United States: Conditional Cross-Appeal Challenging Claim Construction Not Permitted

A party who prevails on a judgment of non-infringement has no right to file a conditional cross-appeal seeking review of claim construction rulings in the event of reversal of the judgment of non-infringement. That was the holding of the U.S. Court of Appeals for the Federal Circuit in Nautilus Group, Inc. v. ICON Health and Fitness, Inc., Case. No. 05-1603 (Fed. Cir. Feb. 15, 2006) (per curiam) (Newman, J.; dissenting).

Nautilus appealed from the district court’s judgment in favor of ICON’s counterclaim for non-infringement, and ICON filed a cross-appeal seeking conditional review of certain unappealed terms in the district court’s claim construction decision in the event of a reversal of the judgment. Nautilus moved to dismiss the cross-appeal.

The Federal Circuit dismissed the cross-appeal, holding it improper. Finding ICON’s cross-appeal identical to the cross-appeal it dismissed in Bailey v. Dart Container Corp., the Court applied the principles of that case and explained that an appellee can present all arguments supported by the record and advanced in the trial court in support of the judgment, even those particular arguments that were rejected or ignored by the trial court. Thus, an appellee may make arguments regarding claim construction that would result in affirmation of the judgment of non-infringement. The Court noted that allowing a cross-appeal in such a case unnecessarily expands the amount of briefing that is otherwise allowed and gives the appellee an unfair opportunity to file the final brief and have the final oral argument, which is contrary to established rules.

In dissent, Judge Newman explained the issues of ICON’s cross-appeal related to claim terms whose construction was not relied on in the appealed judgment, yet these terms would become the law of the case if the Court should reverse or vacate the judgment and remand for trial. Judge Newman stated ICON’s cross-appeal comports with the ruling in Bailey that states a cross-appeal is unnecessary unless it seeks to enlarge or lessen rights under the judgment on appeal. Accordingly, Judge Newman pointed out that a conditional cross-appeal would avoid a trial on remand proceeding on a potentially incorrect claim construction.

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