Italian Supreme Court overturns its previous decision on Italian Torpedoes

(the Italian version of this post is also published on the website “Diritto24” of Il Sole 24 Ore)

By decision no. 14508/13 of last 10 June, the Italian Supreme Court upheld jurisdiction of the Italian courts in the so called “Italian torpedoes”, i.e. cross-border proceedings for the declaration of non-infringement (“DNI”) of non-Italian portions of European patents. The ruling overturns a prior decision of the same Supreme Court in case BL Macchine Automatiche vs Windmoeller (decision no. 19550/2003).

As it is known, Italian Torpedoes are legal actions tipically filed in Italy by an alleged infringer who applies for a DNI regardless of whether his claims are grounded or not: by doing so, in fact, the alleged infringer basically prevents the patent holder from enforcing its patent in faster EU courts which would be willing stay their infringement proceedings util the end of the DNI action previously commenced in Italy. Jurisdiction of the Italian courts in similar cases has generally been grounded on Article 5(3) of the 1968 Brussels Convention, which largely corresponds to Art. 5(3) of EC Regulation no. 44/2001. Based on the latter provision “a person domiciled in a Member State may, in another Member State, be sued … in matters relating to tort, delict or quasi-delict, in the courts for the place where the harmful event occurred or may occur“.

In decision no. 19559/2003 in BL Macchine Automatiche vs Windmoeller, the Italian Supreme Court had denied jurisdiction of the Italian courts in similar cases stating that an alleged infringer applying for a DNI basically denies that any harmful event occurred, therefore Art. 5(3) above should not apply. Nevertheless, the ECJ in Folien Fischer case (C-133/11) recently stated that “point (3) of Article 5 of Regulation No 44/2001 must be interpreted as meaning that an action for a negative declaration seeking to establish the absence of liability in tort, delict, or quasi-delict falls within the scope of that provision“. This is why the Italian Supreme Court overturned its 2003 judgement by this recent decision no. 14058/13.

In the case at issue, the German company Asclepion Laser Technologies Gmbh (“Asclepion”) had sued before the court of Rome the US companies The General Hospital Corporation (Massachusetts General Hospital) and Palomar Medical Technologies Inc. (the “Claimants”), requesting the court to ascertain that it was not infringing the Italian and German parts of two European Patents held by the Claimants. The Claimants therefore filed an application before the Italian Supreme Court requesting it to declare that the jurisdiction on the case did not belong to the Italian courts, “since the suit was filed by a foreign company against two foreing defendants not based in Italy”. Nevertheless the Supreme Court, making reference to Art. 5(3) above and to the abovementioned ECJ decision in in Folien Fisher, finally found against the Claimants stating that, “in relation to the DNI applied for by Asclepion before the court of Rome, the Italian court has jurisdiction for being the judge of the place where the harmful event may occur, also in respect of the German part of the European Patent”.