Regarding ongoing parallel United States Patent and Trademark Office (“USPTO”) administrative proceedings and in-court infringement proceedings, the Federal Circuit held that if the Federal Circuit had construed a limitation for a particular patent, a reissue of that patent with an additional claim that broadens the scope cannot change the scope of the original patent. ArcelorMittal v. AK Steel, __ F.3d __ (Fed. Cir. May 12, 2015).
Patentee ArcelorMittal, involved in ongoing litigation, applied for a reissue of the patent involved. The original patent had an independent claim with a limitation requiring “a very high mechanical resistance,” which the Federal Circuit construed as “greater than 1500 MPa.” The reissue added a dependent claim that required a mechanical resistance “in excess of 1000 MPa.”
The district court held that the reissued patent was impermissibly broadening. The Federal Circuit affirmed this for claims 1-23 because the addition of claim 23 was not “new evidence” that may permit revising the interpretation of the original claim under either law-of-the-case or the mandate rule.
The law-of-the-case doctrine “posits that when a court decides upon a rule of law, that decision should continue to govern the same issues in subsequent stages in the same case.” Id. at 6. The mandate rule states “a court may only deviate from a decision in a prior appeal if ‘extraordinary circumstances’ exist.” Id.
The proper analysis for finding a broadening reissue is if the claims of the reissued patent are broader than those same claims as found in the original patent.
However, because invalidity due to impermissible broadening must be evaluated on a claim-by-claim basis, the Federal Circuit reversed the holding for claims 24 and 25 because it had the same scope as the original claim 1 and so no broadening occurred.
With multiple venues for patent enforcement and challenges, there will be more cases like ArecelorMittal that will test the metes and bounds of the law-of-the-case doctrine and the mandate rule.
