Case: U&amp;I Global Trading (Australia) Pty Ltd v Tasman-Warajay Pty Ltd (1995) 60 FCR 26 
Outcome: approved
The applicant is an Australian company. It previously held Australian Petty Patent No AU 200036357 and presently holds Australian Patent No 775427. The subject matter of both patents is a syringe designed so that the needle retracts after use or the mechanism for achieving that result. Both patents were issued pursuant to the Patents Act 1990 (Cth) (the " Patents Act "). They are largely irrelevant for present purposes. The respondent is an American company which holds American and Australian patents concerning technology designed to achieve the same, or a similar, result. The respondent's relevant Australian patent is described in the further amended statement of claim as Australian Patent No AU-A-59724/98. It seems, however, that it is now Australian Patent No 701878. I am presently concerned only with an application pursuant to s 128 of the Patents Act . For the reasons given by Cooper J in U&amp;I Global Trading (Australia) Pty Ltd v Tasman-Warajay Pty Ltd (1995) 60 FCR 26 at 31-32, a threat, made prior to grant, of infringement proceedings after grant may be a threat for the purposes of s 128. At the hearing it was not suggested that anything turned upon the time at which the respondent's patent was granted. Section 128 provides: '(1) Where a person, by means of circulars, advertisements or otherwise, threatens a person with infringement proceedings, or other similar proceedings, a person aggrieved may apply to a prescribed court, or to another court having jurisdiction to hear and determine the application for: (a) a declaration that the threats are unjustifiable; and (b) an injunction against the continuance of the threats; and (c) the recovery of any damages sustained by the applicant as a result of the threats. (2) Subsection (1) applies whether or not the person who made the threats is entitled to, or interested in, the patent or a patent application.' 2 The term 'infringement proceedings' is defined in Sch 1 to mean 'proceedings for infringement of a patent' . The term 'patent' is defined as 'a standard patent or an innovation patent' . Prior to the abolition of petty patents, the definition referred to a 'standard patent or a petty patent' . It is accepted that the threatened infringement proceedings mentioned in s 128 must be threatened infringement of a patent held pursuant to the Patents Act . 3 The applicant asserts that the respondent has threatened infringement proceedings and seeks relief pursuant to s 128. Those alleged threats appear in two letters from Messrs Locke, Liddell &amp; Sapp, American attorneys acting for the respondent, addressed to officers of the applicant. It is necessary that I set out the content of those letters in full. The first is dated 5 October 2004 as follows: ' Re: Manufacture of Medical Devices Having Retractable Needles Our Ref: 75329.00037 Dear Mr. Taske: We represent Retractable Technologies, Inc. ("RTI") in matters relating to intellectual property and litigation, and are writing this letter on behalf of our client. We have recently learned that your company may be sourcing medical devices having retractable needles through a division or commonly owned or controlled affiliate of Double Dove, a Chinese company with which RTI has had an exclusive manufacturing agreement in effect for more than a year. Under the terms of the manufacturing agreement between RTI and Double Dove, Double Dove has expressly agreed not to manufacture any needle product that utilizes automated retraction technology of any type for any entity other than RTI without prior written consent from RTI. RTI has not given any such consent. Furthermore, you should be aware that Double Dove has possession of confidential and trade secret information of RTI, and Double Dove has expressly agreed not to use or disclose any such confidential information or trade secrets except for the benefit of RTI. Considering these facts, you can appreciate that RTI is prepared to take any legal action necessary to protect its patented and unpatented technology, its products and its proprietary position with respect to Double Dove and any company with which Double Dove or its affiliates may be dealing. Recently, for example, RTI successfully invalidated Double Dove's own Chinese patent rights for syringes having retractable needles. RTI has also recently achieved other great successes in protecting its intellectual property rights throughout the world. If our information regarding sourcing of OMI products through entitles related to Double Dove is incorrect, then we regret any unwarranted adverse inference that may be drawn from this letter. On the other hand, if future revelations indicate that Double Dove has violated any aspect of its obligations to RTI by impermissibly assisting others in the manufacture of prohibited devices, RTI intends to pursue all available remedies against both Double Dove and any entity with which Double Dove may be cooperating. Please provide us your written assurances at your earliest opportunity that OMI has had no contact with Double Dove or any of its affiliates, and is not sourcing medical devices having retractable needles through any Chinese entity related to any way to Double Dove.'