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`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`LAZARE KAPLAN INTERNATIONAL, INC.,
` Plaintiff-Appellant,
`
` v.
`
` GEMOLOGICAL INSTITUTE OF AMERICA AND
`PHOTOSCRIBE TECHNOLOGIES, INC.,
` Defendants-Appellees.
`______________________
`
`2012-1247
`______________________
`
`Appeal from the United States District Court for the
`Southern District of New York in No. 06-CV-4005, Judge
`Thomas P. Griesa.
`______________________
`
`JUDGMENT
`______________________
`
`THIS CAUSE HAVING BEEN HEARD AND CONSIDERED, IT IS
`
`ORDERED AND ADJUDGED:
`
`
`REVERSED IN PART, VACATED IN PART,
`AND REMANDED
`
`ENTERED BY ORDER OF THE COURT
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`April 19, 2013
`
` Date
`
`
`
`
`
`
`
`
`
`
`
`
` /s/ Jan Horbaly
`
`
` Jan Horbaly
`
`
`
`
` Clerk
`
`IPR2015-00024
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`Lazare Kaplan International, Inc. Exhibit 2032 Page 1
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`United States Court of Appeals
`for the Federal Circuit
`______________________
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`LAZARE KAPLAN INTERNATIONAL, INC.,
` Plaintiff-Appellant,
`
` v.
`
` PHOTOSCRIBE TECHNOLOGIES, INC. AND
`GEMOLOGICAL INSTITUTE OF AMERICA,
` Defendants-Appellees.
`______________________
`
`2012-1247
`______________________
`
`Appeal from the United States District Court for the
`
`Southern District of New York in No. 06-CV-4005, Judge
`Thomas P. Griesa.
`______________________
`
`Decided: April 19, 2013
`______________________
`
`DEANNE E. MAYNARD, Morrison & Foerster, LLP, of
`Washington, DC, argued for plaintiff-appellant. With her
`on the brief were MARC A. HEARRON and NATALIE R. RAM;
`HAROLD J. MCELHINNY, of San Francisco, California;
`JAMES E. HOUGH, of New York, New York.
`
`JOHN ALLCOCK, DLA Piper, LLP, of San Diego, Cali-
`fornia, argued for defendants-appellees. With him on the
`brief were NANCY O. DIX and STANLEY J. PANIKOWSKI. Of
`counsel was JOHN DAVID KINTON.
`
`IPR2015-00024
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` LAZARE KAPLAN INT’L, INC. v. PHOTOSCRIBE TECHS., INC.
`______________________
`
`Before LOURIE, DYK, and REYNA, Circuit Judges.
`
` Opinion for the court filed by Circuit Judge LOURIE.
`
` Dissenting opinion filed by Circuit Judge DYK.
`
`LOURIE, Circuit Judge.
`
`Lazare Kaplan International, Inc. (“Lazare Kaplan”)
`appeals from the order of the United States District Court
`for the Southern District of New York granting summary
`judgment of invalidity of claims 1 and 7 of U.S. Patent
`6,476,351 (the “’351 patent”) and granting a motion under
`Federal Rule of Civil Procedure 60(b) filed by Photoscribe
`Technologies, Inc. and the Gemological Institute of Amer-
`ica (collectively “Photoscribe”) seeking to vacate the
`district court’s prior judgment finding the same claims not
`invalid. Lazare Kaplan Int’l, Inc. v. Photoscribe Techs.,
`Inc., No. 06 Civ. 4005 (TPG), 2012 WL 505742, at *14
`(S.D.N.Y. Feb. 15, 2012) (“Lazare Kaplan IV”). Lazare
`Kaplan requests that, if remanded, the case be reassigned
`to a different judge. For the reasons set forth below, we
`reverse the grant of relief under Rule 60(b), vacate the
`finding of invalidity with instructions to reinstate the
`original judgment of “not invalid,” and decline the request
`to reassign.
