       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                 ______________________

   MIKKELSEN GRAPHIC ENGINEERING, INC.,
              Plaintiff-Appellee,

                            v.

                ZUND AMERICA, INC.,
                  Defendant-Appellant.
                 ______________________

                       2012-1472
                 ______________________

   Appeal from the United States District Court for the
Eastern District of Wisconsin in No. 07-CV-0391, Judge
Lynn Adelman.
                 ______________________

                Decided: August 16, 2013
                ______________________

   PETER N. JANSSON, Jansson Shupe & Munger Ltd., of
Racine, Wisconsin, argued for plaintiff-appellee. With him
on the brief was MOLLY H. MCKINLEY. Of counsel was
ERIC VAN CAMPEN JANSSON.

    JAMES F. BOYLE, Boyle Fredrickson, S.C., of Milwau-
kee, Wisconsin, argued for defendant-appellant. With him
on the brief were JOHN P. FREDRICKSON and KYLE M.
COSTELLO.
                 ______________________
2           MIKKELSEN GRAPHIC ENGINEERING   v. ZUND AMERICA

        Before DYK, BRYSON, and WALLACH, Circuit Judges.
DYK, Circuit Judge.
    Plaintiff Mikkelsen Graphic Engineering, Inc.
(“MGE”) filed suit against defendant Zund America, Inc.
(“Zund”), asserting that Zund infringed U.S. Patent No.
6,619,168 (“the ’168 patent”) and U.S. Patent No.
6,672,187 (“the ’187 patent”). After claim construction,
MGE moved for summary judgment of infringement, and
Zund moved for summary judgment of non-infringement
and invalidity. The district court granted summary
judgment of infringement to MGE, and denied Zund’s
motion for summary judgment of invalidity. The district
court later determined that its earlier order had also
granted summary judgment of no invalidity to MGE, and
barred Zund from conducting further discovery on invalid-
ity and presenting an invalidity defense at trial. The court
granted MGE an injunction against infringing activity
and ordered a damages trial. Zund appealed. We con-
clude that we have jurisdiction only over the appeal from
the injunction. In that respect, we affirm the district
court’s claim construction and its grant of summary
judgment of infringement to MGE. However, we vacate
the district court’s sua sponte grant of summary judgment
of no invalidity, vacate the injunction, and remand for
further proceedings.
                       BACKGROUND
    In 2007, MGE filed suit in the Eastern District of
Wisconsin against Zund and its European affiliate, Zund
Systemtechnik, claiming that Zund’s graphics cutting
systems infringed the ’168 and ’187 patents, which are
owned by MGE. 1 The ’168 patent claims a method and



    1    MGE also alleged infringement by Zund’s Europe-
an affiliate, Zund Systemtechnik, and filed various state-
law claims against Zund and certain Zund employees.
The district court found that Zund Systemtechnik had not
MIKKELSEN GRAPHIC ENGINEERING   v. ZUND AMERICA           3

apparatus for automatically adjusting a graphics cutting
machine to compensate for a misaligned sheet of material.
This is accomplished by sensing pre-printed “registration
marks” and using those marks to determine the sheet’s
position and orientation. Representative claim 1 of the
’168 patent states:
   1. In a method for cutting a graphics area includ-
   ing graphics from a sheet of material bearing such
   graphics area and a plurality of registration
   marks in predetermined positions with respect
   thereto at the time the graphics are applied, a sub-
   set of the marks being initial-position/orientation-
   determining marks on no more than one side of
   the graphics area, the method being of a type in-
   cluding (a) placing the sheet of material on a
   sheet-receiving surface, (b) sensing the subset in a
   field of view of the main sensor to determine a po-
   sition and orientation of the sheet of material and
   approximate positions of the plurality of registra-
   tion marks at the time of cutting, (c) sensing pre-
   cise positions of the marks, and (d) cutting the
   graphics area from the sheet of material in re-
   sponse to the precise positions of the marks with
   respect to the graphics area at that time, the im-
   provement comprising:
       if the subset is not in an expected location,
       automatically determining a coordinate
       region of the subset on the sheet-receiving
       surface; and
       in response to determining the coordinate
       region of the subset, automatically reposi-



