Arcelormittal France v. Ak Steel Corporation , 786 F.3d 885 ( 2015 )

United States Court of Appeals
for the Federal Circuit
______________________
ARCELORMITTAL FRANCE, ARCELORMITTAL
ATLANTIQUE ET LORRAINE, ARCELORMITTAL
USA LLC,
Plaintiffs-Appellants
v.
AK STEEL CORPORATION, SEVERSTAL
DEARBORN, INC., WHEELING-NISSHIN INC.,
Defendants-Appellees
______________________
2014-1189
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:10-CV-00050, Judge Sue L.
Robinson.
-------------------------------------------------------------
ARCELORMITTAL FRANCE, ARCELORMITTAL
ATLANTIQUE ET LORRAINE, ARCELORMITTAL
USA LLC,
Plaintiffs-Appellants
v.
AK STEEL CORPORATION,
Defendant-Appellee
______________________
2 ARCELORMITTAL FRANCE v. AK STEEL CORPORATION
2014-1190
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:13-CV-00685, Judge Sue L.
Robinson.
-------------------------------------------------------------
ARCELORMITTAL FRANCE, ARCELORMITTAL
ATLANTIQUE ET LORRAINE, ARCELORMITTAL
USA LLC,
Plaintiffs-Appellants
v.
SEVERSTAL DEARBORN LLC,
WHEELING-NISSHIN INC.,
Defendants-Appellees
______________________
2014-1191
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:13-CV-00686, Judge Sue L.
Robinson.
______________________
Decided: May 12, 2015
______________________
CONSTANTINE L. TRELA, JR., Sidley Austin LLP, Chi-
cago, IL, argued for plaintiffs-appellants. Also represent-
ed by DAVID T. PRITIKIN; RACHEL HEATHER TOWNSEND,
Washington, DC; JEFFREY B. BOVE, Wilmington, DE.
ARCELORMITTAL FRANCE v. AK STEEL CORPORATION 3
CHRISTOPHER NEIL SIPES, Covington & Burling LLP,
Washington, DC, argued for defendants-appellees. De-
fendant-appellee AK Steel Corporation also represented
by JEFFREY HOWARD LERNER, RODERICK R. MCKELVIE.
Defendants-appellees Severstal Dearborn, Inc., Wheeling-
Nisshin Inc. represented by RICHARD WILLIAM HOFFMANN,
DAVID J. SIMONELLI, Reising Ethington PC, Troy, MI.
______________________
Before DYK, WALLACH, and HUGHES, Circuit Judges.
HUGHES, Circuit Judge.
ArcelorMittal appeals from the decisions of the United
States District Court for the District of Delaware granting
summary judgment that U.S. Patent No. RE44,153E (the
RE153 patent) is invalid because certain claims were
broadened after two years of issuance in violation of 35
U.S.C. § 251. 1 Because the district court was bound by
our construction of the original claims and the reissue
claims broadened that construction, we affirm the district
court’s finding that claims 1 through 23 of the RE153
patent are invalid under § 251. However, because newly
added claims 24 and 25 were not broadened during reis-
sue, we reverse-in-part and remand for further proceed-
ings.
I
The RE153 patent is a reissue of U.S. Patent No.
6,296,805 (the ’805 patent), which we previously reviewed
in ArcelorMittal France v. AK Steel Corp., 700 F.3d 1314(Fed. Cir. 2012) (ArcelorMittal I). The ’805 and RE153
1 This case is governed by the statutory provisions
in effect before the Leahy-Smith America Invents Act,
Pub. L. No. 112-29, 125 Stat. 284 (2011), because Appel-
lants filed the RE153 patent before March 16, 2013.
4 ARCELORMITTAL FRANCE v. AK STEEL CORPORATION
patents share a specification and have identical lone
independent claims directed toward a specific type of steel
sheet that has “a very high mechanical resistance” after
thermal treatment. See ’805 patent col. 4. l. 64–col. 5 l.
15; RE153 patent col. 5 ll. 8–25.
On January 22, 2010, ArcelorMittal filed suit against
AK Steel Corp., Severstal Dearborn, Inc., and Wheeling-
Nisshin Inc., alleging infringement of the ’805 patent.
