*1 ty, I wоuld remand this case for further development question
factual on the abandoned, suppressed,
whether Cree meaning
concealed invention within the its § 102(g).
III. Conclusion reasons, foregoing although
For the I majority
agree with Cree estab- prior inventorship, I
lished believe there genuine preclud-
are issues of material fact summary judgment
ing Cree’s favor § I 102(g). Accordingly,
under must re-
spectfully judgment dissent from the
majority reaches. I would reverse and
remand for trial.
ARCELORMITTAL FRANCE and Ar Atlantique Lorraine,
celorMittal Et
Plaintiffs-Appellants, CORPORATION, STEEL
Defendant-Appellee, Dearborn, Wheeling-
Severstal Inc. and Inc., Defendants-Appellees.
Nisshin
No. 2011-1638. Appeals,
United States Court
Federal Circuit.
Nov.
Opinion for the court filed Circuit Judge DYK. Opinion dissenting-in-part Judge filed Circuit WALLACH. DYK, Judge. Circuit ArcelorMittal France and ArcelorMittal (collectively et Atlantique Lorraine “Arce- lorMittal”) from a final appeal judgment of the United States District Court for the *4 judgment District of Delaware. The jury a finding based on verdict that defen- Corporation, dants AK Steel Severstal Dearborn, Inc., Wheeling-Nisshin and Inc. (“AK Steel”) infringe did not ArcelorMit- (“the 6,296,805 tal’s Patent U.S. No. and that patent”) the asserted claims were invalid anticipated as and obvious. Arce- challenges lorMittal both the district jury’s court’s claim construction and the verdict. uphold
We
claim con-
court’s
in part
part.
struction
and reverse it in
We also reverse the
verdict of antici-
obviousness,
pation.
respect
With
a
required
new trial is
because the district
court’s claim construction error prevented
Trela, Jr., Sidley
Constantine L.
Austin
properly considering
from
Arce-
LLP,
IL,
Chicago,
argued
plain-
of
for
lorMittal’s evidence of commercial success.
tiffs-appellants.
him on the brief
With
affirm-in-part,
We therefore
reverse-in-
Pritikin
were David T.
And Constantine
part, vacate-in-part, and remand for new
Koutsoubas. Of counsel on the brief were
trial.
Stover,
Jeffrey B. Bove
Chad S.C.
and
LLP,
Hutz
Connolly
Lodge
Bove
&
of
BACKGROUND
DE.
Wilmington,
The '805
covers boron steel sheet
Sipes, Covington
N.
& Bur-
Christopher
coating applied
with an aluminum-based
LLP,
DC,
ling,
Washington,
argued
for
rolling
the sheet to its final thickness.
him
defendants-appellees.
all
With
on the
“hot-stamping,”
The steel is used for
R.
brief were Roderick McKelvie and Jef-
process
rapidly heating
which involves
frey
Corporation.
H. Lerner for AK Steel
steel, stamping
parts
it into
of the desired
Of counsel on the brief were Richard W.
shape,
rapidly cooling
and then
them
Simonelli, Reising
Hoffmann and David J.
rapid heating
The
(“quenching”).
PC,
Ethington,
Troy, Michigan
for Sev-
cooling
crystalline
alters the
structure of
Dearborn, Inc,
al.
erstal
et
steel, converting it to
austenite and
CLEVENGER,
DYK,
By altering
martensite.
the steel’s
Before
then
manner,
WALLACH,
Judges.
hot-stamp-
microstructure
this
Circuit
strong
ing produces particularly
steel.
