May 2013

Spotlight Info

In Lazare Kaplan International, Inc. v. Photoscribe Technologies, Inc., No. 12-1247 (Fed. Cir. Apr. 19, 2013), the Federal Circuit reversed the district court’s grant of relief under Fed. R. Civ. P. 60(b), vacated the finding of invalidity, and remanded with instructions to reinstate its original judgment of validity and assess infringement.  Initially, the district court determined that the asserted claims were not invalid and not infringed.  In that first appeal, the Federal Circuit modified the construction of certain claim terms, vacated the finding of infringement, and remanded the infringement issues to the district court for determination based on the modified claim construction.  On remand, the district court found U.S. Patent No. 6,476,351 invalid, deciding to retry validity as well as infringement because the validity judgment in the first trial was based on a claim construction that the Federal Circuit had reversed.  In the instant appeal, the Federal Circuit reversed the district court’s determination of invalidity, among other things, because Photoscribe Technologies, Inc. had failed to file a cross-appeal during the first appeal.  In reaching this conclusion, the Court emphasized the Supreme Court’s long-standing recognition of the cross-appeal rule as “inveterate and certain” by reiterating that “[a]pplication of the [cross-appeal] rule promotes orderly functioning of the appellate courts by providing ‘notice of issues to be litigated and encouraging repose of those that are not.’”  Slip op. at 7 (quoting El Paso Natural Gas Co. v. Neztsosie, 526 U.S. 473, 481-82 (1999)).  See this month’s edition of Last Month at the Federal Circuit for a full summary of this decision.