Occupational and Medical Innovations Ltd ACN 091 192 871 v Retractable Technologies Inc [2008] FCA 1102

FEDERAL COURT OF AUSTRALIA

Occupational and Medical Innovations Ltd ACN 091 192 871 v Retractable Technologies Inc [2008] FCA 1102 INTELLECTUAL PROPERTY – exploitation of a relevant patent – degree of variation sufficient to warrant such a declaration – declaration of non-infringement of a different patent pursuant to s 125 Patents Act 1990 (Cth) Patents Act 1990 (Cth) ss 124-127 Evidence Act 1995 (Cth) s 79 Freeman v TJ and FL Pohlmer Pty Ltd (1994) 30 IPR 377 cited Brown L, Shorter Oxford English Dictionary (4th ed, Oxford University Press, 1993) OCCUPATIONAL AND MEDICAL INNOVATIONS LTD ACN 091 192 871 v RETRACTABLE TECHNOLOGIES INC

QUD 146 of 2006

DOWSETT J

29 JULY 2008

BRISBANE IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY QUD 146 of 2006

BETWEEN: OCCUPATIONAL AND MEDICAL INNOVATIONS LTD ACN 091 192 871

Applicant

AND: RETRACTABLE TECHNOLOGIES INC

Respondent

JUDGE: DOWSETT J

DATE: 29 JULY 2008

PLACE: BRISBANE

REASONS FOR JUDGMENT

INTRODUCTION 1 The applicant ("OMI") holds Australian Patent No 775427 entitled "A Single Use Syringe" (the "OMI patent"). The respondent ("RTI") is entitled to exploit the invention which is the subject of Australian Patent No 701878, entitled "Tamperproof Retractable Syringe" (the "RTI patent"). 2 In letters dated 5 October 2004 and 24 March 2006, RTI's legal advisers asserted or implied that OMI was infringing, or proposing to infringe, RTI's intellectual property and other rights including, in particular, those held in connection with the RTI patent. These allegations apparently arose out of the proposed exploitation by OMI of the OMI patent. OMI commenced proceedings for a declaration that RTI had made unjustifiable threats and for interlocutory and permanent injunctive relief. I found that the letter of 5 October 2004 contained unjustifiable threats and declared accordingly. I found that the letter of 24 March 2006 did not contain unjustifiable threats. In the course of these proceedings OMI indicated that it proposed to seek a declaration of non-infringement pursuant to s 125 of the Patents Act 1990 (Cth) (the "Act"). A prayer for such relief appears in OMI's second further amended statement of claim. However the application seems not to have been amended. OMI should seek leave to amend the application to add such a prayer.