UPC_CFI_191/2025; 192/2025 – Genevant v Moderna

Court
Local Division The Hague
Date
Outcome
Denied
Sector
Other
Decision Type
PROCEDURAL

Expert Commentary

Cross border jurisdiction Background 1. In this case, the patentee sues two US Moderna companies and numerous Moderna subsidiaries in Europe (in UPC and non-UPC countries) together with the Dutch Moderna entity for patent infringement of two patents. 2. As the defendants were served with the Statement of Claim on different dates, the time limit for raising preliminary objections expired on different dates. The Preliminary Objection (PO) 3. Various POs were filed, arguing first of all that the Court lacked international jurisdiction with respect to the non-UPC defendants in Norway, Spain, and Poland, because it was not conclusively alleged that these subsidiaries infringe in the UPC. 4. Furthermore, it was alleged that The Hague Division lacked local competence against all defendants except Moderna NL and Moderna UK because these companies did not commit infringing acts in the Netherlands. 5. Finally, it was alleged that the Court (at least) had no jurisdiction with respect to infringements in non-UPC countries by companies not based in the UPC. 6. With respect to one of the patents, it was argued that the withdrawal of the opt-out was not valid. Decision of the Judge-Rapporteur (JR) 1. The JR concluded that several requests with respect to certain countries were late filed (more than a month after the service of the Statement of Claim), which meant that according to R. 19(7) RoP, jurisdiction and competence are accepted. 2. The JR notes that no objection was made with respect to the international jurisdiction of the Court concerning the two Moderna US companies, Moderna Switzerland, and Moderna UK. 3. The JR refers to the application of Art. 7(2) and Art. 8(1) of the Brussels Regulation, which give jurisdiction against EU entities in the EU state where they infringe (Art. 7(2)) or where they are sued as a co-defendant (to avoid the risk of irreconcilable judgments if they were sued in their own country). 4. The JR concludes that on the basis of Art. 8(1) of the Brussels Regulation, there is jurisdiction against Moderna Spain and Poland and (via the Lugano Treaty, which contains the same provisions) against Moderna Norway. 5. The JR decides (among others) that Art. 8(1) Brussels Regulation is applicable as Moderna NL allegedly infringes in Spain and Poland and (on the basis of the corresponding provision in the Treaty of Lugano) Norway. 6. The opt-out was validly withdrawn. The JR concludes that there is jurisdiction against all defendants but refers the question of whether there is long-arm jurisdiction against non-UPC entities for countries outside the UPC to the main case. Comment 1. If the parties do not suggest or the Court does not align the dates for PO and the further written submissions, then accidents can happen, as we see in this case. So a representative who defends multiple defendants has to be extremely vigilant. 2. The question whether or not, in view of the case law of the European Court of Justice of the European Union (“CJEU”), you could (despite R. 19.7 RoP) still dispute jurisdiction in your Statement of Defence remains open. 3. The JR’s decision is, in my view, fully in line with long-standing case law with respect to the jurisdiction of EU courts concerning infringement (see CJEU in Primus v Roche and Solvay v Honeywell). In the UPC, these jurisdiction rules are also applicable to companies which do not have their seat in the EU (see Art. 71b (2) Brussels Regulation). As the CJEU has recently ruled in BSH v Electrolux that with respect to EU countries, the EU courts can decide invalidity defenses concerning patents granted for other EU countries, cross-border jurisdiction for infringement also becomes a useful tool in cases on the merits (and not, as in the past, only in preliminary injunction proceedings). However, what has not yet been decided is if this possibility (to decide inter partes about the validity of the patents in EU-non-UPC countries (e.g. Spain, Poland) also exists with respect to defendants who are not sued in their own country but as a co-defendant (Art. 8 (1) Brussels Regulation). It also becomes interesting to see what will happen if the Moderna companies are going to raise invalidity defenses with respect to non-UPC countries. First of all, there is already the question of how to raise this because a counterclaim for invalidity of patents granted for non-UPC countries is not possible as under the Rules of Procedure you can only raise invalidity by way of counterclaim. The Court can then of course not ignore a substantiated invalidity defense made in the Statement of Defence. According to CJEU BSH v Electrolux, the Court can deal with these invalidity claims inter partes for EU (non-UPC) countries and decide about the validity of patents granted for non-EU countries or abstain from dealing with such cases for e.g. international comity reasons. 4. The JR refers the long-arm jurisdiction question to the main case, apparently because that is less clear-cut? Can the UPC, e.g., deal with the infringement of a UK company in the UK? If the UK company is sued as a co-defendant with the NL company and the UK company is also infringing in the UPC, then Art. 8 (1) of the Brussels Regulation could be applicable (all assuming the UK court under its own jurisdiction rules can also deal with infringements by the UK company in the UPC - See the CJEU in Solvay v Honeywell -). However, as stated above, if invalidity of the UK patent is raised, the UPC Court can (but does not have to) abstain. I think that is probably, in the context of international comity, what the UPC should do, except maybe in a situation where the local UK company is a subsidiary (a sales company, for instance) of a UPC parent. The UPC (and in the end the CJEU) will also have to decide in how far all this is influenced by the specific (?) long-arm jurisdiction article in the Brussels Regulation (Art. 71b (3)). __

