Court of Rome, Decisions of 8 July 2011 and 2 September 2011

Telefonaktiebolaget L.M. Ericsson (Ericsson), a holding of Ericsson group, claimed infringement of various patents covering the standardized technologies GSM and EDGE by ZTE Italy S.r.l. (ZTE), a subsidiary of ZTE Corp. Ericsson claimed that ZTE which imports and commercializes mobile phones, used these technologies.

ZTE Corp. had been negotiating a license with Ericsson for the use of Ericsson's essential patents. However, the license had not been granted at the time of the trial, since the parties could not agree on the structure and the conditions of the license. During the negotiations, Ericsson began interim proceedings against ZTE Italy seeking, inter alia, an injunction preventing ZTE from producing, importing, and dealing products copying its patents.

The Court of Rome, both in first instance and on appeal, denied all Ericsson claims.

In particular, the Court of Rome addressed the issue of essential patents in interim proceedings.

The court challenged the presumption of the essentiality of the patents. It said that in order to confirm the essential nature of patents it was necessary to examine the technologies covered. However, such examination would be too complex to comply with the need of a rapid decision characterizing interim proceedings.

More importantly, the court maintained that, even if it could be assumed that the patents were valid and essential to the standard, there would be no irreparable harm to justify the grant of an interim measure, as in the main proceedings, only a pecuniary damage of easy calculation would be granted.

The Court of Rome then argued that if the patents were essential, the licenses would need to be granted at FRAND conditions on the basis of analogous licenses. This decision confirms Italian case law according to which irreparable harm must not only be pecuniary, and applies this to the case of essential patents. On appeal, the Court of Rome in particular dismissed Ericsson's argument that it had to institute interim proceedings in order to avoid the patent at issue losing commercial value due to the alleged infringement and ruled that Ericsson could act on the merits to defend its rights.