The
asserted claims of the '805
5, 7,
dependent
are claim and
claims
hot-stamped
strong,
Because
steel
so
and 16. Claim the
inde-
asserted
by hot-stamping
created
can be thin-
parts
claim,
pendent
reads:
lighter
produced
ner and
than steel parts
processes
being just
other
while
as
1. A hot-rolled coated steel sheet com-
strong. This is
desirable in
particularly
prising
hot-rolled steel sheet coated
aluminum
alloy
with an
parts
the manufacture of automobile
be-
aluminum
wherein
coating,
the steel in
sheet
for
strong parts
required
safety
cause
are
comprises
following
composition
light parts promote
efficiency.
fuel
weight:
Although hot-stamping has clear bene-
< carbon
0.15%
<0.5%
fits, its use has
been
historically
limited
0.5%<manganese<3%
problems
because
associated with the
process.
high temperatures required
< silicon
0.1%
<0.5%
oxidation,
hot-stamping
resulting
cause
*5
0.01-romium<l%
on
formation of “scale”
the steel’s
titanium <0.2%
surface. Seale must be removed before
welded,
steel can
aluminum <0.1%
painted
but
removing
requires
expensive and envi-
phosphorus<0.1%
ronmentally
“shot-blasting”
harmful
and
sulfur <0.05%
“pickling” operations, in
which
steel is
0.0005%<boron<0.08%,
the remain-
blasted with an
im-
abrasive material and
being
impurities
der
iron аnd
inher-
mersed
a chemical
Shot-blasting
bath.
in processing,
ent
steel
and the
problematic
also
it can damage
because
has a very high
sheet
mechanical
parts,
thin
undermining
strength
and
resistance after thermal
treatment
efficiency advantages
hot-stamping.
the aluminum
or aluminum al-
Oxidation also
loss of
causes the
carbon
loy coating provides
high
resis-
(“decarburiza-
from the steel’s surface
tance to corrosion of the steel sheet.
tion”), which weakens the steel.
col. 4
patent
1.64 to col. 5 1.15.
The
coating
aluminum-based
claimed in
22,
January
2010,
On
ArcelorMittal
the '805
prevents oxidation from
brought
infringement
an
action
AK
against
occurring during hot-stamping. As a re-
Steel in the United States District Court
sult, scale does not form
decarburiza-
Delaware,
fоr the District of
alleging
tion does not occur when the claimed steel AK Steel’s aluminum coated
sheet
steel
hot-stamped.
This
hot-stamping
makes
products infringe the
asserted claims
costly,
less
reduces
im-
its environmental
patent.
parties
upon
the '805
The
agreed
pact, and allows
production
its use in the
expedited
an
trial schedule in
AK
which
parts
that are too delicate to survive
agreed
invalidity
Steel
to limit itself to two
shot-blasting.
to arguing
defenses and
non-infringement
AK
products
the construction of two claim
None of
Steel’s accused
based on
literally infringed
construed,
the claims as
terms.
prohibited
so the district court
ArcelorMit-
schedule, on December
Pursuant to that
asserting
tal
from
literal
infringement.
2010,
court
a claim
issued
Order,
Memorandum
ArcеlorMittal Fr. v.
interpreting
construction decision
(D.
AK
Corp.,
Steel
No. 10-CV-00050
Del.
steel sheet coat-
claim terms “a hot-rolled
4, 2011),
Jan.
ECF No. 205. The case
alloy
aluminum or aluminum
ed with an
proceeded to trial on the basis of the doc-
very
“the
sheet has a
coating” and
steel
equivalents,
trine of
and the
returned
mechanical resistance after thermal
high
14, 2011,
January
finding
verdict
treatment.”
Fr. v. AK Steel
ArcelorMittal
not infringe
Steel did
the '805
(D.Del.2010).
F.Supp.2d
Corp.,
the asserted claims were both
The court first construed the term “hot-
anticipated.
obvious and
at
rolled steel sheet.” Id.
judgment
then moved for
as a matter of
ordinary
court noted that those of
skill
invalidity
law on the
issues and for a new
“hot-rolled”
distinguished
the art
between
infringement.
trial on
The district court
and “cold-rolled” steel sheet based on denied those motions and entered final
process
is used to reduce the sheet
judgment
August
for AK Steel on
2011.
Relying
final
Id. at
to its
thickness.
ArcelorMittal Fr. v. AK
Corp.,
Steel
convention,
industry
on evidence of this
(D.Del.2011).
F.Supp.2d 960
ArcelorMit-
the court concluded that ArcelorMittal
timely appealed.
tal
jurisdiction
We have
” generally
*6
not claim a ‘sheet’
but
“did
1295(a)(1).
