BlueScope Steel Limited v Dongkuk Steel Mill Co., Ltd (No 2) [2019] FCA 2117

BlueScope Steel Limited v Dongkuk Steel Mill Co., Ltd (No 2) [2019] FCA 2117

BlueScope failed to prove infringement of either the 257 or 258 Patent because its testing protocols and sample sizes were inadequate to establish every relevant claim integer, particularly coating thickness variation and Mg2Si distribution; moreover, BlueScope’s specifications for both patents failed to disclose the best method known at filing for minimising short range thickness variations, invalidating all asserted 257 Patent claims and relevant claims of the 258 Patent. BlueScope’s amendment application to the 257 Patent was refused on discretionary grounds including unreasonable delay, lack of full and frank disclosure, and the unfair advantage gained by non-disclosure. Dongkuk’s...

Jurisdiction
Australia
Judgment Date
17 December 2019
Procedural Posture
Patent Infringement and Revocation Proceedings / Trial Judgment
Outcome
BlueScope’s claim for infringement dismissed; application to amend refused; certain claims of both patents found invalid for failure to disclose best method; other invalidity grounds not established; costs reserved; further submissions and orders invited.
Legal Topics
['patent Infringement' 'patent Validity' 'novelty' 'inventive Step' 'sufficiency' 'best Method' 'amendment of Specification']
['intellectual Property' 'patents'] ['patent Infringement' 'patent Validity' 'novelty' 'inventive Step' 'sufficiency' 'best Method' 'amendment of Specification']

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Procedural Posture

Patent Infringement and Revocation Proceedings / Trial Judgment

Legal Issues

  1. 1 ['Whether the asserted claims of the 257 and 258 Patents are infringed by the GLX product' 'Whether the asserted claims of the patents are invalid for lack of clarity, definition, sufficiency, fair basis, novelty, inventive step, failure to disclose best method, or false suggestion' 'Whether BlueScope’s amendment application should be allowed']

Ratio Decidendi

BlueScope failed to prove infringement of either the 257 or 258 Patent because its testing protocols and sample sizes were inadequate to establish every relevant claim integer, particularly coating thickness variation and Mg2Si distribution; moreover, BlueScope’s specifications for both patents failed to disclose the best method known at filing for minimising short range thickness variations, invalidating all asserted 257 Patent claims and relevant claims of the 258 Patent. BlueScope’s amendment application to the 257 Patent was refused on discretionary grounds including unreasonable delay, lack of full and frank disclosure, and the unfair advantage gained by non-disclosure. Dongkuk’s...

Court Disposition

BlueScope’s claim for infringement dismissed; application to amend refused; certain claims of both patents found invalid for failure to disclose best method; other invalidity grounds not established; costs reserved; further submissions and orders invited.

Orders

  • ['Each party to file and serve by 3 February 2020 minutes of orders and short submissions (max 3 pages) to give effect to these reasons.' 'Costs reserved.' 'Liberty to apply.']