)(B), they point out, thus sug-' gesting a congressional intent to “treat alien minimal diversity differently from alien complete diversity.”

We see no reason to treat dual citizens differently under § 1332(d)(2)(B) than under § 1332(a). Both provisions further the goals of diversity jurisdiction: avoiding any claimed bias against out-of-state or foreign defendants. As the Fifth Circuit has noted:

[T]he major purpose of alienage jurisdiction is to promote international relations by assuring other countries that litigation involving their nationals will be treated at the national level, and' alien-age jurisdiction is also intended to allow foreign subjects to avoid real or perceived bias in the state courts — a justification that should not be available to the dual citizen who is an American.

Coury v. Prot, 85 F.3d 244, 250 (5th Cir. 1996). Thus, the court concluded, “the dual citizen should not be allowed to invoke alienage jurisdiction because this would give him an advantage not enjoyed by native-born American citizens.” Id. It seems to us that this rationale applies with equal force to § 1332(a) and to § 1332(d)(2)(B). As an American citizen, a class member who is a dual citizen need not fear any perceived local bias in a state court — especially if he is a citizen of the forum state. We thus agree with our sister circuits that, “for purposes of diversity jurisdiction, only the American nationality of a dual national is recognized.” Frett-Smith v. Vanterpool, 511 F.3d 396, 400 (3d Cir. 2008); see also Yokeno v. Sekiguchi, 754 F.3d 649, 655 (9th Cir. 2014) (“Our precedent directs us to consider only the American citizenship of a dual citizen for purposes of determining diversity.”); Action S.A. v. Marc Rich & Co., Inc., 951 F.2d 504, 507 (2d Cir. 1991) (“In matters of diversity jurisdiction American citizenship will determine diversity.”); Sadat, 615 F.2d at 1187 (“[Ojnly the American nationality of the dual citizen should be recognized under 28 U.S.C. § 1332(a)”). Only the American citizenship of the dual-citizen plaintiffs need be considered and, .therefore, minimal diversity is not present in this case. Therefore, to carry their burden, the defendants must prove that at least one of the plaintiffs is not a United States citizen — this they cannot do.

Finally, the defendants also cite to a few lines of dicta from Grupo Dataflux v. Atlas Glob. Grp., L.P., 541 U.S. 567, 124 S.Ct. 1920, 158 L.Ed.2d 866 (2004), a case that is not squarely on point because it involved a suit brought by a partnership (whose partners included both foreign and United States citizens) against a foreign corporation. Id. at 568-69, 124 S.Ct. 1920. The defendants note that in Grupo Dataflux, the Supreme Court contemplated that “[i]t is possible, though far from clear, that one can. have opposing parties in a two-party case who are cocitizens, and yet have minimal Article III jurisdiction because of the multiple citizenship of one of the parties.” Id. at 577 n.6, 124 S.Ct. 1920 (emphasis added). Not only is this language dicta, but also the Court has stressed that it is “far from clear” whether minimal jurisdiction could be construed in this way, and no court we’ve identified has ever taken this route. What’s more, the Court in Grupo Dataflux expressly recognized that in most cases its precedent required, for purposes of minimal diversity jurisdiction of the kind found in CAFA, “two adverse parties [who] are not co-citizens.” Id (quotation omitted). While this precedent could change in the future, there is no authority or rationale suggesting that it has already done so.

In short, the approach we employed in Molinos applies to this case as well. Indeed, the relevant portions of the statutes are analogous and the principles of international law are the same — under either complete or CAFA minimal diversity, alienage jurisdiction is not available to the dual citizen who is American and thus would not suffer real or perceived bias in the state courts. Indeed, the defendants have failed to cite any authority (and we can find none) holding that only the foreign citizenship of an American citizen with dual citizenship should be considered for purposes of CAFA diversity jurisdiction. We, therefore, apply the same interpretation we used in Molinos to § 1332(d) and hold that “an individual who is a dual citizen of the United States and another nation is only a citizen of the United States for the purposes of diversity jurisdiction.” Molinos, 633 F.3d at 1341.

Since all of the plaintiffs and all of the defendants are citizens of Georgia, the district court correctly determined that diversity jurisdiction does not exist and, therefore, properly remanded the matter to state court.

PETITION DENIED.

      . The Fourth Circuit reached the same conclusion in another case decided on the same day as Johnson. See Dennison v. Carolina Payday Loans, Inc., 549 F.3d 941, 943-44 (4th Cir. 2008) (affirming district court remand to state court when class members were all citizens of South Carolina and defendant corporation was a citizen of both South Carolina and Georgia).

      . Several district courts have also reached the same conclusion as the Fourth Circuit did in Johnson. See, e.g., Marroquin v. Wells Fargo, LLC, 2011 WL 476540, *2 (S.D. Cal. Feb. 3, 2011) (no minimal diversity even though corporate defendant was a citizen of Delaware and California, because plaintiffs and all putative class members were California citizens); Weaver v. Nestle USA, Inc., 2008 WL 5453734, *2 (N.D. Cal. Oct. 30, 2008) (“Both the members of the purported class and Defendant are citizens of California. The fact that Defendant is a citizen of Delaware does not mean that it is not also a citizen of California. In other words, dual citizenship does not become alternative citizenship.”) (emphasis in original); Sundy v. Renewable Envtl. Solutions, LLC, 2007 WL 2994348, *3 (W.D. Mo. Oct. 10, 2007) (no minimal diversity when defendants, who maintained dual citizenship in Missouri and' Delaware, failed to demonstrate that there was a member of the class who was neither a citizen of Missouri nor a citizen of Delaware). But see Fuller v. Home Depot Servs., LLC, 2007 WL 2345257, *3 (N.D. Ga. Aug. 14, 2007) (finding minimal diversity jurisdiction when a class of Georgia citizens sued Home Depot, which is incorporated in Delaware and has its principal place of business in Georgia).


source: Caselaw Access Project

author: PER CURIAM:

license: Public Domain

text:
    Loubna Elkaousi MENDOZA, Plaintiff-Appellant, Hassan Elkaoussi, et al., Plaintiffs, v. SECRETARY, DEPARTMENT OF HOMELAND SECURITY, Director, US Citizenship and Immigration Services, District Director, Citizenship and Immigration Services, Tampa, Florida, Field Office Director, Citizenship and Immigration Services, Orlando, Florida, Defendants-Appellees.
    No. 16-10632
    United States Court of Appeals, Eleventh Circuit.
    (April 3, 2017)

      David H. Stoller, Law Offices of David Stoller, PA, Orlando, FL, for Plaintiff-Appellant.
    Michelle Thresher Taylor, Arthur Lee Bentley, III, U.S. Attorney’s Office, Tampa, FL, Scott H. Park, U.S. Attorney’s Office, Orlando, FL, for Secretary, Department of Homeland Security, Director, US Citizenship and Immigration Services, and District Director, Citizenship and Immigration Services, Tampa, Florida.
    Arthur Lee Bentley, III, U.S. Attorney’s Office, Tampa, FL, Scott H. Park, U.S. Attorney’s Office, Orlando, FL, for Field Office Director, Citizenship and Immigration Services, Orlando, Florida.
    Before TJOFLAT, HULL, and O’MALLEY, Circuit Judges.

