ArcelorMittal France et al v. AK Steel Corporation

Filing 228

MEMORANDUM ORDER Regarding Claim Construction. Signed by Judge Maryellen Noreika on 7/26/2019. (dlw)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
ARCELORMITTAL and
ARCELORMITTAL ATLANTIQUE
ET LORRAINE,
Plaintiffs,
v.
AK STEEL CORPORATION,
Defendant.

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C.A. No. 13-685 (MN)

MEMORANDUM ORDER
At Wilmington this 26th day of July 2019:
IT IS HEREBY ORDERED that the claim terms of U.S. Reissue Patent No. 44,940 (“the
RE’940 Patent”) with agreed-upon constructions are construed as follows (see D.I. 211 at 10):
1.

“thermal treatment” means “additional controlled heating and cooling
(i.e., after rolling and coating)”

2.

“hot-shaping” means “shaping at elevated temperature”

3.

“prevents decarburization” is a non-limiting statement of the purpose or
results of other limitations in the claim and, to the extent construction is
required, means “prevents removal of carbon from steel sheet”

Further, as announced at the hearing on July 22, 2019, IT IS HEREBY ORDERED that the
disputed claim terms of the RE’940 Patent are construed as follows:
1.

“wherein said coated steel sheet is in the form of a delivery coil . . . and the
steel sheet has a very high mechanical resistance in excess of 1,500 MPa
after thermal treatment” shall be construed in two parts:
(a) “wherein said coated steel sheet is in the form of a delivery coil”
means “the coated steel sheet has been formed into a coil after being
rolled during its production”
(b) “the steel sheet has a very high mechanical resistance in excess of
1,500 MPa after thermal treatment” means “the steel sheet has been

subjected to additional heating and cooling and has an ultimate tensile
strength in excess of 1,500 MPa” 1
2.

“that is manufactured by a process comprising providing said hot rolled
sheet; and coating said hot rolled sheet with an aluminum coating or
aluminum alloy coating” shall be given its plain and ordinary meaning

3.

“subsequent thermal treatment” means “a thermal treatment that occurs
after the preparation of the coated steel sheet”

4.

“the steel sheet has a very high mechanical resistance in excess of 1,500
MPa after a subsequent thermal treatment” means “the steel has an ultimate
tensile strength that exceeds 1,500 MPa after a subsequent thermal
treatment” with the term “subsequent thermal treatment” given the
construction set forth above

The parties briefed the issues (see D.I. 211) and submitted an appendix containing both
intrinsic and extrinsic evidence (see D.I. 212), and Plaintiffs ArcelorMittal and ArcelorMittal
Atlantique et Lorraine (collectively, “Plaintiff” or “ArcelorMittal”) also provided a tutorial
describing the relevant technology (see D.I. 210). 2 The Court carefully reviewed all submissions
in connection with the parties’ contentions regarding the disputed claim terms, heard oral argument
and applied the following legal standards in reaching its decision:
I.

LEGAL STANDARDS
A.

Claim Construction

“[T]he ultimate question of the proper construction of the patent [is] a question of law,”
although subsidiary fact-finding is sometimes necessary. Teva Pharms. USA, Inc. v. Sandoz, Inc.,
135 S. Ct. 831, 837-38 (2015). “[T]he words of a claim are generally given their ordinary and
customary meaning [which is] the meaning that the term would have to a person of ordinary skill

1

As stated at the hearing, this construction affords the terms their plain and ordinary
meaning and clarifies that the steel sheet having the required very high mechanical
resistance in excess of 1,500 MPa need not be in the form of a delivery coil.

