Case: 19-2374   Document: 42      Page: 1    Filed: 04/03/2020




   United States Court of Appeals
       for the Federal Circuit
                 ______________________

              MYCO INDUSTRIES, INC.,
          Plaintiff/Counter Defendant-Appellee

                   JOHN R. CHOATE,
                Counter Defendant-Appellee

                            v.

                   BLEPHEX, LLC,
          Defendant/Counter Plaintiff-Appellant

                 JAMES RYNERSON,
                  Defendant-Appellant
                 ______________________

                       2019-2374
                 ______________________

    Appeal from the United States District Court for the
 Eastern District of Michigan in No. 2:19-cv-10645-GAD-
 EAS, United States District Judge Gershwin A. Drain.
                  ______________________

                  Decided: April 3, 2020
                 ______________________

     PETER J. ARMENIO, Quinn Emanuel Urquhart & Sulli-
 van, LLP, New York, NY, argued for defendant/counter
 plaintiff-appellant and defendant-appellant. Also repre-
 sented by MATTHEW D. ROBSON, WILLIAM ADAMS.

    CHRISTOPHER     C.   SMITH,   Brooks    Kushman     PC,
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 2                      MYCO INDUSTRIES, INC.   v. BLEPHEX, LLC



 Southfield, MI, argued for plaintiff/counter defendant-ap-
 pellee and counter defendant-appellee. Also represented
 by THOMAS A. LEWRY, REBECCA JAMIE CANTOR.
                  ______________________

 Before NEWMAN, O’MALLEY, and TARANTO, Circuit Judges.
 O’MALLEY, Circuit Judge.
      We have jurisdiction over this case because it arises out
 of allegations of patent infringement. But, in its current
 posture, it is a case about free speech and a district court’s
 authority to place prior restraints on that speech. Myco
 Industries, Inc. (“Myco”) believed its competitor BlephEx,
 LLC (“BlephEx”) engaged in unprotected speech—making
 false and misleading statements about Myco’s product and
 whether it infringed BlephEx’s patent covering such tech-
 nology, U.S. Patent No. 9,039,718 (the “’718 patent”). This
 appeal arises from the fact that, in response to Myco’s re-
 quest, the United States District Court for the Eastern Dis-
 trict of Michigan preliminarily enjoined BlephEx’s speech.
 The court granted Myco’s motion for a preliminary injunc-
 tion to enjoin BlephEx from making allegations of patent
 infringement and also from threatening litigation against
 Myco’s potential customers. Myco Indus., Inc. v. BlephEx,
 LLC, Case No. 19-cv-10645, 2019 WL 4023789 (E.D. Mich.
 Aug. 27, 2019). BlephEx appeals the district court’s order.
     Because we find that the court abused its discretion by
 entering that preliminary injunction, we reverse, vacate,
 and remand.
                       I. BACKGROUND
     Because the speech at issue relates to allegations of pa-
 tent infringement and the good faith of any such allega-
 tions, we briefly describe the science involved and the ’718
 patent claims.
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        A. The Eyelid Margin and Ocular Disorders
     The eyelid margin is a portion of the edge of the eyelid
 which encompasses the site of the eyelashes, the meibo-
 mian gland orifices, and the gray line. J.A. 718. The eyelid
 margin is divided into two regions, as demarcated by the
 gray line: (1) a posterior eyelid margin (“inner edge mar-
 gin”) 1, including the meibomian gland orifices; and (2) an
 anterior eyelid margin (“outer edge margin”), including the
 eyelashes. J.A. 482–83.




 J.A. 717.



    1    There is an ongoing claim construction dispute be-
 fore the district court regarding the definition of “inner
 edge,” as recited by claim 1 of the ’718 patent. J.A. 1100,
 1102. Myco concedes, however, that it “does not contest the
 definiteness of the phrases [in] this appeal” because the
 plain and ordinary meanings of these terms are “not rele-
 vant to the issues BlephEx raises in this appeal.” Appellee
 Br. 12 n.5.
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      There are several ocular diseases that affect the eyelid
 margin, such as blepharitis, meibomitis, and dry eye syn-
 drome. ’718 patent, Abstract. Blepharitis, which comes in
 two forms, is a condition characterized by inflammation of
 the eyelids and the formation of dandruff-like scales on the
 eyelashes. J.A. 2–3. Anterior blepharitis affects a portion
 of the outer edge margin while posterior blepharitis affects
 a portion of the inner edge margin. J.A. 3.
      If a patient is diagnosed with eyelid margin disease, a
 doctor may prescribe a home treatment procedure, possibly
 in conjunction with antibiotics and/or topical steroids until
 the disease subsides. ’718 patent, col. 1 ll. 27–32. Home
 treatment is typically a two-step process. Id., col. 1, ll. 40–
 41. The patient first softens the eyelid margin debris by
 using a warm compress or a specialized liquid solution. Id.,
 col. 1 ll. 40–50. The patient then removes the debris by
 physically scrubbing the eyelid margin. Id. By cleaning
 debris from the base of the eyelashes and unclogging the
 pores of the meibomian glands, the patient improves the
 overall health of the eyelid margin, thereby reducing symp-
 toms related to the disorder. Id., col. 1 ll. 50–54. Unfortu-
 nately, this home treatment procedure is often met with
 limited success due to the practical difficulties of cleaning
 one’s own eye with an imprecise instrument, such as a Q-
 tip or a fingertip. Id., col. 1 ll. 56–59. While attempted self-
 treatment can temporarily abate a patient’s symptoms,
 failure to completely treat the affected area allows for “sub-
 tle continuation of the disease.” Id., col. 2 ll. 3–5.
                B. U.S. Patent No. 9,039,718
      The ’718 patent, entitled “Method and Device for
 Treating an Ocular Disorder,” is generally directed to a
 method for treating ocular disorders by “using an electro-
 mechanical device to move a swab relative to the eye to cre-
 ate cylindrical movement that impacts debris present at
 the eyelid margin and effectively removes the debris from
 the eye to encourage healing and prevent further
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 digression of the health of the eye.” ’718 patent, Abstract.
 Put simply, the claimed method involves using an electro-
 mechanical device with a swab to remove debris from the
 affected eyelid margin area. Id. Figure 2A of the ’718 pa-
 tent illustrates the swab of the claimed device treating the
 lower eyelid margin of a patient:




