908 F.3d 1267
Fed. Cir.2018Background
- ArcelorMittal owns reissue RE940 (claiming aluminum-coated boron steel that after thermal treatment has UTS >1500 MPa); claim 17 is a product-by-process claim requiring "thermal treatment" (hot-stamping) and resulting UTS >1500 MPa.
- In a 2010 action (trial 2011) a jury found AK Steel's AXN steel noninfringing because evidence showed AXN when hot-stamped (by a prototype shop) did not reach 1500 MPa UTS.
- ArcelorMittal later sued over AK Steel's ULTRALUME products (RE940) and AK Steel moved for summary judgment based on collateral estoppel, asserting ULTRALUME is the same as AXN.
- ArcelorMittal presented post-2011 evidence (marketing brochure, a declarant's testimony, and an auto‑manufacturer webinar slide) indicating AK Steel’s commercially hot‑stamped ULTRALUME sheets were hot‑stamped by commercial stampers and achieved UTS exceeding 1500 MPa and were supplied to automakers.
- The district court granted summary judgment for AK Steel, finding collateral estoppel applied and denying additional Rule 56(d) discovery; ArcelorMittal appealed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether collateral estoppel bars ArcelorMittal's RE940 infringement claim | New evidence shows ULTRALUME is materially different (commercial hot‑stamping producing >1500 MPa) so estoppel shouldn't apply | The accused product is the same as in 2010 (AXN) so noninfringement stands | Vacated: estoppel does not apply because evidence supports a material change in the accused product |
| Whether evidence of third‑party hot‑stamping (by commercial stampers) is legally irrelevant to infringement | Hot‑stamping and resulting UTS are claim limitations; third‑party performance can be relevant to infringement | Pre‑stamped blanks (600 MPa) are dispositive; who hot‑stamps is "of no consequence" | Rejected district court's focus on pre‑stamped blanks; thermal treatment and resulting UTS are material to infringement analysis |
| Whether indirect infringement claims fail absent direct infringement by hot‑stampers | If third parties (hot‑stampers) directly infringe or AK knowingly supplies for infringing use, indirect liability remains possible | No direct infringement exists, so indirect claims fail | District court erred to foreclose indirect claims; direct infringement by third parties or indirect liability remains plausible |
| Whether denial of additional discovery under Rule 56(d) was appropriate | Additional discovery necessary to obtain crucial evidence about commercial stamping, supply to automakers, and AK Steel's knowledge/intents | Limited discovery was sufficient; evidence does not show material change | Abuse of discretion: denial prevented obtaining crucial evidence; remand for limited discovery as requested |
Key Cases Cited
- ArcelorMittal Fr. v. AK Steel Corp., 700 F.3d 1314 (Fed. Cir.) (prior appeal construing "very high mechanical resistance" as ≥1500 MPa)
- Abbott Labs. v. Andrx Pharm., 473 F.3d 1196 (Fed. Cir.) (defensive collateral estoppel principles for patents)
- Blonder–Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313 (Supreme Court 1971) (issue preclusion in patent invalidity context)
- Young Eng’rs, Inc. v. U.S. Int’l Trade Comm’n, 721 F.2d 1305 (Fed. Cir.) (noninfringing status carries over if accused products remain the same)
- Nystrom v. Trex Co., 580 F.3d 1281 (Fed. Cir.) (estoppel when accused devices unchanged with respect to claim limitations)
- Warner‑Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (Supreme Court) (each claim element is material to infringement analysis)
- Abbott Labs. v. Sandoz, 566 F.3d 1282 (Fed. Cir.) (process steps in product‑by‑process claims serve as limitations)
- Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111 (Supreme Court) (relationship between direct and inducement liability)