§
under 28 U.S.C.
“specifically
rather
claimed a sheet made
by hot-rolling.”
Consequently,
Id. at 548.
Discussion
assigned
the court
“hot-rolled steel sheet”
This court
a district
“review[s]
meaning
“a steel sheet that has been
judgment
court’s denial of ...
as a matter
to its final
reduced
thickness
hot-roll-
deference,
of law without
and its denial of
ing.” Id. at 549. This construction ex-
a motion for
new trial for abuse
[a]
cluded steel that was first hot-rolled and
discretion.” CytoLogix Corp. v. Ventana
then cold-rolled to its final thickness.
(Fed.
1168,
Sys.,
Med.
1172
Cir.2005). We review de novo the district
The court next examined the term “the
court’s claim construction. Markman very high
steel sheet has a
mechanical
Instruments,
967,
Westview
979
resistance.”
Id. The court noted that
(Fed.Cir.1995) (en banc),
517 U.S.
aff'd
applicable
there
industry
is no
standard
370,
116 S.Ct.
1320 in meaning unambiguous to its final thickness fol- dict claim that is been cold-rolled lowing hot-rolling. replies light initial Steel of the intrinsic evidence.” Id. at properly interpreted Here, that the district court specification makes clear ordinary the term in accordance with its that claim term “hot-rolled steel sheet” customary meaning the art. We preclude cold-rolling step. does not agree with ArcelorMittal. optional cold-rolling References to an “compris of the term
By step specification its use abound of the '805 ing,” expressly contemplates 47-48, claim 1 addi 1 ll. patent. '805 col. col. tional, steps cold-rolling. 30-31, 37-40, unstated such as ll. col. ll. 7-9. AK Steel ‘comprising’ pre “The transition creates argues that these references describe “dis ... that the claim ex sumption does not products” tinct specification and that the additional, clude unrecited elements.” elsewhere uses the word “sheet” where it Crystal Corp. Semiconductor v. TriTech means to refer to both steel that has been Int’l, Inc., Microelectronics F.3d hot-rolled to its final thickness and steel (Fed.Cir.2001). pre To rebut this Appellee’s was also cold-rolled. Br. sumption, AK Steel offers the conclu 29. The district court based its claim con sory very assertion that definition of “[t]he reasoning. struction on similar Arce See ‘hot-rolled steel sheet’ is steel sheet lorMittal, F.Supp.2d at 546-47. How has been reduced its thickness ever, that reading is not coherent final hot-rolling.” Br. Appellee’s It is specification for at least two reasons. true that there is extrinsic ample evidence First, specification contem establishing ordinary meaning that the plates that according sheet to the “[t]he industry “hot-rolled steel sheet” re may invention ... again be cold-rerolled fers to steel sheet that has not been cold- depending on the final thickness desired.” Expert rolled. witnesses for both Arcelor- col. 2 ll. 37-40. It also de agreed Mittal and AK Steel this defi scribes the invention’s purpose as includ customary nitiоn was industry. *7 ing production the of “cold-rolled steel Furthermore, leading steel-making trea 1 sheet.” Id. at col. ll. 37-38. This direct according tise classified steel sheet to this ly contradicts the district court’s claim industry usage. construction, under which the sheet must However, while AK Steel is correct be reduced to its thickness hot- final ordinary meaning that the the term rolling. specification The claims and clear, the industry specification the is “ should be ‘in a read manner that renders meaning. not consistent with that In Phil ” patent internally Pfizer, the consistent.’ lips Corp., v. we emphasized AWH that USA, Inc., Inc. v. Teva Pharm. 429 F.3d specification the the primary guide to (Fed.Cir.2005) 1364, 1373 (quoting Budde claim interpretation, recognizing that “the Inc., 1369, Harley-Davidson, v. specification single guide is ‘the best to the (Fed.Cir.2001)). 1379-80 ” meaning disputed of a term.’ 415 F.3d (Fed. Cir.2005) (en banc) Second, 1320-21 specification de (quoting Corp. v. Conceptronic, “having Vitronics scribes an embodiment a thickness (Fed.Cir.1996)). 90 approximately F.3d 1582 1 mm.” patent '805 col. dictionaries, thickness, Although definitions based on 4 ll. 8-9. That at least at the treatises, industry invention, practice, and the like time of the could have been important Indeed, often are in interpreting by cold-rolling. aids achieved spec claims, they may not “[a]ccording be “used to contra- ification states that to the in-
1321
may
sary
“high”
the sheet’s thickness
be as
mechanical resistance.
