Retractable Technologies v Occupational and Medical Innovations

[2007] FCA 545

FEDERAL COURT OF AUSTRALIA

Retractable Technologies v Occupational and Medical Innovations
[2007] FCA 545

PRACTICE AND PROCEDURE – consideration of an application for leave to appeal from an interlocutory judgment dismissing an application pursuant to O 15A, r 6 of the Federal Court Rules – consideration of the principles to be applied in an application under O 15A, r 6 – consideration of whether a basis demonstrated for enjoining a third party acting bona fide without notice that particular conduct might involve a use of the applicant’s confidential information

INTELLECTUAL PROPERTY – consideration of the extent to which the conduct of a third party acting bona fide without notice and for value might be restrained in the exercise of the court’s jurisdiction to enforce an obligation of confidence said to devolve upon such a third party in the acquisition and resupply of retractable syringes said to embody the applicant’s confidential information

Federal Court of Australia Act 1976, s 24(1A)
Federal Court Rules, O 52, r 10, O 15A, r 6

Occupational and Medical Innovations Limited v Retractable Technologies Inc. [2006] FCA 1814 – quoted and discussed
Décor Corporation Pty Ltd v Dart Industries Inc (1991) 33 FCR 397 - cited
Jarrett v Seymour (1993) 46 FCR 557 – cited
House v The King (1936) 55 CLR 449 - cited
Johnston v Cameron & Ors (2002) 124 FCR 160 - cited
Australian Broadcasting Commission v Parish (1980) 29 ALR 228 - cited
St. George Bank Ltd v Rabo Australia Ltd (2004) 211 ALR 147 - cited
Hooper & Ors v Kirella Pty Ltd (1999) 96 FCR 1 - cited
Glencore International AG v Selwyn Mines Ltd (2006) 223 ALR 238 - cited
C7 Pty Ltd v Foxtel Management Pty Ltd [2001] FCA 1864 - cited
Minister for Health and Aged Care v Harrington Associates Ltd [1999] FCA 549 - cited
Paxus Services Limited v People Bank Pty Limited (1990) 99 ALR 728 - cited
Quanta Software International Pty Ltd v Computer Management Services Pty Ltd (2000) 175 ALR 536 - cited
Australian Development Corporation Pty Ltd v White Constructions Ltd & Anor 189 ALR 266 – cited
Barnes v Addy (1874) LR 9 Ch App 244 - cited
Coco v A N Clark (Engineers) Ltd [1969] RPC 41 – cited and discussed
Saltman Engineering Co Ltd v Campbell Engineering Coy Ltd [1948] RPC 203 – cited and discussed
Seager v Copydex Limited [1967] RPC 349 – cited and discussed
Moorgate Tobacco Co Ltd v Philip Morris Ltd (No. 2) (1984) 156 CLR 414 – cited and discussed
Johns v Australian Securities Commission (1993) 178 CLR 408 – cited and discussed
Best Australia Ltd & Ors v Aquagas Marketing Pty Ltd & Ors (1989) 13 IPR 600 - cited
Foster v Mountford & Rigby Ltd (1976) 29 FLR 233 – cited and discussed
Wheatley v Bell [1982] 2 NSWLR 544 – cited and discussed
Fraser v Evans [1969] 1 Q.B. 349 – cited and discussed
Butler v Board of Trade [1971] Ch. 680 – cited and discussed
Stephenson Jordan & Harrison Ltd v MacDonald & Evans (1951) 68 RPC 190 – cited and discussed
Stephenson Jordan & Harrison Ltd v MacDonald & Evans (1952) 69 RPC 10 – cited and discussed
Prince Albert v Strange (1849) 1 Mac. & G. 25 - cited
Morison v Moat (1851) 9 Hare 241 - cited
Franklin v Giddins [1978] QdR 72 - cited
Breen v Williams (1996) 186 CLR 71 - cited
Australian Broadcasting Corporation v Lenah Meats Pty Ltd 54 IPR 161 - cited
Commissioner of Australian Federal Police v Propend Finance Pty Ltd (1997) 188 CLR 501 - cited
Corrs Pavey Whiting & Byrne v Collector of Customs (Vic) & Anor (1987) 14 FCR 434 - cited
O’Brien v Komesaroff (1982) 150 CLR 310 - cited
Liberty Financial Pty Ltd & Anor v Scott & Anor (No. 4) (2005) 11 VR 629 - cited
Pioneer Concrete Service Ltd v Galli (1985) VR 675 - cited

RETRACTABLE TECHNOLOGIES INC v OCCUPATIONAL AND MEDICAL INNOVATIONS LIMITED (ACN 091 192 871)
QUD488 OF 2006

GREENWOOD J
17 APRIL 2007
BRISBANE

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QUD488 OF 2006

BETWEEN:	RETRACTABLE TECHNOLOGIES INC Applicant
AND:	OCCUPATIONAL AND MEDICAL INNOVATIONS LIMITED (ACN 091 192 871) Respondent

JUDGE:	GREENWOOD J
DATE OF ORDER:	17 APRIL 2007
WHERE MADE:	BRISBANE

THE COURT ORDERS THAT:

1.The applicant’s notice of motion filed on 8 December 2006 by which the applicant sought leave to appeal from the judgment of the Honourable Justice Dowsett pronounced on 30 November 2006 is dismissed. 

2.The applicant shall pay the respondent’s costs of and incidental to the application. 

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	QUD488 OF 2006

BETWEEN:	RETRACTABLE TECHNOLOGIES INC Applicant
AND:	OCCUPATIONAL AND MEDICAL INNOVATIONS LIMITED (ACN 091 192 871) Respondent

JUDGE:	GREENWOOD J
DATE:	17 APRIL 2007
PLACE:	BRISBANE

REASONS FOR JUDGMENT

Background

1. The Swedish botanist Carl von Linné (better known by the Latin version of his name, Linneus) is responsible for orthodoxy.  In 1758 he organised all living things into fundamental units of biological life called a species with particular defining characteristics grouped within genera, families, orders, classes, phyla and kingdoms.  The defining features of a species are the rules that exclude participation by others.  In this application for leave to appeal, the applicant contends, among other things, that the primary Judge erroneously applied the notion of a bona fide purchaser for value, relevant only to a ‘species of proprietary interest’ to deny the possibility of relief to bind the conscience of the respondent in the performance of an obligation of confidence. 

2. The applicant, Retractable Technologies Inc (‘RTI’) seeks leave to appeal pursuant to s 24(1A) of the Federal Court of Australia Act 1976 and O 52, r 10 of the Federal Court Rules from an interlocutory judgment of Dowsett J (Occupational and Medical Innovations Limited v Retractable Technologies Inc. [2006] FCA 1814 (OMI v RTI)) dismissing RTI’s application for preliminary discovery of documents by the respondent, Occupational and Medical Innovations Limited (‘OMI’) pursuant to O 15A, r 6 of the Federal Court Rules. 

3. In the primary application, RTI sought preliminary discovery of a range of documents relating to communications between OMI and its contracting party China Medical Group Inc (‘CMG’) and/or communications between OMI and an entity described as Double Dove Group Co Ltd (‘DDGCL’) and other entities said to be related to DDGCL concerning the manufacture, sterilization, packaging and supply by CMG to OMI of a product described as a ‘retractable syringe’.  The material before the primary Judge comprised five volumes of evidence including one volume (Volume 5) containing confidential information and was therefore comprehensive.  For the purposes of these reasons, I have made reference to a number of documents from the confidential volume referred to in submissions before the court on the present application.  References to those documents do not include any reference to the commercially sensitive aspects of the documents. 

4. Order 15A, r 6, contemplates that where there is reasonable cause to believe that an applicant has or may have the right to obtain relief in the court from an ascertained person; the applicant, after making all reasonable enquiries, does not have sufficient information to enable a decision to be made whether to commence a proceeding in the court; and there is reasonable cause to believe that a person ‘has or is likely to have or has had or is likely to have had’ possession of any document relating to the question of whether the applicant has the right to obtain the postulated relief (and inspection of the documents by the applicant would assist in making a decision whether to commence a proceeding), the court may order that the identified person make discovery of the relevant documents to the applicant. 

5. In considering the evidence and dismissing RTI’s application, the primary Judge exercised a discretion to be exercised according to settled principle.  In seeking leave to appeal from the exercise of that discretion, the considerations are whether in all the circumstances the decision of the primary Judge is attended by sufficient doubt to warrant its being reconsidered by the Full Court and whether substantial injustice would result if leave were refused supposing the decision to be wrong (Décor Corporation Pty Ltd v Dart Industries Inc (1991) 33 FCR 397 at 398 per Sheppard, Burchett and Heerey JJ; Jarrett v Seymour (1993) 46 FCR 557 at 559 and 560 per Lockhart, Sheppard and Beaumont JJ).

6. In addressing those considerations it is important to remember that the question of whether in all the circumstances the decision of the primary Judge is attended by sufficient doubt is to be considered in the context of the observation of their Honours Dixon, Evatt and McTiernan JJ in the well known passage from House v The King (1936) 55 CLR 449 at pp 504 and 505. See also Johnston v Cameron & Ors (2002) 124 FCR 160 (FC, Branson, Tamberlin and Finkelstein JJ) per Branson J p 163 [9] and Australian Broadcasting Commission v Parish (FC, Bowen CJ, Frankie and Deane JJ) (1980) 29 ALR 228 at p 232 per Bowen CJ.

   Synopsis of contentions

7. The applicant contends that the exercise of the discretion miscarried and the primary Judge erred in three respects.  First, the applicant says that having regard to particular evidence, the primary Judge ought to have found that at the date upon which OMI entered into its contract with CMG or alternatively after that date but at a time prior to the applicant’s lawyers putting OMI on notice of relevant matters, an inference ought to have been drawn that OMI knew either, actually or constructively, that the supply of retractable syringes to OMI by CMG derived from and embodied confidential information disclosed by DDGCL to entities related to it including CMG, in breach of DDGCL’s obligation of confidentiality to RTI and thus an obligation arises in OMI not to use or derive any benefit from the acquisition and sale of retractable syringes from CMG. 

8. Secondly, the applicant contends that even if no inference can be drawn concerning knowledge or ‘requisite notice’ of the relevant matters consistent with the first proposition, it is nevertheless plain as a result of correspondence written by the applicant’s United States lawyers, Messrs Locke Liddell & Sapp, to OMI on 5 October 2004 and 24 March 2006, that OMI was put on notice that supply of retractable syringes by CMG to OMI necessarily derived from a manufacturing process which utilised and the articles of manufacture embodied confidential information disclosed by RTI to DDGCL which, in breach of an obligation of confidentiality on the part of DDGCL, was disclosed to entities related to that company including CMG and thus, as to future conduct, OMI is impressed with an obligation owed to RTI to preserve the confidentiality of RTI’s information and not to seek to use or derive benefit from the acquisition and supply of retractable syringes from CMG. 

9. The contention derived from the second proposition is that RTI has reasonable cause to believe that it has or may have the right to obtain equitable relief in the exclusive jurisdiction to restrain OMI from using or seeking to derive benefit from the acquisition and supply of retractable syringes notwithstanding that OMI prior to notice of the relevant matters on 5 October 2004 and 24 March 2006 innocently entered into its contract with CMG and now seeks, consistent with that innocence, to obtain the benefit of the contract and secure performance of CMG’s obligations under the contract. 

