Lead Opinion
Oрinion for the court filed by Circuit Judge DYK. Opinion dissenting-in-part filed by Circuit Judge WALLACH.
ArcelorMittal France and ArcelorMittal Atlantique et Lorraine (collectively “ArcelorMittal”) appeal from a final judgment of the United States District Court for the District of Delaware. The judgment is based on a jury verdict finding that defendants AK Steel Corporation, Severstal Dearborn, Inc., and Wheeling-Nisshin Inc. (“AK Steel”) did not infringe ArcelorMittal’s U.S. Patent No. 6,296,805 (“the '805 patent”) and that the asserted claims were invalid as anticipated and obvious. ArcelorMittal challenges both the district court’s claim construction and the jury’s verdict.
We uphold the district court’s claim construction in part and reverse it in part. We also reverse the jury’s verdict of anticipation. With respect to obviousness, a new trial is required because the district court’s claim construction error prevented the jury from properly considering ArcelorMittal’s evidence of commercial success. We therefore affirm-in-part, reverse-in-part, vacate-in-part, and remand for a new trial.
BACKGROUND
The '805 patent covers boron steel sheet with an aluminum-based coating applied after rolling the sheet to its final thickness. The steel is used for “hot-stamping,” a process which involves rapidly heating the steel, stamping it into parts of the desired shape, and then rapidly cooling them (“quenching”). The rapid heating and cooling alters the crystalline structure of the steel, converting it to austenite and then martensite. By altering the steel’s microstructure in this manner, hot-stamp
Although hot-stamping has clear benefits, its use has historically been limited because of problems associated with the process. The high temperatures required for hot-stamping cause oxidation, resulting in the formation of “scale” on the steel’s surface. Seale must be removed before the steel can be painted or welded, but removing it requires expensive and environmentally harmful “shot-blasting” and “pickling” operations, in which the steel is blasted with an abrasive material and immersed in a chemical bath. Shot-blasting is also problematic because it can damage thin parts, undermining the strength and efficiency advantages of hot-stamping. Oxidation also causes the loss of carbon from the steel’s surface (“decarburization”), which weakens the steel.
The aluminum-based coating claimed in the '805 patent prevents oxidation from occurring during hot-stamping. As a result, scale does not form and decarburization does not occur when the claimed steel is hot-stamped. This makes hot-stamping less costly, reduces its environmental impaсt, and allows its use in the production of parts that are too delicate to survive shot-blasting.
The asserted claims of the '805 patent are claim 1 and dependent claims 2, 5, 7, and 16. Claim 1, the only asserted independent claim, reads:
1. A hot-rolled coated steel sheet comprising a hot-rolled steel sheet coated with an aluminum or aluminum alloy coating, wherein the steel in the sheet comprises the following composition by weight:
0.15% < carbon <0.5%
0.5%<manganese<3%
0.1 % < silicon <0.5%
0.01-romium<l%
titanium <0.2%
aluminum <0.1%
phosphorus<0.1%
sulfur <0.05%
0.0005%<boron<0.08%, the remainder being iron and impurities inherent in processing, and the steel sheet has a very high mechanical resistance after thermal treatment and the aluminum or aluminum alloy coating provides a high resistance to corrosion of the steel sheet.
'805 patent col. 4 1. 64 to col. 5 1.15.
On January 22, 2010, ArcelorMittal brought an infringemеnt action against AK Steel in the United States District Court for the District of Delaware, alleging that AK Steel’s aluminum coated steel sheet products infringe the asserted claims of the '805 patent. The parties agreed upon an expedited trial schedule in which AK Steel agreed to limit itself to two invalidity defenses and to arguing non-infringement
Pursuant to that schedule, on December 16, 2010, the district court issued a claim construction decision interpreting the claim terms “a hot-rolled steel sheet coated with an aluminum or aluminum alloy coating” and “the steel sheet has a very high mechanical resistance after thermal treatment.” ArcelorMittal Fr. v. AK Steel Corp.,
The court next examined the term “the steel sheet has a very high mechanical resistance.” Id. The court noted that there is no applicable industry standard defining “very high” mechanical resistance. Id. at 550. The court relied on the statements in the specification that “high” and “substantial” mechanical resistance “may exceed 1500 MPa.” Id. at 550-51. Accordingly, the court construed “the steel sheet has a very high mechanical resistance” to mean that “the flat-rolled steel has been subjected, after rolling, to additional controlled heating and cooling and has an ultimate tensile strength of 1500 MPa or greater.” Id. at 550.