The district court construed the phrase “a very high
mechanical resistance” as limited to steel with a tensile
strength greater than 1500 MPa. ArcelorMittal France v.
AK Steel Corp., 755 F. Supp. 2d 542, 549 (D. Del. 2010).
After a jury found the ’805 patent not infringed and
invalid as anticipated and obvious, ArcelorMittal ap-
pealed. On appeal, we affirmed the district court’s con-
struction of “a very high mechanical resistance,” but
reversed and remanded on other grounds. Arcelor-
Mittal I, 700 F.3d at 1321–23, 1326.
While its first appeal was pending, ArcelorMittal
prosecuted an application for reissue of the ’805 patent to
correct the district court’s construction of “very high
mechanical resistance.” This application issued on April
16, 2013 as the RE153 patent and added a number of
dependent claims, including: claim 23, which recites “[t]he
coated steel sheet of claim 1, wherein said mechanical
resistance is in excess of 1000 MPa”; claim 24, which
confines claim 1 to the construction we affirmed in Arce-
lorMittal I by claiming “[t]he coated steel sheet of claim 1,
wherein said mechanical resistance is in excess of 1500
MPa”; and claim 25, which depends on and further limits
claim 24. RE153 patent col. 6 ll. 50–55.
On remand, ArcelorMittal amended its complaint to
substitute the now-surrendered ’805 patent for the RE153
patent (the Remand Action). ArcelorMittal also filed new
suits for patent infringement against AK Steel (the 685
ARCELORMITTAL FRANCE v. AK STEEL CORPORATION 5
Action) and Severstal Dearborn and Wheeling-Nisshin
(the 686 Action), alleging new acts of infringement of the
RE153 patent. 2 Appellees moved for summary judgment
in the Remand Action, arguing claims 1 through 23 of the
RE153 patent were invalid because they were impermis-
sibly broadened in the reissue proceedings. The district
court granted the motion and applied its ruling across all
three actions, invalidating claims 1 through 23 of the
RE153 patent and sua sponte invalidating claims 24 and
25. ArcelorMittal appeals. We have jurisdiction under 28
U.S.C. § 1295(a)(1).
II
We review the grant or denial of summary judgment
under the law of the regional circuit. Microstrategy, Inc.
v. Bus. Objects, S.A., 429 F.3d 1344, 1349 (Fed. Cir. 2005).
The Third Circuit reviews the grant or denial of summary
judgment de novo. Facenda v. N.F.L. Films, Inc., 542
F.3d 1007, 1013 (3d Cir. 2008). Whether amendments
made during reissue enlarge the scope of the claim, and
therefore violate § 251, is a matter of claim construction,
which we review de novo, while giving deference to sub-
sidiary factual determinations. Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S.Ct. 831, 840–41 (2015); see also N.
Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d
1335, 1349 (Fed. Cir. 2005).
On appeal, ArcelorMittal argues the RE153 claims are
no broader than the original ’805 claims because the
2 These cases are: ArcelorMittal France, ArcelorMit-
tal Atlantique et Lorraine, and ArcelorMittal USA LLC v.
AK Steel Corp., Civ. No. 1:13-CV-00685 (D. Del), and
ArcelorMittal France, ArcelorMittal Atlantique et Lor-
raine, and ArcelorMittal USA LLC v. Severstal Dearborn
LLC and Wheeling-Nisshin, Civ. No. 1:13-CV-00686 (D.
Del).
6 ARCELORMITTAL FRANCE v. AK STEEL CORPORATION
successful prosecution of the RE153 patent demonstrates
the Patent Office’s belief that the term “very high me-
chanical resistance” in the ’805 patent was broader than
we had construed it to be. ArcelorMittal also argues the
district court erred by invalidating all claims of the
RE153 patent, including those that were not broadened.
Because the law-of-the-case doctrine prohibited the
district court from revisiting the construction of “very
high mechanical resistance” in the ’805 patent, we agree
that claims 1 through 23 were impermissibly broadened
in violation of § 251. But we find that the district court
erred by invalidating claims 24 and 25, which were not
broadened. Accordingly, we affirm-in-part, reverse-in-
part, and remand for further proceedings.
