With an order issued on 16 June 2021 (available here), the Court of Turin applied the proportionality principle in calibrating the scope of a preliminary injunction, with a carve out that excluded the application of the injunction to three ongoing supplies to health facilities.

The case concerned a number of patents owned by the plaintiff covering an aortic valve and its positioning system, two of which were held valid and infringed by the products of the defendant companies. In light of such findings, the Court issued an injunction, carving out from its scope three supplies to health facilities, two of which had already been performed and one of which had been awarded and was in the process of being performed. In order to do so, the Court applied Article 124(6) IP Code, which provides i.a. for the proportionality principle to be applied to remedies in patent cases and was invoked by the defendant companies.

Article 124(6) IP Code can be translated as follows:

“Removal or destruction, as well as prohibition of use, of items that constitute infringement of IP rights shall not be ordered when they belong to a person who makes only a personal or domestic use of them. In applying the corrective measures, the judicial authority must take account of the necessary proportion between the seriousness of the infringement and the corrective measures ordered, as well as of the interests of third parties”

This is the first time in Italy where a Court applies the proportionality principle to limit an injunction issued in the context of a patent infringement suit and does so by relying on Article 124(6) IP Code, whose application to injunctive relief had so far been questioned. The sole Italian precedent recalled by the Court of Turin (Court of Milan, 29 October 2019, Heraeus v. Biomet – available on darts-ip and commented here) concerned an injunction issued in a case of misappropriation of trade secrets, whereby the Court of Milan similarly applied the proportionality principle but relying on Article 124(6-bis) IP Code, which implements the Trade Secrets Directive (2016/943) and only applies to trade secrets, thereby granting a one-year “grace period” for its final injunction to take effect in relation to supplies to health facilities.

In any event, the arguments in favor of the application of the proportionality principle put forward by the Court of Turin closely mirror the ones previously brought by the Court of Milan. Indeed, as some readers may recall (see again our post commenting the decision here), the Milan judges limited in time the effects of the injunction issued in order to “safeguard the continuity of ongoing supplies to public administrations and hospital facilities”. A similar reasoning was adopted by the Court of Turin, taking account of the public interest to the proper functioning of the healthcare structures involved in the supply of the infringing products.

From a comparative perspective, the Court of Turin also explicitly referred to the principles expressed by the England and Wales High Court, which in a similar case had established the necessity to “ensure a balance between the [private] interest in maintaining the exclusivity conferred by the patent […] and the public interest in ensuring that patients with aortic stenosis receive appropriate treatment” (cf. Edwards Lifesciences v Boston Scientific [2018] EWHC 1256).

No mention was made instead to the later decision, by Justice Birss in Evalve v Edwards Lifesciences [2020] EWHC 514, whereby the English Court excluded application of the proportionality principle invoked by the alleged infringers to deny in the abstract the imposition of the injunction. It is worth noting, however, that in such case the Court granted the injunction in the face of an inter partes agreement which ensured a carve out for certain limited uses in which the patent holder’s aortic valve had proved unsuitable.