Ak Steel Corporation v. Sollac and Ugine, Defendants-Cross

the particular facts. National Presto In pyl methylcellulose as used in admixture dus., Co., Inc. v. Bend 1185, West 76 F.3d with the bupropion. The summary judg- 1191-92, (Fed.Cir. USPQ2d 1685, ment of noninfringement vacated, is 1996). aspect This infringement could the case remanded for proceed- further not be resolved adversely on Glaxo sum ings. mary judgment, for Glaxo sub CONSTRUED, CLAIMS JUDGMENT stantial evidence that the HPMC used VACATED, REMANDED. Andrx admixture with the bupropion controls or contributes to the control of

release of the bupropion.

Andrx argues also that its release rate

and plasma profile are different from those claims, Glaxo while Glaxo points out

that Andrx represented has the bioequiva-

lence of product. its aspect This can not be resolved adversely to Glaxo on the sum- CORPORATION, STEEL mary judgment record, for these material Plaintiff-Appellant, placed facts were in dispute, and were not resolved. See v. Liberty Anderson Lobby, v. Inc., 247-50, U.S. 106 S.Ct. UGINE, SOLLAC and Defendants- (1986) 91 L.Ed.2d 202 (summary judgment Appellants. Cross is proper when there genuine is no issue as to any fact material and that the moving 03-1074, Nos. 03-1075, 03-1085, 03-1086. party is entitled to a judgment as a matter United States Court of law). Appeals, Federal Circuit.

The factual issues arising under the doc trine of equivalents were similarly unre Sept. solved. view of our ruling that literal infringement particular limited to a

grade HPMC, but that Glaxo must es

tablish that all of the claim limitations are

bymet the Andrx product, premise

district court’s ruling on equivalency is no

longer applicable. Further, that holding

was based on the Federal Circuit’s deci

sion in Festo Corp. v. Shoketsu Kinzoku

Kogyo Co., (Fed. Kabushiki 234 F.3d 558

Cir.2000) (en banc), which was vacated af

ter the district court’s decision. Festo

Corp. v. Shoketsu Kogyo Kinzoku Kabush Co.,

iki 535 U.S. 122 S.Ct. (2002).

L.Ed.2d 944 Thus the district

court’s decision on this ground is vacated.

CONCLUSION

We conclude that the claims are not

limited to a specific grade of hydroxypro-

ent issued from an application that was a continuation of the application from which the '135 patent such, issued. As the two patents have different claims but share a specification. common That specification explains that aluminum-coated stainless steel has desirable resistance corrosion and high-temperature oxidation. pat- ent, 11. 14-23. properties Those Schmit, David E. Frost Brown Todd make such steel useful in LLC, the manufacture Cincinnati, OH, argued for plain- of components for in use tiff-appellant. automotive ex- himWith on the brief was systems haust and Ann equipment. combustion G. Robinson. Id. Hot-dip aluminum-coated pro- steel is Weihrouch, Steven P. Obion, Spivak, duced by passing heated steel strips McCelland, Maier, Neustadt, & P.C., of through aluminum; molten however, it is Alexandria, VA, argued for defendants- challenging get the aluminum to adhere cross appellants. With him on the brief or “wet” well onto the steel. Id. at col. were Steven E. Lipman, Jean-Paul Laval- 11.21-25. Wetting problems can result leye, Stephen Baxter, G. Michael E. crazing or flaking of the aluminum coating McCabe, Jr., Clayton and W. Thompson, during subsequent bending of the strip. II. Id. at col. 11.26-27. The inventors of LOURIE, patents Before CLEVENGER, suit the wetting solved prob- RADER, by Circuit lem Judges. maintaining steel strip in a hydrogen atmosphere prior to entry into Opinion for by filed Circuit the aluminum coating bath. Id. at col. Judge LOURIE. Concurring opinion filed 11.44-50. by Circuit Judge RADER. The inventors also discovered that their

