# United States **Court of Appeals**  **for the Federal Circuit**

______________________ REMBRANDT VISION TECHNOLOGIES, L.P., Plaintiff

- Appellant

v.

JOHNSON & JOHNSON VI SION CARE, INC., Defendant

- Appellee

______________________

2015

- 1079

______________________ Appeal from the United States District Court for the Middle District of Florida in No. 3:11

- cv

- 00819

- TJC

- JRK, Judge Timothy J. Corrigan.

______________________
Decided: April 7, 2016

______________________

E RIC J OHN M AGNUSON , Robins Kaplan LLP, Minnea polis, MN, argued for pla i ntiff

- appellant. Also represented by R ONALD J AMES S CHUTZ , J ACOB M. H OLDREITH , B RENDA L. J OLY , J AMIE R. K URTZ , R YAN M ICHAEL S CHULTZ

.

G REGORY D ISKANT , Patterson Belknap Webb & Tyler LLP, New York, NY

, argued for defendant

- appellee. Also represented by E UGENE M. G ELERNTER ; T IMOTHY J OSEPH B ARRON , S R ., Jenner & Block LLP, Chicago, IL ; C HARLES D AVISON H OFFMANN , H offmann Marshall Strong LLP, New York, NY.

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VISION CARE 2

Before D YK , M OORE , and S TOLL , Circuit Judges. Opinion for the court filed by Circuit Judge S TOLL

. Dissenting opinion filed by Circuit Judge D YK

. S TOLL , Circuit Judge

. Rem brandt Vision Technologies, L.P. (“Rembrandt”) appeals from the district court’s denial of Rembrandt’s motion for a new trial under Federal Rule s of Civil Proc edure 60(b) (2) and (3) . Because the district court abused its discretion in denying Rem brandt’s Rule 60(b)(3) m otion , we reverse and remand for a new trial

. B ACKGROUND
This case returns to us following an unusual set of circumstances

. Rembrandt sued Johnson & Johnson Vision Care, Inc. (“JJVC”), alleging that its Acuvue A dvance ® and Oas ys ® contact lenses infring ed the asserted clai m of U.S. Patent No. 5,712,327

. At trial, the parties disputed whether JJVC’s accused lenses met the “surface layer” and “soft” limitations of the as serted claim . Follo wing trial, the jury returned a verdict of noninfringement

. T he district court, in the alternative, granted judgment as a matter of law that Rembrandt failed to prove that the accused lenses were “soft.” Rembrandt Vision Techs., L.P. v. Johnson & Johnson Vision Care, Inc. ( JMOL Order )

, 282 F.R.D. 655, 668 (M.D. Fla . 2012). We affirmed the district court’s grant of JMOL

. Rembrandt Vision Techs., L.P. v. Johnson & Johnson Vision Care, Inc. ( Re mbrandt I ) , 725 F.3d 1377 (Fed. Cir. 2013).
At trial, Rembrandt relied on expert testimony from Dr. Thomas Beebe to prove t hat the accused lenses met both the “surface layer” and “soft” claim limi tations. During his direct examination regarding the “soft” limit ation , Dr. Beebe presented test results to show that the accused lenses met t his limitation

. During cross

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examinatio n, however, Dr. Beebe drastically changed his testimony regarding the testing methodology he used

. Because his testimony on cross -examination significantly conflicted with both his testimony during his direct exa mination and the testing methodology dis closed in his expert report, the district court ultimately struck Dr. Beebe’s trial testimony regarding this testing

. After noting that Dr. Beebe’s stricken testimony was the only evidence that Rembrandt advanced to prove the accused lenses were “soft” in opposing JJVC’s motion, the district court granted JMOL that JJVC did not infringe. JMOL Order , 282 F.R.D. at 668.
In turn, JJVC relied on expert testimony from Dr. Christopher Bielawski to support its position that its accused lenses did not meet the “surface layer” limitation, but did not present expert testimony with respect to the “soft” limitation. During the course of his trial testimony, Dr. Bielawski took advantage of several opportunities to impugn Dr. Beebe’s credibility. For example, Dr. Bielawski described Dr. Beebe’s failure to correct allegedly incorrect data as “misleadi ng and tantamount to dishonesty. ” Joint Appendix (“ J.A

. ”) 4683. JJVC also capitalized on Dr. Beebe’s changing testimony. During his closing argument, JJVC’s counsel urged that “[y]ou should not trust Dr. Beebe, and you should throw out his testimony, not in part, but in whole. You should not trust Dr. Beebe.” J.A . 5159

. After trial, Rembrandt received information sugges ting that Dr. Bielawski testified falsely at trial. Although the district court denied Rembrandt’s request for post

trial discovery, Rembrandt received much of the discovery it sought from Dr. Bielawski’s employer, the University of Texas, through an open records request and state courtREMBRANDT VISION TEC HS ., L

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litigation. I n light of that discovery, t he parties do not dispute that Dr. Bielawski testified falsely during trial. 1 Specifically, Dr. Bielawski repeatedly testified that he personally conducted X- ray photoelectron spectroscopy ( “XPS”) and time -of- flight secondary ion mass spectrom etry (“TOF -SIMS”) laboratory testing on JJVC’s ac cused lenses when, in fact

, the testing was conducted by Dr. Bielawski’s graduate students and various lab supe rvisors

. The post

- trial discovery suggests that Dr. Bielawski was not even in the country when some of the testing was done. Moreover, t he po st- trial discovery suggests that Dr. Bielawski overstated his qualifications and experience with the se testing methodologies

. Wher eas Dr. Bielawski was presented to the jury as an expert in TOF

- SIMS testing

, he act ua lly “had no T OF- SIMS exper ience whats eover.” J.A. 5437

. As such

, for the purpose of considering the Rule 60(b) motions, the district court “assume[d]

. . . that Dr. Bielawski testified falsely when he said that h e personally performed

. . . tests, and about his qualifications as an expert in performing those tests.” Rembrandt Vision Techs., L.P. v. Johnson & Johnson Vision Care, Inc. ( Rule 60 Order )

, 300 F.R.D. 694, 698 (M.D. Fla. 2014)

. In addition to showing Dr. Bielawski’s false testim ony, the post

- trial discovery revealed that Dr. Bielawski withheld test results and data analysis that w ould have undermined his opinions and trial testimony. In partic ular, Dr. Bielawski withheld data from test s conducted on t hird

- party contact lenses previously found to infringe the

1 Because perjury is a crime and Dr. Bielawski is not a party to t his litigation, we express no opinion as to whether Dr. Bielawksi committed perjury. Instead, we accept, for the purpose of deciding this case, the parties’ and district court’s conclusion that Dr. Bielawski testified falsely at trial.REMBRANDT VISION TEC HS ., L

