United States District Court, D. Delaware
ARCELORMITTAL and ARCELORMITTAL ATLANTIQUE ET LORRAINE, Plaintiffs,
AK STEEL CORPORATION, SEVERSTAL DEARBORN, INC. and WHEELING-NISSHIN INC., Defendants.
Jeffrey B. Bove, RatnerPrestia, Wilmington, DE; Hugh A.
Abrams, Shook, Hardy & Bacon L.L.P., Chicago, IL -
attorneys for Plaintiffs.
W. Poff, Pilar G. Kraman, Young Conaway Stargatt &
Taylor, LLP, Wilmington, DE; Roderick R. McKelvie,
Christopher N. Sipes, Jeffrey H. Lerner, Covington &
Burling LLP, Washington, DC - attorneys for Defendants
NOREIKA, U.S. DISTRICT JUDGE
before the Court is the motion of Defendants AK Steel Corp.,
Severstal Dearborn, Inc. and Wheeling-Nisshin, Inc.
(collectively, “Defendants”) to declare this case
exceptional under 35 U.S.C. § 285 since at least April
16, 2013 and for an award of attorneys' fees and related
costs incurred from that time forward. (See D.I.
354). For the reasons set forth below, Defendants' motion
for attorneys' fees is DENIED.
more than nine years old, this case has a long and tortured
history. Plaintiffs ArcelorMittal France and ArcelorMittal
Atlantique et Lorraine (collectively,
“Plaintiffs” or “ArcelorMittal”)
filed this action on January 22, 2010, alleging that
Defendants infringed U.S.
No. 6, 296, 805 (“the '805 Patent”).
(See D.I. 1 ¶¶ 11-15). The '805
Patent, which issued on October 2, 2001 and is titled
“Coated Hot- and Cold-Rolled Steel Sheet Comprising a
Very High Resistance After Thermal Treatment, ” is
directed to boron-containing steel sheets that have been
hot-rolled and coated with an aluminum-based coating.
('805 Patent at 1:47-64; see also id.
1:37-44, 2:37-40). Hot-rolling and cold-rolling of steel
sheets are processing steps used to achieve a desired final
thickness. (Id. at 2:37-40). After undergoing
thermal treatment, the claimed steel sheets have “very
high mechanical resistance.” (Id. at 1:6-8,
see also Id. at 1:61-62). Claim 1 of the '805
Patent is the only independent claim and it recites:
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:
0.0005%<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.
(Id. at Claim 1). The remaining fifteen claims of
the '805 Patent ultimately depend from claim 1. Most of
the dependent claims are directed to a steel sheet having a
certain composition or made using certain conditions
(id. at Claims 2-3, 5, 7, 9, 13, 16) or to a process
of making a casting using the steel sheet (id. at
Claims 4, 6, 8, 10-12).
Trial on the '805 Patent and the First Appeal
outset of the case, Defendants urged the judge then handling
the case, Judge Robinson, to engage in early claim
construction, arguing that construction of the term
“hot-rolled coated steel sheet comprising a hot-rolled
steel sheet coated with an aluminum or aluminum alloy
coating” would likely be dispositive of Plaintiffs'
infringement claims. (D.I. 29 at 5). Although this proposal
was initially rejected (see, e.g., D.I. 31 at 1;
D.I. 32 at 4), at Defendants' continued request (D.I. 45
at 2-4), the judge ultimately allowed early claim
construction on the two terms that Defendants agreed would be
“the sole bases for any non-infringement assertions
with respect to independent claim 1” (D.I. 68 ¶
5). On December 16, 2010, Judge Robinson issued a claim
construction opinion construing those two terms -
i.e., “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.” (D.I. 189; see also D.I.
70 (Defendants' election of the two terms for early
“hot-rolled steel sheet, ” the dispute between
the parties was whether the term encompassed hot-rolled steel
sheets that had undergone the additional step of cold-rolling
prior to coating with aluminum.
Plaintiffs argued that optional cold-rolling to achieve a
desired thickness prior to coating was not excluded by the
claim (D.I. 126 at 11-13), whereas Defendants argued that the
“hot-rolled steel sheet” of claim 1 was limited
to steel sheets that only underwent hot-rolling prior to
coating (D.I. 136 at 10-12). Judge Robinson adopted the
position advocated by Defendants, construing
“hot-rolled steel sheet coated with an aluminum or
aluminum alloy coating” to mean “a steel sheet
that has been reduced to its final thickness by hot-rolling
and coated with an aluminum or aluminum alloy coating.”
(D.I. 189 at 11). Excluded from the meaning of the term were
sheets that had undergone “hot-rolling followed by
cold-rolling” prior to coating with aluminum.
