Dainese v Alpinestars (CFI, 7 April 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 7 April 2025 (UPC_CFI_472/2024, ORD_10964/2025), the Milan Local Division (Judges Perrotti, presiding, Zana, rapporteur, Klein and Ashley, technically qualified) granted Dainese S.p.A. leave to limit its infringement action against Alpinestars S.p.A. and others to EP 4 072 364, dropping every claim based on EP 3 498 117, which according to Dainese the EPO Board of Appeal had narrowed to claims 1, 6, 8 and 9 and on which it had issued an adverse preliminary opinion. The panel refused a partial refund of court fees and left the costs requests to the main proceedings. The order draws a clear line between unconditional limitation under Rule 263.3 RoP and withdrawal under Rule 265 RoP.

Question

Does dropping one of two asserted patents fall under limitation (Rule 263.3 RoP) or partial withdrawal (Rule 265 RoP), and what follows for court fees and costs?

Decision

Leave to limit a claim unconditionally is always granted, and this covers both a reduction of the relief sought and the abandonment of one patent among several (paragraph 4). Rule 263 RoP does not deal with costs because the proceedings continue, which is consistent with Article 69 UPCA (paragraph 4). As the action continues against all defendants, Rule 265 RoP does not apply (paragraph 5). The request for a EUR 12,000 refund, based solely on Rule 370.9(b)(i) RoP, which concerns withdrawal, and unsupported by argument, was rejected (paragraph 6). The costs requests of Defendants 1, 2 and 6, of EUR 100,000 each, were deferred to the decision on the merits (paragraph 7).

Key points for practice

• Practical point: a claimant that drops one asserted patent while the action continues cannot obtain the fee refund available on withdrawal, and the defendant cannot recover its costs before the decision on the merits.

Provisions applied

Agreement on a Unified Patent Court

Art. 69

Rules of Procedure

Rules 263.1, 263.3, 263.4, 265 and 370.9(b)(i)

Case law cited

Court of Appeal, November 2024, UPC_CoA_456/2024, Netgear v Huawei, Court of Appeal, 11 March 2024, Paris Central Division, 26 November 2024 (UPC_CFI_164/2024)

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.