10. Thirdly, the applicant contends that it has reasonable cause to believe that OMI has or may have, by its conduct, intentionally interfered with the contractual relationship between RTI and an entity which, for present purposes, is probably DDGCL although precise identity of RTI’s contracting party is potentially part of the factual controversy in any proposed proceeding. 

11. Accordingly, the error on the part of the primary Judge and the basis upon which the discretion is said to have miscarried is that the primary Judge failed to have regard to important evidence from which an inference is to be drawn as to the state of OMI’s knowledge at or after the date of contract with CMG and prior to 5 October 2004 thus impressing upon OMI an obligation of confidence to RTI; in deciding that question, the primary Judge failed to apply the correct test of determining whether OMI was aware, either actually or constructively, of the relevant matters; the primary Judge erred by concluding that because OMI entered into its contract with CMG in good faith and thus acted bona fide without notice of any breach of an obligation owed to RTI by DDGCL and through DDGCL, an obligation owed by CMG to RTI, no remedy or relief lies against OMI to restrain the acquisition of retractable syringes from CMG; and the primary Judge erred by failing to draw an inference that OMI knew or ought reasonably to have known of the terms of the contract between RTI and DDGCL and particularly a prohibition upon DDGCL manufacturing any needle product utilising automated retraction technology for any entity other than RTI without RTI’s prior written consent with the result that having regard to the relationship between DDGCL, nominated companies and CMG, OMI has intentionally interfered with DDGCL’s performance of its obligations to RTI. 

12. The respondent contends that the primary Judge applied the correct test in determining whether there is reasonable cause to believe that RTI has or may have the right to obtain relief in respect of the contended matters for the purposes of O 15A, r 6.  In properly applying the required test, the primary Judge had regard to evidence from which inferences are said to arise; the primary Judge correctly determined that the evidence does not demonstrate a reasonable cause to believe OMI knew that supply of retractable syringes by CMG would involve the use of RTI’s confidential information; and actual knowledge in OMI must be demonstrated. 

13. As to rights asserted against OMI on the footing of an innocent third party now on notice concerning future purchases of product from CMG, the respondent contends that the applicant has failed to identify the equity it asserts as the source of its right to relief in the contemplated proceedings as the applicant has not identified with specificity the confidential information of RTI said to be embodied in the articles of manufacture by CMG (or the processes of manufacture confidential to RTI).  Thus, no remedial order lies in the exclusive jurisdiction because any relief is conditioned upon RTI demonstrating use of (or a derived benefit from) RTI’s confidential information.  If the articles of manufacture can be supplied under the contract by CMG based upon OMI’s specifications, drawings, patent or other OMI information (or without demonstrated use of RTI’s confidential information), an essential element of the foundation upon which the jurisdiction might be exercised, it is said, is not made out. 

14. Such a case is to be contrasted with a case where confidential drawings or etchings, a confidential description of a manufacturing process or a confidential synopsis for a potential television series is delivered into the hands of a third party acting innocently and the particular confidential information can be identified and demonstrated to be in the hands, sought to be bound by intervention, of the third party.  The applicant says this element of the respondent’s contention is a distinction without a difference.  The applicant contends that if the articles, on the evidence, suggest an embodiment of RTI’s confidential information, RTI has ‘reasonable cause to believe’ as to that element of its cause of action. 

15. As to the tort of inducing a breach by DDGCL of its contract with RTI, the respondent says the evidence does not demonstrate that OMI knew of the contract or the stipulated prohibition; and secondly, the act of manufacturing is not undertaken by DDGCL and thus no breach of the prohibition upon manufacture for an entity other than RTI, arises; and the contract between RTI and DDGCL expired on 31 December 2006 in any event. 

    Principles influencing the exercise of discretion under O 15A, r 6

16. As to the settled principles to be applied in an application pursuant to O 15A, r 6, the principles are these:  the rule is to be beneficially construed and afforded the fullest scope its language reasonably allows; the ‘proper brake’ upon any excesses in the application of the rule lies in the exercise of the court’s discretion; the test for determining ‘reasonable cause to believe’ is an objective one; ‘reasonable cause to believe’ strikes a relationship with whether the applicant has a right to obtain particular relief or whether the applicant may have a right to relief and thus hypothecates a remedial outcome in the proposed proceedings on the assumption the evidence makes out each integer in the applicant’s cause of action; such a belief, on either footing, requires more than mere assertion, suspicion or conjecture; a mere possibility of a right to relief is insufficient; the evidence, that is, an assessment of all the evidence, must incline the mind towards acceptance of the existence of a matter or fact in controversy out of which a right to relief arises or may arise; it is no answer to an application under O 15A, r 6 to say that the proceeding is in the nature of a ‘fishing expedition’; the rule contemplates that an applicant will forensically examine the field of documents the subject of the order expressly for the purpose of enabling a decision to be made whether to commence a proceeding; although the rule contemplates such an examination of the respondent’s documents the subject of the order, the invasive nature of the order is predicated upon an objectively established reasonable cause to believe that the applicant has or may have a right to contended relief; although an applicant does not need to establish a prima facie case, an applicant must establish that there is a reasonable cause to believe that each element of the potential cause of action is made out; although the threshold test may be set at quite a low level, the evidence must establish facts crystallising all the elements of a cause of action grounding the possible grant of the contended relief (see:  St. George Bank Ltd v Rabo Australia Ltd (2004) 211 ALR 147 per Hely J [25] – [29]; Hooper & Ors v Kirella Pty Ltd (1999) 96 FCR 1 at pp 11 and 12 per Wilcox, Sackville and Katz JJ [35] – [40]; Glencore International AG v Selwyn Mines Ltd (2006) 223 ALR 238 at pp 240 and 241 [8] – [16] per Lindgren J; C7 Pty Ltd v Foxtel Management Pty Ltd [2001] FCA 1864 at [12] per Gyles J).

17. Four further matters are important. 

18. First, the reference in the authorities to the test for determining ‘reasonable cause to believe’ as an objective test, recognises that the phrase in O 15A, r 6(a) ‘where there is reasonable cause to believe’ connotes ‘where to the court at the hearing of the application’ there is reasonable cause to believe.  Secondly, a demonstrated controversy of fact emerging on the evidence in the application, to be resolved by findings of fact in the contemplated proceeding out of which a right to obtain identified relief is said to arise, will not answer a contention that there is reasonable cause to believe that the applicant may have a right to the relevant relief.  However, the controversy of fact must demonstrate that first, the contended facts go beyond mere suspicion, assertion or conjecture and secondly, potential findings of fact in favour of the applicant support all elements of the cause of action that may give rise to the contended relief (see Minister for Health and Aged Care v Harrington Associates Ltd [1999] FCA 549 per Sackville J [28]; Paxus Services Limited v People Bank Pty Limited (1990) 99 ALR 728 per Burchett J (NG 670/1990); Hooper v Kirella (supra) [39]; Quanta Software International Pty Ltd v Computer Management Services Pty Ltd (2000) 175 ALR 536 at 541‑2 per Sackville J [24]).

1. Thirdly, the evidence should reveal a ‘reasonable cause to believe’ that the applicant has a right to relief or may have a right to relief which reinforces the notion that the applicant must demonstrate that all elements of the cause of action are made out although discretionary considerations might prevent the grant of the identified relief.  The test is not whether, objectively, there is or may be a reasonable cause to believe.  Fourthly, when the authorities determine that an applicant need not establish a ‘primary facie’ case, such a reference contemplates that an applicant need not show that it is more likely than not that a right or possible right to relief subsists. 

2. Although plainly enough an application for leave to appeal does not involve a reconsideration of the primary application other than to determine whether the Décor Corporation v Dart Industries test is satisfied, it is necessary to consider the contextual facts of the primary application in dealing with the contended errors on the part of the primary Judge.

   The contextual facts

3. OMI is the patentee of an Australian patent having a priority date of 22 February 2000 for a device described in the patent, in terms of the object of the invention, as ‘a single use syringe having a spring biased needle which can shoot back into a hollow plunger stem after use’.  The patent describes the problems reflected in the prior art for needle devices, the features of OMI’s invention, exhibits particular drawings and defines the integers of each monopoly claim by reference to claims 1 to 13.  On 28 October 2003, OMI (or at least a company described as OMI Manufacturing Pty Ltd which for present purposes has been treated by the parties as OMI) entered into a manufacturing and distribution agreement with CMG. 

4. The manufacturing and distribution agreement contains these terms:

   (a)       CMG agrees to manufacture the Product in China (the ‘Territory’).  OMI grants CMG exclusive rights to manufacture the Product worldwide.  If CMG cannot supply the Product OMI reserves the right to source an alternative manufacturer.  (cl. 2.1)  The Product is defined by the schedule to mean each OMI retractable syringe manufactured by CMG in accordance with nominated specifications.  The schedule does not identify any specifications. 

   (b)       CMG warrants that the Product shall strictly conform with the specifications listed in the schedule (cl. 2.4(c))

   (c)       CMG agrees to make the necessary modifications to its plant/s to enable it to manufacture the Product in accordance with the production requirements set out in schedule 3.  (cl. 2.5)

   (d)       CMG agrees to manufacture the Product only at the locations agreed between the parties from time to time.  (cl. 2.6)

   (e)       CMG agrees that OMI shall have the right, on reasonable written notice, to make inspections including of Product manufactured by CMG and plant locations where CMG manufactures the Product.  (cl. 2.8)

   (f)        Schedule 3 deals with ‘pricing, annual purchase volumes and production requirements’ and sets out the pricing for the Product.  The pricing provision contemplates that CMG will supply OMI with a retractable syringe of various dimensions including a 1 ml, 3 ml, 5 ml and 10 ml Product.  (cl. 2.9, Schedule 3) 

   (g)       Schedule 3(1) contemplates that upon supply and purchase of a substantial number of units of the 1 ml, 3 ml and 5 ml Product, prices payable by OMI will be adjusted.  Schedule 3 provides that a production year means each 12 month period commencing on the date of delivery of the first order of 1 ml, 3 ml, 5 ml and 10 ml Products or anniversary thereof.  Schedule 3 also provides that CMG will invoice OMI for Product manufactured in accordance with a purchase order, on delivery of the Product and invoices will be paid within 90 days. 

   (h)       Schedule 3(2) provides that CMG will provide OMI with a certain number of units of the 1 ml version no later than 31 January 2004 and units of the 3 ml, 5 ml and 10 ml version no later than eight calendar months after the date of agreement. 

   (i)        CMG may use such trade marks and names in the Territory as are approved from time to time by OMI on all product.  The agreed brand name will be Double Dove and will include the OMI Chinese patent number on all packaging.  All such uses shall be consistent with all specifications notified by OMI from time to time.  (cl. 2.10, cl. 3.3)

   (j)        Clause 2.11 provides ‘CMG agrees to manufacture Product in accordance with written purchase orders received from OMI.  Each purchase order must set out the number and type of Product required, the date delivery, the delivery point and any other matters as agreed between the parties from time to time.  If CMG is unable to meet a purchase order, it must notify OMI as soon as it becomes aware that it will not be able to meet the purchase order’. 

