ARCELORMITTAL, ARCELORMITTAL ATLANTIQUE ET LORRAINE, Plaintiffs-Appellants
AK STEEL CORPORATION, SEVERSTAL DEARBORN, INC., WHEELING-NISSHIN INC., Defendants-Appellees
from the United States District Court for the District of
Delaware in No. 1:10-cv-00050-SLR, Judge Sue L. Robinson.
Constantine L. Trela, Jr., Sidley Austin LLP, Chicago, IL,
argued for plaintiffs-appellants. Also represented by Bryan
C. Mulder; Jeffrey B. Bove, Ratner Prestia, Wilmington, DE.
Christopher Neil Sipes, Covington & Burling LLP,
Washington, DC, argued for defendants-appellees. Also
represented by Jeffrey Howard Lerner, Roderick R. McKelvie.
Moore, Wallach, and Hughes, Circuit Judges.
sued Defendants in 2010 for infringing U.S. Patent No. 6,
296, 805. After our most recent remand in this case, the
district court invalidated claims 24 and 25 of U.S. Patent
No. RE44, 153, the reissue of the '805 patent. We
conclude that the district court possessed subject matter
jurisdiction when it granted summary judgment, that the court
properly followed our most recent mandate, and that the court
properly exercised its discretion to deny ArcelorMittal's
Rule 56(d) request. Accordingly, we affirm.
dispute between Plaintiffs (collectively, ArcelorMittal) and
Defendants (Civ. No. 10-050-SLR (the 050 case)) began in
January 2010, when ArcelorMittal first filed a complaint in
the United States District Court for the District of Delaware
alleging that Defendants infringed the '805 patent.
Defendants counterclaimed for declarations of
non-infringement and invalidity of the '805 patent. After
a five-day trial, a jury found that Defendants did not
infringe the then-asserted claims, and that the claims were
invalid as anticipated and obvious.
November 2012, we reversed the district court's claim
construction in part and concluded that, as a matter of law,
the claims were not anticipated. ArcelorMittal France v.
AK Steel Corp., 700 F.3d 1314, 1317 (Fed. Cir. 2012)
(ArcelorMittal I). We then remanded for
limited proceedings to address only literal infringement and
commercial success. Id. at 1326.
in April 2013, the United States Patent & Trademark
Office (PTO) reissued the '805 patent as the RE'153
patent. ArcelorMittal subsequently filed two patent
infringement suits in the United States District Court for
the District of Delaware against the defendants based on
events occurring after the RE'153's issuance that
allegedly infringed the RE'153 patent: (1) Civ. No.
13-685-SLR, against AK Steel (the 685 case); and (2) Civ. No.
13-686-SLR, against Severstal Dearborn and Wheeling-Nisshin
(the 686 case). The following month, ArcelorMittal moved to
amend its complaint in the 050 case to substitute allegations
of infringement of the RE'153 patent for the allegations
of infringement of the surrendered '805 patent.
Defendants moved in June 2013 for summary judgment on the
grounds that claims 1-23 of the RE'153 patent were
improperly broadened, and thus invalid.
district court concluded that summary judgment was warranted
because claims 1-23 had been improperly broadened, and denied
the pending motion to amend the complaint as moot.
ArcelorMittal filed a letter seeking to clarify the status of
claims 24 and 25, claiming that they were not asserted in the
050 case. In an order governing the 050, 685, and 686 cases,
the district court clarified that it was invalidating not
just RE'153 claims 1-23, but also claims 24 and 25.
appealed. We affirmed the invalidity of claims 1-23 of the
RE'153 patent, but reversed as to the invalidity of
claims 24 and 25 after finding those claims were not
broadened on reissue. ArcelorMittal France v. AK Steel
Corp., 786 F.3d 885, 892 (Fed. Cir. 2015)
(ArcelorMittal II). We remanded for "further
proceedings consistent with [that] opinion and our mandate in
ArcelorMittal I." Id.
2015, on remand in the 685 case, ArcelorMittal moved to amend
its complaint to substitute allegations of infringement of
U.S. Patent No. RE44, 940-a continuation of the application
resulting in the RE'153 patent-for the allegations of
infringement of the RE'153 patent.
months later, in the 050 case, ArcelorMittal moved to dismiss
for lack of jurisdiction because, according to ArcelorMittal,
claims 24 and 25 of the RE'153 patent-the only claims not
invalidated-were not part of the case on remand. In its
supporting brief, ArcelorMittal contended that, based on
pretrial elections made with respect to the '805 patent,
it had only asserted five claims of the RE'153 patent,
all of which had been invalidated in ArcelorMittal
II. It also said that it was prepared to issue
Defendants a covenant not to sue. The same day, Defendants
moved for summary judgment of non-infringement and invalidity
of claims 24 and 25 of the RE'153 patent. Briefing on
both motions completed on October 23, 2015. To its reply
brief in support of its motion to dismiss, ArcelorMittal
attached an unsigned draft covenant not to sue.
