Re American Optical Corporation & Ao Inc v Allergan Pharmaceuticals Pty Limited; American Optical Corporation; Alcon Laboratories (Australia) Pty Limited; Ao Inc [1985] FCA 79; 1984 Jurisdiction 4 IPR 1 (15 March 1985)

FEDERAL COURT OF AUSTRALIA

Re: AMERICAN OPTICAL CORPORATION & AO INC.
And: ALLERGAN PHARMACEUTICALS PTY. LIMITED; AMERICAN OPTICAL CORPORATION;
ALCON LABORATORIES (AUSTRALIA) PTY. LIMITED; AO INC.
No. G.406 of 1984
Jurisdiction
4 IPR 1

COURT

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES REGISTRY
GENERAL DIVISION
Beaumont J.

CATCHWORDS

Jurisdiction - joinder of action under Trade Practices Act 1974 with action under Patents Act 1952 - s.32 Federal Court of Australia Act 1976 - whether associated matter - Order 6 rule 6 Federal Court Rules - discretion whether separate trials should be ordered.

Philip Morris Inc. v. Adam P. Brown Male Fashions Pty Ltd (1981) 148 CLR - con

Superstar Australia Pty Ltd v. Coonan & Denley Pty Ltd [1981] FCA 195; (1981) 57 FLR 110 - con

Rolls Royce Motors Ltd v. D.I.A. (Engineering) Pty Ltd [1981] FCA 19; (1981) 50 FLR 340 - con

Stack v. Coast Securities (No. 9) Pty Ltd (1983) 49 ALT 193 - con

HEARING

SYDNEY
15:3:1985

ORDER

1. The respondent's application be dismissed.

2. Costs of the application be applicant's costs in proceedings.

DECISION

By its notice of motion, the respondent moves for orders, inter alia, striking out paras. 5, 6, 22, 23, 24, 25, 26 and 27 of the Statement of Claim in this matter.

2. By their application and statement of claim, the applicants make a number of claims for relief. In the first place, they seek relief under ss.80 and 82 and, possibly, s.87 of the Trade Practices Act, 1974 ("the Trade Practices Act") by reason of alleged contraventions by the respondent of s.52, 53(a), 53(c), 53(d), 53(e) and 55 of the Trade Practices Act. These contraventions are charged in paras. 4 to 21 of the Statement of Claim. In those paragraphs, the applicants allege that the second applicant is, and has been since 6 August 1982, registered under the Patents Act, 1952 ("the Patents Act") as the proprietor of the Australian Letters Patent No. 465, 844 ("the Patent") for an invention entitled "Method for removing hydrogen peroxide from soft contact lenses."; that the Patent was sealed on 4 February 1976 (para.5); and that the first applicant is the exclusive licensee of the second applicant (para.6). The applicants claim that since February 1982, the first applicant has manufactured products for the disinfecting and cleaning of soft contact lenses pursuant to the Patent under the names "Lensept" and "Lensrins NT", which comprise part of the "Septicon System" for the disinfecting and cleaning of soft contact lenses (para 7).

3. The applicants then allege that the respondent markets and sells in Australia a hydrogen peroxide system employing a hydrogen peroxide decomposition catalyst, for the disinfecting and cleaning of soft contact lenses under the name "Oxysept": the applicants say that in the promotion, marketing and sale of the said "Oxysept" products the respondent has adopted a get-up which is the same as, or alternatively deceptively similar to or alternatively substantially identical with the distinctive get-up of the second applicant (para.10). The applicants charge that the respondent has induced a belief that the "Oxysept" system has been manufactured by the first applicant; or that the "Oxysept" system has been manufactured under licence granted by the first applicant; or that the "Oxysept" system has some other connection with the first applicant; or that the respondent has some connection with the first applicant (para.11); or that the respondent's product is sold pursuant to a licence granted by the first applicant (para.12).

4. The applicants further claim that the respondent by an unnamed representative speaking to a named second party at the Fifth International Contact Lens Congress at Surfers Paradise, Queensland between 19 - 23 August 1984 represented that the "Oxysept" system is manufactured, marketed and sold pursuant to a licence granted by the first applicant.

5. The applicants further charge the respondent with contraventions of ss.52, 53(c), 53(d), 53(e) and 55 of the Trade Practices Act, 1974 by the publication in July or August 1984 of a brochure bearing the caption "Extended wear lenses don't always get extended care" containing statements which, according to the applicants, represent that the respondent's product has qualities which it does not have and that the applicants' product lacks qualities which it does in fact possess (paras. 13 to 21).

