Milan local division asserts long-arm jurisdiction in Dainese vs Alpinestars

The parties are fighting over Dainese’s two patents EP 4 072 364 and EP 3 498 117. Both cover technology used in garments with inflatable devices to protect the wearer from impacts, such as falls in motorsports. Alpinestars launched opposition proceedings against both patents at the EPO.

In August 2024, Dainese sued Alpinestars at the local division Milan. The Italian manufacturer of motorbike, ski, equestrian, and mountain bike clothing accuses its competitor of infringing the two patents with rival products. The patent owner sought a permanent injunction preventing Alpinestars from distributing its products in the territory of the UPC and Spain. Dainese asked the court to order the defendant to recall and destroy its products and provide information.

Alpinestars contests jurisdiction

However, Alpinestars challenged the jurisdiction of the UPC regarding the alleged infringement of the Spanish part of EP 364. In a recent order, the Milan local division affirmed its jurisdiction. The panel of judges, consisting of presiding judge Pierluigi Perrotti, legally qualified judges Alima Zana and Anna-Lena Klein, as well as technically qualified judge Graham Ashley, argued that since the UPC is the court of the defendant’s domicile it has jurisdiction in this case (case ID: UPC_CFI_472/2024).

The court’s reasoning aligns closely with the recent CJEU judgment in the dispute between BSH Hausgeräte and Electrolux. The CJEU judges confirmed that a court seised under Article 4(1) retains jurisdiction over infringement actions even where the validity of a patent granted or validated in another member state is challenged.

Order cites Düsseldorf ruling

Earlier this year, the UPC’s Düsseldorf local division had already clarified in the dispute between Fujifilm and Kodak that it has jurisdiction over the UK part of a patent-in-suit when the defendant is based in a UPC member state. The Milan order also refers to this UPC case law.

Dainese and Alpinestars have been in dispute for years over various patents for protective clothing, including for motorsport. In 2019, the Higher Regional Court Munich found Alpinestars had infringed Dainese’s EP 2 412 257. The court thus upheld the previous decision of the Regional Court Munich.

Tried and tested nationally

Dainese retained a team from Italian IP firm SIB Lex and its patent attorney arm SIB for the UPC proceedings. Milan-based partner Mario Pozzi and partner and patent attorney Marta Manfrin led the team, which also included Federico Caruso and patent attorney Davide Rondano.

In the national proceedings over EP 257, Dainese retained teams from Hogan Lovells. Munich-based partner Steffen Steininger led the Munich proceedings, while London-based partner Dan Brook led the proceedings in the UK.

At the court in Venice, Dainese was represented by Italian firm Studio Sandro Hassan while patent attorneys from SIB provided support in technical questions. Marta Manfrin also was involved in the German proceedings as well as acting as a coordinator in the pan-European proceedings.

As in the national proceedings in the UK, Germany and Italy, Alpinestars relied on a team from DLA Piper in the UPC proceedings. Milan-based IP partner and co-head of DLA’s global patent practice Gualtiero Dragotti took the lead.

Dragotti was also involved in the national dispute over EP 257 in Venice and brought in German partner Constanze Krenz. She was part of the team around Markus Gamp leading the Munich case. The latter has since left DLA. The multinational team at the UPC included Italian associate Massimiliano Tiberio as well as German associates David Kleß and Joschua Fiedler.