None of AK Steel’s accused products literally infringed the claims as construed, so the district court prohibited ArcelorMittal from asserting literal infringement. Memorandum Order, ArcelorMittal Fr. v. AK Steel Corp., No. 10-CV-00050 (D. Del. Jan. 4, 2011), ECF No. 205. The case proceeded to trial on the basis of the doctrine of equivalents, and the jury returned a verdict on January 14, 2011, finding that AK Steel did not infringe the '805 patent and that the asserted claims were both obvious and anticipated. ArcelorMittal then moved for judgment as a matter of law on the invalidity issues and for a new trial on infringement. The district court denied those motions and entered final judgment for AK Steel on August 25, 2011. ArcelorMittal Fr. v. AK Steel Corp.,
Discussion
This court “review[s] a district court’s denial of ... judgment as a matter of law without deference, and its denial of a motion for [a] new trial for abuse of discretion.” CytoLogix Corp. v. Ventana Med. Sys., Inc.,
I Claim Construction
A. “Hot-rolled steel sheet”
All claim construction issues concern claim 1, the only asserted independent claim in the patent. ArcelorMittal first argues that the district court erronеously construed the term “hot-rolled steel sheet,” improperly excluding from the scope of the claim steel sheet that has
By its use of the term “comprising,” claim 1 expressly contemplates additional, unstated steps such as cold-rolling. “The transition ‘comprising’ creates a presumption ... that the claim does not exclude additional, unrecited elements.” Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc.,
However, while AK Steel is correct that the ordinary meaning of the term in the industry is clear, the specification is not consistent with that meaning. In Phillips v. AWH Corp., we emphasized that the specification is the primary guide to claim interpretation, recognizing that “the specification is ‘the single best guide to the meaning of a disputed term.’ ”
References to an optional cold-rolling step abound in the specification of the '805 patent. '805 patent col. 1 ll. 47-48, col. 2 ll. 30-31, 37-40, col. 3 ll. 7-9. AK Steel argues that these references describe “distinct products” and that the specification elsewhere uses the word “sheet” where it mеans to refer to both steel that has been hot-rolled to its final thickness and steel that was also cold-rolled. Appellee’s Br. 29. The district court based its claim construction on similar reasoning. See ArcelorMittal,
First, the specification contemplates that “[t]he sheet according to the invention ... may be cold-rerolled again depending on the final thickness desired.” '805 patent col. 2 ll. 37-40. It also describes the invention’s purpose as including the production of “cold-rolled steel sheet.” Id. at col. 1 ll. 37-38. This directly contradicts the district court’s claim construction, under which the sheet must be reduced to its final thickness by hot-rolling. The claims and specification should be read “ ‘in a manner that renders the patent internally consistent.’ ” Pfizer, Inc. v. Teva Pharm. USA, Inc.,
Second, the specification describes an embodiment “having a thickness of approximately 1 mm.” '805 patent col. 4 ll. 8-9. That thickness, at least at the time of the invention, could only have been achieved by cold-rolling. Indeed, the specification states that “[a]ccording to the in
Because the specification unambiguously contemplates cold-rolling, the district court erred by interpreting the claim term “hot-rolled steel sheet” to exclude steel sheet subsequently cold-rolled.
B. “Very high mechanical resistance”
ArcelorMittal also disputes the district court’s interpretation of the claim term “very high mechanical resistance.” The district court interpreted that term to mean “the flat-rolled steel has been subjected, after rolling, to additional controlled heating and cooling and has an ultimate tensile strength of 1500 MPa or greater.” ArcelorMittal,
Turning to the extrinsic evidence, the district court observed that the term “very high mechanical resistance” is not a term of art in the steelmaking industry and does not have any ordinary meaning. ArcelorMittal,
Accordingly, both the intrinsic evidence and extrinsic evidence support the district court’s conclusion that “a very high mechanical resistance” means a mechanical resistance of 1500 MPa or greater. Therefore, we affirm the district court’s construction of “the steel sheet has a very high mechanical resistance.”
At oral argument, AK Steel’s counsel conceded that at least some accused products have a mechanical resistance of 1500 MPa or greater. However, as a result of the district court’s incorrect claim construction of “hot-rolled steel sheet,” the jury was instructed at trial to consider direct infringement only under the doctrine of equivalents. Final Jury Instructions, ArcelorMittal Fr. v. AK Steel Corp., No. 10-CV-00050, at 22 (D. Del. Jan. 14, 2011), ECF No. 212. Thus, there has been no determination below regarding which accused products would or would not literally infringe under the correct claim construction. That infringement issue will need to be addressed in the first instance on remand, either by the court on summary judgment or by a jury in a new trial. Because the jury found no infringement under the doctrine of equivalents, and ArcelorMittal has not challenged that aspect of the verdict, any infringement analysis found to be necessary on remand should be limited to literal infringement.
