UPC_CFI_1901/2026; UPC_CFI_3259/2026 – Merz v Viatris

Expert Commentary

Bifurcation / stay Facts 1. Merz filed infringement proceedings for infringement of EP 2 377 536 after it had previously obtained a preliminary injunction. 2. Viatris filed a counterclaim for revocation. 3. Viatris requested to stay the revocation proceedings until the decision of the national French court in revocation proceedings with respect to the same patent. 4. Viatris also requested to send the revocation proceedings to the Paris Central Division. The Court 1. In the infringement proceedings, Viatris had already asked for a stay for the same reasons as in it’s preliminary objection. The JR refused such a stay. 2. There is now a new element in the case namely the filing by Viatris of the revocation proceedings. The request for a stay because of national revocation proceedings has to be decided on the basis of Art. 29 and Art. 30 of the Brussels Regulation. 3. Merz does not object against the request for bifurcation. The Court bifurcates and will continue with the infringement proceedings. 4. This means that now the Paris Central Division has to decide the request for a stay because of the lis pendens. Comment 1. Merz obtained a preliminary injunction and is now obliged to start main proceedings. 2. Viatris apparently thinks that it has a better chance to invalidate the patent (an SPC) in French national proceedings than in the UPC. 3. It is now for the Central Division to decide if it is staying the revocation proceedings. The French national proceedings only affect the SPC in France and therefore such a stay does not seem very practical. 4. I note that Viatris asked for a stay because of lis pendens. Assuming that Viatris started the revocation action before Merz started the present proceedings and the French proceedings are between the same parties, I think the Paris Central Division has to stay the case for France (Art. 29 Brussels Regulation) but nothing prevents it to continue for the other countries.

