Arcelor Mittal France v. AK Steel Corp.

Justia.com Opinion Summary: ArcelorMittal’s patent covers boron steel sheet with an aluminum-based coating applied after rolling the sheet to its final thickness. The steel is used for “hot-stamping:” rapidly heating the steel, stamping it into parts of the desired shape, and rapidly cooling them. The rapid heating and cooling alters the crystalline structure of the steel, converting it to austenite and then martensite. By altering the steel’s microstructure, hot-stamping produces particularly strong steel, but there are associated problems. The aluminum-based coating claimed in the patent prevents oxidation during hot-stamping, so that scale does not form and decarburization does not occur, making hot-stamping less costly, reducing environmental impact, and allowing its use in production of delicate parts. ArcelorMittal brought an infringement action, alleging that AK Steel’s aluminum coated steel sheet products infringe the patent. After construing the terms “a hot-rolled steel sheet coated with an aluminum or aluminum alloy coating” and “the steel sheet has a very high mechanical resistance after thermal treatment,” the district court found no infringement and held that the asserted claims were obvious and anticipated. The Federal Circuit upheld the claim construction in part, reversed in part, reversed the verdict of anticipation, and stated that a new trial is required on obviousness.

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United States Court of Appeals for the Federal Circuit __________________________ ARCELORMITTAL FRANCE AND ARCELORMITTAL ATLANTIQUE ET LORRAINE, Plaintiffs-Appellants, v. AK STEEL CORPORATION, Defendant-Appellee, AND SEVERSTAL DEARBORN, INC. AND WHEELING-NISSHIN INC., Defendants-Appellees. __________________________ 2011-1638 __________________________ Appeal from the United States District Court for the District of Delaware in case no. 10-CV-0050, Judge Sue L. Robinson. __________________________ Decided: November 30, 2012 ___________________________ CONSTANTINE L. TRELA, JR., Sidley Austin LLP, of Chicago, Illinois, argued for plaintiffs-appellants. With him on the brief were DAVID T. PRITIKIN and CONSTANTINE KOUTSOUBAS. Of counsel on the brief were JEFFREY B. ARCELOR MITTAL v. AK STEEL CORP 2 BOVE and CHAD S.C. STOVER, Connolly Bove Lodge & Hutz LLP, of Wilmington, Delaware. CHRISTOPHER N. SIPES, Covington & Burling, LLP, of Washington, DC, argued for all defendants-appellees. With him on the brief were RODERICK R. MCKELVIE and JEFFREY H. LERNER for AK Steel Corporation. Of counsel on the brief were RICHARD W. HOFFMANN and DAVID J. SIMONELLI, Reising Ethington, PC, of Troy, Michigan for Severstal Dearborn, Inc, et al. __________________________ Before DYK, CLEVENGER, and WALLACH, Circuit Judges. Opinion for the court filed by Circuit Judge DYK. Opinion dissenting-in-part filed by Circuit Judge WALLACH. DYK, Circuit Judge. ArcelorMittal France and ArcelorMittal Atlantique et Lorraine (collectively âArcelorMittalâ) appeal from a final judgment of the United States District Court for the District of Delaware. The judgment is based on a jury verdict finding that defendants AK Steel Corporation, Severstal Dearborn, Inc., and Wheeling-Nisshin Inc. (âAK Steelâ) did not infringe ArcelorMittalâs U.S. Patent No. 6,296,805 (âthe â805 patentâ) and that the asserted claims were invalid as anticipated and obvious. ArcelorMittal challenges both the district courtâs claim construction and the juryâs verdict. We uphold the district courtâs claim construction in part and reverse it in part. We also reverse the juryâs verdict of anticipation. With respect to obviousness, a new trial is required because the district courtâs claim construction error prevented the jury from properly considering ArcelorMittalâs evidence of commercial suc- 3 ARCELOR MITTAL v. AK STEEL CORP cess. We therefore affirm-in-part, reverse-in-part, vacatein-part, and remand for a new trial. BACKGROUND The â805 patent covers boron steel sheet with an aluminum-based coating applied after rolling the sheet to its final thickness. The steel is used for âhot-stamping,â a process which involves rapidly heating the steel, stamping it into parts of the desired shape, and then rapidly cooling them (âquenchingâ). The rapid heating and cooling alters the crystalline structure of the steel, converting it to austenite and then martensite. By altering the steelâs microstructure in this manner, hot-stamping produces particularly strong steel. Because hot-stamped steel is so strong, parts created by hot-stamping can be thinner and lighter than steel parts produced by other processes while being just as strong. This is particularly desirable in the manufacture of automobile parts because strong parts are required for safety and light parts promote fuel efficiency. Although hot-stamping has clear benefits, its use has historically been limited because of problems associated with the process. The high temperatures required for hotstamping cause oxidation, resulting in the formation of âscaleâ on the steelâs surface. Scale must be removed before the steel can be painted or welded, but removing it requires expensive and environmentally harmful âshotblastingâ and âpicklingâ operations, in which the steel is blasted with an