infringed, dismissed the state-law claims, and ordered
Zund Systemtechnik and the Zund employees dismissed
from the litigation. Zund Systemtechnik and the Zund
employees are not parties to this appeal.
4         MIKKELSEN GRAPHIC ENGINEERING     v. ZUND AMERICA

        tioning the main sensor to the coordinate
        region such that the subset is within the
        field of view of the main sensor
    whereby cutting occurs precisely despite two-
    dimensional distortion of the sheet of material
    prior to cutting.
’168 patent col. 9, ll. 7–31 (emphasis added).
    The ’187 patent similarly claims a method and appa-
ratus for determining a sheet’s position and orientation
and automatically adjusting the graphics cutter accord-
ingly, but it does so by sensing “reference features,” such
as edges and corners of the sheet:
    1. In a method for cutting at least one graphics
    area from a sheet of material bearing a combina-
    tion of such graphics area(s) and a plurality of reg-
    istration marks in predetermined positions with
    respect to the graphics area(s), such combination
    being in a predetermined approximate position
    and orientation with respect to a set of reference
    features of the sheet of material, the method in-
    cluding (a) placing the sheet of material on a
    sheet-receiving surface, (b) sensing precise posi-
    tions of the marks with a main sensor, and (c) cut-
    ting the graphics area(s) from the sheet of
    material in response to such precise positions, the
    improvement comprising:
        automatically determining whether the
        reference features are in an expected co-
        ordinate region on the sheet-receiving sur-
        face;
        if the reference features of the sheet of
        material are not in the expected coordi-
        nate region, automatically determining
        the coordinate region of the reference fea-
        tures on the sheet-receiving surface;
MIKKELSEN GRAPHIC ENGINEERING    v. ZUND AMERICA           5

        sensing metrics of the reference features
        to determine a position and orientation of
        the sheet of material; and
        inferring therefrom the approximate posi-
        tions of the registration marks.
’187 patent col. 9, ll. 36–56 (emphasis added).
    In 2009, the district court issued a Markman order
construing the relevant claims. Mikkelsen Graphic Eng’g,
Inc. v. Zund Am., Inc., No. 07-CV-0391 (E.D. Wis. Dec. 15,
2009). In particular, the district court construed the
language           “initial-position/orientation-determining
marks,” found in claims 1, 2, 3, and 9 of the ’168 patent, to
mean “unique marks that are distinguishable from ordi-
nary registration marks . . . designed specifically for use
in determining the initial position and orientation of the
sheet.” Id., slip op. at 12. The court construed “a set of
reference features of the sheet of material,” found in
claims 1, 13, 19, and 21 of the ’187 patent, to mean “edges,
corners and detectable graphical images within the
graphics area of the sheet.” Id., slip op. at 19.
    The parties then filed cross-motions for summary
judgment. MGE sought summary judgment of infringe-
ment. See 35 U.S.C. § 271(a), (b). MGE did not seek
summary judgment of no invalidity, although it did seek
partial summary judgment, on an assignor estoppel
theory, to preclude Zund from asserting an invalidity
defense. Zund in turn sought summary judgment of non-
infringement and invalidity, raising issues of anticipation
and on-sale bar under 35 U.S.C § 102(a) and (b), as well
as indefiniteness under 35 U.S.C § 112. Zund argued,
inter alia, that its systems did not infringe because they
used ordinary registration marks to determine the orien-
tation and position of sheets, and did not utilize distinct
“initial-position/orientation-determining marks” or “refer-
ence features” in performing this function. On the antici-
pation issue, Zund also argued that MGE’s claims were
invalid as anticipated by European Patent Application
6          MIKKELSEN GRAPHIC ENGINEERING    v. ZUND AMERICA

