Arcelormittal v. Ak Steel Corporation ( 2017 )

United States Court of Appeals
for the Federal Circuit
______________________
ARCELORMITTAL, ARCELORMITTAL
ATLANTIQUE ET LORRAINE,
Plaintiffs-Appellants
v.
AK STEEL CORPORATION, SEVERSTAL
DEARBORN, INC., WHEELING-NISSHIN INC.,
Defendants-Appellees
______________________
2016-1357
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:10-cv-00050-SLR, Judge Sue
L. Robinson.
______________________
Decided: May 16, 2017
______________________
CONSTANTINE L. TRELA, JR., Sidley Austin LLP, Chi-
cago, IL, argued for plaintiffs-appellants. Also represent-
ed 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.
______________________
2 ARCELORMITTAL v. AK STEEL CORPORATION
Before MOORE, WALLACH, and HUGHES, Circuit Judges.
Opinion for the court filed by Circuit Judge HUGHES.
Dissenting opinion filed by Circuit Judge WALLACH.
HUGHES, Circuit Judge.
Plaintiffs 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.
I
A
The dispute between Plaintiffs (collectively, Arce-
lorMittal) 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 in-
fringed 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 Defend-
ants did not infringe the then-asserted claims, and that
the claims were invalid as anticipated and obvious.
In 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.
ARCELORMITTAL v. AK STEEL CORPORATION 3
Thereafter, 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, ArcelorMit-
tal 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 surren-
dered ’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.
The 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.
ArcelorMittal 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) (Arce-
lorMittal II). We remanded for “further proceedings
consistent with [that] opinion and our mandate in Arce-
lorMittal I.” Id.
4 ARCELORMITTAL v. AK STEEL CORPORATION
B
In July 2015, on remand in the 685 case, ArcelorMit-
tal moved to amend its complaint to substitute allegations
of infringement of U.S. Patent No. RE44,940—a continua-
tion of the application resulting in the RE’153 patent—for
the allegations of infringement of the RE’153 patent.
Two months later, in the 050 case, ArcelorMittal
moved to dismiss for lack of jurisdiction because, accord-
ing 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, De-
fendants 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.
Four 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 Defend-
ants and their customers under the RE’153 patent.
Although the covenant was facially unconditional, Arce-
lorMittal said in its enclosing letter that it was “ten-
der[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.
ARCELORMITTAL v. AK STEEL CORPORATION 5
In one order, the trial court granted Defendants’ mo-
tion for summary judgment, denied ArcelorMittal’s mo-
tion 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).
II
We review the court’s denial of a motion to dismiss for
lack of subject matter jurisdiction de novo and the under-
lying 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 substan-
tial 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 added).
A
ArcelorMittal 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
6 ARCELORMITTAL v. AK STEEL CORPORATION
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 infringe-
ment 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 invali-
dated. ArcelorMittal II, 786 F.3d at 892.
ArcelorMittal now argues that we remanded the 050
case in ArcelorMittal II so that ArcelorMittal could con-
sider 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’ repre-
sentations 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 neces-
sary only because ArcelorMittal told us that it was assert-
ing 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.
B
Next, ArcelorMittal argues that its dispute with De-
fendants became moot when ArcelorMittal conditionally
tendered its covenant to Defendants. We hold that it did
not.
Defendants’ counterclaims arise under the Declarato-
ry 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 declara-
ARCELORMITTAL v. AK STEEL CORPORATION 7
tion.” 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 ac-
tion.”). 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 apply-
ing 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 satisfies the case or con-
troversy requirement,” Prasco, 537 F.3d at 1336, and that
“MedImmune makes clear . . . that ‘all the circumstances’
must be considered when making a justiciability determi-
nation,” Cat Tech LLC v. TubeMaster, Inc., 528 F.3d 871,
883 (Fed. Cir. 2008).
“A case becomes moot—and therefore no longer a
‘Case’ or ‘Controversy’ for purposes of Article III—‘when
the issues presented are no longer live or the parties lack
a legally cognizable interest in the outcome.’” Already,
LLC v. Nike, Inc., 133 S. Ct. 721, 726 (2013) (quoting
Murphy v. Hunt, 455 U.S. 478, 481 (1982) (per curiam))
(some internal quotation marks omitted). Although a
patentee’s grant of a covenant not to sue a potential
infringer can sometimes deprive a court of subject matter
jurisdiction, see Arris Grp., Inc. v. British Telecomm. PLC,
639 F.3d 1368, 1380 (Fed. Cir. 2011), the patentee “bears
the formidable burden of showing” “that it ‘could not
reasonably be expected’ to resume its enforcement efforts
8 ARCELORMITTAL v. AK STEEL CORPORATION
against” the covenanted, accused infringer, Already, 133
S. Ct. at 727 (quoting Friends of the Earth, Inc. v. Laidlaw
Envtl. Servs. (TOC), Inc., 528 U.S. 167, 190 (2000)). In
this context, that requires ArcelorMittal to show that it
actually granted a covenant not to sue to Defendants, and
that the covenant enforceably extinguished any real
controversy between the parties related to infringement of
the RE’153 patent.
Taking into account “all the circumstances,” we find
on the particular, unusual facts of this case that Arce-
lorMittal did not moot its controversy with Defendants
over the RE’153 patent. Although this case has a convo-
luted history, the reason that the court retained jurisdic-
tion is quite simple: At no time before the court entered
summary judgment did ArcelorMittal unconditionally
assure Defendants and their customers that it would
never assert RE’153 claims 24 and 25 against them.