abrasive material and immersed in a chemical bath. Shot-blasting is also problematic because it can damage thin parts, undermining the strength and efficiency advantages of hot-stamping. Oxidation also causes the loss of carbon from the steelâs surface (âdecarburizationâ), which weakens the steel. The aluminum-based coating claimed in the â805 patent prevents oxidation from occurring during hot- ARCELOR MITTAL v. AK STEEL CORP 4 stamping. As a result, scale does not form and decarburization does not occur when the claimed steel is hotstamped. This makes hot-stamping less costly, reduces its environmental impact, and allows its use in the production of parts that are too delicate to survive shotblasting. The asserted claims of the â805 patent are claim 1 and dependent claims 2, 5, 7, and 16. Claim 1, the only asserted independent claim, reads: 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: 0.15%<carbon<0.5% 0.5%<manganese<3% 0.1%<silicon<0.5% 0.01%chromium<1% titanium<0.2% aluminum<0.1% phosphorus<0.1% sulfur<0.05% 0.0005%<boron<0.08%, the remainder being iron and impurities inherent in processing, 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. â805 patent col. 4 l. 64 to col. 5 l. 15. 5 ARCELOR MITTAL v. AK STEEL CORP On January 22, 2010, ArcelorMittal brought an infringement action against AK Steel in the United States District Court for the District of Delaware, alleging that AK Steelâs aluminum coated steel sheet products infringe the asserted claims of the â805 patent. The parties agreed upon an expedited trial schedule in which AK Steel agreed to limit itself to two invalidity defenses and to arguing non-infringement based on the construction of two claim terms. Pursuant to that schedule, on December 16, 2010, the district court issued a claim construction decision interpreting the claim terms âa hot-rolled steel sheet coated with an aluminum or aluminum alloy coatingâ and âthe steel sheet has a very high mechanical resistance after thermal treatment.â ArcelorMittal Fr. v. AK Steel Corp., 755 F. Supp. 2d 542, 545 (D. Del. 2010). The court first construed the term âhot-rolled steel sheet.â Id. at 546â49. The court noted that those of ordinary skill in the art distinguished between âhot-rolledâ and âcold-rolledâ steel sheet based on which process is used to reduce the sheet to its final thickness. Id. at 547. Relying on evidence of this industry convention, the court concluded that ArcelorMittal âdid not claim a âsheetââ generally but rather âspecifically claimed a sheet made by hot-rolling.â Id. at 548. Consequently, the court assigned âhot-rolled steel sheetâ the meaning âa steel sheet that has been reduced to its final thickness by hot-rolling.â Id. at 549. This construction excluded steel that was first hot-rolled and then cold-rolled to its final thickness. The court next examined the term âthe steel sheet has a very high mechanical resistance.â Id. The court noted that there is no applicable industry standard defining âvery highâ mechanical resistance. Id. at 550. The court relied on the statements in the specification that âhighâ and âsubstantialâ mechanical resistance âmay exceed 1500 ARCELOR MITTAL v. AK STEEL CORP 6 MPa.â Id. at 550â51. Accordingly, the court construed âthe steel sheet has a very high mechanical resistanceâ to mean that âthe flat-rolled steel has been subjected, after rolling, to additional controlled heating and cooling and has an ultimate tensile strength of 1500 MPa or greater.â Id. at 550. None of AK Steelâs accused products literally infringed the claims as construed, so the district court prohibited ArcelorMittal from asserting literal infringement. Memorandum Order, ArcelorMittal Fr. v. AK Steel Corp., No. 10-CV-00050 (D. Del. Jan. 4, 2011), ECF No. 205. The case proceeded to trial on the basis of the doctrine of equivalents, and the jury returned a verdict on January 14, 2011, finding that AK Steel did not infringe the â805 patent and that the asserted claims were both obvious and anticipated. ArcelorMittal then moved for judgment as a matter of law on the invalidity issues and for a new trial on infringement. The district court denied those motions and entered final judgment for AK Steel on August 25, 2011. ArcelorMittal Fr. v. AK Steel Corp., 811 F. Supp. 2d 960 (D. Del. 2011). ArcelorMittal timely appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(1). DISCUSSION This court âreview[s] a district courtâs denial of . . . judgment as a matter of law without deference, and its denial of a motion for [a] new trial for abuse of discretion.â CytoLogix Corp. v. Ventana Med. Sys., Inc., 424 F.3d 1168, 1172 (Fed. Cir. 2005). We review de novo the district courtâs claim construction. Markman v. Westview Instruments, 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), affâd 517 U.S. 370 (1996). 7 ARCELOR MITTAL v. AK STEEL CORP I Claim Construction A. âHot-rolled steel sheetâ All claim construction issues concern claim 1, the only asserted independent claim in the patent. ArcelorMittal first argues that the district court erroneously construed the term âhot-rolled steel sheet,â improperly excluding from the scope of the claim steel sheet that has been coldrolled to its final thickness following initial hot-rolling. AK Steel replies that the district court properly interpreted the term in accordance with its ordinary and customary meaning in the art. We agree with ArcelorMittal. By its use of the term âcomprising,â claim 1 expressly contemplates additional, unstated steps such as coldrolling. âThe transition âcomprisingâ creates a presumption . . . that the claim does not exclude additional, unrecited elements.