No. EP 0 704 283, which disclosed a prior art graphics
cutting system (“the Summagraphics system”). That
system was able to sense pre-printed marks and use them
to correct for misaligned sheets. Zund also submitted a
video showing a Summagraphics system performing the
claimed methods. Zund also argued that the ’187 patent’s
claims were invalid as indefinite because they were
overbroad and unsupported by the specification. Alt-
hough Zund had asserted an obviousness defense in its
answer, see Defendants Zund America, Inc., et al.’s An-
swer and Counterclaims at ¶ 110(b), Mikkelsen, No. 07-
CV-0391 (June 6, 2007), ECF No. 9, Zund did not seek
summary judgment on grounds of obviousness.
    In response, MGE argued that summary judgment of
invalidity was inappropriate because there were “at the
very least . . . genuine issues of material fact with respect
to asserted invalidity.” MGE’s Br. in Response to Defs.’
Patent-Related Summ. J. Mot., Etc. at 25–26, Mikkelsen,
No. 07-CV-0391 (Oct. 8, 2010), ECF No. 245. MGE stated
that the Summagraphics patent and video “d[id] not
create any basis for a ruling of invalidity,” id. at 27, that
Zund “ha[d] fallen far short of establishing that there is
no genuine issue of material fact regarding [Zund’s]
allegations of invalidity,” id. at 29, and that “summary
judgment of invalidity by the applicable clear-and-
convincing standard could [not] properly be granted,” id.
at 25–26. Despite MGE’s contention that the record did
not support summary judgment of invalidity, MGE did
not move for summary judgment of no invalidity. Id. at
38.
    The district court issued an order revising its claim
construction, denying Zund’s motions for summary judg-
ment of non-infringement and invalidity, and granting
MGE’s motion for summary judgment of direct infringe-
ment by Zund. Mikkelsen, No. 07-CV-0391, 2011 WL
1330782 (E.D. Wis. Apr. 7, 2011). The district court
explained that in its Markman order, with respect to the
’168 patent, it had erroneously assumed that a person
MIKKELSEN GRAPHIC ENGINEERING    v. ZUND AMERICA           7

with ordinary skill in the art would understand the
initial-position marks to be a unique type of mark distin-
guishable from other registration marks.            However,
“[h]aving become more familiar with the technology”
during the litigation, the district court had realized that:
    [the claimed] system can function properly with-
    out having the ability to make distinctions between
    initial-position/orientation-determining     marks
    and ordinary registration marks. For this reason,
    a person having ordinary skill in the art would not
    understand the ’168 claims to require the ability
    to make such distinctions.
Id. at *5 (emphasis added). In light of the revised con-
struction of the ’168 patent, Zund’s argument that its
software did not distinguish a unique set of initial-
position marks was “no longer relevant,” and the district
court concluded that Zund’s system directly infringed the
’168 patent. Id. at *6. With respect to the ’187 patent,
the district court appeared to assume that its original
claim construction also required unique reference fea-
tures; in its summary judgment order, the court deter-
mined that “reference features do not need to be unique,
and so any two registration marks could serve as a set of
reference features.” Id. at *8. Therefore, Zund’s system
directly infringed the ’187 patent as well. Id.
     The district court then turned to Zund’s invalidity ar-
guments. It concluded that the Summagraphics patent
application was not an anticipating prior art reference
because it failed to disclose a particular element of the
asserted claims, i.e., the function of inferring the approx-
imate location of registration marks or reference features
that are outside the initial field of view. Id. at *12.
Although Zund’s video depicted a Summagraphics system
performing this function, the video was filmed after the
critical date, and the district court concluded that for this
reason, it was not “prior art.” Therefore, “Zund has not
demonstrated that the ’168 and ’187 patents are invalid
due to the prior art.” Id. The district court also rejected
8         MIKKELSEN GRAPHIC ENGINEERING    v. ZUND AMERICA

Zund’s indefiniteness argument, and concluded that Zund
failed to develop an obviousness argument in its summary
judgment briefs, and thereby “forfeited” that argument.
Id. at *13 n.13.
    The district court entered partial summary judgment
for MGE on infringement and denied Zund’s motions for
summary judgment of non-infringement and invalidity.
Id. at *14–15. The district court found it unnecessary to
reach MGE’s assignor estoppel argument: “because I have
determined that Zund’s invalidity defenses fail as a
matter of law, I need not consider whether those defenses
also fail because of assignor estoppel. Therefore, MGE’s
motion for summary judgment regarding assignor estop-
pel is denied without prejudice.” Id. at *14.
    Soon after the entry of summary judgment, Zund
sought further discovery about the prior art Summa-
graphics system from the manufacturer of that system.
MGE objected, telling Zund that its invalidity defense had
been conclusively rejected in the April 2011 summary
judgment order, and that invalidity “[wa]s no longer
before the trial court.” Ex. 3 to MGE’s Mot. for Protective
Order and Br. in Supp. Thereof at 3, Mikkelsen, No. 07-
CV-0391 (May 24, 2011), ECF No. 270-3 (email from Peter
Jansson to James F. Boyle). Zund disputed MGE’s char-
acterization of the summary judgment order:
    [T]he most that can be said is that the court de-
    nied our motion for summary judgment with re-
    spect to invalidity. . . . A denial of summary
    judgment does not mean that the moving party is
    precluded from presenting additional evidence at
    trial.
Id. at 2 (email from James F. Boyle to Peter Jansson).
    Zund then moved for reconsideration of the summary
judgment order, urging the district court to return to its
original claim construction, or at least to give Zund “an
opportunity to conduct sufficient discovery so that it may
submit additional proof substantiating the Sum-
MIKKELSEN GRAPHIC ENGINEERING    v. ZUND AMERICA           9

