UPC_CoA_931/2025 – Alpinestars v Dainese
- Court
- Court of Appeal
- Date
- Outcome
- Withdrawn
- Sector
- Mechanics
- Decision Type
- PROCEDURAL
Expert Commentary
Request for discretionary review Facts 1. On 8 August 2024, Dainese initiated proceedings before the Local Division (LD) Milan for infringement of two patents. 2. On 18 November 2025 (after consulting the parties), the LD decides with respect to one of the two patents that defendants have to file separate proceedings before the Central Division. 3. On 4 December 2025, Alpinestars filed before the LD an application for leave to appeal, as well as an application for revision of that decision. 4. The LD gave Dainese until 12 December 2025 to react to the request for revision. 5. On 19 December 2025, Alpinestars filed a request for discretionary review with the Court of Appeal, asking to grant leave to appeal, as the Court of First Instance (“CFI”) had still not decided. 6. On 6 January 2026, the Standing Judge of the Court of Appeal asked Dainese to react by 14 January 2026. 7. On 13 January 2026, the LD, in the review proceedings, amended the order and granted leave to appeal. 8. Alpinestars informed the Court of Appeal that the appeal was no longer necessary in light of the changes made to the order by the LD Milan. The Court of Appeal (deciding Judge Mr. Grabinski) 1. R. 265.1 RoP applies to a request for withdrawal of a request for discretionary review. 2. The request is granted. A decision on costs it not required at this stage, as costs will be addressed in the final decision. Comment 1. What a mess! 2. First of all, what is happening in Milan? This case was started 8 August 2024. So –except for exceptional circumstances, which I have not been able to identify– the LD has already largely exceeded the 14 months period for a decision, one of the fundamental principles of the UPC! 3. If the Court wants to separate cases relating to the two patents (why?), then it can do so immediately. Instead, it waited 14 months. 4. The LD should have decided on the request for leave to appeal within 15 days (i.e. before 19 December 2025). Instead, it decided only on 13 January 2026, forcing Alpinestars to take unnecessary steps and incur unnecessary costs! 5. The only one that appears to have acted with a clear head was the Court of Appeal, by moving a bit slowly (possibly assisted by a telephone call to Milan?). This allowed the LD to decide in the meantime, avoiding unnecessary work for the Court of Appeal and further unnecessary costs for the parties. 6. Let us hope that this is a wakeup call for the Milan Division and that in the future this is not happening anymore. 7. A disclaimer: the only information available to me is the decision itself. There may have been valid reasons for this course of events; if so, it would be advisable for the LD to explicitly mention them in the decision.
Full Decision Text
1 Reference no.: UPC-COA-0000931/2025 Order of the Court of Appeal of the Unified Patent Court concerning a request for a discretionary review (R. 220.3 RoP) issued on 29 January 2026 APPLICANTS (DEFENDANTS IN THE MAIN PROCEEDINGS BEFORE THE COURT OF FIRST INSTANCE) 1. Alpinestars S.p.A., Via Enrico Fermi No. 5, 31011, Asolo, Treviso, Italy 2. Alpinestars Research S.p.A., Via Alcide De Gasperi No. 54, 31010, Maser, Treviso, Italy 3. Motocard Bike S.l., Calle Valencia, 511-515, 08013 Barcelona, Spain (hereinafter together "Alpinestars") represented by Massimiliano Tiberio, attorney at law, DLA Piper Italy RESPONDENT (CLAIMANT IN THE MAIN PROCEEDINGS BEFORE THE COURT OF FIRST INSTANCE) Dainese S.p.A., Via Louvigny 35, 36064, Colceresa, Italy (hereinafter "Dainese"), represented by Federico Caruso, attorney at law, SIB LEX PATENTS IN SUIT EP4072364 (“EP '364”) EP3498117 (“EP '117”) DECIDING JUDGE Klaus Grabinski, standing judge LANGUAGE OF THE PROCEEDINGS English IMPUGNED ORDER OF THE COURT OF FIRST INSTANCE □ Order of the Court of First Instance of the Unified Patent Court, Milan Local Division, 2 dated 18 November 2025 □ Reference numbers: ACT 45469/2024 UPC CFI 472/2024 UPC CFI 792/2024 UPC CFI 182/2025 UPC CFI 831/2024 FACTS AND REQUESTS OF THE PARTIES 1. On 8 August 2024, Dainese filed before the Local Division Milan (“LD”) an action for infringement of the patents-in-suit. 2. Alpinestars filed a counterclaim for revocation against both patents in suit. 3. By preliminary order of 24 October 2025, the LD communicated to the parties the intention to separate the proceedings concerning the counterclaim for revocation of EP '117 from the action for infringement and the counterclaims for revocation of EP '364. 