If Alleged Infringer Doesn’t Cross-Appeal Validity of Narrowly Interpreted Claim, He May Not Challenge Validity of Later Broadly Construed Claim

Sadao Kinashi | May 8, 2013

Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc.,

April 19, 2013

Panel: Lourie, Dyk and Reyna.  Opinion by Lourie.  Dissent by Dyk.


Based on narrow claim construction, the district court issued a prior judgment that patent claims were valid but not infringed either literally or under the doctrine of equivalents.  Lazare Kaplan (Patentee) appealed the judgment of non-infringement.  But Photoscribe (Alleged Infringer) did not cross-appeal the judgment of validity.  On appeal, CAFC broadly interpreted the claims and vacated the judgments of no infringement.  The issue of infringement was remanded to the district court.

On remand, Photoscribe moved for summary judgment of invalidity based on the CAFC’s broad claim construction, and moved for relief from the district court’s prior judgment of validity under Rule 60(b).  The district court granted both of Photoscribe’s motions.  Lazare Kaplan appealed.  CAFC reversed both district court decisions holding that the district court abused its discretion by granting relief under Rule 60(b).

地裁は、先の判決で、クレームを狭く解釈し、特許クレームは有効だが、侵害はないと判決した。特許権者Lazare Kaplan社は非侵害判決を不服として控訴したが、被疑侵害者Photoscribe社は、特許有効の判決に関して控訴しなかった。控訴審でCAFCはクレームを広く解釈し、非侵害判決を破棄し、地裁に差戻した。



Lazare Kaplan owns US patent 6,476,351 (‘351 patent), which claims methods and systems to make microinscriptions on gemstones using lasers.  Lazare Kaplan sued Photoscribe for infringement of patents including the ‘351 patent.  Photoscribe filed counterclaims seeking declarations of invalidity.

Claims 1 and 7 of the ‘351 patent were at issue in this case. Claim 1 recites as follows:

1. A method of microinscribing a gemstone with laser energy from a pulse laser energy source, focused by an optical system on the workpiece, comprising the steps of:

mounting a gemstone in a mounting system;

directing the focused  laser energy onto a desired portion of the gemstone;

imaging the gemstone from at least one vantage point;

receiving marking instructions as at least one input; and

controlling the directing of the focused laser energy based on the marking instructions and the imaging, to selectively generate a marking on the gemstone based on the instructions.

Claim 7 recites a corresponding system claim with a similar final limitation.

The district court construed these “controlling the directing” limitations in the claims as follows: “controlling is based on the marking instructions generated by the operator of the machine, and automatic feedback derived from optical images of the gemstone during the laser burn process.”  Finding that the accused machines did not use automatic feedback derived during the laser burn process, the district court granted summary judgment of no literal infringement of the claims.  The jury found that Photoscribe did not infringe under the doctrine of equivalents.

The district court issued a final judgment that the claims were not invalid and not infringed, either literally or under the doctrine of equivalents.  Lazare Kaplan appealed the judgment of non-infringement.  But Photoscribe did not appeal the judgment that the claims were valid.

In that prior appeal, CAFC construed that the “controlling the directing” includes control based on either automated or manual feedback derived from optical images of a gemstone, before or during the laser burn process. CAFC vacated both the summary judgment of no literal infringement and the jury verdict of non-infringement under the doctrine of equivalents, as both were based on the district court’s erroneous construction. The issue of infringement was remanded to the district court.

On remand, Lazare Kaplan argued that only infringement should be retried, but not validity.  Photoscribe responded that both infringement and validity were at issue because of the broadened claim construction.  The district court agreed with Photoscribe because the validity decision of the jury in the first trial was on the basis of a claim construction which was reversed.

Photoscribe later moved for summary judgment of invalidity of claims 1 and 7, while Lazare Kaplan moved for summary judgment of infringement.  Photoscribe also moved under Rule 60(b) for relief from the district court’s prior judgment finding the claims not invalid.   Rule 60(b) provides, in relevant part, as follows:

(b) Grounds for Relief from a Final Judgment, Order, or Proceeding. On motion and just terms, the court may relieve a party . . . from a final judgment, order, or proceeding for the following reasons:

[(1) to (4) omitted.]