2

Defendant AK Steel Corp. (“Defendant” or “AK Steel” or “AK”) did not submit a tutorial.
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in the art in question at the time of the invention, i.e., as of the effective filing date of the patent
application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc) (internal
citations and quotation marks omitted). Although “the claims themselves provide substantial
guidance as to the meaning of particular claim terms,” the context of the surrounding words of the
claim also must be considered. Id. at 1314. “[T]he ordinary meaning of a claim term is its meaning
to the ordinary artisan after reading the entire patent.” Id. at 1321 (internal quotation marks
omitted).
The patent specification “is always highly relevant to the claim construction analysis . . .
[as] it is the single best guide to the meaning of a disputed term.” Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). It is also possible that “the specification may reveal a
special definition given to a claim term by the patentee that differs from the meaning it would
otherwise possess. In such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at
1316. “Even when the specification describes only a single embodiment, [however,] the claims of
the patent will not be read restrictively unless the patentee has demonstrated a clear intention to
limit the claim scope using words or expressions of manifest exclusion or restriction.” Hill-Rom
Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (internal quotation marks
omitted) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)).
In addition to the specification, a court “should also consider the patent’s prosecution
history, if it is in evidence.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir.
1995) (en banc), aff’d, 517 U.S. 370 (1996). The prosecution history, which is “intrinsic evidence,
. . . consists of the complete record of the proceedings before the PTO [Patent and Trademark
Office] and includes the prior art cited during the examination of the patent.” Phillips, 415 F.3d
at 1317. “[T]he prosecution history can often inform the meaning of the claim language by

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demonstrating how the inventor understood the invention and whether the inventor limited the
invention in the course of prosecution, making the claim scope narrower than it would otherwise
be.” Id.
In some cases, courts “will need to look beyond the patent’s intrinsic evidence and to
consult extrinsic evidence in order to understand, for example, the background science or the
meaning of a term in the relevant art during the relevant time period.” Teva, 135 S. Ct. at 841.
Extrinsic evidence “consists of all evidence external to the patent and prosecution history,
including expert and inventor testimony, dictionaries, and learned treatises.” Markman, 52 F.3d
at 980. Expert testimony can be useful “to ensure that the court’s understanding of the technical
aspects of the patent is consistent with that of a person of skill in the art, or to establish that a
particular term in the patent or the prior art has a particular meaning in the pertinent field.”
Phillips, 415 F.3d at 1318. Nonetheless, courts must not lose sight of the fact that “expert reports
and testimony [are] generated at the time of and for the purpose of litigation and thus can suffer
from bias that is not present in intrinsic evidence.” Id. Overall, although extrinsic evidence “may
be useful to the court,” it is “less reliable” than intrinsic evidence, and its consideration “is unlikely
to result in a reliable interpretation of patent claim scope unless considered in the context of the
intrinsic evidence.” Id. at 1318-19. Where the intrinsic record unambiguously describes the scope
of the patented invention, reliance on any extrinsic evidence is improper. See Pitney Bowes, Inc.
v. Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90 F.3d at 1583).
B.

Indefiniteness

“The primary purpose of the definiteness requirement is to ensure that the claims are
written in such a way that they give notice to the public of the extent of the legal protection afforded
by the patent, so that interested members of the public, e.g. competitors of the patent owner, can

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determine whether or not they infringe.” All Dental Prodx, LLC v. Advantage Dental Prods., Inc.,
309 F.3d 774, 779-80 (Fed. Cir. 2002) (citing Warner-Jenkinson Co. v. Hilton-Davis Chem. Co.,
520 U.S. 17, 28-29 (1997)). Put another way, “[a] patent holder should know what he owns, and
the public should know what he does not.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
Co., Ltd., 535 U.S. 722, 731 (2002).
A patent claim is indefinite if, “viewed in light of the specification and prosecution history,
[it fails to] inform those skilled in the art about the scope of the invention with reasonable
certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). A claim may
be indefinite if the patent does not convey with reasonable certainty how to measure a claimed
feature. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1341 (Fed. Cir. 2015). But
“[i]f such an understanding of how to measure the claimed [feature] was within the scope of
knowledge possessed by one of ordinary skill in the art, there is no requirement for the
specification to identify a particular measurement technique.” Ethicon Endo–Surgery, Inc. v.
Covidien, Inc., 796 F.3d 1312, 1319 (Fed. Cir. 2015).
Like claim construction, definiteness is a question of law, but the Court must sometimes
render factual findings based on extrinsic evidence to resolve the ultimate issue of definiteness.
See, e.g., Sonix Tech. Co. v. Publications Int’l, Ltd., 844 F.3d 1370, 1376 (Fed. Cir. 2017); see also
Teva, 135 S. Ct. at 842-43. “Any fact critical to a holding on indefiniteness . . . must be proven
by the challenger by clear and convincing evidence.” Intel Corp. v. VIA Techs., Inc., 319 F.3d
1357, 1366 (Fed. Cir. 2003); see also Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338
(Fed. Cir. 2008).

