In Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc., No. 2012-1247 (Fed. Cir. April 19, 2013), the Federal Circuit reversed the district court’s grant of relief under Federal Rule of Civil Procedure 60(b) and vacated the district court’s finding of invalidity of the patent-in-suit with instructions to reinstate the original judgment that the patent is “not invalid” because, on remand with new claim constructions, a district court may not reopen a prior final judgment as to patent validity not appealed by either party. The Federal Circuit reiterated that “[i]t is well-settled that a party must file a cross-appeal if, although successful in the overall outcome in the district court, the party seeks, on appeal, to lessen the rights of its adversary or to enlarge its own rights.” The determination of whether the cross-appeal rule applies is “whether a ruling reversing the validity holding would expand [the alleged infringer’s] rights or lessen [the patentee’s] rights;” it is irrelevant whether the concepts of invalidity and infringement are “closely related.” A holding of patent invalidity certainly expands the alleged infringer’s rights and any finding of infringement, literal or under the doctrine of equivalents, becomes moot. The Federal Circuit recognized the rationale behind the district court’s reopening the issue of invalidity in light of the broadened claim constructions by the Federal Circuit, but restated that ”rules are rules, and the crossappeal rule is firmly established in our law.” Judge Dyk dissented stating that the majority’s decision “allow[s] the patentee to assert infringement on a broad claim construction while permitting it to defend against invalidity using a different and far narrower claim construction,” allowing claims to carry different meanings for purposes of validity and infringement, which is forbidden.
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A court cannot reopen a prior final judgment of patent validity not appealed if the new claim constructions enlarged the infringer or lessened the patentee’s rights
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