  United States Court of Appeals
      for the Federal Circuit
                 ______________________

                 EKO BRANDS, LLC,
                Plaintiff-Cross-Appellant

                            v.

 ADRIAN RIVERA MAYNEZ ENTERPRISES, INC.,
              ADRIAN RIVERA,
             Defendants-Appellants
            ______________________

                  2018-2215, 2018-2254
                 ______________________

   Appeals from the United States District Court for the
Western District of Washington in No. 2:15-cv-00522-JPD,
Magistrate Judge James P. Donohue.
                 ______________________

               Decided: January 13, 2020
                ______________________

     DAVID ALLEN LOWE, Lowe Graham Jones PLLC, Seat-
tle, WA, argued for plaintiff-cross-appellant. Also repre-
sented by LAWRENCE D. GRAHAM.

   WILLIAM A. DELGADO, Dto Law, Los Angeles, CA, ar-
gued for defendants-appellants. Also represented by
ASHLEY LYNN KIRK, Willenken Wilson Loh & Delgado LLP,
Los Angeles, CA.
                 ______________________
2          EKO BRANDS, LLC v. ADRIAN RIVERA MAYNEZ ENTERS.




    Before DYK, REYNA, and HUGHES, Circuit Judges.
     Opinion for the court filed by Circuit Judge DYK.
Opinion concurring-in-part and dissenting-in-part filed by
                 Circuit Judge REYNA.
DYK, Circuit Judge:
    This case involves claims of U.S. Patent No. 8,720,320
(“the ’320 patent”) owned by Adrian Rivera and Adrian Ri-
vera Maynez Enterprises, Inc. (collectively, “ARM”) and
U.S. Patent No. 8,707,855 (“the ’855 patent”) owned by Eko
Brands, LLC (“Eko”). The parties appeal and cross-appeal
various rulings made by the United States District Court
for the Western District of Washington in infringement
proceedings concerning the two patents. We affirm the
judgment of invalidity as to the asserted claims of the ’320
patent and the award of attorney’s fees. We also affirm the
judgment of infringement as to the asserted claims of the
’855 patent.
                        BACKGROUND
                      I. The ’320 Patent
    ARM owns the ’320 patent, which describes an adaptor
device for use with Keurig® single-brew coffee machines or
similar brewers. The ’320 patent describes single-brew cof-
fee machines as generally accepting one of two cartridge
formats: “pods,” which are “small, flattened disk-shaped fil-
ter packages of beverage extract” and “larger cup-shaped
beverage filter cartridges.” ’320 patent, col. 1, ll. 17–21.
The patent describes the configuration used by a particular
type of Keurig® coffee machines (known as K-Cup® ma-
chines) as “inherently limit[ed] [to] the use of . . . cup-
shaped cartridges” and that users of K-Cup® machines
“would have to purchase a different machine to brew bev-
erage from pods.” Id. at col. 1, ll. 39–44. The ’320 patent
describes an “adaptor assembly configured to effect opera-
tive compatibility between a single serve beverage brewer
EKO BRANDS, LLC v. ADRIAN RIVERA MAYNEZ ENTERS.             3



[for use with cup-shaped cartridges] and beverage pods.”
Id. at col. 1, ll. 6–9; see also Rivera v. ITC, 857 F.3d 1315,
1316–17 (Fed. Cir. 2017) (discussing the ’320 patent in de-
tail).
     On August 4, 2014, ARM filed a complaint against Eko
and ten other respondents at the International Trade Com-
mission (“ITC”) alleging infringement of claims 5–8 and
18–20 of the ’320 patent and seeking a limited exclusion
order and cease and desist order. In proceedings involving
other respondents, the ITC found that claims 5–7, 18, and
20 of the ’320 patent were invalid for lack of written de-
scription, and this court affirmed. Rivera, 857 F.3d at
1323. However, the ITC made no invalidity determination
concerning claims 8 and 19 (those claims had been with-
drawn as to respondents other than Eko). Eko defaulted in
the ITC proceedings with respect to ARM’s allegations that
it infringed claims 8 and 19, and the ITC issued a limited
exclusion order and cease and desist order.
     On April 2, 2015, Eko filed this action against ARM in
the United States District Court for the Western District of
Washington. Eko sought (1) a declaratory judgment of non-
infringement as to claims 8 and 19 of the ’320 patent, and
(2) a declaratory judgment that claims 8 and 19 were inva-
lid as obvious. ARM counterclaimed alleging infringement
of claims 8 and 19. The district court issued a Markman
ruling construing various claim terms. Eko filed for sum-
mary judgment of noninfringement and obviousness. The
district court granted Eko declaratory judgment of nonin-
fringement but denied Eko’s motion for summary judgment
as to obviousness, finding that there remained disputed is-
sues of material fact. After a five-day jury trial, the jury
found claims 8 and 19 of the ’320 patent to be invalid as
obvious. During these proceedings, the district court
awarded Eko attorney’s fees associated with obtaining a
judgment of noninfringement and obviousness. ARM ap-
peals the district court’s findings of noninfringement and
obviousness, as well as the district court’s fee awards.
4          EKO BRANDS, LLC v. ADRIAN RIVERA MAYNEZ ENTERS.