ma[graphics] system as prior art against the ’168 and ’187
patents.” Defs’ Br. in Support of Mot. for Recons. of Apr.
7, 2011 Summ. J. Decision at 22, Mikkelsen, No. 07-CV-
0391 (May 24, 2011), ECF No. 269-1.
    MGE sought a protective order precluding further dis-
covery on invalidity, arguing that “the invalidity issue has
been resolved by the Court as a matter of law.” MGE’s
Mot. for Protective Order and Br. in Supp. Thereof at 2,
Mikkelsen, No. 07-CV-0391 (May 24, 2011), ECF No. 270.
The district court denied Zund’s motion seeking further
discovery and granted MGE’s motion for a protective
order:
   The court will not reconsider Zund’s invalidity ar-
   gument based on the Summagraphics prior art
   reference, and for this reason plaintiff’s motion for
   a protective order preventing additional discovery
   on this issue is GRANTED. Zund has already had
   a full and fair opportunity to gather and present
   evidence regarding this prior art defense and is
   not entitled to a second opportunity.
Court Minutes of Status Conference at 2, Mikkelsen, No.
07-CV-0391 (May 25, 2011), ECF No. 273 (internal cita-
tion omitted).
    Thereafter, Zund filed a motion in limine, arguing
that the denial of its motion for summary judgment
should not foreclose presentation of a defense based on
new evidence, because the “denial of summary judgment
d[id] not foreclose the issue for trial, but merely estab-
lished the existence of a genuine issue for trial.” Def. Br.
in Supp. of Mot. In Limine at 12, Mikkelsen, No. 07-CV-
0391 (Mar. 30, 2012), ECF No. 310 (internal quotation
marks omitted). Zund attached several exhibits to its
motion, including (1) a buyout lease quote provided in
1998 to Bruce Stranskov of American Laser Cut Grafix for
a Summagraphics 48’ plotter system, J.A. 419; (2) receipts
for the purchase of a “[u]sed Summa Sign Pro T1300
[v]inyl cutter” from Mr. Stranskov, J.A. 410–413; and (3)
10         MIKKELSEN GRAPHIC ENGINEERING   v. ZUND AMERICA

videos of the Summagraphics system purchased from Mr.
Stranskov performing the claimed functions, using soft-
ware available in 1997, see J.A. 406–08 ¶¶ 12–18. Zund
argued that this new evidence demonstrated that a Sum-
magraphics system which satisfied all elements required
by the court’s revised claim construction had been offered
for sale well before the critical date of MGE’s patents, and
stated that it could provide testimony to that effect. See
Def. Br. in Supp. of Mot. in Limine at 16–17.
     The district court denied Zund’s motion:
     Regarding Zund’s motion in limine, [the] court
     clarifies that grant of summary judgment to MGE
     included rejection of Zund’s invalidity defense
     based on prior art. Therefore, no evidence regard-
     ing prior art may be admitted at trial.
Court Minutes of Conference at 1, Mikkelsen, No. 07-CV-
0391 (June 11, 2012), ECF 346 (internal citation omitted);
see also J.A. 59 (Transcript of June 11, 2012 Status Con-
ference) (“I granted summary judgment to MGE on this
invalidity question. In the summary judgment order, I
granted summary judgment stating that Zund had in-
fringed the patents.”). The district court granted MGE
injunctive relief against further infringing activity, and
ordered a damages trial.
    On June 19, 2012, Zund appealed the district court’s
June 11, 2012 order granting injunctive relief, together
with the underlying April 11, 2011 summary judgment
order. The district court stayed the damages proceedings
pending appeal. We have jurisdiction over an appeal from
an order granting injunctive relief pursuant to 28 U.S.C.
§ 1292(a)(1). See Robert Bosch LLC v. Pylon Mfg. Corp.,
659 F.3d 1142, 1147 (Fed. Cir. 2011). 2



