2026-04-21 - LD Milan - Dainese v. Alpinestars - UPC_CFI_472/2024
- Aktenzeichen:
- UPC_CFI_472/2024
- Datum:
- Spruchkörper:
- Court of First Instance - Milan (IT) Local Division
- Art:
- Decision
- Parteien:
- Dainese S.p.A. v. Alpinestars S.p.A., Alpinestars Research S.p.a., Motorcard Bike S.I.
Kernaussage: ENGLISH:
2026-04-21 - LD Milan - Dainese
v.
Alpinestars - UPC_CFI_472/2024
ENGLISH:
In proceedings on the merits of infringement against several defendants, one of whom is domiciled in Spain and is sued for infringement of the Spanish portion of the same patent, the risk of irreconcilable judgements pursuant to Art. 8 of the European Regulation (EU) no. 1215/2012, as interpreted by the Court of Justice, exists if the Court verifies that:
i) it is the same factual situation (i.e. parallel patent rights infringed in an identical manner: being part, as are the other defendants, of the same infringement chain, acting as a distributor of products manufactured by the other defendants; joint and several liability for damages);
(ii) it is the same legal situation (in the case of Spain, implementation of the substantive rules set out in the Enforcement Directive);
(iii) Spanish defendant reasonably would have been expected to be sued before the court of another Member State, such as the UPC (predictability);
(iv) it is not an abusive summoning of the Spanish defendant before the Court of another Member State.
landmark
In the first UPC merits decision to tackle Art. 8(1) Brussels I Recast against a Spanish (non-UPC) defendant, the Milan Local Division established a four-factor framework for irreconcilable-judgments jurisdiction over a non-UPC-domiciled EU defendant sued alongside UPC-domiciled defendants: (i) same factual situation, (ii) same legal situation (satisfied where the relevant national law implements the Enforcement Directive and tracks Arts. 25–26 UPCA), (iii) predictability for the defendant, and (iv) no abuse of forum. The Division declined to await the CJEU referral (UPC_CoA_789/2025–813/2025) because that referral concerns provisional measures, not merits. Applying this framework to Motocard Bike, the Division asserted jurisdiction over its Spanish conduct but — because of the parallel Spanish nullity action and the exclusive-jurisdiction rule of Art. 24(4) Brussels I Recast (including the BSH/Electrolux (C-339/22) considerations) — separated the Spanish-territory infringement limb and stayed it until the Spanish validity ruling is final. On the merits, the Division confirmed EP 4 072 364 as maintained by the EPO Opposition Division (main-request claim = granted claims 1 + 5 + 7) applying the Amgen/Sanofi (UPC_CoA_528/2024) and Meril/Edwards (UPC_CoA_464/2024) inventive-step framework; in particular, D11 (fabric air-mattress art) was held to be in a non-relevant technical field under Nanostring/10x, so the D1 + D11 combination required hindsight. But the Division dismissed the infringement action: the 'second region' of claim 1 must be non-negligible and must permit real ventilation, so minimal manufacturing-tolerance clearances (Aachen study: 7.5% of surface in Tech-Air 3/10) do not qualify, and Alpinestars' single-bag airbag is not a hand/comb shape. Costs allocated so that each party bears its own (Art. 69(2) UPCA), reflecting Dainese's victory on validity but defeat on infringement.
Nichtigkeitsgründe
Art. 138 EPCNovelty
Patent invalid (this ground)Art. 54 EPC · Art. 138(1)(a) EPC
“Novelty of claim 1 (Main Request) affirmed over D3 (Art. 54(3) EPC), D4/D5 (Spidi jacket) and D8 — the Division confirmed the EPO Opposition Division's novelty conclusions [80-96].”
Inventive Step
Patent invalid (this ground)Art. 56 EPC · Art. 138(1)(a) EPC
“Inventive step affirmed over D1 + D11 (D11 an inflatable-mattress document, held to be outside the relevant technical field of protective garments per Nanostring/10x, so combination required hindsight) and over Bering vest + Spidi jacket [97-108].”
Added Matter
Patent survived (this ground)Art. 123(2) EPC · Art. 138(1)(c) EPC
“Added-matter objection implicitly rejected (Main Request is mere combination of granted claims 1 + 5 + 7) [50, 71, 72].”
Insufficiency of Disclosure
Patent survived (this ground)Art. 83 EPC · Art. 138(1)(b) EPC
“Description and figures give the skilled person sufficient information; alleged ambiguity does not prevent reduction to practice [72].”
Clarity
Patent survived (this ground)Art. 84 EPC · derivative
“Alleged inconsistency between 'one or more housings' (features d/e) and 'plurality of housings' (feature l) rejected — contradiction already in granted claims, resolvable by the skilled person and no post-grant clarity attack succeeds [69-72].”
Priority
Patent invalid (this ground)Art. 87 EPC · derivative
“Priority of claim 1 (Main Request) validly claimed from P1 (IT 201900023958, 13 December 2019); no need to examine P2/P3 [73-76].”