 ’718 patent, Figure 2A.
                 i. The ’718 Patent Claims
     Independent claims 1 and 17, along with dependent
 claims 14 and 15, are relevant to this appeal and recite:
    1. A method for treating an eye for an ocular disor-
    der with a swab operably connected to an electro-
    mechanical device, wherein the eye has an eyelid
    margin and includes a removable debris, the
    method comprising;
        effecting movement of the swab relative to
        the electromechanical device, the swab
        having at least a portion thereof configured
        to access an inner edge portion of the eyelid
        margin;
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         while the swab is being moved by the elec-
         tromechanical device, contacting a portion
         of the eye between the eyelashes and the
         inner edge of the eyelid margin that in-
         cludes the removable debris from the swab
         thereby impacting the debris with the swab
         to remove debris from the eye.
                               ***
     14. The method of claim 1 further comprising:
         accessing at least an inner edge portion of the
         eyelid margin with swab.
     15. The method of claim 14 further comprising:
         contacting the inner edge portion of the eyelid
         margin with the swab.
                               ***
     17. A method of treating an eye for an ocular disor-
     der with a swab operably connected to an electro-
     mechanical device, wherein the eye has an eyelid
     margin and includes a removable debris, the
     method comprising;
         effecting movement of the swab relative to
         the electromechanical device;
         while the swab is being moved by the elec-
         tromechanical device, contacting at least
         an inner edge portion of the eyelid margin
         that includes the removable debris with the
         swab thereby impacting the debris with the
         swab to remove debris from the eye.
 ’718 patent, col. 7 l. 30–col. 8 l. 57.
                     ii. Prosecution History
     U.S. Patent Application No. 13/556,729, which issued
 as the ’718 patent, was filed on July 24, 2012. As originally
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 filed, claim 1 recited a method for treating an eye for an
 ocular disorder with a swab connected to an electrome-
 chanical device, with the swab “contacting a portion of the
 eye that includes the removable debris.” J.A. 154 (empha-
 sis added).
      During prosecution, the examiner issued a non-final of-
 fice action rejecting claim 1 as anticipated by U.S. Patent
 Application No. 2007/0060988 (“Grenon”). J.A. 296–299.
 According to the examiner, the reference disclosed a
 method for treating an ocular disorder with a swab con-
 nected to an electromechanical device. J.A. 297. During
 an examiner interview, however, the applicant distin-
 guished its invention from Grenon, contending that, unlike
 Grenon, the claimed swab “contacts the inner surface of the
 eyelid or eyelid margin.” J.A. 321. The examiner “agreed
 that such a claim limitation would overcome Grennon [sic],
 since one would not use Grennon [sic] to contact the inner
 surface of the eyelid, as this would also result in the device
 in Grennon [sic] contacting the eyeball.” J.A. 321.
      Following the examiner interview, the applicant sub-
 mitted amendments to the original claims. One of those
 amendments added a limitation to claim 1: “the swab hav-
 ing at least a portion thereof configured to access an inner
 edge portion of the eyelid margin.” J.A. 324. The applicant
 explained that the added limitation overcame Grenon be-
 cause “Grenon fails to disclose a swab having a portion con-
 figured to access an inner edge portion of the eyelid margin
 of the eye,” and “as agreed during the [examiner interview,]
 the apparatus of Grenon is not capable of contacting an in-
 ner edge portion of an eyelid margin.” J.A. 331. The appli-
 cant also added new claims, including then-claim 28 (which
 issued as claim 15) and then-claim 29 (which issued as
 claim 17). J.A. 326. Then-claim 28 recited “contacting the
 inner edge portion of the eyelid margin with the swab,”
 while then-claim 19 included “contacting at least an inner
 edge portion of the eyelid margin.” J.A. 326.
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      Following submission of the amendments, the exam-
 iner conducted another interview and “discussed a poten-
 tial Examiner’s Amendment to incorporate the language
 regarding ‘contacting at least an inner edge portion of the
 eyelid margin’ of claim 29 into claim 1.” J.A. 338. The ap-
 plicant’s patent attorney, however, responded that he
 would need to discuss this potential amendment with his
 client and thus, “no agreement was reached on the Exam-
 iner’s Amendment at this time.” J.A. 338. Ultimately, the
 potential Examiner’s Amendment was not incorporated
 into claim 1. Instead, to receive a notice of allowance, the
 applicant added another limitation to claim 1: “contacting
 a portion of the eye between the eye lashes and the inner
 edge of the eyelid margin.” J.A. 392. The ’718 patent is-
 sued on May 26, 2015.
                   C. Procedural History
            i. The History of Myco and BlephEx
     In August 2012, after filing U.S. Patent Application No.
 13/556,729, the ’718 patent inventor, Dr. James Rynerson,
 contacted John Choate. J.A. 110. The men entered into a
 partnership. Choate agreed to help develop a commercial
 product based on the electromechanical device disclosed in
 the ’718 patent. J.A. 110–111. The final commercial prod-
 uct, a device used to clean the eyelid margin by practicing
 the methods claimed in the ’718 patent, was named the
 BlephEx (“the BlephEx product”) and was brought to mar-
 ket in 2013. J.A. 111, 723. In January 2014, Choate ended
 this relationship with Rynerson, apparently on less than
 cordial terms. J.A. 111. Sometime later, Choate became
 chairman of Myco Industries, Inc. J.A. 109.
     In 2019, Myco began marketing the AB Max. J.A. 88,
 109. The AB Max is an FDA registered device used by med-
 ical practitioners to treat anterior blepharitis. J.A. 109–
 110. The AB Max is an attachment for an Algerbrush II
 handle, which is “used by ophthalmologists, ER physicians
 and, [sic] optometrists who are trained and licensed to
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 MYCO INDUSTRIES, INC.   v. BLEPHEX, LLC                    9