“very high mechanical resistance, ” the dispute
between the parties was whether, after thermal treatment,
resulting steel sheet must have an ultimate tensile strength
in excess of 1000 MPa, as Plaintiffs proposed, or in excess
of 1500 MPa, as Defendants proposed. (See D.I. 150).
Citing the specification, Plaintiffs argued that the whole
purpose of the '805 Patent is to produce coated steel
sheets having a mechanical resistance exceeding 1000 MPa.
(D.I. 126 at 17; see also '805 Patent at 1:37-42
(“The purpose of the invention is to produce a hot- or
cold-rolled steel sheet . . . which, after thermal treatment
performed on the finished casting, makes it possible to
obtain a mechanical resistance in excess of 1000 MPa . . .
.”)). In Plaintiffs' view, that the invention's
purpose is to achieve this numerical resistance demonstrated
that the “very high mechanical resistance” claim
language must refer to 1000 MPa or greater. (D.I. 126 at 17).
Defendants, on the other hand, argued that the '805
Patent uses the word “high” in connection with
mechanical resistance to refer to tensile strength that
may exceed 1500 MPa. (D.I. 136 at
18-19; see also '805 Patent at 2:50-54).
Therefore, according to Defendants, “very high
mechanical resistance” referred to an ultimate tensile
strength in excess of 1500 MPa. (D.I. 136 at 18-19). The
district court again adopted the position argued by
Defendants, construing the term “the steel sheet has a
very high mechanical resistance after thermal
treatment” to mean “the flat-rolled steel sheet
has been subjected, after rolling, to additional controlled
heating and cooling and has an ultimate tensile strength of
1500 MPa or greater.” (D.I. 189 at 14).
parties agreed to forego summary judgment motions, opting
instead for an expedited jury trial, which began on January
10, 2011. (See D.I. 68 ¶¶ 6, 12). At
trial, based on the construction of the “hot-rolled
steel sheet” term, Plaintiffs were precluded from
arguing that Defendants' steel sheet products literally
infringed claims 1, 2, 5, 7 and 16 of the '805 Patent
(“the Asserted Claims”). (See D.I. 205 at 2
(“Cold-rolling . . . is a prerequisite to
defendants' coating and thermal treatment steps. Absent
any indication that defendants provide a hot-rolled, coated
sheet product prior to cold-rolling, defendants cannot
[literally] infringe.”)). Although it appeared that
Defendants' finished products had an ultimate tensile
strength below the 1500 MPa required by the construction of
the “very high mechanical resistance” term,
Plaintiffs were permitted to argue that Defendants infringed
under the doctrine of equivalents. (Id. at 1-2). On
January 14, 2011, the jury returned a verdict finding that
Defendants did not infringe the Asserted Claims of the
'805 Patent and that the Asserted Claims were invalid as
anticipated and obvious. (D.I. 215). Judgment was entered in
favor of Defendants on January 24, 2011. (D.I. 218). After
denial of Plaintiffs' renewed motion for judgment as a
matter of law and motion for a new trial (see D.I.
248, 249), final judgment was entered in favor of Defendants
on August 26, 2011 (D.I. 251). On September 21, 2011,
Plaintiffs appealed, challenging the construction of both of
the construed terms, as well as the jury verdict. (D.I. 253).
November 30, 2012, the Federal Circuit issued its opinion,
which affirmed-in-part, reversed-in-part, vacated-in-part and
remanded on issues relating to infringement and to
obviousness. See ArcelorMittal France v. AK Steel
Corp. (ArcelorMittal I), 700 F.3d 1314 (Fed.
Cir. 2012). As to claim construction, on the
“hot-rolled steel sheet” term, the Federal
Circuit reversed, finding that the district court's
construction improperly excluded hot-rolled steel sheets that
additionally underwent cold-rolling to achieve final
thickness prior to coating with aluminum. Id. at
1320. Emphasizing the importance of the transition phrase
“comprising” used in claim 1, the Federal Circuit
found that the claim “expressly contemplates
additional, unstated steps such as cold-rolling.”
Id. Moreover, the specification disclosed hot-rolled
steel sheets that were also cold-rolled before coating -
indeed, some of them must have been additionally cold-rolled
to achieve the desired thickness. Id. at 1320-21
(citing '805 Patent at 1:47-48, 2:30-31, 2:37-40, 3:7-9,
3:44- 46, 4:8-9). Therefore, the correct construction of
“hot-rolled steel sheet” is simply “a steel
sheet that has been hot-rolled during its production.”
ArcelorMittal I, 700 F.3d at 1321.
