Case: JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68 
Outcome: followed
At [208]-[211] of her reasons for judgment in JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68 at [208]-[211] Crennan J identified various propositions emerging from s 128 as follows: '208. The aggrieved party, ... must first establish the making of a threat ... . The threat must be made in Australia, in that it must be received in Australia and relate to an Australian patent or design: ... . 209. A threat arises where the language, by direct words or implication, conveys to a reasonable person that the author of the letter intends to bring infringement proceedings against the person said to be threatened ... . A threat may arise without a direct reference to infringement proceedings ... . However, a communication merely notifying a person of the existence of a patent or a patent application, together with a statement that any suggestion that the recipient is entitled to replicate the invention is not maintainable, or a communication seeking confirmation that no improper or wrongful use or infringement of the patent has come to the recipient's attention is not a threat ... . 210. Once a threat has been established it is prima facie unjustifiable unless the person making the threat establishes that it was justified: ... The court may grant the relief applied for unless the person threatening infringement proceedings establishes that the relevant conduct infringes or would infringe a valid claim of a patent ... . Ultimately, the grant of relief is discretionary ... . 211. A threat can be made by means of a letter from a legal representative ... .' 6 At the end of these reasons I will deal with the question of whether relief pursuant to s 128 is discretionary in the sense suggested at [210]. 7 Pursuant to s 13 of the Patents Act a patent confers upon a patentee the exclusive right to exploit the invention. The term 'exploit' is defined in Sch 1 as follows: ' exploit , in relation to an invention, includes: (a) where the invention is a product--make, hire, sell or otherwise dispose of the product, offer to make, sell, hire or otherwise dispose of it, use or import it, or keep it for the purpose of doing any of those things; or (b) where the invention is a method or process--use the method or process or do any act mentioned in paragraph (a) in respect of a product resulting from such use.' 39 Again curiously, although his Honour appears to have been referred to the decision in Steinhardt , he seems not to have been referred to the passage concerning discretionary relief to which I have referred. Finally, in JMVB , Crennan J observed at [210]: 'Once a threat has been established it is prima facie unjustifiable unless the person making the threat establishes that it was justified ... . The court may grant the relief applied for unless the person threatening infringement proceedings establishes that the relevant conduct infringes or would infringe a valid claim of a patent ... Ultimately, the grant of relief is discretionary: Townsend Controls at 475.' Her Honour's decision was pursuant to the Patents Act. I have not been referred to any cases to contrary effect under that legislation. Her Honour seems not to have been referred to the relevant passage in Steinhardt .