 remove foreign bodies from the eye of a patient.” J.A. 109–
 110.
      In 2019, Rynerson and Choate both hosted booths at
 the Southern Educational Congress of Optometry
 (“SECO”) 2019 trade show in New Orleans. J.A. 112. Dur-
 ing the trade show, Myco displayed its AB Max tool and
 handed out materials explaining the functionality and use
 of the tool to attendees. J.A. 112. None of the materials for
 the AB Max tool promoted or marketed the AB Max for
 treating posterior blepharitis, only anterior blepharitis.
 J.A. 112. Rynerson then approached the Myco booth and
 expressed concern about the AB Max device. J.A. 113.
     Choate contends that, upon observing the AB Max de-
 vice, Rynerson became hostile and accused the AB Max de-
 vice of infringing the ’718 patent. J.A. 113. According to
 Choate, Rynerson made loud accusations of infringement
 within earshot of prospective customers, while videotaping
 at least part of the encounter on his cell phone. J.A. 113.
 A third party, Dr. Adam Farkas, emailed Choate after
 SECO 2019, informing Choate that he overhead Rynerson
 at the BlephEx booth repeating his claims to potential cus-
 tomers that the AB Max infringed his ’718 patent and that
 he would be “taking action.” J.A. 113, 522.
     Rynerson’s version of the events is more subdued. Ryn-
 erson agrees that he saw Choate at the SECO 2019 show,
 but denies telling Choate that the AB Max infringed the
 ’718 patent. J.A. 575. Instead, Rynerson contends that he
 merely asked if Choate thought the AB Max product might
 infringe the ’718 patent. J.A. 575. Rynerson maintains
 that he did not threaten to sue anyone for patent infringe-
 ment and was only looking to gain information about the
 AB Max because he thought that it looked very similar to
 the BlephEx product. J.A. 575. Rynerson states that he
 accepted a Doctor’s Brochure for the AB Max from Choate,
 took photos of Myco’s display booth, and promptly left. J.A.
 575. Rynerson further maintains that he did not make any
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 10                     MYCO INDUSTRIES, INC.   v. BLEPHEX, LLC



 video recordings, send Myco or Choate any form of corre-
 spondence alleging that the AB Max product infringes the
 ’718 patent, or threaten any customer with patent infringe-
 ment. J.A. 575–76.
          ii. Myco’s Declaratory Judgment Action
     In March 2019, Myco filed a declaratory judgment ac-
 tion against BlephEx in the U.S. District Court for the
 Eastern District of Michigan. J.A. 29. Myco sought a de-
 claratory judgment that it has not been and is not directly,
 indirectly, or contributorily infringing the ’718 patent; a de-
 claratory judgment that the claims of the ’718 patent are
 invalid under 35 U.S.C. §§ 102, 103, and/or 112; and in-
 junctive and monetary relief under Michigan and federal
 unfair competition law on the basis that Rynerson made
 patent infringement allegations regarding the AB Max at
 SECO 2019 in bad faith. J.A. 51–55.
      Shortly after filing an amended complaint against
 BlephEx, Myco filed a motion for a preliminary injunction,
 seeking to bar BlephEx from (1) “Making false allegations
 that Myco’s AB Max infringes the ’718 patent” and;
 (2) “making baseless threats against Myco’s medical-prac-
 titioner potential customers of AB Max.” J.A. 104. In its
 motion, Myco alleged that it had a strong likelihood of suc-
 cess on the merits of its patent non-infringement claims be-
 cause, inter alia, (1) “[d]uring prosecution of the
 application for the ’718 patent, Rynerson expressly limited
 the patent claims to a method of treating posterior blepha-
 ritis,” whereas Myco sells and promotes the AB Max “only
 for treating anterior blepharitis”; and (2) Myco’s medical-
 practitioner customers are immune from liability under
 35 U.S.C. § 287(c)(1). J.A. 92–99 (emphasis added). In re-
 sponse, BlephEx disputed Myco’s assertion that the claims
 of the ’718 patent are limited to treating posterior blepha-
 ritis, and argued that Myco’s § 287(c)(1) medical immunity
 argument improperly relied on the assumption that all di-
 rect infringers of the AB Max are medical professionals.
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 MYCO INDUSTRIES, INC.   v. BLEPHEX, LLC                    11