“very high mechanical resistance, ” Plaintiffs
argued on appeal that the stated purpose of the invention is
to achieve a mechanical resistance in excess of 1000 MPa and,
therefore, “very high mechanical resistance” in
claim 1 must be keyed off this value. See ArcelorMittal
I, 700 F.3d at 1321. The Federal Circuit rejected that
argument and affirmed Judge Robinson's construction,
finding it supported by the intrinsic evidence, as well as
extrinsic evidence. Id. (“The specification
does not define ‘very high' mechanical resistance,
but it implies that the 1500 MPa level is necessary for
‘high' mechanical resistance. If 1500 MPa is high
mechanical resistance, then very high resistance must be at
least 1500 MPa.”); see also Id. at 1322
(“By defining ‘high' mechanical resistance as
greater than 1500 MPa, the prior art here suggests that
‘very high' mechanical resistance would be
understood to be at least that high.”). Thus, the term
“the steel sheet has a very high mechanical
resistance” had been properly construed as “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 1321-22. Judge Wallach dissented, focusing on the
invention's purpose as highlighted by Plaintiffs and
emphasizing the specification's interchangeable use of
the terms “very high, ” “high” and
“substantial.” Id. at 1327 (Wallach, J.,
dissenting). For the dissent, there were no “technical
distinctions as to varying resistance levels” in
relation to these descriptors, and each was intended to refer
to a mechanical resistance that improved upon the prior art -
i.e., one in excess of 1000 MPa. Id. at
1327-28. Thus, the dissent agreed with Plaintiffs that
“very high mechanical resistance” means
“mechanical resistance in excess of 1000 MPa.”
Id. at 1328.
the construction of “hot-rolled steel sheet”
precluded Plaintiffs from arguing literal infringement at
trial (D.I. 205), and because the Federal Circuit held that
the term does not exclude products that optionally undergo
cold-rolling prior to coating, the Federal Circuit vacated
the jury's verdict of no infringement and remanded for a
determination of literal infringement under the proper claim
construction. See ArcelorMittal I, 700 F.3d at
1322. Similarly, because the incorrect construction prevented
the jury from considering the commercial success of
Plaintiffs' product, which is cold-rolled prior to
coating, the jury's verdict of obviousness was vacated
and remanded for a determination of commercial
success. The Federal Circuit mandate issued on
March 27, 2013. (D.I. 264-1 at 2).
Remand After ArcelorMittal I, Invalidity of the
Reissued Patent and the Second Appeal
August 8, 2011, while the post-trial motions were pending,
Plaintiffs filed an application for reissue of the '805
Patent. With their initial filings, Plaintiffs submitted an
Information Disclosure Statement (“IDS”) that
included the Final Jury Instructions, Jury Verdict Sheet and
Plaintiffs' post-trial briefing from this litigation.
(See D.I. 278, Ex. C at 106 (IDS submitted with
application for reissue)). Then, on December 5, 2012, Plaintiffs
submitted another IDS, which included the November 30, 2012
opinion from the Federal Circuit in the ArcelorMittal
I appeal. (See D.I. 278, Ex. C at 48, 50). The
reissue ultimately issued on April 16, 2013 as U.S. Reissued
Patent No. RE44, 153 (“the RE'153 Patent”),
with the same specification and initial sixteen claims as the
'805 Patent, but with nine new dependent
claims. (See RE'153 Patent at Claims
17-25). Claims 17-22 of the RE'153 Patent recite
limitations regarding the manufacturing process of the
claimed steel sheet - e.g., hot-shaping and cooling
at a rate that produces certain features (claim 17),
cold-rolling the hot-rolled sheet after pickling (claim 21),
etc. Of the new claims, claims 23-25 are relevant here:
23. The coated steel sheet of claim 1, wherein said
mechanical resistance is in excess of 1000 MPa.
24. The coated steel sheet of claim 1, wherein said
mechanical resistance is in excess of 1500 MPa.
25. The coated steel sheet of claim 24 that is composed
predominantly of martensite.
(RE'153 Patent at Claims 23-25).
the ArcelorMittal I mandate directed the court on
remand to address issues of literal infringement and
commercial success under the correct claim construction of
the “hot-rolled steel sheet” term of the '805
Patent, the remand instead largely focused on the RE'153
Patent and whether it was an improper broadening reissue in
violation of 35 U.S.C. § 251(d). After receiving submissions
by the parties as to how to proceed on remand (see
D.I. 271-73), Judge Robinson directed the parties to focus on
Defendants' noninfringement arguments in light of the
mandate, as well as Plaintiffs' argument that the
construction of “very high mechanical resistance”
should be revisited in light of the reissued patent
(see D.I. 312 at 43:8-46:5; see also D.I.
respect to the “very high mechanical resistance”
term of the RE'153 Patent, as they did previously for the
'805 Patent, Plaintiffs argued that “very high
mechanical resistance” in the RE'153 Patent claims
refers to an ultimate tensile strength in excess of 1000 MPa.