ArcelorMittal certainly had ample opportunity to pro-
vide the unconditional assurances required to defeat
jurisdiction. It did not provide a covenant (1) when the
RE’153 patent issued in April 2013; (2) in response to
Defendants’ June 2013 summary judgment brief explain-
ing its view that claims 24–25 were asserted; or (3) in
May 2015, after our second remand, which was to allow
ArcelorMittal to continue its assertion of claims 24 and 25
against Defendants for their pre- and post- RE’153 issu-
ance conduct.
ArcelorMittal’s first indication that it might grant a
covenant not to sue was in its September 4, 2015 opening
brief in support of its motion to dismiss for lack of juris-
diction. ArcelorMittal maintained that RE’153 claims 24
and 25 were not part of the case on remand, but that even
if they were, it was “prepared to grant a covenant against
suit to Defendants for all claims of the [RE’153] patent in
order to resolve any remaining issue.” J.A. 4956; see, e.g.,
J.A. 4950. ArcelorMittal’s October 23 reply supporting its
ARCELORMITTAL v. AK STEEL CORPORATION 9
motion to dismiss attached an unexecuted covenant as an
exhibit. See J.A. 5103, 5107–08. Neither of these state-
ments was an unconditional assurance that Defendants
could rely upon as an enforceable covenant not to sue.
Finally, the letter and executed covenant ArcelorMit-
tal filed with the court on November 18, 2015, taken
together, were also qualified. ArcelorMittal tendered the
covenant “conditioned on resolution of its motion to
amend (D.I. 31) in the 685 case.” J.A. 5218. Notably,
ArcelorMittal expressed that it expected that further
action—i.e., unconditional delivery—would have to be
taken in order to make the covenant effective. See id.
(“Consequently, Arcelor stands ready to deliver the cove-
nant unconditionally upon resolution of that motion.”).
The district court, well within its discretion in managing
its docket, resolved the 050 case summary judgment
motion without having first resolved the motion to amend
in the 685 case. Accordingly, the letter’s condition re-
mained unsatisfied, and no unconditional covenant was
ever unconditionally delivered to Defendants before the
court resolved the merits of the validity of claims 24 and
25 of the RE’153 patent. 1
This outcome results from events that were entirely
within ArcelorMittal’s control. As reflected above, Arce-
lorMittal could have, at any point before December 4,
2015, delivered an unconditional, executed covenant not
1 We note that the district court issued one order
that resolved the 050 case motion for summary judgment
and granted the 685 case motion to amend. We need not
resolve the metaphysical question of whether one decision
came before the other, because as ArcelorMittal’s letter
made clear, it intended that it would separately deliver an
executed covenant to Defendants after the 685 case mo-
tion to amend was resolved. This never happened.
10 ARCELORMITTAL v. AK STEEL CORPORATION
to sue that would have mooted the dispute between the
parties over the remaining claims of the RE’153 patent.
Instead, as ArcelorMittal explained at the October 27
hearing and in its November 18 letter, it designed its
actions specifically to maintain jurisdiction in the 685
case—a case which also would have been moot had Arce-
lorMittal tendered Defendants an effective covenant not
to assert the RE’153 patent. J.A. 5251 (“[I]f the Court
says there’s no jurisdiction on ’153, that is the only patent
that’s in the [685] case right now, so if we were to sign a
covenant against suit . . ., it would get rid of the [685]
case.”); J.A. 5218 (“Arcelor tends the covenant conditioned
on resolution of its motion to amend (D.I. 31) in the 685
case. As explained at the hearing, this condition is neces-
sary to avoid mooting the 685 case and thereby divesting
the Court of jurisdiction.”). In this fact-specific context,
we must give effect to ArcelorMittal’s express intent to
make conditional delivery of an unconditional covenant
mean something different than unconditional delivery of
an unconditional covenant. 2 The conditional nature of the
2 This is true as an application of the MedImmune
“all-the-circumstances” approach and in consideration of
contract law principles—both of which permit us to look
outside the terms of the covenant itself. See MedImmune,
549 U.S. at 127; Linear Tech. Corp. v. Micrel, Inc., 275
F.3d 1040, 1050 (Fed. Cir. 2001) (holding that certain
communications were not offers because they did “not
indicate [the party’s] intent to be bound, as required for a
valid offer”); Leeds v. First Allied Conn. Corp., 521 A.2d
1095, 1097 (Del. Ch. 1986) (“It is elementary that deter-
mination of the question whether a contract has been
formed essentially turns upon a determination whether
the parties to an alleged contract intended to bind them-
selves contractually. A court determining if such inten-
tion has been manifested . . . determines this question of
ARCELORMITTAL v. AK STEEL CORPORATION 11
covenant’s delivery here differentiates this case from
others where we have found jurisdiction defeated by less
than a fully executed covenant not to sue. See, e.g., Or-
ganic Seed Growers & Trade Ass’n v. Monsanto Co., 718
F.3d 1350, 1358 (Fed. Cir. 2013) (finding that a party’s
“representations unequivocally disclaim[ing] any intent to
sue appellant[s]” were, as a matter of judicial estoppel,
sufficient to bind the representing party (emphasis add-
ed)).
Therefore, taking into account not solely the cove-
nant’s terms but also the circumstances of its delivery, we
find no error in the district court’s retention of subject
matter jurisdiction.
III
We address ArcelorMittal’s other arguments briefly.