LOURIE, Judge. Circuit invention did not work well unless the AK Steel Corporation appeals substantially pure, from the they decision of the United States stated District their application: Court for the Southern District of Ohio Most hot dip aluminum coatings granting summary judgment that its U.S. tain about 10% by weight silicon. This 4,800,135 Patent was not infringed by Sol- coating metal is generally in the defined lac and Ugine “Sollac”) (collectively, industry 1. We have discovered that certain claims of its U.S. Patent type this aluminum coating metal does 5,066,549 are invalid. AK Steel Corp. v. not wet with well chromium al- ferritic Sollac, (S.D.Ohio 2002). F.Supp.2d 711 steel, loy even when using the hydrogen Because the court properly construed the protective atmosphere. While being patent claims correctly found no genu by theory, bound it is believed silicon ine issues of fact, material affirm. we exceeding by 0.5% weight decreases the reactivity aluminum coating metal

BACKGROUND needed to react a ferritic chromium AK Steel owns '135 and '549 alloy pat- steel substrate. Accordingly, sil- ents, which are directed to hot-dip alumi- icon contents in the coating metal num-coated stainless steel. The pat- should not exceed about 0.5% weight. strip continu- ferritic A ferrous base alumi- dip hot

Commercially pure met- dip coated with ously hot known as coatings, otherwise num al, comprising: our preferred industry, are 2 in “pure” By about 6% including at least strip invention. metals chromium, those weight meant amounts of substantial addition where including alumi- coating metal silicon, are elements, such as alloying alloys, num or aluminum precluded. being strip on the coating layer uncoated areas and substantially free of added). 5,11. (emphases 23-40 at col. Id. Fe-Al a thick brittle without formed two the first patent, '135 The layer, inner alloy inde- contains one chronologically, patents adher- being tightly coating layer the claim, follows: reads as which pendent crazing to strip the and resistant ent to continu- strip ferritic base A ferrous 1. bending. during flaking or coating met- with a ously dip hot coated 1 the claim wherein strip of 3. The including at strip al; the comprising: up to coating contains metal aluminum chromium, the weight by least about 6% silicon. by weight 10% about essentially consisting coating metal continuously hot strip steel A ferritic aluminum, on said coating layer the coating with dip coated substantially free of uncoat- strip being metal, comprising: thick formed without a areas and ed steel includ- being strip stainless the layer, alloy inner Fe-Al brittle weight chromi- 10% by least about ing at adher- layer being tightly coating said um, crazing to resistant said strip

