BlueScope Steel Limited v Dongkuk Steel Mill Co., Ltd (No 3) [2020] FCA 113

BlueScope Steel Limited v Dongkuk Steel Mill Co., Ltd (No 3) [2020] FCA 113

Although Dongkuk was successful overall in defeating infringement, invalidating numerous asserted claims and resisting the amendment application, it failed on several invalidity grounds including novelty, inventive step, clarity, fair basis, sufficiency and false suggestion, and those unsuccessful grounds consumed significant resources. Exercising the costs discretion, a compendious apportionment was warranted, with BlueScope to pay two-thirds of Dongkuk's party-party costs of and incidental to the proceeding, subject to earlier costs orders.

Jurisdiction
Australia
Judgment Date
11 February 2020
Procedural Posture
Patents Proceeding Concerning Consequential Orders and Costs / Consequential Orders After Judgment, Heard on the Papers
Outcome
Consequential orders made; specified patent claims declared invalid and revoked, claim and cross-claim otherwise dismissed, amendment application dismissed, revocation orders stayed, and BlueScope ordered to pay two-thirds of Dongkuk's costs subject to prior costs orders.
Legal Topics
['apportionment of Costs as Between Issues' 'consequential Orders' 'patent Invalidity' 'patent Revocation' 'stay of Revocation Orders']
['patents' 'costs'] ['apportionment of Costs as Between Issues' 'consequential Orders' 'patent Invalidity' 'patent Revocation' 'stay of Revocation Orders']

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Procedural Posture

Patents Proceeding Concerning Consequential Orders and Costs / Consequential Orders After Judgment, Heard on the Papers

Legal Issues

  1. 1 ['Whether Dongkuk should recover all of its party-party costs or whether costs should be apportioned to reflect issues on which it was unsuccessful.' 'What consequential orders should be made following findings that asserted patent claims were invalid and not infringed.' 'Whether revocation orders should be stayed pending any appeal.']

Ratio Decidendi

Although Dongkuk was successful overall in defeating infringement, invalidating numerous asserted claims and resisting the amendment application, it failed on several invalidity grounds including novelty, inventive step, clarity, fair basis, sufficiency and false suggestion, and those unsuccessful grounds consumed significant resources. Exercising the costs discretion, a compendious apportionment was warranted, with BlueScope to pay two-thirds of Dongkuk's party-party costs of and incidental to the proceeding, subject to earlier costs orders.

Court Disposition

Consequential orders made; specified patent claims declared invalid and revoked, claim and cross-claim otherwise dismissed, amendment application dismissed, revocation orders stayed, and BlueScope ordered to pay two-thirds of Dongkuk's costs subject to prior costs orders.

Orders

  • ['Each of claims 1, 3, 4, 5, 6, 7, 8, 9, 11, 12, 13, 14, and 15 of Australian Patent number 2009225257 titled "Metal-coated steel strip" (257 Patent) is and at all material times has been invalid.' 'Each of claims 12, 22, 23, 24 and 25 of Australian Patent number 2009225258 titled "Metal-coated steel strip" (258...