                     II. The ’855 Patent
    Together with its declaratory judgment claims as to the
’320 patent, Eko asserted an infringement claim against
ARM with respect to claim 8 of the ’855 patent owned by
Eko, which describes a reusable filter cartridge device for
use with single-serve beverage brewing machines. Unlike
typical filter cartridges, which must be pierced by the bev-
erage brewing device during operation, the device de-
scribed by the ’855 patent allows for the operation of the
brewing machine without piercing the filter cartridge,
thereby allowing the device to be reused multiple times.
The district court entered an order construing claim 8 of
the ’855 patent, and ARM stipulated to infringement based
on the district court’s claim construction. At trial, the jury
awarded Eko compensatory damages but found that ARM
did not willfully infringe, and the district court did not
award enhanced damages. ARM appeals the district
court’s judgment of infringement. Eko cross-appeals the
jury’s finding of no willful infringement and the district
court’s denial of enhanced damages. We have jurisdiction
under 28 U.S.C. § 1295.
                        DISCUSSION
     We review the jury’s verdict for substantial evidence,
and the jury instructions de novo. Abbott Labs. v. Syntron
Bioresearch, Inc., 334 F.3d 1343, 1349 (Fed. Cir. 2003). We
review a district court’s grant of summary judgment de
novo. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1146 (Fed. Cir. 2016). “We review the district court’s
ultimate construction de novo, and any underlying factual
findings supporting the construction for clear error.” Ethi-
con Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312,
1333 (Fed. Cir. 2015) (citing Teva Pharm. USA, Inc. v.
Sandoz, Inc., 574 U.S. 318, 331 (2015)). “The ultimate de-
termination of obviousness presents a legal question sub-
ject to de novo review, but ‘explicit and implicit’ subsidiary
factual determinations made by the jury—including the
EKO BRANDS, LLC v. ADRIAN RIVERA MAYNEZ ENTERS.            5



scope and content of the prior art—are reviewed for sub-
stantial evidence.” Intellectual Ventures I LLC v. Motorola
Mobility LLC, 870 F.3d 1320, 1326 (Fed. Cir. 2017) (citing
Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d
1342, 1360 (Fed. Cir. 2012)). We review the district court’s
award of attorney’s fees under 35 U.S.C. § 285 for abuse of
discretion. Highmark Inc. v. Allcare Health Mgmt. Sys.,
572 U.S. 559, 561 (2014).
                   I. ARM’s ’320 Patent
                  A. Claim Construction
    ARM argues that the jury verdict that claims 8 and 19
of the ’320 patent were invalid for obviousness should be
set aside because the district court erred in its claim con-
struction, and that under the proper construction, U.S. Pa-
tent No. 3,878,722 to Nordskog (“Nordskog”) does not
disclose a fully enclosed space and the obviousness verdict
cannot stand. The district court construed the term “brew-
ing chamber” in claims 5 and 18, which claims 8 and 19
depend from, to mean “a compartment in which brewing
occurs.” Eko Brands, LLC v. Adrian Rivera Maynez En-
ters., Inc., No. 2:15-cv-00522-JPD (W.D. Wash. Feb. 24,
2016), ECF No. 42 at 10 (“Claim Construction Order”). The
district court explained that “[w]hile the plain and ordinary
meaning of the word ‘chamber’ certainly conveys the idea
of a compartment or defined area, it does not necessarily
have to be sealed or fully-enclosed.” Id.
    ARM contends that the district court erred when it re-
jected ARM’s proposed construction of “brewing chamber.”
That construction required a “sealed or fully-enclosed”
space. ARM makes several arguments in favor of its more
limited construction.
    First, ARM directs us to two patents assigned to Keurig
that are incorporated by reference into the ’320 patent:
U.S. Patent No. 5,325,765 (“the Keurig ’765 patent”) and
6          EKO BRANDS, LLC v. ADRIAN RIVERA MAYNEZ ENTERS.




U.S. Patent No. 6,606,938 (“the Keurig ’938 patent”). 1
ARM argues that because these prior art references de-
picted enclosed brewing chambers, the term brewing cham-
ber in the ’320 patent must also be enclosed.
    Unlike the claims of the ’320 patent, the claims of the
Keurig ’765 patent specifically describe the brewing cham-
ber as being sealed. Keurig ’765 patent, col. 4, ll. 35–42
(describing the brewing chamber as being defined by two
“components,” wherein one “component which may be . . .
closed to coact in sealing engagement with [the other com-
ponent defining the brewing chamber]”). The Keurig ’938
patent includes a “brewing chamber 44,” but Figures 3 and
4 show that the “brewing chamber” is not a fully-enclosed
space. Thus, nothing in the incorporated patents requires
that the term “brewing chamber,” standing alone, be fully
sealed. In fact, they suggest the opposite—that the term
“brewing chamber” standing alone does not require sealing.
    Second, ARM argues that certain embodiments in the
specification require us to apply ARM’s proposed construc-
tion. ARM points to passages of the patent specification
that describe specific embodiments that have fully-en-
closed structures. But ARM ignores other embodiments in
the specification, which clearly show that a “brewing cham-
ber” is not fully enclosed. For example, Figure 6, “a sche-
matic illustration of a cross-sectional view of a pod brewing
chamber of one preferred embodiment of the present inven-
tion,” ’320 patent, col. 3, ll. 37–39, depicts a “lower opening
614,” id. at col. 7, ll. 46–47. Accepting ARM’s construction
would exclude such a preferred embodiment from the scope
of the claim. SynQor, Inc. v. Artesyn Tech., Inc., 709 F.3d
1365, 1378–79 (Fed. Cir. 2013) (“A claim construction that
‘excludes the preferred embodiment is rarely, if ever,