â Crystal Semiconductor Corp. v. TriTech Microelectronics Intâl, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001). To rebut this presumption, AK Steel offers only the conclusory assertion that â[t]he very definition of âhotrolled steel sheetâ is steel sheet that has been reduced to its final thickness by hot-rolling.â Appelleeâs Br. 36â37. It is true that there is ample extrinsic evidence establishing that the ordinary meaning of âhot-rolled steel sheetâ in the industry refers to steel sheet that has not been cold-rolled. Expert witnesses for both ArcelorMittal and AK Steel agreed that this definition was customary in the industry. Furthermore, a leading steel-making treatise classified steel sheet according to this industry usage. However, while AK Steel is correct that the ordinary meaning of the term in the industry is clear, the specification is not consistent with that meaning. In Phillips v. AWH Corp., we emphasized that the specification is the primary guide to claim interpretation, recognizing that ARCELOR MITTAL v. AK STEEL CORP 8 âthe specification is âthe single best guide to the meaning of a disputed term.ââ 415 F.3d 1303, 1320â21 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Although definitions based on dictionaries, treatises, industry practice, and the like often are important aids in interpreting claims, they may not be âused to contradict claim meaning that is unambiguous in light of the intrinsic evidence.â Id. at 1324. Here, the specification makes clear that the claim term âhot-rolled steel sheetâ does not preclude a cold-rolling step. References to an optional cold-rolling step abound in the specification of the â805 patent. â805 patent col. 1 ll. 47â48, col. 2 ll. 30â31, 37â40, col. 3 ll. 7â9. AK Steel argues that these references describe âdistinct productsâ and that the specification elsewhere uses the word âsheetâ where it means to refer to both steel that has been hotrolled to its final thickness and steel that was also coldrolled. Appelleeâs Br. 29. The district court based its claim construction on similar reasoning. See ArcelorMittal, 755 F. Supp. 2d at 546â47. However, that is not a coherent reading of the specification for at least two reasons. First, the specification contemplates that â[t]he sheet according to the invention . . . may be cold-rerolled again depending on the final thickness desired.â â805 patent col. 2 ll. 37â40. It also describes the inventionâs purpose as including the production of âcold-rolled steel sheet.â Id. at col. 1 ll. 37â38. This directly contradicts the district courtâs claim construction, under which the sheet must be reduced to its final thickness by hot-rolling. The claims and specification should be read ââin a manner that renders the patent internally consistent.ââ Pfizer, Inc. v. Teva Pharm. USA, Inc., 429 F.3d 1364, 1373 (Fed. Cir. 2005) 9 ARCELOR MITTAL v. AK STEEL CORP (quoting Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1379â80 (Fed. Cir. 2001)). Second, the specification describes an embodiment âhaving a thickness of approximately 1 mm.â â805 patent col. 4 ll. 8â9. That thickness, at least at the time of the invention, could only have been achieved by cold-rolling. Indeed, the specification states that â[a]ccording to the inventionâ the sheetâs thickness may be as low as 0.25 mm, â805 patent col. 3 ll. 44â46, a thickness that even AK Steel concedes is achievable only by cold-rolling. To be sure, patent protection does not extend to subject matter disclosed but not claimed. Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1562â63 (Fed. Cir. 1991). However, â[w]e normally do not interpret claim terms in a way that excludes disclosed examples in the specification.â Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007). Because the specification unambiguously contemplates cold-rolling, the district court erred by interpreting the claim term âhot-rolled steel sheetâ to exclude steel sheet subsequently cold-rolled.1 The correct construction of âhot-rolled steel sheetâ is âa steel sheet that has been hot-rolled during its production.â This conclusion is not contradicted by the prosecution history. Although ArcelorMittal amended claim 1 to remove the explicit reference to optional cold-rolling, the initial rejection of the claim was because it was ambiguous whether the coating was optional, and the substitution of the âcomprisingâ language made clear that optional additional steps were still contemplated. Nothing in the prosecution history amounted to a disclaimer of coldrolling. 1 ARCELOR MITTAL v. AK STEEL CORP 10 B. âVery high mechanical resistanceâ ArcelorMittal also disputes the district courtâs interpretation of the claim term âvery high mechanical resistance.â The district court interpreted that term to mean âthe flat-rolled steel has been subjected, after rolling, to additional controlled heating and cooling and has an ultimate tensile strength of 1500 MPa or greater.