On 2 June 2025, the Milan Local Division of the UPC issued an order in the ongoing patent dispute between Italian motorcycle gear manufacturer Dainese and its competitor Alpinestars. The order held that the court must stay proceedings where this has been requested by all parties, even though Rule 295(d) ROP states that the court "may" do so in such circumstances.
The case concerns two European patents held by Dainese, EP 4072364 and EP 3498117. The key focus of this order is the parties' joint request to stay proceedings in relation to EP 3498117, while allowing litigation on EP 4072364 to continue.
The proceedings initially began in August 2024 when Dainese brought an infringement action against six defendants, asserting that Alpinestars' airbag systems fell within the scope of both patents. The defendants subsequently filed counterclaims for revocation.
In February 2025, the EPO's Board of Appeal upheld EP 3498117 in amended form and remitted the case to the Opposition Division so that Dainese could update the patent description accordingly. In light of this development, Dainese withdrew its infringement claim based on EP 3498117. This left only the revocation counterclaim, and associated applications to amend, active in relation to EP 3498117.
With the full text of the amended form of EP 3498117 still to be finalised, the parties jointly applied to stay the revocation counterclaim proceedings until issuance of a final decision of the Opposition Division regarding the full text to be maintained. The Milan Local Division agreed that the fact that EP' 117 was not yet in a final version was a relevant factor justifying a stay of proceedings. This was despite the fact that a final form of the claims meeting the requirements for patentability had been determined by the EPO's Board of Appeal.
The position taken by the Milan Local Division exemplifies the close interplay between EPO and UPC proceedings. Since the issuance of this order, the EPO's Enlarged Board of Appeal has issued decision G1/24 (reported in our news item here), holding that the description and figures should always be considered when interpreting the claims. The approach is notable for its consistency with the established principle of interpretation of the UPC's Court of Appeal that "the description and drawings of a patent must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim" (UPC_CoA_335/2023, 10x Genomics vs Nanostring; see here for further discussion). Against this background, the Milan Local Division's order potentially further supports the importance of the final form of the description to the assessment of patentability at the UPC (as well as infringement).
The parties' application relied on Rule 295(d) ROP, which provides that the court "may stay the proceedings at the joint request of the parties". The Milan Local Division, however, interpreted this provision as leaving the Court with no discretion where all parties request the stay. Citing Articles 43 and 76(1) UPCA, the court emphasised that the parties have the right to determine the subject matter of their dispute and that the court must decide in accordance with their requests. As such, once both sides request a stay, the Court is effectively obliged to grant it.
The Milan Local Division also addressed the procedural situation of having two patents at issue. It concluded that the stay can apply to only part of a case – here, just one patent – if the circumstances warrant it. In this instance, only the final form of EP 3498117 remained unsettled at the EPO. Therefore, while the court stayed the proceedings relating to EP 3498117, it allowed the infringement proceedings relating to EP 4072364 to continue.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