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asserted claim

. JJVC provided the samples of these lenses to Dr. Bielawski and requested that he perform “any initial setup experiments” on the third

- party lenses in order to “satisfy[] himself wi th respect to the proper investigational techniques to be used on contact lenses.” J.A . 557 6

. The test results generated in response to JJVC’s request were not produced before trial , and JJVC claims that it was unaware that any data had been ge nerated. Had these test results been produced to Re mbrandt, they would have show n that the infringing lenses do not have a surface coating of about 20 nanometers

, undermining Dr. Bielawski’s testimony at trial

. Specifically, Dr. Bielawski testified at trial withou t contradiction about the differences between JJVC’s accused lenses and the infringing third

- party lenses , explaining that the infringing lenses “have a surface coating that [is] about 20 nanometers,” J.A. 4697, whereas JJVC’s accused lenses do not. JJVC’ s counsel emphasized Dr. Bielawski’s test imony on this point as proof of noninfringement during closing argument : And guess what, this point 20 is not picked out of thin air

. It’s exactly what happens when you look at the [infringing third

- party] lens.

J.A. 5142

. In light of this post

- trial discovery, Rembrandt moved for a new trial under Rules 60(b)(2) and (3) , which state: On motion and just terms, the court may relieve a party . . . from a final judgment . . . for the follo wing reasons: . . . (2) newly discovered evidence, that with reasonable diligence, could not have been discovered in time to move to a new trial u nder Rule 59(b); [or] (3) fraud ( whether previously called intrinsic or extrinsic), misrepresentation, or misconduct by an opposing party

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Following a lengthy hearing on the issue, the district court denied Rembrandt’s motion. With little discussion,
t he district court dismissed Rembrandt’s arg ument that the withheld documents prevented it from fully and fairly presenting its case. The district court thus limited its analysis to Dr. Bielawski’s false tes timony. The district court concluded that Rembrandt was not entitled to a new trial under R ule 60(b)(2) because Rembrandt had not satisfied the requirement in the Eleventh Circuit that a new trial would probably produce a new result

. And it concluded that Rembrandt was not entitled to a new trial under Rule 60(b)(3) because JJVC’s counsel was n ot complicit in the false testimony and because Rembrandt was not prevented from fully and fairly presenting its

case. Rembrandt then renewed its motion to reopen discovery into JJVC’s awareness of Dr. Bielawski’s mi sconduct, but the district court denied that motion too.
Rembrandt appeal s . We have jurisdiction under 28 U.S.C. § 1295(a)(1).

D ISCUSSION We review procedural questions such as the district court’s denial of a Rule 60(b) motion under the law of the regional circuit, here the Eleventh Circuit. Amado v. Microsoft Corp. , 517 F.3d 1353, 1357 (Fed. Cir. 2008). The Eleventh Circuit reviews district court decisions on Rule 60(b) motions for an abuse of discretion. Griffin v. Swim

- Tech Corp. , 722 F.2d 677, 680 (11th Cir. 1984). Under Eleventh Circuit law, the district court abuse s its discretion if it : (1) applies an incorrect legal standard ; (2) follows improper procedures in making the determination ; or (3) makes findings of fact that are clearly erroneous. Morgan v. Family Dollar Stores, Inc.

, 5 51 F.3d 1233, 1260 (11th Cir. 2008).

We first consider Rembrandt’s motion for a new trial under Rule 60(b)(3) , which permits a district court to grant a new trial in cases involving “fraud (whetherREMBRANDT VISION TEC HS ., L

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previously called intrinsic or extrinsic), misrepresent ation, or misconduct by an opposing party.” Fed. R. Civ. P

. 60(b)(3). To prevail on a motion under Rule 60(b)(3) in the Eleventh Circuit, the movant must establish that: (1 ) the adverse party engaged in fraud or other misco nduct ; and (2) this conduct prevented the moving party from fully and fairly presenting its case. Harre v. A.H. Robins Co. , 750 F.2d 1501 , 1503 (11th Cir. 1985)

, vacated in part on other grounds , 866 F.2d 1303 (11th Cir. 1989)

. Proof that the result of the case w oul d have been differe nt but for the fraud or misconduct is not required; instead, Rule 60(b)(3) “ is aimed at judgments which were unfairly obtained, not at those which are factually incorrect.” Rozier v. Ford Motor Co. , 573 F.2d 1332, 1339 (5th Cir. 1978) 2 (internal citations omitted); see also Wilson v. Thompson , 638 F.2d 801, 804 (5th Cir. 1981) (“We reco gnize that a party moving under R ule 60(b)(3) may prevail without showing that the alleged fraud affected the outcome of the prior trial.”).

I.

We start with the easier question of whether Re mbrandt had a full and fair opportunity to present its case given Dr. Bielawski’s false testimony and withholding of relevant documents

. In denying Rembrandt’s motion under Rule 60(b)(3), the district court concluded that “even accounting for Dr. Bielawski’s misconduct, Re mbrandt was not prevented from making its case,” and explained that this holds true “even without considering that JJVC was entitled to judgment as a matter of law because Rembrandt failed to present evidence on an essential element of its case.” Rule 60 Order , 300 F.R.D.
at 701 & n.9. The district court also summarily dismissed

2 Fifth Circuit pr ecedent prior to September 30, 1981 is binding on the Eleventh Circuit. Bonner v. City of Pritchard , 661 F.2d 1206, 1209 (11th Cir. 1981).REMBRANDT VISION TEC HS ., L

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Rembrandt’s argument that it was prevented from fully and fairly presenting its case due to the withheld doc uments as “murky at best.” Id. at 697 n.1. We conclude that the district court clearly erred in finding that Re mbrandt had a full and fair opportunity to present its infringement case.

Dr. Bielawski testified on a central infringement issue at trial

— whether JJVC’s ac cused lenses met the “surface layer” claim limitation. In doing so, he testified falsely about his personal involvement in the testing, as well as his experience with the relevant testing methodologies. [A8] He also withheld contradictory test results o n third

party lenses known to infringe and generated at the request of JJVC’s counsel

. Because the se test results were not produced

, Dr. Bielawski testified without co ntradiction about alleged differences between the accused lenses and the third

- party lenses to show that the accused lenses did not have the claimed surface layer . JJVC’s counsel emphasized these differences as proof of noni nfringement in his closing argument. In addition, Dr. Bielawski and JJVC’s counsel seized several opport unities to impugn the credibility of Dr. Beebe, but the jury never heard that Dr. Bielawski had presented false test imony

. Under these circumstances, we cannot agree with the district court that this conduct did not prevent Re mbran d t from fully and fairly presenting its infringement

case. The verdict was irretrievabl y tainted by Dr

. Bielawski’s false testimony and Dr. Bielawski’s and JJVC’s withholding of relevant documents. While we do not know the exact impact the false testimony would have had on the jury, the false testimony may well have been critical to the noninfringement verdict and the jury may well have been impacted upon learning that Dr. Bielawski committed an act at least as egregious as Dr. Beebe’s.

