Infringement of a utility model under the doctrine of equivalents: a recent decision of the Milan IP Court

(An Italian version is also published here on Il Sole 24 Ore – Diritto 24)

On 10 September, the IP Court of Milan issued an interesting ruling (no. 10164/15) on the infringement of a utility model under the doctrine of equivalents. This indicates, as it is known, a doctrine elaborated with reference to invention patents, and also codified for utility model patents by art. 82 (3) of the Italian IP Code: in essence, a finding of infringement does not require that the utility model is copied in full (so-called “literal infringement”), because it is sufficient that the same “innovative concept” contained in it is reproduced.

In the case at issue, the contested product was the “Easy Clean Wiring” system for the well-known Vileda mop, which is characterised by the fact that the bucket is equipped with a pedal that turns the inner drum to facilitate the drying of the cleaning strips, with a mechanism like this:

This product was considered in infringement of Italian utility model no. 269122 by the owner and licensee of the latter, which in turn covers a bucket with a pedal that activates a lever that makes the inner drum turn:

In essence, in the utility model the pedal of the bucket pushes a straight-toothed element, which moves two gears that in turn transmit the rotation to the inner drum. In the Vileda product, instead, the pedal had one (curved) toothed side which directly acted on the two gears, without passing through any straight-toothed element. Hence the exclusion of the literal infringement of the utility model by the expert witness and, consistently, by the Judges.

Unlike the expert witness, however, the Judges believed that the Vileda product constituted an infringement of the utility model under the doctrine of equivalents.

In reaching that conclusion, the Panel first noted that the “innovative concept” identified by the expert witness (substantially coinciding with the straight-toothed element), and based on which the expert witness had ruled out infringement under the doctrine of equivalents, was actually an underestimation. The innovative concept, in the light of prior art taken into consideration, instead consisted “in the conformation of the elements (already known, in themselves) that make up the device in question, and that is the thrust unit (comprising also the straight-toothed element) and the transmission unit“.

The Judges then highlighted the principles governing infringement under the doctrine of equivalents pursuant to art. 82(3) IP Code: “by making reference to the same “innovative concept”, the provision implies that also different forms can be infringing if it can be considered obvious that the different forms – having the same efficacy – are nothing but an obvious variant of the structure described in the patent, i.e. they are already in themselves a normal alternative technique by which to achieve the same result. It must therefore be assessed – recalling the principles dictated regarding equivalence in invention patents (Italian Supreme Court, decision no. 9548/12), appropriately tailored to the specific scope of utility model patents – whether the different shape of the tool or of the machine part, in allowing to achieve the same end result, is original, as it provides a response which is not trivial nor repetitive of the subject matter of the previous patent. It must also be taken into account that infringement under the doctrine of equivalents cannot be excluded in the case in which the product (or the process) is reproduced, even partially, with a change to a single component, or to a single stage of the process, even if such a change is not trivial or repetitive (Italian Supreme Court, decision no. 30234/11)“.

By applying those principles, the Judges concluded that the simple removal of the straight-toothed element, replaced by the curved toothed side of the Vileda pedal, was not enough to avoid infringement. Having ascertained this, the Judges ordered Vileda to withdraw the product from the market and inhibited it from further marketing the product, also fixing a penalty, and ordered that the proceedings continue for the assessment of damages.