 J.A. 545–557. Briefing on the motion concluded in April
 2019. J.A. 31.
      A few months later, BlephEx moved the district court
 for leave to file supplemental briefing. J.A. 32–33. In its
 supplemental briefing, BlephEx noted that federal law re-
 quires a showing of bad faith in order to bar patentee
 speech and argued that its counterclaims of infringement
 demonstrate its objective good faith. J.A. 774–79. Myco
 opposed BlephEx’s motion, arguing that it failed to raise
 any new facts justifying additional briefing and consisted
 primarily of new arguments and case law that BlephEx
 should have asserted during the briefing period. J.A.
 1006–1008. The district court denied BlephEx’s motion for
 leave to file a supplemental brief. J.A. 2, 34.
                    iii. The District Court’s
                Preliminary Injunction Opinion
     On August 27, 2019, the district court granted Myco’s
 amended motion for a preliminary injunction and enjoined
 BlephEx, its officers, agents, and those in active concert
 with BlephEx “from making allegations of patent infringe-
 ment and from threatening litigation against [Myco’s] po-
 tential customers.” Myco, 2019 WL 4023789, at *9. In its
 opinion, the district court identified and discussed four pre-
 liminary injunction factors, as enumerated by the 6th Cir-
 cuit: (1) likelihood of success on the merits; (2) irreparable
 injury without the injunction; (3) substantial harm to oth-
 ers; and (4) public interest. Id. at *3 (citing Certified Res-
 toration Dry Cleaning Network, L.L.C. v. Tenke Corp., 511
 F.3d 535, 542 (6th Cir. 2007)).
      Under the first factor, likelihood of success on the mer-
 its, the district court discussed each of Myco’s non-infringe-
 ment and unfair competition claims. Myco, 2019 WL
 4023789, at *3–7. The district court’s analysis of Myco’s
 non-infringement claim considered direct infringement, ac-
 tive inducement, and contributory infringement. Id. at *3–
 6. With respect to its direct infringement discussion, the
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 12                     MYCO INDUSTRIES, INC.   v. BLEPHEX, LLC



 district court focused almost entirely on whether the
 claimed method recited in claim 1 is limited to treating pos-
 terior blepharitis. Id. at *3–5. According to the court, “the
 ’718 patent routinely describes the swab of the Bleph[E]x
 contacting the ‘inner edge portion of the eyelid margin’”
 and “effectively describe[s] the treatment of posterior
 blepharitis, because posterior blepharitis affects the inner
 edge of the eyelid.” Id. at *4. The district court also noted
 that “adding the ‘inner edge portion of the eyelid margin’
 language was necessary in order for the PTO to issue a pa-
 tent on the Bleph[E]x.” Id. Thus, the district court deter-
 mined that the ’718 patent claims are limited to “treatment
 of posterior blepharitis.” Id. at *5. Because the district
 court found that “the ’718 patent[] is for use for the treat-
 ment of posterior blepharitis” and “the AB Max is for the
 treatment of anterior blepharitis,” the district court con-
 cluded “that Myco has demonstrated a strong likelihood of
 success on its claim that it does not directly infringe the
 ’718 patent.” Id. at *4–5.
      The district court also determined that Myco had
 demonstrated a “strong likelihood of success” that Myco did
 not indirectly infringe any claims of the ’718 patent. As
 related to induced infringement, the district court held that
 “the record does not show that [Myco] or a third party di-
 rectly infringed the ’718 patent,” or that “[Myco] induced
 any infringing acts.” Id. at *5. This conclusion was de-
 pendent on the district court’s determination that the ’718
 patent claims are limited to treatment of posterior blepha-
 ritis. In concluding that Myco did not induce any infring-
 ing act, the district court relied on a video of Choate’s
 statements at the SECO conference, which demonstrated
 Choate marketing the AB Max as a treatment for anterior
 blepharitis. Id. The court therefore concluded “that there
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 MYCO INDUSTRIES, INC.   v. BLEPHEX, LLC                    13



 is a strong likelihood of success on Plaintiff’s contention
 that it did not induce infringement.” Id. 2
     Finally, the district court maintained that any custom-
 ers of the AB Max who are medical practitioners are not
 liable pursuant to § 287(c)(1) of the Patent Act. Id. at *6.
 And, because the court had already determined that “the
 AB Max does not directly or indirectly infringe the ’718 pa-
 tent,” it concluded that “there is also a strong likelihood of
 success on [Myco]’s contention that Myco customers who
 are not medical practitioners are also not liable for in-
 fringement.” Id.
     After determining that (1) Myco had demonstrated a
 strong likelihood of success on its non-infringement patent
 claim 3; (2) Myco had shown that it would suffer irreparable


     2   With respect to contributory infringement, the dis-
 trict court determined that, although Myco’s AB Max de-
 vice could be used “for the treatment of posterior
 blepharitis, which would infringe” on certain claims of the
 ’718 patent, “practitioners could also solely use [it] for the
 treatment of anterior blepharitis, which does not infringe
 on the ’718 patent.” Myco, 2019 WL 4023789 at *6.
 “[B]ecause the AB Max has a substantial non-infringing
 use,” the district court concluded that Myco demonstrated
 a strong likelihood of success that it is not liable for con-
 tributory infringement. Id. While the district court also
 discussed concepts of contributory infringement, because
 BlephEx does not push that theory of infringement on ap-
 peal, we decline to address it.
      3  With respect to Myco’s unfair competition claim,
 the district court found that “[t]he record does not establish
 that [Myco]’s version of the facts is more credible or accu-
 rate tha[n] [BlephEx]’s.” Myco, 2019 WL 4023789, at *7.
 Accordingly, the district court held that it could not “estab-
 lish that Defendant made any false or misleading state-
 ments about the AB Max” and concluded that Myco had
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 14                     MYCO INDUSTRIES, INC.   v. BLEPHEX, LLC