If
vention”
44-46,
high
resistance,
1500 MPa is
mechanical
mm,
ll.
patent
0.25
col. 3
low as
very high
then
resistance must be at least
that even
Steel concedes is
a thickness
argues
“very
1500 MPa. ArcelorMittal
that
To
оnly by cold-rolling.
achievable
high” mechanical resistance can include a
sure,
protection does not extend to
MPa,
as
pointing
resistance
low as
to
matter disclosed but not claimed.
subject
language
specification stating
Brown,
Concepts, Inc. v.
Unique
possible
the invention “makes it
to obtain a
(Fed.Cir.1991).
However,
mechanical resistance in excess of 1000
normally
interpret
do not
claim
“[w]e
However,
MPa.”
at
1 ll.
Id.
col.
way
in a
that excludes disclosed
terms
specification does not refer to 1000 MPa as
examples
specification.”
Verizon
Thus,
“high”
“very high.”
much less
Id.
Corp. Vonage Holdings Corp.,
Servs.
specification supports
(Fed.Cir.2007).
1295, 1305
F.3d
court’s construction.
specification unambig
Because the
evidence,
Turning to the extrinsic
uously contemplates cold-rolling, the dis
the district court observed that
term
by interpreting
trict court erred
the claim
“very high mechanical resistance” is not a
term “hot-rolled steel sheet” to exclude
term of art
in the steelmaking industry
subsequently
sheet
cold-rolled.1 The
steel
any ordinary
and does not have
meaning.
correct construction of “hot-rolled steel
ArcelorMittal,
F.Supp.2d
at 550. Ar
“a
sheet” is
steel sheet
has been hot-
points
celorMittal
to various documents
during
production.”
rolled
its
suggesting that steel with mechanical re
may
sistance as low as 700 MPa
be consid
“Very high
B.
mechanical resistance”
steel,
high” strength
ered “ultra
but the
disputes
ArcelorMittal also
record does not establish that these refer
interpretation
district court’s
of the claim
comparable
ences concern boron steel
“very high
term
mechanical resistance.”
patent.
described in the
On the other
interpreted
The district court
that term to hand, one
inventors of the '805
mean “the flat-rolled steel has been sub patent coauthored an
article
heat-treat
jected,
rolling,
to additional con
ed boron steel before the
was filed.
heating
cooling
trolled
an
and has
This article is
art. The article de
strength
ultimate tensile
of 1500
orMPa
“high
steel with
scribes
mechanical charac
ArcelorMittal,
greater.”
F.Supp.2d
at
(UTS >
>
teristics
1500 MPa and YS
*8
agree
549-50. We
with the district court. MPa)” after heat treatment. X. Baño &
begin
specification,
We
with the
Laurent,
JP.
Heat Treated Boron Steels in
“high”
states that a
or “substantial” me
Industry,
the Automotive
in XXXV 39th
“may
chаnical
resistance
exceed 1500
673, 673,
MWSP
Proc. ISS
Conf.
51-54,
(1998) (“Bano”).
MPa.” '805
col.
ll.
col. 3 ll.