       Honorable Kathleen M. O’Malley, United States Circuit Judge for the Federal Circuit, ■ sitting by designation.

   PER CURIAM:

Plaintiff Loubna Elkaoussi Mendoza appeals the district court’s order granting summary judgment to the defendants. Mendoza filed a Form 1-130, Petition for Alien Relative, seeking an immigrant visa for her alien father, Hassan Elkaoussi. The United States Citizenship and Immigration Services (“CIS”) denied Mendoza’s petition, and Mendoza filed this federal action seeking review of CIS’s decision. On appeal, Mendoza contends that CIS’s decision is unsupported by substantial evidence, is arbitrary and capricious, and is otherwise not in accordance with law. After review of the record and the parties’ briefs, and with the benefit of oral argument, we affirm.

I. BACKGROUND

Mendoza was born in Morocco in 1986 and became a naturalized United States citizen in 2009. At the time of her birth, Mendoza’s father, Elkaoussi, was married to Mendoza’s biological mother, Hafida Serrar. Elkaoussi and Serrar divorced in 2002.

A. Smith’s 2004 Petition on Behalf of Elkaoussi

On January 12, 2004, Elkaoussi married Joyce Smith, a United States citizen. Smith was previously married to Said Aldi Hussein, but that marriage ended in 2003.

About- one month after marrying El-kaoussi, Smith filed an 1-130 petition seeking an immigrant visa for Elkaoussi based on his status as her spouse. Smith and Elkaoussi submitted evidence supporting the bona fides of their marriage, including a letter from Smith’s father stating that Smith and Elkaoussi lived together in his home, pictures of Smith and Elkaoussi together, joint bank statements, joint car insurance documents, other bills, and affidavits from acquaintances who could attest to the nature of Smith and Elkaoussi’s relationship.

On June 28, 2006, Smith and Elkaoussi appeared for an interview with CIS regarding the 2004 petition. In October 2007, while the 2004 petition was still pending, Smith and Elkaoussi divorced. On May 6, 2010, because of that 2007 divorce, CIS denied Smith’s 2004 petition.

B. Mendoza’s 2009 and 2012 Petitions on Behalf of Elkaoussi

On December 20, 2009, after Smith and Elkaoussi’s divorce but before CIS denied Smith’s 2004 petition, Mendoza filed an I-130 petition on behalf of Elkaoussi based on his status as her father. CIS denied that petition because Mendoza and El-kaoussi failed to appear for an interview.

On March 19, 2012, Mendoza filed another 1-130 petition on behalf of Elkaoussi. On February 19, 2013, CIS requested evidence regarding Mendoza’s paternal relationship with Elkaoussi. Mendoza responded by submitting her birth certificate and a marriage certificate documenting the marriage between Elkaoussi and Mendoza’s mother.

On April 8, 2014, Mendoza and Elkaous-si appeared for an interview with CIS, during which a CIS officer separately asked each of them about Elkaoussi’s marriage to Smith. The CIS officer asked Mendoza if she knew Elkaoussi’s whereabouts in 2006, whether Mendoza ever met Smith, and who lived with Elkaoussi from 2006 to 2012. On the advice of counsel, Mendoza chose not to answer these questions.

The CIS officer also asked Elkaoussi why he divorced Smith. On the advice of counsel, Elkaoussi chose not to answer this question.

On Juné 2, 2014, CIS sent Mendoza a notice of intent to deny the 2012 petition (the “NOID”). The NOID explained that-federal immigration law prohibits granting an immigrant visa to anyone who previously sought a visa on the basis of a fraudulent marriage and that CIS doubted the validity of Elkaoussi’s previous marriage to Smith. In the NOID, CIS identified several issues with the evidence that Smith submitted in conjunction with her 2004 petition: (1) the letter from Smith’s father, which stated that Smith and Elkaoussi lived together in his residence, was unsigned; (2) the bank statements listed Smith and Elkaoussi’s address as a P.O. Box rather than a residential address; and (3) the affidavits from Smith and Elkaous-si’s acquaintances included no details about when and where the affiants met Smith and Elkaoussi. In addition, the NOID noted that, at the April 8, 2014 interview, Mendoza and Elkaoussi refused to answer the CIS officer’s questions about this previous marriage to Smith.

The NOID advised that Mendoza “failed to establish that [her] father’s marriage to [Smith] was not entered into solely for the purpose of circumventing the immigration laws of the United States.” CIS directed Mendoza to respond to the NOID with an explanation of why the petition should not be denied and to submit any evidence that established the validity of Elkaoussi’s marriage to Smith.

C. CIS Denies Mendoza’s 2012 Petition

On June 27, 2014, Mendoza responded through counsel, arguing that the NOID lacked substantive and probative evidence of marriage fraud and requesting that CIS grant Mendoza’s petition. Mendoza’s response did not provide any additional evidence regarding Elkaoussi’s marriage to Smith.

On July 17, 2014, CIS denied Mendoza’s 2012 petition. In its denial decision, CIS explained that it was obliged to conduct an independent investigation regarding El-kaoussi’s marriage to Smith regardless of whether CIS made a previous finding of marriage fraud in connection with Smith’s 2004 petition. CIS acknowledged that it was “not making its determination based on [the marriage-fraud bar in 8 U.S.C. § 1154(c)].” Even so, CIS determined that the marriage-fraud bar “clearly prohibits approval of a visa petition filed on behalf of an alien who has attempted or conspired to attempt to enter into” a fraudulent marriage.

CIS also stated that, because Mendoza failed to adequately respond to the interview questions and the NOID, CIS had “no choice but to determine that the information presently before us is insufficient to enable us to determine[ ] whether or not the beneficiary’s marriage was undertaken to evade the immigration laws.” Thus, CIS denied Mendoza’s 2012 petition because Mendoza failed to carry her burden of proving that Elkaoussi was eligible for an immediate-relative visa.

Mendoza then filed this federal action seeking review, under the Administrative Procedure Act (the “APA”), of CIS’s denial of the 2012 petition. Mendoza and the defendants filed cross-motions for summary judgment.

The district court granted the defendants’ summary judgment motion and denied Mendoza’s. First, the district court rejected Mendoza’s argument that CIS violated her due process rights by failing to provide adequate notice of the grounds on which it denied her 2012 petition. Mendoza does not challenge this finding on appeal.

Second, the district court determined that CIS’s denial of the 2012 petition was not arbitrary and capricious or contrary to law and that the decision was supported by substantial evidence. This appeal followed.

II. STANDARD OF REVIEW

We review de novo the district court’s grant of summary judgment, considering the evidence and the inferences therefrom in the light most favorable to the nonmoving party. Ellis v. England, 432 F.3d 1321, 1325 (11th Cir. 2005) (per cu-riam). Summary judgment is appropriate where the evidence “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). There is a genuine dispute where the evidence would allow a reasonable jury to find in favor of the nonmoving party. Ellis, 432 F.3d at 1325-26.

Under the APA, an agency action, finding, or conclusion can be set aside where it is “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law” or is “unsupported by substantial evidence.” 5 U.S.C. § 706(2)(A), (E). This standard is “exceedingly deferential.” Defs. of Wildlife v. U.S. Dep’t of Navy, 733 F.3d 1106, 1115 (11th Cir. 2013) (quoting Fund for Animals, Inc. v. Rice, 85 F.3d 535, 541 (11th Cir. 1996)).