JJVC and the dissent nonetheless assert that the di strict court did not abuse its discretion , relying on a r ationale different from that of the district court

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Specifically, JJVC argues that Rembrandt had a full and fair trial because Dr. Bielawski did not testify regarding the “soft” limitation and Rembrandt cannot show that the false testimony and improperly withheld documents resulted in substantial impairment of its ability to pr esent its case on the “soft” limitation

. We are not co nvinced by JJVC’s argument

. The district court granted JMOL , not because of the merits of JJVC’s noninfringment position, but because its exclusion of Dr. Beebe’s unreliable testimony compelled that result. T he district court judge acknowledged that he
may well have responded differently had he been aware at the time o f Dr. Bielawski’s false testimony. During the hearing regarding the Rule 60 motions, he explained:
I guess my problem with it is – is that – or my query is that – I don’t think I – I'm not sure I would have gotten to that place [of granting judgment as a matter of law] – or I sure – I may have gotten to that place differently – or I may – something different may have happened if I had known at the time – Dr. Beebe’s shortcomings came out during the trial. And they were obvious and – and I made my ru lin g based on what I saw, noting, also

, that as I r ecall it you were able to, with the jury, take great advantage of his implosion. And so you kind of got – you kind of got a double whammy. You got me ruling as a matter of law to strike his testimony. But you also got to argue to the jury that – that one of their experts had – was unworthy of any credence. And so you got to do all that because Dr. Beebe’s malfeasance came out during the trial. August 2, 2013 Motion H earing, J.A . 7 4 40

– 41. In the order denying Rembrandt’s Rule 60(b)(3) motion, theREMBRANDT VISION TEC HS ., L

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district court also acknowledged that Dr. Bielawski’s misconduct was at least as egregious as Dr. Beebe’s:

This was a serious and detrimental occurrence. It insulted the jury, violated the integrity of the j udicial process, and interfered with the search for the truth that is the hallmark of our trial

- by

- jury system. Moreover, this false testimony was given in a highly contested patent case in which an e xpert for Rembrandt, Dr. Beebe, radically changed his expert testimony during the middle of his e xamination. As a result, the Court struck his te stimony and entered an alternative Rule 50 judgment against Rembrandt because it was un able to prove a required element of its case without Dr. Beebe’s testimony.

. . . Now, having learned post

- trial that JJVC’s expert likely lied on the stand, arguably committing an act at least as egregious as Dr. Beebe’s, it is a fair q uestion to ask whether Rembrandt should be entitled to a new trial.

Rule 60 Order , 300 F.R.D. at 698

. On this record

, we cannot agree that Rembrandt had a full and fair trial on the “soft” limitation

. W e rejected an argument similar to JJVC’s in Fraige v. American

National Watermattress Corp. , 996 F.2d 295 (Fed. Cir. 1993). In Fraige , the defendant forged a prior art doc ument. Fraige , 996 F.2d at 296

. Although the forged document was not presented to the jury, several witnesses who testified at trial ha d reviewed the document. Id. at 296, 298. We explained that we could not accurately determine the impact of the forged document on the jury, noting that “[w]hen it became known that the jury was presented testimony based on fraudulent documentation, where that testimony was relevant and material to the issue of patent validity, all of the jury’s invalidity findings became suspect .” Id. at 299 (emphasis added). AlthoughREMBRANDT VISION TEC HS ., L

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an arguably “independent” ground of invalidity existed in Fraige

— invalidity under 35 U.S.C. § 112

— we nevertheless reversed the district court’s denial of a new trial under Rule 60(b)(3)

. 3 We concluded that where the i mpact of the tainted evidence on the allegedly “indepen dent” ground of invalidity could not be ascer tained, the independent ground was not a basis for denying the request for a new trial. Id. at 299

– 300. Similarly, here, we will not speculate as to what i mpact the fraud and miscond uct had on the ultimate jud gment of noninfringement where the false testimony and withheld documents were material to the issue of patent infringement and could well have impacted the jury’s verdict

, as well as the district court’s decision to exclude Dr. Beebe’s testimony and consequently grant JMOL on the “soft” limitation

. We agree with Rembrandt that it was prejudiced by the withholding of third

- party test results and by the false testimony

. As the Fifth Circuit held in Rozier , Rembrandt is not required to prove that the withheld documents were of such nature as to alter the result in the case. 573 F.2d at 1339 . Instead, Re mbrandt need only show that timely production of the documents would have made a difference in the way R embrandt ’ s counsel approached the case or prepared for trial. Id. at 1342. Here, Rembrandt could have deposed

3 The dissent asserts that Fraige is inapposite

, co ntending that “ our reasoning was that relief was available
not under Rule 60(b)(3) but under the savings clause in Rule 60 .” We disagree. The Court’s decision in Fraige rested on Rule 60(b)(3) . Indeed, the Court specifically

s tated that “[t]he effect of the tainted evidence on the section 112 defense, while less cer tain, cannot be asce rtained and therefore is similarly not a basis for denying the Rule 60(b)(3) motion for relief from the patent invali dity judgment.” 996 F.3d at 299

– 300 (footnote omitted)

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the individuals who actually conducted the testing for JJVC. JJVC based its noninfringement argument at trial nearly exclusively on the surface layer limitation. Kno wing the weaknesses in JJVC’s evidence regarding the surface layer limitation could well have changed the nature of the entire proceedings. We cannot and will not speculate about the profound effects knowledge of the withheld docume nts and falsified testimony of JJVC’s primary witness would have had on the proceedings and the district court’s JMOL . Suffice it to say that this raises a substantial question undermining the judgment of noninfringement

. Finally, we note that Rembrand t presented additional evidence at trial to show that JJVC ’s accused lenses satisf ied the “soft” limitation. For example, JJVC stip ulated that the accused lenses are silicone hydrogel contact lenses, and the record contains evidence that suggest s silicone hydrogel contact lenses yield a Shore D test result of zero. The dissent states that Rembrandt failed to raise this evidence in response to JJVC’s JMOL motion

. It is true, as we noted in our prior opinion, Rembrandt ident ified only Dr. Beebe’s testimony when responding to JJVC’s JMOL motion

. Rembrandt I

, 725 F.3d at 1383

. Had Dr. Beebe’s testimony not been stricken, it certainly

wo uld have prevented the court from entering JMOL in favor of JJVC. In addition, a lthough not relied on by Rembrand t in responding to JJVC’s JMOL motion, there was additional evidence in the trial record that the a ccused lenses met the “ soft ” limitation. In light of this record, we cannot conclude that Rembrandt had a full and fair trial on infringement

.

