Search Team

Search by Last Name
A
B
C
D
E
F
G
H
I
J
K
L
M
N
O
P
Q
R
S
T
U
V
W
X
Y
Z

ArcelorMittal v. AK Steel Corp.

Covenant Not to Sue, Filed with Court But Conditioned on Resolution of a Related Procedural Matter, Did Not Moot Dispute Over Validity

ArcelorMittal v. AK Steel Corp., (Fed. Cir. May 16, 2017) (Moore, Wallach (dissenting), HUGHES) (D. Del.: Robinson) (3 of 5 stars)

Fed Cir affirms summary judgment of invalidity. The district court did not err in exercising jurisdiction to invalidate two ArcelorMittal claims. This was notwithstanding that ArcelorMittal had from time to time urged that the two claims were not in the case (though others from the same patent were). There was a complicated procedural history involving reissue, substitution of claims in the complaint, and remand. The opinion describes how ArcelorMittal had made sufficient statements to indicate that the claims in question were asserted in the case, and had tacitly accepted other statements by AK Steel indicating that they understood the claims were in the case. This was sufficient to demonstrate a substantial controversy between the parties over these claims.

The district court also did not err in determining that ArcelorMittal’s conditional tender of a covenant not to sue on the two claims did not moot the matter. Mootness arises when the issues are “no longer live or the parties lack a legally cognizable interest in the outcome.” Already, 133 S. Ct. 721 (2013). ArcelorMittal’s various attempts to enter a covenant were all conditional, and so did not resolve the merits of the matter. “At no time before the court entered summary judgment did ArcelorMittal unconditionally assure Defendants and their customers that it would never assert RE’153 claims 24 and 25 against them.” Op. at 8. The opinion notes that a covenant (relied on by the dissent) filed with the district court by ArcelorMittal expressly made the covenant conditional on resolution of a procedural issue (a motion to amend a co-pending complaint), and characterizes this covenant as unable to support mootness due to its conditional nature. The opinion briefly rejects ArcelorMittal’s remaining arguments, concluding that the district court’s consideration of the two claims was consistent with a prior Fed Cir remand, and that the district court did not abuse its discretion in refusing ArcelorMittal’s request for new discovery on the commercial success of the claims at issue.

Dissent: Judge Wallach would have concluded that the covenant not to sue tendered by ArcelorMittal mooted the issue.

KEYWORDS: MOOTNESS (NO); SUBJECT MATTER JURISDICTION (YES); SUMMARY JUDGMENT; INVALIDITY (YES); COVENANT NOT TO SUE; ARCELORMITTAL; AK STEEL CORP.