NATIONAL JUDGES' PRESENTATIONS
IT Italy
IT Italy - Gabriella MUSCOLO - Judge in the specialised chamber for IP litigation at the Court of Rome - Recent developments Italian case law
A. Headnote
Parties: Farmaprof s.r.l. and Bormioli Rocco e Figli s.p.a. v. General Plastics s.r.l.
Court: Court of Rome – Tribunale di Roma
Date of decision: 9 September 2004
Official citation: Sentenza del Tribunale di Roma, 9 settembre 2004
Key findings:
1. In interpreting the claims and description of a patent it is not possible to apply Article 1362 et seq. of the Italian Civil Code (i.e. the provisions on contract interpretation) by analogy, but rather the set of provisions pertaining to competition law, by comparing the interests of the inventors with those of the competitors, which have to understand what the boundaries of the right in question are in order to operate legally in the sector.
2. The question as to the scope of the claims is related to the interpretation of the patent, and in that respect the relevant statements (which can limit the claims) are those contained in the file kept by the patent office, and they have to be considered even if they are of a declaratory nature.
3. The US doctrine of "prosecution history estoppel" is not applicable in the Italian or European patent systems, as patents must be interpreted according to the provisions set forth in the European Patent Convention and its Protocol.
4. As is the case with contracts, the principle of severability provides for a patent interpretation that could favour the novelty of the claimed invention over the prior art.
5. In considering whether two inventions are equivalent, the first factor to consider is the identity of the functional and structural elements of the two inventions relative to the solution of the technical problem: there is no infringement when the second invention solves a different problem to the first.
6. Equivalent infringement occurs when the alleged infringer solves the same technical problem as in the patented invention through functional or structural modifications that might be obvious for a person of ordinary skill in the art.
7. A dependent invention is an innovative solution to a technical problem that is consequential to the invention on which it depends.
8. Damages deriving from the illegitimate use of a dependent invention can be equal to the amount of royalties that the patent holder of the first invention could have received if the invention had been licensed.
Keywords: patents - damages – doctrine of equivalents – patent interpretation – prosecution history estoppel - severability
B. Facts
Farmaprof s.r.l. ("FP") – assignee of a patent for plastic caps for mono-dose medicinal phials ("Liberati patent") – and Bormioli Rocco e Figli s.p.a. ("BR") – licensee of FP for the production of the caps – sued General Plastics s.r.l. ("GP") – producer of caps allegedly infringing those of the Liberati patent and likewise holder of a patent concerning plastic caps which was then granted during the proceedings ("GP patent") – for:
(1) a declaration of infringement of the Liberati patent;
(2) discontinuation of the production and sale of GP caps;
(3) a declaration of invalidity of the GP patent and, subordinately, a declaration as to the dependency of the invention disclosed in the GP patent on the one disclosed in the Liberati patent;
(4) damages, to be awarded in separate proceedings;
(5) destruction of the caps;
(6) publication of the decision.
The Liberati patent, granted in 1985, consisted of four claims describing plastic caps that provide an easy and secure way to open a phial. The Liberati patent was then assigned from Mr Liberati to FP, which licensed it to a producer of phials, BR.
GP, a company dealing in the production of plastic materials, was the grantee of several utility models and of a patent (in 1996, the GP patent) for similar caps for phials. The GP patent concerns a cap that through an internal band does not allow humidity and dust to enter the phial through the cap.
FP and BR argued that the caps sold by GP infringed the Liberati patent, and that the GP patent lacked novelty as it was anticipated by the Liberati patent or, subordinately, that it was dependent on the Liberati patent.
GP claimed that the Liberati patent was invalid for lack of novelty as it was anticipated by various patents and utility models, and argued against the alleged infringement and the invalidity of its patent, and filed a counterclaim for a declaration of validity of the GP patent.
C. Legal considerations
[1] In an initial provisional judgment the court affirmed the validity of the Liberati patent, and then, after further scrutiny, it handed down a decision.