II.

We next look to whether Rembrandt established that

“ the adverse party engaged in fraud or other misconduct. ” Harre , 750 F.3d at 1503 (citation omitted)

. We conclude that the district court abused its discretion in concludingREMBRANDT VISION TEC HS ., L

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otherwise. Specifically, the district court erred by su mmarily dismissing Rembrandt’s allegations of misconduct and by requiring proof that JJVC or its counsel was complicit in Dr. Bielawski’s false testimony

. Rembrandt alleges fraud based on Dr. Bielawski’s false testimony and mis conduct based on Dr. Bielawski and JJVC’s failure to produce the contradictory test results on third

- party lenses

. Each allegation forms an independent basis for a new trial under Rule 60(b)(3). JJVC does not dispute that Dr. Bielawski testified falsely and that it never produced the test results for the third

party lenses

. Instead, JJVC argues that Rule 60(b)(3) cannot provide relief because JJVC was not complicit in the fraud or the misconduct. Considering only Dr. Bielawski’s false testimony, the district court held that Rembrandt was not entitled to a new trial under Rule 60(b)(3) because it had not shown that either JJVC or its counsel was complicit in any fraud or misconduct. Turning first to Rembrandt’s allegations of misco nduct, we agree w ith Rembrandt that the district court erred by failing to fully address Rembrandt’s allegations of misconduct and requiring proof of complicity

. As used in Rule 60(b)(3), “‘ [m] isconduct’ does not demand proof of nefarious intent or purpose as a prerequisi te to redress.

. . . The term can cover even accidental omissions

— elsewise it would be pleonastic, because ‘fraud’ and ‘mi srepresentation’ would likely subsume it.” Anderson v. Cryovac, Inc. , 862 F.2d 910, 923 (1st Cir. 1988) (emphasis added) ; see also Bros Inc. v. W.E. Grace Mfg

. Co. , 351 F.2d 208, 211 ( 5 th Cir. 1965) (“The effect [of misconduct] was the same whether there was evil, innocent or careless, purpose.”). JJVC admits that it provided samples of third

- party lenses to Dr. Bielawski to conduct “initial set up exper iments” on the lenses. The relevance of these tests to JJVC’s noninfringement defense cannot be disputed

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Dr. Bielawski testified about differences between JJVC’s accused lenses and the third

- party lenses that were known to infringe an d JJVC ’s counsel emphasized these differences during his closing argument. JJVC argues that a new trial is not warranted b ecause it “was unaware of any testing of these lenses.” Appellee Br. 28. JJVC’s argument strains credulity , given that it provide d the lenses to Dr

. Bielawski and talked about them during closing argument . But we need not determine whether JJVC’s failure to obtain and produce this data was intentional or merely accidental ; as e xplained above, even an accidental omission qualifies a s misconduct under Rule 60(b)(3). Turning next to Rembrandt’s allegations of fraud, t he district court concluded that Rule 60(b)(3) require s proof of JJVC’s complicity in the false testimony

, relying heav ily on Harre , 750 F.2d 1501, as well as cases outsi de of the Eleventh Circuit

. Rembrandt argues that the district court misinterpreted Eleventh Circuit precedent by requiring proof of complicity to satisfy Rule 60(b)(3). We
agree. Although evidence of complicity was considered by the Eleventh Circuit i n Harre , the court did not announce a rule requiring such evidence to prevail on a Rule 60(b)(3) motion

. The district court in this case acknowledged as much, stating that “the Harre court did not expressly limit its holding to circumstances in which counsel is complicit with witness misconduct . . . .” Rule 60 Order

, 300 F.R.D. at 699. In stead , after concluding that the appellant had “presented sufficient evidence to support the al legation that [the expert] committed perjury,” the Harre court turned to the second inquiry under Rule 60(b)(3)

— “whether the conduct complained of pr evented Appellants from fully and fairly presenting their case.” Harre , 750 F.2d at 1504

– 05 . Although the Harre court also determined that counsel “must have beenREMBRANDT VISION TEC HS ., L

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aware” of the perjury and expressed deep concern in view of that determination, it did not suggest that relief under Rule 60(b)(3) would otherwise have been unavailable

. See id. at 1505. Consisten t with our understanding

, a subs equent Eleventh Circuit case cited Harre for the propos ition that mere “perjury constitutes fraud under [Rule] 60(b)(3).” See Bonar v. Dean Witter Reynolds, Inc. , 835 F.2d 1378, 1383 n.7 (11th Cir. 1988). The Fifth Circuit has also recognized that Rule 60(b)(3) is remedial and should be liberally construed. Rozier , 573 F.2d at 1346.
Likewise, we have previously affirmed a grant of a new trial under Rule 60(b)(3) in view of an expert’s pe rjured testi mony, even when it was un disputed that the party was un aware of the perjury. See Viskase Corp. v. Am

. Nat ’ l Can Co. , 261 F.3d 1316, 1324 (Fed. Cir. 2001). In Viskase , an expert witness lied about his personal involvement in laboratory testing concerning alleged infring ement. Id. Although there was no evidence that the sponsoring party or its counsel was aware of the expert’s perjury, the district court had determined that the party’s counsel “surely knew there must have been additional documents and that there were ad ditional tests conducted” that had not been produced , and , as a result, “conclude[d] that [the party] cannot escape responsibility for [the expert’s] testimony .” Viskase Corp. v. Am

. Nat ’ l Can Co. , 979 F. Supp. 697, 705 (N.D. Ill. 1997). In affir ming the district court’s grant of a new trial, we “ agree[d] with the district court that the jury verdict was irretrie vably tainted and was properly set aside.” Viskase , 261 F.3d at 1324. We are presented with very similar facts here. Although JJVC may have been unaware of Dr

. Bielawski’s false testimony, JJVC should have known that additional tests were conducted and additional documents were generated . Indeed, it provided samples of the third

- party lenses to Dr. Bielawski

, requested that he conduct initial t esting on those lenses , and questioned Dr. Bielawski on the same subject matter during trial

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At bottom, the district court erred by concluding that the Eleventh Circuit would require p roof that JJVC or its counsel was complicit in Dr. Bielawski’s false testimony

. In this most unusual case involving false testimo ny by both parties’ experts and misconduct

, we cannot agree that the Eleventh C ircuit would require complicity in Dr. Biel a wski’s false testimony. While the district court
gave thoughtful consideration to Rembrandt’s Rule 60(b)(3) motion and to the integrity of the judicial

process , it erred in requiring complicity and summarily dismissing Rembrandt’s sepa rate allegation of misco nduct

. We thus conclude that the district court abused its d iscretion in denying Rembrandt’s motion for a new trial under Rule 60(b)(3).

