Patent litigation covering even just one country is both difficult and exciting. Doing the same in a new court covering multiple countries makes things more complex still. Add to the mix uncertainty about which countries are actually included or excluded and it can be enough to make your head spin. A couple of recent UPC decisions bring these points into sharp focus, with the parties and the court able to flex to accommodate the dispute to the advantage of the claimant or defendant.
Long arm jurisdiction approved but stayed
The Milan Local Division (LD) decision in Dainese v. Alpinestars (21 April 2026) covered three defendants sued for infringement by the patentee Dainese over EP 4072364 B1, which is a unitary patent and is also validated in Spain (and in the UK, but that part was not invoked). The two Alpinestars defendants are domiciled in Italy and the third defendant in Spain. There were other defendants at the outset but the patentee withdrew the actions against these. The patentee sued for infringement in the UPC territory, and in Spain on a long arm basis.
The defendants replied with a defence and counterclaim for revocation. Alpinestars filed an EPO opposition, with the EPO opposition division maintaining the patent in amended form. This has been appealed by Alpinestars, but no date has been set yet for the EPO Board of Appeal hearing. In reply to the counterclaim for revocation, Dainese requested amendment of the unitary patent to be aligned with the claims allowed by the opposition division.
The defendant in Spain was selling the alleged infringing product there but also in Portugal and Italy (UPC countries) and via an online store.
The defendants asked the court to stay the entire proceedings in view of the apparent similarity between this case and the UPC Court of Appeal (CoA) referral to the CJEU which we reviewed in UPC Weekly 2026 w10, which also included long arm jurisdiction in Spain. The LD decided against a stay on this basis, noting the alleged infringement by the Spanish defendant also inside the UPC territory, and the close connection with the claim against the UPC-domiciled defendants. This exercise of long arm jurisdiction is consistent with previous case law of the UPC, although goes further than the now-routine BSH jurisdiction for UPC-domiciled defendants.
The LD also considered whether they should stay the entire UPC proceedings in view of the ongoing EPO appeal. Because the EPO appeal may not end for about another year, the court decided against a stay on this ground.
However, after the UPC proceedings had started, the first defendant commenced nullity proceedings in Spain against the Spanish part of the European patent. As a result, the LD decided to use their discretion to separate out the allegation of infringement of the patent in Spain and to stay just that part of the proceedings.
The effect of all of this, then, is that the UPC proceedings carried on, to consider infringement and validity of the patent in the UPC states. Validity of the Spanish part of the patent is being decided both in Spain and at the EPO. The UPC will wait until the Spanish nullity proceedings are concluded before considering whether there is infringement in Spain. On the basis of previous decisions (e.g. Fujifilm v. Kodak), unless the Spanish part of the patent is revoked, it is unlikely that the UPC would reach a different conclusion on infringement of the patent as between the UPC territory and Spain.
But will we see a further instalment of this case? The LD decided in the end that the patent is valid but not infringed in the UPC states. If there is an appeal at the UPC and the LD decision is upheld, it seems unlikely that we will see the UPC determine Spanish infringement.
Carved-out territory shrinks jurisdiction but supports infringement
In contrast, the parties in Quantificare v. Canfield (Düsseldorf LD 23 April 2026) needed to shrink their case. EP 3156843 B1 was granted in 2018 and not opposed at the EPO. With respect to the UPC territories, the patent is in force in Belgium, Germany, France, Italy and the Netherlands. 5 defendants were sued for infringement.
So far, so straightforward. But the parties had some history. Quantificare had sued the first and second defendants based on the German part of the European patent in the German national courts. The outcome of that (at first instance) was that the patent is infringed. The first defendant filed a nullity action in Germany, which succeeded in revoking the patent at first instance, but this was overturned on appeal (i.e. the patent is valid in Germany).
In view of the earlier proceedings on infringement in Germany, Quantificare carefully requested an injunction in the available UPC countries except for Germany, for all defendants. This is an example of a “carve-out”, which is a special feature of UPC proceedings, to avoid conflict with earlier ongoing or concluded national proceedings.
The defendants filed a counterclaim for revocation in the UPC proceedings. The first defendant could not request revocation of the patent by the UPC in Germany due to the res judicata effect on them of the German national appeal court decision. However, despite their connection with the first defendant, the remaining defendants did not face this barrier and so they requested revocation in all UPC states including Germany.
All this seems fine – the earlier German national litigation has been carved out of the later UPC case, the UPC case having wider territorial reach. But the interesting point is that the claimant’s case for infringement rested the substantiation of alleged infringing acts done by the first defendant in Germany, relying on this to support an injunction for the other countries. And Germany has been carved out. Further still, the infringement action had been brought in the UPC Local Division in Düsseldorf, although its competence to hear the case had not been challenged. The defendants argued that, since the UPC is specifically not being asked to decide about infringement in Germany, the court could not reach any finding on infringement.
The LD considered these points and decided that showing infringement in one UPC state is enough to underpin an injunction in respect of all UPC states in which the patent is granted. It is reasonably well-established that the patentee can decide to carve out that one UPC state from the injunction to avoid conflict with earlier national litigation. However, even if the infringement is only proven in the UPC state that has been carved out, the UPC can still order an injunction for the remaining states, casting the carve-out as merely a procedural manoeuvre.
In the end, the LD found the patent valid and infringed, and the injunction was ordered for Belgium, France, Italy and the Netherlands.