To determine whether the agency’s action was arbitrary and capricious, we examine whether the agency came to a rational conclusion and do not substitute our own judgment for that of the agency. Id. We set aside an agency action as arbitrary and capricious only where (1) the agency “relied on factors which Congress has not intended it to consider,” (2) the agency “failed to consider an important aspect of the problem,” (3) the agency explained its decision in a way “that runs counter to the evidence,” or (4) the action “is so implausible that it could not be ascribed to a difference in view or the product of agency expertise.” Id. (quoting Miccosukee Tribe of Indians of Fla. v. United States, 566 F.3d 1257, 1264 (11th Cir. 2009)).

The “substantial evidence” standard is “no more than a recitation of the application of the ‘arbitrary and capricious’ standard to factual findings.” Fields v. U.S. Dep’t of Labor Admin. Review Bd., 173 F.3d 811, 813 (11th Cir. 1999) (per curiam).

III. DISCUSSION

On appeal, Mendoza maintains that CIS’s decision denying her 2012 petition was arbitrary and capricious and otherwise not in accordance with law because CIS misconstrued the relevant burdens of proof and failed to make a final determination as to whether Elkaoussi was ineligible by reason of the § 1154(c) marriage-fraud bar. Mendoza also contends that CIS’s denial of her 2012 petition is not supported by substantial evidence because she carried her burden of showing that Elkaoussi was eligible for an immediate-relative visa. After a brief review of the relevant statutory and regulatory principles, we address Mendoza’s arguments.

A. Legal Principles Governing Immigrant Relative Visas

Under the Immigration and Nationality Act (“INA”), an alien may obtain an immigrant visa by virtue of his immediate familial relationship with a United States citizen. See 8 U.S.C. § 1151(b)(2)(A)(i) (defining “immediate relatives” to include children, spouses, and parents of United States citizens); id. § 1154 (setting forth the procedure for granting immigrant status). To obtain an immigrant visa for an immediate relative, the United States citizen must file a Form 1-130, Petition for Alien Relative. Id. § 1154(a); 8 C.F.R. § 204.1(a)(1).

To prevail on such a petition seeking immigration status for a parent, the petitioner must produce evidence showing that she is a United States citizen over the age of twenty-one and that the beneficiary alien is her parent. 8 C.F.R. § 204.2(f). The petitioner bears the burden of showing that the alien beneficiary is eligible for the immigrant visa. 8 U.S.C. § 1361 (“Whenever any person makes an application for a visa ... the burden of proof shall be on such person to establish that [the beneficiary] is eligible to receive such visa ... or is not inadmissible under any provision of this chapter.”); Matter of Brantigan, 11 I. & N. Dec. 493, 495 (BIA 1966) (“In visa petition proceedings, the burden of proof to establish eligibility sought for the benefit conferred by the immigration laws rests upon the petitioner.”).

The INA prohibits the approval of any visa petition filed on behalf of a petitioner who has previously sought a visa by reason of a fraudulent marriage. The statute provides:

[N]o petition shall be approved if (1) the alien has previously been accorded, or has sought to be accorded, an immediate relative or preference status as the spouse of a citizen of the United States or the spouse of an alien lawfully admitted for permanent residence, by reason of a marriage determined by the Attorney General to have been entered into for the purpose of evading the immigration laws, or (2) the Attorney General has determined that the alien has attempted or conspired to enter into a marriage for the purpose of evading the immigration laws.

8 U.S.C. § 1154(c). The implementing regulations further provide that the CIS district director “will deny” an 1-130 petition where there is “substantial and probative evidence” of an attempt or conspiracy to enter into a fraudulent marriage. 8 C.F.R. § 204.2(a)(l)(ii); see 8 C.F.R. § 1.2 (defining “director” to include -district director).

In determining whether the marriage was fraudulent, the relevant inquiry is whether the “bride and groom intended to establish a life together at the time they were married.” Matter of Laureano, 19 I. & N. Dec. 1, 2-3 (BIA 1983). Evidence of such intent may be found in insurance policies, property leases, income tax forms, and bank accounts. Id. at 3. Also relevant is any evidence regarding the marriage ceremony, courtship, residences, and shared experiences. Id. Rather than relying on any previous findings regarding the bona fides of the alien beneficiary’s previous marriage, CIS should make an independent determination based on any relevant evidence, including evidence derived from previous CIS proceedings. Matter of Tawfik, 20 I. & N. Dec. 166, 168 (BIA 1990).

If the evidence submitted with a visa petition is insufficient to establish the beneficiary’s eligibility, the CIS district director may issue a notice of intent to deny the petition, which sets forth the basis for the proposed denial and directs the petitioner to respond with additional evidence. 8 C.F.R. § 103.2(b)(8)(iii). If there is reason to doubt the validity of the beneficiary’s previous marriage, the petitioner must come forward with evidence showing that the marriage was not entered for the purpose of circumventing immigration laws. Matter of Laureano, 19 I. & N. Dec. at 3; 8 C.F.R. § 103.2(b)(11) (outlining the procedure for responding to a notice of intent to deny)'.

B. Analysis

Here, we conclude that CIS’s decision denying Mendoza’s 2012 petition was not arbitrary and capricious or otherwise contrary to law. Mendoza and the defendants espouse conflicting interpretations of the way that the § 1154(c) marriage-fraud bar interacts with the petitioner’s burden to prove the beneficiary’s ultimate eligibility under § 1361.

Mendoza in essence urges us to conclude that § 1154(c) creates a burden shifting scheme wherein the petitioner first must prove that the beneficiary is eligible as an immediate relative of a United States citizen, and then CIS must conclusively determine that the beneficiary is ineligible by reason of previous marriage fraud. Because CIS did not make such a conclusive determination here, Mendoza argues that her petition should be granted.

CIS conceptualizes the statutory and regulatory scheme differently. Under the evidence relevant to Mendoza’s petition, CIS determined that Mendoza’s petition could not succeed because there was reason to doubt whether Elkaoussi could surmount § 1154(c)’s marriage-fraud bar. In this sense, CIS treated the marriage-fraud bar as subsumed within Mendoza’s overall burden to prove eligibility under § 1361. Thus, because Mendoza failed to assuage CIS’s concerns about Elkaoussi’s marriage to Smith, Mendoza failed to show that Elkaoussi was eligible for a visa.

It is true, as Mendoza notes, that § 1154(c) indicates that the marriage-fraud bar applies where the attorney general “determine^,” based on “substantial and probative evidence” that the beneficiary previously sought a visa based on a marriage entered into for the purpose of circumventing the immigration laws. 8 U.S.C. § 1154(c) (emphasis added); 8 C.F.R. § 204.2(a)(l)(ii). But this dictate must be read in conjunction with § 1361, which puts the onus on the petitioner to show that the beneficiary is “eligible” for a visa. And it is reasonable to conclude that, where there is unrebutted evidence suggesting that the beneficiary previously sought a visa by operation of a fraudulent marriage, the petitioner failed to carry her burden of proving the beneficiary’s ultimate eligibility. See Defs. of Wildlife, 733 F.3d at 1115 (stating that the agency’s action should not be disturbed where the agency came to a “rational conclusion.”).