II Anticipation
ArcelorMittal argues that the evidence cannot support the jury’s anticipation verdict. “Anticipation is a question of fact, reviewed for substantial evidence when tried to a jury.” Finisar Corp. v. DirecTV Grp., Inc.,
A claim is anticipated only where “еach and every limitation is found either expressly or inherently in a single prior art reference.” Celeritas Techs., Ltd. v. Rockwell Int’l Corp.,
As discussed in the next section, these statements could have supported a jury finding that Bano disclosed pre-coating. However, the jury’s apparent conclusion that Bano disclosed coating with aluminum or aluminum аlloy is more problematic. In denying JMOL, the district court relied on In re Petering, 49 CCPA 993,
Without an explicit disclosure of aluminum coating or substantial evidence that aluminum belonged to a sufficiently definite and limited class of possible coatings, the jury verdict of anticipation based on Bano cannot stand. We therefore reverse the district court’s denial of JMOL as to anticipation.
Ill Obviousness
ArcelorMittal also urges us to overturn the jury’s obviousness verdict, arguing both that the jury’s verdict was not supported by substantial evidence and that the jury was foreclosed from consideration of the secondary factor of commercial success by the district court’s incorrect claim construction. “We review [the] jury’s conclusions on obviousness, a question of law, without deference, and the underlying findings of fact ... for substantial evidence.” Cordis Corp. v. Boston Scientific Corp.,
A. Prima Facie Case
ArcelorMittal concedes that “each element of the invention” was known in the prior art. Appellant’s Br. 3. The jury found the asserted claims of the '805 patent obvious in view of Bano in combination with French Patent No. 1,297,906 (“French '906 patent”). The French '906 patent describes coating steel with aluminum to protect against oxidation during hot forging (the missing element in the anticipation finding). We agree that Bano together with the French '906 patent supported a jury finding of a prima facie case of obviousness.
The aluminum-based coating described in the '805 patent is applied to the
As for coating with aluminum, the French '906 patent disclosed coating steel with aluminum during hot forging
B. Secondary Considerations
The final issue is whether the district court’s erroneous claim construction of “hot-rolled steel sheet” requires a new trial on obviousness. ArcelorMittal argues that a new trial is necessary because under the district court’s claim construction the jury could not consider the commercial success
A district court’s incorrect claim construction may require a new trial, Ecolab Inc. v. Paraclipse, Inc.,
AK Steel argues that it is not necessary to consider the commercial success of the cold-rolled product because of the well-established principle that claims which read on obvious subject matter are unpatentable even if they also read on nonobvious subjeсt matter. Muniauction, Inc. v. Thomson Corp.,
Thus, in Kao, we required consideration of a patent applicant’s commercially successful controlled release painkiller even though the success was not proven across the full range of claimed dissolution rates.
The remaining issue is whether a new trial on obviousness is required to address the issue of commercial success. We think this is not a case in which the prima facie case so strong that, as a matter of law, it would overcome ArcelorMittal’s commercial success evidence. See, e.g., Wyers,
IV Conclusion
On remand, the district court must address whether, under the correct claim construction, the asserted claims of the '805 patent are obvious in light of any evidence of commercial success of hot-rolled steel that is also cold-rolled and that has the required nexus with ArcelorMittal’s claims. Additionally, as discussed above, the district court must address the issue of literal infringement under the correct claim construction. In remanding for a limited new trial addressing only infringement under the correct claim construction and whether ArcelorMittal has pertinent commercial success evidence sufficient to overcome the prima facie case of obviousness, we do not foreclose the district court from entertaining a motion for summary judgment on these issues that might obviate the need for a further trial.
AFFIRMED-IN-PART, REVERSED-IN-PART, VACATED-IN-PART, REMANDED
Costs
Costs to neither party.
Notes
. This conclusion is not contradicted by the prosecution history. Although ArcelorMittal amended claim 1 to remove the explicit reference to optional cold-rolling, the initial rejection of the claim was because it was ambiguous whether the coating was optional, and the substitution of the “comprising” language made clear that optional additional steps were still contemplated. Nothing in the prosecution history amounted to a disclaimer of cold-rolling.
. Because the correct claim construction broadens the scope of the claims, it does not undermine the prima facie case of obviousness found by the jury.
. The Bano reference contains graphs that show decarburization which would not occur if the steel was coated in accordance with claim 1 of the '805 patent. However, there is no evidence that other coatings not covered in claim 1 would have prevented decarburization. Moreover, Bano only states that "[i]t is possible to coat this new heat treated boron steel.” Bano at 676. This language suggests that coating is only an optional step, and there is no reason to assume that the steel would have necessarily been coated for the purposes of measuring decarburization during thermal treatment. Thus, the graph is of limited use in evaluating whether or not Bano disclosed pre-coating.