First, we conclude that the district court correctly imple-
mented our mandate by limiting its analysis to non-
infringement and commercial success of RE’153 claims 24
and 25. In ArcelorMittal II, we “remand[ed] for further
proceedings consistent with th[e] opinion and our man-
date in ArcelorMittal I.” 786 F.3d at 892. Thus, we
incorporated ArcelorMittal I’s limited remand for consid-
fact from the overt acts and statements of the parties.”);
Neenan v. United States, 112 Fed. Cl. 325, 329 (2013),
aff’d, 570 F. App’x 937 (Fed. Cir. 2014) (“An offer does not
exist unless the offeror manifests an intent to be bound.”);
Restatement (Second) of Contracts § 26 (“A manifestation
of willingness to enter into a bargain is not an offer if the
person to whom it is addressed knows or has reason to
know that the person making it does not intend to con-
clude a bargain until he has made a further manifestation
of assent.”); see also Restatement (Second) of Contracts
§§ 19, 24, 103, 217.
12 ARCELORMITTAL v. AK STEEL CORPORATION
eration of commercial success and non-infringement.
ArcelorMittal argues that the reissuance of the ’805
patent as the RE’153 patent required the district court to
assess the obviousness of the RE’153 claims anew. But
we previously held that the reissuance does not alone
constitute new evidence excusing adherence to the man-
date. Id. at 889. Moreover, the reissuance preceded the
ArcelorMittal II mandate, and thus cannot be an interven-
ing development. Therefore, the district court correctly
considered RE’153 claims 24 and 25 under the limited
proceedings that the ArcelorMittal I mandate required.
Finally, the district court acted within its discretion
when it refused ArcelorMittal’s Rule 56(d) request for new
discovery on the commercial success of RE’153 claims 24
and 25. See Baron Servs., Inc. v. Media Weather Innova-
tions LLC, 717 F.3d 907, 912 n.6 (Fed. Cir. 2013); Murphy
v. Millennium Radio Grp., LLC, 650 F.3d 295, 310 (3d
Cir. 2011). The district court found significant that
ArcelorMittal did not explain how it could demonstrate a
nexus between any commercial success evidence and the
purported invention of RE’153 claims 24 and 25. We find
no error in the district court’s reasoning.
IV
Because the district court possessed jurisdiction and
correctly entered summary judgment, we affirm.
AFFIRMED
United States Court of Appeals
for the Federal Circuit
______________________
ARCELORMITTAL, ARCELORMITTAL
ATLANTIQUE ET LORRAINE,
Plaintiffs-Appellants
v.
AK STEEL CORPORATION, SEVERSTAL
DEARBORN, INC., WHEELING-NISSHIN INC.,
Defendants-Appellees
______________________
2016-1357
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:10-cv-00050-SLR, Judge Sue
L. Robinson.
______________________
WALLACH, Circuit Judge, dissenting.
“If a dispute is not a proper case or controversy” under
Article III of the Constitution, we “have no business
deciding it.” DaimlerChrysler Corp. v. Cuno, 547 U.S.
332, 341 (2006). Indeed, “[n]o principle is more funda-
mental to the judiciary’s proper role in our system of
government.” Simon v. E. Ky. Welfare Rights Org., 426
U.S. 26, 37 (1976); see Valley Forge Christian Coll. v. Ams.
United for Separation of Church & State, Inc., 454 U.S.
464, 471 (1982) (describing the case or controversy check
as a “bedrock requirement”). In the absence of a case or
controversy, “we must put aside the natural urge to
2 ARCELORMITTAL v. AK STEEL CORPORATION
proceed directly to the merits” of an action “and to settle it
for the sake of convenience and efficiency.” Raines v.
Byrd, 521 U.S. 811, 820 (1997) (internal quotation marks
omitted); see Heine v. Bd. of Levee Comm’rs, 86 U.S. 655,
658 (1873) (“[T]he hardship of the case, and the failure of
the mode of procedure established by law, is not sufficient
to justify a court of equity to depart from . . . precedent
and . . . administer[] . . . justice at the expense of well-
settled principles.”).
The instant dispute returns to the court for a third
time from the U.S. District Court for the District of Dela-
ware (“District Court”). In its most recent decision, the
District Court denied a motion to dismiss filed by Appel-
lants ArcelorMittal and ArcelorMittal Atlantique et
Lorraine (together, “Appellants”) and, instead, granted
motions for summary judgment of noninfringement and
invalidity of claims 24–25 of U.S. Patent No. RE44,153
(“the RE153 patent”) filed by Appellees AK Steel Corpora-
tion, Severstal Dearborn, Inc., and Wheeling-Nisshin Inc.
(collectively, “Appellees”). ArcelorMittal Fr. v. AK Steel
Corp. (ArcelorMittal VI), 147 F. Supp. 3d 232, 239 (D. Del.
2015). In denying Appellants’ Motion to Dismiss, the
District Court concluded that Appellants’ covenant not to
sue Appellees and their customers for infringement of the
RE153 patent (“the Covenant”) did not moot the dispute
between the parties. Id. at 239 & n.17; see J.A. 5220–21
(Covenant). Because the Covenant moots the dispute
between the parties and the majority concludes otherwise,
I respectfully dissent. 1
I. Background
The present appeal follows from (1) the District
Court’s opinion construing various claims of U.S. Patent
1 I take no position on the majority’s resolution of
the merits. See Maj. Op. 5–6, 11–12.
ARCELORMITTAL v. AK STEEL CORPORATION 3
No. 6,296,805 (“the ’805 patent”), see ArcelorMittal Fr. v.