The Board of Immigration Appeals decisions on which Mendoza relies do not compel a contrary conclusion. Those decisions discuss what evidence will sustain a finding that the beneficiary is ineligible under the marriage-fraud bar, but none of them holds that CIS is bound to make a conclusive determination of marriage fraud before denying a petition under circumstances akin to those presented here. See Matter of Tawfik, 20 I. & N. Dec. at 166-70 (concluding that the evidence was insufficient to support denial of a visa petition under the marriage-fraud bar where the only proof of marriage fraud was the fact that the beneficiary was living with his former wife, a non-citizen, rather than his current wife, the citizen-petitioner, while the visa petition was pending); Matter of Rahmati, 16 I. & N. Dec. 538, 538-39 (BIA 1978) (reversing denial of a visa petition where CIS failed to determine independently whether the beneficiary entered into a fraudulent marriage and instead erroneously relied on an immigration judge’s previous ruling rescinding the beneficiary’s permanent resident status for different marriage-related reasons); Matter of Samsen, 15 I. & N. Dec. 28, 28-30 (BIA 1974) (same).

In fact, the language of one of the decisions on which Mendoza relies indicates that the mere presence of evidence in the record suggesting that the marriage-fraud bar applies, rather than a definitive finding of previous marriage fraud, is sufficient to require the petitioner to prove that the marriage-fraud bar does not apply. Matter of Kahy, 19 I. & N. Dec. 803, 806-07 (BIA 1988) (“[Wjhere there is evidence in the record to indicate that the beneficiary has been an active participant in a marriage fraud conspiracy, the burden shifts to the petitioner to establish that the beneficiary did not seek nonquota or preference status based on a prior fraudulent marriage.”) (emphasis added). In short, Mendoza fails to show how CIS’s denial of her visa petition was arbitrary and capricious or otherwise not in accordance with law. See 5 U.S.C. § 706(2)(A).

As a practical matter, the approach that Mendoza advocates would hobble CIS in its efforts to implement effectively the immediate-relative visa process. Like the district court, we note that accepting Mendoza’s view — that CIS must either make a final determination of marriage fraud or grant the petition — would force CIS to grant visa petitions “even when [CIS] harbors doubts about a petitioner’s eligibility and is unable to definitively resolve those doubts.” If Mendoza’s approach controlled, visa applicants could circumvent the marriage-fraud bar by refusing to answer CIS’s questions about the bona tides of a previous marriage. Such an approach would shift the ultimate eligibility burden from the petitioner to CIS in contravention of § 1361. Here, CIS rationally determined that it was not required to grant a visa application where Mendoza and Elkaoussi failed to provide sufficient evidence to prove eligibility. Mendoza and Elkaoussi were free to refuse to answer CIS’s questions about Elkaoussi’s previous marriage, but they did so at their own peril.

Under the APA, we are concerned only with whether CIS reached a rational conclusion. Defs. of Wildlife, 738 F.3d at 1115. Applying this deferential brand of review, we conclude that CIS’s decision denying Mendoza’s 2012 petition was not arbitrary and capricious or otherwise not in accordance with law. See id.; 5 U.S.C. § 706(2)(A).

Additionally, we conclude that CIS’s decision denying Mendoza’s 2012 petition was supported by substantial evidence. Mendoza did establish that she is a United States citizen and that Elkaoussi qualifies as an immediate relative. But the evidence regarding Elkaoussi’s marriage to Smith was sufficient to support CIS’s doubts about the marriage’s validity, and thus was also sufficient to support denial of the visa petition for failure to prove Elkaoussi’s ultimate eligibility. Given the irregularities in the letters, affidavits, and joint bank statements submitted in connection with Smith’s 2004 petition, and in light of Mendoza’s and Elkaoussi’s refusal to answer questions about the previous marriage, CIS came to the rational conclusion that Mendoza failed to prove that Elkaous-si was eligible for a visa. See Defs. of Wildlife, 733 F.3d at 1115; Fields, 173 F.3d at 813.

IV. CONCLUSION

Accordingly, we affirm the district court’s order granting summary judgment to the defendants and denying Mendoza’s cross-motion for summary judgment.

AFFIRMED.

      . The certificate of marriage bore the signature of the person who performed the marriage ceremony, but it did not include signatures of any witnesses to the ceremony.


author: REYNA, Circuit Judge.

text:
    TVIIM, LLC, Plaintiff-Appellant v. MCAFEE, INC., Defendant-Appellee
    2016-1562
    United States Court of Appeals, Federal Circuit.
    Decided: March 21, 2017

      John J. Shaeffer, Fox Rothschild, LLP, Los Angeles, CA, argued for plaintiff-appellant. Also represented by Jeffrey H. Grant; William A. Rudy, Denver, CO.
    Joseph J. Mueller, Wilmer Cutler Pickering Hale and Dorr LLP, Boston, MA, argued for defendant-appellee. Also represented by Richard Wells O’Neill, Sarah B. Petty; Nina S. Tallón, Michael Wolin, Washington, DC. ’
    Before PROST, Chief Judge, CLEVENGER and REYNA, Circuit Judges.
   REYNA, Circuit Judge.

TVIIM, LLC (“TVIIM”) sued McAfee, Inc. (“McAfee!’) in the United States District Court for the Northern District of California for infringement of U.S. Patent No. 6,889,168 (“’168 patent”). A jury determined that McAfee did not infringe the T68 patent and that the T68 patent was invalid. After the jury verdict, TVIIM filed motions for judgment as a matter of law (“JMOL”) and for a new trial. The district court denied both motions, and TVIIM filed this appeal challenging the jury verdict and the district court’s denial of its post-verdict motions. We affirm because substantial evidence supports the jury’s findings of non-infringement and invalidity under a uniform construction of the relevant claim terms, and the district court did not abuse its discretion in denying a new trial.

Background

1. The T68 Patent

The T68 patent is entitled “Method and Apparatus for Assessing the Security of a Computer.” It describes “a security system which identifies security vulnerabilities and discrepancies for a computing system.” T68 patent, coi. 1,11. 65-67. The T68 patent both identifies potential security threats to a computer and, under certain conditions, recommends action to a user to stop the threat.

Four claims of the ’168 patent are relevant to this appeal. Independent claim 1 recites:

A security system for a computer apparatus, wherein said computer apparatus includes a processor and system memory, said security system comprising:
at least one security module which under direction from the processor accesses and analyzes selected portions of the computer apparatus to identify vulnerabilities;
at least one utility module which under the direction from the processor, performs various utility functions with regards to the computer apparatus in response to the identified vulnerabilities; and
a security system memory which contains security information for performing the analysis of the computer apparatus.

’168 patent, col. 10, 1. 65 to col. 11, 1. 10 (disputed terms emphasized).

Dependent claim 7 recites:

The security system of claim 1 wherein the security modules include at least one of ... an integrity checking module which analyzes files in the system memory to identify system vulnerabilities;
a network checking module which analyzes the computer apparatus to identify vulnerabilities created as a result of the computer apparatus connecting with a data network; and
a password checking module which analyzes passwords for users of the computer apparatus to identify vulnerabilities.

Id. col. 11,11. 25-46 (disputed term emphasized).

Dependent claim 9 recites: “The security system of claim 7 wherein the system memory comprises a list of known vulnerabilities which may be employed by the integrity checking module.” Id. col. 11, 11. 62-64.

