BlueScope Steel Limited v Dongkuk Steel Mill Co., Ltd [2017] FCA 1537

BlueScope Steel Limited v Dongkuk Steel Mill Co., Ltd [2017] FCA 1537

Category 1 documents were relevant to inventive step only in a secondary sense, and the current Federal Court discovery regime does not justify broad Peruvian Guano-style discovery of such material. Given the narrower appropriate time frame, the discovery already made, and the disproportionate burden and cost of broader discovery, no further category 1 discovery order should be made. Category 2 discovery was refused for reasons including relevance and legal professional privilege. Categories 3 to 7 were ordered only in the narrowed terms agreed by the parties.

Jurisdiction
Australia
Judgment Date
18 December 2017
Procedural Posture
Interlocutory Application in Patent Infringement and Invalidity Proceedings Concerning Discovery / Discovery Dispute
Outcome
Application granted in part.
Legal Topics
['discovery' 'inventive Step' "inventor's Notes" 'best Method' 'legal Professional Privilege' 'proportionality']
['practice and Procedure' 'intellectual Property' 'patents'] ['discovery' 'inventive Step' "inventor's Notes" 'best Method' 'legal Professional Privilege' 'proportionality']

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Procedural Posture

Interlocutory Application in Patent Infringement and Invalidity Proceedings Concerning Discovery / Discovery Dispute

Legal Issues

  1. 1 ["Whether BlueScope should give discovery of inventor's notes, invention disclosure statements, experimental reports and related documents in category 1 as relevant to inventive step and best method." 'Whether category 1 discovery should extend to the date of grant of the patents or be limited to a narrower period.' 'Whether BlueScope had already discovered relevant category 1 documents and whether further discovery would be oppressive or disproportionate.' 'Whether discovery should be ordered for documents concerning testing of the 2017 GLX Product in category 2.' 'Whether discovery should be ordered for categories 3 to 7 in narrowed terms.']

Ratio Decidendi

Category 1 documents were relevant to inventive step only in a secondary sense, and the current Federal Court discovery regime does not justify broad Peruvian Guano-style discovery of such material. Given the narrower appropriate time frame, the discovery already made, and the disproportionate burden and cost of broader discovery, no further category 1 discovery order should be made. Category 2 discovery was refused for reasons including relevance and legal professional privilege. Categories 3 to 7 were ordered only in the narrowed terms agreed by the parties.

Court Disposition

Application granted in part.

Orders

  • ['Within 48 hours, the parties file minutes of orders to accord with these reasons and the ex tempore determinations made on 1 December 2017.' 'No discovery order was made concerning category 1.' 'Discovery in category 2 was refused.' 'Discovery in categories 3 to 7 was to be ordered in the reformulated narrowed...