In Arcelormittal, et al. v. AK Steel Corporation, C.A. No. 13-685-SLR (D. Del. Jan. 19, 2017), Judge Sue L. Robinson granted Defendant’s motion for summary judgment as to non-infringement based on collateral estoppel. Discovery in the present action was limited to evaluating whether Defendant’s accused products had changed since the verdict in a prior action brought by Plaintiff on another patent, where Defendant prevailed on non-infringement. See id. at 1-2.
Noting that collateral estoppel “may also operate to bar relitigation of common issues in actions involving different bur related patents,” the Court rejected Plaintiff’s arguments regarding how Defendant’s products differed in this case and in the prior action. See id. at 6,7. The case at bar satisfied the required elements for collateral estoppel to apply, as the prior action involved the same parties, products, conduct, and issues. Id. at 10.
In its analysis, the Court also rejected certain of Plaintiff’s arguments regarding alleged concessions made by Defendant during appeal arguments, as the Court had listened to the argument before the Federal Circuit and disagreed that any concession had occurred. Id. at 8 n.8. The Court also rejected Plaintiffs’ arguments that it should receive discovery “as to whether defendant directs or controls the performance of the hot stampers or is in a joint enterprise” such that divided infringement may be implicated, because the claims at bar were not method claims and, furthermore, it appeared that this was discovery Plaintiffs should have taken in the prior action. Id. at 9 & n.9. The Court reached a similar conclusion as to Plaintiff’s arguments that additional discovery was needed as to indirect infringement, as Plaintiffs had already litigated these issues in the prior action. Id. at 9-10.
The Court also denied Plaintiffs’ request to postpone resolution of the foregoing motion pending resolution of its appeal on Defendant’s motion for summary judgment in the prior action, explaining 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.” Id. at 11 n.13.