Balance of interests in injunction orders: a recent ruling by the Turin IP Court

By preliminary decision of 16 June 2021 in proceedings with docket no. 10009/2020, the IP Court of Turin enjoined the defendants from manufacturing, commercialising and using their own aortic valves and the relevant positioning system and ordered the seizure of these products, considering them in violation of  a competitor’s two patents.

In doing so, however, the Court expressly exempted the supplies of valves already made in favour of some hospitals, in accordance with art. 124 (6) Italian IP Code according to which “in applying the sanctions the judicial authority shall take into account the necessary balance between the seriousness of the violations and the sanctions, as well as the interest of third parties“. “With respect to these supplies“, stated the Court, “it is in fact necessary to safeguard the public interest connected to the activity of healthcare structures, also in consideration of the particular characteristics of the valve, which is the only valve available in sizes of 30.5 and 32 mm able to treat large aortic rings and is presented in a greater variety of sizes and measurements  than competing products“.

In confirmation of its conclusions, the decision in question recalled two precedents:

– a ruling by the Court of Milan, according to which, based on the principle referred to in art. 124 (6) IP Code, an injunction can be balanced so as to safeguard the “continuation of supplies already in progress with public administrations or hospitals“, being it necessary “to allow third parties to, for example, issue urgent public tenders for the purchase of equivalent products and to train their medical staff “, without prejudice to “the compensation of damages which shall also extend to this grace period“(Court of Milan, decision no. 9828/2019);

– a decision by the High Court of England and Wales, based on which the features of the injunction “must strike a balance between B’s interest in maintaining the monopoly conferred by the patent and the public interest in ensuring that patients with aortic stenosis receive appropriate treatment” (EWHC, decision no. 1256/2018).