Short Summary
Dainese S.p.A., the claimant in a patent infringement action concerning two European patents (EP'364 and EP'117), filed an application under Rule 263.3 RoP to limit its claims by withdrawing all arguments related to EP'117 following an adverse EPO Board of Appeal opinion, while maintaining claims regarding EP'364. The defendants opposed, arguing the application should be treated as a partial withdrawal under Rule 265 RoP and sought cost decisions. The Milan Local Division granted leave to limit the claims under Rule 263.3 RoP, rejected the request for partial reimbursement of court fees, and postponed the costs decision to the main proceedings.
Detailed Summary
This order was issued by the Milan Local Division of the Unified Patent Court on 7 April 2025 in proceedings concerning an infringement action brought by Dainese S.p.A. against Alpinestars S.p.A., Alpinestars Research S.p.A., and Motocard Bike S.l. The action initially concerned two European patents owned by Dainese: EP4072364 (EP'364) and EP3498117 (EP'117).
On 17 February 2025, Dainese filed an application for leave to limit claims pursuant to Rule 263.3 RoP, following an adverse decision by the Board of Appeal of the EPO. Dainese sought to exclude all arguments, requests, and pleadings related to the infringement of EP'117, while maintaining its claims regarding EP'364. Dainese explained that it could not have predicted that the Board of Appeal would limit the scope of EP'117 to the combination of subject-matter defined in claims 1, 6, 8, and 9, particularly since the patent had been maintained unamended after first-instance opposition proceedings. Dainese also requested partial reimbursement of court fees in the amount of 12,000 EUR.
The defendants filed defensive briefs arguing that Dainese's application constituted a partial withdrawal governed by Rule 265 RoP rather than Rule 263 RoP, and requested a cost decision ordering Dainese to reimburse each defendant 100,000 EUR. Alternatively, they requested separation of proceedings regarding EP'117 and declaration that the action was closed under Rule 265 RoP.
The Court, sitting as a Full Panel, analyzed the distinction between Rule 263 RoP and Rule 265 RoP. The Court held that Rule 263.3 RoP governs the amendment of a case, which occurs when the nature or scope of the dispute changes. The Court reasoned that the limitation of claims under Rule 263.3 RoP covers both limitation of the relief sought (petitum) and limitation of the cause of action (causa petendi), including the situation where a patentee, having initially sued for infringement of multiple patents, renounces one of them. The Court relied on UPC Court of Appeal case law, including UPC_CoA_456/2024 and UPC_CoA_1144/2024, as well as a decision from the Paris Central Division.
The Court distinguished Rule 265 RoP, which governs withdrawal of an action (all claims) against a defendant, noting that this provision was not applicable because the main proceedings were not concluded as Dainese's claims regarding EP'364 were maintained. The Court further held that Rule 263 RoP does not provide for the regulation of proceeding costs because the proceedings continue against the defendants in relation to other claims. The Court rejected the defendants' argument that this violated the 'losing party bears the costs' principle under Article 69 UPCA, noting that the unconditional limitation would be considered by the Court when assessing the final decision on costs.
Regarding Dainese's request for partial reimbursement of court fees, the Court rejected it, finding that the request was based solely on Rule 370.9(b)(i) RoP, which regulates withdrawal rather than limitation, and lacked substantive argumentation beyond a mere citation of the provision.
The final order: (1) granted Dainese leave to limit its claims, excluding all arguments related to EP'117 while maintaining claims regarding EP'364; (2) rejected the request for partial reimbursement of fees; and (3) postponed the costs decision requested by the defendants to be dealt with in the main proceedings.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Milan (IT) Local Division. Understanding the court's reasoning in Dainese S.p.A. vs S.L. Alpinestars S.p.A., Alpinestars Research S.p.A., Motocard Bike S.l. is valuable context for structuring arguments or assessing risk in similar proceedings.
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