The Relevance of the Description in defining the protection of a patent

By ruling of 12 May 2017, the Court of Milan has definitively expressed its views on the case registered under no. 84810.

The case submitted to the Court of Milan dealt with the litigation between the owner of the patent no. 1396744, Mr. Carlo Chiodo (the demandant), and the company Digicom S.p.a. (the defendant).

Carlo Chiodo sues Digicom S.p.a. for having counterfeited the abovementioned patent. The alleged counterfeiting comes from the commercialization by Digicom S.p.a. of a similar system called “VEGA”.

The defendant entirely objects the counterfeiting and submits a counterclaim of nullity of the patent in light of a system before known as “Sistema Digicom 2014”.

The case, in my opinion, is interesting because the court expert has to interpret the claim in light of the description that has resulted in a restricting interpretation of the claim.

Briefly, patent no. 1396744 concerns a management system of electronic gaming devices (like slot machines) through which the user can monitor remotely the machines and eventually send orders.

This system includes an access point to a GPRS network which is equipped with serial ports that can be linked to the serial ports of the gaming machines. Thus, the user, by means of the GPRS network, can consult the gaming machines and have the requested information in return.

The invention foresees a wireless module connected to a serial port of the access point which communicates with a GPS device by a second wireless module. As a consequence, at any request, the first wireless module receives that request that corresponds to an information of geolocation which is very important on a security level. Through this solution there is no need for the rewriting of new specifications of communication and/or firmware since the first wireless module is an external module connected to one of the serial ports used for the connection to the serial port of one gaming machines. The GPS responds as a slot machines with the same record tracking but with a sequence representing a position. This solution is simpler because it does not need firmware adaptations. These technical effects are clearly descripted in the patent at page 10 lines 6-14 and also at page 5 line 33 and page 6 line 7.

Sistema Digicom 2014, that in order to have the patent annulled was presented by the defendant as prior art, connects to a serial port and is able to send data of geolocation by a mobile phone network rather than a GPS satphone system.

Thanks to a great interpretation of the claim in light of the description, the court expert has correctly interpreted the field of protection of the demandant’s patent “limiting” it in its “protective range” and deeming it absolutely inventive in relation to the prior art “sistema Digicom 2014”.

Even though the GPS system may be thought as an equivalent of the mobile phone system, the claim tells that the first wireless module is connected to a serial port of said access point and that serial port (as in the introduction) can be connected to a serial port that corresponds to a gaming device. Thus, it is implicitly necessary that the GPS communicates using the same “language” of the gaming machine. It is consulted as if it were a gaming machine using the same record tracking used by the slot machines.

This aspect could not originate by the prior art proposed by the defendant therefore, the patent was considered inventive.

Such a conclusion was principally determined by a correct consideration of the description which openly mentions this technical advantage. Even if the claim could be theoretically interpreted widely, since it does not make reference to communication protocols, it could only exclude the hypothesis for which the access of the GPS occurs by means of protocols different from those used for the communication with machines.

An apparently wider claim “Genus” was interpreted by the court expert as a “Species”, limiting the protection range but deeming the patent inventive.

The patent was save but this limiting interpretation, which represents the cornerstone of the novelty and of the inventive activity, cannot be further generalized when evaluating a infringement. In that case, there would be a lack of the technical advantages that made it granted. The interpretative content at the validity analysis stage should be maintained also during the comparison between the claim and the object of the questioned infringement.

As properly remarked by the court expert, the VEGA system needs a different firmware programming because the serial port is not set up to communicate with a gaming machine. Briefly, the serial port connecting to the GPS module is not set up as to connect to a serial port of the gaming machine. In this sense, the partially interpreted claim is not affected by the VEGA product and the court expert does not consider it an infringement.

Also the attempt to introduce the infringement  by equivalents is groundless.

The equivalence needs two solution at the same level. For example, “Function-Way-Result” is a criteria to evaluate the equivalence, that is reaching the same result with the same means performing the same function.

The limiting interpretation of the claim, responsible for the grant of the patent, led to the identification of an implicit technical element which was not realized by the VEGA product (to prevent firmware reprogramming). The so-called “Result” fails and the VEGA product cannot be put at the same level of the claimed object.

The court office thinks clearly obvious the lack of equivalence and states that there is no infringement.

In the end, the patent has been considered valid but no infringement was identified.

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