(See D.I. 278 at 4). That proposed construction,
they argued, was now supported by a dependent claim - the new
claim 23 in the RE'153 Patent - which specifically
provided that the “very high mechanical
resistance” of claim 1 “is in excess of 1000
MPa.” (RE'153 Patent at Claim 23; see also
D.I. 278 at 4). Defendants agreed that, in light of this
dependent claim, the “very high mechanical
resistance” in the RE'153 Patent must refer to
ultimate tensile strength exceeding 1000 Mpa. (See
D.I. 287 at 13 (“Defendants agree with Arcelor that the
term ‘very high mechanical resistance' in the RE153
patent should be construed to mean an ultimate tensile
strength above 1000 MPa . . . .”)). In Defendants'
view, however, this new construction meant that claims 1-23
of the RE'153 Patent were invalid as improperly broadened
in violation of § 251(d) because the RE'153 Patent
was filed more than two years after the original '805
Patent issued - and the term in the '805 Patent had been
definitively construed by the Federal Circuit to mean
“in excess of 1500 MPa.” (Id. at 14).
Plaintiffs, on the other hand, argued that the new
construction did not render claim 1 of the RE'153 Patent
invalid because it remained identical to claim 1 of the
'805 Patent and therefore could not be considered
broadened. (See D.I. 291 at 7-9).
remand, Defendants moved for summary judgment of
noninfringement implementing part of the ArcelorMittal
I mandate. (See D.I. 281, 282 (AK Steel's
motion and opening brief); D.I. 279, 280 (Severstal Dearborn
and Wheeling-Nisshin's motion and opening brief)).
Defendants argued that there was no evidence that any of
their products had an ultimate tensile strength in excess of
1500 MPa, as required by the affirmed construction of
“very high mechanical resistance.” (D.I. 282 at
8; see also D.I. 280 at 1). Therefore, in
Defendants' view, even under the corrected construction
of “hot-rolled steel sheet” on remand, Plaintiffs
could not prove literal infringement of the '805 Patent
because Defendants' products still failed to meet the
“very high mechanical resistance” limitation.
Defendants also argued that any valid claim of the RE'153
Patent would have no broader scope than the '805 Patent
and, therefore, would not be infringed for the same reason.
(See, e.g., D.I. 282 at 10; D.I. 280 at 7). In their
briefs, Defendants also argued that claims 1-23 of the
RE'153 Patent were invalid under § 251(d) as
broadening the scope of the original '805 Patent outside
the two-year window permitted under the
statute. (See D.I. 282 at 16
(“[I]t would be appropriate not only to enter judgment
of non-infringement for AK Steel, but to find as well that
the broadened claims of the reissue patent (Claim 1-23) are
invalid under Section 251(d).”); see also D.I.
280 at 7). Plaintiffs opposed, arguing that fact issues
existed as to infringement in light of the new (and
agreed-upon) construction of “very high mechanical
resistance” as used in the RE'153 Patent.
(See D.I. 288 at 7 (“[E]vidence in the trial
record confirms that [Defendants] made offers for sale of
accused products having a [ultimate tensile strength] ¶
1, 000 MPa or greater after hot stamping. In light of these
admitted offers, genuine issues of material fact preclude a
grant of summary judgment . . . .”). Plaintiffs also
argued under Rule 56(d) that, even under the Federal
Circuit's construction requiring 1500 MPa, summary
judgment was inappropriate because there was evidence that
Defendants had recently begun selling steel sheets that were
hot-stamped to achieve a mechanical resistance in excess of
1500 MPa. (See Id. at 12-15). Plaintiffs did not
address Defendants' arguments as to noninfringement based
on the original trial record.
October 25, 2013, Judge Robinson granted Defendants'
motions for summary judgment of noninfringement. (D.I. 298;
see also D.I. 297). First addressing the RE'153
Patent claim construction issued raised by Plaintiffs, she
compared the Federal Circuit's construction of
“very high mechanical resistance” as it appeared
in claim 1 of the original '805 Patent with use of that
term in the RE'153 Patent. (See D.I. 297 at
6-7). She found that the term “very high mechanical
resistance” as used in claim 23 of the RE'153
Patent was of a broader scope than the scope definitively
given to the term by the Federal Circuit, which was binding
on remand. (Id. at 6). As such, she concluded that
claim 23 was improperly broadened in violation of §
251(d) and therefore invalid. (Id. at 8-9). As to
the remaining claims, Judge Robinson found those invalid as
well, declining to apply the original scope of the '805
Patent to the remainder of the RE'153 Patent because
“the mandate of the Federal Circuit ha[d] been