Reissue cannot modify Claim Construction determined for repeated Original Patent Claims

Michael Caridi | June 3, 2015

ArcelorMittal France v. AK Steel Corp. et al.

May 12, 2015

Before: Dyk, Wallach and Hughes.  Opinion by Hughes.

Summary

ArcelorMittal had filed suit on the ‘805 patent against the appellees.  However, the construction of a key term “very high mechanical resistance” was unfavorable to ArcelorMittal and a jury subsequently found the claims of the ‘805 patent not infringed and invalid.  During appeal of the decision ArcelorMittal filed a Reissue application at the USPTO which included a new dependent claim with a broader construction of “very high mechanical resistance” than that construed during the judicial action.  The CAFC affirmed the District Court’s claim construction but remanded the case on other grounds.

ArcelorMittal filed new suits based on the Reissue patent, but the District Court granted Summary Judgment invalidating the claims on the basis that the term “very high mechanical resistance” was earlier construed  during the ‘805 litigation narrower than the subsequent claims of the Reissue patent.  The CAFC affirmed the District Court asserting that under the law-of-the-case-doctrine and mandate rule, ArcelorMittal could not use the Reissue process at the PTO to broaden construction after the decision on the ‘805 patent.

Details

A. Background

In 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.  The CAFC affirmed this claim construction in an earlier appeal but remanded the action on other grounds (ArcelorMittal I).

While ArcelorMittal I was pending, ArcelorMittal prosecuted an application for reissue of the ’805 patent to correct the district court’s construction of “very high mechanical resistance.”  As a result, the RE153 patent issued 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.”   The RE153 patent otherwise maintained the independent claims from the original ‘805 patent directed toward a specific type of steel sheet that has “a very high mechanical resistance.”  Thus, the only relevant change was 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 the previous claim construction ruling.

On remand from ArcelorMittal I, ArcelorMittal amended its complaint to substitute the ’805 patent for the RE153 patent and filed new suits for patent infringement against the previous defendants alleging new acts of infringement of the RE153 patent.

The Defendants (Appellees) moved for summary judgment arguing claims 1 through 23 of the RE153 patent were invalid because they were impermissibly broadened in the reissue proceedings. The district court granted the motion and ArcelorMittal appealed.

B. Decision

On appeal, ArcelorMittal argued the RE153 claims are no broader than the original ’805 claims because the successful prosecution of the RE153 patent demonstrates the Patent Office’s belief that the term “very high mechanical resistance” in the ’805 patent was broader than the District Court and CAFC had construed it to be in ArcelorMittal I.

The Court applied the law-of-the-case doctrine which “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 Court also applied the mandate rule, noting that “[t]he 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 mandate 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.

ArcelorMittal argued that the Patent Office’s reissue of the RE153 patent is “new evidence” sufficient to constitute “extraordinary circumstances” to deviate from the clear mandate and construction of “very high mechanical resistance” in claim 1 of the ‘805 patent during ArcelorMittal I.

The Court held that 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, noting that: “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 apparatus 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.”

Rather, the Court asserted that 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 and the Court had already determined the proper scope of claim 1 of the ’805 patent during ArcelorMittal I.

Hence, the Court concluded that the prosecution history of the reissue patent 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 ArcelorMittal I’s prior construction of the original claims, which ArcelorMittal conceded was narrower than the scope of the reissue claims.   The CAFC affirmed, based on this prior construction, that 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.

Take Away

The law-of-the-case-doctrine and mandate rule, prohibit the use of the Reissue process at the PTO to broaden claim construction after judicial decision has construed the claims in the original patent.

Full Opinion

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