ARCELORMITTAL FRANCE, ARCELORMITTAL ATLANTIQUE ET LORRAINE, ARCELORMITTAL USA LLC, Plaintiffs-Appellants
AK STEEL CORPORATION, SEVERSTAL DEARBORN, INC., WHEELING-NISSHIN INC., Defendants-Appellees; ARCELORMITTAL FRANCE, ARCELORMITTAL ATLANTIQUE ET LORRAINE, ARCELORMITTAL USA LLC, Plaintiffs-Appellants
AK STEEL CORPORATION, Defendant-Appellee; ARCELORMITTAL FRANCE, ARCELORMITTAL ATLANTIQUE ET LORRAINE, ARCELORMITTAL USA LLC, Plaintiffs-Appellants
SEVERSTAL DEARBORN LLC, WHEELING-NISSHIN INC., Defendants-Appellees
Appeal from the United States District Court for the District of Delaware in Nos. 1:10-CV-00050,
1:13-CV-00685, 1:13-CV-00686, Judge Sue L. Robinson.
AFFIRMED-IN-PART, REVERSED-IN-PART, AND REMANDED.
CONSTANTINE L. TRELA, JR., Sidley Austin LLP, Chicago, IL, argued for plaintiffs-appellants. Also represented by DAVID T. PRITIKIN; RACHEL HEATHER TOWNSEND, Washington, DC; JEFFREY B. BOVE, Wilmington, DE.
CHRISTOPHER NEIL SIPES, Covington & Burling LLP, Washington, DC, argued for defendants-appellees. Defendant-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. 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 reissue, we reverse-in-part and remand for further proceedings.
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 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 appealed. On appeal, we affirmed the district court's construction of " a very high mechanical resistance," but reversed and remanded on other grounds. ArcelorMittal, 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 ArcelorMittal I ...