III.

Because we reverse the district court’s denial of Re mbrandt’s motion for a new trial under Rule 60(b)(3), we do not consider whether the district court abused its discr etion in denying Rembrandt’s Rule 60(b) (2) and discovery motions. We also reject JJVC’s argument that the ma ndate rule precludes consideration of Rembrandt’s Rule 60 (b) motions. Our prior decision in this case did not address, explicitly or implicitly, Rembrandt’ s request for a new trial under Rule 60(b). See Rembrandt I , 725 F.3d 1377.

C ONCLUSION
We hold that the district court abused its discretion in denying Rembrandt’s motion for a new trial under Rule 60(b)(3). We therefore reverse and remand for a new trial.

REVERSED AND REMANDED

# United States **Court of Appeals**  **for the Federal Circuit**

______________________ REMBRANDT VISION TECHNOLOGIES, L.P., Plaintiff

- Appellant

v.

JOHNSON & JOHNSON VI SION CARE, INC., Defendant

- Appellee

______________________

2015

- 1079

______________________ Appeal from the United States District Court for the Middle District of Florida in No. 3:11

- cv

- 00819

- TJC

- JRK, Judge Timothy J. Corrigan.

______________________

D YK , Circuit Judge , dissenting

. This case presents two important questions about the interpretation of Rule 60(b) (3) of the F ederal Rules of Civil Procedure in the context of false testimony by an expert witness

. The first is whether a showing by a
movant that it lacked a “full and fair” opportunity to present i ts case requires some showing that the result

c ould have been affected by the false testimony . The second is whether false testimony by an expert witness can be attributed “to the opposing party” (as required by the rule) without a showing of knowledg e or reason toREMBRANDT VISION TEC HS ., L

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know that the testimony was false. I respectfully suggest that the majority is wrong on both counts.

I Relying on Rule 60(b)(3), Rembrandt sought to set aside a summary judgment of non

- infringement of the asserted claim of U.S. Patent No. 5,712,327 (“the ’327 patent”) based on false testimony of Johnson & Johnson Vision Care’s (JJVC’s) expert witness

, Dr. Christopher Biela wsk i

. The district court denied relief.

To succe ed on a motion under Rule 60(b)(3)

, it is not necessary to establish that the fraud “alter[ed] the result in the case.” Rozier v. Ford Motor Co. , 573 F.2d 1332, 1339 (5th Cir. 1978). But, the movant must demonstrate by clear and convincing evidence that the alleged fraud or misconduct prevented it “from fully and fairly presenting his case or defense.” Cox Nuclear Pharm

. , Inc. v. CTI, Inc. , 478 F.3d 1303, 1305 (11th Cir. 2007) ; Harre v. A.H. Robins Co. , 750 F.2d 1501, 1503 (11th Cir. 1985); see also 11 C harles Alan Wright et al.

, Federal Practice and Procedure § 2860 & n.12 ( 3d ed. 2012) (noting that to qualify for relief under the rule

, “the fraud must have prevented the moving party from fully and fairly presen ting his case

, ” and citing cases). In other words, t he moving party must demonstrate that the misconduct “substantially interfered with its ability fully and fairly to prepare for

, and proceed at

, trial.” Anderson v. Cryovac, Inc. , 862 F.2d 910, 92 6 (1st Cir. 1988)

. I n my view, the majority’ s decision effectively eliminates this requir ement , and errs in reversing the district court’s determin ation that this standard was not met. At the original trial, JJVC argued for a finding of non

infringement based on two limitations of asserted claim 1 of the ’327 patent

. The claim require s contact lenses that

are both (1) “soft” and (2) have a “tear

- wettable surface layer.” ’327 patent, col. 8 ll. 2

– 16. These are separate andREMBRANDT VISION TEC HS ., L

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independent limitations

. For example, both “hard” and “soft” contact lenses can be coated with a material to make the lenses more “tear

- wettable.” Similarly, the patent itself describes prior art “soft” lenses that lack a surface layer. Thus , to prevail in its infringement case, Rembrandt had the burden of independently proving (1) that the accused contact lenses were “soft” and ( 2) that the accused lenses had a surface layer. In this case, two witnesses testified falsely, one for each side and one on each iss ue.
The district court construed “soft” to mean “having a H ardness (Shore D) of less than 5 ” on the Shore scale

— an accepted standard for hardness. Rembrandt Vision Techs., L.P. v. Johnson & Johnson Vision Care, Inc. , 282 F.R.D. 655, 657 (M.D. Fla. 2012) ( “ JMOL Order ”). In other words, to meet the claim limitation, the accused lenses had to have a value of less than five according to a commonly used testing and measurement method for hardness.

Rembrandt ’s expert witness , Dr. Thomas Beebe

, Jr., testified that the accused contact lenses met the “soft” limitation of the patent claim. During his testimony about the “soft” limitation, “Dr. Beebe’s trial testimony did not match the opinions disclosed in his expert report.” Rembrandt Vision Techs. v . Johnson & Johnson Vision Care, Inc. , 725 F.3d 1377, 1379 (Fed. Cir. 2013) ( “Re mbrandt I”) . “In fact, the differences .

. . [were] so substa ntial that Dr. Beebe essentially performed an entirely different test” than he had described in his expert report. JMOL Orde r , 282 F.R.D. at 663. D uring what the district court described as an “implosion” on the stand, Dr. Beebe “completely changed his testimony” during cross

examination. Id. at 668 . Accordingly, after trial, the district court excluded Dr. Beebe’s testimony and, because “Dr. Beebe’s testimony was the only evidence presented at trial that showed that the accused lenses met the ‘soft’REMBRANDT VISION TEC HS ., L

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limitation, ” the district court granted JJVC’s motion for judgment as a matter of law (“JMOL”) that the accused lenses did not infringe because they did not meet the “soft” limitation. Rembrandt I

, 725 F.3d at 138 3

. On appeal, we affirmed the district court’s exclusion of Dr. Beebe’s testimony and the subsequent grant of JMOL. Id. at 1378. A different scenario played out with respect to the “surface layer” limitation. The district court construed the “surface layer” limitation to mean “a layer beginning from and including the outermost surface and moving inward to an arbitrary d epth of the lens and having a different composition from the ‘body’ portion of the lens.” Rembrandt Vision Techs. L.P. v. Johnson & Johnson Vision Care

, Inc.

