A – owner of a patent related to a particular chemical solution – brought an action against Z, contesting the infringement of its own title after Z used a solution similar to the one patented.
The Court of Venice, even if in precautionary phase, and therefore following a summary examination, confirmed the infringement.
The patented invention concerns a hydroalcoholic solution which increases the percentage of humidity, conferring softness to the food product, in which it is injected, in order to store it also at room temperature (so-called shelf life).
The defense of Z
The defense of Z insisted on the fact that the hydroalcoholic solution used differed substantially from the one patented by A, as it is composed not only by water and alcohol, but also by syrups and aromas.
Secondly, Z contested that, during the phase of description, the identity of scope of the solution used by Z compared to the one patented by A was not ascertained, and that the exams conducted on the softness and the composition of the solution itself were not enough.
The order of the Court of Venice
The Court of Venice, with the order issued on 24th November 2022, preliminarily recognized and then reiterated what stated by the jurisprudence of the EPO court of appeals (G2/88 and G6/88), that is that “a new use of a known substance is theoretically patentable also when the only new feature is the different use of a known substance, if such use entails a new technical effect not recognized before”.
On the basis of this statement, the Court determined the irrelevance of Z’s first argument as, even though it specified that the solution contained also syrups and aromas, Z “did not anyway prove that the adding of such elements, with respect to the patented solution, is able to prevent and modify the effect of the hydroalcoholic solution as such”.
Moreover, the Court considered that Z did not “even attached what possible different technical effect (which the complaint of the failed proof of the “purpose” must be intended refers to), completely different from the obtaining of humidity/softness, it wants to obtain and would obtain in reality” through the implementation of the contested solution.
Moreover, the director of Z, during the description, made statements expressly referring to “the desired humidity”. As a result, the Court assumed that the purpose of the hydroalcoholic substance is completely identical to the one of the solution patented by A, that is increasing the humidity and consequently the softness of the product.
The Court then considered, contrary to what stated by the defense of Z, that the ascertainment of the infringement occurred through the measurement of the percentage of humidity recorded in the Z products. As a matter of facts as above-mentioned, the percentage of humidity indicates the level of softness of the product.
The analysis conducted on the Z products reported the same percentage of humidity and, therefore, the same softness than the products containing the hydroalcoholic solution patented by A.
Conclusions
In light of what reported above, the Court of Venice stated the existence of the conditions of the patent infringement perpetrated by Z. The order confirmed the inaudita altera parte description. Moreover, the Court arranged the injunction against Z of the prosecution of the actualization of the productive processes interfering with patent A, besides that the commercialization of the baked goods produces in infringement of the patent itself.
Finally, the Court ordered the seizure both of the injection machines of Z and of the hydroalcoholic solutions used, fixing a penalty for each day of delay in complying with the injunction.
Elena Bandinelli