Finally, independent claim 11 recites:

A method of providing a security assessment for a computer system which includes a system memory, comprising the steps of:
providing a security subsystem in the computer system such that functionality of the security subsystem is directed through a processor for the computer system, wherein the security performs steps comprising:
identifying a configuration of the system;
accessing the system memory and performing at least one procedure to provide a security assessment for at least one aspect of the computer system;
as a result of any vulnerabilities discovered in the assessment, identifying corrective measures to be taken with regards to the computer system;
reporting the discovered vulnerability and the identified corrective measures; and
upon receiving an appropriate command, initiating the corrective measures.

Id. col. 12,11. 1-18 (disputed terms emphasized).

2. McAfee

McAfee developed “Program Updates” for Microsoft Windows users to protect software programs against new security threats. Program Updates detects and installs updates for numerous non-Windows programs such as Apple iTunes and Adobe Acrobat. To do so, it scans a user’s computer to determine whether any of the non-Windows programs are installed. If it detects such a program, Program Updates makes two determinations: (1) whether the National Vulnerability Database (“NVD”) lists any vulnerabilities in the currently installed version of that program; and (2) whether an update is available. If an update is available, Program Updates will install the update.

Prior to installing an update, Program Updates does not provide users with a detailed report of security threats; rather, it tells the user whether an update is “Critical” or merely “Recommended.” J.A. 2044-46, 3338. If an update is available, Program Updates will install the available update whether or not the NVD lists any known vulnerabilities. By contrast, if no software update is available, Program Updates will not take action even if it detects a vulnerability. Without an available update, Program Updates will not provide users with any information about a detected vulnerability. J.A. 2047-48. To summarize, the presence of a known vulnerability is irrelevant to whether Program Updates installs an update.

3. Prior Art

At trial, McAfee argued that two prior art references anticipated the ’168 patent and, in the alternative, that their combination would have rendered the T68 patent obvious.

The first reference, HostGUARD, is a software program developed by several named inventors of the ’168 patent. Host-GUARD first detects computer security threats and then reports them to the user. J.A. 1090, 3796-97. These detailed reports include file names and locations, the particular nature of the vulnerability, and steps the user can take to combat the threat. HostGUARD requires the user to decide whether to take corrective action. Thus, the user (not HostGUARD itself) takes any desired corrective action. J.A. 3796.

The second reference, System Security Scanner (“S3”), is a “security assessment tool” that “evaluates system vulnerabilities from the inside.” J.A. 3799. S3 allows a user to select which specific vulnerabilities to assess and then provides a “detailed description” of detected vulnerabilities to the user. J.A. 3816, 3801, 3836. For example, it offers a “long description” report that identifies “bugs” that create exploitable weaknesses in the system. J.A. 2610-11; see also J.A. 2293 (testimony that S3 provides users with reports on “specific vulnerabilities found on specific computers”). S3 does not fix vulnerabilities itself; rather, it requires a user to open a new window and take corrective action.

4. District Court Proceedings

TVIIM sued McAfee in 2013, alleging that Program Updates infringed the ’168 patent. McAfee counterclaimed for declarations of non-infringement, invalidity, and inequitable conduct.

McAfee moved for summary judgment that HostGUARD anticipated the asserted claims of the T68 patent. In its motion, McAfee argued that all claim terms should be given their plain and ordinary meaning. In its opposition, TVIIM asked the district court to construe only one term: “vulnerability.” The district court denied McAfee’s motion on anticipation because material issues of fact remained for trial. The district court also ruled that “vulnerability” should “have, its plain and ordinary meaning and is not limited in scope to ‘preexisting’ security problems or vulnerabilities.” J.A. 567. The court then asked for supplemental briefing on the plain and ordinary meaning of “vulnerability.” The parties agreed that a “vulnerability” is an “exploitable weakness in a computer system.” J.A. 633. The court adopted that construction and asked if it needed to construe any other terms. Both parties said no further construction was necessary.

The case went to trial, and the jury-returned a verdict that: (1) McAfee did not infringe the ’168 patent; (2) the ’168 patent was invalid; and (3) TVIIM did not obtain the ’168 patent through inequitable conduct. The jury’s general verdict of invalidity did not distinguish between obviousness and anticipation. The inequitable conduct issue is not subject to this appeal.

TVIIM filed motions for JMOL and a new trial, arguing that the jury had rendered an inconsistent verdict. According to TVIIM, the jury could not have arrived at both a non-infringement and invalidity determination using a single construction of three claim terms: “as a result of/in response to”; “various utility functions”; and “reporting the discovered vulnerabilities.” TVIIM concedes that it did not seek construction of any of these terms before or during trial. Opening Br. at 70.

The district court denied TVTIM’s motions. It found that the jury’s verdict was not inconsistent because substantial evidence supported both a non-infringement and invalidity verdict under a single construction of all three claim terms. J.A. 6-8.

TVIIM timely appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

Standakd of Review

We review denials of motions for JMOL and motions for new trial under the law of the regional circuit — here, the Ninth Circuit. InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1338 (Fed. Cir. 2014). The Ninth Circuit reviews denials of JMOL de novo. Harper v. City of Los Angeles, 533 F.3d 1010, 1021 (9th Cir. 2008). In the Ninth Circuit, the district court grants JMOL when “the' evidence, construed in the light most favorable to the nonmoving party, permits only one reasonable conclusion, and that conclusion is contrary to the jury’s verdict.” Id. (quotation marks and citation omitted). A district court must uphold a jury’s verdict “if it is supported by substantial evidence, which is evidence adequate to support the jury’s conclusion, even if it is also possible to draw a contrary conclusion.” Id. (quotation marks and citation omitted). Substantial evidence is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” Theme Promotions, Inc. v. News Am. Mktg. FSI, 546 F.3d 991, 1000 (9th Cir. 2008) (quotation marks and citation omitted). Whether a claim is anticipated is a question of fact, MPHJ Tech. Invs., LLC v. Ricoh Ams. Corp., 847 F.3d 1363, 1378 (Fed. Cir. 2017), as is the question of infringement, Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006).

The Ninth Circuit reviews the denial of a motion for new trial for abuse of discretion. Incalza v. Fendi N. Am., Inc., 479 F.3d 1005, 1013 (9th Cir. 2007). It reverses the denial only if the record lacks any evidence supporting the verdict or if the district court makes a mistake of law. Molski v. M.J. Cable, Inc., 481 F.3d 724, 729 (9th Cir. 2007).

Discussion

1. Non-Infringement And Invalidity

Claim terms must be construed the same way for the purpose of determining invalidity and infringement. Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003). A district court’s determination that a claim term has a “ ‘plain and ordinary meaning’ may be inadequate when [the claim] term has more than one ‘ordinary meaning.’ ” 02 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008).

