The Milan IP Court on the patent limitations and the participation in the expert witness’ operations

(The Italian version of this post is also published here on Diritto 24 – Il Sole 24 Ore)

A recent ruling on patent infringement (no. 10512/15 of 18 September 2015, President and writer Mrs M. A. Tavassi) was an opportunity for the IP Court of Milan to lay down some principles on the request of limitation of the enforced patent, and on the participation of the parties in the expert witness’ operations.

The dispute regarded the alleged infringement of the Italian portions of two European patents by a well-known snack. The Court first held – based on the expert witness’ opinion and the assessment criteria set forth by the European Patent Office – the partial validity of the enforced patents, concluding that they were: a) new, since the relevant inventions, at the priority date, were not described in a single prior art document; b) inventive in respect of some of their claims, based on the “problem and solution approach” that we talked about, among others, here on this blog. The Judges, however, ruled that such patents were not infringed by the contested product, again in agreement with the findings of the expert witness.

However, the judgment indicated that the expert witness’ operations were particularly complex and characterised by a number of exceptions raised by the parties; among these, one concerned the alleged right of the parties’ consultants to participate in all the operations, specifically in the analysis by an external laboratory required by the expert. In rejecting that exception, the Court noted that, once the expert witness has acquired the data for analysis in the presence of the parties’ consultant, “the mere assessment activities that the expert witness performs in order to form its opinion on the acquired data do not fall within the very technical operations in which the parties should participate“. Also, in general, “the choice of the means and methods of assessment is left to the professional judgment of the expert witness“, and, in that specific case, the choice of referring analysis to an external laboratory did not result in any violation of the parties’ defensive rights, especially since the parties’ consultants had clearly given their consent to the analysis, agreeing on the “choice of the laboratory” and “on the protocol to be followed in carrying out the analysis “.

Another matter of interest addressed by the decision concerned the possibility of filing a request for limitation of the patent during the proceedings, which is permitted by art. 79 (3) IP Code “at every stage and instance of the proceedings“. The Judges said that the rule is to be co-ordinated “with the rules of the proceedings, in particular with the fundamental right of both parties to be heard“. With this in mind, the Judges reminded that “the parties’ claims as set out in their final statement of claims cannot be later changed, albeit in order to allegedly limit the patent, as such change would have an impact on the parties’ right to be heard“. Consequently, the Court considered inadmissible the request for limitation of the patent included by the plaintiff in its final brief (i.e. precisely after the final statement of claims).

In addition, the Judges found that the request for limitation was not admissible for another reason: in fact, as opposite to what was required, it was not submitted in the form of “a declaration signed by the patent owner or his/her representative expressly entitled to do so“. We already discussed this requirement here on this blog, commenting on another judgment by the Milan IP Court.

One final note of merit regarding the drafting of the judgment: the large text is clear and detailed, and in line with the standards of the most important foreign and international Courts. This confirms the high level of competence and professionalism of the Milan IP Court.