ent to strip being the layer on coating the bending. flaking during or areas and free of substantially uncoated Fe-Al brittle a thick formed without (emphasis 1. 2 col. 1. 62 to Id. at col. layer, alloy inner added). of that limitation pertinent The adher- being tightly coating layer above, claim, is that emphasized crazing and resistant strip ent alumi- essentially of coating ] “consistí bending. during flaking or num.” 5 wherein strip of claim 7. The pat- from which application The up to contains coating metal aas continuation was filed ent issued weight by 10% about application from 7,1. 7; 8,11. 1- col. 6,1. 65 to col. at col. Id. application, In that continuation issued. added). 9,12-13 (emphases and obtained broader sought the inventors were 1 and 5 independent The that the coat- require Rather than claims. Of- Trademark aluminum, Patent and by the allowed essentially of metal consist ing altera- (“PTO”) amendment without fice of the '549 independent claims dependent when “alu- tion. metal include that the require filed, rather originally and 7 were claims 3 simply have alloys” or minum or “the aluminum reciting '549 than characteristics. wetting enhanced weight sil- to about 10% 8,11. contains 1-7; 5-9. Of 7,11. col. patent, coating metal icon,” “the they read only claims in the eight both rejected The examiner 1 aluminum.” in this are at issue ones odd-numbered ¶ 112, 2, being 35 U.S.C. under as follows: they read appeal; failing point party material fact and ... particularly moving for indefinite distinctly subject matter entitled a judgment out claim the as a matter of 56(c). particular, law.” Fed.R.Civ.P. “The evidence sought patented. to be believed, phrase “Type that the of the nonmovant is to be and all suggested examiner replaced justifiable 1” ex- inferences are to be drawn in should be with more had favor.” Anderson plicit applicants Liberty Lobby, definition his v. Inc., 242, 255, specification. provided appli- their U.S. S.Ct. (1986). Furthermore, complied replacing the 1” L.Ed.2d 202 de- “Type cants the requirement ciding summary judgment whether is war- language 10%,” ranted, “up silicon content be to about the court “must view the evidence through patent. prism PTO then of the sub- issued evidentiary stantive burden” that would AK Steel sued Sollac in the district court inhere trial. Id. at S.Ct. infringement patents, includ- several ing patents. the '135 and '549 man- Sollac A patent infringe determination of hot-dipped ufactures stainless steel that is “First, requires analysis. ment a two-step including a molten mixture scope the court determines the mean and and 8.0%-8.5% silicon. ing patent [Sec claims asserted ... judge adopted spe- The district court a ond,] the properly construed claims are cial of phrase master’s construction compared allegedly infringing de “consisting essentially of aluminum” in the Inc., Techs., Cybor Corp. vice.” v. FAS patent permit claims to no than more 1448, (Fed.Cir.1998) (en F.3d 1454 138 0.5% silicon” and granted “about therefore banc) (citations omitted). one, Step claim summary judgment of noninfringement. construction, law, is an issue of Markman Steel, AK F.Supp.2d 234 at 720. The Instruments, Inc., v. Westview 52 judge special also adopted the master’s (Fed.Cir.1995) (en 967, banc), 970-71 aff'd, thorough 1, 3, 5, construction of claims and 370, 1384, 517 U.S. 116 S.Ct. 134 L.Ed.2d 7 of '549 patent Type as encompassing (1996), novo, Cybor, 577 that we de review 1 aluminum and his conclusion that two, 138 F.3d at Step comparison of patent did not enable one art skilled device, a claim to the accused requires a practice to invention with 1 alu- limitation every determination claim minum, 112, as required by § 35 U.S.C. its equivalent or is found the accused ¶ 1 at .Id. 718. The court grant- therefore device. Warner-Jenkinson Co. v. Hilton summary judgment ed invalidity of with Co., 17, 29,117 Davis Chem. 520 U.S. S.Ct. to respect patent those '549 claims. Id. (1997). 137 L.Ed.2d 146 de Those timely AK appealed Steel and Sollac questions terminations are of Bai v. fact. timely cross-appealed to this We court. Inc., L L Wings, & 160 F.3d 1353 jurisdiction pursuant have to 28 U.S.C. (Fed.Cir.1998). 1295(a)(1). § Whether the of matter a

DISCUSSION patent claim satisfies the enablement re ¶ We 112, 1, § review district court’s grant quirement of 35 U.S.C. is a of facts, a motion for summary judgment question de of based underlying law on (Fed.Cir. Endo-Surgery, Wands, novo. Ethicon Inc. v. U.S. In re 858 F.2d 735 (Fed. 1988), Surgical Corp., and, 149 F.3d patent presumed because a Cir.1998). valid, (2000), Summary judgment is appro to be U.S.C. if priate genuine evidentiary “there no to issue as burden to show support- facts specification’s read invalidity is one of clear statement a conclusion ing evidence, Gaming WMS that “silicon not exceed about 0.5%” convincing should Tech., statement, 184 F.3d That ad- Inc. v. Int’l out context. Game (Fed.Cir.1999). theory applicants vanced ex- them, binding was pressly stated on argues AK appeal, Steel On reactivity, according relates by interpreting patent court erred Steel, not to the critical characteristic of narrowly and the '549 claims too claimed invention—good wetting. broadly. It contends that claims too be construed patents both should responds Sollac to, containing up to cover baths clearly states that the invention is to be 10% Under that including, but not pure nearly pure used construction, to AK according and should not be used with 1 alumi- fact are of material genuine there issues further num. Sollac contends that infringement relating to history also contains state- prosecution claims and enablement of expressing ments Finally, view. Sol- claims. that, given lac contends the choice between construction, a broader and narrower correctly that the court responds

