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Judge Robinson Grants Motion for Summary Judgment of Non-Infringement Based on Collateral Estoppel

February 9, 2017

In ArcelorMittal v. AK Steel Corp., C.A. No. 13-685-SLR (D. Del. January 19, 2017), Judge Robinson granted the motion for summary judgment of non-infringement filed by the defendant, AK Steel Corp. (“AK Steel”). In an earlier action between the parties, Judge Robinson had also granted summary judgment of non-infringement in AK Steel’s favor, and entered judgment of no infringement and invalidity of a reissue patent related to the asserted patent in this later litigation. The plaintiffs, ArcelorMittal and ArcelorMittal Atlantique et Lorraine (together, “ArcelorMittal”), then filed the instant action, asserting infringement of the related patent. AK Steel moved for summary judgment based on collateral estoppel.

ArcelorMittal argued that AK Steel’s products had changed, since the product at issue in the first action was “experimental” and the new product was made with different equipment and processes. But Judge Robinson found that ArcelorMittal’s attempts to differentiate the products rang “hollow”: the earlier litigation “involved the same parties, the same products, the same conduct, and the same issues.” Collateral estoppel thus barred the instant action. Judge Robinson also denied ArcelorMittal’s request to postpone decision on summary judgment pending the Federal Circuit’s decision on appeal of the earlier action, finding that “[r]egardless of the outcome of the appeal, it remains unclear how plaintiffs could circumvent the lack of direct infringement on the facts at bar.”

Key Points:  This decision shows how closely the Delaware judges will look at related actions to ensure that plaintiffs are not bringing duplicative actions in an attempt to avoid unfavorable decisions in violation of collateral estoppel principles.