Dependent Claims Give Rise to Improper Broadening Reissue

27 May 2015 PharmaPatents Blog

In ArcelorMittal France v. AK Steel Corp., the Federal Circuit found that the addition of a dependent claim to a reissue application improperly broadened the scope of the original independent claims beyond the two-year period for a broadening reissue. While the court invoked the law-of-the-case doctrine, the same result could occur with any patent where the claims have been construed more narrowly.

The Patent at Issue

The patent at issue was ArcelorMittal’s U.S. Patent No. RE44,153, which was a reissue of U.S. Patent 6,296,805.

Claim 1 as originally granted 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 … 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.

Claims 23-25 were added during the reissue proceeding and recite:

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.

Procedural History Surrounding Claim 1 

In 2010, ArcelorMittal asserted the ‘805 patent against AK Steel and others. In that proceeding, the district court construed the phrase “a very high mechanical resistance” in claim 1 as “a tensile strength greater than 1500 MPa.” On appeal, the Federal Circuit upheld that claim construction, but “reversed and remanded on other grounds.”

While the Federal Circuit appeal was pending, ArcelorMittal filed the reissue application to rectify the district court’s claim construction, adding claims 1-25.

ArcelorMittal then amended its complaint in the remanded proceeding to substitute RE153 for the ’805 patent, and brought new infringement actions against AK Steel and others. The defendants moved for summary judgment on the ground that claims 1-23 were invalid as improperly broadened in the reissue proceeding. The district court granted the motion, and also invalidated new claims 24 and 25.

The Federal Circuit Decision

The Federal Circuit decision was authored by Judge Hughes and joined by Judges Dyk and Wallach.

As summarized by the Federal Circuit, the only change made during the reissue proceeding 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 a previous claim construction ruling.”

The Federal Circuit applied the “law-of-the-case” doctrine and found that the district court was bound by its previous construction of “a very high mechanical resistance” in claim 1 as designating “a tensile strength greater than 1500 MPa.” As such, the addition of dependent claim 23, which recited a very high mechanical resistance of only “in excess of 1000 MPa,” improperly broadened the scope of claim 1 (and dependent claims 2-23) outside the two-year period of 35 USC § 251. That statute provides:

No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent ….

The Federal Circuit explained that “[t]he law-of-the-case doctrine 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.” Although exceptions can be made in “extraordinary circumstances,” the Federal Circuit disagreed that the grant of the reissue patent constituted “new evidence” that would warrant an exception. Rather, the court found that such an exception “would turn the validity analysis under 35 U.S.C. § 251 on its head,” since that analysis requires comparing the scope of the claims as originally granted to the scope of the reissued claims. Thus, the Federal Circuit affirmed the district court’s finding that claims 1-23 are invalid under § 251.

The Federal Circuit remanded to the district court for separate consideration of claims 24 and 25, citing 35 USC § 282 for the proposition that “a patent’s claims are presumed valid independent of one another.” This portion of the Federal Circuit decision reminds me of Keurig, Inc. v. Sturm Foods, Inc., where the court found that patent exhaustion is not evaluated on a claim-by-claim basis. (Judge O’Malley dissented on that point.)

Law Of The Case Or Law Of The Patent?

Although the Federal Circuit relied on the law-of-the-case doctrine, it is not clear that ArcelorMittal’s arguments would have fared any better in a different case, even against different parties. For example, in supporting its decision, the court stated:

[T]he 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 we have already determined the proper scope of claim 1 of the ’805 patent in ArcelorMittal I.

Wouldn’t that hold true in any case involving this patent?

This blog is made available by Foley & Lardner LLP (“Foley” or “the Firm”) for informational purposes only. It is not meant to convey the Firm’s legal position on behalf of any client, nor is it intended to convey specific legal advice. Any opinions expressed in this article do not necessarily reflect the views of Foley & Lardner LLP, its partners, or its clients. Accordingly, do not act upon this information without seeking counsel from a licensed attorney. This blog is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Communicating with Foley through this website by email, blog post, or otherwise, does not create an attorney-client relationship for any legal matter. Therefore, any communication or material you transmit to Foley through this blog, whether by email, blog post or any other manner, will not be treated as confidential or proprietary. The information on this blog is published “AS IS” and is not guaranteed to be complete, accurate, and or up-to-date. Foley makes no representations or warranties of any kind, express or implied, as to the operation or content of the site. Foley expressly disclaims all other guarantees, warranties, conditions and representations of any kind, either express or implied, whether arising under any statute, law, commercial use or otherwise, including implied warranties of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Foley or any of its partners, officers, employees, agents or affiliates be liable, directly or indirectly, under any theory of law (contract, tort, negligence or otherwise), to you or anyone else, for any claims, losses or damages, direct, indirect special, incidental, punitive or consequential, resulting from or occasioned by the creation, use of or reliance on this site (including information and other content) or any third party websites or the information, resources or material accessed through any such websites. In some jurisdictions, the contents of this blog may be considered Attorney Advertising. If applicable, please note that prior results do not guarantee a similar outcome. Photographs are for dramatization purposes only and may include models. Likenesses do not necessarily imply current client, partnership or employee status.

Related Services

Insights

Upcoming Webinar: Maximizing Solar Tax Credits - Navigating the Start of Construction Rules (Part 1)
17 September 2019
Renewable Energy Outlook
When Birds Finally Find a Nest
17 September 2019
Dashboard Insights
DHS Moves Closer to Launching its H-1B Cap Registration System
16 September 2019
Labor & Employment Law Perspectives
Be Aware of Potential Legal Restrictions When Implementing a Workplace Weapons Policy
16 September 2019
Labor & Employment Law Perspectives
MedTech Impact Expo & Conference
13-15 December 2019
Las Vegas, NV
Review of 2020 Medicare Changes for Telehealth
11 December 2019
Member Call
BRG Healthcare Leadership Conference
06 December 2019
Washington, D.C.
CTeL Telehealth Fall Summit 2019
04-06 December 2019
Washington, D.C.