     2  MGE contends that, to the extent Zund seeks to
base its appeal on the theory that the April 11, 2011,
summary judgment order is a final determination of
MIKKELSEN GRAPHIC ENGINEERING    v. ZUND AMERICA          11




liability for purposes of 28 U.S.C. § 1292(c)(2), the contin-
ued pendency of MGE’s May 23, 2012 Rule 60(b) motion
means the order is not yet appealable, thereby depriving
us of jurisdiction. See Griggs v. Provident Consumer
Discount Co., 459 U.S. 56, 60–61 (1982). MGE’s Rule
60(b) motion sought relief from the portion of the April 11,
2011, summary judgment order rejecting MGE’s in-
fringement claims against Zund’s European affiliate Zund
Systemtechnik and dismissing it from the case. We agree
with MGE that because the district court refused MGE’s
requests to enter judgment for purposes of appeal, there is
as yet no final judgment in this case with respect to the
issue of liability.
    However, we agree with Zund that we have jurisdic-
tion as to the appeal from the injunction. This court
previously denied MGE’s motion to dismiss for lack of
jurisdiction, finding that we had jurisdiction to hear
Zund’s appeal from the entry of injunctive relief. See
Mikkelsen Graphic Eng’g, Inc. v. Zund Am., Inc., No.
2012-1472 (Fed. Cir. Nov. 2, 2012). MGE now argues that
under the tolling rules stated in Federal Rule of Appellate
Procedure 4(a)(4)(A)(vi)–(B)(i), Zund’s notice of appeal was
not effective, because the 60(b) motion was never re-
solved. However, to the extent the pending Rule 60(b)
motion would prevent appeal of the subsequent injunction
order, we think it clear that the entry of the injunction
order implicitly denied the pending motion, at least as to
the injunction. See Dunn v. Truck World, Inc., 929 F.2d
311, 313 (7th Cir. 1991) (holding that entry of an appeal-
able judgment by the trial court “necessarily denies
pending motions and so starts the time for appeal”); see
also, e.g., Addington v. Farmer’s Elevator Mutual Ins. Co.,
650 F.2d 663, 666 (5th Cir. 1981) (“The denial of a motion
by the district court, although not formally expressed,
may be implied by the entry of final judgment . . . or of an
order inconsistent with the granting of the relief sought
12         MIKKELSEN GRAPHIC ENGINEERING    v. ZUND AMERICA

                        DISCUSSION
                              I
    Zund first argues that the district court’s revised
claim construction was erroneous, and the district court
improperly granted summary judgment of infringement to
MGE. Claim construction is a matter of law which we
review de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d
1448, 1451 (Fed. Cir. 1998). We also review a district
court’s grant of summary judgment de novo. Ethicon
Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309,
1315 (Fed. Cir. 1998).
     The only claim construction issues raised on appeal
concern      the   “initial-position/orientation-determining
marks” language of the ’168 patent, and the language
concerning “reference features” in the ’187 patent. Ac-
cording to Zund, “initial-position/orientation-determining
marks” are a subset of registration marks that are unique
and visually distinguishable from ordinary registration
marks. However, neither the word “unique” nor the word
“distinguishable” is used in the asserted claims of the ’168
patent to describe initial-position marks. Rather, the
claims make clear that the initial-position marks are
those registration marks which perform a required func-
tion, i.e., conveying information about the position and
orientation of the sheet of material. See ’168 patent col. 9,
ll. 14–15.




by the motion.”). We reject MGE’s argument that Zund
somehow lacks standing to appeal the injunction order.
    Because we have jurisdiction over the appeal from the
injunction order, and both appeals present the same
issues, our lack of jurisdiction over the appeal from the
April 11, 2011, summary judgment order has no practical
effect.
MIKKELSEN GRAPHIC ENGINEERING     v. ZUND AMERICA          13

