Australia: Dongkuk's Application For Discovery Of Bluescope's R&D And Inventor Documents In Australian Patent Litigation Challenged

Last Updated: 16 May 2018
Article by Ian Pascarl and Aaron Yates

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

In a judgment handed down on 18 December 2017, Justice Beach of the Federal Court of Australia has questioned the appropriateness of a patent challenger obtaining broad discovery from a patentee of documents recording steps taken by inventors to arrive at a claimed patented invention. His Honour has stated that in the age of electronic records and modern case management, any discovery of such documents for the purposes of supporting an obviousness attack on the patent must be "targeted and proportionate". The decision provides a useful summary of the reasons why, as a matter of both legal principle and policy, wide-ranging discovery of R&D documents should not be allowed as a matter of course.

BlueScope issues patent infringement proceedings against Dongkuk

In December 2016, BlueScope Steel Limited (BlueScope) issued proceedings against Dongkuk Steel Mill Co. (Dongkuk) for infringement of certain claims of two BlueScope patents relating to a metal coated steel strip.

In response to the infringement proceeding, Dongkuk filed a cross-claim for revocation of the asserted claims on numerous grounds of alleged invalidity, relevantly including lack of inventive step (obviousness) and a failure to disclose the best method of performing the invention.

Dongkuk's application for discovery of "inventor documents"

With a view to obtaining evidence to support its obviousness and best method attacks, Dongkuk sought discovery of documents held by BlueScope recording experiments undertaken by BlueScope in relation to certain alleged key features of the invention between 1 July 2006 and 8 January 2015 (the date the patents were granted) (the Disputed Category).

BlueScope's approach to Dongkuk's discovery requests

BlueScope subsequently disclosed documents which it considered to be "directly relevant" (the threshold test for standard discovery pursuant to the Federal Court Rules) to the question of the best method known to BlueScope of performing the invention at the filing date of the patents, namely, 13 March 2009.

BlueScope refused to give discovery of other documents falling within the Disputed Category that Dongkuk asserted were relevant to its obviousness case.

Dongkuk's discovery case

In prosecuting its request for discovery of BlueScope's "invention documents", Dongkuk argued that discovery of such documents was "habitually" and "usually" ordered, particularly following the 1981 decision of Justice Aickin in Wellcome.1

It argued that the documents were "directly relevant" to the obviousness issue because they were likely to show that the steps in the development of the alleged invention actually taken by BlueScope's inventors were obvious to ordinary (i.e. non-inventive) persons skilled in the art (PSAs). Dongkuk also referred to the UK case of SKM SA v Wagner Spraytech2 to assert that such documents may also be relevant to the preparation of its expert evidence and to the cross-examination of BlueScope's expert witnesses.

Discovery of inventor documents not "Wellcome"

Justice Beach criticised Dongkuk's approach for the following key reasons:

  1. His Honour said that the Wellcome case relied on by Dongkuk provided greater support for so-called "train of enquiry" discovery, i.e. discovery of documents that may suggest a line of enquiry worthy of investigation. However, the "train of enquiry" approach is not typically permitted under the current rules of the Federal Court and is not appropriate in "the electronic age". As mentioned above, the current Federal Court Rules provide for standard discovery of documents that are "directly relevant" to the issues in dispute.
  2. It is well-settled that whether a claimed invention involves an inventive step is to be assessed from the vantage point of the hypothetical PSA equipped with the common general knowledge and any additional prior art information meeting the requirements of section 7(3) of the Patents Act. Determining whether there is an inventive step does not "involve what the inventor actually did or thought". Documents recording such matters could therefore only have "secondary" (i.e. not direct) relevance on the basis that they might show or confirm that the steps taken by the inventor were inventive or routine for a PSA.
  3. BlueScope had filed evidence suggesting that to provide the further discovery, it would need to work with numerous people and review approximately 40,000 documents. It estimated that this process would likely take 2 months and cost at least $150,000.

His Honour accordingly:

  1. noted that he would be prepared to permit discovery of a targeted category of inventor documents dated before the priority date of the patents and within one year thereafter (being shorter than the 2 year post-priority date discovery period typically applied in the UK); and
  2. held that BlueScope's discovery of "best method" documents constituted sufficient discovery for the purposes of inventive step:

"To require any broader discovery would be disproportionate to the relevance and significance of such material as compared with the expense and burden of giving such discovery".

Reluctance to issue wide-ranging discovery

The case indicates that Australian Courts will closely scrutinise requests for discovery of inventor documents asserted to be relevant to a patent challenger's obviousness allegations. Courts may be reluctant to make orders for such discovery in the face of evidence as to the substantial costs and time that will need to be spent to locate and produce the requested documents, particularly if the documents cannot be said to be directly relevant to any other grounds of asserted invalidity.


1 Wellcome Foundation Limited v V.R. Laboratories (Aust) Pty Ltd (1981) 148 CLR 262.

2 SKM SA v Wagner Spraytech (UK) Limited [1982] RPC 497

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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