The order (available here) was issued in the context of merit proceedings brought against Alpinestars by Dainese for infringement of patents EP 4 072 364 and EP 3 498 117, the former of which is also in force in Spain. Following a preliminary objection raised by Alpinestars, the Milan LD dismissed the application asserting its jurisdiction to rule over the alleged infringement taking place outside UPC territory (in the case at issue: in Spain).

In taking this decision, the Milan LD took into account both the recent CJEU decision in BSH v. Electrolux (Case C-339/22, available here) and the existing body of UPC case law on long-arm jurisdiction of the UPC (cf. Düsseldorf LD decision in Fujifilm v Kodak, issued before BSH, available here; and the Paris LD order in Mul-T-Lock v IMC, issued after BSH, available here).

Specifically, Judge Zana stated that “the UPC, deemed to be a court of a Member State, in case it is the Court of the domicile of the defendant, has jurisdiction to adjudicate on infringement issues related to European patents validated in non-UPC Countries (so called long jurisdiction)”, adding that “in case a defendant is domiciled in Italy, the Milan Local Division jurisdiction is “universal”” (cf. paragraphs 12-13 of the order).

So far the Court of Appeal has yet to issue a conclusive decision on the point.