   (k)CMG may not subcontract any part of the manufacturing process in relation to the Product.  (cl. 2.13)

   (l)CMG will have the exclusive right to distribute the Product in the Territory.  (cl. 3.1)

   (m)      The term of the agreement is five years from 28 October 2003 plus one three year option unless terminated by written notice upon material breach by either party.  The option might be exercised by either party at least six months before the end of the initial five year term by notice expressing a ‘desire to exercise the three year option’ and in that event, ‘the parties agree to enter into good faith negotiations in respect of extending this agreement for one further term of three years’.  (cl. 4.1)

   (n)       Clause 4.1 contemplates that OMI might give its written consent for CMG to incur costs in relation to particular manufacturing equipment and in such a circumstance OMI accepts a cost liability for an unamortized portion of the cost upon certain events. 

   (o)       CMG agrees to procure Vital Care to keep in place product liability to a certain value in terms and conditions wholly satisfactory to OMI.  (cl. 4.5)

   (p)       CMG agrees that it will provide OMI or its agent with any information as may be reasonably requested by OMI in relation to the manufacture of the Product.  (cl. 4.08)

   (q)       CMG and OMI agree to treat any information communicated to it or any other person in relation to the Product as confidential subject to identified permitted disclosure.  (cl. 4.9)  The confidentiality clause is to survive the termination of the agreement. 

5. The emphasis in the provisions [22] in italics reflect features of the agreement from which inferences ought to be drawn, it is said, in part, concerning either actual or constructive knowledge on the part of OMI of a relationship between DDGCL and CMG and a manufacturing role to be performed by DDGCL.  In particular, the applicant says that the agreement recognises that no specifications have been provided by OMI to CMG (and therefore manufacturing information must necessarily come from somewhere else); modifications will be necessary to CMG’s plant (suggesting the deployment of existing plant for syringe production for RTI to CMG’s use and ultimately that of OMI, but nevertheless requiring modification); the agreement contemplates the use of the name Double Dove in connection with the manufacture and distribution of the product and recognises that CMG will call upon Vital Care to procure product liability insurance acceptable to OMI, in connection with manufacture. 

6. Mr Bruce Leigh Kiehne, a director of OMI, swore an affidavit on 30 November 2006.  In that affidavit, Mr Kiehne says, as to the specifications, that in late 2003 a copy of a ‘Device Master File’ (‘DMF’) for the OMI syringe (together with sample syringes) was provided by him to CMG after the signing of the manufacturing and distribution agreement.  The specifications for manufacture are contained in the DMF.  Mr Kiehne says the DMF was provided by CMG to Zhejiang Vitalcare Medical Device Co. Limited (‘Zhejiang’).  The respondent contends that Zhejiang is the actual manufacturer of its retractable syringes to be supplied by CMG. 

7. The DMF is kept up to date with the latest information specified for manufacture as the device is modified.  Old information is removed from the DMF as changes occur and placed on a further file called the Device History File (‘DHF’).  Mr Kiehne examined the DHF as at 26 November 2003 to determine the materials which comprised the bill of materials making up the specifications as at 26 November 2003.  Mr Kiehne says that the prescribed list of materials was the product of OMI’s own independent product research and development and contained no contribution from CMG or any company associated with DDGCL. 

8. The applicant also says that on 15 February 2004 OMI lodged an application with the Therapeutic Goods Administration (‘TGA’) within the Department of Health and Aging of the Australian Government for approval for the use of a syringe and in that application OMI nominated Shanghai Double Dove Industry China Co. Ltd (‘Shanghai DD’) as the manufacturer of the device.  Thus, it is said, by 15 February 2004 and earlier, OMI knew of Shanghai DD, must be taken to have known of Shanghai DD’s relationship with DDGCL and knew of the manufacturing role to be discharged by Shanghai DD. 

9. Mr Kiehne says that in late 2003, OMI sought approval from the TGA for use of its insulin syringe for medical trials for a potential distributor of the insulin syringe.  OMI proposed to manufacture the devices in Australia and send them to China for inspection, sterilization and packaging.  The application nominated CMG as the manufacturer.  CMG did not have the relevant certification and, as a result, advised OMI to nominate Shanghai DD as the manufacturer.  Shanghai DD provided contract sterilization services to Zhejiang.  Mr Kiehne says that auditing and manufacturing compliance on the part of the nominated manufacturer would prove to be difficult and as a result in November 2005 a fresh application to the TGA was lodged by OMI nominating Zhejiang as the manufacturer of the nominated devices.  A certificate to that effect issued on 28 August 2006. 

10. The applicant also relies upon the lodgement on 11 January 2006 with the United States Food and Drug Administration of notification (described commonly as a 510K notification) by VitalCare Group Inc. to market a new device in the United States described as the ‘OMI Retractable Safety Syringe’.  The device is described in the notification as ‘substantially equivalent to a legally marketed device’. 

11. The notification was prepared by Mr Daniel Kamm a regulatory engineer and FDA consultant; nominates OMI as the developer; nominates China Double Dove Vitalcare Group Co. Ltd (‘China DDV’) as the manufacturer; describes the device as a new device for the US market; identifies a ‘Predicate Device’ of substantial equivalence and draws comparisons between the features of the OMI retractable syringe and the Predicate Device.  The application makes comparisons with the applicant’s retractable syringe and by way of conclusion observes:

    ‘In all material respects, the OMI Retractable Safety Syringe is substantially equivalent to the predicate device.  The conclusion is based on biocompatibility testing, clinical testing, compliance with voluntary standards and comparison to the predicate device.  A clinical investigation was performed, and test for the comparison between OMI Retractable Safety Syringe and the legally marketed predicate device was performed in accordance with [a nominated standard].  The results of the investigation showed that the OMI Retractable Safety Syringe is clinically acceptable’. 

12. The application nominates an address for the manufacturer, China DDV, of 888 Daqiao Road, Huangyan, Zhejiang, China which is the same registered address for DDGCL. 

13. The features of this document said to be important are that it reflects a recognition by OMI of an additional Double Dove company which has the same address as the entity with which RTI has its contract and pursuant to which disclosures of confidential information were made; the document reflects a comparison with information concerning the features and characteristics of RTI’s safety syringe; the document was lodged under the signature of Ramzi Abulhaj, described as the president of VitalCare Group Inc.; Ramzi Abulhaj’s co‑corporate officer in VitalCare Group Inc. is Mr Xianyu Li; Mr Li controls 98.08% of the issued share capital of DDGCL; and at the moment in time when the notification to the Food and Drug Administration was lodged, Mr Daniel Kamm was ‘OMI’s agent in the United States’. 

14. The applicant also relies upon the 510K application of 20 January 2006 and the information contained within it, particularly references to a common address for China DDV and DDGCL; references to Zhejiang; an inspection report issued by Shanghai DD; a Shanghai DD Certificate of Compliance; a ‘Latex Free Certificate’ from China DDV; a cytotoxicity report; vacuum leak test data; a report on sterilization procedures and a Shanghai DD Technical Report, to support an inference that OMI, when placing orders upon CMG, was aware that manufacture and supply by CMG would involve a breach by DDGCL of its contractual constraints to RTI. 

15. Mr Gareth John Jenkins, OMI’s solicitor, swore an affidavit on 24 November 2006.  Mr Jenkins deposes to a conversation with Mr Graham Scott McNicol, OMI’s project manager for the development of the OMI retractable syringe.  Mr McNicol is familiar with OMI’s application to the United States Food and Drug Administration for approval of its device.  Mr McNicol advised Mr Jenkins of these matters:

    ‘4(d)He [McNicol] prepared the FDA 510K application submitted this year by OMI.  He is aware of an earlier application submitted in relation to the OMI syringe by Vitalcare Group Inc.  This was not authorised by OMI.  He was not aware at the time it was submitted of its contents.  He knew that Vitalcare had submitted an application in Vitalcare’s name but OMI wanted its own separate FDA approval. 

    (e)He was instructed by Mr Bruce Kiehne in January 2006 to prepare a 510K application for OMI.  As part of this task he made inquiries of OMI’s agent in the United States, Mr Daniel Kamm who is a regulatory engineer.  Mr Kamm reminded him that there was a 510K application already prepared for OMI’s syringe that had been put together by “Vitalcare”.

    (f)He asked Mr Kamm to send him the documentation relied upon by Vitalcare in making its 510K application.  It was received around March 2006.  When he received it he noted it contained errors and mistaken references to RTI information.  He decided the document was useless for his purposes and destroyed it in March 2006.’

16. OMI says that notwithstanding that Mr Kamm was the agent in the United States for OMI in relation to regulatory matters, the document was lodged by Vitalcare; was not authorised by OMI; was lodged on 11 January 2006; and cannot speak to any relevant knowledge actually or constructively on the part of OMI on or about 28 October 2003 or at any time prior to receipt of the letter from RTI’s United States lawyers on 5 October 2004. 

17. The applicant has conducted searches of a number of companies. 

18. The searches reveal that DDGCL was established on 3 August 1994; has a registered address of 888 Daqiao Road, Huangyan District, Taizhou, People’s Republic of China; and is 98.08% controlled by Mr Li. 

19. Zhejiang is described as a subsidiary of DDGCL and has the same registered address as DDGCL.  That company was established on 20 January 2003; 49% of the shares are held by DDGCL and 51% by Vitalcare Group Inc.; the shares were originally held 60% by DDGCL and 40% by Vitalcare Group Inc.; the company originally incorporated Double Dove in its name but that changed in 2004.  At that time Ms Hui Hui Li, the daughter of Mr Xianyu Li, replaced Mr Li as a director of Zhejiang. 

20. Shanghai DD was established on 27 March 2000; commenced operation on that date; has a registered address of 1888 Huhang Road, Shanghai Fengpu‑Jiaghai Economic Zone, Fengxian, Shanghai, People’s Republic of China; the company is controlled as to 89% by Mr Xianyu Li and Mr Li is the company’s ‘legal representative’. 

21. The affidavit of Mr Charles Gibson sworn 20 November 2006 reveals that CMG is a United States corporation established in the State of Florida and came into existence upon registration on 5 September 2003.  The director, president, secretary and treasurer is Mr Xianyu Li and the director and vice president is Mr Ramzi Abulhaj. 

22. On 27 June 2002, the applicant entered into a manufacturing agreement (with an effective commencement date of 14 June 2002) with an entity described as ‘Double Dove’ and defined as ‘Double Dove China’ and recorded in the execution clause (although not signed) as Double Dove Group Ltd.  On 7 April 2003, RTI entered into a further contract (effective from 1 June 2003) in the name of Double Dove Group Ltd which was signed by Mr Li on behalf of that company.  It seems there is no such company and the obligation relied upon by RTI reposes in DDGCL but nevertheless derives from each of these agreements.  Clause 13.1 of each agreement provides that the agreement terminates on 31 December 2006 but may be renewed if mutually agreed upon in writing by both parties, for successive one year terms. 