Prior art can “help to
specification
52-54. The
not
does
define
how a disputed
demonstrate
term is used
resistance,
“very high” mechanical
but it by those skilled in the art.” Vitronics
implies
Thus,
that the 1500 MPa
Corp.,
level
neces-
mony subjective mary judgment by jury an inventor’s or in a new trial. regarding jury ir- the understanding patent terminology infringement Because found no construction, equivalents, claim under the doctrine of and Ar- relevant to Howmedica Tech., Inc., Corp. Wright challenged aspect Osteonics v. Med. celorMittal has not that verdict, (Fed.Cir.2008), any infringement analysis 540 F.3d understanding necessary when an inventor’s found to be on remand should art, in expressed prior infringement. claim term is the be limited to literal can be evidence of how those skilled the Anticipation II
art
have
that
term at'
would
understood
Markman,
the time of the invention.
argues
ArcelorMittal
that
(“[Ejvidence, in
F.3d at 991
the form of
support
evidence cannot
antici
prior
documentary
expert
art
evidence or
pation
“Anticipation
verdict.
is a question
testimony, can show what the claims would
fact,
reviewed
substantial evidence
art”);
mean
to those skilled
jury.”
Corp.
when tried to a
Finisar
v.
Howmedica,
By
Accordingly, both intrinsic evidence patent, parties agree and the support and extrinsic evidence hot-stamping it discusses boron steel. very high court’s conclusion that “a me- found, argued, jury Steel and the chanical resistance” means a mechanical the article disclosed the entire invention. resistance of 1500 MPa or greater. There- challenges finding fore, we affirm the district court’s con- grounds that Bano disclosed neither struction of “the very steel sheet has a coating the steel sheet before thermal high mechanical resistance.” coating treatment nor the steel sheet with At argument, oral AK Steel’s counsel aluminum alloy. or an aluminum We con conceded that at prod- least some accused clude that there is not substantial evi ucts have a mechanical resistance of 1500 dence that coating Bano disclosed However, MPa or greater. as a result of aluminum or aluminum allоy. the district court’s incorrect claim con- struction of “hot-rolled steel A sheet,” anticipated only claim is at was instructed trial to consider where “each every limitation is found infringement only direct expressly under the doc- either inherently single equivalents. Jury Techs., trine of Final Instruc- art reference.” Celeritas Ltd. tions, 1354, 1361 ArcelorMittal Fr. v. AK Corp., Corp., Steel Rockwell Int’l (D. 10-CV-00050, (Fed.Cir.1998). No. at 22 Del. Jan. Anticipation must be *9 2011), Thus, 212. proven ECF No. there has been by convincing clear and evidence. — no determination regarding below v. Corp. P’ship, Ltd. U.S. 141 Microsoft -, products accused would or not would liter- 131 S.Ct. 180 L.Ed.2d 131 (2011). ally infringe under the correct claim con- expressly Bano does not disclose infringement struction. That pre-coating particular issue will either coating However, need to bе addressed in the first compositions. instance it does state that remand, on by either the court on “it protect sum- is advisable to heat treated coatings” explicit and that Without an of alumi- parts “[fit finished with disclosure num coating to coat this new heat treated or substantial evidence that possible is aluminum a degreasing belonged sufficiently as with con- to defi- boron steel possible coatings, at nite and limited class of steels.” Bano ventional jury anticipation verdict of based section, in next As discussed Bano cannot stand. We therefore reverse supported could have a the district court’s denial of these statements JMOL as to pre-coat anticipation. that Bano disclosed jury finding However, jury’s apparent con ing. Ill Obviousness coating
clusion that Bano disclosed with alloy pro aluminum or aluminum is more urges also us to JMOL, denying blematic. In verdict, jury’s overturn the obviousness ar Petering, relied on In re 49 CCPA court guing jury’s both that the verdict was not (1962), F.2d 676 to hold that “al supported substantial evidence and that very uminum was a member of a small jury from foreclosed consideration in coating metals suitable for use class of secondary of the factor of commercial suc steel,” therefore inherent boron cess the district court’s incorrect claim ArcelorMittal, F.Supp.2d at Bano. construction. “We review con [the] Petering establishes that when a obviousness, law, question clusions on a a prior art reference discloses “definite deference, without and the underlying limited class” of suitable members findings of fact ... for