 harm absent a preliminary injunction; (3) BlephEx had not
 shown that it would face substantial harm if a preliminary
 injunction issued; and (4) both parties’ public interest con-
 siderations were equal, the district court concluded that
 upon balance, a preliminary injunction was appropriate.
 Id. at *8–9. The district court issued a preliminary injunc-
 tion “enjoining [BlephEx], its officers, agents, and those in
 active concert with [BlephEx] from making allegations of
 patent infringement and threatening litigation against
 [Myco]’s potential customers.” Id. at *8.
     BlephEx timely appealed the district court’s prelimi-
 nary injunction order. We have jurisdiction over this ap-
 peal pursuant to 28 U.S.C. § 1292(a)(1).
                        II. DISCUSSION
     We review a district court’s grant or denial of a prelim-
 inary injunction using the law of the regional circuit. Ma-
 com Tech. Sols. Holdings, Inc. v. Infineon Techs. AG, 881
 F.3d 1323, 1328 (Fed. Cir. 2018). Under Sixth Circuit law,
 we review the district court’s ultimate determination as to
 whether the preliminary injunction factors weigh in favor
 of granting preliminary injunctive relief for an abuse of dis-
 cretion. Tumblebus Inc. v. Cranmer, 399 F.3d 754, 760 (6th
 Cir. 2005). The question of whether a movant is likely to
 succeed on the merits is a question of law, which the Sixth
 Circuit reviews de novo. Id.




 “not demonstrate[d] a strong likelihood of success on its un-
 fair competition claims.” Id. The district court’s likelihood
 of success determination on Myco’s unfair competition
 claim is not at issue on appeal, though its factual finding
 regarding the nature of BlephEx’s statements is relevant
 to the questions we address.
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 MYCO INDUSTRIES, INC.   v. BLEPHEX, LLC                   15



            A. The Requirement of “Bad Faith”
     When considering a motion for a preliminary injunc-
 tion, courts must balance:
     (1) Whether the movant has a strong likelihood of
     success on the merits;
     (2) Whether the movant would suffer irreparable
     injury without the injunction;
     (3) Whether the issuance of the injunction would
     cause substantial harm to others; and
     (4) Whether the public interest would be served by
     issuance of the injunction.
 Id. But when a preliminary injunction prevents a patentee
 from communicating its patent rights, a court applies “fed-
 eral patent law and precedent relating to the giving of no-
 tice of patent rights.” GP Indus., Inc. v. Eran Indus., Inc.,
 500 F.3d 1369, 1373 (Fed. Cir. 2007). In such cases, the
 grant of a preliminary injunction is reviewed “in the con-
 text of whether, under applicable federal law, the notice of
 patent rights was properly given.” Id. We have further
 held that “federal law requires a showing of bad faith” be-
 fore a patentee can be enjoined from communicating his pa-
 tent rights. Id.
     A showing of “bad faith” must be supported by a finding
 that the claims asserted were objectively baseless. See id.
 at 1374. An asserted claim is objectively baseless if no rea-
 sonable litigant could realistically expect success on the
 merits. Id. (citing Prof’l Real Estate Investors, Inc. v. Co-
 lumbia Pictures Indus., Inc., 508 U.S. 49, 60 (1993)).
          i. The District Court Enjoined Patentee
           Speech Without a Finding of Bad Faith
     The district court abused its discretion when it granted
 a preliminary injunction enjoining patentee speech with-
 out a finding of bad faith. Although a district court’s
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 16                      MYCO INDUSTRIES, INC.   v. BLEPHEX, LLC



 discretion to enter a preliminary injunction is entitled to
 substantial deference, the patent laws permit a patentee to
 inform a potential infringer of the existence of its patent.
 See, e.g., 35 U.S.C. § 287 (“Patentees . . . may give notice to
 the public that [a patented article] is patented . . . .”); Va.
 Panel Corp. v. MAC Panel Co., 133 F.3d 860, 869 (Fed. Cir.
 1997) (“[A] patentee must be allowed to make its rights
 known to a potential infringer so that the latter can deter-
 mine whether to cease its allegedly infringing activities,
 negotiate a license if one is offered, or decide to run the risk
 of liability and/or the imposition of an injunction.”). There-
 fore, “communication to possible infringers concerning pa-
 tent rights is not improper if the patent holder has a good
 faith belief in the accuracy of the communication.” Mikohn
 Gaming Corp. v. Acres Gaming, Inc., 165 F.3d 891, 897
 (Fed. Cir. 1998). In this case, the district court neither
 made a finding of bad faith nor even adverted to the re-
 quirement. To the extent the court made any factual find-
 ings relevant to bad faith, moreover, the court expressly
 declined to find that any of BlephEx’s statements were ei-
 ther false or misleading. Myco, 2019 WL 4023789, at *7.
 This alone warrants reversal. 4 See Coursey v. Comm’r of
 Soc. Sec., 843 F.3d 1095, 1097 (6th Cir. 2016) (“A district
 court abuses its discretion when it relies on clearly


      4   Myco argues that BlephEx waived its argument
 that a showing of bad faith is a prerequisite to injunctive
 relief. Appellee Br. 26–28. We disagree. “While a party
 can waive his or her ability to appeal a ruling for failure to
 object, there can be no waiver here of the Judge’s duty to
 apply the correct legal standard.” United States v. Ali, 508
 F.3d 136, 144 n.9 (3d Cir. 2007); see also Brown v. Smith,
 551 F.3d 424, 428 n.2 (6th Cir. 2008) (“[T]he district court
 was ill-served in this regard by the petitioning party, who
 never argued that AEDPA deference did not apply until
 this appeal. Nevertheless, a party cannot ‘waive’ the
 proper standard of review by failing to argue it.”).
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 MYCO INDUSTRIES, INC.   v. BLEPHEX, LLC                    17



