Claim Construction in Prior Appeal Binding Despite Intervening Reissue: Federal Circuit | Practical Law

Claim Construction in Prior Appeal Binding Despite Intervening Reissue: Federal Circuit | Practical Law

In ArcelorMittal France v. AK Steel Corp., the US Court of Appeals for the Federal Circuit affirmed the district court's grant of summary judgment invalidating 23 claims of the reissue patent in suit but reversed its invalidation of two additional claims. The Federal Circuit held that the district court properly applied the law of the case doctrine and mandate rule in invalidating the 23 claims.

Claim Construction in Prior Appeal Binding Despite Intervening Reissue: Federal Circuit

by Practical Law Intellectual Property & Technology
Published on 13 May 2015 • USA (National/Federal)
In ArcelorMittal France v. AK Steel Corp., the US Court of Appeals for the Federal Circuit affirmed the district court's grant of summary judgment invalidating 23 claims of the reissue patent in suit but reversed its invalidation of two additional claims. The Federal Circuit held that the district court properly applied the law of the case doctrine and mandate rule in invalidating the 23 claims.
On May 12, 2015, in ArcelorMittal France v. AK Steel Corp., the US Court of Appeals for the Federal Circuit affirmed in part and reversed in part the US District Court for the District of Delaware's grant of summary judgment invalidating 25 claims of the reissue patent in suit (Nos. 2014-1189, -1190, -1191, (Fed. Cir. May 12, 2015)). In doing so, the Federal Circuit:
  • Affirmed the district court's application of the law of the case doctrine and mandate rule in invalidating 23 of the claims, which were broadened during reissue in violation of 35 U.S.C. § 251.
  • Reversed the district court's ruling on the additional two claims because they had not been broadened during reissue.
This case involved US Patent No. RE44,153 (RE153), a reissue of US Patent No. 6,296,805 (the '805 patent), both owned by ArcelorMittal. Both patents are directed to a type of steel sheet and have the same specification. In 2010, ArcelorMittal filed suit against AK Steel Corp. and others (collectively AK Steel) alleging infringement of the '805 patent. After a jury trial and on appeal, the Federal Circuit affirmed the district court's construction of the claim term "very high mechanical resistance" used to describe the claimed sheet steel (700 F.3d 1314 (Fed. Cir. 2012)). The Federal Circuit reversed and remanded on other grounds.
While the appeal was pending, ArcelorMittal filed for a reissue and was granted RE153 on April 16, 2013. On remand, ArcelorMittal amended its complaint to substitute RE153 for the surrendered '805 patent. AK Steel filed a motion to dismiss claims 1 to 23 as invalid because the reissue had improperly broadened them. The district court granted the motion and sua sponte invalidated claims 24 and 25.
On appeal, the Federal Circuit held that the district court properly invalidated reissue claims 1 to 23. The court reasoned that:
  • The law of the case doctrine and the mandate rule required the district court to apply the Federal Circuit's earlier claim construction to the reissued claims. The Federal Circuit further stated that ArcelorMittal's successful prosecution of RE153 did not qualify as new evidence sufficient to constitute extraordinary circumstances that would allow the district court to deviate from the earlier construction.
  • Under 35 U.S.C. § 251, the inquiry is whether the reissue claims have the same meaning as the original claims under the court's earlier construction. The court emphasized that allowing an intervening reissue to modify the scope of a previously construed claim term would defeat the purpose of a Section 251 analysis.
The Federal Circuit reversed the district court's decision invalidating reissue claims 24 and 25, stating that the district court failed to undertake a claim-by-claim analysis. The court reasoned that:
  • Invalidation of some reissue claims does not invalidate the entire patent.
  • Although claims 24 and 25 are not identical to the original '805 patent claims, they repeat and separately state the scope of claim 1 of the '805 patent, and therefore do not broaden the scope of the original patent.