DCT

1:13-cv-00685

ArcelorMittal v. Ak Steel Corp

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:13-cv-00685, D. Del., 04/16/2013
  • Venue Allegations: Venue is alleged to be proper because Defendant is a Delaware corporation and has not contested venue in related, prior court proceedings.
  • Core Dispute: Plaintiff alleges that Defendant’s aluminum-coated, boron-containing steel sheet products, designed for the automotive industry, infringe a reissue patent related to high-strength, press-hardenable steel.
  • Technical Context: The technology concerns advanced high-strength steels that can be formed into complex shapes at lower strength and then heat-treated (press-hardened) to achieve very high strength, a process crucial for manufacturing lightweight and safe automotive components.
  • Key Procedural History: The patent-in-suit, RE44,153, is a reissue of U.S. Patent No. 6,296,805. The reissue patent issued on April 16, 2013, the same day this complaint was filed. The complaint notes that Defendant’s counsel was notified via email of the patent’s impending issuance on April 15, 2013. The complaint also references prior related proceedings between the parties.

Case Timeline

Date Event
1998-07-09 'RE153 Patent Priority Date
2001-10-02 Original U.S. Patent 6,296,805 Issued
2011-08-08 Petition Filed for Reissuance of '805 Patent
2013-04-15 Plaintiff Notifies Defendant of Impending Reissue Patent
2013-04-16 U.S. Reissue Patent RE44,153 Issued
2013-04-16 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

  • Patent Identification: U.S. Reissue Patent No. RE44,153, “COATED HOT- AND COLD-ROLLED STEEL SHEET COMPRISING A VERY HIGH RESISTANCE AFTER THERMAL TREATMENT,” issued April 16, 2013.
  • The Invention Explained:
    • Problem Addressed: The patent describes a fundamental trade-off in metallurgy: steels with high mechanical strength are difficult to shape or form, while formable steels lack strength. Furthermore, applying protective coatings to steel after it has been formed and heat-treated is a complex process, yet applying a coating before heat treatment risks damaging the coating at the high temperatures required to strengthen the steel (RE153 Patent, col. 2:15-32).
    • The Patented Solution: The invention claims a steel sheet with a specific chemical composition (including carbon, manganese, and boron) and a protective aluminum-based coating. This combination allows the sheet to be delivered in a formable state for stamping into parts. Subsequently, the formed part can undergo a thermal treatment that imparts "a very high mechanical resistance." The pre-applied coating not only provides corrosion resistance but is designed to withstand the heat treatment, protecting the underlying steel from oxidation and decarbonization during the process ('RE153 Patent, Abstract; col. 4:60-65).
    • Technical Importance: This technology, known commercially as press-hardening or hot-stamping, enables the production of automotive components that are simultaneously lightweight, complex in shape, and exceptionally strong, which is critical for improving vehicle crash safety and fuel efficiency ('RE153 Patent, col. 2:36-40).
  • Key Claims at a Glance:
    • The complaint asserts "one or more of the claims of the RE153 patent" (Compl. ¶17). Independent claim 1 is the broadest product claim.
    • Independent Claim 1 requires:
      • A hot-rolled coated steel sheet comprising a hot-rolled steel sheet coated with an aluminum or aluminum alloy coating
      • The steel having a specific chemical composition with defined weight percentage ranges for ten elements: carbon, manganese, silicon, chromium, titanium, aluminum, phosphorus, sulfur, and boron, with the remainder being iron and impurities
      • The steel sheet "has a very high mechanical resistance after thermal treatment"
      • The coating "provides a high resistance to corrosion"
    • The complaint’s general assertion implicitly reserves the right to assert other claims, including dependent claims which add further limitations, such as specific strength thresholds (e.g., in excess of 1000 MPa or 1500 MPa) ('RE153 Patent, col. 6:50-53).

III. The Accused Instrumentality

  • Product Identification: The complaint identifies the accused products as "aluminum coated, boron-containing steel sheet products" that Defendant AK Steel makes, offers to sell, and sells in the United States (Compl. ¶15).
  • Functionality and Market Context: The complaint alleges these steel sheets are manufactured through processes including hot rolling, cold rolling, and aluminum coating (Compl. ¶15). They are sold to customers, such as automotive parts suppliers, for further processing that includes heat treatment and stamping to form automotive components (Compl. ¶¶15, 17). The complaint alleges that after this processing, the resulting parts have an "ultimate tensile strength greater than 1000 MPa" and, in some cases, "greater than 1500 MPa" (Compl. ¶16). It is further alleged that AK Steel designs its products to meet automotive specifications requiring these high-strength properties (Compl. ¶19).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not contain a claim chart. The following table summarizes the infringement theory for representative Claim 1 based on the complaint's narrative allegations.