23. Although there seems to me to be no evidence on the question, it appears that neither agreement has been renewed.  This is not surprising since the core contention of RTI is that DDGCL has consciously failed to observe obligations of confidentiality in relation to disclosures made by RTI and through entities associated with DDGCL has made RTI’s confidential information available to CMG and thus to OMI, a competitor of RTI.  There must, no doubt, be real controversy as between RTI on the one hand and DDGCL and Mr Li on the other, concerning the contended breaches of the obligation of confidentiality owed to RTI.  Yet, oddly enough, on 25 September 2006 after the letter to OMI on 5 October 2004 and the letter of 24 March 2006 from RTI’s United States lawyers to OMI agitating conscious conspiracy between OMI and DDGCL to contravene RTI’s rights and misappropriate RTI’s confidential business information, Mr Thomas J Shaw, the president of RTI wrote to Mr Li in terms of considerable equilibrium, that is:

    ‘Thank you for Double Dove’s continuing assistance in manufacturing syringes for RTI. 

    As you may know, OMI has recently sued RTI in Australia and RTI is now required to defend the suit.  In connection with that litigation, it is desirable that RTI’s legal counsel and technical representative be permitted to visit the plant in which the syringes made for OMI are manufactured, so that the manufacturing process, source materials, method of assembly and testing, and completed syringes, may be observed and inspected.  Please advise how arrangements for the visit can be made. 

    Thank you for your attention to this matter.  We look forward to receiving your reply and invitation letter as soon as possible. 

    Sincerely, Thomas J Shaw’

    This letter does not seem to reflect a concern about the fraudulent conduct or ‘conscious conspiracy’ of DDGCL or Mr Li’s potential participation in the conscious disregard of RTI’s information that RTI’s lawyers described on 24 March 2006 as RTI’s confidential ‘proprietary technological and business information’. 

24. The contract between RTI and DDGCL provides for the manufacture of products at a facility located in PuDong, China.  The material terms of the agreement are these:

    (a)       Subject to the terms and conditions of this agreement, Double Dove shall manufacture Product listed on exhibit ‘A’ at the PuDong facility for RTI and RTI shall purchase Product pursuant to application Purchase Orders utilising the Technology and in accordance with the Specifications provided by RTI.  The Products listed in exhibit ‘A’ are described as ‘VanishPoint Syringe Product’.  The ‘Specifications’ for the Product are contained in a separate document marked exhibit ‘B’.  (cl. 2.1)

    (b)       Subject to certain conditions, DDGCL shall have the right to review any contract manufacturing bids received by RTI for manufacturing of Products and shall have a right of first refusal for any contract manufacturing.  (cl. 2.2)

    (c)       ‘Double Dove shall not manufacture any needle Product that utilises automated retraction technology for any entity other than RTI without the prior written consent from RTI’.  (cl. 2.3(b))

    (d)       Clause 3 provides for disclosure by RTI of all RTI component drawings, component Specifications and quality assurance acceptance documentation as necessary to manufacture Products

    (e)       Clause 4 provides that orders for the manufacture of Product shall be placed by RTI by written purchase orders accompanied by shipment instructions. 

    (f)        Clause 18 provides ‘the Parties acknowledge and agree that during the term of this agreement, each of them and their Affiliates may exchange Confidential Information and the disclosure and use of any such Confidential Information shall be governed by the provisions of this Article 18.  Each party shall use the Confidential Information of the other party only for the purpose of the activities contemplated by this Agreement and shall not disclose such Confidential Information to a Third Party except in accordance with the provisions of this Agreement.  The Parties shall ensure that their Affiliates keep all Confidential Information exchange hereunder confidential in accordance with the provisions hereof as though the Affiliates were parties hereto.  This provision shall remain in effect for a period of fifteen (15) years after termination or expiration of this Agreement for all Confidential Information excluding trade secrets.  Trade secrets shall be kept confidential by the receiving party according to the terms set forth in Section 18.2’. 

    Clause 18.2 sets out a protocol in relation to trade secrets and provides for a 15 year period of non‑disclosure. 

1. Affiliate (cl. 1.1) means any corporation or other business entity controlled by DDGCL and control means direct or indirect beneficial ownership of at least 50% of the voting interests in the relevant corporation.  Affiliate also means any corporation or other business entity which is controlling of DDGCL and any corporation under common control with DDGCL.  Zhejiang, for the purposes of this clause, is not an affiliate of DDGCL nor is Shanghai DD.  The evidence does not reveal the shareholding in China DDV nor CMG. 

2. The clause 2.3(b) prohibition is not one assumed by DDGCL in respect of conduct by Affiliates of DDGCL. 

3. Apart from the matters already mentioned, the applicant relies upon the following further matters to support an inference and thus a reasonable cause to believe that OMI had either actual or constructive knowledge that manufacture in China of its retractable syringes would involve misuse of RTI’s confidential information.

4. First, OMI is a publicly listed company and must be taken to know with whom it is dealing.  Secondly, the incorporation of CMG on 5 September 2003 is sufficiently proximate to the date of OMI’s contract, namely, 28 October 2003, coupled with Mr Li’s role in CMG and his control of DDGCL, to put OMI on ‘notice’ or inquiry.  Thirdly, in October 2003, OMI personnel toured the Shanghai factory of DDGCL in and around the place where the RTI syringes were being assembled and packaged.  The packaging displays a reference to RTI.  Fourthly, clause 2.5 of the OMI contract suggests existing substantial manufacture of retractable syringes.  Fifthly, negotiations between OMI and CMG leading to the contract of 20 October 2003 must have revealed that DDGCL was manufacturing retractable syringes for RTI.  Sixthly, OMI issued a statement to the Australian Stock Exchange on 4 November 2003 stating that OMI had signed an exclusive worldwide agreement with CMG which OMI described as one of the world’s largest syringe manufacturers and distributors.  Since CMG had been brought into existence on 5 September 2003, it is said to be unlikely that the description adopted by OMI was properly a reference to CMG rather than a conscious recognition that the manufacturing facilities were operated by DDGCL.  Seventhly, OMI must have been aware that critical parts of RTI syringes were being made at Double Dove’s primary manufacturing facility at Taizhou during 2003 and 2004.  Eighthly, prior to RTI’s disclosure of confidential information to DDGCL in 2002 and 2003, DDGCL was not commercially manufacturing retractable syringes. 

5. None of these matters establish a basis or reasonable cause for believing that RTI has or may have a right to obtain relief against OMI on the footing that OMI knew that striking a contract with CMG to procure the manufacture and distribution of OMI’s retractable syringes would involve a breach of an obligation of confidence owed by DDGCL to RTI or such an obligation owed by CMG or Zhejiang to RTI assuming disclosure by DDGCL to those companies. 

6. It is true that Mr Li controls DDGCL, has established DDGCL’s; manufacturing facilities in Taizhou and Shanghai; controls Shanghai DD; is director, president, secretary and treasurer of CMG and is central to the activities of the Double Dove group of companies.  However, the terms of the OMI-CMG contract do not give rise to an inference that OMI knew that performance of CMG’s obligations required CMG to breach obligations of confidence owed to RTI by reason of unlawful disclosures of RTI’s confidential information by DDGCL.  Moreover, the construct the applicant seeks to establish derived from the OMI contract taken in conjunction with the matters referred to at [26] to [41] and [46] do not give rise to the conclusion that OMI knew that manufacture by CMG would involve a misuse of RTI’s confidential information. 

7. It may well be that by reason of the role played by Mr Li in the affairs of DDGCL, his role in CMG and DDGCL’s interest in Zhejiang that disclosures of RTI’s confidential information occurred.  However, there is no basis for a reasonable belief that OMI knew of that conduct or that the manufacture of OMI retractable syringes for the purposes of the performance of CMG’s contract involved a use by CMG of any of RTI’s confidential information. 

8. The applicant places additional emphasis upon the evidence of Mr Yasheng Shao.  Mr Shao gives the following evidence:

   (a)       Mr Shao has been an employee of RTI since 5 May 2003 and from then to June 2005 he was RTI’s representative at DDGCL’s factory in China;

   (b)       By May 2003 RTI had provided a significant amount of RTI’s confidential information and particular equipment to DDGCL including front end assembly machines;

   (c)       For the first three to four months Mr Shao was located at DDGCL’s facility in the Huangyan area of Taizhou in the Province of Zhejiang located at 888 Daqiao Road, Huangyan District.  Mr Shao’s primary responsibility was to assist DDGCL in the manufacture of retractable syringes for RTI.

   (d)       Between May 2003 and June 2003 Mr Shao assisted DDGCL in the production of sample syringes at the Huangyan factory although the syringes were packaged at DDGCL’s Shanghai factory.  The sample syringes were despatched to RTI for quality testing.  Comments on the quality of the sample syringes were developed during September 2003.

   (e)       On 15 July 2003, Mr Shao met with Mr Li in Shanghai to arrange for the installation of equipment to manufacture RTI syringes at DDGCL’s Shanghai factory.  At the end of July 2003 the assembly of RTI syringes was relocated to DDGCL’s Shanghai factory.  DDGCL relocated 10 employees permanently to the Shanghai facility dedicated to the RTI project.  Nevertheless, some of the more complicated component parts were moulded at the Huangyan factory. 

   (f)        In October 2003, Mr Shao says he saw several people who were not Chinese being given a tour of the DDGCL Shanghai factory.  These individuals were escorted around the plant in the area where the RTI syringes were being assembled.  Mr Shao says that in November 2003 he had a conversation with a person described as an employee close to Mr Li who told him that DDGCL had just signed a contract to manufacture syringes for an Australian company and the production would involve greater numbers than the RTI contract.

   (g)       Mr Shao says that in December 2003 while at the Huangyan factory, Mr Shao saw parts for a retractable syringe that was not RTI’s syringe.  Mr Shao understood that these syringes were manufactured for an Australian company and he took photographs of them. 

   (h)       Mr Shao says that in March 2004 he saw rolls of packaging for syringes marked with the logos of OMI, at the Shanghai facility where RTI’s syringes are also packaged.  Mr Shao says that the packaging process involved the use of RTI’s confidential information including the use of specialised packaging paper specified by RTI. 

   (i)        Mr Shao says that in April 2004 DDGCL sought information from RTI concerning the springs used in the manufacture of RTI syringes.  At about this time Mr Shao was told that an individual from OMI had been visiting the DDGCL Huangyan plant for visits of about three months in length.  Mr Shao says that at this time DDGCL sent people from the Huangyan factory to Shanghai for training in relation to assembly and packaging and shortly thereafter three machines were relocated from the Shanghai factory together with new sterilisation equipment to the Huangyan factory. 

9. Mr Kiehne has responded to Mr Shao’s evidence.  Mr Kiehne says this in his affidavit sworn 24 November 2006:

   ’17(a)Until I had read the affidavit of Mr Shao for this application I had no knowledge of RTI syringe parts being manufactured at Huangyan where OMI syringes were being manufactured.  I have been many times to the Huangyan plant and have never seen or been made aware of any RTI parts being manufactured there or personnel being based there.  This plant is huge and covers an area of some 400 hectares.  Many different things are manufactured there for example electricity generators and farm equipment. 

   (b)The parts identified by Mr Shao as being manufactured in Huangyan are unique to the RTI syringe and knowledge of how to make those parts would not assist the manufacture of the OMI syringe.

   (c)When OMI received the letter dated 5 October 2004 from RTI’s US lawyers [Locke Liddell & Sapp], I caused letters to be sent to the then directors of China Medical Group Inc. requesting information as to:

   (i)the clause of the agreement referred to by RTI’s lawyers in their letter of 5 October 2004;

   (ii)an explanation of the relationship between Double Dove and China Medical Group Inc.