    1   ARM also directs us to U.S. Patent No. 5,840,189.
Since that patent does not use the term “brewing chamber,”
it is irrelevant here.
EKO BRANDS, LLC v. ADRIAN RIVERA MAYNEZ ENTERS.               7



correct and would require highly persuasive evidentiary
support.’” (quoting Adams Respiratory Therapeutics, Inc. v.
Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010)). The
specification thus supports the district court’s construction.
    Third, ARM suggests that because the specification of
the ’320 patent notes that the brewing chamber must
“trap” hot water, it must be a fully enclosed chamber. As
the patent makes clear, it is the “beverage packet” or “pod,”
not the brewing chamber, that traps hot water. ’320 pa-
tent, col. 1, ll. 14–17 (“Once the beverage packet is placed
in the brewing chamber, the machine injects hot water into
the packet . . . .”).
    The district court correctly determined that the term
“brewing chamber” in the ’320 patent does not require a
fully-enclosed space. See Phillips v. AWH Corp., 415 F.3d
1303, 1313 (Fed. Cir. 2005).
B. Jury Finding that Prior Art Disclosed Sealing Engage-
                          ment
     The jury found claims 8 and 19 to be invalid as obvious
in light of Nordskog, standing alone, and in combination
with U.S. Patent No. 6,079,315 to Beaulieu (“Beaulieu”) or
U.S Patent No. 5,840,189 to Sylvan (“Sylvan”). Independ-
ent claims 5 and 18 of the ’320 patent, which claims 8 and
19 depend from, require a “cover [of the brewing chamber
that] is adapted to sealingly engage with a top edge of the
at least one sidewall.” ’320 patent, col. 9, ll. 12–13, col. 11,
ll. 4–5. ARM argues that the jury’s findings of obviousness
were not supported by substantial evidence because the
cited references do not disclose this claim limitation.
    Claim 1 of the Beaulieu patent discloses a “chamber for
a cartridge . . . including a bottom, sidewall and top sealed
to the sidewall along a peripheral rim, said chamber com-
prising . . . a cup shaped housing having a sidewall . . .
[and] a lid overlaying said housing.” Beaulieu, col. 5, ll. 24–
44.     Beaulieu’s specification also contains detailed
8          EKO BRANDS, LLC v. ADRIAN RIVERA MAYNEZ ENTERS.




descriptions of the operation of the lid in conjunction with
the cartridge holder. Id. at col. 4, ll. 19–59. Thus, the jury
could have reasonably found that Beaulieu discloses this
claim limitation when it described a cartridge holder with
a cover sealingly engaged with the top of the cartridge
holder sidewall. Under these circumstances, we need not
address whether Sylvan discloses the same limitation.
Substantial evidence supported the jury’s verdict.
          C. Attorney’s Fees for Noninfringement
    ARM argues that the district court erred in granting
Eko attorney’s fees related to its noninfringement of claims
8 and 19 of the ’320 patent. The district court construed
the term “passageway” in these claims as (1) “a narrow
space of some depth or length connecting one place to an-
other,” and (2) not “encompass[ing] a receptacle that had
no bottom or that utilized a broad, thin mesh.” Claim Con-
struction Order at 12. The district court concluded that a
fee award was appropriate because of ARM’s unreasonable
pursuit of its infringement claims.
    ARM’s sole contention here is that Eko should not have
been the prevailing party on this issue because the district
court’s construction of the term “passageway” in claims 8
and 19 was erroneous. 2 ARM urges that requiring “a



    2   Claim 8 recites:
    [A beverage brewer, comprising:
    a brewing chamber;
    a container, disposed within the brewing chamber
    and adapted to hold brewing material while brewed
    by a beverage brewer, the container comprising:
        a receptacle configured to receive the brew-
        ing material; and
EKO BRANDS, LLC v. ADRIAN RIVERA MAYNEZ ENTERS.            9




       a cover;
       wherein the receptacle includes
           a base, having an interior surface
           and an exterior surface, wherein at
           least a portion of the base is dis-
           posed a predetermined distance
           above a bottom surface of the brew-
           ing chamber, and
           at least one sidewall extending up-
           wardly from the interior surface of
           the base,
           wherein the receptacle has at least
           one passageway that provides fluid
           flow from an interior of the recep-
           tacle to an exterior of the recepta-
           cle;
       wherein the cover is adapted to sealingly
       engage with a top edge of the at least one
       sidewall, the cover including an opening,
       and
       wherein the container is adapted to accept
       input fluid through the opening and to pro-
       vide a corresponding outflow of fluid
       through the passageway;
   an inlet port, adapted to provide the input fluid to
   the container; and
   a needle-like structure, disposed below the base;
   wherein the predetermined distance is selected
   such that a tip of the needle-like structure does not
   penetrate the exterior surface of the base];
10         EKO BRANDS, LLC v. ADRIAN RIVERA MAYNEZ ENTERS.