Sollac raised the enablement concerns patents’ proper- construed claims and both one, pre- broader the narrower one should found of material fact ly genuine no issue vail. noninfringement of the '135 the in- lack of enablement of agree We with the district court’s also patent volved '549 claims. Sollac the lan disputed construction of claim that cross-appeals, arguing the “consisting essentially guage. phrase The in it sum- denying abused its discretion patent in a represents of’ claim a middle of of mary invalidity the same judgment open-ended between the term ground grounds on the of lack phrase the “comprising” and closed-ended description by anticipation of written the “consisting ambiguous of.” view of 4,675,214. Patent AK Steel’s earlier U.S. of has been phrase, long nature the it special mas- adopted The district court compo inclusion of permit understood to deny summary ter’s recommendation to claim, in the that provided nents not listed lack judgment invalidity of of written they “materially do not affect basic description anticipa- and not to decide the of the invention.” PPG properties novel tion issue. Corp., v. 156 F.3d Indus. Indus. Guardian 1351, 1354(Fed.Cir.1998); In re Janakira A. The '135 Patent ma-Rao, 1312, 317 F.2d 50 C.C.P.A. argues AK Steel that the district (CCPA 1963). Thus, the claim con phrase in interpreting court erred by pat struction issue in the essentially of aluminum” “consisting of in is whether an amount ent this case up to permit only claims to in the aluminum silicon excess 0.5% Rather, according to about 0.5% coating materially affects the basic and interpretation per AK the correct properties of the invention. novel not mits silicon an amount to but need 10%, properties, To determine those we including as the intrinsic evidence patent specifica- no than the materially look further shows that about 10% silicon clearly The that states changes the novel characteristics of tion. goal wetting is the invention good AK Steel contends that invention. well distinguishes as what it from prior being not by theory....”). bound Howev- (“It er, art. See '135 eol. 11. 66-68 no such disclaimer to the attaches fol- principal object is a lowing of this invention to conclusion that should silicon not form dip hot exceed coated 0.5%. That ferritic conclusion is anot theo- ry; chromium it alloy expression steels having speaking enhanced to the metal.”). wetting by conditions under which invention will spec- or will not operate such, clearly properly. ification As AK also that states Steel cannot escape impact its upon containing “about 10%” silicon meaning of phrase the claim “consisting contains too much silicon and does not essentially of aluminum.” achieve goal, 23-29, that id. at whereas nearly or pure Nor are persuaded we by Steel’s does and is preferred, therefore id. at col. arguments that the determination whether Furthermore, 11.35—40. the specifica- more than 0.5% silicon materially alters tion precise draws a line between those the basic and novel properties of the inven- materials, two demarking exact per- question tion is a of fact that must be centage of silicon that the inventors con- by answered the jury. While “consisting silicon, sidered to be too much when it essentially of’ language in states, “[silicon contents in can at times blur the distinction between metal the separate should exceed steps about 0.5% in an infringement anal- (claim weight.” ysis Id. at col. 11.33-34. construction comparison On statement, basis of the construed claim we conclude accused device method), silicon in the distinction excess of 0.5% is clear weight enough would in this case. AK materially alter Steel cites the basic