Full Decision Text

1 Paris Local Division UPC_CFI_1901/2026 & UPC_CFI_3259/2026 Order of the Court of First Instance of the Unified Patent Court delivered on 15/10/2026 Concerning stay and bifurcation APPLICANT – (DEFENDANT] Viatris Santé 1 rue de Turin, 69007, Lyon, FR Represented by Marc LAUZERAL RESPONDENTS – (CLAIMANTS) Merz Pharma France Tour EQHO, 2 Avenue Gambetta, 92400, Courbevoie, FR Merz Therapeutics GmbH Eckenheimer Landstraße 100, 60318 , Frankfurt am Main, DE Merz Pharmaceuticals LLC Unit 35/36, 6601 Six Forks Road, 4th Floor, North Carolina 27615, Raleigh, US Represented by Laëtitia BÉNARD 2 PATENT AT ISSUE Patent no. Proprietor EP2377536 Merz Pharmaceuticals LLC COMPOSITION OF PANEL – FULL PANEL Presiding judge & Camille Lignières Judge-rapporteur Legally qualified judge Carine Gillet Legally qualified judge Samuel Granata Technically qualified judge Rainer Friedrich LANGUAGE OF PROCEEDINGS: English ORDER Summary of facts and procedure: MERZ filed an infringement acƟon against VIATRIS before the UPC Paris Local Division on 28 May 2026, aŌer the UPC CoA order granted a PI injuncƟon against VIATRIS. The judge-rapporteur, seized by VIATRIS, issued an order on 30 July 2026, rejecƟng the preliminary objecƟon (PO) and the stay requests. On 11 September 2026, VIATRIS lodged its Statement of Defence with a counterclaim for revoca- Ɵon. On the same day, VIATRIS filed a procedural applicaƟon requesƟng the Court: - To stay its proceedings on Viatris’ counterclaim in acƟon UPC_CFI_3259/2026 unƟl the final and irrevocable decision of the French courts on their jurisdicƟon regarding the claim for invalidity of SPC No. 13C0033; - To refer Viatris Santé’s counterclaim to the Paris Central Division and proceed with the infringe- ment acƟon UPC_CFI_1901/2026 pursuant to ArƟcle 33(3)(b) UPCA and Rule 37.5 RoP; - To decide on this request immediately aŌer hearing the parƟes pursuant to Rule 37.2 and 264 RoP. To this end, Viatris respecƞully requests the Judge-Rapporteur to refer this request to the Panel in accordance with Rule 102 RoP. In its reply on 28 September 2026, MERZ requests the Court to: A. Dismiss the Defendant’s request for referral of the maƩer to the Panel under Rule 102 RoP; B. Refer the Defendant’s counterclaim for revocaƟon to the Paris Central Division; 3 C. Should the Paris Local Division not refer the Defendant’s counterclaim for revocaƟon to the Paris Central Division, or should the Paris Local Division consider that such a referral does not prevent it to rule on the stay of proceedings of the Defendant’s counterclaim for revocaƟon, stay the pro- ceedings on the Defendant’s counterclaim for revocaƟon (UPC_CFI_3259/2026) pending the final and irrevocable decision of the French courts on their jurisdicƟon; D. Order that the infringement proceedings (UPC_CFI_1901/2026) conƟnue before the Paris Local Division (even in a situaƟon where a stay of proceedings of the Defendant’s counterclaim for revo- caƟon would be ordered); E. Order Defendant to bear the costs caused by the ApplicaƟon pursuant to ArƟcle 69 UPCA; F. Grant any further relief the Court considers appropriate. GROUNDS Regarding the referral to the panel (R.102 RoP) As this applicaƟon relates to the issue of bifurcaƟon governed by ArƟcle 33.3 of the UPCA and Rule 37.2 RoP, this applicaƟon will be dealt with by the full panel. Regarding the stay request and the bifurcaƟon issue A previous request from VIATRIS seeking a stay pending the decision of the Paris Court of First Instance (Tribunal Judiciaire)(hereaŌer referred to as “Paris TJ”) on the basis of Rules 295(b) and (m) RoP has already been dismissed by the JR in her PO order dated 30 July 2026. It has already been stated in the PO order that the legal framework for staƟng on this type of stay request within the UPC, which is a common court, is provided by Art. 31 UPCA, referring notably to Art. 29 and Art. 30 of RegulaƟon (EU) n° 2015/2012 (“Brussels I recast RegulaƟon” or “BR I recast”). The new element in support of the present applicaƟon for a stay of proceedings is the fact that VIATRIS has filed its defence statement together with a counterclaim for revocaƟon (UPC_CFI_3259/2026). VIATRIS argues that at this stage of the proceedings, due to this new revocaƟon acƟon (UPC_CFI_3259/2026) there is a “lis pendens” regarding the Paris TJ first seized with a stand-alone revocaƟon acƟon based on the same SPC and with the same parƟes. MERZ does not expressly contest this point. The panel will first examine the bifurcaƟon request in order to decide if it is in light of proper ad- ministraƟon of jusƟce in the present case to refer, or not, to the Central Division the maƩer of the revocaƟon of the SPC at issue. Regarding the bifurcaƟon of the counterclaim for revocaƟon The legal framework: ArƟcle 33.3(b) UPCA and Rule 37.2 RoP The present case: VIATRIS requests that a ruling be made immediately, in accordance with Rule 37.2 RoP, on the possible bifurcation of its counterclaim and application for revocation filed as part of its statement of defence. 4 MERZ does not object, provided that this does not delay the proceedings. Given that the referral is requested by VIATRIS and that the other party, MERZ, does not object to it, the question of the validity of the SPC – which falls within the jurisdiction of the Paris Central Division (in accordance with Annex II on the Distribution of cases within the Central Division of the UPC) – will be referred to the latter. It is therefore logical that the question of a stay of proceedings in the context of the parallel proceedings pending before the Paris TJ should be dealt with by the Paris Central Division, which is responsible for ruling on the validity of the SPC in dispute. For reasons of procedural efficiency (point 7 of the Preamble RoP) and as permitted by Article 33(3)(b) UPCA, and given the parties’ agreement on this point, the infringement proceedings (CFI_1901/2026) shall continue before this Division, which retains jurisdiction over the matter. On these grounds, the panel orders that: - the counterclaim for revocation (UPC_CFI_3259/2026) is referred to the Paris Central Di- vision, which shall deal with the stay question; - the infringement action (UPC_CFI_ 1901/2026) continues before the present Local Divi- sion. Issued in Paris, on 15 October 2026 Camille Lignières, Judge rapporteur Carine Gillet, Legally qualified judge Samuel Granata, Legally qualified judge Rainer Friedrich, Technically qualified judge Information about appeal: the present order may be appealed in accordance with R. 220.2 RoP 5 ORDER DETAILS Date of issue: 15/10/2026 UPC number: UPC-CFI-0001901/2026 & UPC_CFI_3259/2026 Action type: Infringement Action & counterclaim for revocation Order type: Concerning stay and bifurcation

Key Holdings

• A request for a stay of UPC revocation proceedings due to parallel national revocation proceedings concerning the same patent must be evaluated under Articles 29 and 30 of the Brussels Regulation.
• Where there is no objection from the patentee, the Local Division may order bifurcation and continue with the infringement proceedings.
• Following bifurcation and referral of the revocation action to the Central Division, it is for the Central Division to decide on any request for a stay based on lis pendens.

Tags

• Bifurcation / stay
• Bifurcation
• Stay of proceedings
• Lis pendens
• Brussels Regulation

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