A
The law-of-the-case doctrine “posits that when a court
decides upon a rule of law, that decision should continue
to govern the same issues in subsequent stages in the
same case.” Banks v. U.S., 741 F.3d 1268, 1276 (Fed. Cir.
2014) (quoting Christianson v. Colt Indus. Operating
Corp., 486 U.S. 800, 815–16 (1988)) (internal quotation
marks omitted). “The mandate rule, encompassed by the
broader law-of-the-case doctrine, dictates that ‘an inferior
court has no power or authority to deviate from the man-
date issued by an appellate court.’” Id. (quoting Briggs v.
Pa. R. Co., 334 U.S. 304, 306 (1948)); see also Bankers
Trust Co. v. Bethlehem Steel Corp., 761 F.2d 943, 949 (3d
Cir. 1985).
Under the mandate rule and the broader law-of-the-
case doctrine, a court may only deviate from a decision in
a prior appeal if “extraordinary circumstances” exist.
Pub. Interest Research Grp. v. Magnesium Elektron, 123
F.3d 111, 116 (3d Cir. 1997). But “such departures are
rare.” Toro Co. v. White Consol. Indus., Inc., 383 F.3d
1326, 1336 (Fed. Cir. 2004) (citations omitted). Arce-
ARCELORMITTAL FRANCE v. AK STEEL CORPORATION 7
lorMittal argues that the Patent Office’s reissue of the
RE153 patent is “new evidence” sufficient to constitute
“extraordinary circumstances” to deviate from our clear
mandate and construction of “very high mechanical
resistance” in claim 1.
The “new evidence” exception permits courts to recon-
sider a previously decided issue in limited circumstances.
“This exception . . . makes sense because when the record
contains new evidence, ‘the question has not really been
decided earlier and is posed for the first time.’” Hamilton
v. Leavy, 322 F.3d 776, 787 (3d Cir. 2003) (quoting Bridge
v. U.S. Parole Comm’n, 981 F.2d 97, 103 (3d Cir. 1992)).
“But this is so only if the new evidence differs materially
from the evidence of record when the issue was first
decided and if it provides less support for that decision.”
Id. That is not the case here.
The successful prosecution of the RE153 patent is not
“new evidence” sufficient to trigger the extraordinary
circumstances exception to the mandate rule and the law-
of-the-case doctrine. Permitting a reissue patent to
disturb a previous claim construction of the original
claims would turn the validity analysis under 35 U.S.C.
§ 251 on its head. The basic inquiry under § 251 requires
comparing the scope of the claims of the reissue patent to
the scope of the original claims to determine if the reissue
patent “contains within its scope any conceivable appa-
ratus or process which would not have infringed the
original patent.” Tillotson, Ltd. v. Walbro Corp., 831 F.2d
1033, 1037 n.2, 1039 (Fed. Cir. 1987). If the reissue claim
itself could be used to redefine the scope of the original
claim, this comparison would be meaningless.
Moreover, we have soundly rejected ArcelorMittal’s
argument in the similar context of determining whether a
reexamined patent was improperly broadened during
prosecution. See Anderson v. Int’l Eng’g & Mfg, Inc., 160
8 ARCELORMITTAL FRANCE v. AK STEEL CORPORATION
F.3d 1345, 1349 (Fed. Cir. 1998); see also 35 U.S.C. § 305.
In Anderson, we rejected the argument that changes to a
claim during reexamination “simply clarified the scope of
the claim as originally granted” and that “the claims have
always encompassed” the broader meaning that resulted
from the reexamination. Anderson, 160 F.3d at 1349. In
doing so, we explained that “[t]he ultimate question of
construction is not whether [the original] specification
could have supported claims of the scope he now attrib-
utes to original claim 1 [i.e., the scope of the reissue
claim]—although that would be a factor in determining
the correct claim construction. The question is whether,
objectively viewed, the original claims were, in fact and
law, generic [i.e., as broad] as Anderson asserts.” Id.
