BlueScope Steel Limited v Dongkuk Steel Mill Co., Ltd (No 3)

[2020] FCA 113

FEDERAL COURT OF AUSTRALIA

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

File number:

VID 1429 of 2016

Judge:

BEACH J

Date of judgment:

11 February 2020

Catchwords:

PATENTS – costs – apportionment of costs as between issues – consequential orders

Cases cited:

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

Les Laboratories Servier v Apotex Pty Ltd (2016) 247 FCR 61

Date of hearing:

On the papers

Registry:

Victoria

Division:

General Division

National Practice Area:

Intellectual Property

Sub-area:

Patents and associated Statutes

Category:

Catchwords

Number of paragraphs:

25

Counsel for the Applicant and Cross-Respondent:

Mr BN Caine QC and Ms C Cunliffe

Solicitor for the Applicant and Cross-Respondent:

King & Wood Mallesons

Counsel for the Respondent and Cross-Claimant:

Mr A Ryan SC and Mr JS Cooke

Solicitor for the Respondent and Cross-Claimant:

Bird & Bird

ORDERS

VID 1429 of 2016

BETWEEN:

BLUESCOPE STEEL LIMITED ACN 000 011 058

Applicant

AND:

DONGKUK STEEL MILL CO., LTD

Defendant

AND BETWEEN:

DONGKUK STEEL MILL CO., LTD

Cross-Claimant

AND:

BLUESCOPE STEEL LIMITED (ACN 000 011 058)

Cross-Respondent

JUDGE:	BEACH J
DATE OF ORDER:	11 FEBRUARY 2020

THE COURT ORDERS THAT:

1.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.

2.Each of claims 12, 22, 23, 24 and 25 of Australian Patent number 2009225258 titled “Metal-coated steel strip” (258 Patent) is and at all material times has been invalid.

3.It be certified that the validity of each of claims 1, 2, 5, 6, 11, 17, 18, 19, 20 and 21 of the 258 Patent was questioned in this proceeding.

4.Each of claims 1, 3, 4, 5, 6, 7, 8, 9, 11, 12, 13, 14 and 15 of the 257 Patent be revoked.

5.Each of claims 12, 22, 23, 24 and 25 of the 258 Patent be revoked.

6.The claim and the cross-claim otherwise be dismissed.

7.The interlocutory application filed on 13 April 2017 seeking leave to amend the 257 Patent (Amendment Application) be dismissed.

8.Any application by the Applicant/Cross-Respondent for leave to appeal against Order 7 be heard and determined by a Full Court concurrently with, or immediately before, the hearing of any appeal.

9.Orders 4 and 5 be stayed:

(a)initially for a period of 28 days from the date on which these orders are pronounced; and

(b)if any appeal is lodged within that period, until the determination of that appeal and any further appeal therefrom, or further order.

10.Subject to Order 11 below, the Applicant pay two-thirds of the Respondent’s costs of and incidental to the proceeding including the Amendment Application on a party-party basis.

11.Order 10 does not displace any costs order previously made in the proceeding.

THE COURT NOTES THAT:

12.The Applicant/ Cross-Respondent undertakes:

(a)to prosecute any appeal expeditiously;

(b)during the operation of the stay in Order 9, not to assert…