substantial evi formula, general may a it be read within Corp. dence.” Cordis Boston Scientific of that class. to disclose each member (Fed.Cir.2009) Corp., 561 F.3d at Petering, 301 F.2d 681. Yet Bano does (alterations (internal in original) quotations coating to with explicitly not even refer omitted). metals; indeed, only specific coating “phosphatization ... fol references A. Prima Facie Case by cataphoresis.” Bano at 676. lowed ArcelorMittal concedes that “each ele- process coating paint, That refers to with ment of the invention” was known metal, paint not and it is not clear how prior Appellant’s jury art. Br. 3. The coatings any and metal would both fit into found the claims of the pat- asserted '805 general comparable formula to that found ent of Bano in obvious view combination Moreover, art in Petering. (“French 1,297,906 with French Patent No. paint part even if and metal were patent”). '906 The French '906 formula, general same record does coating steel aluminum describes to support finding not that there is a “defi protect against during forg- oxidation hot coatings nite and limited class” of (the ing missing anticipa- element in the There is insufficient steel sheet. evidence finding). agree togeth- tion We that Bano paints that the and metal al varieties patent supported er with the French '906 loys sufficiently are narrow that one of finding prima facie case of ordinary skill in the art would “at once obviousness.2 envisage each member of this limited Petering, (empha coating class.” F.2d at 681 The aluminum-based de added). in the applied sis scribed *10 prima of 2. Because the correct claim construction undermine the facie case obvious- claims, scope by jury. broadens the it does not ness found the hot-stamping to in order is that the hot forging steel sheet described the prevent Regarding pre- oxidation. that patent to French '906 is so different from requirement, argues AK Steel that coating hot-stamping that there would be no moti- discussing coating distinguishes Bano in vation to combine. points to ” parts between “heat treated and several forg- differences between the hot finished steel,” and that “boron the reference to ing process described the French '906 coating inherently the latter discloses coat- patent and hot-stamping and cites evi- hot-stamping. ing Apрellee’s before Br. dence that those skilled in the art not did Further, AK argues Steel that the coating think that an aluminum would sur- coating degreasing to after reference hot-stamping. vive impli- ArcelorMittal’s clear that the coating applied makes is cation appears to that hot-stamping and hot-stamping. before ArcelorMittal coun- forging hot are not analogous art. For its “degreasing” ters that the language could part, points AK similarity Steel to the of applied refer to the removal of oil problems the confronted the pat- two hot-stamping and that the article’s discus- ents and evidence that aluminum coatings problems sion of decarburization is incon- were to known survive thermal treatment pre-coating.3 sistent a prior with What art quеnching. particular Whether a question. reference discloses is a factual technology is art analogous question is a of Am., Inc., Tegal Corp. Tokyo Electron Co., Wyers fact. v. Master Lock (Fed.Cir.2001). 1345-46 (Fed.Cir.2010). As We think the resolution of this factual evidence about whether a skilled artisan dispute up jury, to the and that the would read Bano to disclose pre-coating, jury properly could conclude that Bano we think dispute this factual was for the applying coating teaches before ther- jury to resolve. We also conclude that mal treatment. substantial evidence supports determination that there was a sufficient aluminum,
As for coating with motivation to provided combine. Steel patent French '906 coating disclosed steel significant expert testimony person with aluminum that a during forging4 hot to pro ordinary tect of skill in the art against the same would have had oxidation and decar problems knowledge burization that to combine patent the '805 the aluminum coating was intended to disclosed address. AK the French 906 Steel thus urges that pre-coating the invention with the jury described that the found is no more than the Bano disclosed application expected and would have equivalent short, known solutions to problems succeed. In properly con- analogous an context. The thrust of cluded that AK Steel had established a objection ArcelorMittal’s reasoning to this prima facie case of obviousness.5 The dis- 3. The graphs Bano reference purposes contains measuring decarburization dur- Thus, show ing decarburization which would not occur