â ArcelorMittal, 755 F. Supp. 2d at 549â50. We agree with the district court. We begin with the specification, which states that a âhighâ or âsubstantialâ mechanical resistance âmay exceed 1500 MPa.â â805 patent col. 2 ll. 51â54, col. 3 ll. 52â54. The specification does not define âvery highâ mechanical resistance, but it implies that the 1500 MPa level is necessary for âhighâ mechanical resistance. If 1500 MPa is high mechanical resistance, then very high resistance must be at least 1500 MPa. ArcelorMittal argues that âvery highâ mechanical resistance can include a resistance as low as 1000 MPa, pointing to language in the specification stating that the invention âmakes it possible to obtain a mechanical resistance in excess of 1000 MPa.â Id. at col. 1 ll. 40â42. However, the specification does not refer to 1000 MPa as âhighâ much less âvery high.â Id. Thus, the specification supports the district courtâs construction. Turning to the extrinsic evidence, the district court observed that the term âvery high mechanical resistanceâ is not a term of art in the steelmaking industry and does not have any ordinary meaning. ArcelorMittal, 755 F. Supp. 2d at 550. ArcelorMittal points to various documents suggesting that steel with mechanical resistance as low as 700 MPa may be considered âultra highâ strength steel, but the record does not establish that these references concern boron steel comparable to that described in the patent. On the other hand, one of the inventors of the â805 patent coauthored an article on heat-treated boron 11 ARCELOR MITTAL v. AK STEEL CORP steel before the patent was filed. This article is prior art. The article describes steel with âhigh mechanical characteristics (UTS > 1500 MPa and YS > 1100 MPa)â after heat treatment. X. Bano & JP. Laurent, Heat Treated Boron Steels in the Automotive Industry, in XXXV 39th MWSP Conf. Proc. ISS 673, 673, 677 (1998) (âBanoâ). Prior art can âhelp to demonstrate how a disputed term is used by those skilled in the art.â Vitronics Corp., 90 F.3d at 1584. Thus, while testimony regarding an inventorâs subjective understanding of patent terminology is irrelevant to claim construction, Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1346â47 (Fed. Cir. 2008), when an inventorâs understanding of a claim term is expressed in the prior art, it can be evidence of how those skilled in the art would have understood that term at the time of the invention. Markman, 52 F.3d at 991 (â[E]vidence, in the form of prior art documentary evidence or expert testimony, can show what the claims would mean to those skilled in the artâ); Howmedica, 540 F.3d at 1347 & n.5. By defining âhighâ mechanical resistance as greater than 1500 MPa, the prior art here suggests that âvery highâ mechanical resistance would be understood to be at least that high. Accordingly, both the intrinsic evidence and extrinsic evidence support the district courtâs conclusion that âa very high mechanical resistanceâ means a mechanical resistance of 1500 MPa or greater. Therefore, we affirm the district courtâs construction of âthe steel sheet has a very high mechanical resistance.â At oral argument, AK Steelâs counsel conceded that at least some accused products have a mechanical resistance of 1500 MPa or greater. However, as a result of the district courtâs incorrect claim construction of âhot-rolled steel sheet,â the jury was instructed at trial to consider direct infringement only under the doctrine of equiva- ARCELOR MITTAL v. AK STEEL CORP 12 lents. Final Jury Instructions, ArcelorMittal Fr. v. AK Steel Corp., No. 10-CV-00050, at 22 (D. Del. Jan. 14, 2011), ECF No. 212. Thus, there has been no determination below regarding which accused products would or would not literally infringe under the correct claim construction. That infringement issue will need to be addressed in the first instance on remand, either by the court on summary judgment or by a jury in a new trial. Because the jury found no infringement under the doctrine of equivalents, and ArcelorMittal has not challenged that aspect of the verdict, any infringement analysis found to be necessary on remand should be limited to literal infringement. II Anticipation ArcelorMittal argues that the evidence cannot support the juryâs anticipation verdict. âAnticipation is a question of fact, reviewed for substantial evidence when tried to a jury.â Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008). The juryâs finding of anticipation was based on Bano. The Bano article was written and presented by inventor Jean-Pierre Laurent and his colleague Xavier Bano during the development of the precoated steel claimed in the â805 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. A claim is anticipated only where âeach and every limitation is found either expressly or inherently in a single prior art reference.â Celeritas Techs., Ltd. v. Rock- 13 ARCELOR MITTAL v. AK STEEL CORP well Intâl Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998). Anticipation must be proven by clear and convincing evidence. Microsoft Corp. v. i4i Ltd. Pâship, 131 S. Ct. 2238 (2011). Bano does not expressly disclose either precoating or particular coating compositions. However, it does state that âit is advisable to protect heat treated finished parts with coatingsâ and that â[i]t is possible to coat this new heat treated boron steel after degreasing as with conventional steels.