The submission of new evidence to the Court’s expert witness, voluntary patent limitation and the revocation of interim measures

Some of the most debated issues in Italian patent litigation intersect in a recent order of the Enterprise Matters Section of the Court of Milan (Ord. December 2, 2014, docket no. 20896/2011, Judge Giani), including that of the submission of new evidence to expert witnesses and that of the patent limitation in court proceedings.

Here are the facts: in 2013, in response to a request from the owner of a European patent relating to boilers, the Milan Court granted an interim injunction, recalling from commerce and seizure against two Italian companies manufacturing and marketing a model of boiler allegedly infringing the Italian portion of the same patent. The order was largely based, as is often the case in Italian patent litigations,[1] on the findings of a court-appointed expert witness, who had concluded for the partial validity of the patent and for the interference of the respondents’ equivalent product with such limited scope of validity.

The interim order was appealed by the respondents, but upheld by the appeal court. Meanwhile, the patent holder had initiated ordinary merits proceedings.[2]

In the course of the merits proceedings, the landscape changed dramatically. The expert witness, requested by the Court to conduct a more thorough examination (than the one carried out in the context of summary proceedings), concluded for the total invalidity of the patent in suit for lack of inventive step. This different finding was largely determined by new prior art, submitted directly to the expert witness by the defendants and never previously entered as evidence.

The plaintiff reacted at the next hearing with the submission by its attorney of an amended (limited) version of the patent claims under Article 138 of the European Patent Convention and Article 79 of the Italian IP Code. The defendants, for their part, motioned the proceeding Judge to revoke the interim measures still in force, taking into account the changed scenario. It should be noted that under Article 669-decies of the Italian Civil Procedure Code, interim measures may be revoked if there is a change in circumstances, or when existing facts are alleged that were not known at the time the measures were granted.

The decision discussed here answers to both motions.

On the request for limitation of the patent, the Judge observes that, under Article 79 of the Italian IP Code, the right to limit the patent claims may be exercised by the patent holder at any stage and instance of court proceedings; that, as it results in a “partial waiver of the patent rights“, it must be exercised personally by the party or by a special attorney, while a mere declaration by the counsel at the hearing is not sufficient for this purpose; that the request “… calls for a supplement of expert evidence”.

The Judge therefore urged the plaintiff to formalise the patent amendment according to the above, and scheduled a hearing to appoint the expert witness with the further task of assessing the admissibility of the limitation and its consequences on infringement.[3]

This first decision is closely interwoven with the second one. The Judge found that both the alternative requirements for revocation of the pending interim measures were met in the case before her. The prior facts, which only became known later, are represented in her view by the prior art submitted to the expert witness during merits proceedings. The new circumstances, on the other hand, are represented by the “… emergence of the new will of the patent owner to waive part of the patent validity by reformulating the claims“.

In respect of the first requirement, the Judge considers that the new prior art was legitimately entered for the first time by submitting it to the expert witness in the context of merits proceedings. In her view this is in accordance with the rule that, in patent lawsuits “… allows the expert witness to examine all documents relating to the questions put to him by the Judge and produced by the parties during the expert’s investigations, provided this is done in compliance with the right of the other party to be heard (Article 121 of the IP Code)”.

The Judge also notes that, in view of balancing the conflicting interests, it would be unfair to maintain the constraints arising from the precautionary measures granted in summary proceedings against the intervening lack of a prima facie case, determined by the re-assessment of the patent validity by the expert witness.

As is inevitable, the Judge concludes for the immediate revocation of the precautionary measures granted in summary proceedings.

[1] Italian IP Courts do not currently comprise judges with a technical background; for this reason, the appointment of expert witnesses is common practice in Italian patent litigations.

[2] Under Italian civil procedure rules, most interim measures are revoked if merits proceedings are not commenced within a fixed short period of time; besides, merits proceedings are the only place where damages may be sought.

[3] We have already dealt with voluntary limitation of the patent during court proceedings in a previous article. The order examined here is broadly along the lines of the standard practice established at the Milan Court. In truth, the Court has on several occasions expressed its preference for the submission of the amendments before the expert witness hands their report. However, it may be that, in this case, the timing of the request for limitation was dictated by that of the submission of new prior art by the defendants. The law, however, sets no time limit for the submission of the amendments, provided that the right of the other party to be heard is granted.