ArcelorMittal France v. AK Steel Corp.
989 F. Supp. 2d 364
D. Del.2013Background
- This case involves two patents, the ’805 patent and the RE153 reissue, and two prior proceedings: a federal-court jury trial resulting in a mandate and a PTO reissue proceeding that produced RE153.
- The Federal Circuit construed the limitation 'the steel sheet has a very high mechanical resistance' as equal to or greater than 1500 MPa.
- The PTO allowed dependent claim 23 in the RE153 patent, providing a broader limitation of a mechanical resistance in excess of 1000 MPa.
- The reissue process effectively surrendered the original ’805 patent, raising questions about whether the reissued claims broadened the patent scope beyond the original.
- ArcelorMittal argues that the reissue broadening should be treated in light of the reissue history, potentially reopening claim construction and discovery, while AK Steel and others resist that approach.
- The court granted summary judgment for noninfringement and held that the RE153 reissue broadens claim scope in violation of 35 U.S.C. § 251(d).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does dependent claim 23 broaden claim 1 in RE153 beyond the original scope? | ArcelorMittal contends the reissue broadens. | AK Steel argues scope consistent with reissue history. | Yes; broadened; invalid under § 251(d). |
| Should the court grant noninfringement on remand due to the broadened reissue? | ArcelorMittal would pursue infringement under broader scope. | Defendants contend no infringement under the narrowed original scope. | Yes; summary judgment of noninfringement granted. |
| Is the RE153 patent invalid in its entirety for broadening beyond the original claims? | ArcelorMittal seeks invalidation of the broadened scope. | Defendants seek invalidity based on broadened scope under § 251(d). | RE153 invalid as broadened under § 251(d). |
Key Cases Cited
- Brady Const. Innovations, Inc. v. Perfect Wall, Inc., 290 Fed.Appx. 358 (Fed.Cir.2008) (reissue claims cannot be used to expand original patent scope)
- Total Containment, Inc. v. Environ Products, Inc., 106 F.3d 427 (Fed.Cir.1997) (do not rely on reexamination to broaden original claims)
- Quantum Corp. v. Rodime, PLC, 65 F.3d 1577 (Fed.Cir.1995) (broadened reissue claims cannot broaden beyond what original claims would have covered)
- Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033 (Fed.Cir.1987) (broadened reissue claims include within their scope material not in original claims)
- Anderson v. Int’l Eng’g & Mfg. Co., 160 F.3d 1345 (Fed.Cir.1998) (claim construction is a matter of law, final authority lies with Federal Circuit)
- In re Youman, 679 F.3d 1335 (Fed.Cir.2012) (post-two-year scope of patent claims is fixed for public reliance)