 erroneous findings of fact, when it improperly applies the
 law, or uses an erroneous legal standard.”).
    ii. Section 287(c) Does Not Mean That Allegations of
        Infringement Directed to Medical Practitioners
                   Are Made in Bad Faith
     Myco does not dispute that the district court failed to
 make an express finding of bad faith. Myco maintains,
 however, that the district court’s analysis was appropriate
 because the injunction “merely precludes BlephEx from al-
 leging infringement and threatening litigation against
 Myco’s AB Max potential customers,” who are purportedly
 immune from infringement under 35 U.S.C. § 287(c). Ap-
 pellee Br. 23. Myco argues that, under this narrower scope,
 “threatening [Myco’s potential customers] with infringe-
 ment of the ’718 patent is objectively baseless and in bad
 faith.” Myco asks us to infer a finding of bad faith from the
 language of the injunction itself.
     But the injunction is not limited to allegations of patent
 infringement against Myco’s potential customers. Rather,
 the district court’s injunction enjoins BlephEx from both:
 (1) making allegations of patent infringement in general;
 and (2) threatening litigation against Myco’s potential cus-
 tomers. Myco, 2019 WL 4023789, at *8–9. In addressing
 whether Myco demonstrated a strong likelihood of success
 with respect to its ’718 patent non-infringement claims, the
 court considered whether “[Myco] or a third party” directly
 or indirectly infringed the method claims. Id. at *5. If the
 district court’s injunction was as narrow as Myco now
 claims, the court would have restricted its analysis to a dis-
 cussion of induced infringement based on the actions of
 Myco’s medical-practitioner customers. Indeed, the record
 reflects that Myco sought a broader injunction. For exam-
 ple, Myco’s motion for a preliminary injunction “asks the
 Court to enjoin Bleph[E]x, its officers, agents, and those in
 active concert with it, from (1) making false allegations
 that Myco’s AB Max infringes the ’718 patent, and
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 18                       MYCO INDUSTRIES, INC.   v. BLEPHEX, LLC



 (2) making baseless threats to sue Myco’s medical-practi-
 tioner potential customers of AB Max.” J.A. 104. The plain
 text of Myco’s request makes clear that Myco not only
 sought to preclude BlephEx from communicating with its
 medical-practitioner customers, but from making any
 “false allegations that Myco’s AB Max infringes the ’718
 patent.” Id. 5
      Even assuming the district court’s injunction is nar-
 rowly tailored to allegations of infringement and threats of
 litigation against Myco’s potential customers, the “medical
 practitioner immunity” provision of § 287(c) does not
 blanketly preclude a patent owner from stating that a med-
 ical practitioner’s performance of a medical activity in-
 fringes a patent. Section 287(c) recites:
      With respect to a medical practitioner’s perfor-
      mance of a medical activity that constitutes an in-
      fringement under section 271(a) or (b), the
      provisions of sections 281, 283, 284, and 285 shall
      not apply against the medical practitioner or
      against a related health care entity with respect to
      such medical activity.
 35 U.S.C. § 287(c)(1).
      The plain text of the statute does not state that a med-
 ical practitioner is “immune from infringement,” as the dis-
 trict court found and Myco urges. Rather, the text
 establishes that, if a medical practitioner’s performance of
 a medical activity infringes a patent claim, the patentee
 cannot seek a remedy for such infringement against the
 practitioner or related health care entity. See 35 U.S.C.


      5   As noted above, while Myco only sought to enjoin
 false allegations regarding patent infringement, the dis-
 trict court expressly found that the record did not permit a
 conclusion that any of BlephEx’s claims were either false
 or misleading.
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 MYCO INDUSTRIES, INC.   v. BLEPHEX, LLC                   19



 §§ 281 (remedies), 283 (injunctions), 284 (damages), 285
 (attorneys’ fees). The act provides immunity to certain in-
 fringers, but it does not render them non-infringers. As we
 have explained, moreover, a medical practitioner’s direct
 infringement of a method claim may form the basis for a
 claim of indirect infringement against a medical device
 manufacturer. Barry v. Medtronic, Inc., 914 F.3d 1310,
 1334 (Fed. Cir. 2019) (finding that “[s]ubstantial evidence
 supports the jury’s finding of underlying direct infringe-
 ment by surgeons,” as relevant to the jury’s finding that
 Medtronic induced others to infringe). Accordingly, Myco
 cannot simply hide under the umbrella of § 287(c) and ar-
 gue that any alleged statements regarding medical practi-
 tioner infringement were made in bad faith. Rather, Myco
 must establish that BlephEx’s patent infringement state-
 ments, whether made generally or to medical practitioners,
 were objectively baseless.
     With respect to threats of litigation against Myco’s po-
 tential customers, there is no evidence that BlephEx or
 Rynerson ever made such a threat. The parties submitted
 conflicting testimony regarding Rynerson’s actions at the
 SECO 2019 trade show, but even Choate’s memory of the
 events fails to recall Rynerson threatening Myco’s potential
 customers with either patent infringement or litigation re-
 lating thereto. J.A. 113 (“Dr. Rynerson approached the
 Myco booth and became hostile and combative stating that
 the AB Max infringes Dr. Rynerson’s patent.”). And when
 Dr. Farkas, a fellow SECO 2019 attendee, sent an email to
 describe his observations of Rynerson’s statements, he
 could only report that “[Rynerson] said that the AB Max
 technology was ‘totally infringing on his patents’ and that
 he’d be ‘taking action.’” J.A. 522.
     Myco insists that Dr. Farkas’s email demonstrates that
 BlephEx threatened potential customers with litigation be-
 cause a customer, overhearing Rynerson’s intent to “take
 action,” would infer a threat of litigation. See Oral Arg. at
 28:50 (“A doctor hearing a statement that ‘I’m going to take
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 20                     MYCO INDUSTRIES, INC.   v. BLEPHEX, LLC



