Docket Nos. 2017-1637
REYNA, WALLACH, HUGHES
Nov. 14, 2018 (sealed opinion issued Nov. 5, 2018)
Brief summary: DC decision of SJ based on collateral estoppel to AK vacated and remanded due to new evidence that the accused products may have “materially changed”.
Summary: Arcelormittal (AM) appealed grant of summary judgment (SJ) of non-infringement of US 6,296,805 and two ‘805 reissues based on collateral estoppel to AK Steel (AK). The FC panel concluded, however, that collateral estoppel does not apply in this case, and the DC decision was vacated and remanded. This appeal is “primarily” related to AM’s reissue RE44,940 including representative product-by-process claim 17 directed to a “hot-rolled coated sheet…coated with an aluminum or aluminum alloy coating” including particular amounts of specific elements (e.g., between 0.15-0.5% carbon) and “a very high mechanical resistance in excess of 1500 MPa after thermal treatment”. This claim is “nearly identical to the language of claim 1 in the ‘805 patent”, “[t]he difference” being that RE940 claim 17 “reflects the [DC’s] prior claim construction…which was affirmed by this court on appeal as part of an earlier litigation in 2010.” The FC panel reviewed the DC’s collateral estoppel decision (a question of law) de novo and explained that a key issue here is “whether the accused product is the same…or whether the accused products have materially changed” since the 2010 litigation. “[D]efensive collateral estoppel” of non-infringement “applies with respect to a patent’s validity if (1) the patent was found invalid in a prior case that proceeded to final judgment where all procedural opportunities were available to the patentee; (2) the issues litigated were identical; and (3) the party against whom estoppel is applied had a full and fair opportunity to litigate” the validity of the patent (Abbott Labs., FC 2007 summarizing Blonder-Tongue (US 1971)); Amgen, FC 1996 (“whether without fault of his own the patentee was deprived of crucial evidence or witnesses in the first litigation” and can apply “in cases with different but related patent when there are common issues”); Acumed, FC 2008 (“Accused devices are ‘essentially the same’ where the differences between them are merely ‘colorable’ or ‘unrelated to the limitations in the claim’”); Young Eng’rs (FC 1983) (“proponent of claim or issue preclusion bears the burden of showing that the accused devices are essentially the same”)). Here, the FC panel concluded that AK failed to meet its burden that the accused products “in the present action are materially the same as” those “in the 2010 action, especially when the facts are viewed in the light most favorable to the non-movant, ArcelorMittal.” In the 2010 litigation, the DC “noted a lack of evidence…that AK Steel’s steel sheets were hot-stamped to achieve a UTS exceeding 1,500 MPa” but here the FC panel found that new evidence showed the accused products were “thermally treated to achieve a UTS in excess of 1,500 MPa” (“changes in controlling facts, such that collateral estoppel does not apply” (Scooper Dooper, 3rd Cir. 1974)). The FC panel also found that the DC erred in dismissing AM’s potential indirect infringement claims due to a lack of direct infringement” since there could be direct infringement “[i]f the third party hot-stampers” (used by AK) “product steel sheets with a UTS exceeding 1,500 MPa after thermal treatment”. The FC panel also found error in the DC’s denial of AM’s request for additional discovery to oppose AK Steel’s motion for” SJ under Rule 56(d) because “new evidence of material differences in the accused products exists.”