days later, the district court held a telephonic hearing on
the pending motions. More than three weeks after the hearing,
ArcelorMittal submitted to the court a letter attaching an
executed covenant not to sue Defendants and their customers
under the RE'153 patent. Although the covenant was
facially unconditional, ArcelorMittal said in its enclosing
letter that it was "tender[ing] the covenant conditioned
on resolution of its motion to amend (D.I. 31) in the 685
case." J.A. 5218. ArcelorMittal further explained that
it imposed that condition to "avoid mooting the 685
case" by "divesting the [c]ourt of
jurisdiction" and that it stood "ready to deliver
the covenant unconditionally upon resolution of" the
motion to amend. Id.
order, the trial court granted Defendants' motion for
summary judgment, denied ArcelorMittal's motion to
dismiss for lack of subject matter jurisdiction in the 050
case, and granted ArcelorMittal's motion to amend its
complaint in the 685 case. ArcelorMittal appeals the denial
of its motion to dismiss for lack of subject matter
jurisdiction and the grant of summary judgment of invalidity
of RE'153 claims 24 and 25. We have jurisdiction under 28
U.S.C. § 1295(a)(1).
review the court's denial of a motion to dismiss for lack
of subject matter jurisdiction de novo and the underlying
factual findings for clear error. Hewlett-Packard Co. v.
Acceleron LLC, 587 F.3d 1358, 1361 (Fed. Cir. 2009).
Under MedImmune, Inc. v. Genentech, Inc., courts may
hear declaratory judgment actions if "the facts alleged,
under all the circumstances, show that there is a
substantial controversy, between parties having adverse legal
interests, of sufficient immediacy and reality." 549
U.S. 118, 127 (2007) (quoting Md. Cas. Co. v. Pac. Coal
& Oil Co., 312 U.S. 270, 273 (1941)) (emphasis
first argues that it never asserted RE'153 claims 24 and
25 in the 050 litigation against Defendants. We disagree.
After the first remand, AK Steel moved for summary judgment
of non-infringement of claims 1-23 of the RE'153 patent.
In its supporting brief, AK Steel expressed its view that the
court's grant of the motion "would leave claims
24-25 of the [RE'153] patent for the limited
determination on obviousness remanded by the Federal
Circuit." J.A. 4540. Though ArcelorMittal opposed the
motion for other reasons, it did not dispute AK Steel's
statement that claims 24 and 25 would remain for the
court's further resolution. Then, in the second appeal,
ArcelorMittal (1) argued that, "even if only reissue
claims 24 and 25 remain, there is evidence that those claims
were infringed during the time period at issue in the 050
case, " and (2) asked us to "remand the 050 case so
that the district court can address infringement of reissue
claims 24 and 25" even if we affirmed the invalidity of
claims 1-23. J.A. 5199-5200. We granted ArcelorMittal that
relief by "remand[ing] for further proceedings"
because we declined "to reach the merits" on claims
24 and 25, which we held were improperly invalidated.
ArcelorMittal II, 786 F.3d at 892.
now argues that we remanded the 050 case in ArcelorMittal
II so that ArcelorMittal could consider whether
to assert claims 24 and 25, which it says the district court
introduced into the case by invalidating them sua sponte. We
find that ArcelorMittal's statements to this court and
its tacit acceptance of Defendants' representations about
the litigation status of claims 24 and 25 reflect
ArcelorMittal's continued attempt to assert those claims
in the 050 case. Also, our mandate contemplated "further
proceedings" in the 050 case, which were necessary only
because ArcelorMittal told us that it was asserting
RE'153 claims 24 and 25. In light of "all the
circumstances, " there was a substantial controversy
between the parties over RE'153 claims 24 and 25. See
MedImmune, 549 U.S. at 127. Therefore, the district
court correctly considered RE'153 claims 24 and 25 to be
asserted on remand.
ArcelorMittal argues that its dispute with Defendants became
moot when ArcelorMittal conditionally tendered its covenant
to Defendants. We hold that it did not.
counterclaims arise under the Declaratory Judgment Act, which
states that, "[i]n a case of actual controversy within
its jurisdiction . . . any court of the United States . . .
may declare the rights and other legal relations of any
interested party seeking such declaration." 28 U.S.C.
§ 2201. Because "the phrase 'case of actual
controversy' in the [Declaratory Judgment] Act refers to
the type of 'Cases' and 'Controversies' that
are justiciable under Article III, " these requirements
are coextensive. MedImmune, 549 U.S. at 127 (citing
Aetna Life Ins. Co. v. Haworth, 300 U.S. 227, 240
(1937)); see also Prasco, LLC v. Medicis Pharm.
Corp., 537 F.3d 1329, 1335 (Fed. Cir. 2008) ("[A]s
long as the suit meets the case or controversy requirement of
Article III, a district court may have jurisdiction over a
declaratory judgment action."). Accordingly, we may
either employ the MedIm-mune standard or draw from
the "specific but overlapping doctrines rooted in the
same Article III inquiry, " including "lack of
mootness." Prasco, 537 F.3d at 1336. Thus, the
mootness doctrine may serve as a "helpful guide in
applying the all-the-circumstances test." Id.;
see Sandoz Inc. v. Amgen Inc., 773 F.3d 1274, 1278
(Fed. Cir. 2014). Yet we remain mindful that "there is
no bright-line rule for determining whether an action