narrow space of some length connecting one place to an-
other” (1) improperly reads limitations of “length” and
“narrowness” into the claim language, (2) excludes an em-
bodiment in the specification, and (3) is inconsistent with
constructions adopted by the ITC and the United States
District Court for the Central District of California, which
both construed the term “passageway” to mean a “path,
channel, or course by which something passes.” But
whether or not the first part of the district court’s claim
construction (requiring a “narrow space,” Claim Construc-
tion Order at 12) was correct, we think the second part of
the construction (that “passageway” does not “encompass a
receptacle that [has] no bottom or utilized a broad-thin,
mesh,” id.) was correct, and that the district court properly
granted summary judgment based on its construction.
    ARM makes no claim that the receptacle (cup) itself
constitutes a passageway. As the district court found,
“[Eko]’s products utilize a broad, thin mesh or micro-
punched steel filter to allow the brewed beverage to exit the
receptacle,” and it is “patently obvious” that Eko’s products
could not infringe on the claims of the ’320 patent because
“[n]o reasonable person looking at the cut-out openings on
the side of [Eko’s] devices would describe them as passage-
ways.” Eko Brands, LLC v. Adrian Rivera Maynez Enters.,
Inc., No. 2:15-cv-00522-JPD (W.D. Wash. Nov. 3, 2016),
ECF No. 130 at 1–2; Eko Brands, LLC v. Adrian Rivera
Maynez Enters., Inc., No. 2:15-cv-00522-JPD (W.D. Wash.
Feb. 24, 2016), ECF No. 42 at 4 (“Summary Judgment Or-
der”).




     wherein the container is reusable.
’320 patent, col. 8, ll. 60–67, col. 9, ll. 1–23, 31–32 (empha-
ses added).
EKO BRANDS, LLC v. ADRIAN RIVERA MAYNEZ ENTERS.            11



            D. Attorney’s Fees for Obviousness
     ARM’s final argument is that the district court erred in
awarding attorney’s fees to Eko as to the issue of obvious-
ness with respect to the ’320 patent. The district court
awarded these fees because ARM’s conduct as to the issue
of obviousness was “exceptional.” See 35 U.S.C. § 285.
ARM suggests that the district court’s denial of summary
judgment conclusively established the reasonableness of
its litigation position. Checkpoint Systems, Inc. v. All-Tag
Security, S.A. held that “[a]bsent misrepresentation to the
court, a party is entitled to rely on a court’s denial of sum-
mary judgment . . . as an indication that the party’s claims
were objectively reasonable and suitable for resolution at
trial.” 858 F.3d 1371, 1376 (Fed. Cir. 2017) (second altera-
tion in original) (quoting Medtronic Navigation, Inc. v.
BrainLAB Medizinische Computersysteme GmbH, 603 F.3d
943, 954 (Fed. Cir. 2010)). But Checkpoint did not hold that
the denial of summary judgment conclusively establishes
objective reasonableness. Our cases require only that the
district court considers the denial of summary judgment,
not that the district court always gives that denial decisive
weight.
    Further, under Octane Fitness, LLC v. ICON Health &
Fitness, Inc., “[t]here is no precise rule or formula” for de-
ciding whether a case is “exceptional.” 572 U.S. 545, 554
(2014) (alteration in original). The district court must
consider the “totality of the circumstances” on a “case-by-
case” basis. Id. An “exceptional” case is “simply one that
stands out from others with respect to the substantive
strength of a party’s litigating position (considering both
the governing law and the facts of the case) or the unrea-
sonable manner in which the case was litigated.” Id.
    Here, the district court carefully explained why it did
not give its denial of summary judgment decisive weight.
In its order awarding attorney’s fees, the court noted that
at the pretrial conference, ARM “offered no . . . explanation
12         EKO BRANDS, LLC v. ADRIAN RIVERA MAYNEZ ENTERS.




to the [district court] for its [obviousness] position,” except
to assert that the ITC’s limited exclusion order and cease
and desist order remained valid and that ARM was not
willing to “write that off,” and “it was not until the trial was
well underway that it became apparent that ARM was not
seriously trying to defend the obviousness of the claims at
issue.” Eko Brands, LLC v. Adrian Rivera Maynez Enters.,
Inc., No. 2:15-cv-00522-JPD (W.D. Wash. July 13, 2018),
ECF No. 271 at 12–13 (“Post-Trial Order”); see also Sum-
mary Judgment Order at 3 (noting that denial of summary
judgment was based on “[ARM’s expert’s] explanations for
why [ARM’s] invention would not have been obvious” and
noting that while those explanations were “questionable,”
they gave rise to “clearly disputed issues of fact”). The
court observed that at trial, “[i]n addition to failing [to
prove] the primary indicators of [non]obviousness, ARM
did not bother to try to show secondary factors of non-obvi-
ousness.” Post-Trial Order at 14 n.5. The court concluded
that “ARM’s insistence on trying [the issue of obviousness]
was largely a charade used for the purpose of extending the
life of the earlier ITC . . . order.” Id. at 13.
    The district court properly considered its denial of sum-
mary judgment and provided a reasonable explanation for
why ARM’s position warranted a fee award. The district
court did not abuse its discretion.
                    II. Eko’s ’855 Patent
                       A. Infringement
    ARM contends that the district court erred in constru-
ing claim 8 of the ’855 patent as not requiring a “single-
serve beverage brewer,” and that the judgment of infringe-
ment should be set aside. Claim 8 recites:
     A beverage brewing device for use with a single
     serve beverage brewer having a brewing holster, an
     inlet probe for dispensing water, the inlet probe
     moveable between a non-brewing position and a
EKO BRANDS, LLC v. ADRIAN RIVERA MAYNEZ ENTERS.         13



