The Court of Milan says that standard-essential patents may be only “optionally” implemented in compliant products.

This past September the Court of Milan issued an interesting – and so-far unpublished – decision in a patent infringement cahtc-legendse involving smartphones and standard-essential patents. The decision is noteworthy as it addressed (albeit briefly) the dynamics of standard-setting and the concept of essentiality, in partial reversal of previous decisions from the same Court and other Italian Courts.

The facts first. The case involved, on the one side, TLC giant HTC and, on the other, IPCom: a German non-practicing entity. Around 2010 IPCom pressed criminal charges against HTC, claiming that a number of HTC smartphones infringed three of its patents (EP 1 236 368, EP 0 913 979 and EP 1 226 692) that had been declared essential to a number of standards (e.g. WDCMA, SAP and UMTS). In response to this, in September 2010, HTC summoned IPCom before the Court of Milan, looking for a declaration of invalidity and non-infringement of said patents. IPCom counterclaimed for infringement, but only for EP 1 226 692 (hereinafter “EP ‘692“).

A (complex and very lengthy) technical investigation phase followed suit, with the appointment of an independent expert. In particular, it was questioned whether HTC smartphones would have directly or indirectly infringed EP ‘692, which was preliminarily deemed valid by the Court-appointed expert.

In assessing infringement, the experts and the Court had to first come at odds with the fact that EP ‘692 had been declared “essential” to ETSI, a prominent standard-setting organisation, for the UMTS standard. And that HTC smartphones were undisputedly compliant to said technical norm.

IPCom contended that since EP ‘692 was formally declared essential to the UMTS standard, every product that proved to be complaint with said standard would automatically infringe its patent.

The Court of Milan, however, viewed things differently.

In the first place, it held that a declaration of essentiality is a “necessarily unilateral” statement, particularly referring to paragraph 3.2 of the ETSI Guide on IPRs, wherein the Institute specifies that it “cannot confirm, or deny, that the patents/patent applications are, in fact, essential, or potentially essential” (for the latest version of the ESTI Guide on IPRs see here). Therefore, the Court affirmed that it had to assess the infringement on a factual and technical basis, implicitly affirming that it could not presumptively do so, on the basis of the patent’s declaration of essentiality alone.

In the second place, the Court of Milan further reviewed the UMTS technical specification at stake, noting that the execution of the activities covered by the patent (relating to the so-called PDCP layer), although regulated in the standard, were only optional for standard-compliant products. To ascertain this, the Court ordered for tests to be carried out on HTC smartphones, simulating both the network operations and the phones’ connection to the providers. As the test revealed that “the phones communicated to the base station that they cannot do” the particular operations mentioned in the patent and that, in any case, “Italian providers don’t ask them to do” said operations, the Court excluded the occurrence of both a direct and an indirect infringement of IPCom’s EP ‘692 patent.

This passage of the decision highlighted a circumstance that is often disregarded in the SEPs discourse: namely that technically-essential patents may be indeed essential, but in relation to portions of the standard that are only optionally implemented in compliant products.

In light of the above, the Court of Milan seems to have stepped away from a previous case law of 2008, where – in line with the technical report drafted by Court-appointed expert – it established infringement of a standard-essential patent by referring only to its essentiality and to the product’s necessary compliance to the standard: a sort of presumptive assessment of the infringement (see Court of Milan, 8 May 2008, Italtel s.p.a. et al. v. Sisvel s.p.a et al.; similar reasoning were put forward – although in preliminary injunction matters – also by Court of Genoa, 8 May 2004, Koniklijke Philips Electronics N.V. v. Computer Support Italcard s.r.l., in Giur. ann. dir. ind. 2006, 4949; Court of Trieste, 23 August 2011, Telefoaktiebolaget L.M. Ericsson v. ONDA Communication s.p.a. ,in Giur. ann. dir. ind. 2013, 5951).

The approach here suggested by the Court of Milan in determining the infringement of SEPs seems to better take into account the inherent technical and legal nuances of the standard setting dynamics, where the possibility of the so-called “over-disclosure” phenomenon — i.e. claiming essentiality for non-essential patents – is considered to be wide spread, and where specific technical features may often be only “optionally” implemented within standard-compliant products.

Giovanni Trabucco

Court of Milan, IP division, decision of 21 September 2016, No. 10288

Birkenstock fails to register as a trademark its shoes’ sole pattern

European Union General Court, 9 November 2016, Case T-579/14, Birkenstock Sales GmbH v EUIPO

By its judgement of 9 November 2016 the European Union General Court confirmed the refusal of protection of the international trademark registration of the Birkenstock sole pattern presenting wavy lines crisscrossing at right angles in a repetitive sequBirkenstock imageence.

The GC agreed with the assessment of the EUIPO Board of Appeal that the trade mark in question was devoid of any distinctive character in respect of orthopaedic shoes and parts therefor.