(5) the judgment . . . is based on an earlier judgment that has been reversed or vacated; or applying it prospectively is no longer equitable; or

(6) any other reason that justifies relief.

Lazare Kaplan argued that the cross-appeal rule should have barred reopening the prior judgment on validity because Photoscribe sought to lessen the rights of Lazare Kaplan under that prior judgment but failed to file a cross-appeal.  Lazare Kaplan also asserted that the cross-appeal rule has no equitable exceptions permitting the relief granted by the district court.

Photoscribe responded that prior CAFC decisions permitted the district court to address validity on remand.  Photoscribe also asserted that the granted relief was proper under either Rule 60(b)(5) or 60(b)(6).  The district court granted both of Photoscribe’s motions and denied Lazare Kaplan’s motion.

CAFC Decision

CAFC agreed with Lazare Kaplan and concluded that the district court erred by allowing Photoscribe to address invalidity on remand despite its failure to cross-appeal the adverse final judgment on validity.

CAFC noted that it is irrelevant whether or not the concepts of invalidity and infringement are “closely interrelated,” but the relevant issue is whether a ruling reversing the validity holding would expand Photoscribe’s rights or lessen Lazare Kaplan’s rights.

Then CAFC found that a holding of invalidity would extend beyond the determination that Photoscribe’s machines do not infringe the claims of the patent.   CAFC responded to Photescribe and the district court as follows:

Photoscribe asserts that it should be excused from failing to appeal because it could not have known the issues to raise in a cross-appeal. Photoscribe acknowledges, however, the importance of the “controlling the directing” limitations to both infringement and validity.  Claim construction is crucial to any analysis of validity over prior art.  . . . .  In addition, the district court’s construction of those limitations provided the sole basis for summary judgment of no literal infringement.  . . . . After Lazare Kaplan II, Photoscribe could have filed a conditional cross-appeal arguing that the asserted claims of the ‘351 patent would be invalid if we broadened the construction of the “controlling the directing” limitations. The outcome of the claim construction issues would have determined whether that conditional cross-appeal was reached.

We recognize the logic of the district court’s decision to entertain the validity challenge on remand in light of the broadened claim construction by this court, based on which the district court stated that it “makes no sense” not to.  After all, a new claim construction potentially raises new validity issues. Nonetheless, rules are rules, and the cross-appeal rule is firmly established in our law. The district court thus erred in relying on Rule 60(b) as a substitute for a cross-appeal.

CAFC held that the district court abused its discretion by granting relief under Rule 60(b), and reversed that ruling. CAFC also vacated the finding of invalidity, and remanded the case with instructions to reinstate the original judgment on validity.


Judge Dyk stated as follows:

No principle of patent law is better established than that “claims must be interpreted and given the same meaning for purposes of both validity and infringement analyses.” The majority declines to enforce that basic stricture, allowing 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. The majority reverses the district court’s effort to eliminate this inconsistency through Federal Rule of Civil Procedure 60(b)(5).

He also noted:

The majority’s sole reason for finding Rule 60(b) relief unavailable is the well-established rule that Rule 60(b) cannot be used as a substitute for an appeal.  The majority appears to hold that the accused infringer cannot secure Rule 60(b) relief because it is attempting to use Rule 60(b) as a substitute for a contingent cross-appeal. But the majority identifies no case holding that a failure to file a contingent cross-appeal bars Rule 60(b) relief.  Rather, the cases cited by the majority involved situations in which the Rule 60(b) movant had lost entirely and failed to appeal.


A party should file a cross-appeal on every issue which might become relevant when district decision is reversed even if satisfied in the overall outcome in the district court.

Is it good policy for the court to encourage (or force) to cross-appeal every adverse judgment for preventive purpose even if the party is generally satisfied with the outcome of the lower court?

Full Opinion

Patent At Issue

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