Saima Sicurezza S.p.A. (“Saima”), a company active in the security sector, brought a patent infringement and unfair competition action before the Court of Milan against Plexa srl, Holacheck srl and Securconsult. The plaintiff is the owner of the Italian patent no. IT 1.396.496 (“IT ’496”), concerning a system for managing passenger access control in public transport vehicles.

Reported by: Luca Giove and Giulia Pasqualetto, Giove Law Firm

The defendants counterclaimed, inter alia, the invalidity of the patent for lack of novelty and inventive step.
In its decision No. 9889/2018, published on October 5, 2018, the Court of Milan declared the partial nullity of the patent as granted, but accepted the application for limitation filed by Saima during the course of the proceedings pursuant to Article 79.3 of the Italian Intellectual Property Code (IPC), and replaced the original claims with the new claims resulting from the limitation.

Indeed, after the submission of the court-appointed expert’s report finding the patent as filed invalid except for the combination of claims no. 1 and 7, Saima submitted an application to amend its patent pursuant to Article 79.3 IPC. Claim no. 1 of the original patent, the only independent claim, was limited by referring to the contents of the original claims no. 5 and 6 and by adding features already contained in the description of the patent application as originally filed.

The Court held that such reformulation was legitimate because, as requested by Article 79.3 IPC, it remained within the limits of the content of the application as initially filed and did not extend the protection conferred by the patent as granted.

Further, the Court held that the devices manufactured and marketed by the defendants directly infringed IT ‘496, because they presented not only all the features of the original version of claim no. 1, but also those added by the amended version.

In addition to the issuance of an injunction with penalty, the Court ordered reimbursement of damages, appointing an accounting expert to calculate the amount due.

With respect to the quantification of damages, consistently with the most recent Italian case law, the Court confirmed the importance to assess on a case-by-case basis whether the patentee is entitled to damages from the date of the filing of the limitation application or retroactively.

In the Court’s view, once taken away the presumption of knowledge referred to the patent as published, the protection of third-party legitimate expectations requires to assess whether the person skilled in the art could have determined the scope of protection conferred by the patent, even in case of a possible limitation, by reading the claims and the description of the application as filed. According to the Court this applies especially where the reformulation is made by adding matter taken from the description.

In the case at stake the Court found that it would have been unreasonable to exempt the defendants from liability and from reimbursement of damages with respect to acts committed prior to the filing of the limitation application. Indeed, the limitation filed by Saima was held to be legitimate precisely because the particular feature added was already textually present in the description, which in fact indicated it as a possible configuration of the device, alternative to the one explicitly mentioned in the original claims. Further, the Court appreciated that it was not possible from any other element beyond the content of the original claims to infer the willingness of Saima to deliberately exclude such alternative configuration from the scope of protection.

Although it was already undisputed that the reformulation could consist in additions and specifications of features taken from the content of the application as filed, Italian courts, and in particular the Court of Milan, have always been particularly prudent (if not reluctant) to recognize retrospective effects where the limitation was made by taking features from the description, or even from the drawings. Indeed, according to the available case-law, the Court of Milan denied reimbursements with retrospective effect holding that although third parties are burdened to examine in depth the content of the patent as grated, they cannot be required to predict any possible reformulation made by the patentee pursuant to Article 79.3 IPC by taking features solely from the description, or even from the drawings.

While conforming to principles expressed in its previous rulings, the Court clarified that where, as in the present case, the limitation is made by adding features that are directly and unambiguously derivable from the description, third-party good faith and legitimate interests are not affected, because the scope of protection of the resulting patent is foreseeable for third parties and therefore the patentee is entitled to damages also for infringing acts committed prior to the filing of the limitation application.

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