PPG Indus- and novel prop- tries to support its invention, position erties of that deter- and that the claims mination is a factual one for jury. must therefore be inter- Indeed, we held preted case permit “[t]he no more than 0.5% silicon court properly left it to jury to deter- by weight in the aluminum coating. mine whether the amounts of iron sulfide attempt Steel’s to distance it in [the glass accused] SMG have a material self from the clear limiting statements in effect on the basic and novel characteris- specification its is unavailing. While it is glass.” tics of the Id. we so held true that statements a specification ex because, there as we stated in the immedi- plaining a scientific theory by which an ately sentence, preceding “The district invention is operate believed to should sel judge properly recognized that the patent dom, ever, if be treated as a limitation on a is silent about iron sulfide and about what invention, claimed e.g., Fromson v. Ad constitutes a material effect on the proper- Plate, vance Inc., 720 F.2d Offset ties of glass.” case, Id. In this quite 1570 (Fed.Cir.1983), the district court did differently, specification is far from not do so here. There is a distinction silent regarding silicon and its material between an theory inventors’ as to the effect on the properties of the aluminum reason for a limitation and the meaning of coating bath and steel; the resultant coated that By very terms, limitation. its above, as explained specification di- specification expresses here the inventors’ rectly speaks to conclusively answers desire not to be bound by the reactivity question. Therefore, that it is as a matter theory they present explain why alumi of claim construction that we hold that the num with more silicon does not wet well. claims of do not encompass (“While See '135 col. 11. 29-34 steel coated with aluminum containing silicon, they did so surren- in fact when only about 0.5% more than subject matter. that der simple one is the remains that issue factual on claims, read interpreted, so whether dictio- that AK Steel’s responds Sollac coated with strips steel Sollac’s nonsensical to” is “up of nary definition not, They do 8.0% silicon. containing follows that limit a numerical where other- conclude could juror case, according reasonable no Sol- such phrase. is far that 8.0% wise, the fact given counting up (e.g., lac, limit included is affirm the nine). therefore ten, of 0.5%. also We not Sollac excess stops to ten of non- judgment summary replacing of grant court’s amendment contends patent. '185 of the 10%” was infringement “up to about 1” with “Type clarity, improvement Patent subject B. The matter. as an exclusion only Moreover, affected the amendment and the '549 patent next turn We claims, independent not the dependent correctly whether question ex- with an claims, were submitted judgment summary granted encompass type they planation en- are not of that claims tested aluminum. Because abled. meaning as to the agree with Sollac of a claimed We scope full enable must begin claims. We of the invention, Wright, 999 In re 3 and Those claims dependent (Fed.Cir.1993), inquiry an enablement of the content the silicon state that a construction begins with typically about 10%.” “up to (8th coating is ed., § 2164.08 claims, see MPEP 11; 1. 13. We patent, col. rev.1-2003) (“All of enablement questions extend do indeed that those hold subject against the claimed are evaluated in the alumi- include, to, 10% silicon in- examination of the The focus matter. i.e., 1 aluminum coat- coating, num scope the substantial whether quiry ings. Accordingly, is enabled. the claim the ex- step requires analytical ordinary