`
`BACKGROUND
`Lazare Kaplan owns the ’351 patent, which claims
`
`methods and systems for using lasers to make microin-
`scriptions on gemstones. In 2006, Lazare Kaplan brought
`suit for infringement of two patents, including the ’351
`patent, against Photoscribe in the United States District
`Court for the Southern District of New York. In response,
`Photoscribe filed counterclaims seeking declarations of
`invalidity.
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`IPR2015-00024
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` Only claims 1 and 7 of the ’351 patent are at issue in
`this appeal. Claim 1 recites a method of microinscribing a
`gemstone, with the final limitation requiring “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 instruc-
`tions.” ’351 patent col.26 ll.62–65. Claim 7 recites a
`corresponding system claim with a similar final limita-
`tion. See id. col.27 ll.17–35. The district court construed
`these “controlling the directing” limitations in claims 1
`and 7 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.” Lazare Kaplan
`Int’l, Inc. v. Photoscribe Techs., Inc., No. 06 Civ. 4005
`(TPG), 2008 WL 355605, at *1 (S.D.N.Y. Feb. 5, 2008)
`(“Lazare Kaplan I”). Finding that the accused machines
`did not use automatic feedback derived during the laser
`burn process, the district court granted summary judg-
`ment of no literal infringement of claims 1 and 7. Id. The
`district court found that disputed issues of fact precluded
`summary judgment of infringement under the doctrine of
`equivalents. Id.
`
`After a trial held in 2008, the jury returned a verdict
`that Photoscribe did not infringe claims 1 or 7 under the
`doctrine of equivalents. Lazare Kaplan Int’l, Inc. v.
`Photoscribe Techs., Inc., No. 06 Civ. 4005 (TPG), slip op.
`at 3 (S.D.N.Y. Jan. 22, 2009) (“Lazare Kaplan II”). The
`district court then issued a final judgment that claims 1
`and 7 were not invalid and not infringed, either literally
`or under the doctrine of equivalents. Id. at 4 ¶¶ 1, 2, 5.
`Lazare Kaplan filed a notice of appeal from the judgment
`of noninfringement. Photoscribe, however, did not file a
`notice of appeal from the judgment that the asserted
`claims were not invalid.
`
`In that prior appeal, we broadened the district court’s
`construction of the “controlling the directing” limitations,
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`finding that those limitations “include control based on
`either automated or manual feedback derived from optical
`images of a gemstone, before or during the laser burn
`process.” Lazare Kaplan Int’l, Inc. v. Photoscribe Techs.,
`Inc., 628 F.3d 1359, 1369 (Fed. Cir. 2010) (“Lazare Kaplan
`III”). We vacated both the grant of summary judgment of
`no literal infringement and the jury verdict of nonin-
`fringement under the doctrine of equivalents, as both
`were based on the district court’s erroneous construction.
`Id. at 1370. In addition, we explicitly remanded the issue
`of infringement to the district court because we could not
`“determine with any certainty that the accused machines
`infringe the asserted claims under this new construction.”
`Id.
` On remand, the district court held a case manage-
`ment conference, in which Lazare Kaplan argued that
`only infringement should be retried, not validity. Lazare
`Kaplan IV, 2012 WL 505742, at *4. Photoscribe respond-
`ed that both infringement and validity were at issue
`because of the broadened claim construction. Id. The
`district court agreed with Photoscribe, stating, “we are
`going to retry it on validity, because the validity decision
`of the jury in the first trial was on the basis of a claim
`construction which the Court of Appeals has reversed.”
`Id. The court stated that it “makes no sense” to do other-
`wise. Id. Photoscribe later moved for summary judgment
`of invalidity of claims 1 and 7, while Lazare Kaplan
`moved for summary judgment of infringement. Id. at *1.
`Photoscribe also moved under Rule 60(b) for relief from
`the district court’s prior judgment, in Lazare Kaplan II,
`finding the claims not invalid. Id. The district court
`granted both of Photoscribe’s motions and denied Lazare
`Kaplan’s motion as moot. Id. at *14.
`
`Lazare Kaplan timely appealed from the district
`court’s rulings. We have jurisdiction under 28 U.S.C. §
`1295(a)(1).
