Judgment of Invalidity Prevents Cross-Appeal for Claims of Non-Infringement

Therasense, Inc. v. Beckton, Dickinson and Co., No. 2009-1008, -1009, -1010, -1034, -1035, -1036, -1037 (Fed. Cir. Jan. 25, 2010)

Holding:

Having obtained a judgment of invalidity as to all of the asserted claims, the accused infringer has no basis for a cross-appeal as to either (1) additional claims for invalidity or (2) claims of non-infringement. Slip op. at 18.

Relevant Facts:

The patentee appealed the judgment of invalidity based on an erroneous jury instruction. Slip op. at 6. Although the Federal Circuit agreed that certain instructions regarding anticipation were legally incorrect, it found that the errors had no prejudicial effect because the asserted claims were obvious. Id. at 17. The accused infringer crossed appealed the jury’s finding of infringement, but the Federal Circuit ruled that the cross-appeal was improper. Id. at 18.

Comments:

Note that the Federal Circuit explained when the cross-appeal is improper:

As our decision in Bailey v. Dart Container Corp. of Michigan, 292 F.3d 1360 (Fed. Cir. 2002), makes clear, “[i]t 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 judgment.” Id. at 1362. Thus, a cross-appeal is proper only when “acceptance of the argument it wishes to advance would result in a reversal or modification of the judgment rather than an affirmance.” Id. “Where, as here, the district court has entered a judgment of invalidity as to all of the asserted claims, there is no basis for a cross-appeal as to either (1) additional claims for invalidity or (2) claims of non-infringement.” TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1157 (Fed. Cir. 2004) (emphasis added).

Slip op. at 18 (note: due to formatting issues, original underlines have been replaced with italics.).