AK Steel Corp. (ArcelorMittal I), 755 F. Supp. 2d 542,
546–51 (D. Del. 2010); (2) the District Court’s opinion
upholding the jury’s verdicts that the subject claims of the
’805 patent were not infringed under the doctrine of
equivalents and were invalid as anticipated by the prior
art or would have been obvious over the prior art, see
ArcelorMittal Fr. v. AK Steel Corp. (ArcelorMittal II), 811
F. Supp. 2d 960, 965–73 (D. Del. 2011); (3) our opinion
affirming-in-part on claim construction, reversing-in-part
on claim construction and reversing on anticipation, and
vacating and remanding for a new trial on literal in-
fringement and obviousness, see ArcelorMittal Fr. v. AK
Steel Corp. (ArcelorMittal III), 700 F.3d 1314, 1319–26
(Fed. Cir. 2012); (4) the District Court’s opinion on re-
mand invalidating claims 1–25 of the RE153 patent, 2 see
ArcelorMittal Fr. v. AK Steel Corp. (ArcelorMittal IV), 989
F. Supp. 2d 364, 368–72 (D. Del. 2013); and (5) our deci-
sion affirming the District Court’s invalidity determina-
tion as to claims 1–23 of the RE153 patent and reversing
as to claims 24–25, see ArcelorMittal Fr. v. AK Steel Corp.
(ArcelorMittal V), 786 F.3d 885, 888–92 (Fed. Cir. 2015).
After our latest remand to the District Court, Appel-
lants moved to dismiss the action because, in their view,
the District Court had invalidated all of the asserted
claims of the RE153 patent (i.e., claims 1–2, 5, 7, and 16).
J.A. 4943, 4947–59. Appellees responded by filing mo-
tions for summary judgment of invalidity and nonin-
fringement of claims 24–25 of the RE153 patent. J.A.
4960, 4974–83, 4986, 4991–5010. Appellants subsequent-
2 The RE153 patent issued after the U.S. Patent
and Trademark Office (“USPTO”) granted Appellants’
application to reissue the ’805 patent as the RE153 pa-
tent.
4 ARCELORMITTAL v. AK STEEL CORPORATION
ly filed the Covenant with the District Court, which states
that Appellants
hereby irrevocably covenant not to sue [Appel-
lees] . . . , and the customers of [Appellees] . . . ,
under [the RE153 patent] . . . for any use of the
RE153 [p]atent and all actions in connection with
manufacture and sale of aluminum coated, boron-
containing steel sheet products in the United
States, including without limitation, making, hav-
ing made, using, having used, selling, having sold,
offering for sale, having offered for sale and im-
porting, or having imported, aluminum coated,
boron-containing steel sheet products. To be
clear, this covenant not to sue is limited to the
RE153 [p]atent and shall not apply with respect to
any patent related to the RE153 [p]atent, includ-
ing U.S. Reissued Patent No. RE44,940 [(“the
RE940 patent”)].[3]
J.A. 5220–21 (emphases added). In the cover letter ac-
companying the Covenant, Appellants explained that they
filed the “executed [C]ovenant” with the District Court
“conditioned on [the] resolution of [their] motion to amend
[the complaint] in” a separate case (“the 685 case”) to
assert the RE940 patent against Appellees and that “this
condition is necessary to avoid mooting the 685 case and
thereby divesting the [District] Court of jurisdiction.” J.A.
5218. Appellants stated further that they “stand[] ready
to deliver the [C]ovenant unconditionally upon resolution
of that motion.” J.A. 5218.
3 Between ArcelorMittal IV and ArcelorMittal V,
the USPTO granted Appellants’ continuation of the
application to reissue the ’805 patent as the RE940 pa-
tent.
ARCELORMITTAL v. AK STEEL CORPORATION 5
The District Court ultimately denied Appellants’ Mo-
tion to Dismiss and granted Appellees’ summary judg-
ment motions. ArcelorMittal VI, 147 F. Supp. 3d at 239.
Regarding the Covenant, the District Court observed that
(1) Appellants “could have avoided the entry of [summary]
judgment” had they “simply filed the [C]ovenant instead
of making it conditional,” id. at 239 n.17, and (2) the entry
of summary judgment “moot[ed]” the Covenant, id. at 239.
II. The Covenant Moots the Action
The threshold issue before us concerns the scope and
effect of the Covenant. Because I conclude that the Cove-
nant moots the dispute before us, I add to the applicable
standards articulated by the majority and provide reasons
for my disagreement.
A. Choice of Law and Standard of Review
“[Q]uestions of the district court’s jurisdiction” over a
dispute concerning patent infringement and validity “are
always determined under Federal Circuit law.” Schreiber
Foods, Inc. v. Beatrice Cheese, Inc., 402 F.3d 1198, 1202
(Fed. Cir. 2005) (addressing, inter alia, mootness in an
appeal concerning patent infringement and validity). Our
law applies “because the jurisdictional issue is intimately
involved with the substance of the patent laws,” Avocent
Huntsville Corp. v. Aten Int’l Co., 552 F.3d 1324, 1328
(Fed. Cir. 2008) (internal quotation marks and citation
omitted), and “the development of the [substance of the]
patent law[s] . . . falls within the exclusive subject matter
responsibility of this court,” Mars Inc. v. Kabushiki–
Kaisha Nippon Conlux, 24 F.3d 1368, 1371 (Fed. Cir.
1994) (internal quotation marks and citation omitted).
We review the denial “of a motion to dismiss for lack of
subject matter jurisdiction de novo” and “factual findings
underlying the jurisdiction determination for clear error.”
Microsoft Corp. v. GeoTag, Inc., 817 F.3d 1305, 1311 (Fed.
Cir. 2016) (internal quotation marks and citation omit-
ted).
