In Arcelormittal France, et al. v. AK Steel Corporation, et al., C.A. Nos. 10-050, 13-685-SLR and Arcelormittal France, et al. v. Severstal Dearborn, LLC, et al., C.A. No. 13-686-SLR (D. Del. Dec. 5, 2013) (“Clarification Opinion”), Judge Sue L. Robinson clarified that the Court’s prior opinion granting defendants’ motion for summary judgment in C.A. No. 10-050 (“Summary Judgment Opinion”) did invalidate plaintiff’s entire reissue patent as violative of 35 U.S.C. § 251(d).
“In response to the court’s request that the parties identify any issues pertaining to [C.A. No. 10-050-SLR]’s related cases, [plaintiff sought] to clarify the court’s invalidity ruling, specifically asking whether the court invalidated the entire reissued patent or whether [dependent] claims 24 and 25 remain valid.” Clarification Opinion at 1. On summary judgment, defendants had argued that claims 1-23 of the reissue patent were invalid as violative of Section 251(d), but not claims 24 and 25. See Summary Judgment Opinion at 9. However, the Court confirmed that the entire patent was invalid, explaining that allowing these two claims to stand would “end-run the consequences of violating 35 U.S.C. § 251(d).” Clarification Opinion at 2. “If dependent claims 24 and 25 are not invalidated, [plaintiff] would have successfully accomplished, through the addition of claims, what the Federal Circuit prohibited in [Quantum Corp. v. Rodime, PLC, 65 F.3d 1577 (Fed. Cir. 1995), on which the Court relied in its Summary Judgment Opinion], i.e., retaining the original scope of its claims. As a matter of policy, such a consequence would encourage applicants to circumvent unfavorable litigation outcomes, thereby burdening both the PTO and the courts with competing administrative and judicial submissions.” Id.
Because the Court had found the entire patent invalid, and C.A. No. 10-050-SLR’s related actions (Nos. 13-685 and 13-686) involved infringement of claims 24 and 25, the Court would also enter judgment for defendants in those actions. Id. at 2 n.4.
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