first First, we conclude exactly what aminer determine 10%” to about “up meaning phrase claims.”). by the encompassed matter As endpoint. 10%” the “about includes object of when an out AK

pointed nonnumeric, 1. Claim Construction “up to” is the preposition to exclude meaning is natural most the district argues that AK Steel the up wall to the (e.g., painting object construction court’s hand, out pointed door). the other On is aluminum Type 1 including claims Sollac, object is numerical when (1) meaning ordinary contrary to meaning to include limit, is the normal endpoint; including the 10% not to” as “up counting up to (e.g., limit numerical upper (2) claims’ recitation pas- seven up to ten, seating capacity (3) well; clear specification’s must wet here a numeri- we have sengers). Because (4) aluminum; and 1 of Type disclaimer ordinary 10%”—the limit—“about cal interpret be should that claims the axiom included. endpoint is meaning is that to validity. According their preserve ed history Moreover, shows prosecution mistakenly assumed Steel, the into was introduced phrase narrow did applicants cov- effect of intention and claims with the words they replaced when claims origi- 7 3 and Claims endpoint. ering to about 10%” “up with 1 aluminum” “Type 1242

nally aluminum,” recited 1 “Type and it is not dispute that a mixture of about 10% clear that the inventors intended obtain silicon and approximately 90% aluminum is covering Type claims 1 During aluminum. alloy” “aluminum and “an aluminum prosecution, however, AK Steel ... metal.” Id. at col. 7,11.1-2; 8,1. amended 2. those claims to remove Type reference to 1 Moreover, and most importantly, claims put and to place its language 1 and 5 also encompass must expressing “up to about 10% silicon” silicon, ie., with to about 10% Type 1 language. There was no indication that silicon, 7, because claims 3 and which de- the amendment was relinquish made to pend from 1 claims respectively, scope; claim rather it was made in re- expressly recite “up to about 10% silicon.” sponse to the examiner’s request to re- Under the doctrine of differentiation, claim place language that he vague found dependent are presumed claims to be of language that he felt “more specifically narrower scope than the independent defined” the same material. Under those claims from which they depend. See RF circumstances, the amendment clarified Del, Keystone Techs.,Inc., Inc. v. Pac. the claims without changing their scope. (Fed. Cir.2003) (stating On the prosecution basis of that history that an claim independent usually ac- alone, claims 3 and 7 must be interpreted greater corded a scope than dependent its encompass aluminum. In addi- claims); ¶4 see also 35 U.S.C. tion, because the defines (2000) (“[A] in dependent claim form shall 1 aluminum as “contain[ing] about 10% contain a reference to a previously silicon,” 25-28, ie., id. at col. weight 11. set forth and then specify a further limita- endpoint recited in the amended and tion of matter claimed. A claims, issued it follows that the claims claim in dependent form shall be construed encompass, exclude, rather than both an to incorporate by reference all the limita- aluminum coating having 10% about silicon tions of refers.”). the claim to it and Type 1 aluminum coating. That applicable presumption in this case and has not been rebutted. depen- If the Turning next to the independent dent expressly recite “up to about claims, we begin their interpretation by silicon, 10%” then independent claims, analyzing ordinary their meaning. Ac which must be least as broad as the cording to plain their language, indepen depend them, claims that from must in- dent claim permits the coating metal to clude aluminum coatings with “up to about include any “aluminum or alloy,” 10%” silicon. Independent and 5 id. at col. 1-2, independent while therefore also cover at steel strips least claim 5 not contain does any express limi hot-dip coated with aluminum containing tation regarding the composition of the silicon, ie., about 10% Type 1 aluminum. metal, other than that it be “an metal,” aluminum coating 8,1. id. at col. AK Steel’s remaining arguments con- The ordinary meaning of phrases those cerning interpretation of the claims are 5, then, claims 1 and they is that encom unpersuasive. First, points AK Steel to pass a metal coating aluminum, mixture of in language the independent claims de- including perhaps a significant amount scribing the qualities functional of the silicon. We need not ie., upper determine the coating layer, “being substantially free limit, any, if of silicon that the claim lan areas,” of uncoated “formed without a guage permits, but the claims must cover thick brittle Fe-Al alloy layer,” inner and silicon, to at least 10% parties “being as do tightly adherent to strip and claims, and the fact of claim patent flaking during bend- crazing to resistant 3-7; prosecution history, as dependency col. ing.” interpret patent. pat- the '549 The '135 applied like us to AK would 5-9. Steel narrowing term requiring that ent claims also contain the limitations as those of,” in “consisting essentially than about 10% which is not contain less coating metal do, because, Thus, differing claims. our patent cannot the '549 That we above, that claims is patents’ have concluded constructions of the two we indicated facts. coatings compelled by with 10% sil- all of relevant include the claims prop- the recited possessing as well as icon 2. Enablement does state specification