`
`IPR2015-00024
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` LAZARE KAPLAN INT’L, INC. v. PHOTOSCRIBE TECHS., INC.
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`DISCUSSION
`I. REOPENING VALIDITY IN THE PRIOR REMAND
` When reviewing a ruling under Rule 60(b),1 we gener-
`ally defer to the law of the regional circuit in which the
`district court sits, here the Second Circuit, because that
`rule is procedural in nature and not unique to patent law.
`See, e.g., Louisville Bedding Co. v. Pillowtex Corp., 455
`F.3d 1377, 1379–81 (Fed. Cir. 2006) (applying Sixth
`Circuit law to review a ruling on a Rule 60(b) motion);
`Univ. of W. Va., Bd. of Trs. v. VanVoorhies, 342 F.3d 1290,
`1294 (Fed. Cir. 2003) (applying Fourth Circuit law); Engel
`Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1384 (Fed.
`Cir. 1999) (applying Eighth Circuit law); Amstar Corp. v.
`Envirotech Corp., 823 F.2d 1538, 1550 (Fed. Cir. 1987)
`(applying Tenth Circuit law). We do not accord such
`deference, however, when a district court’s ruling under
`Rule 60(b) turns on substantive issues unique to patent
`law. See, e.g., Fiskars, Inc. v. Hunt Mfg. Co., 279 F.3d
`1378, 1381 (Fed. Cir. 2002) (“[T]he issue before us—
`whether a lost profits damages award should be set aside
`because post-trial sales data may show the acceptability
`of a non-infringing alternative product—turns on a sub-
`stantive area of patent law.”); Broyhill Furniture Indus.,
`Inc. v. Craftmaster Furniture Corp., 12 F.3d 1080, 1083
`(Fed. Cir. 1993) (“The issues before us are whether a
`consent judgment enjoining infringement of a patent
`should be set aside pursuant to certain subsections of
`Rule 60(b) following a judicial determination that the
`
`1 Rule 60(b) provides, in relevant part, as follows:
`“On motion and just terms, the court may relieve a party
`or its legal representative from a final judgment, order, or
`proceeding for the following reasons: . . . (5) the judgment
`. . . is based on an earlier judgment that has been re-
`versed or vacated . . . ; or (6) any other reason that justi-
`fies relief.”
`
`IPR2015-00024
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`patent was procured through inequitable conduct in the
`[U.S. Patent and Trademark Office].”).
` Here, the issue is whether, on remand, a district court
`may reopen a prior final judgment as to patent validity,
`not appealed by either party, based on a claim construc-
`tion modified by this court. Because this issue requires
`consistent and uniform application by district courts when
`handling patent cases, we resolve it as an issue of the law
`of this court. Fiskars, 279 F.3d at 1381; Broyhill, 12 F.3d
`at 1083. We find persuasive, however, certain decisions of
`our sister circuits, particularly the Second Circuit, on
`issues relevant to this appeal. Broyhill, 12 F.3d at 1083
`n.1.
` We review a district court’s ruling under Rule 60(b)
`for an abuse of discretion. Browder v. Dir., Ill. Dept. of
`Corrections, 434 U.S. 257, 263 n.7 (1978). An abuse of
`discretion exists “when the trial court’s decision is clearly
`unreasonable, arbitrary or fanciful, or is based on clearly
`erroneous findings of fact or erroneous conclusions of
`law.” Fiskars, 279 F.3d at 1382 (citing Cybor Corp. v.
`FAS Techs., Inc., 138 F.3d 1448, 1460 (Fed. Cir. 1998) (en
`banc)).
