Ak Steel Corp. v. Sollac and Ugine

• Decision Date: 23 September 2003
• Docket Number: No. 03-1074.,No. 03-1085.,No. 03-1075.,No. 03-1086.,03-1074.,03-1075.,03-1085.,03-1086.
• Citation: 344 F.3d 1234
• Parties: AK STEEL CORPORATION, Plaintiff-Appellant, v. SOLLAC and UGINE, Defendants-Cross Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

344 F.3d 1234

AK STEEL CORPORATION, Plaintiff-Appellant, v. SOLLAC and UGINE, Defendants-Cross Appellants.

No. 03-1074.

No. 03-1075.

No. 03-1085.

No. 03-1086.

United States Court of Appeals, Federal Circuit.

September 23, 2003.

COPYRIGHT MATERIAL OMITTED

David E. Schmit, Frost Brown Todd LLC, of Cincinnati, Ohio, argued for plaintiff-appellant. With him on the brief was Ann G. Robinson.

Steven P. Weihrouch, Oblon, Spivak, McCelland, Maier, & Neustadt, P.C., of Alexandria, Virginia, argued for defendants-cross appellants. With him on the brief were Steven E. Lipman, Jean-Paul Lavalleye, Stephen G. Baxter, Michael E. McCabe, Jr., and Clayton W. Thompson, II.

Before LOURIE, CLEVENGER, and RADER, Circuit Judges.

Opinion for the court filed by Circuit Judge LOURIE. Concurring opinion filed by Circuit Judge RADER.

LOURIE, Circuit Judge.

AK Steel Corporation appeals from the decision of the United States District Court for the Southern District of Ohio granting summary judgment that its U.S. Patent 4,800,135 was not infringed by Sollac and Ugine (collectively, "Sollac") and that certain claims of its U.S. Patent 5,066,549 are invalid. AK Steel Corp. v. Sollac, 234 F.Supp.2d 711 (S.D.Ohio 2002). Because the court properly construed the patent claims and correctly found no genuine issues of material fact, we affirm.

BACKGROUND

AK Steel owns the '135 and '549 patents, which are directed to hot-dip aluminum-coated stainless steel. The '549 patent issued from an application that was a continuation of the application from which the '135 patent issued. As such, the two patents have different claims but share a common specification. That specification explains that aluminum-coated stainless steel has desirable resistance to corrosion and high-temperature oxidation. '135 patent, col. 1, ll. 14-23. Those properties make such steel useful in the manufacture of components for use in automotive exhaust systems and combustion equipment. Id. Hot-dip aluminum-coated steel is produced by passing heated steel strips through molten aluminum; however, it is challenging to get the aluminum to adhere or "wet" well onto the steel. Id. at col. 2, ll. 21-25. Wetting problems can result in crazing or flaking of the aluminum coating during subsequent bending of the strip. Id. at col. 2, ll. 26-27. The inventors of the patents in suit solved the wetting problem by maintaining the steel strip in a hydrogen atmosphere prior to entry into the aluminum coating bath. Id. at col. 2, ll. 44-50.

The inventors also discovered that their invention did not work well unless the aluminum is substantially pure, as they stated in their patent application:

Most hot dip aluminum coatings contain about 10% by weight silicon. This coating metal is generally defined in the industry as Type 1. We have discovered this type aluminum coating metal does not wet well with ferritic chromium alloy steel, even when using the hydrogen protective atmosphere. While not being bound by theory, it is believed silicon exceeding 0.5% by weight decreases the reactivity of the aluminum coating metal needed to react with a ferritic chromium alloy steel substrate. Accordingly, silicon contents in the coating metal should not exceed about 0.5% by weight.

Commercially pure hot dip aluminum coatings, otherwise known as Type 2 in the industry, are preferred for our invention. By "pure" aluminum is meant those aluminum coating metals where addition of substantial amounts of alloying elements, such as silicon, are precluded.

Id. at col. 5, ll. 23-40 (emphases added).

The '135 patent, the first of the two patents chronologically, contains one independent claim, which reads as follows:

1. A ferrous base ferritic strip continuously hot dip coated with a coating metal; comprising: the strip including at least about 6% by weight chromium, the coating metal consisting essentially of aluminum, the coating layer on said strip being substantially free of uncoated areas and formed without a thick brittle Fe-Al alloy inner layer,

said coating layer being tightly adherent to said strip and resistant to crazing or flaking during bending.

Id. at col. 6, l. 62 to col. 7, l. 2 (emphasis added). The pertinent limitation of that claim, as emphasized above, is that the coating "consist[ ] essentially of aluminum."