4. By order of 18 November 2025 (“impugned order”), and after consulting the parties, the LD decided as follows: 1. the action for infringement (CFI 472/2024) and of the counterclaim for revocation actions (CFI 792/2024, CFI 182/2025 and CFI 831/2024) regarding EP’364 are separated from the counterclaims for revocation actions brought by the defendants against patent EP’117 (CFI 792/2024, CFI 182/2025 and CFI 831/2024); 2. the action for infringement (CFI 472/2024) and of the counterclaim for revocation actions (CFI 792/2024, CFI 182/2025 and CFI 831/2024) regarding EP’364 continue before the Milan Local Division; 3. the defendants are invited to file separate proceedings relating to EP’117 as new revocation actions - possibly also as a single unified action - before the competent UPC Central Division, paying the court fees in accordance with the general rules; 4. Milan Local Division will decide on the Court fees reimbursement paid by the Defendants 1) and 6) together to the final decision. 5. On 4 December 2025, Alpinestars filed an application for leave to appeal pursuant to Rule 220.2 RoP, as well as an application for a revision of the impugned order pursuant to Rule 333 RoP, requesting the LD to: 1. grant the leave to appeal the Order of 18 November 2025; or, in alternative; 2. withdraw margin no. 3 of the Order of 18 November 2025, thus making unnecessary an appeal of the Order of 18 November 2025 or a request for discretionary review in case of the Court's refusal to grant the leave to appeal, and possibly postpone a decision pursuant to R 25 RoP 3 and/or Art. 33(b) UPCA once the stay of the proceedings have been lifted; in any case 3. confirm that the decision on costs arising from Claimant's withdrawal of the action concerning the alleged infringement of EP '117 will be dealt with in the proceedings concerning infringement that will continue before this Local Division (CFI 472/2024). 6. On 5 December 2025, the LD invited Dainese to submit by 12 December 2025 comments on Alpinestars’ application of 4 December 2025 and informed the parties that it reserves the decision whether to amend its order of 18 November 2025 or to grant the leave to appeal it after the 13 December 2025. 7. On 19 December 2025, Alpinestars filed a request for a discretionary review pursuant to R. 220.3 RoP asking the Court of Appeal to grant leave to appeal the impugned order, arguing that, as of that day, the LD had not ruled on the application for leave to appeal, nor had it amended the impugned order. 8. On 6 January 2026, the Standing judge of the Court of Appeal gave Dainese the opportunity to comment on Alpinestars’ request for a discretionary review by 14 January 2026. 9. By the order issued on 13 January 2026, the LD ordered, among others, the replacement of the point no. 3 of the impugned order by the following sentence: “The Court postpones a decision pursuant to R 265 RoP and/or Art. 33(3)(b) UPCA once the stay of proceedings regarding EP 117 have been filed” and granted leave to appeal the impugned order. 10. After having been given an opportunity to comment, Alpinestars, by a submission of 27 January 2026, argues that the request for discretionary review that became necessary due to the absence of an order of the Milan LD to grant leave within the time limits set out in Rule 220(3) RoP has been made obsolete by the order of the Milan LD of 13 January 2026. 11. Alpinestars respectively confirms that the order of 13 January 2026 renders unnecessary an appeal against no. 3 of the order of 18 November 2025, - withdraws the request for discretionary review and - requests the Court, where and to the extent Rule 370(9) RoP is considered applicable, to order the reimbursement of the Court fees paid by the applicants. REASONS 12. In accordance with Rule 265.1 RoP, which is applicable on a withdrawal of a request for discretionary review mutatis mutandis, the withdrawal is permitted after a decision on Alpinestars’ request for a discretionary review became obsolete since the Milan LD, by order of 13 January 2026, amended margin no. 3 of its order of 18 November 2025 and granted leave to appeal. 13. There is no need to issue a cost decision pursuant to R. 265.1(c) RoP. This rule does not apply mutatis mutandis on a withdrawal of a request for discretionary review pursuant to R. 220.3 RoP since such a withdrawal does not terminate the underlying proceedings in the first instance. 14. As the request for discretionary review has been withdrawn by Alpinestars within the written procedure, Rule 370.9(b) RoP (as applicable until 31 December 2025) applies mutatis mutandis and 4 Alpinestars is entitled to a reimbursement of 60% of the court fees. ORDER 1. The proceedings on Alpinestars’ request for discretionary review are declared to be closed. 2. The decision shall be entered on the register. 3. There is no need for a cost decision. 4. It is ordered that 60% of the fees of the request for discretionary review be reimbursed to Alpinestars. This order was issued on 29 January 2026. Klaus Grabinski President of the Court of Appeal and standing judge
Key Holdings
- Withdrawal of a request for discretionary review is governed by R. 265.1 RoP.
- Costs are typically addressed in the final decision, not at the withdrawal stage of a discretionary review.
- UPC Local Divisions should adhere to procedural timelines, such as the 14-month period for decisions and 15 days for leave to appeal.
- Delays by the Court of First Instance can lead to unnecessary steps and costs for parties.
Tags
- Appeal
- Costs
- Discretion
- Time Limits
- Withdrawal