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II.

THE COURT’S RULING
The Court’s rulings regarding the disputed claim terms of the RE’940 Patent were

announced from the bench at the conclusion of the hearing as follows:
. . . At issue we have United States Reissue Patent RE44,940 titled
“Coated hot- and cold-rolled steel sheet comprising a very high
resistance after thermal treatment.” There are four terms in dispute.
I am prepared to rule on each of the disputes. I will not be issuing a
written opinion, but I will issue an order stating my rulings. I want
to emphasize before I announce my decisions that while I am not
issuing a written opinion, we have followed a full and thorough
process before making the decisions I am about to state. I have
reviewed the ’940 Patent[3] and the portions of the prosecution
history submitted as well as the tutorial submitted by ArcelorMittal.
There was full briefing on each of the disputed terms. There was an
extensive appendix and there has been argument here today. All of
that has been carefully considered.
Now as to my rulings. As an initial matter, I am not going to
read into the record my understanding of claim construction law
generally and indefiniteness. I have a legal standard section that I
have included in earlier opinions, including in my recent order in
OmegaFlex v. Ward Manufacturing, C.A. Number 18-1004. I
incorporate that law and adopt it into my ruling today and will set it
out in the order that I issue.
With respect to the person of ordinary skill in the art, AK
Steel submits that the level of ordinary skill in the art for the original
’805 patent should apply equally to the Reissue ’940 patent, and
thus, a person of skill in the art at the time of the invention of the
’940 patent would have had at least, one, a master’s degree in
metallurgy; two, five years of experience in developing, processing,
manufacturing, and evaluating steel products; and, three, experience
with the principles and methods of coating steel products.
ArcelorMittal in its briefing agreed to AK’s proposed level
of skill in the art for purposes of claim construction, and I will use
the agreed-upon definition.
First, as to the term “wherein said coated steel sheet is in the
form of a delivery coil...and the steel sheet has a very high
mechanical resistance in excess of 1,500 MPa after thermal
3

The term “the ’940 Patent” refers to the RE’940 Patent.
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treatment.” Plaintiff's proposed construction of the term includes
separate recitations. One, “wherein said coated steel sheet is in the
form of a delivery coil” means “the coated steel sheet has been
formed into a coil after being rolled during its production.” Second
part, “the steel sheet has a very high mechanical resistance in excess
of 1,500 MPa after thermal treatment,” Plaintiff proposes means
“the steel sheet has an ultimate tensile strength of 1,500 MPa or
above after a thermal treatment,” and the third part, “thermal
treatment” means “additional controlled heating and cooling (i.e.,
after rolling and coating).” And that last part is an agreed-upon
construction, as I understand it, as to what the term “thermal
treatment” means. Defendant on the other hand proposed a single
construction: “Wherein the coated steel sheet is in the form of a
delivery coil...and the steel sheet in the form of a delivery coil has
been subjected to additional heating and cooling and has an ultimate
tensile strength in excess of 1,500 MPa.”
Aside from the breaking up of the terms, the crux of the
dispute is whether the steel sheet that has the greater than 1,500 MPa
after thermal treatment has to be in the form of a delivery coil. I
agree with Plaintiff that it does not. To make this clear I will
construe the term in two parts. “Wherein said coated steel sheet is in
the form of a delivery coil” means “the coated steel sheet has been
formed into a coil after being rolled during its production.” The
second part, “the steel sheet has a very high mechanical resistance
in excess of 1,500 MPa after thermal treatment” means that “the
sheet has been subjected to additional heating and cooling and has
an ultimate tensile strength in excess of 1,500 MPa.” Essentially, I
think this gives the terms their ordinary meaning and clarifies that
the steel sheet that has the required ultimate tensile strength need not
be in the form of a delivery coil.
This construction is consistent with the intrinsic evidence.
First, the claim language. Claim 17 recites “a hot-rolled steel sheet
coated with an aluminum or aluminum alloy coating, wherein said
coated steel sheet is in the form of a delivery coil.” The claimed
coated sheet product thus has a specific structure, a delivery coil.
The claim says that “the steel sheet has a very high mechanical
resistance in excess of 1,500 MPa after thermal treatment.” While
AK Steel suggests that that clearly means that the coil must have
that mechanical resistance, the claim language, and in particular the
use of the phrase “after thermal treatment,” suggests that there is
additional processing to the coated sheet. And there is no evidence
before me that a person of ordinary skill in the art would think from
reading the intrinsic evidence that that thermal treatment to attain