   I had these letters sent because this was the first time OMI became aware of the issues raised by RTI via its lawyers.  Following these letters being despatched, I had discussions with Mr Ramzi, Mr Li and Mr Pan Hi regarding the inquiries we had made.  During these discussions I was told by each of these persons that:

   (i)Double Dove had no controlling interest in China Medical Inc. or in Zhejing Vitalcare Limited;

   (ii)Double Dove was not in breach of its agreement with RTI;

   (iii)Double Dove could not provide a copy of the relevant agreement or clause as it was bound by confidentiality agreements.

   Prior to receiving the 5 October 2004 letter from RTI’s lawyers, I had no knowledge of any contracts between “Double Dove” and RTI.  OMI instructed its lawyers to seek information as to the agreement from RTI’s lawyers by letter dated 15 October 2004.  This was never answered.’

10. As to the visit to the Shanghai factory, Mr Kiehne says this:

    ‘18.… OMI personnel have toured the Double Dove Shanghai factory.  This is because the OMI Intravenous Valve is proposed to be manufactured there.  This valve is a completely unrelated product for use on IV drips.  Arrangements to finalise this are ongoing.’

11. On 15 October 2004 and 24 March 2006 exchanges of correspondence took place between RTI’s United States lawyers and OMI and its lawyers.  The relevant parts of that correspondence are set out in the reasons of the primary Judge (OMI v RTI [5] – [12]).  The letter of 5 October 2004 noted the acquisition by OMI of retractable needles through a ‘commonly owned or controlled Affiliate of Double Dove [DDGCL]’; noted RTI’s exclusive manufacturing agreement with Double Dove; drew attention to the commitment of Double Dove not to manufacture needle product utilising automated retraction technology of any type for any entity other than RTI; noted the disclosure of RTI’s confidential information to Double Dove and advised OMI that RTI would take appropriate proceedings to protect its position against any relevant entity. 

12. On 15 October 2004, OMI’s solicitors responded and requested copies of the agreement in order to properly respond to the letter of 5 October 2004.  There was no response.  RTI’s lawyers wrote again on 24 March 2006 taking objection to OMI’s ‘continued cooperation with Double Dove for the manufacture of syringes having retractable needles’ and OMI’s tour of the Double Dove factory.  RTI asserted intentional interference with the contractual relationship between RTI and Double Dove; conscious conspiracy with Double Dove to contravene RTI’s rights and misappropriation of RTI’s confidential and ‘proprietary technological and business information’, among other things. 

13. In the meantime, OMI’s lawyers on 8 October 2004 wrote to Mr Li of CMG enclosing the letter of 5 October 2004 and requested Mr Li to provide OMI with a copy of the RTI‑DDGCL agreement and to advise of any association or relationship between Double Dove and CMG.  A similar letter was written on 11 October 2004 to Mr Ramzi Abulhaj seeking information as to any association between DDGCL and CMG.  OMI was told that DDGCL had no controlling interest in CMG or in Zhejiang; DDGCL was not in breach of its agreement with RTI; and no copy of the agreement could be provided as it was confidential. 

    Conclusions concerning actual or constructive knowledge

14. In the result, I have considered the evidence arising out of the primary application in considerably more detail than would normally be required of an application for leave to appeal, for two reasons.  First, the applicant emphasises that the ‘threshold’ to be met in an application pursuant to O 15A, r 6 is low which, in effect, is a submission that the primary Judge, on the evidence before him, set the bar too high in dismissing the application and thus applied the wrong threshold test.  Secondly, the applicant contends that the primary Judge failed to find in his ex tempore assessment of the evidence including an assessment of the OMI‑CMG contract that, put metaphorically, ‘all roads lead to Rome’.  In other words, an inference or imputation necessarily arises out of all the evidence before the primary Judge that OMI knew not only of a connection between CMG and DDGCL but that OMI knew that the manufacture of syringes by CMG would involve the use of RTI’s confidential information. 

15. The primary Judge considered all of these matters and, in assessing the evidence, concluded that OMI had acted reasonably in relation to the assertions put to it and secondly, although OMI did not deny knowledge of DDGCL, or a degree of connection with CMG, there was no evidence of knowledge of the exact nature of the connection nor evidence of knowledge of the dealings between DDGCL and RTI, other than knowledge derived from the exchanges of correspondence. 

16. There is no error on the part of the primary Judge either as to the test to be applied in an application pursuant to O 15A, r 6 or the conclusion reached on the material put before the primary Judge that OMI had no knowledge of the contractual dealings between DDGCL and RTI or that the manufacture of retractable syringes by CMG would involve use of RTI’s confidential information disclosed by DDGCL in breach of its obligations.  Thus, RTI has failed to establish that there is reasonable cause to believe that it has or may have a right to obtain relief against OMI derived from that contention. 

17. Since the evidence does not support a conclusion that OMI had knowledge of the dealings between DDGCL and RTI or knowledge of the provision of the contract upon which RTI relies which imposed a prohibition upon DDGCL engaging in the manufacture of retractable syringes for any entity other than RTI, or an obligation of confidentiality owed by DDGCL to RTI, the contended relief based upon OMI’s interference with the contractual relationship between DDGCL and RTI is also not made out.  Thus, no conclusion arises that there is reasonable cause to believe that RTI may have a right to obtain relief from the court against OMI in the acquisition of retractable syringes from CMG on the basis of an intentional interference with the obligations to be discharged by DDGCL to RTI.  The evidence does not support a conclusion that DDGCL is manufacturing articles for OMI.

18. These conclusions of the primary Judge which are not shown to be attended with sufficient doubt to warrant reconsideration by the Full Court rest upon an assessment of OMI’s state of actual knowledge.  It may be that although actual knowledge is not demonstrated on the evidence, secondary facts may give rise to an inference of actual knowledge.  The evidential facts do not support such an inference.  Secondly, the evidence may establish a conjunction of circumstances, participation by a respondent in particular events, notice of matters going to a breach of an obligation, turning a blind eye to events etc such that a party will be taken, as a construct, to have knowledge.  However, the evidence does not establish that this is such a case.  The evidence establishes a degree of interconnection between DDGCL, CMG, Mr Li and other entities associated with Mr Li which, for the purposes of determining the primary application, the primary Judge assumed to exist. 

19. The evidence does not establish actual knowledge of the terms of any contract between DDGCL and RTI nor any intention to interfere with the contract (Australian Development Corporation Pty Ltd v White Constructions Ltd & Anor 189 ALR 266 per Handley JA at [89]) nor OMI’s actual or constructive (in any analogous sense contemplated by Barnes v Addy (1874) LR 9 Ch App 244 per Lord Selborne at 251‑252) knowledge of CMG’s contended use of RTI’s confidential information and thus the contended error on the part of the primary Judge is not made out.

    Notice to a third party acting bona fide for value

20. The third ground of error on the part of the primary Judge turns upon these findings:

    ‘14.In the course of argument today, a further aspect of the potential litigation has been raised.  Retractable Technologies asserts that even if, at the time OMI entered into its contract with China Medical Group in late 2003, it did not know of any potential breach of duty by Double‑Dove, it can no longer insist upon performance of its contract with China Medical Group because of its current knowledge that Double‑Dove or China Medical Group has, or may, in the future, use confidential information derived from Retractable Technologies in satisfying the requirements of any contract between OMI and China Medical Group.  In my view, a cause of action based on that assertion would be unmaintainable.  For the purposes of this argument it must be accepted that OMI entered into its contract with China Medical Group in good faith.  It has contracted to purchase syringes of a particular quality at a particular price. 

    Although I have not perused the contract, I understand that to be a fair description of it. 

    There is no suggestion that the contract expressly contemplates any breach by Double‑Dove or China Medical Group in the performance of its contractual obligations, of any obligation owed to Retractable Technologies.  It contemplates only the supply of a particular product at a particular price.  I see no legal basis upon which Retractable Technologies could deprive OMI of the benefit of that contract.

    15.Unless Retractable Technologies manages to restrain China Medical Group from manufacturing syringes to meet OMI’s contract, it will presumably do so and supply them to OMI.  OMI will be bound to accept them.  … I see no way in which, assuming innocence on the part of OMI, Retractable Technologies can interfere in the contract between OMI and China Medical Group. 

    …

    17.However, for present purposes, given the contract between Double‑Dove and Retractable Technologies, I assume that Retractable Technologies reasonably suspects an infringement by Double‑Dove of its obligations and reasonably suspects that Double‑Dove may have used, or planned to use, information derived from Retractable Technologies in connection with the supply of syringes by China Medical Group to OMI.  There is a logical gap in that thought process because the relationship between China Medical Group and Double‑Dove is still not entirely clear.  Nonetheless, I can understand that Retractable Technologies might reasonably suspect that Double‑Dove’s knowledge will find its way to China Medical Group.

    18.The area in which I find difficulty with Retractable Technologies’ case is in the implied assumption that OMI, at any relevant time, had knowledge that completion of its contract with China Medical Group would involve breach by Double‑Dove of its obligations to Retractable Technologies. 

    …

    25.Given that there is some connection between Double‑dove and China Medical Group, and given that Double‑Dove derived some information from Retractable Technologies, there is a theoretical possibility that Double‑Dove has made, or will make, that technology available to China Medical Group for use in performing its contract with OMI.  There is a theoretical possibility that OMI may at a relevant time, in some way, have become aware of these circumstances.  However, there is no evidence that it so did and, in my view, no basis for reasonable cause to believe that it did so.’

1. The applicant says that by these paragraphs the primary Judge concedes he did not examine [14] the contract between CMG and OMI and, as a result, the primary Judge failed to properly characterise the rights and obligations arising under the document; properly understood, the contract contemplates the supply of syringes, on terms, consequent upon purchase orders placed by OMI from time to time; at any moment in time after either 5 October 2004 or at the latest 24 March 2006, any purchase order placed by OMI is necessarily made expressly on notice of a contention that syringes supplied by CMG embody RTI’s confidential information; once put on notice of the disclosed information, the breach by DDGCL, and CMG’s conduct in causing syringes to be manufactured and supplied through the use of RTI’s confidential information, OMI is susceptible of an injunction to restrain the placing of purchase orders upon CMG for the supply of such syringes; although innocent in striking the contract on 28 October 2003, OMI is not innocent as and when it places purchase orders and thus seeks to appropriate the benefit of RTI’s confidential information to its own use, disclosed in breach of obligations owed by DDGCL and CMG to RTI. 

2. The respondent says it has entered into an initial five year exclusive worldwide supply agreement of considerable commercial importance with CMG which compels it to source syringes from CMG; having struck that contract innocently and bound itself bona fide without notice of any breach of any obligation owed to RTI by CMG as supplier, OMI can not now be deprived of the benefit of its contract at the suit of RTI.  The contract is said by OMI to be not simply a standing purchase arrangement but an exclusive supply agreement that prohibits OMI seeking the manufacture and supply of retractable syringes from any other entity for the life of the agreement.  Accordingly, the respondent contends that to enjoin OMI from acquiring syringes from CMG would either deprive OMI of syringes for the life of the agreement or cause OMI to otherwise source the supply of syringes, in breach of contract. 

