A recent decision of the Italian Supreme Court (No. 30943 of 2022) has provided important guidance for national jurisprudence on the subject of infringement by equivalents. Firstly, it states that in the determination of infringement, to exclude interference between a patent and the contested embodiment, one must assess whether the latter offers a non-trivial or repetitive solution in achieving the same end result as the patent, meaning a solution that exceeds the skills of the average technician faced with the same problem. Secondly, it confirms the legitimacy of the approach of the case law on the merits which, in the determination of interference, compares the patent asserted by the party claiming infringement and the challenged product or process, without considering the existence of patents owned by the alleged infringer, when that patent does not correspond entirely to the challenged product or process.
Infringement by equivalents
The concept of infringement by equivalents refers to the case where a subsequent invention is not identical to the scope of protection defined by a patent, but differs in some secondary elements, without, however, altering its essence to such an extent that the variations can be said to be obvious, or even easily achievable, by the average technician in the field. Understood in this sense, it is clear that, rather than opposing the concept of literal infringement, infringement by equivalents is intended to provide more adequate protection to the patentee, extending the scope of literal infringement beyond the boundaries of identity and perfect correspondence of the industrial teachings of the patent claims. The rationale behind the two notions of infringement is therefore the same: precisely, in a system in which the industrial invention is an intangible asset that guarantees an advantage to the owner, the appropriation of this advantage is illegitimate, even when the second invention is not identical, but instead presents modifications that do not distort the essential characteristics of the original invention. Otherwise, it would be too easy to circumvent patent law by entrenching oneself behind an (all too obvious) trick of making mere variations to someone else’s idea.
It follows that the concept of infringement by equivalents: (i) has doctrinal and jurisprudential origins (and indeed, still today, lacks an express normative reference); (ii) is compatible both with the case in which the variants bring an improvement to the patented invention, and with the case in which the modification renders the invention less effective (usually defined with the concepts in Italian law of infringement that is migliorativa or peggiorativa).
In the light of the above, it is clear that the identification of the criteria for assessing infringement by equivalents, as well as the methodology for applying such criteria, takes precedence in the assessment of interference.
Currently, there is a unanimous view in Italian jurisprudence that to avoid the risk of interference, the subsequent solution must employ different structural means and, therefore, fall outside the idea of the patented invention. While this is then defined with varying linguistic formulas, the basic concept remains the same (e.g., there are references to modifications, mere variants, obvious solutions for the average technician in the field, and so on).
As to methodology, it is customary in law – and especially in the ambit of court-ordered technical expertise investigations – to use various approaches.
These include, first, the element-by-element approach, which is illustrated by the Court of Milan (10 February 2012), which states that ” the investigation to assess equivalence between the invention that forms the subject matter of the patent and a subsequent embodiment (whose patent is applied for or whose infringement is under discussion) involves three steps: the first consists in identifying the core of the invention protected by the prior patent or so-called “inventive idea” at the basis of the patent, the second in comparing this inventive idea and the subsequent embodiment in order to highlight any differences, and the third in assessing the originality of the differences: there is no equivalence only if the variants of the subsequent embodiment with respect to the inventive idea are original or non-obvious (Rossi’s theory of equivalents and element by element approach). It remains, as has been observed, that equivalence does not relate to the problem that is addressed, but to the idea of its solution”.
Another methodology that is popular with court expertise opinions is the Function – Way – Result test (FWR test), also called the “triple based” approach, or “triple identity test”, “which essentially consists in verifying whether, for each technical element present in the object whose interference is to be assessed, but not literally indicated in the patent under examination, it performs essentially the same function (technical role), in substantially the same way (and therefore with similar technical means, it must be made clear that one cannot disregard the comparison of the structural characteristics of the technical means examined), in order to obtain substantially the same result, i.e. a result of the same type and quality” (Court of Milan, 17 December 2014). Put another way, a variant of the invention that is the subject matter of the patent should be considered to be included in the scope of protection of the same, as equivalent, if it is obvious to the engineer in the field that by using such a variant one can achieve substantially the same result through the explicitly claimed element.
Supreme Court, I Sec., Ord., October 20, 2022, No. 30943.
Having concluded this brief theoretical examination, we now come to the recent decision of the Court of Cassation, which, applying the concepts outlined above, confirms that the concept of infringement by equivalents is both useful and reasonable. Further, even in the absence of an express legal provision in statutory law, the institution of infringement by equivalents is not only fully compatible with the ratio of the system designed to protect the inventions underlying patent rights, but is precisely necessary to ensure it functions effectively. The dispute giving rise to this case alleged the infringement of a patent claiming a structure with modular elements for technical-functional interior decoration, in particular a shelving unit. In its defense, the defendant company counterclaimed that the asserted patent was invalid for lack of inventive step and novelty. The Court of First instance held that the patent was valid and infringed by equivalents, and this decision was confirmed on appeal. In its appeal to the Court of Cassation, the defendant company claimed that the lower courts had erred in the legal assessment of infringement by equivalents, specifically that the trial court had disregard the decision of the European Patent Office, which held the defendant’s own patent to be valid, and which the defendant company argued formed the basis for its allegedly infringing products. According to the defendant, the correspondence of the product with the defendant’s proprietary – and confirmed valid – patent excluded the applicability of the doctrine of equivalence.
The Court of Cassation disregarded the approach put forward by defendant company, first stating European Patent Office’s rejection of the opposition to the defendant’s patent has no binding effect on the Italian court. Indeed, a European patent consists of a bundle of national patents and, therefore, it remains within the power of the national court to assess the validity of the national fraction of the patent in the light of the national rules. Moreover, the Court affirmed that the first instance court’s assessment waslegitimate, insofar as the infringement by equivalents had been assessed in light of the product marketed by the defendant and not in light of the patent (assuming that there were important differences between that product and the defendant’s patent, and therefore the product could not be traced back to the patent in its entirety).
The Court then reinforced the well-established position that, in order to avoid a determination of infringement by equivalence, it must be established that, compared with the asserted patent, the contested embodiment offers a solution that is neither trivial nor repetitive in achieving the same end result. A solution that is neither repetitive nor trivial is understood to be one that exceeds the skills of the average technician faced with the same problem, since it is only in this case that one can determine that the solution lies outside the idea of the protected solution. Variations lacking originality, because they are obvious in light of the knowledge possessed by the average technician in the field who is faced with the same problem, do not constitute infringement by equivalents.