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the mechanical resistance claimed must be done on steel in the form
of a delivery coil.
To the contrary, the specification contemplates both a
“delivery state,” such as a coil, and a separate state after “thermal
treatment” and shaping in which the steel attains the ultimate tensile
strength required by the claim.
The specification of the ’940 patent is directed to a steel that
is processed and, at the finish of one or more process steps, such as
hot rolling alone or in combination with cold rolling, is rolled into
the form of a “delivery coil.” This is described in the specification
where it states that the coating applied to the steel protects the steel
from corrosion “in the delivery state, during shaping and thermal
treatment as well as during usage of the finished casting.” And that’s
in the patent in the specification column 3, lines 59 to 62.
It is also described in column 2, lines 56 to 62, stating “the
mechanical characteristics in the delivery state of the sheet
according to the invention allow a great variety of shaping, in
particular a deep stamping. The thermal treatment applied at [] the
time of a hot-shaping process or alter [sic] shaping makes it possible
to obtain high mechanical characteristics which may exceed 1,500
MPa for mechanical resistance.”
AK Steel relies on the prosecution history, arguing in the
second reissue application, ArcelorMittal presented claims for steel
sheet in different forms: A claim for a steel sheet that “is in the form
of a part,” which is prosecution claim 17; a claim for steel sheet that
“is in the form of a delivery coil,” prosecution claim 27; and a claim
for steel sheet that “is in the form of delivery sheeting,” prosecution
claim 35, as well as other claims that did not specify any form the
steel sheet may be in.
AK argues, I believe, that because the “part” referenced
would be shaped after heat stamping and thus could have the high
mechanical resistance that is claimed, that suggests that the coil in
the claim claiming a coil should also have that mechanical resistance
when it is in the form of a coil. I am not, however, convinced that
the use of this term “part” in a different claim changes what I have
found to be the ordinary meaning of this term which uses delivery
coil.
I will also note that while the appeal of this case did not
specifically address claim construction, the Court’s construction
today is consistent with the Federal Circuit’s decision to remand this

