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7 April 2025
Local Division Milan, Dainese v Alpinestars
Amendment of claim
Background
Dainese filed infringement proceedings against Alpinestars based on EP 117 and EP 364.
At first instance, the Opposition Division of the EPO had maintained EP 117 unamended. However, on appeal the Board of Appeal had restricted EP 117 to the combination of claim 1, 6, 8 and 9.
Facts
On 17 February 2025 Dainese requests:
- to exclude EP 117 from the proceedings
- to maintain the claims based on EP 364
- to be partially reimbursed for court fees for an amount of € 12,000.
On 27 March 2025 the defendants answered requesting an award of:
€ 100,000 to each of three defendants based on R. 265(2) RoP arguing that in fact Dainese’s request was a partial withdrawal governed by R. 265 RoP rather than R. 263 RoP (amendment of claim or case).
The Court
- This request is a request for amendment ex R. 263 RoP, which, if it concerns a limitation, must be granted.
- Costs cannot be awarded after an amendment ex R. 263 RoP. The costs will be decided at the end of the case.
- No reimbursement of court costs, since this is not a case of withdrawal (R. 370.9(b)(1) RoP) and there was no substantive motivation justifying the reimbursement of costs.
Comment
- This decision seems correct. It is clearly not a withdrawal of the claimant’s “action” but a limitation of the claim and at that time, the defendants would be entitled to the costs they incurred at the end of the proceedings and defendants would be entitled to the costs which they incurred in defending against EP 117. However, they should specify such costs at that time and not request the unspecified amount of € 100,000 for each defendant (again assuming that parties before the oral argument cannot agree on costs which, as said many times before, would generally be the best way for clients and the Court to settle costs).
- A lesson for representatives: if you request something give reasons for your request!
4 July 2025? (on the website UPC on 8 April 2025)
Local Division Milan, Dainese v Alpinestars
Comment
- Same decision as hereabove in the same case but Milan is already telling us now what will be decided on 4 July 2025! This wrong date has not even been spotted by the (AI?) person who publishes decisions.
- The person who publishes should not publish the same decision multiple times because each defendant has its own workflow.
8 April 2025
Local Division Milan, Dainese v Alpinestars
Jurisdiction
Facts
Dainese sued different defendants including the Italian company Alpinestars, for patent infringement covering the territories of the Contracting States of the UPC and Spain. The Italian company filed a preliminary objection arguing that: the UPC lacks jurisdiction; or that the complaint was inadmissible; or that the Court had no jurisdiction regarding Spain; alternatively, that an extension of three months after the decision in the preliminary objection proceedings should be granted for the filing of its Defence.
The Court
- The lack of jurisdiction was apparently denied. I say apparently, as the reasoning and conclusion of the Court is blacked out! The only reason that the Court would not have jurisdiction against an Italian defendant could as far as I can see be that the patent is (still) opted out or that there is an agreement between the parties to have infringement of the EP decided in another forum (see Brussels Regulation Art. 25).
- The argument regarding the inadmissibility of the Complaint was rejected, as inadmissibility is not listed as a ground in R. 19.1 RoP.
- The argument that the Court lacks jurisdiction for Spain against the Italian defendant was rejected as incorrect (see BSH-Hausgeräte).