`
`It 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. El
`Paso Natural Gas Co. v. Neztsosie, 526 U.S. 473, 479
`(1999) (“Absent a cross-appeal, an appellee . . . may not
`‘attack the decree with a view either to enlarging his own
`rights thereunder or of lessening the rights of his adver-
`sary.’”) (quoting United States v. Am. Ry. Express Co., 265
`U.S. 425, 435 (1924)); see also Bailey v. Dart Container
`Corp. of Mich., 292 F.3d 1360, 1362 (Fed. Cir. 2002) (“It is
`only necessary and appropriate to file a cross-appeal
`when a party seeks to enlarge its own rights under the
`judgment or to lessen the rights of its adversary under the
`
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`judgment.”). The Supreme Court has long recognized this
`cross-appeal rule as “inveterate and certain,” Morley
`Constr. Co v. Md. Cas. Co., 300 U.S. 185, 191 (1937), and
`the rule’s application has been noted since the Court’s
`earliest years, McDonough v. Dannery, 3 U.S. 188, 198
`(1796). See Greenlaw v. United States, 554 U.S. 237, 244–
`45 (2008); El Paso, 526 U.S. at 479. Application of the
`rule promotes orderly functioning of the appellate courts
`by providing “notice of issues to be litigated and encourag-
`ing repose of those that are not.” El Paso, 526 U.S. at
`481–82.
` Not long after the creation of this court, we clarified
`the application of the cross-appeal rule in Radio Steel &
`Manufacturing Co. v. MTD Products, Inc., 731 F.2d 840
`(Fed. Cir. 1984). In that case, the district court found the
`asserted claims not invalid and not infringed, with the
`patent owner appealing from the judgment of nonin-
`fringement, but with the alleged infringer taking no cross-
`appeal. Radio Steel, 731 F.2d at 842–43. Acknowledging
`lack of uniformity in the prior practice of the regional
`circuits on whether a cross-appeal must be filed by a
`similarly situated alleged infringer arguing invalidity, we
`set forth our current rule: “[A] party will not be permitted
`to argue before us an issue on which it has lost and on
`which it has not appealed, where the result of acceptance
`of its argument would be reversal or modification of the
`judgment rather than affirmance.” Id. at 844.
` More recently, we applied the cross-appeal rule in
`Odetics, Inc. v. Storage Technology Corp., 185 F.3d 1259
`(Fed. Cir. 1999). Prior to the first of two appeals in that
`litigation, the district court entered judgment that the
`asserted claims were not invalid and not infringed.
`Odetics, Inc. v. Storage Tech. Corp., Nos. 96-1261, -1301,
`1997 WL 357598, at *2 (Fed. Cir. June 25, 1997). In the
`first appeal, we broadened the construction of a claim
`term and remanded to assess infringement under the new
`construction. Id. at *5, *7. Because the alleged infringer
`
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`had failed to file a cross-appeal, we declined to address
`certain invalidity arguments. Id. at *6 (citing Radio
`Steel, 731 F.2d at 844). Following remand, in which the
`district court found the invalidity arguments barred, the
`alleged infringer filed a cross-appeal. Odetics, 185 F.3d at
`1263. In the second appeal, we affirmed the district
`court’s decision not to address invalidity, finding that, by
`failing to file a cross-appeal from the distinct judgment of
`“not invalid” after the first trial, the alleged infringer was
`precluded from further raising the issue. Id. at 1275.
`
`In both Odetics and Radio Steel, we highlighted the
`distinctness of the judgments of “not infringed” and “not
`invalid.” Odetics, 185 F.3d at 1275; Radio Steel, 731 F.2d
`at 843. Here, the district court found that “[i]n this case,
`the issues of invalidity and infringement cannot be said to
`be distinct; they are closely interrelated.” Lazare Kaplan
`IV, 2012 WL 505742, at *9. The district court concluded
`that, because the issues of validity and infringement
`“cannot be said to be distinct, it was not necessary for
`defendants to appeal the validity issue in order for the
`court to hear the issue on remand.” Id. Based on that
`reasoning, the district court granted relief under Rule
`60(b).
`
`Lazare Kaplan argues that the cross-appeal rule
`should have barred reopening the prior judgment on
`validity because Photoscribe seeks to lessen the rights of
`Lazare Kaplan under that prior judgment but failed to file
`a cross-appeal. In addition, Lazare Kaplan asserts that
`the cross-appeal rule has no equitable exceptions permit-
`ting the relief granted by the district court. Photoscribe
`responds that prior decisions of this court permitted the
`district court to address validity on remand. Further,
`Photoscribe asserts that the granted relief was proper
`under either Rule 60(b)(5) or 60(b)(6).
