Arcelormittal France v. Ak Steel Corporation
786 F.3d 885
Fed. Cir.2015Background
- RE44,153E (RE153) is a reissue of U.S. Patent No. 6,296,805 (the ’805 patent); both share the same specification and claim a coated steel sheet with “very high mechanical resistance.”
- In earlier litigation, the district court construed “very high mechanical resistance” to mean tensile strength >1500 MPa; this construction was affirmed on appeal in ArcelorMittal I (700 F.3d 1314).
- While that appeal was pending, ArcelorMittal obtained the RE153 reissue, which added dependent claims including claim 23 (>1000 MPa) and claim 24 (>1500 MPa) (and claim 25 depending on 24).
- Defendants moved for summary judgment in multiple actions, arguing claims 1–23 of RE153 were impermissibly broadened in violation of 35 U.S.C. § 251; the district court granted summary judgment and invalidated claims 1–23 and, sua sponte, claims 24–25.
- On appeal the Federal Circuit held the court was bound by its prior claim construction (law-of-the-case) and affirmed invalidity of claims 1–23 as impermissibly broadened, but reversed the invalidation of claims 24–25 because those claims retained the original claim scope.
Issues
| Issue | Plaintiff's Argument (ArcelorMittal) | Defendant's Argument (Appellees) | Held |
|---|---|---|---|
| Whether the RE153 reissue claims were impermissibly broadened in violation of 35 U.S.C. § 251 | Reissue prosecution success shows the Patent Office treated the original claim term as broader than the court held, so reissue claims are not broader | Reissue added claim language that expands claim scope beyond the prior construction, so claims were broadened in violation of § 251 | Claims 1–23 were impermissibly broadened and invalid under § 251 (affirmed) |
| Whether the district court could treat the reissue prosecution as “new evidence” to reopen the prior claim construction (law-of-the-case/mandate rule) | The RE153 issuance is new evidence warranting reconsideration of the earlier construction | Prior appellate construction binds the district court; reissue prosecution cannot rewrite earlier construction for § 251 analysis | The issuance of RE153 is not "new evidence" sufficient to overcome the mandate rule; prior construction controls (affirmed) |
| Whether invalidity from improper reissue requires invalidation of the entire reissued patent or must be assessed claim-by-claim | Reissue demonstrates broader scope so whole reissue should be invalid | Invalidity under § 251 and § 282 is claim-specific; claims that retain original scope remain presumptively valid | Invalidity is claim-by-claim; claims 24–25 (unchanged in scope) were improperly invalidated and must be reinstated (reversed-in-part) |
| Whether reissue prosecution history can be used to redefine the original claim scope for § 251 analysis | The PTO's allowance and prosecution history clarify original scope | Reissue prosecution history cannot be used to broaden or redefine original claim scope for the § 251 comparison | Reissue prosecution history cannot be used to expand the original claim scope for the § 251 inquiry (affirmed) |
Key Cases Cited
- ArcelorMittal France v. AK Steel Corp., 700 F.3d 1314 (Fed. Cir.) (prior appellate claim construction affirmed)
- Anderson v. Int'l Eng'g & Mfg., Inc., 160 F.3d 1345 (Fed. Cir.) (reexamination/reissue cannot be used to retroactively broaden original claim scope)
- Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033 (Fed. Cir.) (framework for comparing reissue and original claim scope)
- Hewlett-Packard Co. v. Bausch & Lomb, Inc., 882 F.2d 1556 (Fed. Cir.) (defective reissue may invalidate added claims but not necessarily carried-over original claims)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (Sup. Ct.) (claim construction review standards cited)