Steel Mills

Intellectual Property Dispute Ruled in Favor of US Steel Canada

Written by Sandy Williams

An attempt by US Steel to prevent US Steel Canada from continuing to use processes the parent company developed for high strength steels, has been thwarted by the Ontario Superior Court.

US Steel claims it owns the intellectual property used by USSC, including the processes used to produce various grades of advanced high strength steel. A Transition Arrangement between USSC and US Steel Corp. was established in October 2015 in which the parties agreed to resolve issues on property rights by December 31, 2015.

The agreement said: “Until closing of a transaction to sell all or substantially all assets of USSC, USSC is permitted to continue to use all intellectual property currently used by or available to it and owned or licensed by USS, if any, necessary to operate its business in the ordinary course, including retaining the right to use the name and brand ‘Stelco.’”

In May 2016, US Steel wrote to USSC counsel claiming again ownership of the intellectual property used by USSC and contested USSC’s entitlement to convey the rights to it in a sale of the company.

US Steel Canada filed a motion with the Ontario Superior Court on May 30 asking for the court to establish a claims process to identify and determine the intellectual property rights claimed by former parent corporation US Steel.

In an email last week a spokesperson for US Steel Canada commented on the motion, “It is worthy of note that it is USSC that has brought this matter before the Court to seek clarity on the issue. To date, no mutually acceptable resolution has been reached during good faith discussions as USS has not provided sufficient information regarding the nature of their claims, the specific trade secrets in question, nor the basis for their allegations.”

US Steel requested the motion be denied, claiming that the process would require a “significant amount of time and effort on behalf of USS.”

“Such an exercise is both unreasonable and unnecessary as it does not make sense to waste time and expense identifying potential intellectual property claims which may not be contested by USSC and may
have no bearing on the SISP,” wrote counsel for US Steel.

US Steel Canada prevailed with Justice Wilton Siegel defining the IP claims process. US Steel was ordered to provide to USSC by June 17 a description of all the intellectual property it is claiming. USSC is to review the information with the court-appointed monitor and any continuing disputes will be settled in court in July.

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