â Bano at 676. As discussed in the next section, these statements could have supported a jury finding that Bano disclosed pre-coating. However, the juryâs 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 âaluminum was a member of a very small class of metals suitable for use in coating boron steel,â and therefore inherent in Bano. ArcelorMittal, 811 F. Supp. 2d at 967â68. Petering establishes that when a prior art reference discloses a âdefinite and limited classâ of suitable members within a general formula, it may be read to disclose each member of that class. Petering, 301 F.2d at 681. Yet Bano does not even explicitly refer to coating with metals; indeed, the only specific coating it references is âphosphatization . . . followed by cataphoresis.â Bano at 676. That process refers to coating with paint, not metal, and it is not clear how paint and metal coatings would both fit into any general formula comparable to that found in the prior art in Petering. Moreover, even if paint and metal were part of the same general formula, the record does not support a finding that there is a âdefinite and limited classâ of coatings for steel sheet. There is insufficient evidence that the varieties of paints and metal alloys are sufficiently narrow that one of ordinary skill in the art would âat once envisage each member of ARCELOR MITTAL v. AK STEEL CORP 14 this limited class.â Petering, 301 F.2d at 681 (emphasis added). 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 courtâs denial of JMOL as to anticipation. III Obviousness ArcelorMittal also urges us to overturn the juryâs obviousness verdict, arguing both that the juryâs verdict was not supported by substantial evidence and that the jury was foreclosed from consideration of the secondary factor of commercial success by the district courtâs incorrect claim construction. âWe review [the] juryâs conclusions on obviousness, a question of law, without deference, and the underlying findings of fact . . . for substantial evidence.â Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1332 (Fed. Cir. 2009) (alterations in original) (internal quotations omitted). A. Prima Facie Case ArcelorMittal concedes that âeach element of the inventionâ was known in the prior art. Appellantâs Br. 3. The jury found the asserted claims of the â805 patent obvious in view of Bano in combination with French Patent No. 1,297,906 (âFrench â906 patentâ). The French â906 patent describes coating steel with aluminum to protect against oxidation during hot forging (the missing element in the anticipation finding). We agree that Bano 15 ARCELOR MITTAL v. AK STEEL CORP together with the French â906 patent supported a jury finding of a prima facie case of obviousness.2 The aluminum-based coating described in the â805 patent is applied to the steel sheet prior to hot-stamping in order to prevent oxidation. Regarding that pre-coating requirement, AK Steel argues that Bano in discussing coating distinguishes between âheat treated finished partsâ and âboron steel,â and that the reference to coating the latter inherently discloses coating before hotstamping. Appelleeâs Br. 44â45. Further, AK Steel argues that the reference to coating after degreasing makes clear that the coating is applied before hotstamping. ArcelorMittal counters that the âdegreasingâ language could refer to the removal of oil applied after hot-stamping and that the articleâs discussion of decarburization problems is inconsistent with pre-coating.3 What a prior art reference discloses is a factual question. Tegal Corp. v. Tokyo Electron Am., Inc., 257 F.3d 1331, 1345â46 (Fed. Cir. 2001). We think the resolution of this factual dispute was up to the jury, and that the jury could Because the correct claim construction broadens the scope of the claims, it does not undermine the prima facie case of obviousness found by the jury. 3 The Bano reference contains graphs that show decarburization which would not occur if the steel was coated in accordance with claim 1 of the â805 patent. However, there is no evidence that other coatings not covered in claim 1 would have prevented decarburization. Moreover, Bano only states that â[i]t is possible to coat this new heat treated boron steel.â Bano at 676. This language suggests that coating is only an optional step, and there is no reason to assume that the steel would have necessarily been coated for the purposes of measuring decarburization during thermal treatment. Thus, the graph is of limited use in evaluating whether or not Bano disclosed pre-coating. 