ArcelorMittal France v. AK Steel Corp.
811 F. Supp. 2d 960
D. Del.2011Background
- Plaintiffs ArcelorMittal France and ArcelorMittal Atlantique et Lorraine sue AK Steel, Severstal, and Wheeling Nisshin for infringement of U.S. Patent No. 6,296,805.
- Trial proceeded on an expedited schedule with two claim terms deemed dispositive; the jury found no infringement and that the ’805 patent was invalid for anticipation and obviousness.
- The court previously construed two claim terms and precluded literal infringement arguments because defendants’ products were cold-rolled prior to coating and thermal treatment.
- The patent covers boron-containing steel sheet coated with aluminum prior to hot/cold forming and claims high mechanical resistance after thermal treatment via hot stamping.
- Plaintiffs moved for JMOL on anticipation/obviousness and for a new trial; the court denied both motions.
- The case focused on whether the Bano article and related references were prior art under § 102(b) and whether a motivation to combine supported obviousness.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Was the Bano article a printed publication prior to the ’805 patent date? | Bano not clearly public; publication date not proven. | Bano was publicly available prior to the critical date via a PowerPoint/Book distribution. | Yes; substantial evidence shows printed publication prior to the priority date. |
| Did Bano explicitly disclose precoating and aluminum coating required by the claims? | Bano fails to disclose precoating and aluminum coating. | Bano implicitly discloses precoating and is consistent with aluminum coating as a viable option. | Yes; substantial evidence supports implicit precoating and aluminum coating. |
| Was there a motivation to combine Bano with the ’906 patent and Ford specification to render the claims obvious? | No adequate motivation to combine. | Ordinary skilled person would combine; art solves decarbonization with protective aluminum coatings. | Yes; substantial evidence supports obviousness by the proposed combination. |
| Does the jury’s verdict on anticipation/obviousness have substantial evidentiary support given the prior art? | Verdict unsupported due to insufficiency of prior-art proof. | Jury reasonably inferred anticipation/obviousness from Bano and related references. | Yes; the verdict is supported by substantial evidence. |
| Were trial issues and procedures properly handled such that denial of a new trial was appropriate? | Errors in testimony scope, closing arguments, claim construction, and procedural rulings warrant a new trial. | No reversible errors; any objections were waived or harmless. | Yes; rulings denial of a new trial was appropriate. |
Key Cases Cited
- In re Klopfenstein, 380 F.3d 1345 (Fed.Cir. 2004) (printed publication can include ephemeral presentations to public observers)
- In re Petering, 301 F.2d 676 (C.C.P.A. 1962) (limited class of metals can implicitly disclose aluminum coating)
- Eli Lilly and Co. v. Zenith Goldline Pharm., 471 F.3d 1369 (Fed.Cir. 2006) (implicit disclosures within a finite class of possibilities can satisfy disclosures)
- Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888 (Fed.Cir. 1984) (substantial evidence standard for JMOL; credibility not for court to assess)
- Dawn Equip. Co. v. Kentucky Farms Inc., 140 F.3d 1009 (Fed.Cir. 1998) (standard for evaluating jury verdicts on appeal)