     While Zund points to a single instance of the word
“unique” in the ’168 patent’s specification, the cited pas-
sage simply mentions one possible embodiment having
“more      than     one   subset    of     unique     initial-
position/orientation-determining marks.” See ’168 patent
col. 6 ll. 30–33. Neither this passage nor any other lan-
guage in the specification requires that the initial-position
marks be visually distinguishable from other registration
marks. Zund also points to Figure 2, which depicts two
large, conspicuous initial-position marks and a plurality
of smaller registration marks. But it is well established
that “particular embodiments appearing in the specifica-
tion will not generally be read into the claims.” Specialty
Composites v. Cabot Corp., 845 F.2d 981, 987 (Fed. Cir.
1988). The use of a specific embodiment for illustrative
purposes does not impliedly exclude other embodiments.
See, e.g., Virginia Panel Corp. v. MAC Panel Co., 133 F.3d
860, 866 (Fed. Cir. 1997) (holding that it was “unsound” to
“rel[y] on the absence of a drawing” showing devices with
non-linearly moving plates as a justification to limit the
claims to devices having “purely linear[ly]” moving
plates).
    Nor is there any basis here for inferring that the pa-
tentee intended to limit the claims to the illustrated
embodiments. The specification states that the “descrip-
tions [of the illustrated embodiments] are made only by
way of example and are not intended to limit the scope of
the invention,” ’168 patent col. 9 ll. 3–5, and it is hardly
surprising that Figure 2 would depict an embodiment
with conspicuous, readily identifiable initial-position
marks as an example of “a sheet . . . including [initial-
position] marks,” see id. col. 5 ll. 29–31. Finally, Zund
concedes that the prosecution history of the patents is
“particularly uninformative” with respect to the construc-
tion of the disputed claim language. Appellant’s Br. at 28,
52. In sum, there is no intrinsic evidence to warrant, or
even support, the imposition of Zund’s narrowing con-
struction on the plain language of the ’168 patent’s
claims.
14         MIKKELSEN GRAPHIC ENGINEERING     v. ZUND AMERICA

     With respect to the ’187 patent, Zund argues that “a
set of reference features of the sheet material” means a
set of physical features like edges or corners, not a set of
pre-printed registration marks. But there is no support
in the claims or specification for such a narrow construc-
tion. The claims do not define “reference features,” and
the specification cuts the other way, stating that the
“metrics” of a given reference feature, see ’187 patent col.
4, ll. 66–67, which are used to infer the position and
orientation of the sheet, “might include, among other
things, certain geometric descriptors of shapes, positions,
and orientations of graphical images within the graphics
area itself,” id. col. 5, ll. 12–14 (emphasis added); see also
id. col. 8 ll. 57–59 (“FIG. 9B illustrates a different set 51
of reference features comprised of certain features of
graphics area 42a and a corner of sheet 40.”) (emphasis
added). These passages unequivocally state that printed
graphics can be used as reference features. Zund identi-
fies no language that restricts the use of printed graphics
as reference features in such a way as to exclude pre-
printed registration marks.
    For the reasons already discussed with respect to the
’168 patent, the illustrations in the ’187 patent, which
depict the use of edges or corners as reference features, do
not impliedly limit the scope of the claims to exclude the
use of registration marks. See, e.g., ’187 patent fig. 3.
    Because the district court’s constructions are support-
ed by the plain language of the claims and specification,
we affirm its constructions of the disputed language in
both patents. Because Zund’s non-infringement argu-
ments rest solely on the premise that the district court’s
constructions were erroneous, we also affirm the district
court’s grant of summary judgment of infringement to
MGE.
                              II
    Zund next argues that the district court improperly
precluded it from conducting discovery with respect to its
MIKKELSEN GRAPHIC ENGINEERING    v. ZUND AMERICA          15