2 ARCELOR MITTAL v. AK STEEL CORP 16 properly conclude that Bano teaches applying the coating before thermal treatment. As for coating with aluminum, the French â906 patent disclosed coating steel with aluminum during hot forging4 to protect against the same oxidation and decarburization problems that the â805 patent was intended to address. AK Steel thus urges that the invention described in the â805 patent is no more than the application of known solutions to equivalent problems in an analogous context. The thrust of ArcelorMittalâs objection to this reasoning is that the hot forging described in the French â906 patent is so different from hot-stamping that there would be no motivation to combine. ArcelorMittal points to several differences between the hot forging process described in the French â906 patent and hot-stamping and cites evidence that those skilled in the art did not think that an aluminum coating would survive hot-stamping. ArcelorMittalâs implication appears to be that hot-stamping and hot forging are not analogous art. For its part, AK Steel points to the similarity of the problems confronted by the two patents and evidence that aluminum coatings were known to survive thermal treatment and quenching. Whether a particular technology is analogous art is a question of fact. Wyers v. Master Lock Co., 616 F.3d 1231, 1237â38 (Fed. Cir. 2010). As with the evidence about whether a skilled artisan would read Bano to disclose precoating, we think this factual dispute was for the jury to resolve. We also conclude that substantial evidence supports the juryâs determination that there was a sufficient motivation to combine. AK Steel provided significant expert testimony that a person of ordinary skill in the art would have had the knowledge to combine the Hot forging does not involve the rapid heating and cooling of hot-stamping and does not change the steelâs microstructure. 4 17 ARCELOR MITTAL v. AK STEEL CORP aluminum coating disclosed by the French 906 patent with the pre-coating that the jury found Bano disclosed and would have expected to succeed. In short, the jury properly concluded that AK Steel had established a prima facie case of obviousness.5 The district court properly denied ArcelorMittalâs JMOL motion of non-obviousness. B. Secondary Considerations The final issue is whether the district courtâs erroneous claim construction of âhot-rolled steel sheetâ requires a new trial on obviousness. ArcelorMittal argues that a new trial is necessary because under the district courtâs claim construction the jury could not consider the commercial success6 of their cold-rolled commercial product. Although ArcelorMittalâs commercial success evidence was before the jury, the district court instructed the jury only to consider â[c]ommercial success or lack of commercial success of products covered by the asserted claims.â Final Jury Instructions, ArcelorMittal Fr. v. AK Steel Corp., No. 10-CV-00050, at 37 (D. Del. Jan. 14, 2011) (emphasis added). The jury was also instructed that only steel sheet hot-rolled to its final thickness was covered by the asserted claims. Id. at 20. Thus, the jury was proscribed from considering the commercial success of ArcelorMittalâs cold-rolled steel sheet. A district courtâs incorrect claim construction may require a new trial, Ecolab Inc. v. Paraclipse, Inc., 285 F.3d 1362, 1374â76 (Fed. Cir. 2002), but only where the party We conclude that AcelorMittalâs assertion that claim 7 would not have been obvious even if claim 1 would have been obvious was waived. Claim 7 must stand or fall with claim 1. 6 ArcelorMittal makes passing reference to other secondary considerations such as copying and unexpected results, but ArcelorMittal has not briefed those issues sufficiently to preserve them. 5 ARCELOR MITTAL v. AK STEEL CORP 18 seeking a new trial shows that they were prejudiced by the error. Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1307 (Fed. Cir. 2007). AK Steel argues that it is not necessary to consider the commercial success of the cold-rolled product because of the well-established principle that claims which read on obvious subject matter are unpatentable even if they also read on nonobvious subject matter. Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1328 n.4 (Fed. Cir. 2008) (noting the âlong-established rule that â[c]laims which are broad enough to read on obvious subject matter are unpatentable even though they also read on nonobvious subject matter.ââ (quoting In re Lintner, 458 F.2d 1013, 1015 (C.C.P.A. 1972))). AK Steel urges that even if the claims included both hot-rolled steel (which was not cold-rolled) and cold-rolled steel, the juryâs verdict that the hot-rolled steel embodiment was obvious rendered the whole claim obvious whether or not the cold-rolled embodiment is nonobvious in view of its commercial success. However, this is not a situation in which the claims themselves describe distinct alternative embodiments of the invention, and where the obviousness of one embodiment would invalidate the entire claim. Rather, it is a situation in which the claim is limited to steel that is hotrolled, but contains âcomprisingâ language permitting the performance of an additional (cold-rolling) step. In such circumstances our cases make clear that the commercial success of the embodiment with additional unclaimed features is to be considered when evaluating the obviousness of the claim, provided that embodimentâs success has a sufficient nexus to the claimed and novel features of the invention. In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011); In re Glatt Air Techniques, Inc., 630 F.3d 1026, 1030 (Fed. Cir. 2011); Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1570 19 ARCELOR MITTAL v. AK STEEL CORP (Fed. Cir. 1996) (â[A] patentee need not show that all possible embodiments within the claims were successfully commercialized in order to rely on the success in the marketplace of the embodiment that was commercialized.