    brewing position, and an outlet probe extending
    upwardly into the brewing holster for outleting a
    brewed beverage, the beverage brewing device
    comprising: . . . .
’855 patent, col. 15, ll. 13–18 (emphasis added). 3




        3   The remainder of claim 8 reads:
        (a) a body removably receivable within a
            brewing holster of a single serve bever-
            age brewer, the body having at least one
            substantially vertical sidewall, a top
            opening, and a bottom surface intersect-
            ing the at least one substantially verti-
            cal sidewall, wherein the at least one
            substantially vertical sidewall and the
            bottom surface of the body define a brew
            chamber configured to contain a dry
            beverage medium;
        (b) at least one outlet probe receptacle de-
            fined in the body and extending from
            the bottom surface of the body and into
            the brew chamber such that the at least
            one outlet probe receptacle is config-
            ured to receive an outlet probe of the
            single serve beverage brewer when the
            body is received within the brewing hol-
            ster, wherein the at least one outlet
            probe receptacle is fluidly isolated from
            the brew chamber to prevent the outlet
            probe from penetrating the brew cham-
            ber, thereby preventing fluid from exit-
            ing the brew chamber through the
            outlet probe;
14         EKO BRANDS, LLC v. ADRIAN RIVERA MAYNEZ ENTERS.




    Because it sold only the brewing device and not the bev-
erage brewer itself, ARM asserts that it did not infringe.
But claim 8 on its face does not require a beverage brewer,
even if the preamble is limiting. To the extent that claim
8 mentions a beverage brewer, it is only as a “reference
point” to define the purpose and structure of the brewing
device. See C.R. Bard, Inc. v. M3 Sys., 157 F.3d 1340, 1350
(Fed. Cir. 1998). And there is nothing in the prosecution
history suggesting that the beverage brewer itself is part
of the claim. The district court correctly construed that
claim 8 on its face does not require a beverage brewer.
                  B. Jury Instruction 40
    On its cross-appeal, Eko challenges the district court’s
jury instruction on willful infringement (Jury Instruc-
tion 40), the jury’s finding of no willful infringement based



        (c) a lid removably securable to the body,
            the lid engageable with the body to se-
            lectively enclose a top opening of the
            body;
        (d) an inlet probe opening defined in the
            lid, the inlet probe opening configured
            to receive an inlet probe of the single
            serve beverage brewer in a brewing po-
            sition for placing the inlet probe into
            fluid communication with the brew
            chamber; and
        (e) at least one filter defined within the
            body, the at least one filter configured
            to retain the dry beverage medium
            within the brew chamber while allow-
            ing the brewed beverage to exit the
            brew chamber.
’855 patent, col. 15, ll. 19–48 (emphases added).
EKO BRANDS, LLC v. ADRIAN RIVERA MAYNEZ ENTERS.            15



on that instruction, and the district court’s denial of en-
hanced damages based on the jury verdict. Before trial,
both parties proposed that the district court use the Fed-
eral Circuit Bar Association’s (“FCBA”) National Patent
Jury Instructions (“NPJI”) No. 4.1 for willful infringement.
The district court initially agreed to use the FCBA instruc-
tions. Jury Instruction 40, in its original form, provided:
   Eko argues that ARM willfully infringed the Eko
   855 patent. For purposes of this case only, you are
   to assume direct infringement of amended claim 8
   of the Eko 855 patent. Therefore, you must go on
   and address the additional issue of whether or not
   this infringement was willful. Willfulness requires
   you to determine whether Eko proved that it is
   more likely than not that the infringement was es-
   pecially worthy of punishment. You may not deter-
   mine that the infringement was willful just
   because ARM knew of the Eko 855 patent and in-
   fringed it. Instead, willful infringement is reserved
   for only the most egregious behavior, such as where
   the infringement is malicious, deliberate, con-
   sciously wrongful, or done in bad faith.
   To determine whether ARM acted willfully, con-
   sider all facts. These may include, but are not lim-
   ited, to:
       (1) Whether or not ARM intentionally cop-
       ied a product of Eko that is covered by the
       Eko 855 patent;
       (2) Whether or not ARM reasonably be-
       lieved it did not infringe or that the patent
       was invalid;
       (3) Whether or not ARM made a good-faith
       effort to avoid infringing the Eko 855 pa-
       tent, for example, whether ARM attempted
       to design around the 855 patent; and
16         EKO BRANDS, LLC v. ADRIAN RIVERA MAYNEZ ENTERS.