, No. 11

- cv

- 0819, ECF No. 300 ( Tra nscript of May 10, 2012 ), at 295 . In other words, to i nfringe, contact lenses must contain an outer layer made up of a different material than the rest of the contact lens. JJVC ’s expert witness , Dr. Bielawski, testifie d that the accused products did not meet the surface layer limit ation.
After trial, Rembrandt disco vered that Dr. Bielawski had falsely testified about his credentials and about who had performed the testing in his expert report

. Re mbrandt also discovered that data from Dr. Bielawski regarding surface

- layer testing of third party lenses had been withhe ld. As the majority notes, Dr. Bielawski testified for JJVC “to support its position that its accused lenses did not meet the ‘surface layer’ limitation

, but did not present expert testimony with respect to the ‘soft’ limitation.” Maj. Op

. at 3

. The question here is whether Dr. Bielawski’s later

discovered false testimony about the “surface layer” limitation should result in re

- opening the district court’s JMOL of non

- infringement based on the plaintiff ’s fail ureREMBRANDT VISION TEC HS ., L

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to produce any evidence in response to the JMOL motion (absent Dr. Beebe’s stricken testimony) that the a ccused lenses met the “ soft ” limitation. The district court correc tly concluded that the JMOL should not be reopened because Rembrandt was not deprived of a full and fair opportunity to pr esent its case on the “ soft ” limitation

— an issue which was dispositive o f non

- infringement.

I note at the outset that t he majority incorrectly focuses on the jury verdict of non

- infringement. See, e.g., Maj. Op. at 8 (“The verdict was irretrievably taint ed by Dr. Bielawski’s false testimony and Dr. Bielawski’s and JJVC’s withholding of relevant documents. While we do not know the exact impact the false testimony would have had on the jury, the false testimony may well have been critical to the noninfring ement verdict and the jury may well have been impacted upon learning that Dr. Bielawski committed an act at least as egregious as Dr. Beebe’s.”) Whether the jury verdict was tainted by Dr. Bielawski’s testimony about Dr. Beebe is not relevant. T he jury

ve rdict is not under review here; the district court’s grant of JMOL (on the “soft” limitation only) is, and the district court did not rely on Dr. Bielawski’s testimony in gran ting JMOL

. In this respect , t o succeed on the Rule 60(b)(3) motion for a new tria l, Rembrandt was required to show that the false testimony resulted in a substantial impairment of its ability to present its case on the “soft” issue. “S ubstantial impairment may exist, for example, if a party shows that the [misconduct] precluded inquiry into a plausible theory of liability, denied it access to evidence that could well have been probative on an important issue, or closed off a potentially fruitful avenue of direct or cross exami nation.” Anderson , 862 F.2d at 925

. But i f the misconduct is related to evidence that is “ cumulative, insignificant, or of marginal relevance

, ” “retrial would needlessly squander judicial resources.” Id. at 924.REMBRANDT VISION TEC HS ., L

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Rembrandt’s only argument as to substantial impai rment is that it “could have moved for summary judgment on the surface layer issue

— or streamlined its trial ev idence on the issue

— and thus had more time to present additional evidence regarding the ‘soft’ nature of the accused lenses.” Reply Br. at 24. In other words, Re mbrandt speculates that it would have spent more time preparing its case for the “soft” limitation and could have potentially prevented Dr. Beebe’s meltdown on the stand. And the majority asserts that the existence of such a possible reallocation of resources is sufficient , stating that “[k]nowing the weakness es in JJVC’s evidence regarding the surface layer limitation could well have changed the nature of the entire proceedings. We cannot and will not speculate about the profound effects knowledge of the [alleged misconduct] would have had on the proceedings and the district court’s JMOL .” Maj. Op. at 12

. Under this standard, it is hard to see any case where, after a party proves misconduct of any kind, that party would not be afforded relief. In effect, the majority’s holding renders the “full and fair” requirement a nullity. N either Re mbrandt nor the majority can point to any case where R ule 60(b)(3) relief has been granted based on such specul ation.
The authority is uniformly to the contrary. The standard before Rule 60 was adopted was quite clear.

“ [T] o justify setting aside a decree for fraud whether extrinsic or intrinsic, it must appear that the fraud charged really prevented the party complaining from making a full and f air defense. ” Toledo Scale Co. v. Computing Scale Co. , 261 U.S. 399, 421 (1923) (emphasis added) . “If it does not so appear, then proof of the ult imate fact, to wit, that the decree was obtained by fraud fails.” Id. This requires a showing of how “the complai ning party was, without his fault, deprived of his oppo rtunity to present his defense on the merits.

. . . ChanceryREMBRANDT VISION TEC HS ., L

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will intervene, therefore, only when the complainant was prevented from presenting a meritorious defense by the inequitable conduct of his adversary unmixed with negl igence or fault on his own part.” In re Innis , 140 F.2d 479, 481 (7th Cir. 1944)

. “[I] t [is] an imperative condition of such relief that the party seeking it shall make it clearly appear that he had a good defense to the action, which, by fraud or accident, he was prevented from making, and also that there was neither fa ult nor negligence on his part. ” Talbott v. Pickford , 36 App. D.C. 289, 298 (D.C. Cir. 1911)

, aff’d sub nom.

, 225 U.S. 651 (1912)

. This common law equity standard was incorporated into the Rule 60(b)(3) standard. Rozier , 573 F.2d at 1339 (citing Toledo Scale , 261 U.S. at 421). Under Rule 60(b)(3) , when the alleged misconduct is related to issues that “are essentially irrelevant to the legal issues upon which the case turned,” relief from the judgment is not warranted. Simons v. Gorsuch , 715 F.2d 1248, 1253 (7th Cir. 1983) ; see also PMC, Inc. v. Atomergic Chemetals Corp.

, No. 95

- 7509, 1995 WL 595557, at * 1 (2d Cir. Sep . 25, 1995) ( unpublished decis ion) (finding claim of lack of a full and fair opportunity “to be without merit” when an expert lied about his credentials because the misconduct “did not have ‘ such a close nexus to the i ssues ’ ” relevant in the case); Anderson , 862 F.2d at 931 (relief und er Rule 60(b)(3) should not be granted where the misconduct “would have had no effect on the result” of the case ).

A review of cases where R ule 60(b)(3) motions have been granted shows that relief is only grant ed when the misconduct involves material, relevant evidence ; in other word s, whe n knowing about the misconduct actually c ould have made a difference

. See , e.g. , Abrahamsen v. Trans

State Exp ress ., Inc. , 92 F.3d 425, 4 30 (6th Cir. 1996) (plaintiff in a tort action resulting from a car accident
ent itled to a new trial because defendant’s attorneyREMBRANDT VISION TEC HS ., L

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withheld evidence of a statement by defendant’s driver that he “dozed off” while driving

, leading to the accident); Rozier , 573 F.2d at 1339, 13 42–43 (defendant improperly withheld an internal cost/benefit report showing the defendant’s knowledge of the defect and rejecting a safer design ; the report “would have ” affected plaintiff’s a pproach to the design

- defect tort case

, and the plaintiff was “prejudiced” ); Seaboldt v. P a. R.R. Co. , 290 F.2d 296, 299 (3d Cir. 1961) ( defendant entitled to a new trial in a personal injury case relating to a back injury because plaintiff’s counsel failed to supply information concerning a chiropractor who would have test i fied that he “had treated the plaintiff previously for a ‘chronic’ back ai lment” before the alleged injury. ).
Fraige v. American

- National Watermattress Corp.