6 ARCELORMITTAL v. AK STEEL CORPORATION
B. No Substantial Controversy of Sufficient Immediacy
and Reality Remained for the District Court to Resolve
Appellants argue that the District Court erred by fail-
ing to dismiss the action because the Covenant “uncondi-
tional[ly]” eliminated “any current or future case or
controversy between the parties” as to the RE153 patent
and Appellees otherwise failed to demonstrate the exist-
ence of a substantial controversy of sufficient immediacy.
Appellants’ Br. 30, 30–31 (internal quotation marks and
citation omitted). I agree.
1. Legal Framework
The Constitution delegates certain powers across the
three branches of the Federal Government and places
limits on those powers. See INS v. Chadha, 462 U.S. 919,
951 (1983) (The Constitution “divide[s] the delegated
powers of the . . . federal government into three defined
categories, legislative, executive[,] and judicial, to as-
sure . . . that each Branch of government . . . confine[s]
itself to its assigned responsibility.”). Article III of the
Constitution discusses the powers granted to the Judicial
Branch and, inter alia, “confines the judicial power of
federal courts to deciding actual ‘Cases’ or ‘Controver-
sies.’” Hollingsworth v. Perry, 133 S. Ct. 2652, 2661
(2013) (quoting U.S. Const. art. III, § 2). “To qualify as a
case fit for federal-court adjudication, an actual [case or]
controversy must be extant at all stages of review, not
merely at the time the complaint is filed.” Arizonans for
Official English v. Arizona, 520 U.S. 43, 67 (1997) (inter-
nal quotation marks and citation omitted).
The Supreme Court has provided for the application
of a particular test to determine whether a claim for
declaratory judgment, like Appellees’ noninfringement
and invalidity counterclaims, presents a case or contro-
versy sufficient for Article III purposes. A declaratory
judgment claim must pertain to “a substantial controver-
sy, between [the] parties having adverse legal interests, of
ARCELORMITTAL v. AK STEEL CORPORATION 7
sufficient immediacy and reality to warrant the issuance
of a declaratory judgment.” MedImmune, Inc. v. Genen-
tech, Inc., 549 U.S. 118, 127 (2007) (internal quotation
marks, citation, and footnote omitted). The “party seek-
ing a declaratory judgment has the burden of establish-
ing” that such a controversy exists. Cardinal Chem. Co.
v. Morton Int’l, Inc., 508 U.S. 83, 95 (1993) (citation and
footnote omitted).
Because “an intervening circumstance [may] deprive[]
[a party] of a personal stake in the outcome of the law-
suit[] at any point during litigation,” Campbell-Ewald Co.
v. Gomez, 136 S. Ct. 663, 669 (2016) (internal quotation
marks and citation omitted), the mootness doctrine en-
sures that federal courts operate within their constitu-
tional limits. “A case becomes moot—and therefore no
longer a Case or Controversy for purposes of Article III—
when the issues presented are no longer live or the par-
ties lack a legally recognizable interest in the outcome.”
Already, LLC v. Nike, Inc., 133 S. Ct. 721, 726 (2013)
(internal quotation marks and citation omitted). In other
words, “[a] case becomes moot . . . only when it is impossi-
ble for a court to grant any effectual relief whatever to the
prevailing party.” Campbell-Ewald, 136 S. Ct. at 669
(internal quotation marks and citation omitted). If “the
parties have a concrete interest, however small, in the
outcome of the litigation, the case is not moot.” Id. (inter-
nal quotation marks and citation omitted).
2. The Mootness Doctrine Applies Here
The Covenant moots the instant action because it
leaves no live controversy for judicial resolution. To
determine the breadth of a covenant, we look to its terms.
See Already, 133 S. Ct. at 727–28 (“[W]e begin our analy-
sis with the terms of the covenant.”). The Covenant
“irrevocably” prohibits Appellants from suing Appellees
“and the[ir] customers” for (1) “any use” of the RE153
patent and (2) “all actions in connection with [the] manu-
8 ARCELORMITTAL v. AK STEEL CORPORATION
facture and sale” of products based on the RE153 patent.
J.A. 5220–21 (emphasis added). The Covenant applies to
all actions and products based on the RE153 patent,
regardless of the timing of those actions and products.
See J.A. 5220–21 (including present progressive and
present perfect tenses of “make,” “have,” “use,” “sell,” and
“import”); see also Oral Argument at 4:35–5:17, http://oral
arguments.cafc.uscourts.gov/default.aspx?fl=2016-
1357.mp3 (confirming that the Covenant applies to future
actions based on the RE153 patent). Contrary to the
District Court’s conclusion and Appellees’ arguments, see
ArcelorMittal VI, 147 F. Supp. 3d at 236, 239 n.17; Appel-
lees’ Br. 46–50 (arguing that the Covenant is conditional),
the Covenant does not require the satisfaction of a condi-
tion precedent to take effect, see J.A. 5220–21. The ap-
propriate representatives signed and dated the Covenant
before Appellants submitted it to the District Court. J.A.
5221–22. Thus, the Covenant’s terms extinguished any
substantial controversy of sufficient immediacy between
the parties concerning the RE153 patent, the only patent
at issue in the instant action. See MedImmune, 549 U.S.
at 127; see also Already, 133 S. Ct. at 732 (“Already’s only
legally cognizable injury—the fact that Nike took steps to
enforce its trademark—is now gone,” thus mooting the
action.). And without a live issue to resolve as to the
RE153 patent, the District Court could not grant any
effectual relief to Appellees. See Campbell-Ewald, 136 S.
Ct. at 669.