        (4) Whether or not ARM tried to cover up
        its infringement.
Eko Brands, LLC v. Adrian Rivera Maynez Enters., Inc.,
No. 2:15-cv-00522-JPD (W.D. Wash. June 6, 2018), ECF
No. 233 at 23 (emphases added) (“Jury Instruction 40”).
    On the morning that the final jury instructions were to
be read to the jury, Eko objected to the language of the jury
instruction. Eko argued that the inclusion of the phrases
“especially worthy of punishment” and “willful infringe-
ment is reserved for only the most egregious behavior” in
Jury Instruction 40, “invite[d] the jury to make the legal
decision as to whether damages should be enhanced, or
whether it is an exceptional case, rather than limiting the
jury to the underlying factual question of whether the in-
fringement was willful,” Eko Brands, LLC v. Adrian Rivera
Maynez Enters., Inc., No. 2:15-cv-00522-JPD (W.D. Wash.
June 7, 2018), ECF No. 234 at 1. The district court consid-
ered Eko’s proposed changes and revised the jury instruc-
tion to delete the phrase “only the most” from the
instruction. Post-Trial Order at 5. The jury was instructed
accordingly and returned a verdict of no willful infringe-
ment.
    There is no claim that the FCBA model instructions are
afforded special status, nor could there be, since these in-
structions have not been endorsed or approved by this
court. Here, we agree with Eko that the jury instruction
contained language that in isolation was erroneous. As the
plain language of 35 U.S.C. § 284 makes clear, the issue of
punishment by enhancement is for the court and not the
jury. Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923,
1934 (2016) (holding that section 284 “‘commits the deter-
mination’ whether enhanced damages are appropriate ‘to
the discretion of the district court’”). Under Halo, the con-
cept of “willfulness” requires a jury to find no more than
deliberate or intentional infringement. Id. at 1933 (“The
subjective willfulness of a patent infringer, intentional or
EKO BRANDS, LLC v. ADRIAN RIVERA MAYNEZ ENTERS.           17



knowing, may warrant enhanced damages, without regard
to whether his infringement was objectively reckless.”);
SRI Int’l, Inc. v. Cisco Sys., 930 F.3d 1295, 1308 (Fed. Cir.
2019). The question of enhanced damages is addressed by
the court once an affirmative finding of willfulness has
been made. See Halo, 136 S. Ct. at 1933–34. It is at this
second stage at which the considerations of egregious be-
havior and punishment are relevant. Questions of whether
an accused patent infringer’s conduct was “egregious be-
havior” or “worthy of punishment” are therefore not appro-
priate for jury consideration. As the district court noted,
Eko timely raised this objection to the jury instruction un-
der Rule 51, and the claimed error has been preserved on
appeal. Fed. R. Civ. P. 51.
    However, this is not the end of our consideration. In
general, a party challenging jury instructions must “prove
the jury instructions read in their entirety were incorrect
or incomplete as given.” Verizon Servs. Corp. v. Vonage
Holdings Corp., 503 F.3d 1295, 1307 n.7 (Fed. Cir. 2007)
(quoting Biodex Corp. v. Loredan Biomedical, Inc., 946
F.2d 850, 854 (Fed. Cir. 1991)). We apply Federal Circuit
law to review “the legal sufficiency of jury instructions on
an issue of patent law without deference to the district
court.” 4 Synqor, 709 F.3d at 1379 (quoting DSU Med. Corp.



    4   This case is distinguishable from Voda v. Cordis
Corp., 536 F.3d 1311 (Fed. Cir. 2008). In Voda, this court
reviewed a cross-appellant’s challenge to jury instructions
regarding willful infringement under the law of the re-
gional circuit. Id. at 1328. But Voda did not involve a sit-
uation where this court was required to determine the legal
sufficiency of a jury instruction. Instead, the parties in
Voda agreed that the jury instruction on willfulness was
erroneous under the correct standard at the time, and the
only dispute was whether the erroneous jury instruction
was harmless. Id. Therefore, the issue in this case—
18         EKO BRANDS, LLC v. ADRIAN RIVERA MAYNEZ ENTERS.




v. JMS Co., Ltd., 471 F.3d 1293, 1304 (Fed. Cir. 2006) (en
banc in relevant part)). The question here is whether Jury
Instruction 40, in its entirety, correctly stated the law.
DSU, 471 F.3d at 1304 (citing Chiron Corp. v. Genentech,
Inc., 363 F.3d 1247, 1258 (Fed. Cir. 2004)).
    Although the inclusion of the phrases “especially wor-
thy of punishment” and “reserved for egregious behavior”
in Jury Instruction 40 was erroneous, we think that the in-
struction taken as a whole provides reasonable clarity as to
the correct test for willful infringement. First, although
the instruction states that willful infringement is “reserved
for egregious behavior,” the same sentence also clarifies
that willful infringement can simply be “deliberate” in-
fringement. Therefore, the jury was apprised that “delib-
erate” behavior can qualify as “egregious” behavior for the
purposes of willful infringement. Second, the latter half of
Jury Instruction 40 provides a list of facts that the jury
could properly consider, including “[w]hether or not ARM
intentionally copied a product of Eko that is covered by the
Eko 855 patent,” and “whether or not ARM reasonably be-
lieved it did not infringe or that the patent was invalid.” 5
See Halo, 136 S. Ct. at 1933 (“[C]ulpability is generally
measured against the knowledge of the actor at the time of
the challenged conduct.”); Omega Patents, LLC v. CalAmp
Corp., 920 F.3d 1337, 1353 (Fed. Cir. 2019) (“As to willful-
ness, an accused infringer’s reliance on an opinion of



