Key takeaways
Referral of Counterclaim for Revocation (Art. 33(3)(b) UPCA, R. 37.2 RoP)
The Local Division Düsseldorf referred the counterclaim for
revocation to the Central Division in Milan. The Parties had
unanimously requested the, and requests by all parties will be
granted unless strong
counterarguments require a different decision (UPC_CFI 14/2023 (LD
Munich), Order of 2 February
2024 – Amgen v Sanofi). The Panel did not see any such strong
counterarguments. On the
contrary, a referral was seen to be appropriate, particularly for
reasons of efficiency. In the exercise of discretion, procedural
efficiency is of particular importance (cf Preamble 4 RoP; see also
UPC_CFI_410/2023 (LD Mannheim), Order of 10 July 2024 –
MED-EL v Advanced Bionics). A revocation action was already pending
before the Central Division, and the Counterclaim for revocation
was essentially based on the same prior art documents and other
grounds for invalidity. The Central Division was therefore already
familiar with the subject matter of the counterclaim for
revocation.
The application to amend the patent was also referred to the Central Division in Milan.
Proceeding with Infringement Action (Art. 33(3)(b) UPCA, R. 37.4 RoP)
The Local Division Düsseldorf decided to proceed with the infringement action despite the referral of the counterclaim. A stay of the proceedings was not considered to be appropriate, as the question of whether there is a high likelihood of invalidity requires a detailed examination, taking into account the entire content of the file. For this reason, given the stage of the proceedings, it did not appear effective to deal with the issue of invalidity at that point in time.
The panel reserved the right to reconsider staying the proceedings at a later stage.
Extension of time periods (R. 9.3(a) RoP)
The Defendants were granted a one-month extension for filing the Rejoinder to the Defence to the counterclaim and the Defence to the application to amend the patent.
The extension was deemed sufficient given the recent bifurcation decision and extended deadlines in the revocation proceedings.
Rejection of Limitation Proposal
The Defendants' proposal to limit their pleadings to the granted version of the patent was rejected.
The granted extension for filing the Rejoinder to the Defence allows the Defendants to address all issues, including auxiliary requests related to the patent amendment application.
Division
Local Division Düsseldorf
UPC number
UPC_CFI_468/2024 and UPC_CFI_687/2024
Type of proceedings
Infringement action and counterclaim for revocation
Parties
GlaxoSmithKline Biologicals SA
vs.
Pfizer Europe MA EEIG
Pfizer Manufacturing Belgium NV
Pfizer Pharma GmbH
Pfizer Corporation Austria GmbH
Pfizer SA
Pfizer Aps
Pfizer Oy
Pfizer SAS
Pfizer S.r.l.
Pfizer B.V.
Laboratórios Pfizer, Lda.
Pfizer AB
Pfizer Luxembourg S.a.r.l.
Pfizer Service Company S.r.l.
Patent(s)
EP 4 183 412
Jurisdictions
Unified Patent Court
Body of legislation / Rules
Art. 33(3) UPCA, R. 37.2 RoP, R. 37.4 RoP, R. 9.3(a) RoP
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.