The majority does not dispute that under Supreme
Court precedent our analysis must begin with the Cove-
nant’s terms. See Maj. Op. 6–11. Nevertheless, instead of
beginning its analysis with those terms, the majority
weighs the totality of the circumstances. See id. The
majority states that governing law permits it to conduct a
review of the totality of the circumstances, citing Prasco,
LLC v. Medicis Pharmaceutical Corp. Id. at 7 (citing 537
F.3d 1329, 1336 (Fed. Cir. 2008)). Prasco states that,
ARCELORMITTAL v. AK STEEL CORPORATION 9
although the totality of the circumstances “standard can
be analyzed directly, the Supreme Court has also devel-
oped various more specific but overlapping doctrines
rooted in the same Article III inquiry, which must be met
for a controversy to be justiciable, including standing,
ripeness, and a lack of mootness.” 537 F.3d at 1336
(emphases added) (citations omitted). Prasco states
further that, because “satisfying these doctrines repre-
sents the absolute constitutional minimum for a justicia-
ble controversy, they can be a helpful guide in applying
the all-the-circumstances test.” Id. (emphasis added)
(citation omitted). As a consequence, I do not follow the
majority’s approach and, instead, follow the more-specific
mootness test articulated by the Supreme Court in Al-
ready. Indeed, the application here of the test articulated
in Already (rather than the more general test articulated
in MedImmune and adopted by the majority) is particu-
larly appropriate because Already, like the appeal before
us, involved a declaratory judgment claim. See 133 S. Ct.
at 726.
In any event, I disagree with the majority’s analysis of
the totality of the circumstances. The majority first
determines that “[a]t no time before the [District Court]
entered summary judgment did [Appellants] uncondition-
ally assure [Appellees] and their customers that it would
never assert” claims 24–25 of the RE153 patent “against
them.” Maj. Op. 8. The majority proceeds to describe the
series of events leading to Appellants’ filing of the Cove-
nant and to fault Appellants for not filing the Covenant
sooner than they did. See id. at 8–9; see also id. at 9
(“This outcome results from events that were entirely
within [Appellants’] control.”). Neither the procedural
history predating the filing of the Covenant nor our
perceptions as to Appellants’ timing can overcome the
maxim that an action may become moot “at any point
during litigation.” Campbell-Ewald, 136 S. Ct. at 669
(internal quotation marks and citation omitted).
10 ARCELORMITTAL v. AK STEEL CORPORATION
The majority next determines that “the [cover] letter
and executed [C]ovenant . . . were also qualified.” Maj.
Op. 9. In reaching that conclusion, however, the majority
does not assess the Covenant’s terms. See id. Instead,
the majority relies only upon the terms of the cover letter.
See id. (citing J.A. 5218). An analysis of the Covenant’s
terms reveals that it contains no conditional terms, as the
majority concedes. See id. at 4 (describing the Covenant
as “facially unconditional”). Although Appellants condi-
tionally tendered the Covenant to the District Court, the
Covenant itself contained no conditions precedent and
was fully executed. See J.A. 5218 (where, in a cover letter
accompanying the “executed [C]ovenant,” Appellants
conditionally tendered the Covenant to the District
Court), 5220–21 (where the executed Covenant contained
no conditions).
In discerning a covenant’s scope and effect, we rely on
its terms, not evidence extrinsic to the stipulation such as
terms in an accompanying cover letter. See Already, 133
S. Ct. at 728. Covenants not to sue may come in many
different forms, though all have the same effect of moot-
ing the litigation so long as their terms extinguish all
remaining substantial controversies. See, e.g., Organic
Seed Growers & Trade Ass’n v. Monsanto Co., 718 F.3d
1350, 1357–61 (Fed. Cir. 2013) (equating a party’s repre-
sentations to a covenant not to sue and mooting the
action, despite the party not reducing the statements to
writing); King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d
1267, 1282–83 (Fed. Cir. 2010) (finding that “broad and
unrestricted” written covenants not to sue “remove[d] any
case or controversy that may have existed between the
parties at one point”); Dow Jones & Co. v. Ablaise Ltd.,
606 F.3d 1338, 1345–49 (Fed. Cir. 2010) (finding that a
proposed, rather than fully executed, covenant mooted the
action); Super Sack Mfg. Corp. v. Chase Packaging Corp.,
57 F.3d 1054, 1058–60 (Fed. Cir. 1995) (finding that a
covenant not to sue, which counsel signed and included in
ARCELORMITTAL v. AK STEEL CORPORATION 11
motion papers, mooted the action because no “present
activity” placed a party at risk of an infringement suit),
abrogated on other grounds by MedImmune, 549 U.S. 118.
When as here a covenant’s terms are unambiguous, we
may not interpret those terms using extrinsic evidence,
such as a cover letter. 4 See, e.g., Coast Fed. Bank, FSB v.
United States, 323 F.3d 1035, 1040 (Fed. Cir. 2003) (en
banc) (explaining that a party “cannot rely on extrinsic
evidence” to interpret a phrase in a manner that “contra-
dict[s] the plain language of” a contract); see also Re-
statement (Second) of Contracts § 285 (Am. Law Inst.