whether the jury instructions correctly state an issue of pa-
tent law—was never addressed by the court in Voda.
    5   There is no contention that the other two factors
(“[w]hether or not ARM made a good-faith effort to avoid
infringing the Eko 855 patent, for example, whether ARM
attempted to design around the 855 patent” and “[w]hether
or not ARM tried to cover up its infringement”) are irrele-
vant to willfulness, and given the lack of objection we need
not decide whether they are.
EKO BRANDS, LLC v. ADRIAN RIVERA MAYNEZ ENTERS.          19



counsel regarding noninfringement or invalidity of the as-
serted patent remains relevant to the infringer’s state of
mind post-Halo.”). This portion of the instruction again
clarifies that the jury is to consider whether ARM’s in-
fringement of the ’855 patent was intentional. In view of
the entire jury instruction, the district court provided the
jury an adequate test for willfulness. The jury was reason-
ably informed that it could make a finding of willful in-
fringement if it found that ARM deliberately or
intentionally infringed the ’855 patent.
    Also, it is significant that deletion of the only two
phrases to which Eko objected would not have cured the
problem that Eko identified, since Jury Instruction 40
would still have referred to “malicious,” “consciously
wrongful,” and “bad faith” conduct. Verizon, 503 F.3d at
1305 (“A party seeking to alter a judgment based on erro-
neous jury instructions must establish that [the proposed
instruction] would have remedied the error.” (alteration in
original) (quoting Advanced Display Sys., Inc. v. Kent State
Univ., 212 F.3d 1272, 1281 (Fed. Cir. 2000))). We conclude
that the instruction as a whole was not legally erroneous
given the limited nature of Eko’s objection. We do not
reach the question of harmless error. 6
                       AFFIRMED
   Costs to neither party.




   6     We note that a legally erroneous jury instruction
can only be harmless error if it “could not have changed the
result.” Verizon, 503 F.3d at 1307 n.7 (quoting Ecolab, Inc.
v. Paraclipse, Inc., 285 F.3d 1362, 1374 (Fed. Cir. 2002)).
  United States Court of Appeals
      for the Federal Circuit
                  ______________________

                  EKO BRANDS, LLC,
                 Plaintiff-Cross-Appellant

                             v.

 ADRIAN RIVERA MAYNEZ ENTERPRISES, INC.,
              ADRIAN RIVERA,
             Defendants-Appellants
            ______________________

                   2018-2215, 2018-2254
                  ______________________

   Appeals from the United States District Court for the
Western District of Washington in No. 2:15-cv-00522-JPD,
Magistrate Judge James P. Donohue.
                 ______________________

REYNA, Circuit Judge, concurring-in-part, dissenting-in-
part.
    The district court erred in its construction of “passage-
way” by rewriting the claims, including adding a negative
limitation that is unsupported by the specification. The
district court further erred when it granted summary
judgement of noninfringement and an award of attorney’s
fees based on its erroneous construction. I would vacate
the district court’s grant of summary judgement, reverse
the award of attorney’s fees, and remand for further pro-
ceedings.
2           EKO BRANDS, LLC v. ADRIAN RIVERA MAYNEZ ENTERS.




    The district court construed the term “passageway” as
“a narrow space of some depth or length connecting one
place to another.” J.A. 12. This construction is not sup-
ported by the specification. The district court also inter-
preted “passageway” to exclude a receptacle “that utilized
a broad, thin mesh.” Id. This exclusion was raised sua
sponte by the court and not argued by either party. As
shown below, the district court relied on its construction of
passageway to base, erroneously, its grant of summary
judgment and attorney’s fees.
    To properly determine the meaning of a claim limita-
tion, a court must consider the claim term in view of the
specification. Phillips v. AWH Corp., 415 F.3d 1303, 1315
(Fed. Cir. 2005) (en banc) (quoting Markman v. Westview
Instruments, Inc., 52 F.3d 967, 979 (1996)). A claim term
carries its ordinary meaning “unless the patentee unequiv-
ocally imparted” a new or different meaning or “expressly
relinquished claim scope during prosecution.” Omega
Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1322-23 (Fed.
Cir. 2003) (citing Teleflex, Inc. v. Ficosa N. Am. Corp., 299
F.3d 1313, 1325–26, 63 USPQ2d 1374, 1380–81 (Fed.
Cir. 2002)).
    Here, the district court’s construction of “passageway”
to mean a “narrow space of some depth or length connect-
ing one place to another” is not supported by the specifica-
tion. Unlike other portions of its claim construction order
where the district court refers to the claims, written de-
scription, figures, and prosecution history to support it con-
struction (see, e.g., J.A. 7-8, 9-11), the district court fails to
identify any support for its construction of “passageway.”
Instead, the district court construed “passageway” “in light
of the intrinsic evidence.” J.A. 12. Neither the claims nor
the written description, however, impose dimensional lim-
itations (i.e., narrowness, length, or depth) on “passage-
way.” While the specification describes a “passageway” on
sixteen occasions, it only twice describes exemplary diam-
eter and length parameters. ’320 patent col. 4 ll. 37-39,
EKO BRANDS, LLC v. ADRIAN RIVERA MAYNEZ ENTERS.             3