6. Then the applicants claim additional relief under the Patents Act (Statement of Claim paras. 21 ff; Application paras. 8 ff). The applicants claim that the respondent infringed each of claims 1, 2 and 12 of the complete specification of the Patent by importing, vending, offering for sale and supplying in Australia products under the name "Oxysept" the use of which, when used in accordance with the directions provided with or on the said products is said to infringe the said claims. The applicants allege that the respondent aided, abetted, counselled and procured infringements by a person or persons unknown of each of the said claims of the said specification by importing, vending, offering for sale and supplying in Australia products under the same "Oxysept" the use of which, they say, infringes the claims when used in accordance with directions provided with or on the said products, and also when used as advocated in brochures distributed by the respondent in connection with the sale or prospective sale to consumers of "Oxysept", including the brochure already mentioned.

7. The applicants seek a declaration that the respondent has infringed each of claims 1, 2 and 12 in the Patent; an order restraining the respondent from infringing the Patent; an order restraining the respondent from importing, using, vending, keeping for sale, offering for sale or supplying in Australia products which when used in accordance with the directions provided therewith infringe the Patent; an order restraining the respondent from aiding, abetting, counselling or procuring the infringement by any person of the Patent; an order for delivery up on oath to the applicants for destruction by or under supervision of the applicants of all articles in the possession control or power of the respondent the sale of which would be an infringement of the Patent; damages or at the applicants' option an account of profits and other orders pursuant to s.87 of the Trade Practices Act.

8. By its notice of grounds of defence the respondent has put in issue all the substantial allegations in the Statement of Claim. It also says that the Patent is invalid for the reasons stated in the Particulars of Objection. In those particulars, the respondent says that the grantee of the Patent was not the inventor and that no invention was involved. Other defences are raised, including lack of novelty, lack of any inventive step, failure of the specification to comply with the requirements of s.40 of the Patents Act and lack of utility.

9. The respondent has also cross-claimed for alleged contraventions of the Trade Practices Act.

10. The respondent contends that the patent infringement aspect of the matter should not have been joined in the one proceeding with the claims made under the Trade Practices Act. Two distinct submissions are put: in the first place, it is argued the Trade Practices Act claims and the patent claims are not "associated" matters for the purposes of s.32 of the Federal Court of Australia Act, 1976 ("the Federal Court Act") with the consequence that this Court lacks jursidiction at first instance in the patent claims; alternatively, it is suggested that, even if this Court has jurisdiction under s.32, it should, in the exercise of its direction under 0.6 r.6, order that the trial of the patent claims take place separately from the trial of the Trade Practices Act claims.

11. In my view both arguments should be rejected. Whether the two sets of claims are "associated" for the purposes of s.32 is, of course, a question of degree (see Philip Morris Inc. v. Adam P. Brown Male Fashions Pty Ltd [1981] HCA 7; (1981) 148 CLR 457 at pp 516, 518; Superstar Australia Pty Ltd v. Coonan & Denlay Pty Ltd [1981] FCA 195; (1981) 57 FLR 110; H.T.X. International Pty Ltd v. Semco Pty Ltd (No. 2) Australian Industrial and Intellectual Property Reporter 90-110; Rolls Royce Motors Ltd v. D.I.A (Engineering) Pty Ltd [1981] FCA 19; (1981) 50 FLR 340).

12. In the present case, the applicant's complaint is directed at the manner in which the respondent is marketing its product. True it is that different legal principles will be resorted to in order to resolve the Trade Practices Act claims than those applied to determine the patent claim. But in any ordinary sense it is appropriate to describe each of the applicant's claims as associated. It follows, in my view, that the court has jursidiction at first instance under s.32 of the Federal Court Act to entertain the claim in respect of the Patents Act. Nor, in my opinion, are there discretionary reasons why this Court should not exercise its associated jurisdiction (see Stack v. Coast Securities (No. 9) Pty ltd [1983] HCA 36; (1983) 49 ALR 193 at p 218).

13. Further, I am unable to perceive any convenience to the parties in the ordering of separate trials as asked by the respondent because it is inevitable that some overlapping of evidence and argument would occur if separate trials were ordered. I accept, as the respondent submits, that the patent claim may well be complex but I do not think that the concurrent hearing of the Trade Practices Act claims will significantly increase the burdens already imposed on those involved in hearing a patent suit.

14. I make the following orders:

1. Respondent's application dismissed.

2. Costs of the application to be applicant's
costs in the proceedings.