The application from which the '549 patent issued was filed as a continuation of the application from which the '135 patent issued. In that continuation application, the inventors sought and obtained broader claims. Rather than require that the coating metal consist essentially of aluminum, the independent claims of the '549 patent require that the coating metal include "aluminum or aluminum alloys" or simply have enhanced wetting characteristics. '549 patent, col. 7, ll. 1-7; col. 8, ll. 5-9. Of the eight claims in the '549 patent, only the odd-numbered ones are at issue in this appeal; they read as follows:

1. A ferrous base ferritic strip continuously hot dip coated with a coating metal, comprising:

the strip including at least about 6% by weight chromium,

the coating metal including aluminum or aluminum alloys,

the coating layer on the strip being substantially free of uncoated areas and formed without a thick brittle Fe-Al alloy inner layer,

the coating layer being tightly adherent to the strip and resistant to crazing or flaking during bending.

3. The strip of claim 1 wherein the aluminum coating metal contains up to about 10% by weight silicon.

5. A ferritic steel strip continuously hot dip coated with an aluminum coating metal, comprising:

the strip being stainless steel including at least about 10% by weight chromium,

the coating layer on the strip being substantially free of uncoated areas and formed without a thick brittle Fe-Al alloy inner layer,

the coating layer being tightly adherent to the strip and resistant to crazing or flaking during bending.

7. The strip of claim 5 wherein the aluminum coating metal contains up to about 10% by weight silicon.

Id. at col. 6, l. 65 to col. 7, l. 7; col. 8, ll. 1-9, 12-13 (emphases added).

The independent claims 1 and 5 were allowed by the Patent and Trademark Office ("PTO") without amendment or alteration. However, when the dependent claims 3 and 7 were originally filed, rather than reciting that "the aluminum coating contains up to about 10% by weight silicon," they read "the coating metal is Type 1 aluminum." The examiner rejected both claims under 35 U.S.C. § 112, ¶ 2, as being indefinite for failing to particularly point out and distinctly claim the subject matter sought to be patented. In particular, the examiner suggested that the phrase "Type 1" should be replaced with the more explicit definition that the applicants had provided in their specification. The applicants complied by replacing the "Type 1" language with the requirement that the silicon content be "up to about 10%," and the PTO then issued the '549 patent.

AK Steel sued Sollac in the district court for infringement of several patents, including the '135 and '549 patents. Sollac manufactures stainless steel that is hot-dipped in a molten mixture including aluminum and 8.0%-8.5% silicon.

The district court judge adopted a special master's construction of the phrase "consisting essentially of aluminum" in the '135 patent claims to permit no more than "about 0.5% silicon" and therefore granted summary judgment of noninfringement. AK Steel, 234 F.Supp.2d at 720. The judge also adopted the special master's thorough construction of claims 1, 3, 5, and 7 of the '549 patent as encompassing Type 1 aluminum and his conclusion that the patent did not enable one skilled in the art to practice the invention with Type 1 aluminum, as required by 35 U.S.C. § 112, ¶ 1. Id. at 718. The court therefore granted summary judgment of invalidity with respect to those '549 patent claims. Id. at 719. AK Steel timely appealed and Sollac timely cross-appealed to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

DISCUSSION

We review a district court's grant of a motion for summary judgment de novo. Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1315 (Fed. Cir.1998). Summary judgment is appropriate if "there is no genuine issue as to any material fact and ... the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). "The evidence of the nonmovant is to be believed, and all justifiable inferences are to be drawn in his favor." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Furthermore, in deciding whether summary judgment is warranted, the court "must view the evidence presented through the prism of the substantive evidentiary burden" that would inhere at trial. Id. at 245, 106 S.Ct. 2505.

A determination of patent infringement requires a two-step analysis. "First, the court determines the scope and meaning of the patent claims asserted ... [Second,] the properly construed claims are compared to the allegedly infringing device." Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed.Cir.1998) (en banc) (citations omitted). Step one, claim construction, is an issue of law, Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), that we review de novo, Cybor, 138 F.3d at 1456. Step two, comparison of a claim to the accused device, requires a determination that every claim limitation or its equivalent is found in the accused device. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). Those determinations are questions of fact. Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed.Cir.1998).

Whether the subject matter of a patent claim satisfies the enablement requirement of 35 U.S.C. § 112, ¶ 1, is a question of law based on underlying facts, In re Wands, 858 F.2d 731, 735 (Fed.Cir.1988), and, because a patent is presumed to...