Defence Against an Accusation of Patent Infringement
Ing. Matteo Pes describes a recent case he handled, relating to an alleged patent infringement.
Case summary
Question:
Bonomini S.r.l. was subject to a criminal seizure of two products displayed at an important sector trade fair in Bologna; the seizure was authorised by the Public Prosecutor's Office for alleged infringement of two European patents, on the complaint of a Dutch competitor. The Dutch competitor had previously sent several cease-and-desist letters to Bonomini S.r.l.
The Dutch competitor also filed an application before the Bologna Court, alleging infringement of the two European patents and obtaining a description order issued ex parte.
The owner of Bonomini S.r.l. approached our firm's consultants for technical and legal assistance in both proceedings, civil and criminal.
Scope of the advisory services:
Civil and criminal law: defence against an accusation of patent infringement.
Advisory services provided and results achieved:
BIESSE's consultants examined the Dutch competitor's two European patents, concluding that one of them was not enforceable in Italy at the date of the seizure, and that there were valid arguments supporting the position of non-infringement of the seized products.
The Dutch competitor abandoned the civil proceedings. The criminal proceedings concluded in favour of the owner of Bonomini S.r.l. following the filing of defence briefs based on the technical patent defence prepared by our firm.
Bonomini S.r.l.'s counterattack
In response to the Dutch competitor's action, Bonomini S.r.l. initiated proceedings before the Brescia Court, specialised section for industrial property, seeking a finding of unfair competition against the Dutch party's actions, an injunction against further attacks against Bonomini, disclosure of accounting records, and compensation for all damages suffered by the owner of Bonomini S.r.l. and the company itself, as well as the publication of the judgment in trade and general press.
The Dutch competitor entered an appearance, filing a counterclaim seeking a finding of infringement of its two European patents and of a patent application of which one of the two patents is a divisional.
The Court-Appointed Technical Expert (CTU) on the two patents and the patent application of the Dutch competitor confirmed that Bonomini S.r.l.'s products do not constitute infringement. The civil proceedings have not yet concluded.
In parallel with the above strategy, BIESSE filed third-party observations at the EPO against the patentability of the claims in the Dutch competitors' European patent application. The EPO examiner expressed a negative opinion on the patent application, in line with ours, and summoned the Dutch owner to an oral hearing in May 2017.
Ing. Matteo Pes
CASE DETAILS: DEFENCE AGAINST AN ACCUSATION OF PATENT INFRINGEMENT
The question:
In September 2012, Bonomini S.r.l., active for decades in the manufacture of shower drains, traps, and fittings, was subject to a criminal seizure of two products displayed at its stand at the CERSAIE trade fair in Bologna. The seizure was authorised by the Bologna Public Prosecutor's Office for alleged infringement of patent rights under Art. 517-ter of the Criminal Code, on the complaint of a Dutch competitor who had previously sent several cease-and-desist letters to Bonomini S.r.l.
The Dutch competitor also filed an application before the Bologna Court, specialised industrial property section, under Arts. 129 et seq. of the Industrial Property Code, alleging infringement of two European patents and obtaining a description order ex parte (case no. 14407/2012).
Bonomini S.r.l. approached our firm for technical and legal assistance in both proceedings.
Advisory services provided:
BIESSE found that one of the two European patents was not enforceable in Italy at the time of the seizure, and that there were valid arguments supporting the position of non-infringement of the seized products with respect to the scope of protection of both European patents.
Following the seizure at the fair, the Dutch competitor abandoned the civil proceedings, which automatically lapsed. The criminal proceedings concluded in favour of the defendant Mr Bonomini with a dismissal order following the filing of defence briefs based on the technical patent defence prepared by our firm. The Public Prosecutor, following those briefs, requested dismissal, finding no infringement of the Dutch competitor's patents. The Judge accepted and ordered dismissal.
Following the above, on our recommendation Bonomini S.r.l. initiated precautionary proceedings in Bologna (case no. 20035/2012) for a declaration of non-infringement, providing the court-appointed expert with further samples of the seized products. The CTU confirmed non-infringement and so did the judge. The Dutch competitor was declared contumacious.
At this point, again on our recommendation, Bonomini S.r.l. counter-attacked, initiating proceedings before the Brescia Court, specialised section (case no. 21363/13), seeking:
- an injunction against further conduct by the Dutch competitor,
- a finding that the Dutch competitor's conduct constitutes a serious act of unfair competition under Art. 2598 et seq. of the Civil Code,
- an order to disclose the Dutch competitor's accounting records relating to the products at issue,
- an order for compensation for all damages suffered by the owner of Bonomini S.r.l. and the company itself,
- an order for publication of the judgment in the newspaper Il Corriere della Sera and in the trade journal Giornale del Termoidraulico;
- authorisation for Bonomini S.r.l. to forward a communication/extract of the judgment to all customers, suppliers, and competitors.
The Dutch competitor entered an appearance and filed a counterclaim seeking a finding of infringement of its two European patents, also asking to include a third right, a European patent application of which one of the granted patents is a divisional.
A new CTU was appointed on the two granted patents and the patent application. Bonomini S.r.l. chose not to challenge the validity of the patents, refraining from seeking their invalidation.
Previously, BIESSE had filed observations under Art. 115 EPC at the EPO against the patentability of the European patent application. The EPO examiner expressed a negative opinion, in line with ours, and summoned the owner to an oral hearing in May 2017.
The new CTU has since concluded. The expert also confirmed that Bonomini S.r.l.'s products do not infringe the two European patents and additionally found non-infringement of the pending patent application. The civil proceedings have not yet concluded.