` We agree with Lazare Kaplan and conclude that the
`district court erred by allowing Photoscribe to address
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`validity on remand despite its failure to file a cross-appeal
`from the adverse final judgment on validity in Lazare
`Kaplan II.
`
`The cross-appeal rule is normally applied not by
`district courts, but by appellate courts to assess the
`availability of arguments before those tribunals. See, e.g.,
`El Paso, 526 U.S. at 479–82. To the extent that the cross-
`appeal rule can be applied to preclude certain arguments
`in a district court on remand after a failure to file a cross-
`appeal, however, we find the district court’s application to
`be in error. Whether or not the concepts of invalidity and
`infringement are “closely interrelated” is irrelevant; the
`relevant issue is whether a ruling reversing the validity
`holding would expand Photoscribe’s rights or lessen
`Lazare Kaplan’s rights. It certainly would, as a holding of
`invalidity would extend beyond the determination that
`Photoscribe’s accused machines do not infringe the as-
`serted claims of the ’351 patent. Indeed, no accused
`products can be found liable for infringement of an invalid
`claim. See Medtronic, Inc. v. Cardiac Pacemakers, Inc.,
`721 F.2d 1563, 1583 (Fed. Cir. 1983) (“[A]n invalid claim
`cannot give rise to liability for infringement . . . .”).
`
`Both before the district court and in this appeal,
`Photoscribe has sought relief under Rule 60(b)(5) and
`60(b)(6), although the district court did not specify which
`section of Rule 60(b) provided the basis for its ruling.
`Lazare Kaplan IV, 2012 WL 505742, at *8–9.
`
`The Second Circuit has stated that “Rule 60 of the
`Federal Rules of Civil Procedure prescribes procedures by
`which a party may seek relief from a final judgment.”
`House v. Sec’y of Health & Human Servs., 688 F.2d 7, 9
`(2d Cir. 1982). Rule 60(b)(5) provides, in relevant part,
`that a district court “may relieve a party . . . from a final
`judgment, order, or proceeding” that “is based on an
`earlier judgment that has been reversed or vacated.”
`Under Rule 60(b)(6), a district court may relieve a party
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`from a final judgment for “any other reason that justifies
`relief.” The Second Circuit has characterized Rule
`60(b)(6) as a “grand reservoir of equitable power to do
`justice in a particular case,” but cautioned that the “res-
`ervoir is not bottomless.” Stevens v. Miller, 676 F.3d 62,
`67 (2d Cir. 2012). Relief under this provision has long
`been limited to “extraordinary circumstances.” Acker-
`mann v. United States, 340 U.S. 193, 199 (1950); see also
`CTS Corp. v. Piher Int’l Corp., 727 F.2d 1550, 1555 (Fed.
`Cir. 1984) (“Unless exceptional or extraordinary circum-
`stances are shown, a Rule 60(b)(6) motion is generally not
`granted.”).
` Under the facts presented here, we conclude that Rule
`60(b) cannot provide the relief granted by the district
`court. As the language of the rule indicates, any relief
`provided by a district court is discretionary. See Fed. R.
`Civ. P. 60(b) (“On motion and just terms, the court may
`relieve a party or its legal representative from a final
`judgment, order, or proceeding for the following reasons . .
`. .”) (emphasis added); see also Stevens, 676 F.3d at 67
`(“The decision whether to grant a party’s Rule 60(b)
`motion is committed to the ‘sound discretion’ of the dis-
`trict court.”). Both the cross-appeal rule and Rule 60(b),
`however, share a common underlying rationale of promot-
`ing repose. See El Paso, 526 U.S. at 481–82 (noting that
`the cross-appeal rule puts “opposing parties and appellate
`courts on notice of the issues to be litigated and encour-
`ag[es] repose of those that are not”); House, 688 F.2d at 9
`(“Properly applied, [Rule 60(b)] preserves a balance
`between serving the ends of justice and ensuring that
`litigation reaches an end within a finite period of time.”).