, 996 F.2d 295 (Fed. Cir. 1993) , re lied on by the majority, is not to the contrary. In that case

, counsel for the accused infringer had submitted to the court “false and forged documentation” about a supposed prior art reference. Id.
at 2 96. T he motion was made under Rule 60(b)(3), and we held that relief should have been granted under that rule. H owever, our reasoning was that relief was available not under R ule 60(b)(3) but under the savings clause in Rule 60
, which allows a court to “enter tain an independent action for fraud on the court.” Fed. R. Civ. P. 60(d ) (1) ; see also Fraige

, 996 F.2d at 2 97 ( citing the savings clause ). As the A dvi sory Committee Note to the rule explain s , “the rule expressly does not limit the power of the court, when fraud has been perpetrated upon it, to give relief under the saving clause. As an illustration of this si tuation, see Hazel

- Atlas Glass Co. v. Hartford Empire Co. ,” 322 U.S. 238 (1944). 1 Fed. R. Civ. P. 60(b) Advisory C om mittee

1 Fraud on the court, not even alleged in this case, constitutes “an unconscionable plan or scheme which isREMBRANDT VISION TEC HS ., L

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N ote to the 1946 A mendments. We found in Fraige that “[l]ike Hazel

- Atlas , [the defendant’s] fraudulent conduct was a wrong against the judicial system as well as against [the plaintiff.]” 996 F.2d at 299. Appropriately, we found that a new trial was necessary because for more serious

“ fraud on the court ” (unlike Rule 60(b)(3)), the moving party need not demonstrate prejudice to rece ive relief from a judgment because “ a decision produced by fraud on the court is not in essence a decision at all, and never becomes final. ” Kenner v. Comm’r of Internal Revenue

, 387 F.2d 689, 691 (7th Cir. 1968)

. Fraige is not authority for the proposit ion that R ule 60(b)(3) does not require a showing of lack of full and fair opportunity. Rembrandt has failed to show how knowledge of Dr. Bielawski’s misconduct would have changed its approach to the “soft” limitation. The JMOL was based entirely on the exclusion of Dr. Beebe’s testimony because of his “abrupt and still unexplained implosion” that “led to the derailment of the trial” on the softness issue. J.A. 7444. 2

designed to improperly influence the court

, ” and, unlike fraud referenced in Rule 60(b)(3), involves the “ integrity of the court itself .” Charles Alan Wright, et al., Federal Practice and Procedure § 2870 (2012)

. In Hazel

- Atlas , for example, the Supreme Court found that the patent

holder’s “flagrant” and “deliberate” plan to deceive both the P atent O ffice and the district court “call[ed] for not hing less than a complete denial of relief [] for the claimed infringement of the patent thereby procured and e nforced. ” Hazel

- Atlas , 322 U.S. at 250

. 2 Although the district court deferred action on the JMOL until after the jury verdict, it could have granted the relief at the end of the presentation of Rembrandt’s

case. If it had done so , Dr. Bielawski would never even have testified.REMBRANDT VISION TEC HS ., L

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T he majority suggests that there was other evidence in the trial record that the accused lenses met the “soft” limitation

, but such evidence was not raised by Re mbrandt in response to the JMOL motion. Maj. Op. at 12

. In the first appeal, we held that Rembrandt had not preserved the right to argue this evidence in connection with the JMOL motion

. 3 I fail to see how the decision by Rembrandt not to raise this evidence could have even arguably been affected by Dr. Bielawski’s false testimony. In any event, Rembrandt’s decision not to raise this evidence represents a strategic litigation ch oice. Rule 60(b)(3) cannot be used to allow a party to escape its own negligence in developing its case. C ourts routinely deny Rule 60(b)(3) motions when a party loses not because of the alleged fraud but because of its own failings

. “W hen a party is capable of fully and fairly preparing and presen ting his case notwithstanding the adverse party ’ s arguable misconduct, the trial court is free to deny relief under Rule 60(b)(3).” Karak v. Bursaw Oil Corp. , 288 F.3d 15, 22 (1st Cir. 2002); see also Diaz v. Methodist Hosp. , 46 F.3d 492, 497 (5th Cir. 1995). Nothing about Dr. Bielaws k i’s misconduct regarding the “surface layer” limitation prevented Rembrandt from raising other ev idence on the softness issue in response to the JMOL motion.

3 Specifically, we found that “ [i]n o pposing JJVC’s motion for judgment as a ma t ter of law, Rembrandt only pointe d to Dr. Beebe’s trial testimony. Moreover, Re mbrandt conceded at the post

- trial hearing that Dr. Beebe’s testimony was the only evidence presented at trial that showed that the accused lenses met the ‘soft’ limit ation. . . . We decline to upend the district court’s decision on a basis that was not raised below.” Rembrandt I, 725 F.3d at 1383 (emphasis added).REMBRANDT VISION TEC HS ., L

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Quintessentially, the resolution of a R ule 60(b)(3) m otion is a matter of discretion for the district court judge, who sat during the entire trial and is most intimately familiar with the reasoning for his own statements and previous order. Here the district court conclude d that no retrial was appropriate. In an effort to suggest that the district court would have reached a different result if it had applied a different standard, both Rembrandt and the majority point to ambiguous statements by the district court durin g the Rule 60 hearing whe n the trial judge

, before reaching his final decision on the motion, specula ted that the false testimony might have somehow affected the JMOL decision as to the soft limitation. But , as noted, Dr. Bielawski offered no testimony on the “soft” limitation

, and t he district court made no finding of any such relationship in its final decision

. 4 At best, the di strict court’s statements suggest that a remand to the d istrict c ourt might be appropriate to reconcile the final order and the court’s earlier statements

. In short, the record here demonstrates that Re mbrandt failed to produce any credible eviden ce on one element of its case. That failure had nothing to do with Dr. Bielawski’s false testimony. In the pr ior appeal, we affirmed that the district court acted properly in exclu ding Dr. Beebe’s testimony and in granting JMOL of non

-

4 In the final order, the district court found that “[w]hat Rembrandt mainly lost here was an opportunity to discredit or eliminate an exper t witness who .