invalidity defense, and from presenting that defense at
trial. The district court ruled that the “grant of summary
judgment to MGE included rejection of Zund’s invalidity
defense based on prior art.” Court Minutes of Conference
at 1. The district court apparently viewed this order as
disposing of Zund’s other invalidity defenses as well. The
problem is that MGE never moved for summary judgment
on the issue of invalidity. MGE only moved for summary
judgment of infringement on the question of whether
Zund’s accused systems were within the asserted claims,
and did not request summary judgment on the merits of
the validity issue. Although MGE opposed Zund’s motion
for summary judgment of invalidity, it did so by arguing
that if assignor estoppel did not apply, there was a dis-
pute of material fact as to the issue of invalidity.
    As Supreme Court precedent and our own cases estab-
lish, “patent infringement and patent validity are treated
as separate issues.” Pandrol, USA v. Airboss Ry Prods.,
Inc., 320 F.3d 1354, 1364 (Fed. Cir. 2003). A patentee’s
motion for summary judgment of infringement does not
implicitly include a motion on the issue of invalidity, and
“an alleged infringer’s failure to raise [an invalidity
defense] in opposition to a motion for summary judgment
of infringement is not a waiver [of that defense].” Id. at
1365.
     Nor can the district court’s motion be sustained as a
sua sponte grant of summary judgment of no invalidity.
It is well established that a district court has “the power
to enter summary judgment sua sponte, so long as the
losing party was on notice that she had to come forward
with all of her evidence.” Int’l Vis. Corp. v. Crown Metal
Mfg. Co., 991 F.2d 768, 770 (Fed Cir. 1993) (per curiam)
(quoting Celotex Corp. v. Catrett, 477 U.S. 317, 326
(1986)); see also Fed. R. Civ. P. 56(f) (“After giving notice
and a reasonable time to respond, the court may: (1) grant
summary judgment for a nonmovant; (2) grant the motion
on grounds not raised by a party . . . ”). Thus, “if the case
is one appropriate for the entry of summary judgment, the
16         MIKKELSEN GRAPHIC ENGINEERING     v. ZUND AMERICA

fact that it may be granted on a ground different from
that specified in the motion therefor does not warrant the
disturbing of the judgment on appeal.” Broderick Wood
Prods. Co. v. United States, 195 F.2d 433, 436 (10th Cir.
1952); see also, e.g., Ware v. Trailer Mart, Inc., 623 F.2d
1150, 1154 (6th Cir. 1980).
    However, grants of summary judgment to a non-
moving party are generally disfavored, because they risk
depriving a losing party of adequate notice and opportuni-
ty to oppose summary judgment. That is why Federal
Rule 56(f) provides that district courts may enter judg-
ment only “[a]fter giving notice and a reasonable time to
respond.” Fed. R. Civ. P. 56(f). If the court believes a
non-moving party that has not filed a cross-motion for
summary judgment on a particular issue is nonetheless
entitled to judgment on that issue, “great care must be
exercised to assure that the original movant has had an
adequate opportunity to show that there is a genuine
issue and that the opponent is not entitled to judgment as
a matter of law.” 10A Wright & Miller, Fed. Prac. & Proc.
§ 2720, at 353–54 (1998). If the court has “not provide[d]
the parties with adequate notice or an opportunity for
[the losing party] to present evidence and argument in
opposition to the motion,” granting summary judgment
sua sponte is inappropriate. Fin Control Sys. Pty v. Oam,
265 F.3d 1311, 1321 (Fed. Cir. 2001); see also Celotex, 477
U.S. at 326. Applying this principle, we have vacated a
grant of summary judgment of invalidity to an alleged
infringer, who had not moved for summary judgment on
that basis, because the infringer’s invalidity defenses
     were not the subject of any motion before the dis-
     trict court, nor d[id] the record indicate that these
     aspects of the case had been fully litigated at the
     time that the district court entered judgment.
     Therefore, the district court’s sua sponte grant of
     summary judgment of invalidity and unenforcea-
     bility was procedurally improper . . . .
Fin Control Sys., 265 F.3d at 1321.
MIKKELSEN GRAPHIC ENGINEERING    v. ZUND AMERICA           17

