Lazare Kaplan Int'l, Inc. v. Photoscribe Techs., Inc.
Addressing whether a lower court on remand can properly grant relief under Rule 60(b) if the beneficiary of the relief failed to file a cross-appeal in the earlier appeal, the U.S. Court of Appeals for the Federal Circuit reversed a lower court's decision to vacate an earlier judgment of no invalidity under Rule 60(b), finding such ruling unjustified because it would allow a movant to circumvent the cross-appeal rule. Lazare Kaplan Int'l, Inc. v. Photoscribe Techs., Inc., Case No. 12-1247 (Fed. Cir., Apr. 19, 2013) (Lourie, J.) (Dyk. J., dissenting).
Lazare Kaplan sued Photoscribe in district court for infringement of a patent relating to methods for making micro inscriptions on gemstones with lasers. Photoscribe counterclaimed for a declaration of invalidity. The district court's claim construction resulted in a finding that the claims at issue were not invalid and not infringed. Lazare Kaplan appealed the judgment of non-infringement, but Photoscribe did not appeal the judgment as to patent validity. The Federal Circuit broadened the district court's construction of a claim limitation, vacated the non-infringement judgment and remanded the case for determination of the infringement issue. The district court found that it would "make no sense" not to retry validity in view of the broadened claim construction and granted Photoscribe's Rule 60(b) motion to vacate the validity judgment.
On appeal, the Federal Circuit found that the district court abused its discretion in granting the Rule 60(b) relief because it conflicted with the cross-appeal rule which requires that a party, although successful in the overall outcome, must file a cross-appeal if it seeks to enlarge its right or lessen the rights of its adversary. According to the Court, reopening the prior judgment of validity lessened Lazare Kaplan's rights under the prior judgment and expanded those of Photoscribe. The Court found the close interrelation between invalidity and infringement irrelevant to its analysis because Photoscribe could have filed a conditional cross-appeal arguing the claims would be invalid if the Court broadened the construction of the claim limitation.
In dissent, Judge Dyk agreed with Photoscribe that claims must have the same meaning for purposes of both invalidity and infringement analyses. He maintained that Photoscribe was not required to file a conditional cross-appeal on validity when it agreed with the district court's judgment in full, citing the Supreme Court in Bohn and Bowen for support. In Judge Dyk's view, Photoscribe here was merely seeking to preserve rather than expand its right under the prior judgment. He noted that the majority identified no case in support of its position that a failure to file a contingent cross-appeal bars Rule 60(b) relief and the cases cited by the majority involved situations where the Rule 60(b) had lost entirely and failed to appeal.
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