graph thermal treatment. is of if the steel was coated in evaluating accordance with limited use in whether or not Bano However, patent. claim 1 of the '805 pre-coating. there is disclosed no coatings evidence that other not covered in prevented claim 1 would have forging decarburiza 4. Hot rapid does not involve the heat- Moreover, only tion. ing cooling Bano states that hot-stamping "[i]t and does not possible to coat change this new heat treated boron the steel's microstructure. steel.” language suggests Bano at 676. This coating optional step, an 5. We conclude that ArcelorMittal’s assertion there is no reason to assume that the steel claim would not have beеn obvious necessarily would have been coated even if claim 1 would have been obvious was
1325 Muniauction, subject matter. denied ArcelorMittal’s nonobvious properly trict court 1318, 1328 Corp., of non-obviousness. v. Thomson 532 F.3d motion Inc. JMOL (Fed.Cir.2008) (noting “long-estab n. 4 Secondary B. Considerations which are ‘[c]laims lished rule that broad whether the dis The final issue is enough subject to read on obvious matter claim construction trict court’s erroneous unpatentable though they are even also ” requires steel sheet” new of “hot-rolled subject read on nonobvious matter.’ argues ArcelorMittal trial on obviousness. Lintner, 1004, (quoting In re 59 CCPA 458 necessary trial because under that a new (1972))). 1013, urges F.2d 1015 AK Steel court’s claim construction the if that even the claims included both hot- commercial jury could not consider the (which cold-rolled) rolled steel was not their cold-rolled commercial success6 of steel, cold-rolled verdict that the Although ArcelorMittal’s com product. hot-rolled steel embodiment was obvious before the mercial success evidence was rendered the whole claim obvious whether jury court instructed the jury, the district or not the cold-rolled embodiment is non- success or only “[c]ommercial to consider obvious in view of its commercial success. products success of cov lack of commercial However, is not a situation in this Jury Final the asserted claims.” ered the claims themselves describe distinct al- Instructions, Fr. v. AK Steel ArcelorMittal invention, ternative embodiments of the (D. 10-CV-00050, No. at 37 Del. Corp., of one and whеre obviousness embodi- 2011) added). 14, jury (emphasis Jan. ment would invalidate the entire claim. only steel sheet was also instructed Rather, it in which the claim situation to its final thickness was cov hot-rolled hot-rolled, is limited to steel that is but asserted claims. Id. at 20. ered “comprising” language permitting contains Thus, from consid proscribed (cold- performance of an additional of Arcelor- ering the commercial success In our rolling) step. such circumstances cold-rolled steel sheet. Mittal’s make clear that the commercial suc- cases A court’s incorrect claim district cess of the embodiment with additional trial, may require a new Eco construction unclaimed features is to be considered Inc., 1362, Paraclipse, Inc. v. 285 F.3d lab evaluating when the obviousness of the (Fed.Cir.2002), but where the claim, success provided embodiment’s seeking they a new trial shows that party nexus to the claimed and has sufficient prejudiced by the error. Verizon were Kao, In re novel features of the invention. Corp. Vonage Holdings Corp., Servs. (Fed.Cir.2011); In re (Fed.Cir.2007). 1295, 1307 F.3d Techniques, Glatt Air (Fed.Cir.2011); Materials, Applied argues that it is not Steel Materials Inc. v. Advanced Semiconductor necessary to consider the commercial suc (Fed.Cir. Am., Inc., F.3d because of product cess of the cold-rolled 1996) (“[A] all patentee need not show that that claims principle the well-established the claims possible embodiments within subject matter are which read obvious in order successfully if on were commercialized unpatentable they even also read results, ing unexpected but ArcelorMittal waived. Claim 7 must stand or fall sufficiently claim 1. has not briefed those issues preserve them. passing makes reference to secondary copy- considerations such as other *12 1326 prejudiced with rely marketplace on the in the construction ArcelorMittal
to
success
that
commercial-
we
respect
Accordingly,
of the embodiment
was
to obviousness.
ized.”)
vacate the
obviousness verdict
only
a
trial addressing
remand for new
the
Thus, Kao,
consideration
required
we
aspect
success
commercial
of obviousness
commercially
a patent applicant’s
suc-
of
infringement
claim
under the correct
even
painkiller
controlled release
cessful
construction.
though
proven
the success was not
across
range
full
of
rates.