    Moreover, Zund, in moving for summary judgment on
invalidity, could have relied appropriately on the district
court’s original claim construction. Under the revised,
broader claim construction adopted in the summary
judgment order, Zund might have been able to advance
additional evidence of invalidity at the summary judg-
ment stage. Given the district court’s revision of its claim
construction, which we now affirm, it would be particular-
ly inappropriate to assume that Zund has had adequate
opportunity to oppose the sua sponte entry of summary
judgment on invalidity.
     It is also black letter law that the denial of a party’s
motion for summary judgment of invalidity is not suffi-
cient to justify a reciprocal grant of summary judgment of
no invalidity to the other party. “The fact that one party
fails to satisfy [its] burden on his own Rule 56 motion
does not automatically indicate that the opposing party
has satisfied his burden and should be granted summary
judgment on the other motion.” 10A Wright & Miller,
Fed. Prac. & Proc. § 2720, at 335 (1998). Our holding in
Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317,
1331–32 (Fed. Cir. 2009) is on point. In that case, patent-
ee Vita-Mix and alleged infringer Basic filed cross-
motions on validity. The district court denied Basic’s
motion because Basic provided “no evidence of invalidity.
For this reason the [district] court [also] granted sum-
mary judgment of no invalidity [to Vita-Mix].” Id. at
1331. We reversed and remanded, explaining that the
district court’s assessment of the merits of Basic’s failed
motion:
    provide[d] no reason to grant Vita-Mix’s summary
    judgment motion of no invalidity. . . . [A] district
    court cannot rely on its assessment of one party’s
    motion for summary judgment of invalidity when
    evaluating the other party’s motion for summary
    judgment of no invalidity.
Id. at 1332. The same reasoning applies here: the district
court’s denial of Zund’s motion for summary judgment of
18         MIKKELSEN GRAPHIC ENGINEERING    v. ZUND AMERICA

invalidity was not a sufficient reason to grant summary
judgment of no invalidity to MGE.
    MGE argues that Zund is nevertheless estopped from
presenting new evidence of invalidity because Zund
requested an inter partes reexamination of the ’168
patent. See 35 U.S.C. § 315(c) (2006). 3 However, at the
time Zund made the request, the statute limited inter
partes reexamination requests to arguments based on
prior art patents or printed publications, see 35 U.S.C.
§§ 301, 311 (2011); 37 C.F.R. § 1.915(b)(2) (2011), and the
resulting estoppel is similarly limited. Thus, MGE’s
statutory estoppel argument has limited relevance to
Zund’s assertion of invalidity in this case. We leave it to
the district court on remand to determine the preclusive
effect, if any, of section 315(c) on Zund’s invalidity argu-
ments.
    Finally, MGE suggests that a remand is inappropriate
because, as a matter of law, Zund’s new evidence of inva-


     3  Section 315(c) provided that in a civil suit, third-
party requestors would be
     estopped from asserting . . . the invalidity of any
     claim finally determined to be valid and patenta-
     ble on any ground which the third-party requester
     raised or could have raised during the inter partes
     reexamination proceedings. This subsection does
     not prevent the assertion of invalidity based on
     newly discovered prior art unavailable to the
     third-party requester and the Patent and Trade-
     mark Office at the time of the inter partes reex-
     amination proceedings.
35 U.S.C. § 315(c) (2006) (emphasis added). Section 315
was superseded by the statute that created inter partes
review. See Leahy-Smith America Invents Act, Pub. L.
No. 112-29, § 6(a), 125 Stat. 284, 299–304 (2011), codified
at 35 U.S.C. §§ 311–319.
MIKKELSEN GRAPHIC ENGINEERING      v. ZUND AMERICA         19

lidity is insufficient to raise a genuine issue of material
fact. This issue has not been addressed by the district
court, and we decline to address it for the first time on
appeal. In any event, Zund is entitled to appropriate
discovery on the invalidity issue in light of the district
court’s new claim construction, and in light of the fact
that the district court’s summary judgment order could
not resolve the issue without further proceedings.
    Because Zund did not have adequate notice or oppor-
tunity to oppose the district court’s grant of summary
judgment of no invalidity to MGE, we hold that summary
judgment on this issue was procedurally improper. Fed.
R. Civ. P. 56; see also Fin. Control Sys., 265 F.3d at 1321.
We therefore vacate the district court's entry of judgment
on Zund’s invalidity defenses, and remand for further
proceedings with respect to the issue of invalidity (i.e., on-
sale bar, anticipation, obviousness, and indefiniteness).
See Vita-Mix, 581 F.3d at 1331–32.
                        CONCLUSION
    In summary, we affirm the district court’s claim con-
struction and grant of summary judgment of infringement
to MGE. We vacate the district court’s grant of summary
judgment of no invalidity and the grant of injunctive
relief, and remand for further proceedings consistent with
this opinion.
     AFFIRMED-IN-PART, VACATED-IN-PART,
                    AND REMANDED
                           COSTS
    Costs to neither party.