. Hot forging does not involve the rapid heating and cooling of hot-stamping and does not change the steel's microstructure.
. We conclude that ArcelorMittal’s assertion that claim 7 would not have been obvious even if claim 1 would have been obvious was
. ArcelorMittal makes passing reference to other secondary considerations such as copying and unexpected results, but ArcelorMittal has not briefed those issues sufficiently to preserve them.
Dissenting Opinion
dissenting-in-part.
I do not agree that “very high mechanical resistance” means a mechanical resistance of 1500 MPa or greater. Rather, because I conclude that intrinsic evidence supports a reading of this term to mean a mechanical resistance in excess of 1000 MPa, I respectfully dissent.
The majority’s focus on “very high,” “high,” and “substantial” is unwarranted because these terms, and other similar laudatory terms, are used interchangeably in the '805 patent. See Bid for Position, LLC v. AOL, LLC,
Other passages in the specification further exemplify the interchangeability of these terms. For instance, the patent reads in one paragraph that “[t]he thermal treatment applied ... makes it possible to obtain high mechanical characteristics which may exceed 1500 MPa” and in the very next paragraрh, describes a “substantial resistance to abrasion, wear, fatigue, shock, as well as a good resistance to corrosion....” Id. col. 2 ll. 49-52, 59-60 (emphases added). Likewise, the claimed steel sheet is disclosed as having a “substantial resistance to corrosion in the delivery state, during shaping and thermal treatments as well as during usage of the finished casting,” and after thermal treatment, is described as having “a substantial mechanical resistance, which may exceed 1500 MPa....” Id. col. 3 ll. 49-53 (emphases added). Finally, the specification explains that modulation of certain elements in the composition of the steel including “carbon makes it possible to achieve high mechanical characteristics .... ” Id. col. 4 ll. 20-21 (emphasis added).
The patentee’s use of “very high,” “high,” and “substantial” shows that these terms are used interchangeably. It does not appear the patentee made technical distinctions as to varying resistance levels with the use of these terms. On the contrary, the patentee used these terms interchangeably and in a laudatory fashion without any limiting purposes. See Minton v. Nat’l Ass’n of Sec. Dealers, Inc.,
I would instead focus on the touted increase in mechanical resistance the '805 patent purports to achieve over prior art— namely, the obtention of mechanical resistance “in excess of 1000 MPa.” Id. col. 1 ll. 41-42. In particular, “very high,” “high,” and “substantial” were used to promote the invention’s improved levels of resistance without the “detriment of shaping properties” — a problem in the prior art. Id. col. 1 ll. 10-11. The majority’s construction of requiring a mechanical resistance of “at least 1500 MPa” unduly contracts the wide breadth of the invention the patentee discloses. Without clear language providing otherwise, 1500 MPa cannot be set as the floor of a range of mechanical resistance levels recited in the patent, principally because “excess of 1000 MPa” is stated as within the range of resistance levels that satisfy the purpose of the invention. See Apple Comp., Inc. v. Articulate Sys., Inc.,
The majority nevertheless takes a different approach. It implies that the use of the terms, “high” or “substantial,” correspond only to a mechanicаl resistance that “may exceed 1500 MPa.” Based on this reading, the majority determines that “if 1500 MPa is high mechanical resistance, then very high resistance must be at least 1500 MPa.” Majority Op. at 1321.
As discussed above, however, the specification shows that “high,” “substantial,” and other similar terms are used to describe varying levels of mechanical resistance. Specifically, in addition to references to “may exceed 1500 MPa” as “high” or “substantial” resistance, the patent recites “excess of 1000 MPa” as “substantial” resistance. Compare '805 patent col. 3 ll. 52-53 (“[A] substantial mechanical resistance, which may exceed 1500 MPa____”) (emphasis added), with id. col. 1 ll. 40-43 (“[Mjakes it possible to obtain a mechanical resistance in excess of 1000 MPa, a substantial resistance to shocks, fatigue, abrasion and wear....”) (emphasis added). The specification thus describes both 1500 MPa and 1000 MPa as “substantial.”
“High” or “substantial” interchangeably describe in similar context the mechanical resistance level of 1500 MPa, giving “high” and “substantial” similar meaning. Hence, “high” or “substantial” likewise may describe interchangeably the mechanical resistance level of “excess of 1000 MPa.” Applying the majority’s logic, if 1000 MPa characterizes both “substantial” and “high” mechanical resistance, then “very high” resistance must be in excess of 1000 MPa. Accordingly, “very high mechanical resistance” should be construed as a mechanical resistance in excess of 1000 MPa. I find the specification sufficiently instructive, and therefore, no need to turn to extrinsic evidence.