3. The applicant says, in effect, that if syringes supplied by CMG embody RTI’s confidential information, CMG’s use of that information in the supply of syringes to OMI, would place it in breach and thus OMI would be entitled to take steps to put itself in the position it would have enjoyed under the contract with CMG by sourcing syringes from another supplier (apart from any question of election, damages etc). 

4. The respondent says the pre‑existing contract OMI struck with CMG defeats any claim by RTI because the contract is the source of enduring rights and obligations and subsequent notice to an innocent bona fide party will not result, on the authorities, in Equity’s intervention by injunction, in these circumstances.  Secondly, RTI has failed to identify the use of any confidential information of RTI in the manufacture by Zhejiang and supply by CMG of syringes to OMI.  Since identifying with precision the confidential information used by CMG, particularly in the context of threatened relief against an innocent third party, is central to the ‘right to obtain relief’, the claims made by RTI on the evidence are nothing more than mere assertion, suspicion or conjecture.  The respondent also notes that nowhere in the material is there any evidence of agitated proceedings or complaints against DDGCL, Mr Li or other DDGCL related companies arising out of the contended breaches. 

   The principles to be applied

5. In those cases of bilateral litigation between the originator and primary disclosor of confidential information on the one hand and a recipient from the originator on the other, a court exercising equitable jurisdiction will, independently of any contractual obligation, tort, fiduciary duty or rights derived from copyright, trade mark or patent legislation, grant relief against an actual or threatened abuse of confidential information provided the evidence establishes the well‑known three elements derived from the authorities identified by Megarry J in Coco v A N Clark (Engineers) Ltd [1969] RPC 41 at 47 applying the observations of Lord Greene in Saltman Engineering Coy Ltd v Campbell Engineering Coy Ltd [1948] RPC 203 at 211 and 215 and Lord Denning in Seager v Copydex Limited [1967] RPC 349 at 366‑367.

6. The foundation of Equity’s intervention is the exclusive jurisdiction to enforce an obligation of conscience arising out of the demonstrated circumstances (Moorgate Tobacco Co Ltd v Philip Morris Ltd (No. 2) (1984) 156 CLR 414 per Deane J at 437 and 438.

7. One of the three elements focuses upon whether the confidential information was imparted in circumstances ‘importing an obligation of confidence’ (Coco v Clark at p 47) recognising that ‘the notion of an obligation of conscience [arises] from the circumstances in or through which the information was communicated or obtained’ (Moorgate Tobacco v Philip Morris at p 438).  The relief ‘depends on the broad principle of equity that he who has received information in confidence shall not take unfair advantage of it’ (Seager v Copydex per Lord Denning at p 368). 

8. In the case, however, of an innocent third party acting bona fide and thus without notice, the circumstances which condition an obligation of conscience are much removed from the commercial intimacy of a bilateral relationship between the originator and primary disclosor and the originator’s immediate recipient, importing that obligation.  It seems to follow logically in the case of an innocent third party that the court will closely examine the contended circumstances that are said to warrant intervention beyond simply whether the third party has been put on notice and thus identify the ‘matters which determine whether a duty of confidence has devolved’ upon a third party (Johns v Australian Securities Commission (1993) 178 CLR 408 at 460, per Gaudron J). The reasons of the primary Judge suggest that his Honour had in mind the notion that since an assessment of the circumstances in which OMI continues to acquire articles of manufacture said to embody RTI’s confidential information includes acceptance of the position that OMI acted as an innocent third party for value pursuant to an arms‑length contract, the ‘relevant circumstances’ of the present applicant, properly examined, do not give rise to an obligation of conscience in OMI, rather than a notion of simply applying a derivative proprietary rule that a bona fide third party for value can not be the subject of the court’s intervention. 

9. The same principles derived from the in personam jurisdiction apply to the position of third parties (Best Australia Ltd & Ors v Aquagas Marketing Pty Ltd & Ors (1989) 13 IPR 600 at 603). Accordingly, the circumstances in which the third party received the confidential information require close attention to determine whether the conscience of the third party ought to be bound.

10. In Johns v Australian Securities Commission at 460, Gaudron J recognised that in Foster v Mountford & Rigby Ltd (1976) 29 FLR 233 at p 238, Muirhead J enjoined a publisher on an interlocutory basis from continuing to publish and distribute a book revealing, in breach of an obligation of confidence on the part of the author, sites and objects of deep religious and cultural significance to particular Aboriginal claimant groups, and in Wheatley v Bell [1982] 2 NSWLR 544 at p 550, Helsham CJ (in Equity) enjoined on an interlocutory basis innocent licensees (described as parties who ‘have already been licensed or chosen, or engaged, or are either purchasers or potential purchasers’) of a promotional business system from using that system notwithstanding that they had apparently paid contracted amounts to a disclosee who had failed to observe an obligation of confidence to the plaintiff disclosor. Gaudron J noted at p 460 that the law had not developed to a point of identifying in a ‘definitive or comprehensive way’ the matters which would determine whether a duty of confidence might arise in a third party. 

11. Her Honour also noted the statement of principle of Lord Denning in Fraser v Evans [1969] 1 Q.B. 349 at p 361 to the effect that if a person ‘comes by [confidential information] innocently, nevertheless once he gets to know that it was originally given in confidence he can be restrained from breaking that confidence’ and the statement of principle of Goff J in Butler v Board of Trade [1971] Ch. 680 at 690 that ‘an innocent recipient of information conveyed in breach of confidence is liable to be restrained’.

12. The decision in Johns v Australian Securities Commission, on this aspect of the matter at least, turned on the basis that the information made available voluntarily to the relevant media organisations had become publicly available and the question of the innocence of the third parties, Australian Broadcasting Corporation and the Herald & Weekly Times Ltd, would require further determinations of questions of fact.  The decision in Foster v Mountford arose out of an ex parte application and the commercial arrangements with the publisher were not examined.  The decision in Fraser v Evans concerned the disclosure to an English national newspaper of aspects of a confidential report submitted by the plaintiff as a public relations consultant to the Greek Government.  The case seemed not to involve acquisition of confidential information pursuant to an arms‑length contract.  Although the consultant had no standing to agitate a contended obligation on the part of the newspaper, and the information, in any event, was of such a nature that disclosure was in the public interest, the statement of general principle recognises that a third party who has not received confidential information in confidence might be restrained ‘once he gets to know that it was originally given in confidence’.  The decision in Wheatley v Bell adopted that expression of principle together with the observation of Professor Pettit (Equity and the Law of Trusts, 3^rd ed (1974)) that a third party who knowingly obtains confidential information in breach of confidence or in any other fraudulent manner will be restrained from use and ‘even if a man obtains the confidential information innocently, once he gets to know that it was originally given in confidence, he can be restrained from breaking that confidence’, as the foundation for the interlocutory orders against the innocent licensees.

13. These expressions of principle concerning rights to relief against third parties are stated at a reasonably high level of abstraction and do not deal ‘definitively or comprehensively’ with the ‘matters’ which determine ultimately whether a duty of confidence has devolved upon a third party.  The applicant also relies upon what is said to be an applied expression of the principle to a bona fide third party for value in the decisions of Lloyd‑Jacob J in Stephenson Jordan & Harrison Ltd v MacDonald & Evans (1951) 68 RPC 190 and the Court of Appeal in Stephenson Jordan & Harrison Ltd v MacDonald & Evans (1952) 69 RPC 10 per Evershed M.R. and Denning and Morris LL.JJ. In that case, Lloyd‑Jacob J granted an injunction to restrain a publisher from publishing, pursuant to a contract with the author, a book containing confidential information of the plaintiff concerning the application of principles of business management to particular problems encountered at various functional levels of commercial activity. The publisher struck the contract innocently but once put on notice, prior to publication, of the confidential content incorporated within the work, the jurisdiction to grant an injunction was found by Lloyd‑Jacob J to arise on the footing that ‘an innocent mind at the time of contract could not overcome the consequences of full knowledge at or before the time [of publication]’. This applied statement of principle was said to derive from Prince Albert v Strange (1849) 1 Mac. & G. 25 and Morison v Moat (1851) 9 Hare 241 at 263. On appeal, the Court of Appeal found that the principles of business management reflected in the work were not confidential and in the context of a contention that an injunction will not lie in the absence of some right of property, breach of contract or breach of trust, Evershed M.R. observed at p 16, ‘… it would be, to my mind somewhat shocking if reputable publishers, who discovered that there was in some work which they had acquired, a gross breach of faith, publication of which would involve the ruin of some business, yet nevertheless could say, having discovered that fact before they had published or incurred any substantial expense that they were entitled to insist on going on with their publication’. Denning LJ at p 22 fully agreed with ‘all that [Evershed M.R.] has said on all the issues’ and Morris LJ ‘at p 23 also fully agreed’.

14. Some of the ‘matters’ which influenced Evershed M.R. in concluding that an obligation of confidence might devolve upon such a third party included discovery that the work incorporated confidential information, the breach of faith was a gross breach, publication might involve ruin of the applicant’s business and the intervention of the court was sought before the incurring of any substantial expense by the publisher and, obviously enough, before publication of the work. 

15. Since the decision of the Court of Appeal rests on the footing that the principles of business management incorporated within the work were not ‘secret or confidential’ and the decision of the primary Judge was set aside, the respondent says firstly, that no great weight can be given to the expression of principle by Lloyd‑Jacob J and secondly, the observations of the Court of Appeal on the question of principle are ultimately obiter. 

16. In Franklin v Giddins [1978] QdR 72 Dunn J made an order for the delivery up of nectarine trees by a female defendant who from a nominated date knew that an orchard conducted by her husband and herself contained nectarine trees propagated by a grafting process undertaken by her husband based upon budwood cuttings stolen by her husband from the plaintiff’s orchard. Because the female defendant knew, from the relevant date, that the trees were propagated from a stolen trade secret Dunn J in reliance upon the observations of Greene M.R. in Saltman Engineering Co. Ltd v Campbell Engineering Co. Ltd (supra) at p 213, held that it was unconscionable for her to derive any benefit from the propagation and sale of the trees and thus she, like her husband, infringed the plaintiff’s rights. 

17. Since the female defendant jointly conducted the orchard with her husband (the first defendant), and became after knowledge of her husband’s conduct an active participant in the continued use of the plaintiff’s stolen trade secret, she became an accessory to the primary conduct and thus susceptible to an injunction (although undertakings were ultimately recorded) and delivery up of the trees. 

18. No feature of this case involves the notion of a party acting bona fide and striking an arms‑length contract with another prior to any notice of a contended breach of an obligation of confidence by such a party and then being enjoined from exercising rights under the contract, upon notice.  Accordingly, the primary Judge addressing the O 15A r 6 application, observed [16] that the case of Franklin v Giddins involved use of confidential information by somebody who had obtained it from an infringer rather than a case adapted to the relevant circumstances of the present applicant. 

