BlueScope Steel Limited v Dongkuk Steel Mill Co., Ltd (No 2)

BlueScope Steel Limited, an Australian steel manufacturer, initiated legal proceedings against Dongkuk Steel Mill Co., Ltd, a South Korean steel producer, in the Federal Court of Australia. The dispute centred on an alleged infringement of a patent related to alloy-coated steel strip products, specifically those with coatings of aluminium, zinc, silicon, and magnesium, and the hot dip coating methods used to produce them. BlueScope alleged that Dongkuk's products infringed its patent, while Dongkuk contested the validity of BlueScope's patent on several grounds, including lack of clarity and definition, lack of a fair basis, lack of sufficiency, failure to disclose the best method, and false suggestion. Dongkuk also claimed that BlueScope's patent lacked novelty and inventive step. Additionally, BlueScope sought to amend the patent specification, invoking sections 102 and 105 of the Patents Act 1990 (Cth).

The court was tasked with determining whether BlueScope's patent was valid and had been infringed by Dongkuk's products. The court also had to decide if BlueScope's application to amend the patent specification should be granted. In assessing the validity of BlueScope's patent, the court considered the arguments presented by both parties regarding the clarity and sufficiency of the patent claims, the adequacy of the disclosure, and the presence of any prior art that might affect the novelty and inventive step of the invention. The court examined the construction of the patent claims and the experimental proof provided by BlueScope to substantiate its infringement allegations. The court ultimately found that while BlueScope had not established infringement, some of the asserted grounds of invalidity were valid, particularly concerning the failure to disclose the best method known to BlueScope at the relevant time.

The court held that BlueScope's patent was partly invalid due to the failure to disclose the best method known to BlueScope at the relevant time. However, the court dismissed all other grounds of invalidity asserted by Dongkuk. The court also refused BlueScope's application to amend the patent specification, exercising its discretion under the relevant sections of the Patents Act. Consequently, BlueScope's claim for infringement was rejected, and Dongkuk's invalidity case partially succeeded. The court reserved costs and granted liberty to apply for further orders to give effect to these reasons.

The court ordered both parties to file and serve minutes of orders and short submissions by a specified date to formalise the outcomes. Costs were reserved pending further submissions, and the parties were granted liberty to apply for additional orders as necessary. This decision underscores the importance of precise patent specifications and the thorough examination of patent validity and infringement claims in the context of complex technological inventions.