Arcelormittal v. Ak Steel Corporation
16-1357
| Fed. Cir. | May 16, 2017Background
- ArcelorMittal sued defendants in 2010 for infringement of U.S. Patent No. 6,296,805; after appeals and a PTO reissue the patent issued as RE44,153 (RE’153).
- Earlier appeals (ArcelorMittal I and II) resulted in the Federal Circuit reversing anticipation invalidity for some claims and remanding limited issues (literal infringement and commercial success); ArcelorMittal II reversed invalidity for reissue claims 24–25 and remanded for further proceedings.
- District court later granted summary judgment that claims 1–23 of RE’153 were invalid as improperly broadened and (in an order covering related cases) stated it was invalidating claims 24–25 as well; the Federal Circuit reversed invalidation of claims 24–25.
- On remand, ArcelorMittal moved to dismiss for lack of jurisdiction as to the 050 case, and later submitted (to the court) an executed covenant not to sue that it explicitly conditioned on resolution of a motion to amend in a separate related case (the 685 case).
- The district court denied dismissal, treated claims 24–25 as still asserted on remand, and granted defendants’ summary judgment of invalidity of claims 24–25; the Federal Circuit affirmed, finding (1) subject-matter jurisdiction existed because the claims were properly part of the remand and (2) ArcelorMittal’s conditional covenant did not moot the controversy.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether RE’153 claims 24–25 remained asserted on remand | ArcelorMittal: claims 24–25 were not part of the 050 case on remand and thus not for the court to decide | Defendants: parties and the mandate treated claims 24–25 as remaining for further proceedings | Held: Claims 24–25 were part of the remand; substantial controversy existed and court could adjudicate them |
| Whether the conditional covenant not to sue mooted the dispute (subject-matter jurisdiction) | ArcelorMittal: tendered an executed covenant and argued it removed any live controversy | Defendants: covenant was conditioned and thus did not unconditionally extinguish dispute | Held: Covenant was conditioned on action in a separate case; considering all circumstances it did not unconditionally extinguish the controversy, so jurisdiction remained |
| Whether the district court followed the Federal Circuit mandate (scope of proceedings) | ArcelorMittal: reissuance required reconsideration of obviousness or claims beyond the limited mandate | Defendants: remand and prior opinions limited the district court to non-infringement and commercial success for claims 24–25 | Held: District court correctly limited proceedings to issues contemplated by the prior mandates (non-infringement and commercial success) |
| Whether denial of ArcelorMittal’s Rule 56(d) discovery request was an abuse of discretion | ArcelorMittal: needed additional discovery on commercial success to oppose summary judgment | Defendants: ArcelorMittal did not show how discovery would establish nexus to the claimed invention | Held: District court did not abuse discretion in denying Rule 56(d) relief; ArcelorMittal failed to show how additional discovery would create a genuine issue |
Key Cases Cited
- MedImmune, Inc. v. Genentech, 549 U.S. 118 (2007) (declaratory-judgment justiciability requires a substantial controversy of sufficient immediacy and reality)
- Already, LLC v. Nike, Inc., 568 U.S. 85 (2013) (patentee’s covenant not to sue can moot a case; party seeking to preserve jurisdiction must show live controversy remains)
- Prasco, LLC v. Medicis Pharm. Corp., 537 F.3d 1329 (Fed. Cir. 2008) (MedImmune standard and related doctrines can guide all-the-circumstances test)
- Arris Grp., Inc. v. British Telecomm. PLC, 639 F.3d 1368 (Fed. Cir. 2011) (covenant not to sue may defeat jurisdiction in some circumstances)
- Friends of the Earth, Inc. v. Laidlaw Envtl. Servs., 528 U.S. 167 (2000) (voluntary cessation doctrine: burden to show cessation makes recurrence unlikely)
- Campbell-Ewald Co. v. Gomez, 136 S. Ct. 663 (2016) (a case can become moot at any stage; mootness requires impossibility of granting effective relief)
- Organic Seed Growers & Trade Ass’n v. Monsanto Co., 718 F.3d 1350 (Fed. Cir. 2013) (broad representations or covenants can moot litigation)
- Fort James Corp. v. Solo Cup Co., 412 F.3d 1340 (Fed. Cir. 2005) (post-verdict covenants may not moot a case where merits already decided)