1981) (describing a covenant not to sue as a “contract”). 5
Even if the cover letter is relevant here, I find the ma-
jority’s analysis of its terms unpersuasive. The majority
regards as dispositive Appellants’ statement in the cover
letter that it had conditionally tendered the Covenant to
the District Court. See Maj. Op. 4, 9. That position has
two problems. First, the majority ignores the statement
in the cover letter that the Covenant is “executed” and
fails to explain why it has elevated one aspect of the cover
letter over another. See id.; see also J.A. 5218 (explaining
4 The majority states that “contract law princi-
ples . . . permit us to look outside the terms of the
[C]ovenant itself.” Maj. Op. 10 n.2. Although under
certain circumstances that is correct as a general matter,
that position overlooks the precepts that “[c]ontract
interpretation begins with the language of the written
agreement,” NVT Techs., Inc. v. United States, 370 F.3d
1153, 1159 (Fed. Cir. 2004) (citation omitted), and that
extrinsic evidence cannot supplant a contract’s unambig-
uous terms, see City of Tacoma v. United States, 31 F.3d
1130, 1134 (Fed. Cir. 1994).
5 I rely upon general rules of contract interpretation
because the Covenant does not specify which law governs
the interpretation of its terms. See J.A. 5218–22.
12 ARCELORMITTAL v. AK STEEL CORPORATION
that Appellants “provide[d] a copy of the executed
[C]ovenant with” the cover letter). We do not construe a
covenant not to sue in a manner that fails “to harmonize
and give reasonable meaning to all of its parts.” NVT
Techs., 370 F.3d at 1159 (citation omitted). Second, and
perhaps more importantly, Appellants’ description in the
cover letter of the manner in which they delivered the
Covenant to the District Court (i.e., conditionally) does
not inform the effect of the Covenant itself. Because the
relevant terms of the cover letter and Covenant state that
the Covenant was “executed” and applied to “all actions”
related to the RE153 patent, J.A. 5218, 5221, it extin-
guished all live disputes between the parties as to that
patent, irrespective of how Appellants ultimately decided
to submit the Covenant. See Organic Seed Growers, 718
F.3d at 1357–61 (equating a party’s representations to a
covenant not to sue and mooting the action, despite the
party not reducing the statements to writing).
In the end, the majority treats as dispositive Appel-
lants’ characterization of the manner in which they sub-
mitted the Covenant to the District Court. See Maj. Op.
9–11. That approach elevates a procedural gimmick over
substance and permits a party to dictate whether a case
has become moot. Precedent demands that we inde-
pendently examine mootness, cf. Bender v. Williamsport
Area Sch. Dist., 475 U.S. 534, 541 (1986) (“[E]very federal
appellate court has a special obligation to satisfy it-
self . . . of its own jurisdiction, . . . even though the parties
are prepared to concede it.” (internal quotation marks and
citation omitted)), and that we do so by assessing the
relevant terms of a covenant not to sue, see Already, 133
S. Ct. at 727–28. For the reasons provided above, I con-
clude that the Covenant, even when read together with
the cover letter, extinguished all live disputes between
the parties.
ARCELORMITTAL v. AK STEEL CORPORATION 13
3. The Voluntary Cessation Exception
Does Not Apply Here
The analysis here cannot end by finding the action
moot. An exception to the mootness doctrine—the volun-
tary cessation doctrine—addresses situations in which a
federal court retains jurisdiction over a matter despite the
apparent end of any live case or controversy. According to
that doctrine, a party “cannot automatically moot a case
simply by ending its unlawful conduct once sued” because,
if permitted to do so, the party “could engage in unlawful
conduct, stop when sued to have the case declared moot,
then pick up where [it] left off, repeating this cycle until
[it] achieves all [its] unlawful ends.” Already, 133 S. Ct.
at 727 (citation omitted). For that reason, “maneuvers
designed to insulate” conduct from judicial review “must
be viewed with a critical eye.” Knox v. Serv. Emps. Int’l
Union, Local 1000, 132 S. Ct. 2277, 2287 (2012). To
demonstrate that its new position moots the action,
Appellants “bear[] the formidable burden of showing that
it is absolutely clear the allegedly wrongful behavior could
not reasonably be expected to recur.” Friends of the
Earth, Inc. v. Laidlaw Envtl. Servs. (TOC), Inc., 528 U.S.
167, 190 (2000) (citation omitted).
The scope of the Covenant meets the burden imposed
by the voluntary cessation test. The Covenant is uncondi-
tional and irrevocable. J.A. 5220–21. It not only prohib-
its suit against Appellees for their activities and
products—past, present, and future—based on the RE153
patent, it also protects their customers from suit for the
same. J.A. 5221. Moreover, Appellants’ stipulation
means that judicial estoppel will prevent them from later
changing their position on the matters covered by the
Covenant. See, e.g., Organic Seed Growers, 718 F.3d at
1358–59. Thus, Appellants could not reasonably be
expected to sue Appellees anew for their activities and
products related to the RE153 patent. See, e.g., Friends of
the Earth, 528 U.S. at 190.
14 ARCELORMITTAL v. AK STEEL CORPORATION
Because Appellants demonstrate that the Covenant
“encompasses all of [the] allegedly unlawful conduct”
related to the RE153 patent, the burden shifts to Appel-
lees “to indicate that [they] engage[] in or ha[ve] suffi-
ciently concrete plans to engage in activities not covered
by the [C]ovenant.” Already, 133 S. Ct. at 728. Appellees
have not met that burden. At no point before the District
Court did Appellees allege that they had such plans, see
J.A. 5047–69 (Appellees’ Brief in Opposition to Appel-
lants’ Motion to Dismiss), 5246–55 (Hearing Transcript),
and their brief on appeal does not include any such alle-
gations, see generally Appellees’ Br. That Appellants sued
Appellees in the past for conduct related to the RE153
patent cannot provide the requisite evidence to overcome
mootness. See Already, 133 S. Ct. at 730 (explaining that
past litigation between the parties does not provide a live
case or controversy sufficient to maintain the subject
action). Without more, Appellees have failed to demon-
strate that they harbor a reasonable expectation of addi-
tional litigation related to the RE153 patent. See id. at
729 (“Given the covenant’s broad language, and given that
Already has asserted no concrete plans to engage in
conduct not covered by the covenant, we can conclude the
case is moot because the challenged conduct cannot
reasonably be expected to recur.”); cf. Revolution Eyewear,
Inc. v. Aspex Eyewear, Inc., 556 F.3d 1294, 1298–1300
(Fed. Cir. 2009) (holding that a district court retained
jurisdiction where a party provided affirmative evidence
that it had concrete plans to engage in conduct not cov-
ered by a covenant not to sue).
