In Arcelormittal France v. AK Steel Corp., et al., C.A. Nos. 10-050, 13-865-SLR (D. Del. Dec. 4, 2015), Judge Sue L. Robinson granted defendants’ motion for summary judgment of no infringement and invalidity, and denied plaintiffs’ motion to dismiss for lack of subject matter jurisdiction in C.A. No. 10-050. As Judge Robinson noted, “[t]he above captioned litigation has a convoluted procedural history.” Id. at 2 (full procedural history summarized on pages 2-5). Following a jury verdict in defendants’ favor in C.A. No. 10-050, plaintiffs appealed. The Federal Circuit (i) upheld the claim construction in part and reversed in part; (ii) reversed the jury’s verdict of anticipation; and (iii) with respect to obviousness, concluded that a new trial was required because the claim construction error prevented the jury from properly considering plaintiffs’ evidence of commercial success (“ArcelorMittal I”). Id.
During the appeal, plaintiffs obtained U.S. Patent No. RE44,153E (“the RE153 patent”). Id. at 3. Plaintiffs subsequently filed a complaint for patent infringement of the RE153 patent in C.A. No. 13-685 against defendant AK Steel Corp., and filed a motion for leave to file a second amended complaint in C.A. No. 10-050, substituting the RE153 for the originally asserted patent, U.S. Patent No. 6,296,805 (“the ‘805 patent”). Id. Defendants then moved for entry of summary judgment in C.A. No. 10-050, arguing that the RE153 patent was invalid pursuant to 35 U.S.C. § 251(d). Id. at 4. The court granted that motion, having concluded that RE153 patent was improperly broadened. Id. The Federal Circuit affirmed and reversed that ruling in part (“ArcelorMittal II”), finding that “district court properly concluded that claims 1 through 23 of the RE153 patent were improperly broadened under § 251 and therefore invalid,” but “erred in invalidating claims 24 and 25, which the parties concede maintain the same scope as the original claims.” Id. at 5. The Federal Circuit remanded the case for further proceedings. Id.
Here, plaintiffs argued that C.A. No. 10-050 should be dismissed for lack of subject matter jurisdiction because (1) claims 24 and 25 were never at issue in C.A. No. 10-050; (2) all of the asserted claims of the RE153 patent have been held invalid; and (3) the absence of any case or controversy requires dismissal. Id. at 6. Judge Robinson rejected plaintiffs’ argument, first explaining that “Claims 24 and 25 of the RE153 patent are ‘substantially identical’ to claim 1 of the ‘805 patent, as established by the Federal Circuit in ArcelorMittal II and consistent with the parties’ concession.” Id. at 7. Thus, according to Judge Robinson, “claims 24 and 25 of the RE153 patent were asserted in Civ. No. 10-050 as a matter of law,” and plaintiffs’ motion to dismiss must be denied. Id. at 7-8. Judge Robinson noted that the “RE153 patent simply took the place of the ‘805 patent upon its surrender.” Id.
In their motion for summary judgment, defendants argued in general that “because claims 24 and 25 of the RE153 patent have the same scope as claim 1 of the ‘805 patent, the motions are appropriately resolved consistent with the 2011 trial record and the mandate of the Federal Circuit in ArcelorMittal I.” Id. at 6. Judge Robinson agreed. First, Judge Robinson granted defendants’ motion for summary judgment of no infringement, noting that following ArcelorMittal I, plaintiffs had “conceded – by not addressing – the fact that the trial record had no evidence of past infringement of claim 1 of the ‘805 patent as construed by the Federal Circuit.” Id. at 9. Judge Robinson thus reasoned that “[g]iven the fact that I would not allow the record to be opened on remand if the ‘805 patent were still at issue, and given that plaintiffs are not asserting pre-trial acts of infringement, I find that there are no genuine issues of material fact as to infringement of claims 24 and 25 of the RE153 patent.” Id.
Judge Robinson also granted defendants’ motion for summary judgment of invalidity. Judge Robinson observed that “[t]he question once again is whether, under the circumstances at bar, I should allow plaintiffs to start with a clean slate, as though no trial and no appeal had ever occurred in Civ. No. 10-050.” Id. at 11. Judge Robinson “decline[d] to do so, and confine[d] [the Court’s] analysis to the scope of the Federal Circuit’s mandate in ArcelorMittal I.” Id. Judge Robinson concluded “plaintiffs have not identified any genuine issues of material fact sufficient to overcome defendants’ prima facie case of obviousness.” Id. Specifically, Judge Robinson explained that “defendants contend (and plaintiffs concede by not addressing)” that there was not a sufficient nexus between commercial success and the patented invention. Id.
Judge Robinson did grant plaintiffs’ motion to amend in C.A. No. 13-865, which sought “permission to assert yet another patent against AK Steel – U.S. Reissue Patent No. RE44,940 (“the RE940 patent”), a continuation of the patent application that issued as the RE153 patent and which itself issued on June 10, 2014.” Id. at 5.