` When the potential outcomes of applying Rule 60(b)
`and the cross-appeal rule conflict, failure to steadfastly
`apply the cross-appeal rule invites unjustified relief under
`Rule 60(b), thereby undermining the common repose
`rationale underlying both of those rules. Moreover, it
`would allow a movant to circumvent the cross-appeal rule
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`in a manner contrary to its well-established history. See
`El Paso, 526 U.S. at 480 (“[I]n more than two centuries of
`repeatedly endorsing the cross-appeal requirement, not a
`single one of our holdings has ever recognized an excep-
`tion to the rule.”).
`
`Photoscribe does not argue that any factors precluded
`it from appealing from the adverse judgment on validity
`in Lazare Kaplan II. Instead, Photoscribe asserts that the
`possibility that a different claim construction could be
`applied to assessing validity and infringement inherently
`presents an “extraordinary circumstance.” Appellee Br.
`22. The cases cited by Photoscribe, however, do not
`involve Rule 60(b)(6), and only recite the familiar axiom
`that “claims are construed the same way for both invalidi-
`ty and infringement.” Id. at 21 (quoting Amgen Inc. v.
`Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed.
`Cir. 2003)). That axiom, however, does not trump the
`Federal Rules or the cross-appeal rule, and cannot save
`Photoscribe from its deliberate decision not to file a cross-
`appeal from an adverse judgment. See El Paso, 526 U.S.
`at 480. Moreover, reversal of a claim construction is
`hardly an “extraordinary circumstance.”
`
`In similar situations, in which a movant under Rule
`60(b)(6) made a deliberate choice not to appeal or to
`pursue a particular litigation strategy, courts have found
`relief unwarranted. For example, in Ackermann v. United
`States, 340 U.S. 193, 194–95 (1950), the Supreme Court
`addressed whether the Fifth Circuit properly affirmed
`denial of the Ackermanns’ motion under Rule 60(b)(6)
`seeking to vacate a district court’s judgment cancelling
`their certificates of naturalization. After entry of judg-
`ment, a co-defendant appealed while the Ackermanns did
`not. Id. at 195. The Fifth Circuit reversed the judgment
`against the co-defendant, and the Ackermanns sought
`relief. Id. The Supreme Court affirmed the denial of
`relief, noting that Ackermann “made a considered choice
`not to appeal” and that he “cannot be relieved of such a
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` LAZARE KAPLAN INT’L, INC. v. PHOTOSCRIBE TECHS., INC.
`choice because hindsight seems to indicate to him that his
`decision not to appeal was probably wrong.” Id. at 198;
`see also Cruickshank & Co. v. Dutchess Shipping Co., 805
`F.2d 465, 468 (2d Cir. 1986) (“Failure to properly assess
`the risks and potential gains of taking an appeal is not an
`extraordinary circumstance that would justify relief under
`rule 60(b)(6).”); House, 688 F.2d at 10 (noting that revers-
`ing the grant of relief under Rule 60(b)(6) was “particular-
`ly appropriate” where the movant could have appealed
`but did not); Rinieri v. News Syndicate Co., 385 F.2d 818,
`823 (2d Cir. 1967) (reversing the grant of relief under
`Rule 60(b)(6) where the movant chose not to appeal or
`present reasons for not prosecuting his prior claim);
`Whiteleather v. United States, 264 F.2d 861, 863 (6th Cir.
`1959) (“Rule 60(b)(6) . . . has no application to a case such
`as this, where a defendant is represented by counsel, is
`not deprived of the opportunity of appealing from an
`adverse judgment, and voluntarily for reasons of his own
`elects not to appeal.”); see also Fiskars, 279 F.3d at 1383
`(finding Rule 60(b)(6) did not apply, in part, because the
`alleged infringer could have put on its best available
`evidence of noninfringing alternatives but “apparently
`chose not to do so”).