erties. While not a of a but that use patent our construction of the '549 Given prop- in the four coating results claims, question we turn to the whether claims, thereby imply- in the erties recited that properly court determined district in the of silicon ing percentage that not been enabled. those claims have low in quite must be argues AK that principally Steel coating to have resulting for the order holding premised court’s enablement was characteristics, impli- wetting claimed construction, faulty point claim we on a meaning the clear cation does not override rejected. AK further already have Steel the district court and claims as both failed to submit contends Sollac Those construed them. this court have convincing alone clear and evidence—let clearly including speak claim limitations experimentation, undue evidence—of silicon, we must inter- and that is how 10% presump- AK is entitled to Steel pret them. validity, espe- which it contends is tion of that a narrower contention AK Steel’s Finally, AK contends cially weighty. Steel claims is construction of several embodi- that the discloses that claims should under the axiom order properly construed ments within validity preserve their interpreted be specification range, and that That unpersuasive. possible is also when range full need not teach the claimed one, dependent upon qualified is a axiom the claims to be enabled. order for in- validity-preserving that a the likelihood that under the court’s responds Sollac one. permissible be a terpretation would claims, they of the '549 construction case, advocated interpretation In this As scope. in their full are not enabled avoiding valid- possibly AK while nonenablement, points Sollac evidence of interpreta- cannot be a correct ity pitfalls, itself, specification in the to the statements tion, ordinary it is counter to own documents as well as Steel’s of the claims as well as meaning reflecting testimony personnel from its history. prosecution Type 1 inability use 9% silicon their interpreted we have recognize that We effectively. supported differently two similar the district agree with holding are We specification. We the same have not been claims as construed that the is limited to 0.5% that one set of claims requirement The enablement other, including enabled. silicon; up to and of section paragraph in the first re- set forth may be 10%. Such a situation about pertinent provides is a of title as unusual. garded shall describe part of the clear state- necessary consequence making process “the manner applied as specification, in the ments 1244 invention], in

using hypothetical [the such clear and skilled knowledge artisan’s concise, and exact terms as to enable surrounding ability modestly art and person per- skilled in the art to which it experiment would have been sufficient to tains, nearly or with which it most enable him strip to make and use a steel nected, to make and use [the invention].” containing Type a 1 aluminum coating, ¶ (2000). 35 U.S.C. 1 The enable- attributes, with the wetting claimed at the ment requirement is satisfied when one time of patent’s filing effective art, skilled in the after reading specifi- in date cation, could practice claimed invention We conclude that the in- specification is Wands, experimentation. without undue adequate as a matter of regard law that 858 F.2d at 736-37. primarily expressly because it teaches stated, weAs have all of the contested against it. being Worse than silent as to strips claims read on steel invention, aspect of the specifica- containing either a 1 Type or a 2 Type clearly tion and strongly warns that such Furthermore, aluminum coating. an embodiment would not wet In well. require wet well. particular, specification warns that sil- undoubtedly enables the icon content above 0.5% the aluminum form, invention in the latter as it clearly coating causes coating problems. Such describes how to make and use such strips statement discourages experimentation aluminum, Type and there is no with coatings having more than 0.5% sil- question that resulting strips are well- icon, undue or otherwise. pub- It tells the wetted. part quid pro lic that higher amounts of silicon will quo bargain, applicant’s Nothing work. further need be said about specification must enable one of ordinary the matter. skill the art to practice the full scope of Moreover, we disagree with AK Steel’s the claimed invention. Wright, 999 F.2d contention that Sollac failed to submit evi- say 1561. That is not to specifica that the dence that experimentation undue would tion necessarily itself must describe how to required be to enable practice of the make every possible and use variant of the claims. Sollac documentary and invention, claimed for the artisan’s knowl testimonial evidence from AK Steel that edge of prior art and experi routine despite its desire to utilize a 1 alumi- mentation can often fill gaps, interpolate num it coating, was unable to do so at the embodiments, between perhaps even time of the filing effective date. AK extrapolate beyond the disclosed embodi F.Supp.2d Furthermore, at 782-83. ments, depending upon the predictability above, explained specification’s Genentech, of the art. See Inc. v. Novo teaching A/S, is itself evidence that at Norilsk least (Fed.Cir.1997) (“[A] significant amount experimentation specification need not disclose would been art.”); necessary what is well known in have practice see also Wands, (“Enablement claimed invention utilizing 858 F.2d at 736-37 alumi- precluded by is not num. experimentation, summary, given some specifica- such screening.”). as routine tion’s teaching away But it does from the mat- that, claimed, mean when a range ter that eventually there was claimed and AK must be reasonable enablement of the Steel’s own failures to make and use the scope of range. The question more later claimed invention at the time of the whether, precisely here is with AK application, Steel’s the district court correctly con- patent specification as an initial guide, the cluded that there genuine was no issue of of experimen- genuine and there are no issues material relating to undue material fact to enablement. disentitling summary tation as it relates fact Steel judgments noninfringement of and invalidi- the notion that Finally, dispel we law, a matter of we ty, respectively, as an enable of the PTO to issue the failure creates an rejection automatically ment AFFIRM. com weighty presumption” of

