Three judges of the English Court of Appeal have unanimously upheld a decision of a trial judge in the English High Court, made in July last year, that Fabio Perini’s main European patent for a tailsealer is valid and that the method described in the patent was infringed by the use by the English company LPC (UK) Limited of two original Rotoseals, supplied by Paper Converting Machine Company (PCMC) Italia.
The Court of Appeal also upheld the judge’s decision that PCMC Italia is jointly and severally liable with LPC and rejected the attempt by PCMC Italia to escape liability by asserting that it had sold the Rotoseals in Italy and therefore it was not liable for infringement in England.
Fabio Perini made its claim in order to protect its intellectual assets. The claim was that the two Rotoseals sold by PCMC Italia to LPC infringed the method claims of both Fabio Perini’s main tailsealer patent and Fabio Perini’s improvement patent for a tailsealer. When the case started, PCMC Italia modified the Rotoseals at LPC, which resulted in the log of tissue paper being stationary at the point of application of the glue. Nevertheless, PCMC Italia continued to defend the case, saying that the original Rotoseals did not infringe.
It was held that the original Rotoseals did infringe, but the modified Rotoseals do not infringe the method of Fabio Perini’s main patent. Fabio Perini believes that the maximum speed at which the modified Rotoseal can seal logs is significantly reduced by the modification. The courts also held that Fabio Perini’s improvement patent is invalid, but that, if it had been valid, it would have been infringed by the method in the original Rotoseals, but not by the modified Rotoseals.
The result is that, in order to avoid further infringement of Fabio Perini’s main patent in the UK, PCMC Italia will have to modify its Rotoseals before selling them into the UK.
Fabio Perini is also entitled to payment of its damages or payment of the profits made by PCMC Italia as a result of the sales of the original Rotoseals to LPC and the profits made by LPC by using the two Rotoseals before they were modified.