We first address TVTIM’s argument that the jury rendered an inconsistent verdict of infringement and invalidity because the claim terms “as a result of/in response to,” “various utility functions,” and “reporting the discovered vulnerabilities” have more.than one ordinary meaning. We note that TVIIM did not seek construction of any of the three terms at trial. It never presented multiple ordinary meanings of the three terms or showed that they are open to varying interpretations. We are not persuaded that any of the three terms has multiple ordinary meanings, and we discern no error in the. district court submitting them to the jury without specific instruction. TVIIM argues that it is not seeking a new claim construction of any terms on appeal. To be sure, it has waived any new construction. “[A] party may not introduce new claim construction arguments on appeal or alter the scope of the claim construction positions it took below. Moreover, litigants waive their right to present new claim construction disputes if they are raised for the first time after trial.” Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1358-59 (Fed. Cir. 2006) (citations omitted). Thus, TVIIM “cannot be allowed to create a new claim construction dispute following the close of the jury trial.” Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 694 (Fed. Cir. 2008).

We next address whether substantial evidence supports the jury’s verdict of non-infringement based on using the same construction it used for its invalidity verdict. See Harper, 533 F.3d at 1021. We conclude that the jury verdict is supported by substantial evidence.

A. “As A Result Of/In Response To”

There was no dispute at trial that the term “as a result of/in response to” requires a causal relationship between corrective action and the discovered vulnerability. McAfee’s expert Dr. Rubin testified that Program Updates installs software updates regardless of whether a vulnerability exists and that the only requirement for update installation is the availability of an update. J.A. 2444 (“The only determining factor whether Program Updates will update software is if there’s an update available.”). In other words, the presence of a vulnerability is irrelevant to whether Program Updates installs a software update. As a result, with Program Updates there is no causal relationship between corrective action and the discovered vulnerability. We find Dr. Rubin’s testimony on this point to be substantial evidence supporting the jury’s non-infringement verdict.

We also find that substantial evidence supports the jury verdict of invalidity based on anticipation. Dr. Rubin testified that the prior art anticipated the ’168 patent by initiating corrective action in response to a detected vulnerability. See, e.g., J.A. 2476 (explaining how Host-GUARD discloses the “as a result of any vulnerabilities” limitation of claim 11); J.A. 2494 (concluding that S3 anticipates claim 1). TVIIM insists that the jury failed to distinguish “all” vulnerabilities from “potential” vulnerabilities. But TVIIM failed to clarify its position during claim construction. Moreover, the jury was free to credit Dr. Rubin’s testimony that Host-GUARD and S3 anticipate claims 1 and 11, even in the face of opposing arguments from TVIIM. We thus find Dr. Rubin’s testimony to be substantial evidence supporting the jury’s invalidity determination.

B. “Various Utility Functions”

TVIIM and McAfee presented competing expert testimony on infringement. TVIIM’s expert Dr. Garuba testified that Program Updates satisfies the “various utility functions” term by performing four functions: identifying the threat, accessing the update, downloading the update, and installing the update. J.A. 2123-24. McAfee’s expert Dr. Rubin disagreed and testified that Program Updates performs only one function — downloading software updates via multiple steps. J.A. 2445 (“[T]he only thing that [Program Updates] does is it updates the programs.”); see also J.A. 2454-55. Given the conflicting expert testimony, we find that a reasonable mind might accept Dr. Rubin’s testimony over Dr. Garuba’s. Thus, substantial evidence supports the jury’s verdict of non-infringement. See Versata Software, Inc. v. SAP Am., Inc., 717 F.3d 1255, 1263 (Fed. Cir. 2013) (affirming jury award as supported by substantial evidence despite competing expert testimony).

Dr. Rubin’s testimony also supports the jury’s invalidity verdict for anticipation. He explained how S3 performs “different utility functions.” J.A. 2493. TVIIM expert Eric Knight also testified that HostGUARD “corrected, at a minimum, ownership and permission,” i.e., different functions. J.A. 2620. Thus, the testimony that the prior art and ’168 patent both perform multiple functions constitutes substantial evidence in support of the jury’s verdict of invalidity.

Given the testimony at trial, we find that a uniform construction of “various utility functions” would allow the jury to arrive at verdicts of non-infringement and invalidity, as both are supported by substantial evidence.

C. “Reporting The Discovered Vulnerabilities”

At trial, TVIIM argued that Program Updates infringes “reporting the discovered vulnerabilities” by providing a “risk rating” to users prior to installation, i.e., whether a particular update is “critical” or simply “recommended.” When pressed about what vulnerability information is provided to users by Program Updates, TVIIM’s expert Dr. Yu responded, “[n]othing more than just a risk rating.” J.A. 2046. In other words, although Program Updates reports the risk level to the user, it does not report any specific information on vulnerabilities. Dr. Rubin testified that such a risk rating does not constitute “reporting the discovered vulnerabilities,” because Program Updates does not report “something like a [Common Vulnerabilities and Exposures] number or a specific description of the vulnerability.” J.A. 2455. Program Updates will not report any detected vulnerability to a user if no update is available. We find this testimony to be substantial evidence supporting the jury’s non-infringement verdict.

Regarding invalidity for anticipation, the record demonstrates that unlike Program Updates, HostGUARD and S3 provide users with specific reports on detected vulnerabilities. See, e.g., J.A. 2478 (Dr. Rubin) (“So here we see the actual vulnerability is described” [in S3]); J.A. 3796 (HostGUARD brochure describing “reports [that] are written in plain English and are formatted to effectively communicate the results of the security assessment”); J.A. 3841-78 (examples of ‘Vulnerability Descriptions” in S3). Program Updates, by contrast, does not provide any detailed vulnerability descriptions. J.A. 2002, 2046, 2455. Given this evidence presented, we find that the jury verdict of invalidity is supported by substantial evidence.

As with the other two terms, TVIIM has not persuaded us that a jury could not arrive at a non-infringement and invalidity verdict based on a single construction of “reporting the discovered vulnerabilities.” Because substantial evidence supports the jury’s verdicts, the district court did not abuse its discretion by denying TVIIM’s motion for a new trial.

2. Any Potential Error In Claim Construction Was Harmless

On appeal, TVIIM concedes that substantial evidence supports the jury’s finding for either non-infringement or invalidity but argues it does not support both. Opening Br. at 73 (“[A]ny single ordinary meaning construction could support either infringement or invalidity.”) (emphasis omitted); see also J.A. 2638 (TVIIM’s counsel stating at trial, “I think there’s questions of fact with respect to infringement.”).

Thus, by TVIIM’s own admission, the jury’s invalidity determination could be proper under “any single ordinary meaning construction.” Opening Br. 73. This concession is determinative, because even if we were to find an inconsistent verdict, substantial evidence under “any” construction supports the jury’s verdict of invalidity. Consequently, any potential error by the jury regarding non-infringement was harmless. Cf. Senju Pharm. Co. v. Lupin Ltd., 780 F.3d 1337, 1353 (Fed. Cir. 2015) (affirming the district court’s invalidity finding and therefore not reaching non-infringement arguments); MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1173 (Fed. Cir. 2015) (holding that because the patent was invalid, the court “need not reach Apple’s argument that its accused iPhones do not infringe”).

Conclusion

The jury’s findings of non-infringement and invalidity under a single construction of all three disputed claim terms are supported by substantial evidence. Even if error occurred in the jury’s verdict of infringement, we agree with McAfee that substantial evidence supports the jury’s invalidity finding. This renders any error harmless. In light of these findings, we hold that the district court’s denial of TVI-IM’s motion for JMOL is supported by substantial evidence, and that the district court did not abuse its discretion in denying TVIIM’s motion for a new trial. We therefore affirm.

AFFIRMED

Costs

No costs.