Thus, the dispositive question is whether the original
claim has the meaning sought by ArcelorMittal for the
reissue claims—not what the original claim means in
light of the reissue claims. See id. at 1347. And we have
already determined the proper scope of claim 1 of the ’805
patent in ArcelorMittal I.
Under certain circumstances, the prosecution history
of reissue or reexamination proceedings may be relevant
to determine the scope of an original claim. See, e.g.,
Howes v. Med. Components, Inc., 814 F.2d 638, 645 (Fed.
Cir. 1987) (finding that disclaimers made during a co-
pending reissue prosecution to overcome prior art rejec-
tions were relevant to narrow the interpretation of a
disputed term for infringement purposes); E.I. Du Pont de
Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430,
1439 (Fed. Cir. 1988). But we have never found that such
reissue prosecution history is relevant to whether an
applicant broadened the scope of an original claim in the
§ 251 analysis. Nor could we, since such a finding would
run contrary to the plain language and purpose of § 251.
Moreover, the prosecution history of a reissue claim
can certainly be relevant to determine the scope of the
ARCELORMITTAL FRANCE v. AK STEEL CORPORATION 9
reissue claim, and it is entirely possible that the prosecu-
tion history includes disavowals of claim scope that could
preserve the reissue claim in the face of an apparent
broadening. See, e.g., Tillotson, 831 F.2d at 1037. But
that is not the case here. The only relevant change is the
addition of a dependent claim which has the practical
effect of expanding the scope of claim 1 to cover claim
scope expressly rejected by a previous claim construction
ruling, and ArcelorMittal makes no argument that the
reissue claims are otherwise narrowed. To permit later-
generated reissue prosecution history to inform the scope
of the very same claim limitation from the original patent
would run afoul of the basic inquiry laid out in Anderson
and Tillotson.
Accordingly, the prosecution history of the reissue pa-
tent here is not “new evidence” of the scope of the original
claims for the purposes of the § 251 inquiry. Under the
law-of-the-case doctrine, therefore, the district court was
bound by this court’s prior construction of the original
claims, which ArcelorMittal concedes was narrower than
the scope of the reissue claims. Based on this prior con-
struction, the district court correctly found that claims 1
through 23 of the reissue patent impermissibly broadened
the original claims and are invalid under 35 U.S.C. § 251.
B
Having found claims 1 through 23 invalid under
§ 251, we must next determine the fate of claims 24 and
25, which both parties agree have the same scope as claim
1 of the ’805 patent—that is, they were not broadened on
reissue. For the reasons set forth below, we find that the
district court improperly focused on whether the patent
had been improperly broadened, instead of undertaking a
claim-by-claim analysis as required by statute and our
precedent.
10 ARCELORMITTAL FRANCE v. AK STEEL CORPORATION
We begin with the plain language of the relevant
statutes. Section 251 provides that “[n]o reissued patent
shall be granted enlarging the scope of the claims of the
original patent unless applied for within two years from
the grant of the original patent” and a reissue patent may
only be issued absent “deceptive intention” by the appli-
cant. 35 U.S.C. § 251.
Section 282 provides, in relevant part: “[e]ach claim of
a patent . . . shall be presumed valid independently of the
validity of other claims[.]” Id. § 282. And “[i]nvalidity of
the patent or any claim in suit for failure to comply with
any requirement of [35 U.S.C. §§ 100 et seq.] or 251”
“shall be [a] defense[] in any action involving the validity
of infringement of a patent . . . .” Id.Section 282 plainly states that a patent’s claims are
presumed valid independent of one another. And § 282
uses the same language to reference § 251 as it does
§§ 100 et seq., which we have long held to only apply on a
claim-by-claim basis. 35 U.S.C. § 282 (listing “[i]nvalidity
of the patent or any claim in suit on any ground specified
in [35 U.S.C. §§ 100 et seq.]” as a defense); see, e.g., Van-
denberg v. Dairy Equip. Co., a Div. of DEC Int’l, 740 F.2d
1560, 1568 (Fed. Cir. 1984) (reversing a decision invali-
dating an entire patent based solely on the ground that
some claims were invalid as obvious). Compare 35 U.S.C.