col. 5 ll. 28-30. Those examples alone cannot limit the
claimed invention as a whole. See, e.g., ScriptPro LLC v.
Innovation Assocs., Inc., 833 F.3d 1336, 1341 (Fed. Cir.
2016) (“[A] specification’s focus on one particular embodi-
ment or purpose cannot limit the described invention
where that specification expressly contemplates other em-
bodiments or purposes.”). On this basis alone, the district
court’s construction of “passageway” is erroneous.
    The majority appears to recognize that the district
court erred in its construction of “passageway,” noting that:
    whether or not the first part of the district court’s
    claim construction (requiring a “narrow space” . . .)
    was correct, we think the second part of the con-
    struction (that “passageway” does not “encompass
    a receptacle that [has] no bottom or utilized a
    broad-thin, mesh,” id.) was correct, and that the
    district court properly granted summary judgment
    based on its construction.
Maj. Op. 10 (emphasis added). This is incorrect. The dis-
trict court also erred by interpreting “passageway” to ex-
clude a receptacle “that utilized a broad, thin mesh.” This
aspect of the district court’s construction constitutes a neg-
ative claim limitation that is unsupported by the specifica-
tion.
     Negative limitations added during claim construction
must find support either in the specification or the prose-
cution history. Omega Eng’g, Inc., 334 F.3d at 1322-23. A
specification adequately supports the addition of a negative
limitation where the limitation is expressly disclaimed or
where “independent lexicography in the written descrip-
tion” justifies adding it. Id. In Omega Eng’g, Inc., the dis-
trict court construed “periphery” to mean “projection of the
laser light toward the surface,” but the court added that
periphery “does not encompass light striking the center or
interior portion of the energy zone.” Id. at 1321. On ap-
peal, we rejected that negative limitation, reasoning that
4          EKO BRANDS, LLC v. ADRIAN RIVERA MAYNEZ ENTERS.




there was no “express disclaimer or independent lexicogra-
phy in the written description that would justify adding
[it].” Id. at 1322-23. We concluded that the negative limi-
tation was not inherent to the claim term by relying on its
dictionary definition. Id. at 1322. We also concluded that
the negative limitation had no support in the prosecution
history. Id.; see also id. at 1327. In Linear Tech. Corp. v.
Int’l Trade Comm’n, we similarly reversed a claim con-
struction that incorporated an unsupported negative limi-
tation. 566 F.3d 1049, 1059-60 (Fed. Cir. 2009). The
Administrative Judge (“AJ”) construed the phrase “moni-
toring the current” to exclude “monitoring voltage.” See id.
at 1059. We found that the AJ erred by adding the negative
limitation because the specification provided no support for
it. Id. at 1060 (citing Omega Eng’g, Inc., 334 F.3d at 1323).
     Here, the district court’s exclusion of “a broad, thin
mesh” from the meaning of “passageway” writes into the
claim an unsupported negative limitation. Neither the
claims nor the written description of the ’320 patent men-
tion a mesh, let alone a broad, thin mesh, and there is no
express disclaimer supporting the negative limitation.
There also is no independent lexicography in the written
description upholding the negative limitation. The ’320 pa-
tent includes no definition of “passageway.” And the dic-
tionary definition of “passage”—“a way of exit or entrance:
a road, path, channel, or course by which something
passes” 1—does not inherently require the exclusion of a
broad, thin mesh. Nor is there any record evidence to sug-
gest that the prosecution history supports the exclusion.
The only record evidence, or mention of “broad, thin mesh”
is in relation to Eko Brands’ accused product. There is no
basis, therefore, for the district court to have redirected the



    1   See Merriam-Webster’s Collegiate Dictionary
(11th ed. 2003) (defining “passageway” as “a way that al-
lows passage”).
EKO BRANDS, LLC v. ADRIAN RIVERA MAYNEZ ENTERS.             5



scope of the claim to exclude broad, thin mesh other than
to exclude the accused products. See Cohesive Techs., Inc.
v. Waters Corp., 543 F.3d 1351, 1367 (Fed. Cir. 2008) (“[I]t
is not appropriate for the court to construe a claim solely to
exclude the accused device”). The district court therefore
erred by rewriting the claimed “passageway” to exclude a
broad, thin mesh.
    Because the district court relied on its erroneous con-
struction of “passageway” as its basis for granting sum-
mary judgment and in awarding attorney’s fees, I dissent.
I concur in all remaining aspects of the majority’s opinion.
