CAFC gives mixed decision in ARCELORMITTAL FRANCE case
The conclusion of ARCELORMITTAL FRANCE v. AKSteel
On remand, the district court must address whether, under the correct claim construction, the asserted claims of the ’805 patent are obvious in light of any evidence of commercial success of hot-rolled steel that is also cold- rolled and that has the required nexus with ArcelorMittal’s claims. Additionally, as discussed above, the district court must address the issue of literal infringement under the correct claim construction. In remanding for a limited new trial addressing only infringement under the correct claim construction and whether ArcelorMittal has pertinent commercial success evidence sufficient to overcome the prima facie case of obviousness, we do not foreclose the district court from entertaining a motion for summary judgment on these issues that might obviate the need for a further trial.
A determination of anticipation went down the drain:
ArcelorMittal argues that the evidence cannot support the jury’s anticipation verdict. “Anticipation is a question of fact, reviewed for substantial evidence when tried to a jury.” Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008). The jury’s finding of anticipation was based on Bano. The Bano article was written and presented by inventor Jean-Pierre Laurent and his col- league Xavier Bano during the development of the pre- coated steel claimed in the ’805 patent, and the parties agree that it discusses hot-stamping boron steel. AK Steel argued, and the jury found, that the article disclosed the entire invention. ArcelorMittal challenges that finding on the grounds that Bano disclosed neither coating the steel sheet before thermal treatment nor coating the steel sheet with aluminum or an aluminum alloy. We conclude that there is not substantial evidence that Bano disclosed coating with aluminum or aluminum alloy.
As to specifics:
However, the jury’s apparent conclusion that Bano disclosed coating with aluminum or aluminum alloy is more problematic. In denying JMOL, the district court relied on In re Petering, 301 F.2d 676 (C.C.P.A. 1962), to hold that “aluminum was a member of a very small class of metals suitable for use in coating boron steel,” and therefore inherent in Bano. ArcelorMittal, 811 F. Supp. 2d at 967–68. Petering establishes that when a prior art reference discloses a “definite and limited class” of suit- able members within a general formula, it may be read to disclose each member of that class. Petering, 301 F.2d at 681.
Without an explicit disclosure of aluminum coating or substantial evidence that aluminum belonged to a sufficiently definite and limited class of possible coatings, the jury verdict of anticipation based on Bano cannot stand. We therefore reverse the district court’s denial of JMOL as to anticipation.
On remand, the district court must address whether, under the correct claim construction, the asserted claims of the ’805 patent are obvious in light of any evidence of commercial success of hot-rolled steel that is also cold- rolled and that has the required nexus with ArcelorMittal’s claims. Additionally, as discussed above, the district court must address the issue of literal infringement under the correct claim construction. In remanding for a limited new trial addressing only infringement under the correct claim construction and whether ArcelorMittal has pertinent commercial success evidence sufficient to overcome the prima facie case of obviousness, we do not foreclose the district court from entertaining a motion for summary judgment on these issues that might obviate the need for a further trial.
A determination of anticipation went down the drain:
ArcelorMittal argues that the evidence cannot support the jury’s anticipation verdict. “Anticipation is a question of fact, reviewed for substantial evidence when tried to a jury.” Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008). The jury’s finding of anticipation was based on Bano. The Bano article was written and presented by inventor Jean-Pierre Laurent and his col- league Xavier Bano during the development of the pre- coated steel claimed in the ’805 patent, and the parties agree that it discusses hot-stamping boron steel. AK Steel argued, and the jury found, that the article disclosed the entire invention. ArcelorMittal challenges that finding on the grounds that Bano disclosed neither coating the steel sheet before thermal treatment nor coating the steel sheet with aluminum or an aluminum alloy. We conclude that there is not substantial evidence that Bano disclosed coating with aluminum or aluminum alloy.
As to specifics:
However, the jury’s apparent conclusion that Bano disclosed coating with aluminum or aluminum alloy is more problematic. In denying JMOL, the district court relied on In re Petering, 301 F.2d 676 (C.C.P.A. 1962), to hold that “aluminum was a member of a very small class of metals suitable for use in coating boron steel,” and therefore inherent in Bano. ArcelorMittal, 811 F. Supp. 2d at 967–68. Petering establishes that when a prior art reference discloses a “definite and limited class” of suit- able members within a general formula, it may be read to disclose each member of that class. Petering, 301 F.2d at 681.
Without an explicit disclosure of aluminum coating or substantial evidence that aluminum belonged to a sufficiently definite and limited class of possible coatings, the jury verdict of anticipation based on Bano cannot stand. We therefore reverse the district court’s denial of JMOL as to anticipation.
posted by Lawrence B. Ebert at 9:42 AM
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