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Global law firm Dentons is pleased to announce that the Paris Court of Appeal, the Higher Regional Court of Karlsruhe and the Barcelona Provincial Court have all issued final decisions dismissing Essity’s claims of patent infringement in regards to Industrie Cartarie Tronchetti’s (ICT) three ply toilet paper. With Dentons’ counsel, ICT successfully demonstrated beyond a doubt that its branded and private label products are produced based on its own proprietary process, and patented under European patent 2 353 859.
Dentons has been advising Industrie Cartarie Tronchetti S.p.A since 2016. Based in Lucca, ICT is a leader in the category of high quality tissue paper products for domestic use, and has subsidiaries in Italy, Spain, Germany, France and Poland.
The Paris decision, which is the most recent, ends a long-running patent infringement litigation with Essity and affirms ICT can continue to produce and distribute absorbent paper based on its own proprietary technology. The three courts in France, Germany, and Spain have confirmed ICT’s argument that it is using its own novel technology, also patented. Essity’s claims of infringement were based on a patent originally filed by Georgia Pacific, and subsequently becoming Essity’s.
Dentons partner David Masson served as lead partner and represented ICT in France. Dentons partner Dr. Constantin Rehaag represented ICT in Germany, and PwC partner Alejandra Matas Brancós represented the client in Spain, with the support of Dentons partner Juan Ignacio Alonso.
David Masson, lead lawyer on the case, commented: “It has been very interesting to understand ICT’s own technology and work closely with different teams, including ICT’s R&D department, which has been part of all strategic and technical decisions throughout the case”.
Constantin Rehaag, who represented the client in the German court hearings and coordinated the work with the client’s patent attorneys, said: “This is an outstanding success of a great team formed by the client, who provided us with invaluable technological insight, the team of patent attorneys and, finally, by the Dentons teams in France, Spain and Germany.”
The patent litigation began in 2016 when Essity sued ICT in France, Germany and Spain for the alleged infringement of its patent related to the technical solution for the bonding of three layers of tissue for paper products such as high quality, soft and bulky, toilet paper.
In France, Essity claimed that ICT had breached the French part of its European patent 1 081 284 and that the toilet paper marketed as Foxy Soie Plus, and also certain other private labels produced by ICT France, had infringed on their patent. Essity demanded that all production operations be halted. The rolls of toilet paper were carefully analyzed and there were no findings of infringement. The two French courts – in first instance and appeal – rejected the claims and ordered Essity to pay compensation for the legal fees to ICT Italy and ICT France.
In Germany, the case was first taken to the Mannheim District Court, which is well reputed in patent matters. The lawsuit mainly focused on the complex questions regarding the construing of the claims of Essity’s patent. The court ruled in favour of ICT, and Essity filed an appeal. In August 2019, the Higher Regional Court of Karlsruhe also ruled that the German subsidiary of ICT did not infringe the German part of the patent 1 081 284.
In Spain, after a first decision in favor of Essity in the lower court, the Barcelona Provincial Court clearly stated in a written appeal that ICT’s products – and in particular, Foxy Seda, Foxy Bouquet, certain three-ply private label products – did not infringe the Spanish part of the patent 1 081 284.
Industrie Cartarie Tronchetti (ICT) was founded in 1976 in Italy, in the Lucca province, to operate in the tissue sector, producing high quality paper exclusively from virgin fibre. The first production facility was opened in 1978 in Piano della Rocca, Lucca, and over the years new plants and facilities have been set up in Piano della Rocca, Diecimo and Piano di Coreglia. The Foxy brand, one of the leading brands in the European market, was launched in 1982. ICT is an example of excellence in the paper industry, in full harmony with the tradition of the Lucca region, where the most important Italian papermaking hub is located, on a par with those of Green Bay (USA) and Fuji (Japan). In Lucca in particular, great expertise has been nurtured in the field of paper for household use, and the city is in fact known as the world tissue capital. Today, ICT SpA boasts an annual production capacity of about 160,000 tonnes.
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