A recent ruling of the Milan IP Court in a patent litigation (which we already examined from a different perspective here) contains some interesting statements on the scope of infringement claims, the reach of court injunctions and the extent of damages. We examine them briefly below, keeping in mind that the patent owner in the case in hand had requested that damages be set on the basis of the infringer’s profits:
- An infringer claiming that the profits it made after a redesign of the infringing product (allegedly causing it to fall outside the scope of protection of the disputed patent) should be ruled out from the calculation of damages has, among other things, the burden of proving that the units manufactured prior to the redesign have not contributed to the profits of the subsequent period (in other words, that they have been left in stock or have been destroyed);
- On the other hand, the award of damages may not take into account an infringer’s product other than that identified by the patent owner in the original statement of claim, unless the claims have been amended accordingly within the time limit provided for by the Civil Procedure Code;
- Instead, a court injunction against an infringer extends, by its nature, to all products that may be said to fall within the prohibition contained therein, provided that, if their identification is disputed between the parties, said products are singled out after hearing the parties in special proceedings provided for under the Civil Procedure Code;
- The calculation of the infringer’s profits cannot include profits deriving from the sale of goods sold with the infringing product (so-called “convoyed sales” in U.S. legal literature – in the case in hand, the infringing product was a door lock, and the ancillary product was a door lock striker) in the absence of a “specific and timely claim” and proof of a “functional unit” relationship between the two products by the patent owner.