The Local Division of The Hague recently issued a procedural order which provides insight into various aspects of the UPC's jurisdiction. Perhaps of most interest is that the court ruled that, as long as there is an "anchor defendant", the UPC has jurisdiction to decide on issues of infringement in relation to defendants that are not domiciled in a UPC state and where the infringement did not take place in a UPC state. An "anchor defendant" in this context is a defendant domiciled in a UPC state where the case against the anchor defendant is sufficiently connected to the case against any other defendants. The order also touches on issues of competency of the local division and the validity of the withdrawal of an opt out.
Case background
The order relates to two infringement cases (UPC_CFI_191/2025 and 192/2025) brought by Genevant Sciences GmbH and Arbutus Biopharma Corporation against 15 Moderna entities. The cases form part of a global dispute over Moderna's COVID vaccine.
Genevant and Arbutus are seeking relief in a mixture of UPC states (Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Romania, Slovenia and Sweden), EU but non-UPC states (Greece, Hungary, Ireland, Poland and Spain) and non-EU states (Iceland, Monaco, Norway, Switzerland, Liechtenstein and Turkey).
Some of the 15 Moderna entities are domiciled in UPC states, some in EU but non-UPC states, and some in non-EU states.
Jurisdiction
One of Moderna's preliminary objections was that the UPC lacks jurisdiction in respect of Moderna Norway (non-EU), Moderna Spain (EU but non-UPC) and Moderna Poland (EU but non-UPC). Moderna's reason was that the claimants allegedly had not conclusively put forward that these Moderna entities had performed infringing acts in a UPC state. Thus, according to Moderna, the entities neither were domiciled in a UPC state nor had committed infringing acts in a UPC state.
Under Article 32(1) UPCA and Article 71b(1) Brussels Regulation (BR), the UPC has jurisdiction where the court of a contracting member state would have jurisdiction, as governed by the Brussels Regulation. Article 8(1) of that regulation provides that a defendant domiciled in an EU member state may also be sued, when it is one of a number of defendants, in the courts for the place where one of them is domiciled, provided the claims are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgements resulting from separate proceedings. The Lugano Convention (for which the EU and Norway are contracting parties) has an equivalent provision (Article 7(1)).
One of the claimants' justifications for the UPC having jurisdiction in respect of Moderna Norway, Moderna Spain and Moderna Poland was that Moderna Netherlands acts as an "anchor defendant" within the meaning of Article 8(1) BR. This was said to be because Moderna Netherlands has a central role in the sales and supply across Europe, constituting (threatened) infringement in, inter alia, Norway, Spain and Poland.
The court agreed, at least to the extent that Moderna Netherlands and Moderna Spain allegedly infringe in Spain, Moderna Netherlands and Moderna Poland allegedly infringe in Poland, and Moderna Netherlands and Moderna Norway allegedly infringe in Norway. The court therefore decided that the cases against Moderna Norway, Moderna Spain and Moderna Poland were each sufficiently connected with the case against the anchor defendant, Moderna Netherlands, that the court has jurisdiction over all of the defendants.
This seems to be an example of local practice having some influence on a local division's approach. The tendency of Dutch courts to view the role of one corporate entity within a group as a 'spider in the web', and to accept jurisdiction over the whole group of entities on that basis, goes back to the 1989 judgement of The Netherlands Supreme Court in Focus Veilig v Lincoln Electric. However, it should be noted that the present order seems to indicate that Moderna disputed the UPC's jurisdiction over the defendants in question only by objecting that Moderna Norway, Moderna Spain and Moderna Poland do not infringe any UPC part of the European patents. The court ruled that that issue should be considered in the main proceedings, and that it was not relevant to the jurisdiction question.
Internal competence of local division
The internal competence of the UPC is governed by Article 33 UPCA. According to paragraph (1), point (b) of that article, an action may be brought against multiple defendants in a local division if:
- one of the defendants (the anchor defendant) is domiciled in the UPC state of the local division;
- the defendants have a commercial relationship; and
- the action relates to the same alleged infringement.
These requirements are irrespective of whether the defendants other than the anchor defendant are domiciled in UPC or EU states.
In the present case, it could not be disputed that Moderna Netherlands is domiciled in the host state of the local division of The Hague.
Regarding the commercial relationship between the Moderna entities, it was also not disputed that this requirement was met. Nonetheless, the court referred to decisions of the Munich and Paris local divisions in UPC_CFI_15/2023 and UPC_CFI_495/2023, respectively, which held that belonging to the same group of legal entities and having related commercial activities aimed at the same purpose is sufficient to be considered as "a commercial relationship" within the meaning of the Article 33(1)(b) UPCA.
As regards the question of whether the actions of the non-anchor defendants related to the same alleged infringement, the court referred to their earlier reasoning regarding international jurisdiction, and in particular that Moderna Netherlands and Moderna Spain allegedly infringe in Spain, Moderna Netherlands and Moderna Poland allegedly infringe in Poland, and Moderna Netherlands and Moderna Norway allegedly infringe in Norway. The court further extrapolated their reasoning to the remaining defendants (noting too that this had not been contested by Moderna).
Given that all three requirements of Article 33(1)(b) UPCA were met, the court rejected Moderna's preliminary objection in relation to internal competence.
Withdrawal of opt-out
In the 191/25 case, Moderna challenged the UPC's jurisdiction on the basis that the withdrawal of the opt-out was invalid. Moderna's reason was that the withdrawal was filed in the name of only one of the two patentees, while another is listed in certain national registers.
The court decided that the withdrawal of the opt-out was valid because the other supposed patentee was incorrectly listed on these registers. The true proprietor was Arbutus only, and so the withdrawal was valid. Interestingly, the original opt-out was also filed in the name of Arbutus only. The claimants therefore argued in the alternative that if the withdrawal of the opt-out was found to be invalid then the original opt-out would also have been invalid. However, the court did not in the end need to consider that argument.
Long-arm jurisdiction
Moderna further argued that, even if the court has jurisdiction for all 15 Moderna entities, the jurisdiction is allegedly limited for some of those entities in territorial scope and cannot extend to non-UPC states. The court has decided to address this objection as part of the main proceedings.
We will be following the cases with interest and further developments will be covered in future reports.
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