Reissue Amendments may be Determined to be Too Broad if they Contradict Court’s Claim Construction

In Arcelormittal France et al. v. AK Steel Corporation, et al., 2014-1189, 1190, 1191 (Fed.Cir. 2015) (Available Here), the Federal Circuit affirmed several of the reissue claims were invalid as being broadened more than after two years of issue in violation of §251, however, newly added claims 24 and 25 were not broadened during the reissue and thus not invalid.

    ArcelorMittal filed suit against AK Steel Corp., Severstal Dearborn, Inc. and Wheeling Nisshin Inc. alleging infringement of its ‘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 jury then found the ‘805 patent not infringed and invalid as anticipated and obvious.  On appeal, the district court’s construction was affirmed.  

    While the appeal was pending, ArcelorMittal prosecuted an application for reissue of the ‘805 patent to correct the court’s claim construction.  The reissue issued as RE153 patent and added 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” and Claim 24 which recites “[t]he coated steel sheet of claim 1, wherein said mechanical resistance is in excess of 1500 MPa.”  

    While the case was on remand, ArcelorMittal amended its complaint to substitute surrendered ‘805 patent for the RE153 patent and also filed new infringement suits.  Appellees moved for summary judgment arguing claims 1-23 of the RE153 patent were invalid because they were impermissibly broadened in the reissue proceedings.  The district court granted the motion and invalidated claims 1-23 of the RE153 patent and also invalidated claims 24 and 25.

    The Federal Circuit agreed that claims 1-23 were impermissibly broadened in violation of §251, but the district court erred by invalidating claims 24 and 25, which were not broadened.  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.  The Federal Circuit found that 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.  Further, the Federal Circuit stated that it has never found that such reissue prosecution history is relevant to whether an applicant broadened the scope of an original claim in the §251 analysis. Under the law-of-the-case doctrine, the district court was bound by the prior construction and correctly found claims 1-23 of the reissue patent impermissibly broadened the original claims and were invalid under §251.  Claims 24 and 25 repeat and separately state the scope of claim 1 of the ‘805 patent as construed by the district court and later affirmed by the Federal Circuit and, therefore, the district court erred in invalidating these claims. Claims 24 and 25 were not broadened during the reissue and thus not invalid.

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