 action on this patent’ that covers exactly what [she does] in
 [her] office—I think . . . that would be a threat on a doctor,
 or could be taken as a threat on a doctor, certainly.”),
 http://oralarguments.cafc.uscourts.gov/default.aspx?fl=
 2019-2374.mp3. But Myco’s argument asks the court to as-
 sume, without any supporting evidence, that a doctor
 would have interpreted Rynerson’s general statements
 about the AB Max as both an accusation of patent infringe-
 ment and a threat of litigation against the doctor herself.
      Because the record lacks any evidence that BlephEx or
 Rynerson “threaten[ed] [Myco’s potential customers] with
 infringement of the ’718 patent” or, more specifically, with
 litigation relating thereto, Myco’s implied “bad faith” ar-
 gument fails. Appellee Br. 23. Where there was no finding
 of bad faith, let alone an acknowledgment of that require-
 ment, the district court’s decision to enjoin BlephEx’s pa-
 tent speech was an abuse of discretion.
      Myco finally argues that, regardless of whether the dis-
 trict court made a finding of bad faith—either express or
 implied—the district court properly enjoined BlephEx from
 making general allegations of infringement because “[the
 Federal Circuit] has affirmed the grant of an injunction to
 plaintiffs in patent-based declaratory judgment cases.” Ap-
 pellee Resp. Br. 29. In support of its argument, Myco cites
 to Unitronics (1989) (R”G) Ltd. v. Gharb, 318 Fed. App’x
 902 (Fed. Cir. 2008), where the district court granted
 Unitronics’ summary judgment motion of non-infringe-
 ment and, as part of the final judgment, enjoined Gharb
 from “threatening Unitronics and its customers with in-
 fringement litigation.” 318 Fed. Appx. at 903–04. In a non-
 precedential decision, we affirmed the district court’s final
 judgment of non-infringement, addressing the merits of the
 infringement issue—not the propriety of its injunction. Id.
 at 905. Unitronics does not address the injunction issue at
 all and does not establish precedent, contrary to GP Indus-
 tries, that a district court may enjoin patentee speech with-
 out a finding of bad faith. See, e.g., Elbit Sys. Land & C4I
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 MYCO INDUSTRIES, INC.   v. BLEPHEX, LLC                      21



 Ltd. v. Hughes Network Syst., LLC, 927 F.3d 1292, 1305
 (Fed. Cir. 2019); Arthrex, Inc. v. Smith & Nephew, Inc., 880
 F.3d 1345, 1349 (Fed. Cir. 2018); Special Devices, Inc. v.
 OEA, Inc., 269 F.3d 1340, 1346 (Fed. Cir. 2001).
    iii. The District Court’s Conclusion that Myco Has a
         “Strong Likelihood of Success on the Merits”
       of its Non-Infringement Claim Must Be Vacated
     To the extent the court enjoined general allegations of
 infringement—no matter where directed—that injunction
 is predicated on the court’s conclusion that use of Myco’s
 product likely does not directly infringe the claims of the
 ’718 patent. That conclusion, like all conclusions regarding
 infringement, could only be reached after a two-step pro-
 cess: a construction of the claims of the patent and a con-
 clusion that use of BlephEx’s product does not likely read
 on those claims. 6 Myco, 2019 WL 4023789, at *4–5. But
 the key predicate for the court’s finding that use of the AB
 Max likely does not directly infringe the ’718 patent is the
 conclusion that the AB Max is promoted for the treatment
 of anterior blepharitis, while the claims of ’718 patent are
 directed to posterior blepharitis. Id. at *5. There are sev-
 eral problems with that predicate.
     The court’s claim construction that limits the scope of
 the claims to the treatment of posterior blepharitis is faulty



     6    Although Myco argues in its brief that the district
 court “did not construe any claim terms to decide the pre-
 liminary injunction motion,” Appellee Br. 30, it conceded
 during oral argument that the district court necessarily
 conducted claim construction in order to determine
 whether Myco directly or indirectly infringed the ’718 pa-
 tent claims. See Oral Arg. at 25:38 (“I don’t disagree that
 for purposes of finding whether the court erred in finding
 non-infringement, the court will have to look at the mean-
 ing of the term, the context of the limitation, specifically.”).
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 22                     MYCO INDUSTRIES, INC.   v. BLEPHEX, LLC



 in a number of ways, ignoring key governing principles of
 law. In concluding that use of the AB Max likely does not
 infringe the ’718 patent, the district court determined that
 the ’718 patent claims are limited to “the treatment of pos-
 terior blepharitis” because “the ’718 patent routinely de-
 scribes the swab of the Bleph[E]x contacting the ‘inner edge
 portion of the eyelid margin.’” Id. at *4–5. But the plain
 language of the ’718 patent claims does not state that the
 swab must contact the inner edge or that the claimed
 method is limited to treatment of posterior blepharitis. For
 example, claim 1 recites a swab “having at least a portion
 thereof configured to access an inner edge portion of the
 eyelid margin,” but does not state that any contact by the
 swab must be limited to the inner edge portion of the eyelid
 margin. ’718 patent, col. 7 ll. 34–37. And unlike claims 14,
 15, and 17, claim 1 does not require contacting or accessing
 “at least an inner edge portion of the eyelid margin.” Com-
 pare ’718 patent, col. 7 ll. 34–37, with ’718 patent, col. 8 l.
 40, and ’718 patent, col. 8 l. 43, and ’718 patent, col. 8 ll.
 54–55. Accordingly, reading such a limitation into claim 1
 would appear to violate the doctrine of claim differentiation
 and render dependent claims 14, 15, and 17 superfluous.
 See Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d
 1335, 1348 (Fed. Cir. 2012) (“[T]he presence of a dependent
 claim that adds a particular limitation gives rise to a pre-
 sumption that the limitation in question is not present in
 the independent claim.”). 7



