Arcelormittal v. Ak Steel Corporation
856 F.3d 1365
| Fed. Cir. | 2017Background
- ArcelorMittal sued defendants in 2010 over U.S. Patent No. 6,296,805; after appeals and a PTO reissue the patent issued as RE44,153 (RE'153). Claims 1–23 of RE'153 were invalidated; claims 24–25 remained in dispute.
- The Federal Circuit previously remanded limited issues (literal infringement and commercial success) and later reversed the district court as to invalidity of claims 24–25, remanding for further proceedings limited to those claims.
- On remand ArcelorMittal moved to dismiss for lack of jurisdiction, tendered a covenant not to sue (filed with a cover letter stating the covenant was submitted conditionally to avoid mooting a related case asserting a different reissue, RE44,940), and defendants moved for summary judgment of noninfringement/invalidity of claims 24–25.
- The district court denied ArcelorMittal’s dismissal motion, found the covenant was not an unconditional mootness-providing assurance, and granted summary judgment invalidating claims 24–25 of RE'153.
- The Federal Circuit majority affirmed: it held the district court had subject-matter jurisdiction because ArcelorMittal never unconditionally assured defendants it would not assert claims 24–25 (the covenant was tendered with a condition expressed in the cover letter), and the court properly followed prior mandates and denied Rule 56(d) discovery.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether district court had Article III jurisdiction over RE'153 claims 24–25 on remand | ArcelorMittal: claims 24–25 were not part of the remand/it never asserted them; alternatively, it offered a covenant not to sue that mooted the dispute | Defendants: ArcelorMittal continued to assert claims 24–25 and did not provide an unconditional covenant, so a substantial, live controversy remained | Court: Jurisdiction existed; ArcelorMittal had previously treated claims 24–25 as asserted and its covenant was conditioned on a separate case, so no unconditional mooting occurred |
| Whether the tendered covenant not to sue mooted the case | ArcelorMittal: the executed covenant (filed with the court) eliminated any case or controversy as to RE'153 | Defendants: the covenant was conditioned by the cover letter and not unambiguously delivered, so it did not extinguish the controversy | Court: Covenant was not an unconditional assurance because tender was conditioned on resolution of the 685 case; dispute not moot |
| Whether district court correctly limited proceedings on remand to noninfringement and commercial success | ArcelorMittal: reissuance required reassessment (e.g., obviousness) beyond the prior limited mandate | Defendants: remand and prior opinions constrained issues to those previously directed (noninfringement and commercial success) | Court: Properly adhered to the prior mandate; reissuance did not alone create an intervening development justifying broader review |
| Whether district court abused discretion denying Rule 56(d) discovery on commercial success | ArcelorMittal: needed additional discovery to show nexus for commercial success | Defendants: plaintiff failed to explain how discovery would establish nexus; denial proper | Court: Denial was within discretion because ArcelorMittal did not specify how further discovery would create the required nexus |
Key Cases Cited
- MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) (declaratory-judgment case-or-controversy "all the circumstances" standard)
- Already, LLC v. Nike, Inc., 568 U.S. 85 (2013) (covenant-not-to-sue analysis and mootness principles)
- Friends of the Earth, Inc. v. Laidlaw Envtl. Servs., 528 U.S. 167 (2000) (party seeking to show mootness from voluntary cessation bears heavy burden)
- Prasco, LLC v. Medicis Pharm. Corp., 537 F.3d 1329 (Fed. Cir. 2008) (MedImmune totality approach and overlap with standing/ripeness/mootness doctrines)
- Organic Seed Growers & Trade Ass’n v. Monsanto Co., 718 F.3d 1350 (Fed. Cir. 2013) (representations/covenants that disclaim intent to sue can moot litigation)
- Fort James Corp. v. Solo Cup Co., 412 F.3d 1340 (Fed. Cir. 2005) (post-verdict covenants have no effect to moot a case)