Dainese S.p.A. v Alpinestars S.p.A., Alpinestars Research S.p.A. and Motocard Bike S.l., UPC CFI Milan Local Division, Case Number UPC CFI 472/2024, UPC CFI 792/2024, UPC CFI 831/2024, UPC CFI 182/2025
Background
On 8 August 2024, Dainese filed an infringement action in the UPC against six defendants, including Italian companies, Alpinestars and Spanish company, Motocard, on the basis of two patents, EP 3 498 117 (“EP 117”) and EP 4 072 364 (“EP 364”). The claims concerning EP 117 and the other defendants fell away, leaving the focus of the proceedings on infringement/revocation of EP 364 by Alpinestars and Motocard.
Jurisdiction
At the time of the oral hearing, a national revocation action against the Spanish designation of EP 364 was ongoing, the EPO OD had maintained EP 364 in amended form following an opposition hearing (which was identical to the form of the main request put before the Milan Local Division), an appeal against the OD decision had been filed, and proceedings on the merits on the assignment of EP 364 were pending before the Venice court.
The Defendants objected to the jurisdiction of the UPC and requested that the proceedings at least be stayed pending the outcome of the referral of UPC CoA 789/2025 to UPC CoA 813/2025 (on the risk of irreconcilable judgments) to the Court of Justice of the EU.
The Milan Local Division declined to grant the stay, as it considered that the case raised by the Court of Appeal was different from the case at hand.
Rejecting the Defendants’ preliminary objection on jurisdiction, the Milan LD concluded that all the requirements for the application of Article 8, Brussels I Regulation were met on the basis that:
(i) the proceedings concerned the parallel patents and the same acts of infringement;
(ii) the Spanish and UPC rules on infringement were in effect aligned (reflecting their common origin);
(iii) and the defendants could reasonable have foreseen that they would be sued in a Member State where at least one of them is domiciled.
Spanish territory
In spite of the above, the Milan LD did consider it necessary to stay the aspects of the proceedings concerning infringement in Spain on the basis that:
(i) Spain is not a UPC Member State;
(ii) the UPC has no jurisdiction against the Spanish national portion of European patents; and
(iii) the Spanish national court has exclusive jurisdiction in accordance with Article 24 of Brussels I (recast).
The Milan LD therefore separated and stayed the action for infringement of EP 364 regarding the Spanish territory until the national validity proceedings are concluded.
Infringement & validity
Despite the ongoing appeal to the TBA with respect to EP 364, t Each party was ordered to pay its own costs.
A copy of the decision can be found here.