§ 251 (“No reissued patent shall be granted . . . .”), with
id. § 102 (“A person shall be entitled to a patent un-
less . . . .”), and id. § 103(a) (“A patent may not be ob-
tained . . . .”). Moreover, the plain language of § 253
confirms that “[w]henever, without any deceptive inten-
tion, a claim of a patent is invalid the remaining claims
shall not thereby be rendered invalid.”
Additionally, we have previously rejected the argu-
ment that a defective reissue application invalidates not
only newly added reissue claims, but also original claims
carried over from the original application. Hewlett-
ARCELORMITTAL FRANCE v. AK STEEL CORPORATION 11
Packard Co. v. Bausch & Lomb, Inc., 882 F.2d 1556, 1566
(Fed. Cir. 1989). There, we were presented with a strong-
er case for invalidating the entirety of a reissue patent
than the case before us, but declined to do so. We found
newly added reissue claims invalid due to a defective
reissue declaration, but declined to invalidate the original
claims that were carried over in the reissue application
despite a perception that the improper reissue application
“infected” the entirety of the reissue patent. Id. at 1566–
67. 3
In rejecting the argument that the entire reissue pa-
tent should be held invalid, we explained that “[t]here is
no disagreement with the long-standing proposition that
invalidation of a new claim (added during reissue) on
prior art does not invalidate the other claims.” Id. at 1566(citation omitted). “Nor could there be any disagreement,
for the patent statute provides: ‘Whenever, without any
deceptive intention, a claim of a patent is invalid the
remaining claims shall not thereby be rendered invalid.’”
Id. at 1566–67 (quoting 35 U.S.C. § 253 (1982)). We noted
that § 253 alone “offers little guidance, however, because
the invalidity resulting from a defective reissue applica-
tion may be viewed as affecting the entire patent and not
merely any particular claim.” Id. However, we neverthe-
less “[found] support for upholding carry-over claims in
Gage v. Herring. There, the Supreme Court expressed its
view that the inadequacy of the ground for reissuing a
patent did not ‘impair the validity of the original claim
which is repeated and separately stated in the reissued
patent.’” Id. (quoting Gage v. Herring, 107 U.S. 640, 646
(1883)) (citations omitted).
3 Here, there is no allegation or evidence that Arce-
lorMittal acted with deceptive intent or submitted a
defective reissue application. Thus, we cannot say that
the entire reissue application is tainted.
12 ARCELORMITTAL FRANCE v. AK STEEL CORPORATION
While claims 24 and 25 are not identical to the claims
of the ’805 patent since they identify the specific level
“1500 MPa” as being the level of “mechanical resistance”
rather than referring to “very high mechanical re-
sistance,” they nevertheless “repeat[ ] and separately
state[ ]” the scope of claim 1 of the ’805 patent as con-
strued by the district court and later affirmed by this
court. Appellees concede as much, and we are not per-
suaded to conclude otherwise. Appellee’s Br. 42 (“Indeed,
the only claims of the RE153 patent that were not them-
selves broadened were two dependent claims . . . .”). And,
while we are mindful of the concerns over ArcelorMittal’s
attempts to modify the district court’s claim construction
through the reissue process, we are not persuaded that
these policy concerns demand we part from our precedent.
Accordingly, we find the district court erred in invalidat-
ing claims 24 and 25 of the RE153 patent.
III
We conclude that the district court was bound by our
construction of claim 1 of the ’805 patent and that the
RE153 patent does not constitute new evidence sufficient
to meet the “extraordinary circumstances” exception to
the mandate rule. The district court properly concluded
that claims 1 through 23 of the RE153 patent were im-
properly broadened under § 251 and therefore invalid.
However, the district court erred in invalidating claims 24
and 25, which the parties concede maintain the same
scope as the original claims. Because the district court’s
summary judgment orders invalidated the entire RE153
patent, we decline the Appellees’ invitation to reach the
merits, and remand for further proceedings consistent
with this opinion and our mandate in ArcelorMittal I.
AFFIRMED-IN-PART, REVERSED-IN-PART, AND
REMANDED