“especially § 112. AK with 35 U.S.C. Steel pliance RADER, Judge, concurring. Circuit Corp. v. Ad language cites Brooktree I While endorse results reason- Devices, Inc., vanced Micro I ing majority, separately of the write (Fed.Cir.1993), to that effect. 1574-75 present an alternative reason for conclud- patent complies whether a 1, 3, 5, ing that contested claims and 7 of depends upon requirement the enablement patent are invalid. This court inquiry regarding the factually a intensive sustained the district court’s determination see experimentation required, amount that those claims were invalid for lack of Wands, 737, an to be 858 F.2d at issue enabling disclosure. The district court Indeed, case-by-case on a basis. evaluated determinative, point to reach a is far from declined raised presumption master, patent have on occasion invalidated namely prior and we art antic- special enabled, despite having claims as not been record ipated suggests those claims. The allowed those claims. having the PTO’s special that the master was correct. Genentech, F.3d at 1368. This is Kg., case, prior In this art is the '549 specification case. The here another such grandparent U.S. Patent No. patent’s tells us that use of aluminum plainly itself (the 4,675,214 patent). pat- '214 The '549 is not enabled. up to about 10% silicon group ent is the third in a of related conclude, specification does not To with identical disclosures. The patents significant portion enable '214 in that series. patent was first contested encompassed by matter '214 disclosed that patent as filed properly claims of the '549 metal “silicon contents Accordingly, we affirm the district strued. by weight.” about 0.5% should exceed judgment invalidity of those court’s '214 11.30-31. The later patent, col. noncompliance ground claims on the contested claims '549 recites ¶ with 35 U.S.C. “aluminum,” containing metal “aluminum alloys,” “up to about 10% Cross-Appeal Thus, pat- later '549 weight silicon.” affirm the court’s Finally, because we dis- original new matter to the ent added claims of the judgment that the contested Specifically, closure. the later invalid, need not reach are we much concentrations of sil- higher claimed issues, are cross-appealed Sollae’s icon. Because the reaching for the same grounds alternative this support as filed contains no judgment. matter, applicant cannot new CONCLUSION filing date of the earli- priority back into the '214 application er that matured correctly Because the court construed patents, patent.1 and '549 the claims of the '135 reason, patent. the contested claims intermediate

1. For the same filing date of the benefit from the do not claim, '214 priority a valid Without '214 patent issued prior art. 23, 1987, year one before the

on over June filing date November patent’s patent’s encompass

1988. The '549 in the earlier

subject matter disclosed special master acknowl-

patent. As patent anticipates

edged, the claims.

tested

Thus, applicant when an files continua- patent issuing

tion from an applications, application may anticipate

earlier under 35

containing new matter U.S.C. application the earlier lacks 132. When description in the written for support matter,

the new the new matter priority original

cannot claim back to the case, a

filing. patent issuing In that from may antici- application

the earlier become art,

patory prior as occurred here. SCARNATI, Petitioner,

Richard A.

v.

DEPARTMENT OF VETERANS

AFFAIRS, Respondent.

No. 01-3282. Appeals,

United States Court of

Federal Circuit.

Sept. Scarnati, Columbus, OH,

Richard A. pro se. Ohta, Attorney,

Leslie C. Commercial Branch, Division, Litigation Depart- Civil Justice, DC, ment Washington, respondent. on the were With her brief Schiffer, E. Acting Stuart Assistant Attor- General; Cohen, Director; ney David M.

Case Details

Case Name: Ak Steel Corporation v. Sollac and Ugine, Defendants-Cross

Court Name: Court of Appeals for the Federal Circuit

Date Published: Sep 23, 2003

Citation: 344 F.3d 1234

Docket Number: 03-1074, 03-1075, 03-1085, 03-1086

Court Abbreviation: Fed. Cir.