Occupational and Medical Innovations Limited (ACN 091 192 871) v Retractable Technologies Inc (No 2) [2007] FCA 1932

FEDERAL COURT OF AUSTRALIA

Occupational and Medical Innovations Limited (ACN 091 192 871) v Retractable Technologies Inc (No 2) [2007] FCA 1932

OCCUPATIONAL AND MEDICAL INNOVATIONS LIMITED (ACN 091 192 871) v RETRACTABLE TECHNOLOGIES INC QUD 146 OF 2006

DOWSETT J

30 AUGUST 2007

BRISBANE IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY QUD 146 OF 2006

BETWEEN: OCCUPATIONAL AND MEDICAL INNOVATIONS LIMITED (ACN 091 192 871)

Applicant

AND: RETRACTABLE TECHNOLOGIES INC

Respondent

JUDGE: DOWSETT J

DATE OF ORDER: 30 AUGUST 2007

WHERE MADE: BRISBANE

THE COURT ORDERS THAT:

1. the respondent's application seeking the deferment of the delivery of judgment in the matter be refused. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY QUD 146 OF 2006

BETWEEN: OCCUPATIONAL AND MEDICAL INNOVATIONS LIMITED (ACN 091 192 871)

Applicant

AND: RETRACTABLE TECHNOLOGIES INC

Respondent

JUDGE: DOWSETT J

DATE: 30 AUGUST 2007

PLACE: BRISBANE

REASONS FOR JUDGMENT 1 I am presently concerned with an application for declaratory and injunctive relief in connection with allegedly unjustifiable threats of proceedings for patent infringement made by the respondent to the applicant. 2 Yesterday, my associate indicated to the parties that I would deliver judgment this afternoon and, today, shortly before I came down to deliver judgment, I was told that the solicitor for the respondent had contacted my chambers, indicating that the respondent intended to seek deferment of my delivery of judgment, the reason for that request being that certain documents had recently come into its possession. 3 The hearing of the application for relief in connection with threats was not the first time on which I have heard this matter. Some time earlier this year, I think, or perhaps late last year, I heard an application for premature discovery in connection with the respondent's intention to cross-claim in the threats proceedings for relief based upon misuse of confidential information and/or patent infringement. I refused that application. 4 I subsequently heard the application in connection with threats, although I did not hear an associated application by the present applicant for a declaration of non-infringement, that is, that exploitation of its own patent would not infringe a patent held by the respondent. That matter remains to be considered. The matter was raised quite late in the proceedings. I did not consider it appropriate to deal with it at the same time as I dealt with the allegation of unjustifiable threats. 5 To my mind, the material which has now come into the hands of the respondent does not significantly change the position with respect to the threats, although it may have made some difference to the application for premature discovery, at least if the relevant material were properly proven. At the moment, it is not known whether the documents are, in fact, the applicant's documents, or whether they are some form of manufactured evidence designed to cause embarrassment. However, as I say, taking them at face value, I do not think that they are of great significance in connection with the present proceedings. The first document, which is at p 4 of the exhibit to Ms Lawson's affidavit, read by leave today, shows a diagram of a syringe, about which this case is concerned. On the diagram are the words: 'The cap locations are the same as RTI (the respondent). In fact, the entire front end of the syringe and the cap is identical to RTI. This does not make us comfortable.' 6 That document is dated 14 November 2003, almost a year before the first alleged threat. The only inference to be drawn from that letter is that, in November 2003, the applicant was concerned about the possibility of infringing the respondent's patent or industrial design; it is not quite clear which. Such a concern is understandable and in no sense demonstrates any intention to engage in misconduct of any kind. 7 At p 22 of the exhibit, there is a statement that China Double Dove Group Co Limited confirms that China Medical Group is a wholly owned subsidiary of Double Dove. Double Dove is a company with which the respondent has been dealing and against whom it alleges a breach of confidence. China Medical Group is the proposed manufacturer of the applicant's syringes. That there is an association between these companies was known at the hearing of the application for premature discovery, although it may be that this letter suggests that the applicant knew more about that matter than, at that time, it conceded. That may, again, have gone to the question of premature discovery, but it does not, as far as I can see, go to the question of threats. At p 34 there is a document which, on its face, suggests that officers of the applicant knew rather more about the relationship between the respondent and Double Dove than was admitted before me at the premature discovery hearing, but, again, I cannot see that it has any significant relationship to the threats proceedings. 8 Finally, at p 60, reference is made to the last paragraph on that page which suggests that Mr Horstman, who may have been an agent or officer of the applicant, was involved in making a particular application in the United States, about which, in the premature disclosure application, the applicant claimed to have no knowledge. That matter also seems to relate more to the application for premature discovery than to the threats proceedings. 9 Mr Logan for the respondent submits that these documents may have influenced the way in which the respondent conducted the threats proceedings in three different ways. Firstly, he suggests that there may have been a basis for pleading justification. That seems to be put on the basis that, although the respondent did not know what the applicant was up to at the time it made the threats, had it known it could have made justifiable threats. To state the proposition in that way demonstrates that it is false. 10 Secondly, it is said that the information may have had an impact on the way in which the applicant understood the threats and that matter would, in turn, be relevant in determining whether or not an ordinary person in the position of the applicant would have understood that the relevant communication constituted a threat. In my view, the material says very little about the state of mind of the applicant at any relevant time. I cannot see that it would have been of any material significance in the threats proceedings. 11 Finally, it is said that the applicant's entitlement to relief in the threats proceedings may have been affected by its approach to litigation, particularly in connection with false information. However, the applicant did not lead any substantial evidence in connection with the threats proceedings. Again, this criticism appears to focus more on the application for premature discovery than on the current proceedings. I cannot see that it could have affected its right to relief in connection with the threats. 12 In those circumstances, I am not minded to defer delivery of the judgment. Of course, if, on reconsideration of the material, the respondent comes to the conclusion that I am wrong about that, then it can appeal, either against my refusal to defer delivery of judgment or against the judgment itself, and seek to lead further evidence. That is not a matter with which I am presently concerned. It would, I think, be unfair and not in the best interests of either party for me to further delay this matter. 13 I have come to the conclusion that I should declare that threats of infringement proceedings pursuant to the Patents Act 1990 Commonwealth, made on behalf of the respondent in a letter dated 5 October 2004, are unjustifiable. I do not propose to make any further order by way of principal relief. 14 I publish my reasons. I will hear submissions as to costs. I certify that the preceding fourteen (14) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Dowsett.