The Italian Supreme Court provided guidance on patent infringement by equivalents, with particular regard to the role of prosecution history in determining the patent’s scope of protection.

By judgment no. 2977 on 7th February 2020, the Italian Supreme Court (Section I) issued a ruling on a highly debated issue on patent infringement: the role of prosecution history in determining the patent’s scope of protection. Additionally, the Court also provided more general guidance on infringement by equivalents under the Italian law.

The facts of the case concern a company who enforced against a competitor a patent that was amended during the prosecution before the EPO, upon the examiners’ requests. In the judgment of Appeal, the Court considered such limitation essential to differentiate the invention from the prior art and therefore excluded the infringement by equivalents, in light of the so called prosecution history estoppel.

Upon the patent’s owner appeal, the Supreme Court set aside the Court of Appeal judgment and ruled that the prosecution history estoppel has no legal basis in the Italian patent law system. According to the Court, the assessment of patent infringement must be carried out by looking at the objective meaning of the patent as expressed in the claims, interpreted in light of the description and drawings, but without giving relevance to the subjective intent of the patent owner.

The Supreme Court pointed out that the Court of Appeal should not have refused to assess, because of the prosecution history, whether the variant applied by the alleged infringer was in the end a mere ruse to get out of the patent’s scope of protection. In order to do so, the Court should have considered whether, in order to achieve the same final result, the solution followed by the alleged infringer was inventive, consisting of a non-trivial and non-repetitive solution which exceeded the ordinary skills of the average technician who faces the same problem.

Finally, the Supreme Court set forth the following principle of law:

“the Judge, in determining the scope of protection conferred by the patent … must consider each element substantially equivalent to an element indicated in the claims; for this purpose it may avail itself of different methodologies for the assessment of the equivalence of the inventive solution, such as verifying whether the contested embodiment allows the same final result to be achieved with the adoption of variants that lack originality because they are obvious in light of the knowledge of the average technician skilled in the art who faces the same problem; however, the Judge cannot give importance to the subjective intentions of the patent applicant, albeit historically inferred through the analysis of the activities carried out during the administrative proceedings which lead to the granting of the patent”.

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

Reported by: Federico Manstretta, Studio Legale Bird & Bird