19. There is no doubt that the authorities recognise that an innocent third party thus acting bona fide may come into possession of confidential information of a primary disclosor either by reason of a disclosure in breach of an obligation of confidence by the disclosee owed to the primary disclosor or because an entity dealing with the third party may have a degree of interconnection with the initial recipient such that information has been disclosed to that entity in breach of an obligation of confidence and then disclosed to the third party; and, in principle, ‘in some circumstances the restraint of an apprehended or continued breach of confidence may involve enjoining third parties’ (Breen v Williams (1996) 186 CLR 71 per Gummow J at p 129; see also, Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd (2002) 54 IPR 161 per Gummow and Hayne JJ [137] (2002) 185 ALR 1; and Commissioner of Australian Federal Police v Propend Finance Pty Ltd (1997) 188 CLR 501 at 537 and 567; Johns v Australian Securities Commission (supra)).  Although Gummow J in Breen v Williams at p 129 was emphasising that the assertion of a right to relief in respect of an obligation of confidence does not rest upon any species of proprietary right, his Honour also notes that the circumstances of disclosure to the third party condition whether such a party will be enjoined.

20. In the primary application, his Honour concluded that although the precise depth or content of the connection between CMG and DDGCL could not be determined, OMI knew of some connection between DDGCL and CMG [13] and, for the purposes of the application, the primary Judge accepted that ‘there is an association between those companies and that they share some manufacturing facilities’ [4]. His Honour also concluded that RTI reasonably suspects an infringement by DDGCL of its obligations to RTI [17]; reasonably suspects that DDGCL may have used or planned to use information derived from RTI in connection with the supply of syringes by CMG [17]; and RTI reasonably suspects that DDGCL’s knowledge will find its way to CMG [17].

21. Although the degree of connection was not known to OMI nor the use by CMG of information derived from DDGCL confidential to RTI, once OMI was put on notice of the connection and the demonstrated use by CMG of RTI’s confidential information in the supply of articles under the contract with OMI, OMI as an innocent third party became at least potentially susceptible of an obligation of conscience to RTI enforceable by remedial relief as to future conduct. 

22. Although considerations such as the continued supply of articles under a contract struck before notice; the precise construction of the contractual arrangements; the proposed deprivation from OMI of the benefit of its contract; the circumstances concerning OMI’s expenditure commitments in reliance upon the contract; OMI’s position in the market in reliance upon the contract; OMI’s ability to undertake its business activity by sourcing syringes in reliance upon the contract and resupply of syringes; the impact upon OMI should relief in the form of an injunction be granted restraining the acquisition of syringes from CMG; and the financial threat to the business undertaking of OMI among other circumstances; are all important matters in determining whether an order might be made in all the circumstances, the recognition that OMI entered into the contract as an innocent third party for value is not necessarily a complete answer to the proposition that an order may be made binding the conscience of such a third party as to future conduct. 

23. For example, the acquisition and resupply of syringes embodying RTI’s confidential information derived from purchase orders submitted to CMG prior to notice might not be enjoined but the submission of further purchase orders might be the subject of an order if, as I conclude, the contract between OMI and CMG although binding OMI to an exclusive source of manufacture and supply, contemplates successive purchase orders throughout an executory agreement to be performed by a supplier manufacturing syringes to the ‘specifications of OMI’ and thus, as an implied contractual term of that supply, ‘not embodying the confidential information of another’. 

24. Although the foundation of the court’s intervention is to fashion relief in the exclusive jurisdiction to enforce an obligation of confidence and bind the conscience of the third party put on notice that particular conduct involves the use of another’s confidential information (rather than intervention in support of equitable rights in property), the circumstance that the third party has acted innocently in reliance upon a contract, altered its position and conducted its commercial affairs on a particular footing (perhaps with great prejudice and no real ease of adjustment) are factors among, no doubt, a subset of matters arising out of all the relevant circumstances, that a court would closely examine either in framing the scope of the relief fashioned appropriately to particular conduct or from or to a particular time; or, in determining the respective positions of the parties having regard to the equity asserted by the claimant primary disclosor on the one hand and the innocent purchaser for value without notice, on the other, in making a remedial order at all. 

1. In that sense, I do not accept the ubiquity of the proposition that the whole notion of the position of a bona fide purchaser for value has no role to play in the discourse upon the right to or scope of relief that might be granted against an innocent third party put on notice that its conduct involves use of another’s confidential information, simply because the jurisdictional foundation for relief lies in enforcing an obligation of confidence rather than an order in support of a proprietary interest. 

2. However, a right to relief may arise which binds the conscience of OMI not to acquire further syringes from CMG which embody the confidential information of RTI disclosed to the supplier by DDGCL in breach of an obligation of confidence by that company to RTI. 

3. As a result, the conclusion of the primary Judge that RTI’s case ‘cannot possibly succeed’ [16] on the footing discussed at [62] to [88] of these reasons is attended by sufficient doubt as to warrant reconsideration by the Full Court subject to the question of whether substantial injustice would result if leave were refused.  However, such a conclusion assumes at its centre that the supply of syringes by CMG involves the use by CMG of RTI’s confidential information. 

4. In seeking the court’s intervention to restrain use of confidential information it is essential that the applicant demonstrate with precision the information said to be confidential and the content of use sought to be attached.  Assertions of confidentiality at high levels of abstraction will not establish a basis for relief against a disclosee.  In the case of an innocent third party who simply seeks reliance upon a contract struck without notice of a relationship of confidentiality between the primary disclosor and any other party or breach, the requirement for precision is even more acute.  The starting point is the identification of the relevant confidential information (Moorgate Tobacco Co Ltd v Philip Morris Ltd (No. 2) (supra) per Deane J at 438; Corrs Pavey Whiting & Byrne v Collector of Customs (Vic) & Anor (1987) 14 FCR 434 per Gummow J at 443; O’Brien v Komesaroff (1982) 150 CLR 310 per Mason J at pp 326 – 328; Liberty Financial Pty Ltd & Anor v Scott & Anor (No. 4) (2005) 11 VR 629 per Harper J, [13], [35]; Pioneer Concrete Service Ltd v Galli (1985) VR 675 per Crockett, Murphy & Ormiston JJ at 711).

5. The applicant says the confidential information supplied by RTI to DDGCL is that identified in paragraphs 70, 72 and 73 in the affidavit of Steven Raymond Wisner sworn 21 November 2006.  Mr Wisner is the Executive Vice President, Engineering and Production and a Director of RTI.  Mr Wisner has been employed by RTI since 25 October 1999 and his responsibilities include the management of engineering and production of retractable syringes.  The evidence describes the features of the confidential information.  These paragraphs of the affidavit do not form part of the confidential Volume 5.  During the course of argument, references were made to a confidential exhibit.  However, the transcript of proceedings before the primary Judge on 24 November 2006 make it clear that the applicant relied upon paragraphs 70, 72 and 73 of Mr Wisner’s affidavit.  The evidence is in these terms:

   ‘70.Based upon my examination of the OMI syringes, I believe that the following pieces of RTI confidential information relating to structural elements of the syringes have been used in their manufacture and assembly:

   (a)a UV-curable glue to secure the needle in the needle holder, as has been determined by examining the syringe under a black light.  Double Dove previously used a thermal setting glue, which is inferior, prior to being taught by RTI about UV‑curable glues;

   (b)packaging paper that peels instead of tears when being opened.  It took RTI a significant amount of time and resources to identify a particular packaging paper that meets these requirements;

   (c)embossed lot numbers on the individual syringe packages.  Double Dove was not equipped to be able to emboss the lot number on the individual syringe packaging during the packaging process, until they were taught how to do so by RTI;

   (d)bar coding on individual syringe packages.  Double Dove was not equipped to print bar codes on individual syringe packages and it was RTI that supplied Double Dove with the equipment that is necessary to verify that the bar codes are being properly printed on the individual packages and are scannable;

   (e)the equivalent to a stepped plunger head.  Prior to being taught by RTI of the importance of a stepped plunger head or equivalent, Double Dove used a flat plunger head contacting a flat friction ring, which greatly increases the amount of thumb force required to initiate retraction;

   (f)vents through the needle holder to allow fluid to exit the needle after the tip of the needle holder contacts the plunger;

   (g)a seat (or tapered interior bore) in the needle holder to set how far the needle extends into the needle holder.  Prior to being taught the importance of a seat in the needle holder, Double Dove had an internal bore that had the same diameter throughout, which results in unacceptable variances during commercial manufacture.

   72.Based upon my examination of the OMI syringes and my knowledge of the RTI Confidential Information, there are a number of confidential aspects relating to the materials used in RTI’s syringes that I am concerned are present in the OMI syringes; however, mere examination of the syringes is not sufficient to determine if the RTI Confidential Information was used or disclosed in relation to the production of the syringes.  I am concerned that the OMI syringes contain:

   (a)the particular type of polypropylene for the needle holder and barrel specified by RTI containing the specific type of clarifier to improve transparency and reduce yellowing during sterilization and aging.  It took RTI a significant amount of time and resources to test various polymers to determine which one has the most favourable characteristics for use in syringes, including the physical and optical properties of the moulded part as well as the extent of leeching from the plastic into fluid used in the syringe;

   (b)the specified needle lubricant containing solvent and disperant.  Double Dove’s original needle lubricant resulted in significantly more friction and thus patient discomfort than the lubricant formulation that was created by RTI;

   (c)the specific type of rubber for the plunger seal specified by RTI.  It took RTI a significant amount of time and resources to test various materials to determine which one contains the most favourable characteristics for use as a plunger seal in syringes; and

   (d)the specific type of lubricant containing solvent for lubrication of the barrel that was specified by RTI, in order to provide sufficient lubrication that is not stripped away by the tip of the plunger head when filling the syringe during use.

   73.Based upon my examination of the OMI syringes and my knowledge of the RTI Confidential Information and history of RTI’s provision of information to overcome difficulties experienced by Double Dove in making commercially a reliable retractable syringe, as previously referred to in this affidavit, I am also concerned that Double Dove is using the following RTI confidential information relating to methods and processes in the manufacture of OMI syringes:

   (a)use of the RTI specified tolerances for various syringe parts, such tolerances cannot be determined by examining the syringes, but are critical for the parts to fit together and interact properly when they are assembled;

   (b)use of a particular lubricant during the manufacture of the springe coils;

   (c)the selection of wire type, diameter and number of dead v. live coils to produce the required spring rate while avoiding tangling;

   (d)the method of holding the needle for insertion into the needle holder;

   (e)the method of positioning racks of syringes on the conveyor belt for proper curing of the needle adhesive;

   (f)tests and techniques for handling lubricants and applying and evaluating the application of lubricants;

   (g)the proper protocol to establish parameters for surface treatment of the needle holder;

   (h)the important of and how to measure skewed print on individual syringes;

   (i)the procedures for classification of defects and sampling plan for each syringe parameter to determine what percentage of samples must pass to avoid rejecting the lot; and

   (j)validation protocols for each syringe part, for assembly, and for sterilization.’

