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IT – Garbuio v. Comas / Infringement by equivalents

02 Jun 2022

The Italian Supreme Court on patent infringement by equivalents: central relevance must be given to the individual elements claimed by the patent

By judgment no. 120 on 4th January 2022, the Italian Supreme Court addressed the topic of patent infringement by equivalents. In particular, the Court provided guidance on two debated issues under Italian law:

(a) what should be the subject of the equivalence assessment; and

(b) what test should be used to assess the equivalence.

The facts of the case concerned the holder of a mechanical patent for a method and a device for transferring containers of shredded tobacco, that sued a competitor selling an allegedly infringing device. The Court of first instance and the Court of Appeal ruled out the infringment because some of the components and functions claimed in the patent were missing in the contested device, which implemented more complex and inefficient mechanisms.

The patent holder filed an appeal before the Supreme Court, claiming that the Court of Appeal had not properly identified – in line with the traditional approach followed by the Italian Supreme Court – the “inventive core” of the enforced patent. On the contrary, the Court of Appeal gave relevance also to elements claimed in the patent that – in the view of the appellant – should not have been considered in the determination of the patent’s scope of protection, as only “secondary” or “non-essential” elements.

The Supreme Court rejected the appeal.

Firstly, the Supreme Court stressed that Art. 52 of the Italian Intellectual Property Code (“IIPC”), as amended in 2010, provides that the claims determine, specifically, the subject of the patent protection and paragraph 3-bis points out that to determine the scope of the patent protection, it must be considered “each element that is equivalent to an element indicated in the claims”. Accordingly, the provisions of the European Patent Convention (“EPC”) and Art. 52 IIPC embrace the “peripheral definition theory”, based on the clear and precise identification of the limits of the patent protection through the characteristics of the invention as expressly claimed in the patent text, according to the “element by element” approach.

Secondly, the Supreme Court stated that two main tests can alternatively be applied to assess the equivalence:

a) the triple test or Function-Way-Result test (“FWR test”), according to which are infringing by equivalents the alternative solutions that achieve the same result, in substantially the same way and which perform substantially the same function of the invention; or

b) the obviousness test, according to which are infringing by equivalents the alternative solutions that, considering the prior art, are in the view of the expert in the field obvious variant or trivial and repetitive response to what is claimed.

Considering the above, the Supreme Court confirmed the non infringment, as the enforced patent concerned a combination of several characteristics, all included in the claims that, in their combination, determine the patent’s scope of protection, while the contested device did not reproduce all such claimed characteristics.

Thus, the Supreme Court upheld the decision of the Court of Appeal, setting forth the principle of law according to which the Judge, in the assessment of the patent infringement by equivalents: “must first determine the scope of the patent protection, then analytically identify the individual characteristics of the invention as expressly claimed in the patent text, interpreted in light of the description and the drawings, and then verify whether each element thus claimed is also found in the accused infringing product, even if only by equivalents. This means, according to one of the possible methods that can be used, that those variants of the invention can perform the same function as the elements of the patented product, essentially following the same way and achieving the same result”.

The entire summary can be read here.
A copy of the decision (in Italian) can be read here.

Reported by: Federico Manstretta, Bird & Bird