`
`Photoscribe asserts that two decisions of this court
`support the requested relief, aside from the application of
`Rule 60(b). See Cardiac Pacemakers, Inc. v. St. Jude
`Med., Inc., 576 F.3d 1348, 1355–57 (Fed. Cir. 2009) (en
`banc); Exxon Chem. Patents, Inc. v. Lubrizol Corp., 137
`F.3d 1475, 1477–79 (Fed. Cir. 1998). We disagree. Both
`of those decisions involve the mandate rule—a concept
`relating to, but distinct from, the cross-appeal rule. The
`mandate rule dictates that “an appellate mandate governs
`only that which was actually decided.” Exxon, 137 F.3d at
`1478. Photoscribe seeks to broaden this rule in arguing
`that, because we did not address validity in Lazare
`Kaplan III, that issue must have been eligible for review
`on remand. That interpretation, however, would enable
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`appellees to revive any issue not addressed in an appel-
`late decision, thereby rendering nugatory the cross-appeal
`rule. Indeed, here, the reason validity was not addressed
`in Lazare Kaplan III was that Photoscribe failed to file a
`cross-appeal from the judgment adverse to it. For these
`reasons, we see no conflict between the decisions concern-
`ing the mandate rule relied on by Photoscribe and those
`concerning the cross-appeal rule discussed above.
`
`In addition, 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 validi-
`ty. Claim construction is crucial to any analysis of validi-
`ty over prior art. Photoscribe admits that “the sole basis
`of [Lazare Kaplan’s] challenge to the noninfringement
`judgment was the construction of ‘controlling the direct-
`ing.’” Appellee Br. 17–18. Photoscribe also admitted that
`those limitations were “the only disputed claim element
`for anticipation” by one of the alleged prior art machines.
`Id. at 18–19. In addition, the district court’s construction
`of those limitations provided the sole basis for summary
`judgment of no literal infringement. Lazare Kaplan I,
`2008 WL 355605, at *1. With such focus on those limita-
`tions, the issues relevant to Lazare Kaplan’s then-
`upcoming appeal—and any cross-appeal potentially filed
`by Photoscribe—were apparent. 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 “control-
`ling the directing” limitations. The outcome of the claim
`construction issues would have determined whether that
`conditional cross-appeal was reached. See Power Mosfet
`Techs., Inc. v. Siemens AG, 378 F.3d 1396, 1414 n.3 (Fed.
`Cir. 2004).
` We recognize the logic of the district court’s decision
`to entertain the validity challenge on remand in light of
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`the broadened claim construction by this court, based on
`which the district court stated that it “makes no sense”
`not to. Lazare Kaplan IV, 2012 WL 505742, at *4. 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. See Stevens, 676 F.3d at 67
`(“In no circumstances . . . may a party use a Rule 60(b)
`motion as a substitute for an appeal it failed to take in a
`timely fashion.”); see also Cruickshank, 805 F.2d at 468
`(“Having failed to appeal, movants cannot achieve the
`same result under the guise of a rule 60(b)(5) motion.”);
`Rinieri, 385 F.2d at 822 (“[Rule 60(b)(6)] is not to be used
`as a substitute for appeal when appeal would have been
`proper . . . .”); 11 Charles A. Wright et al., Federal Prac-
`tice and Procedure § 2851 (3d ed. 1998).
`
`Because the district court abused its discretion by
`granting relief under Rule 60(b), we reverse that ruling.
`We also vacate the finding of invalidity, and remand with
`instructions to reinstate the original judgment on validity.
`II. PENDING ISSUES ON REMAND
`Lazare Kaplan requests this court to enter judgment
`
`on the issue of infringement. We cannot do so. See Gold-
`en Bridge Tech., Inc. v. Nokia, Inc., 527 F.3d 1318, 1323
`(Fed. Cir. 2008) (“Appellate courts review district court
`judgments; we do not find facts.”). In Lazare Kaplan III,
`we instructed the district court to assess infringement on
`remand because “we cannot determine with any certainty
`that the accused machines infringe the asserted claims
`under this new construction.” Lazare Kaplan III, 628
`F.3d at 1370. On remand, the district court made no
`findings of fact as to infringement under the revised
`construction and instead dismissed Lazare Kaplan’s
`motion for summary judgment of infringement as moot.
`Lazare Kaplan IV, 2012 WL 505742, at