. . was not required for JJVC to win the case. When the trial is looked at in its totality, even accounting for Dr. Bielawski’s misconduct, Rembrandt was not prevented from making its case.” Rembrandt Vision Techs., L.P. v. Johnson & John son Vision Care, Inc. , 300 F.R.D. 694, 701 (M.D. Fla. 2014) (“ Rule 60 Order ”).REMBRANDT VISION TEC HS ., L

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infringement based on the lack of evidence. That previous determination should not be disturbed by a subsequent discovery of fals e testimony about an entirely different issue.

II There is also, in my view, a second error in the majo rity opinion. Under Rule 60(b)(3), “the court may relieve a party or its legal representative from a final judgment, order, or proceeding” if there was “fraud (whether prev iously called intrinsic or extrinsic )

, misrepresentation, or misconduct by an opposing party.” Fed. R. Civ. P. 60(b)(3). I also disagree with the majority’s conclusion (contrary to that of the district court) that the rule does

no t require any evidence that the misconduct was a ttributable to “ the opposing party” as required by the text of Rule 60(b)(3). The majority finds that the district court erred in “r equiring proof of [JJVC’s] complicity” in Dr. Bielawski’s false testimony. Maj. Op. at 13 . According to the major ity, “[i]n this most unusual case involving false testimony by both party experts, we cannot agree that the Eleventh Circuit would require complicity in Dr. Bielawski’s false testimony.” Id. at 15

. The two other circuits that have confronted the issue ha ve reached the opposite conclusion. As the Seventh Circuit explained, “ [e] xpert witnesses .

. . are free agents. Parties and counsel have an obligation not to deceive the court about the witness and to correct sta tements they know to be false, but they are not responsible for the details of the witness’ s testimony. ” Metlyn Realty Corp. v. Esmark, Inc. , 763 F.2d 826, 833 (7th Cir. 1985) . Thus

, the Seventh Circuit held that, absent evidence that “the adverse party procured or knew of any false testimony,” relief under Rule 60(b)(3) is not available

. Id. at 832; see also Richardson v. Nat ’ l R .R. Passenger Corp. , 49 F.3dREMBRANDT VISION TEC HS ., L

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760, 765 (D.C. Cir. 1995) (declining to “substitute a less restrictive limitation” under Rule 60( b)(3) for attribution to a party misconduct of another “for the one expressly adopted under the R ules”). The majority’s conclusion also conflicts with long

- settled evidence and professional responsibility rules. See Fed. R. Evid. 607, Advisory Committee Notes to 1972 Proposed Rules (abandoning the “traditional rule against impeaching one’s own witness” because “[a] party does not hold out his witnesses as worthy of belief”); Model R. Prof. Resp. 3.3 and comments (a lawyer will only be responsible for fal se testimony if the lawyer knew or should have known the testimony was false).

While the Eleventh Circuit has not expressed itself clearly on the issue here , there is no reason to think that it would reach the opposite conclusion. In the Eleventh Circui t case granting R ule 60(b)(3) relief discussed by the majority, Harre , 750 F.2d at 1503, the court found “that the record support[ed] Appellants’ argument that a mat erial expert witness testified falsely on the ultimate issue in the case, where the defense attorneys knew or should have known of the falsity of the testimony .” Id. at 1503 (emphasis added). Nothing in Bonar v. Dean Witter Reynolds, Inc. , 835 F.2d 1378 (11th Cir. 1988)

, is to the contrary. Bonar , a case involving vacation of an arbitr ator’s punitive damages award, cites Harre for the propos ition that “[t]here is no doubt that perjury constitutes fraud

, ” and that the perjury is material when it goes to a “central issue” in a case. Id. at 1383 n.7 & 138 5

. T he Eleventh Circuit in Bonar did not discuss Harre in the context of party complicity under Rule 60(b)(3) because Bonar did not involve that issue (nor did it involve Rule 60(b)(3) at all).
The majority points to Viskase Corp oration v. Am er ican Nationa l Can Co mpany , 261 F.3d 1316 (Fed. Cir. 2001)

, as supporting its position. See Maj. Op. at 15

. ButREMBRANDT VISION TEC HS ., L

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Viskase arose in the Seventh Circuit

, which explicitly requires evidence of complicity to attribute false testim ony of an expert witness to a party under Rule 60(b)(3). Metlyn , 763 F.2d at 833

. The district court in Viskase specifically found that the plaintiff’s counsel “sure ly knew there were additional documents [that had been withheld ] and that there were additional tests conducted” relying on evidence such as “invoices directed to [plaintif f’s] counsel and [the expert’s] notes document [ing] counsel’s knowledge. ” Viskase Corp. v. Am. Nat. Can Co. , 979 F. Supp. 697, 705 (N.D. Ill. 1997). There is no similar ev idence or finding here. The majority agrees that JJVC “may have been un aware of Dr. Bielawski’s false testimony” but suggests that JJVC may have been complicit in withholding Dr. Bielawski’s data from tests on third

- party contact lenses. Maj. Op. at 15

. According to the majority, “JJVC should have known that additional tests were conducted and additional documents were generated. Indeed, it provided samples of the third

- party lenses to Dr. Bielawski, r equested that he conduct initial testing on those lenses

, and questioned Dr. Bielawski on the same subject matter during trial.” Id. While JJVC admitted that it did “suppl [y] [the third party lenses] to Dr. Biela w ski

, ” it did so “only for use in setting up his equipment.” Appellee ’s Br. at 28. Accor di ng to JJVC

, it “did not ask Dr. Bielawski to generate data on those lenses

, and did not know that one of his assi stants had (apparently) done so.” Id. In fact, JJVC asserts that “Dr. Bielawski repeatedly reassured JJVC’s counsel that he had given them al l of the data he generated and all of the documents he relied up on.” Id. at 63. The district court did not resolve this factual dispute as to whether JJVC’s counsel should have known that add itional evidence existed , finding instead that this “ mu rky ”

ass ertion did not support a finding that Rembrandt wasREMBRANDT VISION TEC HS ., L

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prevented from fully and fairly presenting its case. Re mbrandt

, 300 F.R.D. at 697 n.1. The majority’s resolution of this factual dispute as to whether JJVC’s counsel should have known about the withhel d documents is inconsistent with our role as a court of review and the deferential “abuse of discretion” standard of review. As we have found, when the lower tribunal has left a factual issue unresolved, “[w] e are unable to engage in such fact

- finding in the first instance and must therefore remand for further proceedings. ” Nike, Inc. v. Adidas AG , No. 2014

- 1719, 2016 WL 537609, at *14 (Fed. Cir. Feb. 11, 2016)

. This is a matter for the trial court and

, at best, a remand for further fact

- finding would be appropriate as to whether JJVC’s counsel should have known about the documents

. I respectfully dissent.