6. As to these matters, OMI, based on the evidence of Mr Kiehne says this:

   (a)       [Wisner, 70(a)] use of UV curable glues is a common manufacturing process used by syringe manufacturers to fix needles to needle holders and was specified by OMI for its syringes after research by its own employees and advice from the glue manufacturer;

   (b)       [W, 70(b)] OMI specified grid lacquered medical grade craft paper.  That specification is not confidential information.  It was specified by OMI to its manufacturer and OMI employees were responsible for the specification not the manufacturer;

   (c)       [W, 70(c)] the embossing of lot numbers on individual syringe packages is general industry practice and there is no evidence that the practice of embossing lot numbers on an individual syringe package is not information in the public domain;

   (d)       [W, 70(d)] the printing of bar codes on individual syringe packages is common place and there is no evidence that printing bar codes on a syringe package is not information in the public domain;

   (e)[W, 70(e)] OMI does not use the feature of a stepped plunger head;

   (f)        [W, 70(f)] as to the adoption of vents through the needle holder, the OMI needle holder design has not changed since its priority date in early 2000 as depicted in Australian Patent 775427-2001 at page 7, line 10.  Apart from the assertion, there is no evidence to support any suggestion that misuse of confidential information occurred concerning vents;

   (g)       [W, 70(g)] as to a seat or tapered bore, needle holders for both non‑retractable and retractable needles are built in this way across the industry.  In addition, the seat for the OMI syringe is shown at claim 6 of the OMI patent.  There is no evidence that the needle holder seat is not information in the public domain;

   (h)       [W, 72(a)] OMI’s needle holder is made from high impact polystyrene not polypropylene as RTI contends.  The polypropylene used for the barrel and plunger of OMI syringe is a standard medical grade material readily located on the internet.  It was specified by OMI to the pilot production manufacturer in 2002 (before the involvement of any company connected with DDGCL) and was not information obtained by OMI from the current manufacturer.

   (h)       [W, 72(b)] all needles are lubricated to prevent surface rusting due to humidity.  It is a common process.  OMI’s specified lubricant was sourced from B Braun in 2000.  It is in use by syringe manufacturers and is readily available from any medical grade lubricant supplier;

   (i)        [W, 72(c)] OMI does not use rubber in its plunger seals.  OMI specified santoprene 181 (medical grade) 55 or 64 shore A hardness to its pilot plant manufacturer in January 2002;

   (j)        [W, 72(d)] the barrel lubricant specified by OMI has been in use by syringe manufacturers and is readily available from any medical grade lubricant supplier.  It is not confidential information and it is the same lubricant as the needle lubricant;

   (l)        [W, 73(a)] whether RTI specified particular tolerances for various parts of its retractable syringe is not relevant.  The OMI syringes are a different design with different parts which fit or combine together in a way different to the RTI syringes.  The tolerances can not logically be the same and no evidence has been adduced to suggest that the tolerances are the same;

   (m)      [W, 73(b)] the particular lubricant used by OMI as a spring lubricant is the same lubricant as used for the needle and barrel of the syringe.

   (n)[W, 73(c)] the springs and the wire for the two devices are plainly different on examination. 

   (o)       [W, 73(d)] no evidence was adduced of any confidential information as to the method of holding the needle for insertion as conveyed by RTI to DDGCL.  The method used by OMI is common knowledge in the industry and was sourced by OMI in 2001.  There is no evidence of a disclosure by RTI to DDGCL nor evidence of actual misuse. 

   (p)       [W, 73(e)] no evidence has been adduced of confidential information imparted by RTI to DDGCL as to positioning racks of syringes on a conveyor belt.  There is no evidence of disclosure or misuse.

   (q)       [W, 73(g)] there is no evidence adduced that OMI’s needle holders are subjected to the same surface treatment as RTI syringes.  There is no evidence of the treatment nor evidence of use of that treatment.

   (r)       [W, 73(h)] this is a reference to the volume information which is printed on the outside of the syringe barrel in millilitres or cubic centimetres.  But it is important to measure skewed print on the syringe barrel is not confidential information.  No confidential information as to the method of measuring skewed print is identified in any of the evidence.  There is an international standard as to positioning and accuracy of print on a syringe barrel.  Further, there is no evidence of actual misuse and no suggestion of disclosure in the evidence. 

   (s)       [W, 73(i)] there is no evidence adduced of confidential information as to the suggested methodology or procedures for sampling manufactured articles and classifying defects in syringes to determine that proportion of the samples that must pass examination so as to avoid a rejection of the batch articles.  Moreover, there is an international standard governing this matter. 

   (t)        [W, 73(j)] no evidence has been adduced in identifying any confidential information directed to validation protocols for each manufactured syringe part, assembly of syringes or sterilization.  The evidence does not demonstrate misuse of disclosed RTI information.  Moreover, there is an international standard governing this matter. 

7. For the purpose of determining this question I have also had regard to confidential exhibit ‘SW11’ which sets out items of information disclosed by RTI to DDGCL said to be confidential.

8. It can be seen that much of the contended confidential information said to be embodied in the syringes supplied by CMG is no more than an assertion.  The particularity of the confidential information in some cases identifies features not present at all in the CMG articles; in other cases, the contention is no more than a short general conclusion which fails to identify the confidential information with any precision and less particularity then would be required of material facts in a pleading; in other cases, international standards govern the matter being addressed; and in some respects the contention is based simply on the observation that because the CMG syringes reflect the adoption of practices such as exhibiting lot numbers, bar codes or other features also adopted in respect of RTI syringes, those features derived from those practices must necessarily have come from RTI’s confidential disclosures to DDGCL.

9. Some further illustrations are these.

10. As to the ‘stepped plunger head’, RTI says that Mr Wisner’s evidence is that OMI syringes contain a feature ‘equivalent to a stepped plunger head’ and that RTI taught Double Dove the importance of a stepped plunger head or its equivalent and therefore OMI’s contention that it does not use a stepped plunger head responds to the wrong proposition.  A comparison of the plungers for each syringe reveals this.  In RTI’s plunger a rubber ring seals the barrel at the penetrating end.  In front of the rubber ring there is an indented elevated step which carries a small nipple.  In the case of the OMI syringe, there is no indented elevated step and the reason is said to be attributable to the functionality of the OMI syringe.  RTI says that regard should be had to Mr Wisner’s evidence that the OMI plunger head is in any event equivalent to a stepped plunger head.  However, that contention does not identify any of the features of equivalence and is therefore simply too general to constitute a controversy of fact in the relevant sense and does not rise above an assertion denied.  In any event, a direct comparison of the two plunger heads reveals, on the evidence, a quite different design. 

11. As to the needle holder, a comparison of the two syringes reveals this.  In the OMI syringe, the needle holder is made out of material that appears to be white and plastic.  Mr Kiehne swears that the material is polystyrene.  The clear plastic material is polypropylene and RTI says that in January 2006 the Vitalcare 510K application described the material as polypropylene.  However, OMI’s evidence is that the article of manufacture is made from polystyrene.

12. As to the vents located at the back of the plunger, OMI adopts a cross hatch vent as revealed in its patent which is different from the vents shown in RTI’s article. 

13. As to the syringe barrel, the evidence demonstrates that RTI’s barrel is made from polypropylene which was specified at the time of pilot production manufacture in January 2002. 

14. As to the needle lubricant, Mr Kiehne’s evidence is that all syringe needles are lubricated and the source of the lubricant for the OMI syringe is an external lubricant manufacturer nominated in 2000.

15. As to the rubber used in the seal, the evidence is that OMI specified santoprene 181 at the time of the pilot production in January 2002.  As to the tolerances for parts, the evidence reveals that the size of the OMI barrel, the size of the plunger, the mechanism for the needle holder and retraction are different to that adopted by RTI and accordingly RTI’s tolerances would be meaningless to a manufacturer making syringes for OMI.  As to the springs, OMI identifies a range of differences as to length, coils, dead coils, springing action, physical properties and the diameter of the wire (OMI .35 and RTI .24). 

16. It is important to remember that OMI has its own patent for retractable syringes and the evidence reveals the disclosure by OMI of specifications for manufacture of OMI syringes to CMG against the background of the specifications maintained on the DMF and details kept on the DHF [24] and [25].  It should also be remembered that OMI causes retractable syringes to be manufactured for supply in a market in which its retractable syringes are precise substitutes for RTI’s retractable syringes.  Plainly enough, retractable syringes can be made, consistent with OMI’s patent and its manufacturing specifications, that do not embody or depend upon RTI’s confidential information.  Deductive conclusions that because OMI supplies a retractable syringe it must necessarily in some way have done so through the use of RTI’s confidential information is no substitute for the precise identification of the actual information demonstrated to be confidential or demonstrated to be used in the manufacture and consequent supply of OMI’s syringes. 

17. In order to demonstrate that RTI may have a right to relief against OMI as an innocent third party acting in reliance upon a contract for the supply of retractable syringes OMI contends derive from disclosures made by it to its manufacturer, RTI must demonstrate ‘reasonable cause to believe’ by identifying with great precision the information, confidential in character, communicated to DDGCL and the presence or embodiment of that information in the article supplied by CMG or, alternatively, to the extent that RTI relies upon confidential processes of manufacture, evidence must be adduced of the precise process together with evidence that the CMG articles are necessarily the emanation of that process.  In all of these respects, the evidence fails to establish that the articles of manufacture supplied by CMG involve a use of any of RTI’s confidential information. 

1. In those cases where there is no closely substitutable field of common activity (such as the manufacture of immediately substitutable retractable syringes), use of another’s confidential information may be more readily identifiable whether in the form of etchings submitted to a publisher, confidential information contained within a manuscript, an instruction manual provided to a third party or a description of a methodology for a manufacturing process or business method.  In the absence of very precise identification particularly in the case however of parties involved in closely substitutable fields of common endeavour, of the information, its confidential character and its use, assertions or general conclusionary contentions relied upon to support a claim of use are insufficient and will not give rise to inferences of use. 

2. An illustration of the distinction might be that although Charles Darwin received on 18 June 1858 Alfred Wallace’s letter setting out a theory of natural selection in the evolution of species, Darwin’s address to the Linnean Society in London on 1 July 1858 outlining his central thesis of the origin of species by means of natural selection was the emanation of years of his own research, field studies and thinking. 

3. The claims of use of information said to be confidential to RTI made by paragraphs 70(a), (b), (c), (d), (e), (f) and (g); and paragraph 72(b), (d); and paragraphs 73(a), (b), (c), (d), (e), (f), (g), (h), (i) and (j) against the background of ‘SW11’ are no more than an assertion.  As to the plunger seal, RTI’s evidence is that OMI uses the ‘specific type’ of rubber used by RTI.  However, in the light of OMI’s response that it uses santoprene and specified santoprene 181 as early as January 2002, RTI says that santoprene is a form of rubber.  That controversy of fact seems to be inconsistent with the initial contention of use of the ‘specific type’ of rubber. 

4. The conclusion arising out of a consideration of the articles and the evidence is that reflected at [106].

5. Accordingly, notwithstanding the view I have taken concerning the conclusion of the primary Judge in relation to the implications of OMI acting as a bona fide purchaser for value, RTI has failed to establish a central element of a basis for relief and accordingly no reasonable cause to believe subsists that RTI either has a right to relief or may have a right to relief against OMI in connection with the acquisition of retractable syringes from CMG. 

6. Having regard to all of these matters, the application for leave to appeal must be dismissed with costs. 

I certify that the preceding one hundred and nine (109) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Greenwood.

Associate:

Dated:        17 April 2007

Counsel for the Applicant:	Mr R Macaw QC and Mr D Logan
Solicitor for the Applicant:	Davies Collison Cave Solicitors
Counsel for the Respondent:	Mr D Jackson QC and Mr J Horton
Solicitor for the Respondent:	Clayton Utz Lawyers
Date of Hearing:	6 March 2007
Date of Judgment:	17 April 2007