Skip to content

The Court of Milan departed from its previous position and decided that an urgent declaration of non-infringement can be granted even after the alleged infringer commenced marketing its product.

Bisio Progetti S.p.A. (“Bisio”), a company active in the research and development of coffee and instant drink capsules, sought before the Court of Milan an urgent declaration of non-infringement of EP 1472156 (“EP ‘156”) and EP 180832 (“EP ‘832”), both owned by the well-known Societé de Produits Nestlé S.A. (“Nestlé”), with respect to the new version of its capsules (“V3 capsules”).

In its decision published on January 14, 2019, the Court of Milan declared, as an interlocutory matter, that the Italian portions of EP ‘156 and EP ‘832 were partially invalid and held that Bisio’s V3 capsules did not infringe the Italian portions of Nestlé’s patents as so limited.

The Court deeply examined the subsistence of the three requirements for an interim measure to be granted: the interest in action, the prima facie case (so called fumus boni iuris) and the danger in delay (so called periculum in mora).

First, the Court held that Bisio’s interim action was admissible as it aimed at eliminating the “objective state of uncertainty” which was hindering its business decisions as to the marketing of V3 capsules. According to the Court such uncertainty was evidenced by the extensive litigation pending between the parties with respect to the two previous versions of Bisio’s capsules (“V1” and “V2”) and further confirmed by Nestlé’s conducts before and during the urgent proceedings.

In particular, the Court reckoned that: (i) Nestlé didn’t reply to Bisio’s ante litem request to confirm that V3 capsules did not fall within the scope of protection of EP ‘156 and EP ‘832; (ii) even though Nestlé didn’t file a counterclaim seeking a declaration of infringement, its defence was grounded on the alleged infringement of its patents by Bisio’s V3 capsules.

According to the Court both the requirements of fumus boni iuris and periculum in mora were satisfied.

The Court found that the Italian portions of EP ‘156 and EP ‘832 were partially invalid and that Bisio’s V3 capsules did not infringe, neither literally nor by equivalence, the Italian potions of Nestlé’s patents as so limited.

Once excluded literal infringement, the Court ruled out also infringement by equivalence by applying the “triple test”: while Bisio’s V3 capsules have the same function of Nestlé’s (i.e, the opening of the capsules to allow the exit of the drink), they work in a different way due to the use of different technical means -perforating means in Nestlé’s capsules and deforming means in Bisio’s- and thus reach a different result.

As to the urgency requirement, the Court reminded that periculum in mora is an autonomous requirement from interest in the action: the “objective state of uncertainty”, on which the requirement of interest in the action is grounded, is not sufficient in itself to prove also the existence of periculum in mora, which requires a case-by-case evaluation of the urgency to grant the interim measure.

Indeed, according to the dominant Italian case-law, in the context of interim non-infringement proceedings the requirement of periculum in mora is satisfied whenever the “objective state of uncertainty” directly limits and affects the business activities of the claimant.

According to the Court, in the case at stake the urgency requirement was grounded on the need of Bisio to immediately develop its own marketing strategy with regard to V3 capsules and to protect its reputation vis-à-vis its actual and potential customers and its distribution network, which were alarmed by the extensive litigation pending between the parties.

In consideration of the above, the Court held that the urgency requirement subsisted even though Bisio had already started the marketing of V3 capsules. In this respect, the Court departed from its previous position followed also by other Italian courts, according to which the urgency requirement lacks, if the claimant has already begun the marketing of its products. Indeed, until such decision the Court of Milan interpreted this as an evidence that patentee’s conduct has not in fact impaired the claimant’s economic freedom, nor that the outcome of the interim proceedings would in any way influence its business decisions.

However, as the Court noted, the assessment of periculum in mora is a factual evaluation based on the particular circumstances of each case. Therefore, whilst such decision provides some guidance, it is not possible to establish general rules “mechanistically” applicable to all kind of situations.

Indeed, in determining the existence of the urgency requirement even though Bisio had already started marketing the allegedly infringing products, the Court valued the specific circumstances of the case at stake, and in particular:

(i) the fact that the marketing of V3 capsules hadn’t already reached its maximum extension, neither quantitatively, nor qualitatively; and
(ii) that Nestlé had already denounced to Bisio’s distributors the marketing of capsules fully comparable with the new ones, thus potentially harming the company’s reputation.

A copy of the judgment (in Italian) can be read here.

Headnote and summary: Luca Giove and Giulia Pasqualetto, Studio Legale Giove