â) Thus, in Kao, we required consideration of a patent applicantâs commercially successful controlled release painkiller even though the success was not proven across the full range of claimed dissolution rates. 639 F.3d at 1069. However, we emphasized that the required consideration of commercial success includes a threshold determination of whether the commercial success has the necessary nexus with the claimed invention. Id. at 1068â 69; see also Wyers, 616 F.3d at 1246. The same rules apply here. The commercial success of ArcelorMittalâs cold-rolled embodiment must be considered to the extent that its success results from the claimed combination of elements that constitutes the invention, rather than from cold-rolling, which was not claimed and already known in the prior art, or from other unclaimed features. In other words, whether there is a nexus here depends upon a comparison between cold-rolled steel produced by the patented process and cold-rolled steel produced by alternative processes to see if the former achieved material commercial success over and above the latter. Absent a demonstrated nexus, ArcelorMittalâs commercial success evidence is not significant. See Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006) (â[I]f the feature that creates the commercial success was known in the prior art, the success is not pertinent.â). The remaining issue is whether a new trial on obviousness is required to address the issue of commercial success. We think this is not a case in which the prima facie case so strong that, as a matter of law, it would overcome ArcelorMittalâs commercial success evidence. ARCELOR MITTAL v. AK STEEL CORP 20 See, e.g., Wyers, 616 F.3d at 1245. Therefore, we conclude that the district courtâs claim construction prejudiced ArcelorMittal with respect to obviousness. Accordingly, we vacate the juryâs obviousness verdict and remand for a new trial addressing only the commercial success aspect of obviousness and infringement under the correct claim construction. IV Conclusion On remand, the district court must address whether, under the correct claim construction, the asserted claims of the â805 patent are obvious in light of any evidence of commercial success of hot-rolled steel that is also coldrolled and that has the required nexus with ArcelorMittalâs 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. AFFIRMED-IN-PART, REVERSED-IN-PART, VACATED-IN-PART, REMANDED COSTS Costs to neither party. United States Court of Appeals for the Federal Circuit __________________________ ARCELORMITTAL FRANCE AND ARCELORMITTAL ATLANTIQUE ET LORRAINE, Plaintiffs-Appellants, v. AK STEEL CORPORATION, Defendant-Appellee, AND SEVERSTAL DEARBORN, INC. AND WHEELING-NISSHIN INC., Defendants-Appellees. __________________________ 2011-1638 __________________________ Appeal from the United States District Court for the District of Delaware in case no. 10-CV-0050, Judge Sue L. Robinson. __________________________ WALLACH, Circuit Judge, dissenting-in-part. I do not agree that âvery high mechanical resistanceâ means a mechanical resistance of 1500 MPa or greater. Rather, because I conclude that intrinsic evidence supports a reading of this term to mean a mechanical resistance in excess of 1000 MPa, I respectfully dissent. ARCELOR MITTAL v. AK STEEL CORP 2 The disputed term âvery high mechanical resistanceâ is not defined expressly in the specification. âMechanical resistanceâ and âresistance,â however, are discussed in multiple passages. Their references throughout the specification are instructive, and they necessarily conflict with the majorityâs construction for the following reasons. The majorityâs focus on âvery high,â âhigh,â and âsubstantialâ is unwarranted because these terms, and other similar laudatory terms, are used interchangeably in the â805 patent. See Bid for Position, LLC v. AOL, LLC, 601 F.3d 1311, 1317-18 (Fed. Cir. 2010) (holding âbidâ and âvalue of the bidâ to have the same meaning because the claim language and specification used the terms interchangeably). For example, the patent is entitled, âCoated Hot- and Cold-Rolled Steel Sheet Comprising a Very High Resistance After Thermal Treatment.â â805 patent col. 1 ll. 1-4 (emphasis added). The âsubject of the inventionâ is then described as a steel composition that ensures a âvery high mechanical resistance after thermal treatmentâ and a âhigh resistance to corrosion.â Id. col. 1 ll. 47, 61-63 (emphases added). Also, the âpurpose of the inventionâ is purported as producing a coated steel sheet with a mechanical resistance in excess of 1000 MPa after thermal treatment, which is described as âsubstantial resistance to shocks, fatigue, abrasion and wearâ and a âgood resistance to corrosion.â Id. col. 1 ll. 37-43 (emphases added). In another instance, the patent states that the âdescription which follows will make the invention clearly understood . . . .â and recites a steel sheet that exhibits âa high mechanical resistance after thermal treatment and a high resistance to corrosion . . . .â Id. col. 2 ll. 34-35, 43-44 (emphasis added). Other passages in the specification further exemplify the interchangeability of these terms. For instance, the patent reads in one paragraph that â[t]he thermal treat- 3 ARCELOR MITTAL v. AK STEEL CORP ment applied . . . makes it possible to obtain high mechanical characteristics which may exceed 1500 MPaâ and in the very next paragraph, describes a âsubstantial resistance to abrasion, wear, fatigue, shock, as well as a good resistance to corrosion . . . .