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case for additional proceedings to determine whether the product
after thermal treatment such as hot stamping meets the mechanical
resistance requirement of the claims.
The second disputed term is “that is manufactured by a
process comprising providing said hot rolled sheet; and coating said
hot rolled sheet with an aluminum coating or aluminum alloy
coating” as found in unasserted claim 18. Defendant asks for the
plain meaning. Plaintiff proposed a construction in its papers, but
here today agreed that this term has its plain and ordinary meaning.
I will afford it the plain and ordinary meaning.
Defendant, however, wants me to go further and address the
validity of claim 18, asserting that it fails to further limit the subject
matter claimed by independent claim 17. I am going to decline to do
that. At Defendant’s request, I required the [P]laintiff to limit the
asserted claims in this case. It has done so, and it has chosen not to
assert claim 18. Defendant argues that Plaintiff has asserted claim
19, which depends on claim 18, and that there may be collateral
estoppel issues that arise if there are asserted differences in claim 18
vis-à-vis claim 17. Plaintiff represented that to the extent differences
in the claims are argued, it will be the terms in claim 19, not 18, that
will be at issue in any arguments. To the extent, however, that an
issue arises later that would require me to further address claim 18,
we will take that up at an appropriate time.
The third disputed term is “said subsequent thermal
treatment” in claim 26 and the fourth term is “the steel sheet has a
very high mechanical resistance in excess of 1,500 MPa after a
subsequent thermal treatment” in claim 27. Plaintiff argues that the
words “subsequent thermal treatment” in these terms means “a
thermal treatment that occurs after the preparation of a coated steel
sheet.” Defendant argues that those words in both terms are
indefinite.
I again agree with Plaintiff and construe “subsequent thermal
treatment” as used in both dispute terms to mean “a thermal
treatment that occurs after the preparation of the coated steel sheet.”
In claim 26, AK Steel asserts that the term “subsequent
thermal treatment” lacks antecedent basis. Federal Circuit precedent
makes clear that the Court has to determine whether a person
experienced in the field of an invention would understand the scope
of the claimed term lacking antecedent basis when read in the light
of the specification. That’s Energizer Holdings Inc. v. ITC, 435 F.3d
1366, 1371[] (Fed. Cir. 2006).

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Here, however, it is not clear [t]hat a person of ordinary skill
in the art would[n’t] understand [the scope of the term], particularly
given that claim 17, the claim on which claim 26 ultimately depends,
refers to “after thermal treatment” which seems to me could make
the scope of claim 26 understandable to a person of ordinary skill in
the art. Moreover[,] here, as in Energizer Holdings, the patent
examiner never rejected or objected to claim 26 for lack of
antecedent basis.
For a claim to be held invalid for indefiniteness, there must
be clear and convincing evidence. And that’s Nautilus, Inc. v. Biosig
Instruments, Inc., 572 U.S. 898, 912. At this time, the Court finds
that the Defendant has not met its burden to show that this term in
claim 26 is indefinite. However, should there still be a disagreement
regarding this claim in the future, Defendant may raise the issue
later, if appropriate, after full fact and expert discovery.
In claim 27, the antecedent basis is not the issue. Instead,
Defendant argues that indefiniteness is at issue because the patentee
introduced a new term that could mean numerous different things,
each giving a different claim scope, and thus leaving the claim scope
uncertain.
Again, however, I have only attorney argument on both sides
– without more – and I cannot conclude that this term as I have
construed it would fail to inform, with reasonable certainty, a person
of ordinary skill in the art about the scope of the invention. Thus,
again, on the record before me I find that Defendant has not met its
burden to show by clear and convincing evidence that this term in
claim 27 is indefinite. But again, to the extent appropriate,
Defendant may raise the issue later or at trial after full fact and
expert discovery.
Finally, as for the words “the steel sheet has a very high
mechanical resistance in excess of 1,500 MPa” which precede
“subsequent thermal treatment” in the fourth disputed term, Plaintiff
in essence proposes the ordinary meaning of the words used prior to
the term “subsequent thermal treatment” in the fourth disputed term.
Defendant argues that those words mean “the flat-rolled steel has
been subjected, after rolling, to additional controlled heating and
cooling and has an ultimate tensile strength in excess of 1,500 MPa.”
Defendant’s proposal adds a lot of words without really explaining
why, and thus does not seem to add anything to the plain meaning
of the words.

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Thus, I will construe the words “the steel sheet has a very
high mechanical resistance in excess of 1,500 MPa after a
subsequent thermal treatment” to mean “the steel has an ultimate
tensile strength that exceeds 1,500 MPa after a subsequent thermal
treatment” and giving “subsequent thermal treatment” the
construction that I did above.

The Honorable Maryellen Noreika
United States District Judge

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