RE153 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A hot-rolled coated steel sheet comprising a hot-rolled steel sheet coated with an aluminum or aluminum alloy coating... Defendant makes, offers to sell, and/or sells "aluminum coated... steel sheet products" which are "formed by a process involving, among other things, hot rolling, cold rolling, and coating the steel with aluminum." ¶15 col. 5:9-11
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... Defendant's products are described as "boron-containing steel sheet products." It is alleged that Defendant "has designed its product, including its carbon content, so that upon further processing, it will meet" specifications requiring high strength, implying the composition is tailored to achieve the patented result. ¶15, ¶19 col. 5:12-20
and the steel sheet has a very high mechanical resistance after thermal treatment... The complaint alleges that when the accused products are further processed via "heat treatment and stamping, they have an ultimate tensile strength greater than 1000 MPa, and at least some of the products have an ultimate tensile strength greater than 1500 MPa." ¶16 col. 5:21-23
and the aluminum or aluminum alloy coating provides a high resistance to corrosion of the steel sheet. The products are "aluminum coated" (Compl. ¶15). The patent specification teaches that this coating provides corrosion resistance ('RE153 Patent, col. 2:48-51). ¶15 col. 5:23-25
  • Identified Points of Contention:
    • Technical Question: The complaint alleges the accused product's composition on "information and belief" and by inference from its intended use and performance. A central evidentiary question will be whether discovery confirms that AK Steel's products meet all ten of the specific elemental weight percentage ranges required by Claim 1.
    • Scope Questions: Does the claim limitation "has a very high mechanical resistance after thermal treatment" require the sheet as sold by the defendant to have undergone treatment, or does it define a capability of the material? The answer will determine whether AK Steel can be held liable for direct infringement, or if liability depends solely on the actions of its customers who perform the heat treatment.
    • Scope Questions: Does the claim term "hot-rolled coated steel sheet" read on a product that, according to the complaint, undergoes both "hot rolling" and "cold rolling" (Compl. ¶15)? The relationship between Claim 1 and other dependent claims that explicitly recite cold rolling (e.g., Claim 21) may become a focus of claim construction.

V. Key Claim Terms for Construction

  • The Term: "has a very high mechanical resistance after thermal treatment"
  • Context and Importance: This functional language is central to the infringement analysis. Its construction will determine the point in the manufacturing and supply chain at which infringement occurs. Practitioners may focus on this term because it raises the question of whether the claim covers an unfinished input material (the as-sold sheet) or only the finished, heat-treated part.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation (Capability): The patent's stated purpose is to provide a sheet that "makes it possible to obtain a mechanical resistance in excess of 1000 MPa" ('RE153 Patent, col. 2:47-49). The abstract similarly describes the sheet as "ensuring a very high mechanical resistance after thermal treatment." This language may suggest the claim defines a material based on its inherent capability, meaning the as-sold sheet could infringe.
    • Evidence for a Narrower Interpretation (Achieved State): A defendant may argue that the phrase "has a very high mechanical resistance" is a present-tense statement of an achieved property. Under this view, the limitation is only met by a product that has actually undergone the thermal treatment, meaning only the final automotive component would infringe, not the sheet supplied by AK Steel.

VI. Other Allegations

  • Indirect Infringement: The complaint pleads both induced and contributory infringement. It alleges inducement by asserting that AK Steel supplies the steel sheets with the specific intent that its customers (e.g., automotive parts suppliers) will perform the final heat treatment and stamping steps to create infringing final products. Knowledge is alleged based on an email sent to AK Steel's counsel one day before the patent issued (Compl. ¶18). Contributory infringement is alleged on the basis that the accused steel is especially made for an infringing use and is not a staple article of commerce with substantial non-infringing uses (Compl. ¶19).
  • Willful Infringement: While the complaint does not use the word "willful," it lays a foundation for such a claim. It alleges that AK Steel had actual notice of the patent's claims and its imminent issuance as of April 15, 2013, via an email to its counsel (Compl. ¶18). Any alleged infringement after this date could be asserted as willful. The prayer for relief specifically seeks damages for infringement occurring "after its issuance on April 16, 2013" (Compl. Prayer for Relief ¶2).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central issue will be one of evidentiary proof: can the plaintiff, through discovery and testing, demonstrate that AK Steel’s commercial products meet every one of the ten specific elemental composition ranges recited in the asserted patent claims?
  • The case will also turn on a question of infringement timing and scope: does the claim limitation "has a very high mechanical resistance after thermal treatment" define an innate capability of the steel sheet as sold by AK Steel, or is it a condition only met by the final, heat-treated automotive part? The resolution will determine whether the primary dispute is over direct or indirect infringement.
  • A key claim construction question will be one of process definition: can the term "hot-rolled coated steel sheet" in Claim 1 be construed to cover a product that the complaint alleges is also subjected to a "cold rolling" step, or does that additional step place the product outside the claim's literal scope?