      . TVIIM asserts that the jury and district court improperly construed "vulnerabilities” to include "discrepancies.” But the district court specifically found that "the intrinsic evidence does not clearly exclude 'discrepancies’ from the scope of the claim term 'vulnerability.’ ” J.A. 634. TVIIM did not appeal that construction.


text:
    IN RE: Steven C. CHUDIK, Appellant
    2016-1817
    United States Court of Appeals, Federal Circuit.
    Decided: March 27, 2017

      Gregory B. Beggs, Law Offices of Gregory B. Beggs, Downers Grove, IL, argued for appellant.
    Mary L. Kelly, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for appellee Michelle K. Lee. Also represented by Nathan K. Kelley, Meredith Hope Schoen-feld, Thomas W. Krause.
    Before DYK, REYNA, and STOLL, Circuit Judges.
   REYNA, Circuit Judge.

Steven Chudik appeals from the Patent Trial and Appeal Board’s (“Board”) determination that claims 1,15,18, and 33-40 of U.S. Patent Application 11/525,631 (“’631 application”) are anticipated by two prior art references. Because substantial evidence does not support the Board’s determination, we reverse.

Background

1. The ’631 Application

The ’631 application, entitled “Glenoid Implant for Minimally Invasive Shoulder Replacement Surgery,” describes an invention related to “rotator cuff sparing procedures and associated devices for shoulder replacement surgery.” J.A. 24, ¶ 2. The ’631 application improves on the prior art by offering “simple and less invasive perpendicular access to the humeral and glenoid joint surfaces,” which “spares the rotator cuff tendons and allows for a quicker and more functional recovery.” J.A. 29-30, ¶¶ 12-13. As relevant here, the surgery described in the ’631 application involves two main steps.. First, the surgeon removes “a minimal amount of bone from the peripheral surface of the glenoid” — a process called reaming. See J.A. 51, ¶ 124. Second, the surgeon places an implant in the- reamed cavity. See J.A. 57, ¶ 142. The glenoid, reamer, and implant are pictured below:

J.A. 79, 91, 94. The scapula is the shoulder bone connecting the humeras (upper arm bone) to the clavicle (the collar bone). Figure 7a shows that the glenoid cavity 22 faces outward on the scapula. Figure 21 depicts a side view of the reamer, and Figure 22 shows how the reaming surface 114 faces toward the glenoid cavity. J.A. 30, ¶ 17; J.A. 37, ¶ 80.

Once the glenoid cavity has been reamed, the implant’s protruding surface 119 “sits within the concavity of the reamed glenoid surface.” J.A. 57, ¶ 142. Figures 23a and 27a show the protruding surface 119, which “protrudes into the gle-noid 22 to a specified depth.” Id. The ’631 application describes the reaming surface 114 in similar terms to the protruding surface 119. Com/pare J.A. 51, ¶ 124, with J.A. 57, ¶ 142. Like the reaming surface 114, the protruding surface 119 faces toward the glenoid cavity. See Fig. 22.

Representative independent claims 1 and 40 are at issue in this appeal. They recite:

1. A glenoid implant comprising:
a shell having a protruding surface on a first side arranged to engage the surface of a cavity formed in a gle-noid extending between peripheral glenoid surfaces, and
a flat surface on the first side adjacent the protruding surface arranged to engage the peripheral glenoid surfaces adjacent the cavity, and
a wear-resistant articulating surface on a second side opposite the flat surface and the protruding surface.

40. A glenoid implant comprising:

a protruding surface on a first side arranged to engage the surface of a cavity formed in a glenoid extending between peripheral glenoid surfaces, and a substantially planar wear-resistant articulating surface on a second side opposite the protruding surface.

J.A. 3 (disputed term emphasized).

2. Prior Art

Rambert

FR 2 579 454 (Oct. 3, 1986) (“Rambert”) discloses a glenoid implant with a shell element. J.A. 188.

Rambert Figure 2 shows element 27b in contact with anchoring element 27a, which in turn contacts the glenoid cavity. J.A. 198.

Bouttens

WO 01/47442 A1 (July 5, 2001) (“Bout-tens”) discloses a shoulder prosthesis assembly for implantation in the glenoid. J.A. 199.

Bouttens Figure 1 shows the protruding surface 11 facing away from the glenoid cavity and toward the humerus. J.A. 210. It also shows screws on the opposite side of the protruding surface attaching the implant to the glenoid region. See id.

3. Examination Proceedings

Mr. Chudik filed the ’631 application on September 25, 2006. On June 5, 2012, the Examiner issued a Final Action rejecting claims 1, 15, 18, and 33-40. The Examiner made four rejections:

• Claim 40 rejected under 35 U.S.C. § 112, first paragraph;
• Claims 1, 15, and 33-39 rejected under 35 U.S.C. § 102(b) as anticipated by Rambert;
• Claim 40 rejected under 35 U.S.C. § 102(b) as anticipated by Bouttens;
• Claim 18 rejected under 35 U.S.C. § 103(a) as obvious over Rambert and Church.

Mr. Chudik filed a Notice of Appeal of the Examiner’s rejections on September 1, 2012.

4. Board Proceedings

The parties briefed Mr. Chudik’s appeal in 2012 and 2013. The Board issued its Decision on Appeal on February 10, 2016. It did not sustain the Examiner’s determination that claim 40 failed to comply with § 112, first paragraph. But it did sustain the Examiner’s determinations that:

• Claims 1,15, and 33-39 were anticipated by Rambert;
• Claim 40 was anticipated by Bouttens;
• Claim 18 would have been obvious over Rambert and Church.

In support of its findings, the Board stated that “independent claim 1 is an apparatus claim and does not require the recited surfaces to ‘engage’ the specified glenoid regions; rather, independent claim 1 requires only that the recited surfaces be ‘arranged’ for such engagement.” J.A. 6. Therefore, according to the Board, “the fact that Rambert’s protruding and flat surfaces are not described or depicted as actually engaging the specified glenoid regions is not dispositive, as they can still be arranged to do so.” Id. The Board thus sustained the Examiner’s rejection of claims 1, 15, and 33-39 based on Rambert.

As for claim 40, another apparatus claim, the Board stated that Mr. Chudik “does not adequately address why Bout-tens’s surface 11 is structurally incapable of engaging a glenoid cavity that matches its protruding profile.” J.A. 8. The Board noted that “the claim language does not specify shape characteristics of the cavity, and the Specification conveys that the cavity can have ‘any’ shape that matches that of the protruding surface.” Id. It also found that the Examiner’s construction of the term “articulating surface” to mean “where elements unite as a joint” was “broad but reasonable” and “consistent with the Specification.” J.A. 9. Therefore, the Board sustained the rejection of claim 40 based on Bouttens.

Finally, the Board affirmed the rejection of claim 18 as obvious over Rambert and Church. J.A. 10. The Board’s reasoning rested only on Rambert; it did not discuss Church. See id. On appeal, Mr. Chudik states that “the Church patent is of no consequence in this case.” Opening Br. 16. Similarly, the Government makes no separate argument regarding Church. We therefore do not address whether claim 18 would have been obvious over Rambert and Church.