      7  We also remind the district court that limitations
 from different dependent claims should not be interpreted
 as if they were general statements of disavowal from the
 written description. Compare Myco, 2019 WL 4023789, at
 *2 (combining separate limitations from claims 1, 14, 15,
 and 17 as evidence that “the patent consistently states that
 the Bleph[E]x is for use with the ‘inner edge portion of the
 eyelid margin.’”).
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 MYCO INDUSTRIES, INC.   v. BLEPHEX, LLC                    23



      During prosecution of the patent application, the appli-
 cant rejected the examiner’s suggestion to add “contacting
 at least an inner edge portion of the eyelid margin” to claim
 1. J.A. 331, 338, 392. Instead, the applicant and examiner
 compromised with the limitation, “contacting a portion of
 the eye between the eye lashes and the inner edge of the
 eyelid margin,” implying that claim 1 recites a method of
 using a device with the capability of accessing the inner
 edge, but not requiring such contact during use. J.A. 392.
 Based on this back-and-forth, the court concluded that the
 “inner edge portion of the eyelid” language was important
 to allowance of the patent claims, and determined that the
 applicant’s statements and amendments had narrowed the
 scope of the claims. J.A. 3, 12. But the court did not decide
 whether the patentee had clearly and unmistakably disa-
 vowed the claim scope, as would be required to depart from
 the meaning of the term provided in the claims and the
 written description. See Sorensen v. Int’l Trade Comm’n,
 427 F.3d 1375, 1378–79 (Fed. Cir. 2005) (“Disclaimers
 based on disavowing actions or statements during prosecu-
 tion . . . must be both clear and unmistakable.”). Such a
 finding would be necessary before prosecution history may
 constitute a disclaimer of claim scope. 8



     8    That is not to say that prosecution actions or state-
 ments must be “clear and unmistakable” in order to inform
 a court's claim construction. If a claim term is ambiguous
 based on the plain language of the claims and the written
 description, we may look to the prosecution history for
 guidance. For example, in Personalized Media Comm'cns,
 LLC v. Apple, Inc., Case No. 18-1936 (Fed. Cir. Mar. 13,
 2020), we held that an applicant's ”repeated and consistent
 statements during prosecution, along with its amendment
 to the same effect, are decisive as to the meaning of the
 disputed claim term—even if those statements do not rise
 to the level of a disclaimer.” Slip op. at 18. Our precedent
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 24                     MYCO INDUSTRIES, INC.   v. BLEPHEX, LLC



     The district court’s non-infringement analysis also fre-
 quently conflates the invention claimed in the ’718 patent
 with the BlephEx product. See, e.g., Myco, 2019 WL
 4023789, at *4 (“However, the ’718 patent routinely de-
 scribes the swab of the Bleph[E]x contacting the ‘inner edge
 portion of the eyelid margin.’”); id. (“Further, adding the
 ‘inner edge portion of the eyelid margin’ language was nec-
 essary in order for the PTO to issue a patent on the
 Bleph[E]x.”); id. at *5 (“Defendant’s Bleph[Ex] tool, accord-
 ing to the ’718 patent, is for use for the treatment of poste-
 rior blepharitis.”).     The law is clear, however, that
 “infringement is determined on the basis of the claims, not
 on the basis of a comparison with the patentee’s commer-
 cial embodiment of the claimed invention.” Int’l Visual
 Corp. v. Crown Metal Mfg. Co., 991 F.2d 768, 772 (quoting
 ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572,
 1578 (Fed. Cir. 1984)). Similarly, claim construction, from
 which an infringement analysis depends, focuses on the re-
 cited limitations of the claims, not on the features of a com-
 mercial embodiment of the invention.
     While we “will not lightly intrude upon a district court’s
 discretionary decision to issue only a tentative claim con-
 struction and to base its resolution of a preliminary injunc-
 tion motion upon that tentative claim construction,” Jack
 Guttman, Inc. v. Kopykake Enters., Inc., 302 F.3d 1352,
 1361 (Fed. Cir. 2002), our conclusion that there are errors
 in the claim construction analysis employed requires that
 we vacate that claim construction and remand for further



 addressing the general role of intrinsic evidence in claim
 construction, however, can be distinguished from the doc-
 trine of prosecution disclaimer, wherein a patentee may
 narrow the scope of a claim term after he has clearly and
 unmistakably disavowed a certain meaning to receive a no-
 tice of allowance. Tech. Props. Ltd. LLC v. Huawei Techs.
 Co., 849 F.3d 1349, 1357-58 (Fed. Cir. 2017).
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 MYCO INDUSTRIES, INC.   v. BLEPHEX, LLC                   25



 consideration of what precisely is claimed in the claims of
 the ’718 patent. Vacating the court’s claim construction ne-
 cessitates that we also vacate the court’s finding regarding
 Myco’s likelihood of success on its non-infringement con-
 tentions. In turn, that requires that we vacate the court’s
 preliminary injunction with respect to BlephEx’s ability to
 make generalized allegations of infringement with respect
 to the’718 patent.
                      III. CONCLUSION
      Speech is not to be enjoined lightly. Here, there is not
 even a finding, let alone a finding supported by evidence
 and a correct view of the law, that the speech restrained
 was either false or misleading. The district court abused
 its discretion when it granted a preliminary injunction en-
 joining BlephEx from making allegations of patent in-
 fringement without a finding of bad faith and with no
 adequate basis to conclude that allegations of patent in-
 fringement would be false or misleading. It also abused its
 discretion in enjoining BlephEx from threatening Myco’s
 potential customers with litigation where there was not
 only no finding of bad faith but no evidence in the record
 that any such threats had even been made. We therefore
 reverse and vacate the district court’s preliminary injunc-
 tion, and remand.
      REVERSED, VACATED, AND REMANDED
                             COSTS
     No costs.