â Id. col. 2 ll. 49-52, 59-60 (emphases added). Likewise, the claimed steel sheet is disclosed as having a âsubstantial resistance to corrosion in the delivery state, during shaping and thermal treatments as well as during usage of the finished casting,â and after thermal treatment, is described as having âa substantial mechanical resistance, which may exceed 1500 MPa . . . .â Id. col. 3 ll. 49-53 (emphases added). Finally, the specification explains that modulation of certain elements in the composition of the steel including âcarbon makes it possible to achieve high mechanical characteristics . . . .â Id. col. 4 ll. 20-21 (emphasis added). The patenteeâs use of âvery high,â âhigh,â and âsubstantialâ shows that these terms are used interchangeably. It does not appear the patentee made technical distinctions as to varying resistance levels with the use of these terms. On the contrary, the patentee used these terms interchangeably and in a laudatory fashion without any limiting purposes. See Minton v. Natâl Assân of Sec. Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) (declining to construe âtraded efficiently,â in part, because âefficientlyâ on its face does not inform the mechanics of how the trade is executed and concluding that it is a laudatory term characterizing the result of the executing step); see also Allen Engâg Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346-47 (Fed. Cir. 2002) (declining to hold that the âfast steeringâ language in the preamble was limiting because it was laudatory, merely setting forth the intended purpose of the claimed combination). As such, the interchangeable use of these laudatory terms does not shed light on the disputed claimâs proper scope. ARCELOR MITTAL v. AK STEEL CORP 4 I would instead focus on the touted increase in mechanical resistance the â805 patent purports to achieve over prior artânamely, the obtention of mechanical resistance âin excess of 1000 MPa.â Id. col. 1 ll. 41-42. In particular, âvery high,â âhigh,â and âsubstantialâ were used to promote the inventionâs improved levels of resistance without the âdetriment of shaping propertiesââa problem in the prior art. Id. col. 1 ll. 10-11. The majorityâs construction of requiring a mechanical resistance of âat least 1500 MPaâ unduly contracts the wide breadth of the invention the patentee discloses. Without clear language providing otherwise, 1500 MPa cannot be set as the floor of a range of mechanical resistance levels recited in the patent, principally because âexcess of 1000 MPaâ is stated as within the range of resistance levels that satisfy the purpose of the invention. See Apple Comp., Inc. v. Articulate Sys., Inc., 234 F.3d 14, 25 (Fed. Cir. 2000) (â[T]he claim must be interpreted in light of the teachings of the written description and purpose of the invention described therein.â). Additionally, other values of resistance levels, including 1500 MPa, are recited in permissive form, and therefore, are less than instructive in determining the scope of âvery high mechanical resistance.â â805 patent col. 2 ll. 51-53 (âmay exceed 1500 MPa for mechanical resistance . . . .â) (emphasis added); id. col. 4 ll. 52-61 (Table 2 illustrating ranges with examples of âmaximal resistance of the steel sheet according to the invention after thermal treatment,â ranging from 1665 to 1695 MPa). The majority nevertheless takes a different approach. It implies that the use of the terms, âhighâ or âsubstantial,â correspond only to a mechanical resistance that âmay exceed 1500 MPa.â Based on this reading, the majority determines that âif 1500 MPa is high mechanical 5 ARCELOR MITTAL v. AK STEEL CORP resistance, then very high resistance must be at least 1500 MPa.â Majority Op. 10. As discussed above, however, the specification shows that âhigh,â âsubstantial,â and other similar terms are used to describe varying levels of mechanical resistance. Specifically, in addition to references to âmay exceed 1500 MPaâ as âhighâ or âsubstantialâ resistance, the patent recites âexcess of 1000 MPaâ as âsubstantialâ resistance. Compare â805 patent col. 3 ll. 52-53 (â[A] substantial mechanical resistance, which may exceed 1500 MPa . . . .â) (emphasis added), with id. col. 1 ll. 40-43 (â[M]akes it possible to obtain a mechanical resistance in excess of 1000 MPa, a substantial resistance to shocks, fatigue, abrasion and wear . . . .â) (emphasis added). The specification thus describes both 1500 MPa and 1000 MPa as âsubstantial.â âHighâ or âsubstantialâ interchangeably describe in similar context the mechanical resistance level of 1500 MPa, giving âhighâ and âsubstantialâ similar meaning. Hence, âhighâ or âsubstantialâ likewise may describe interchangeably the mechanical resistance level of âexcess of 1000 MPa.â Applying the majorityâs logic, if 1000 MPa characterizes both âsubstantialâ and âhighâ mechanical resistance, then âvery highâ resistance must be in excess of 1000 MPa. Accordingly, âvery high mechanical resistanceâ should be construed as a mechanical resistance in excess of 1000 MPa. I find the specification sufficiently instructive, and therefore, no need to turn to extrinsic evidence.