Chudik timely appeals, arguing that neither Rambert nor Bouttens anticipates the ’631 application without improper modification and that the Examiner wrongly construed “articulating surface.” We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

Standard of Review

Anticipation is a question of fact we review for substantial evidence. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016). Substantial evidence is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” Universal Camera Corp. v. NLRB, 340 U.S. 474, 477, 71 S.Ct. 456, 95 L.Ed. 456 (1951). “Where two different conclusions may be warranted based on the evidence of record, the Board’s decision to favor one conclusion over the other is the type of decision that must be sustained by this court as supported by substantial evidence.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 970 (Fed. Cir. 2007). Though our review of an anticipation finding is deferential, we have not hesitated to reverse the Board when substantial evidence does not support its findings. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851 F.3d 1270, 2017 WL 977034 (Fed Cir. Mar. 14, 2017); In re Skvorecz, 580 F.3d 1262, 1267-68 (Fed. Cir. 2009).

Discussion

1. Legal Standard

A patent claim is invalid for anticipation under 35 U.S.C. § 102 when a prior art reference describes “each and every claim limitation and enable[s] one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344 (Fed. Cir. 2012) (quotation marks and citation omitted). Simply put, an anticipated invention “is not new.” Skvorecz, 580 F.3d at 1266. By contrast, a prior art reference that “ ‘must be distorted from its obvious design’ ” does not anticipate a patent claim. In re Wells, 53 F.2d 537, 539 (C.C.P.A. 1931) (quoting Block v. Nathan Anklet Support Co., 9 F.2d 311, 312 (2d Cir. 1925)); accord Topliff v. Topliff, 145 U.S. 156, 161, 12 S.Ct. 825, 36 L.Ed. 658 (1892) (“It is not sufficient to constitute an anticipation that the device relied upon might, by modification, be made to accomplish the function performed by the patent in question, if it were not designed by its maker, nor adapted, nor actually used, for the performance of such functions”) (emphasis added). In other words, a prior art reference anticipates a claim only if it discloses all the elements “in the same form and order as in the claim.” Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1345 (Fed. Cir. 2008); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (same).

2. Rambert

Claim 1 of the ’631 application requires the “shell having a protruding surface on a first side arranged to engage the surface of a cavity formed in a glenoid extending between peripheral glenoid surfaces.” J.A. 3. As an initial matter, neither the parties nor the Board construed the term “engage.” However, the Board seems to interpret it to mean “contact,” which we find to be reasonable. See J.A. 6 (admitting that because element 27b does not “directly contaet[ ] bone regions of the scapula 5,” it does not actually engage). Indeed, Ram-bert Figure 2 shows element 27b engaging element 27a, which in turn engages the glenoid cavity.

J.A. 198. The Examiner recognized that element 27b — not element 27a — contains the “protruding surface on a first side” that claim 1 requires. See J.A. 6 (“The surfaces identified by the Examiner as the ‘protruding surface’ and the ‘flat surface’ reside on Rambert’s second portion 27b ..., and thus are not described or depicted as directly contacting bone regions of the scapula 5.”). The Board found this fact not to be dispositive, however, because as an apparatus claim, claim 1 “does not require the recited surfaces to ‘engage’ the specified glenoid regions.” Id. The Board found that because the surfaces of element 27b “can still be arranged to” engage the gle-noid regions, Rambert anticipates claims 1 and its dependent claims 15 and 33-39. We disagree.

Claim 1 is indeed an apparatus claim, and the “arranged to engage” language could imply that the protruding surface on the flat side need not always actually engage the glenoid cavity surface. However, it must be at least capable of doing so. Here, element 27b’s protruding surface cannot be “arranged to engage” the glenoid cavity surface without removing element 27a. Prior art that “must be distorted from its obvious design” does not anticipate a new invention. Wells, 53 F.2d at 539; see also Topliff, 145 U.S. at 161, 12 S.Ct. 825 (prior art that must be modified “to accomplish the function performed by the patent in question” does not anticipate). Neither the Examiner nor the Board described how the protruding surface of Rambert’s element 27b is capable of engaging the surface of the glenoid cavity without removing element 27a, ie., tearing the invention apart. Therefore, substantial evidence does not support the Board’s anticipation finding based on Rambert.

3. Bouttens

Claim 40 of the ’631 application requires “a protruding surface on a first side arranged to engage the surface of a cavity formed in a glenoid extending between peripheral glenoid surfaces.” J.A. 3. The Board concluded that Bouttens anticipates claim 40 because its surface 11 is not “structurally incapable of engaging a gle-noid cavity that matches its protruding profile,” and because “the Specification conveys that the cavity can have ‘any’ shape that matches that of the protruding surface.” J.A. 8. We disagree.

Mr. Chudik’s brief asks two relevant questions: “If the Bouttens implant’s ‘protruding surface’ is faced about, turned 180 degrees, where does the Examiner or the Board propose to fasten it in a person’s shoulder? What is going to happen to the humerus?” Appellant’s Op. Br. 15. The Board does not address either question. The Board’s reasoning only makes sense if the user rotates Bouttens 180 degrees, thereby rendering the protruding surface 11 capable of engaging the glenoid cavity instead of the humerus.

Figure 1 demonstrates that rotating Bouttens so that the protruding surface faces the glenoid cavity would require relocating the screws for Bouttens to remain operable. This endeavor would constitute a significant and impermissible modification. Wells, 53 F.2d at 539; Topliff, 145 U.S. at 161, 12 S.Ct. 825.

The Board’s determination of anticipation was erroneous because the Board failed to describe how a user could rotate Bouttens without modification while continuing “to accomplish the function performed by” the ’631 application. Topliff, 145 U.S. at 161, 12 S.Ct. 825. We therefore reverse the Board’s anticipation finding as not supported by substantial evidence. We need not resolve Mr. Chudik’s second argument about whether the Examiner correctly construed “articulating surface.”

Conclusion

Substantial evidence does not support the Board’s determination that Rambert or Bouttens anticipate claims 1, 15, 18, or 33-40 of the ’631 application. We reverse the Board’s rejection of those claims.

REVERSED

Costs

Costs to Mr. Chudik.

      . Rejected claims 15, 18, and 33-39 depend from claim 1. See J.A. 271-72.

      . 35 U.S.C. §§ 102, 103, and 112 were replaced with new versions in the America Invents Act. See Leahy Smith America Invents Act, Pub. L. No. 112-29, §§ 3(b), 3(c), and 4(c), 125 Stat. 284, 285-87, 296 (2011) ("AIA”). The new versions of §§ 102, 103, and 112 do not apply in this case, given that the '631 patent application predates those revisions. See AIA, §§ 3(n)(l), 4(e), 125 Stat. 293, 297. Thus, we refer to the pre-AIA version of Title 35.

      . Neither the parties nor the Board construed the term "arranged to.” We assume for purposes of this opinion that "arranged to" is analogous to “adapted to,” which means "made to,” “designed to,” or "configured to.” In re Man Mach. Interface Techs. LLC, 822 F.3d 1282, 1286 (Fed. Cir. 2016). "Adapted to” occasionally has a broader meaning of "capable of” or "suitable for.” Id. Even under this broader definition, element 27b is not capable of engaging with the glenoid cavity surface.

      . The government relies heavily on In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997), which involved an old structure from the pri- or art being put to'a new use. But that is not the situation here, because Rambert teaches a different structure than the '631 application with an identical use.