[2] The court's expert witness was asked whether:
(1) the invention disclosed in the Liberati patent was novel;
(2) the invention disclosed in the GP patent was novel;
(3) structural and functional elements of the invention disclosed in the Liberati patent were reproduced in the caps sold by GP;
(4) the invention disclosed in the GP patent was dependent on the one disclosed in the Liberati patent.
As to the first question, the expert's answers were used for the initial provisional judgment on the validity of the Liberati patent.
As to the second question, the expert affirmed the validity of the invention disclosed in the GP patent, as the major differences between the two patents in question were the following: the invention disclosed in the Liberati patent did not contain the band – disclosed in the GP patent – which does not allow humidity and dust to enter the phial through the cap; and the invention disclosed in the Liberati patent did not allow the cap to be attached to the phial when the lateral strip was broken, whereas this was possible with the GP patent.
As to the third question, the expert affirmed that the caps deriving from the GP patent were not an equivalent infringement of the invention disclosed in the Liberati patent owing to two structural elements that differentiated the two inventions.
As to the fourth question, the expert did not provide specific evidence in response.
The first question that the court addressed concerned the applicable rules. The court dealt with the canons of interpretation for patents, and it held that in interpreting the claims and description of a patent it is not possible to apply Article 1362 et seq. of the Italian Civil Code (i.e. the provisions on contract interpretation) by analogy, but rather the set of provisions pertaining to competition law, by comparing the interests of the inventors with those of the competitors, which have to understand what the boundaries of the right in question are and what can be done with a degree of certainty. The court then held that to remedy this loophole in the system, it was necessary to proceed by analogia juris to understand what might be the better way to interpret the scope of a claim and the patent file in general. The question as to the scope of the claims is related to the interpretation of the patent, and in that respect the relevant statements (which can limit the claims) are those contained in the file kept by the patent office, and they have to be considered even if they are of a declaratory nature. The court held that the US doctrine of "prosecution history estoppel" was not applicable in the Italian or European patent systems, as patents had to be interpreted according to the provisions set forth in the European Patent Convention and its Protocol. Moreover, the court added that what contracts and patents had in common was the principle of severability, which provided for a patent interpretation that favoured the novelty of the claimed invention over the prior art.
The second question that the court addressed concerned the definition of equivalent infringement. First, it held that the usual definition of equivalent infringement as the reproduction of essential elements of the novel idea was not sufficient as being too vague and extremely favourable to inventors. Second, it also deemed inappropriate the US and German criteria defining equivalent infringement as capable respectively of weakening the position of the inventor or of obstructing the progress of applied research.
The court then tried to provide a further definition by asserting the following principle. First, in considering whether two inventions are equivalent, the first factor to consider is the identity of the functional and structural elements of the two inventions relative to the solution of the technical problem. There is no infringement when the second invention solves a different problem to the first. Second, to affirm an equivalent infringement, the alleged infringer has to solve the same technical problem as in the patented invention through functional or structural modifications that might be obvious for a person of ordinary skill in the art.
As to the third question addressed in the case, the court provided a definition of dependent inventions by stating that a dependent invention is an innovative solution to a technical problem that is consequential to the invention on which it depends.
In the light of these premises, the court held that:
(1) the invention disclosed in the GP patent was novel and original in view of the aforementioned clarifications;
(2) the extent of protection granted by the Liberati patent was the same offered by the example provided, whereby the invention differed from those quoted in the prior art;
(3) the caps sold by GP and the invention of the Liberati patent were different by virtue of (i) the position of the strip and (ii) the absence in the Liberati patent of the internal band. These two structural differences constituted a functional difference as explained above;
(4) in the light of the examined evidence, the invention disclosed in the GP patent was dependent on the one disclosed in the Liberati patent for its consequentiality with respect to the teaching of the Liberati patent;
(5) the GP patent was valid and not infringing;
(6) damages should be awarded in separate proceedings for having used a dependent invention without prior approval (i.e. a licence);
(7) destruction of the GP caps and publication of the judgment were not necessary.