ArcelorMittal France v. AK Steel Corp.
147 F. Supp. 3d 232
D. Del.2015Background
- Plaintiffs (ArcelorMittal entities) originally sued over U.S. Patent No. 6,296,805 (the ’805 patent); a 2011 jury returned a verdict for defendants (AK Steel et al.).
- The Federal Circuit in ArcelorMittal I partly reversed claim construction and vacated the anticipation verdict, ordering a remand limited to commercial-success evidence relevant to obviousness.
- During appeal the plaintiffs obtained reissue U.S. Patent RE44,153 (RE153) adding dependent claims including claim 24 (UTS >1500 MPa) and claim 23 (UTS >1000 MPa); plaintiffs sought to substitute RE153 for the ’805 patent in the ongoing case.
- The district court initially held the RE153 patent impermissibly broadened under 35 U.S.C. § 251(d) and invalidated claims 1–23; the Federal Circuit in ArcelorMittal II affirmed invalidity of claims 1–23 but preserved claims 24–25 as substantially identical to the original claim.
- On remand plaintiffs sought to assert a later reissue (RE940) and to amend; defendants moved for summary judgment in Civ. No. 10-050 on (1) no infringement of claims 24–25 and (2) invalidity (obviousness) of claims 24–25 based on the trial record and the Federal Circuit mandate.
- The court ruled that claims 24–25 are substantially identical to the original ’805 claim, were therefore before the court, and that (on the existing trial record and mandate) defendants were entitled to summary judgment: no infringement and invalidity of RE153 in Civ. No. 10-050; plaintiffs’ motion to amend in Civ. No. 13-685 was granted.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether claims 24–25 of RE153 were "at issue" in Civ. No. 10-050 | RE153 issued after trial; claims 24–25 were not part of original trial; court should not treat them as already asserted | Claims 24–25 are substantially identical to original claim under § 252 and therefore continued the original action | Court: claims 24–25 were asserted as a matter of law and Civ. No. 10-050 retains jurisdiction (plaintiffs' dismissal motion denied) |
| Whether defendants are entitled to judgment of no literal infringement of claims 24–25 | Plaintiffs sought to rely on new acts of infringement since trial and reopen record | Trial record contains no evidence of past infringement of original claim as construed (UTS >1500 MPa); plaintiffs didn't present evidence of pre-trial literal infringement | Court: no genuine issue of material fact as to infringement of claims 24–25; grant summary judgment of no infringement |
| Whether claims 24–25 are invalid (obviousness) given mandate in ArcelorMittal I | Plaintiffs argue reissue prosecution history and new evidence could create factual disputes, including commercial success and nexus | Defendants rely on Federal Circuit’s finding that AK Steel established prima facie obviousness and that plaintiffs’ commercial success evidence lacks demonstrated nexus on this record | Court: under ArcelorMittal I mandate and existing record plaintiffs failed to raise genuine issues to overcome prima facie obviousness; grant summary judgment of invalidity |
| Whether plaintiffs may pursue RE940 / amend complaint in Civ. No. 13-685 | Plaintiffs sought leave to assert RE940 and offered a covenant not to sue on RE153 conditionally | Defendants sought dismissal or to preserve repose and prior rulings | Court: granted leave to amend in Civ. No. 13-685; entry of judgment in Civ. No. 10-050 renders conditional covenant moot |
Key Cases Cited
- ArcelorMittal France v. AK Steel Corp., 700 F.3d 1314 (Fed. Cir.) (vacating obviousness verdict due to erroneous claim construction and remanding limited to commercial-success issue)
- ArcelorMittal France v. AK Steel Corp., 786 F.3d 885 (Fed. Cir.) (affirming that claims 1–23 of RE153 were improperly broadened under § 251 and preserving claims 24–25 as substantially identical to original claim)
- Scripps Clinic & Research Found. v. Genentech, Inc., 678 F. Supp. 1429 (N.D. Cal. 1988) (reissue patent does not affect preexisting infringement claims where reissued claims are substantially identical)
- Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294 (Fed. Cir.) (nexus requirement for commercial-success evidence)
- Interconnect Planning Corp. v. Feil, 774 F.2d 1132 (Fed. Cir.) (upon reissue the burden of proving invalidity is made heavier)