The GC found that the repetitive sequence could extend infinitely in all four directions of the square and therefore be applied to any two- or three-dimensional surface.

Thus the sign at issue would be perceived immediately as representing a surface pattern.

It observed that the case-law relating to signs that are indissociable from the appearance of the products should be applicable in the case at issue.

Such case-law stated that as the average consumers do not usually presume the commercial origin of goods on the basis of the signs that are indissociable from the goods themselves, those signs will have distinctive character only if they depart signicantly from the sectorial standards or usual practices (judgments of 12 January 2006, Deutsche SiSi-Werke v OHIM, C‑173/04 P, EU:C:2006:20, paragraph 31, and 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 28).

In the judgment of 19 September 2012, Fraas v OHIM, “Tartan pattern in dark grey, light grey, black, beige, dark red and light red” (T‑50/11) the Court already applied such a test  in the case of a figurative mark consisting of a part of the shape of the product that it represents, inasmuch as the relevant public will immediately and without further thought perceive it as a representation of a particularly interesting or attractive detail of the product in question, rather than as an indication of its commercial origin.

According to such case law, the court concluded that it was well known that the surfaces of goods or their packaging are decorated with patterns for a variety of reasons, including enhancing their aesthetic appearance and/or for technical reasons.

The decision has been appealed before the ECJ (C-26/17 P).

This is not the first case addressing whether an outsole is capable of functioning as a trademark. Many will remenber that Louboutin, the renowned footwear brand based in Paris, registered as a trademark the bright-red lacquered sole featuring its luxury footwear and filed a trademark infringement lawsuit against Yves Saint Laurent, Zara and other competitors, in a number of countries, including Swiss, France, Germany, Belgium and the United States. In these cases, however, the limits of the protection granted to the colour red contained in a trademark were at issue, with very different outcomes.

Just for mention the most significant findings, the U.S. Second Circuit Court of Appeals (No. 11-3303, 2013) found that the Red Sole Trademark had acquired secondary meaning, but only to the extent the sole did contrast with the upper part of a shoe (i.e., not in case of monochromatic red shoes). On the contrary, The Swiss Federal Administrative Court ruled that the red soles are merely a decoration, ineligible for trademark protection (decision B-6219/2013) and the French Supreme Court (may 30, 2012) stated the 3D mark could not be registered because the shape lacks distinctiveness and is imposed by its function.

Jacopo Ciani

Time limits for amending patent claims in pending litigations: the opinion of the Tribunal of Milan

The Tribunal of Milan (full text here) has recently ruled (for the first time) over a thorny issue concerning the Patent Limitation Procedure regulated by art 79.3 of the Italian Industrial Property Code (“CPI”). The norm states that “In a proceeding concerning nullity, the owner of the patent has the right to submit to the Court, at any stage or instance of the trial, modified claims that remain within the limits of the content of the patent application as initially filed and that does not extend the protection conferred by the patent granted” (emphasis added).

T1he facts of the dispute are simple. Thermorossi S.p.A. claimed that several competitors infringed its European patent’s Italian Portion No EP 2 083 221 on “heating apparatuses such as pellet-fired stoves and thermostoves”. As counterclaim, the defendants filed an action for the declaration of invalidity of EP ‘221.

Since an Opposition was filed against EP ‘221 and the EPO decision (through which the Patent was amended) was published only after the Italian final hearing, the owner presented to the Tribunal a set of amended claims only in the final statement.

Despite Thermorossi had known EPO’s decision only after its final hearing, Milan’s Tribunal stated that the new set of claims could not be considered in that procedure because the final hearing had already identified the object of the trial. According to the Tribunal, in light of the Constitutional principle of reasonable delay (Article 111.1 Italian Constitution), the right to file a new set of claims cannot be exercised after the final hearing.

Due to this reason, the Tribunal took into account the patent as originally approved by the EPO. Furthermore, it declared the Italian portion of EP ‘221 invalid and consequently rejected all the requests filed by Thermorossi.


The Tribunal rightly points out that Article 79.3 CPI should be interpreted in light of the Constitutional principle of reasonable delay. This consideration is certainly well founded considering that the limitation procedure (which requires the modified claim to be within the content limits of the patent application as initially filed and does not allow to extend the protection conferred by the patent previously granted), often requires an in-depth technical analysis. However, while it is true that in applying Article 79.3 CPI the Judge has to respect the principle of reasonable delay, it is equally true that the Court must make a case by case assessment. The words “at any stage of the trial ” seem to admit the reformulation of the claims even after the final hearing if this is deemed necessary for the overall economy of the judicial procedure (the opposite solution would require the institution of a new trial).

Giovanna Sverzellati

Tribunal of Milan, IP section, decision of 20 October 2016, No. 11544