the
claimed dissolution
IV Conclusion
However, we empha-
F.3d at 1069.
required
that
the
consideration of
sized
remand, the district court must ad-
On
a
success includes
threshold
commercial
whether, under
claim
dress
the correct
of whether the commercial
determination
construction,
the
asserted claims
necessary
has the
nexus
the
success
any
are
of
light
obvious
1068-69;
invention.
see
claimed
Id. at
of
hot-
evidence
commercial success of
Wyers,
The
also
See (Fed.Cir.2006) (“[I]f F.3d Costs feature that suc- creates commercial art, cess was known in the the suc- party. Costs to neither pertinent.”). is not cess WALLACH, Judge, dissenting- Circuit remaining The is whether a issue in-part. required trial on
new
obviousness is
agree
address the issue of
I
that “very high
commercial success.
do not
mechani-
think this is not a
We
case which the
cal resistance” means a mechanical resis-
that,
Rather,
prima
strong
facie case so
as a mat
MPa
greater.
tance of 1500
law,
ter
would overcome ArcelorMit
conclude
because I
that intrinsic evidence
See,
tal’s commercial
supports
reading
success evidence.
of this term to mean
Therefore,
e.g., Wyers,
I would instead focus on the in touted crease in mechanical resistance the '805 *14 above, however, As discussed specifi patent purports prior to achieve over art— cation “high,” “substantial,” shows that namely, the obtention of mechanical resis and other similar terms are used to de “in tance excess of 1000 MPa.” Id. col. 1 ll. varying scribe levels of mechanical resis In particular, “very high,” “high,” tance. Specifically, in addition to refer and “substantial” were used to promote “may ences to exceed 1500 MPa” “high” as improved invention’s of levels resis resistance, or “substantial” patent re tance without the shaping “detriment of cites “excess of 1000 MPa” as “substantial” properties” problem in art. —a Compare resistance. '805 col. 3 ll. Id. col. 1 ll. 10-11. majority’s The con- (“[A] substantial mechanical resis requiring struction of a mechanical resis- tance, MPa____”) may exceed 1500 tance of “at least unduly 1500 MPa” con- added), (emphasis with id. col. 1 ll. 40-43 tracts the wide breadth of the invention (“[Mjakes possible to obtain a mechani patentee discloses. Without clear lan- cal MPa, resistance excess of 1000 otherwise, guage рroviding 1500 MPa can- shocks, substantial fatigue, resistance to not be set as the floor of range of wear....”) abrasion and (emphasis add mechanical resistance levels recited in the ed). specification The thus describes both patent, principally because “excess of 1000 1500 MPa and 1000 MPa as “substantial.” MPa” is stated range as within the of satisfy resistance levels that purpose “High” or “substantial” interchangeably the invention. Apple Comp., See Inc. v. describe in similar context the mechanical (Fed. Sys., Articulate MPa, resistance level of 1500 giving “high” Cir.2000) (“[T]he claim must interpret Hence, “substantial” similar meaning. light ed in of the teachings of the written “high” or “substantial” may likewise de- description and purpose of the invention scribe interchangeably the mechanical re- therein.”). described Additionally, other sistance level of “excess of 1000 MPa.” levels, values of resistance including 1500 Applying majority’s logic, if 1000 MPa MPa, are in permissive form, recited characterizes both “high” “substantial” and therefore, are less than instructive in de resistance, mechanical “very high” then re- termining scope “very high mechani sistance must be in excess of 1000 MPa. cal resistance.” col. 2 ll. 51-53 Accordingly, “very high mechanical resis- (“may exceed 1500 MPa for mechanical tance” should be construed as a mechani- resistance....”) added); (emphasis id. col. cal resistance excess 1000 MPa. I find (Table 4 ll. 52-61 2 illustrating ranges specification sufficiently instructive, examples of “maximal resistance of therefore, no need to turn to extrinsic the steel according sheet to the invention evidence. treatment,” after thermal ranging from MPa). 1665 to 1695 majority nevertheless takes differ-
ent approach. It implies that the use of