4. Appellees’ Remaining Arguments Fail
Appellees’ remaining arguments do not persuade me
to find that an actual case or controversy remained for the
District Court to resolve. First, Appellees contend that we
should not address jurisdiction because Appellants failed
to raise certain arguments before the District Court, see
Appellees’ Br. 43–46, but federal courts must ensure that
ARCELORMITTAL v. AK STEEL CORPORATION 15
an actual case or controversy endures throughout “all
stages of review, not merely at the time the complaint is
filed,” Arizonans, 520 U.S. at 67 (internal quotation
marks and citation omitted).
Second, Appellees contend that the District Court had
resolved “the merits of [the] infringement claims” by the
time Appellants proffered the Covenant, such that Fort
James Corp. v. Solo Cup Co. barred the District Court
from dismissing the action as moot. Appellees’ Br. 53
(discussing 412 F.3d 1340 (Fed. Cir. 2005)). In Fort
James, we held that a covenant not to sue executed after
a jury rendered its verdict had no effect. See 412 F.3d at
1348. The subject action does not fall within the excep-
tion articulated in Fort James because the District Court
did not enter its noninfringement summary judgment
until after Appellants executed the Covenant. Compare
ArcelorMittal VI, 147 F. Supp. 3d at 232 (where the
District Court issued the opinion on December 4, 2015),
with J.A. 5222 (where the final signatories signed the
Covenant on November 12, 2015).
Third, Appellees argue that our holding in ArcelorMit-
tal III bars enforcement of the Covenant. Appellees’ Br.
52–53. Because ArcelorMittal III held that claim 1 of the
’805 patent is not infringed under the doctrine of equiva-
lents and that holding applies with equal force to claims
24–25 of the RE153 patent, Appellees aver that the Cove-
nant cannot undo our prior decision. See id. In Arce-
lorMittal III, however, we declined to address whether
Appellees infringed claim 1 of the ’805 patent under the
doctrine of equivalents. See 700 F.3d at 1318, 1322. We
did not address the merits of that finding because Appel-
lants did not challenge it, instead asserting that the issue
should be remanded because of incorrect claim construc-
tions. See Corrected Opening Brief of Plaintiffs-
Appellants Arcelormittal France and Arcelormittal Atlan-
tique et Lorraine, No. 2011-1638, 2012 WL 561484, at *44
(Fed. Cir. Jan. 9, 2012). Because we do not address
16 ARCELORMITTAL v. AK STEEL CORPORATION
“issues not presented on appeal,” Pentax Corp. v. Robin-
son, 135 F.3d 760, 762 (Fed. Cir. 1998) (citation omitted),
our decision in ArcelorMittal III cannot be construed as
having affirmed the jury’s finding of noninfringement
under the doctrine of equivalents, particularly when the
jury’s noninfringement finding rested on an incorrect
construction of a relevant limitation, see Cardiac Pace-
makers, Inc. v. St. Jude Med., Inc., 381 F.3d 1371, 1383
(Fed. Cir. 2004) (stating that an erroneous instruction on
claim interpretation that affects the jury’s verdict on
infringement is grounds for a new trial).
Finally, Appellees contend that the Covenant did not
extinguish the controversy between the parties because
“it did not protect [Appellees]’ indirect customers from
claims of infringement under the RE153 patent and did
not protect [Appellees] against claims of infringement
under the related RE940 patent.” Appellees’ Br. 56.
However, Appellees have not identified any “indirect
customers” against whom Appellants have asserted the
RE153 patent or explained how such a suit would provide
them with a reasonable expectation of further litigation
based on the RE153 patent. See id. at 56–57. Moreover,
Appellees do not explain how Appellants’ suit against
them based on the RE940 patent (i.e., the 685 case) pro-
vides them with a reasonable expectation of further
litigation on the RE153 patent, particularly after Appel-
lants executed the Covenant. See Appellees’ Br. 57–58.
Thus, Appellees’ “speculation does not give rise to the sort
of concrete and actual” controversy needed to comport
with Article III of the Constitution. Already, 133 S. Ct. at
730 (internal quotation marks and citation omitted).
III. Conclusion
Because the Covenant made it “absolutely clear” that
Appellants would not pursue further any infringement
claims against Appellees based on the RE153 patent,
Friends of the Earth, 528 U.S. at 190, no case or contro-
ARCELORMITTAL v. AK STEEL CORPORATION 17
versy remained for the District Court to resolve. Without
a live “personal interest” to satisfy the Article III case or
controversy requirement, Arizonans, 520 U.S. at 68 n.22
(internal quotation marks and citation omitted), the
dispute before the District Court became moot. With the
dispute before the District Court rendered moot, I would
“set aside the decree below and . . . remand the cause with
directions to dismiss.” Duke Power Co. v. Greenwood Cty.,
299 U.S. 259, 267 (1936).