Patent Enforcement Survives Main Claim Nullity: A Decision by the Venice Court of Appeal

By judgment No. 1599/2025 of 5 May 2025, the Venice IP Court of Appeal affirmed that it is possible to obtain a declaratory judgment of infringement and the related injunctive and compensatory relief even with respect to a patent whose main claim has been declared invalid.

The lawsuit was brought by a company that specialised in the production of machinery for the processing of jewellery and precious stones against two competitors accused of marketing a machine allegedly infringing an Italian patent relating to a diamond-cutting machine owned by the former.

In the first instance proceedings, the court-appointed expert, tasked with assessing the validity of the patent—which had been challenged by way of a counterclaim—concluded that claim No. 1 lacked an inventive step, but that its combination with dependent claim No. 14 gave rise to a new and non-obvious independent claim. The Venice IP Tribunal, endorsing the expert’s conclusions, found the patent to be “valid and infringed” and issued injunctive relief and an order for damages against the defendants.

On appeal, however, the decision was completely overturned: the Court of Appeal declared the patent invalid, dismissed all the plaintiff's claims, and ordered it to pay legal fees. According to the Court, the combination of claims gave rise to a different invention, and therefore to a patent objectively different from the one asserted, thus requiring a declaration of total invalidity.

However, the plaintiff successfully appealed this decision to the Court of Cassation.

The Supreme Court observed that Article 76(2) of the Italian Intellectual Property Code (CPI) embodies a principle of conservation of patent rights, according to which the partial invalidity of a patent does not affect the remaining part, provided that it meets the requirements of patentability—resulting in a limited, but still valid, patent.

In the present case, the Supreme Court held that this effect was achieved by recognising a new independent claim comprising certain features from the invalidated main claim, which were downgraded from characterising features to pre-characterising features, i.e., prior art. In the Court’s own words: «There is no legal obstacle to holding, in absolute terms, that a dependent claim (such as, in this case, claim 14) may retain its validity—with the resulting partial invalidity of the patent—when the main claim is invalid».

Accordingly, the Supreme Court quashed the Court of Appeal’s decision and remanded the case, laying down the following principle of law:

«The partial invalidity of a patent, as provided for in Article 76(2) of the CPI, which serves to preserve the validity of other concurrent claims that meet the legal requirements for patentability, may be declared in the presence of the invalidity of an independent claim (in the case at hand, for lack of an inventive step), where the patent includes another valid dependent claim, in relation to which the content of the invalid claim may be regarded as part of the prior art».

Upon retrial, and being bound by the Supreme Court’s ruling, the Venice IP Court of Appeal reaffirmed that the patent was “valid and infringed”, thereby upholding the original first-instance decision.

According to the Court, the first-instance judgment had merely failed to formally state the partial invalidity of the patent in its operative part, although the reasons and corresponding limiting effect had been fully recognised in the grounds provided for the decision. In other words, the Tribunal had already considered valid the scope of protection defined by claim 14 in combination with the relevant features of independent claim 1.

The Court further held that the defendants' conduct amounted to unfair competition, as the know-how necessary to unlawfully exploit the patent had been made available to the defendants by a former employee of the plaintiff. The employee had started collaborating with the defendants in breach of the rule prohibiting a former employee from using— for the benefit of third parties—knowledge going beyond his or her own professional skills, and the corresponding prohibition on third parties from making use of such information.

Accordingly, the Court upheld the injunctive measures and order to withdraw the infringing goods from the market. As regards damages, the Court held that they should be assessed on the basis of the discounts that the plaintiff had been forced to grant to its customers in order to retain them, after they had been offered equivalent machines at lower prices by the infringing competitors. It is noteworthy that the amount awarded—over €500,000—was significantly higher than the profit earned by the infringers through the infringing sales.