Full Decision Text

1 The Hague - Local Division UPC_CFI_191/2025 and 192/2025 Procedural Order of the Court of First Instance of the Unified Patent Court delivered on 23/05/2025 Moderna, Inc. (Defendant) - 325 Binney Street - MA 02142 - Cambridge - US Statement of claim served on 21/04/2025 ModernaTX, Inc. (Defendant) - 325 Binney Street - MA 02142 - Cambridge - US Statement of claim served on 23/04/2025 Moderna Switzerland GmbH (Defendant) - Peter Merian- Weg 10 - 4052 - Basel - CH Statement of claim served on 24/03/2025 Moderna Netherlands B.V. (Defendant) - Claude Debussylaan 7 - 1082 MC - Amsterdam - NL Statement of claim served on 27/03/2025 Moderna Biotech Spain SL (Defendant) - C/ Julián Camarillo 31 - 28037 - madrid - ES Statement of claim served on 24/03/2025 2 Moderna Germany GmbH (Defendant) - Brienner Straße 45 a-d. c/o Design Offices Campus Königsplatz - 80333 - Munich - DE Statement of claim served on 21/03/2025 Moderna France SASU (Defendant) - 19 Rue Cognacq-Jay - 75007 - Paris - FR Statement of claim served on 24/03/2025 Moderna Italy S.R.L. (Defendant) - Via Vittorio Veneto 54/B - CAP 00187 - Rome - IT Statement of claim served on 27/03/2025 Moderna Belgium S.R.L. (Defendant) - Avenue Marnix 23 - 1000 - Brussels - BE Statement of claim served on 21/03/2025 Moderna Denmark ApS (Defendant) - C/O CSC (DENMARK) ApS Sundkrogsgade 21 - 2100 - Copenhagen - DK Statement of claim served on 26/03/2025 Moderna Sweden AB (Defendant) - c/o Scandinavian Trust AB, Birger Jarlsgatan 12 - 114 34 - Statement of claim served on 07/04/2025 3 Stockholm - SE Moderna Norway AS (Defendant) - c/o CSC (Norway) AS, Wergelandsveien 7 - 0167 - Oslo - NO Statement of claim served on 05/05/2025 Moderna Portugal Unipessoal LDA (Defendant) - Rua João Chagas 10-B DTO - 1500-493 - Lisbon - PT Statement of claim served on 27/03/2025 Moderna Poland SP. Z.O.O. (Defendant) - Rondo Ignacego Daszyńskiego 1 - 00-843 - Warsaw - PL Statement of claim served on 25/03/2025 Moderna Biotech UK Limited (Defendant) - 54 Portland Place - W1B 1DY - London - GB Statement of claim served on 21/03/2025 APPLICANT/S – DEFENDANTS IN THE MAIN PROCEEDINGSIN THE MAIN PROCEEDINGS 1) Moderna, Inc. 325 Binney Street - MA 02142 – Cambridge - US Represented by Ruben Laddé 4 2) ModernaTX, Inc. 325 Binney Street - MA 02142 - Cambridge - US Represented by Ruben Laddé 3) Moderna Switzerland GmbH Peter Merian-Weg 10 - 4052 - Basel - CH Represented by Joachim Renken 4) Moderna Netherlands B.V. - Claude Debussylaan 7 – 1082 MC - Amsterdam - NL Represented by Ruben Laddé 5) Moderna Biotech Spain SL - C/ Julián Camarillo 31 - 28037 - Madrid - ES Represented by Ruben Laddé 6) Moderna Germany GmbH - Brienner Straße 45 a-d. c/o Design Offices Campus Königsplatz - 80333 - Munich - DE Represented by Ruben Laddé 7) Moderna France SASU - 19 Rue Cognacq-Jay - 75007 - Paris - FR Represented by Ruben Laddé 8) Moderna Italy S.R.L. - Via Vittorio Veneto 54/B - CAP 00187 - Rome - IT Represented by Ruben Laddé 5 9) Moderna Belgium S.R.L. - Avenue Marnix 23 - 1000 - Brussels - BE Represented by Ruben Laddé 10) Moderna Denmark ApS - C/O CSC (DENMARK) ApS Sundkrogsgade 21 - 2100 - Copenhagen - DK Represented by Ruben Laddé 11) Moderna Sweden AB - c/o Scandinavian Trust AB, Birger Jarlsgatan 12 - 114 34 - Stockholm - SE Represented by Ruben Laddé 12) Moderna Norway AS c/o CSC (Norway) AS, Wergelandsveien 7 - 0167 - Oslo - NO Represented by Ruben Laddé 13) Moderna Portugal Unipessoal LDA - Rua João Chagas 10-B DTO - 1500-493 - Lisbon - PT Represented by Ruben Laddé 14) Moderna Poland SP. Z.O.O. - Rondo Ignacego Daszyńskiego 1 - 00-843 - Warsaw - PL Represented by Ruben Laddé 15) Moderna Biotech UK Limited 54 Portland Place - W1B 1DY - London – GB Applicants/Defendants 1 to 15, defendants in the main proceedings are hereinafter referred to as “Defendants” or “Moderna” and are referred to separately as “ Defendant + nr” or “Moderna + country”, e.g. “Moderna Switserland” and “Defendant 3” for the Represented by Ruben Laddé 6 defendant listed at 3) above. RESPONDENT/S – CLAIMANTS IN THE MAIN PROCEEDINGS 1) Genevant Sciences GmbH (Respondent) - Viaduktstrasse 8 - 4051 - Basel - CH Represented by Markus Van Gardingen 2) Arbutus Biopharma Corporation (Respondent) - 701 Veterans Circle - PA 18974 - Warminster – US Respondents/Claimants in the main proceedings are hereinafter collectively called: “Claimants” Represented by Markus Van Gardingen PATENTS AT ISSUE Patent no. Proprietor/s EP2279254 EP4241767 Arbutus Biopharma Corporation (in case 191/2025) Arbutus Biopharma Corporation( in case 192/2025) DECIDING JUDGE This order is issued by the judge-rapporteur. LANGUAGE OF PROCEEDINGS: English SUMMARY OF FACTS AND PROCEDURE 1. By statements of claim (“SoCs”) dated 3 March 2025, Claimants initiated two separate infringement proceedings each concerning infringement of a different patent (case 7 UPC_CFI_191/2024 concerning EP 2 279 254 and case UPC_CFI_192/2025 regarding EP 4 241 767, hereinafter cases “191/25” and “192/95” respectively), against the same fifteen defendants. All defendants belong to the Moderna-group. 2. In case 191/25 Moderna UK (Defendant 15) filed a preliminary objection pursuant to R.19 RoP (“PO”) on 22 April 2025 (App_19208/2025) requesting: • to allow the PO regarding the jurisdiction and competence of the Court (Rule 19.1(a) RoP); • to dismiss the claim with regard to Moderna UK. In the same case Defendants 1-14 filed a PO on 24 April 2025 as App_19773/2025, requesting: • to allow the PO regarding the jurisdiction and competence of the Court (Rule 19.1(a) RoP UPC) and regarding the competence of the division indicated by Claimants (Rule 19.1(b) RoP UPC); • to dismiss the claim. 3. In case 192/25 Moderna UK (Defendant 15) filed a preliminary objection (“PO”) on 22 April 2025 (App_19158/2025), requesting: • to allow the Preliminary objection regarding the jurisdiction and competence of the Court (Rule 19.1(a) RoP UPC); • to dismiss the claim with regard to Moderna UK as regards infringing acts within Poland, Spain, Monaco, Norway, Greece, Hungary, Ireland, Iceland, Turkey and Switzerland/Liechtenstein. In the same case, Defendants 1-14 filed a PO on 24 April 2025 as App_19821/2025, with the following requests: • to allow the Preliminary objection regarding the jurisdiction and competence of the Court (Rule 19.1(a) RoP UPC) and regarding the competence of the division indicated by Claimants (Rule 19.1(b) RoP UPC); • to dismiss the claim with regard to Defendants 5) (Moderna Spain), 12) (Moderna Norway) and 14) (Moderna Poland); • to dismiss the claim with regard to Defendants 1) (Moderna US), 2) Moderna US- TX), 3) (Moderna Switserland), 5), 12) and 14) as regards infringing acts within Poland, Spain, Monaco, Norway, Greece, Hungary, Ireland, Iceland, Turkey and Switzerland/Liechtenstein. 4. Moderna bases its request for dismissal on several grounds. Firstly, it argues that the court lacks international jurisdiction for Moderna Norway, Spain and Poland because these defendants are not based on the UPCA and jurisdiction cannot be based on Art. 7(2) or Art. 8(1) Brussels I recast Regulation (“BR”,( EU) no 1215/2012) in conjunction with Art. 71b(1), (2) BR, because Claimants do not conclusively allege that these Moderna companies have committed any infringing acts within the UPC territory. This argument was not raised in the separate PO applications for Moderna UK. 5. Moderna also argues that the Local Division The Hague has no (local) jurisdiction in this case pursuant to Art. 33(1)(a) and/or (b) UPCA, to hear the case against Moderna Spain, Moderna Germany, Moderna France, Moderna Italy, Moderna Belgium, Moderna Denmark, Moderna Sweden, Moderna Norway, Moderna Portugal, and Moderna Poland because these defendants are neither domiciled nor accused of infringing acts in the Netherlands. This was not argued in the separate PO applications for Moderna UK. 8 6. In addition, Moderna asserts that even if one were to assume that the Court has international competence for an case against all Defendants, it would at least lack long-arm jurisdiction for acts outside the UPCA territory (i.e. for alleged infringement occurring in Poland, Spain, Monaco, Norway, Greece, Hungary, Ireland, Iceland and Turkey) allegedly committed by Moderna entities that are not based within the UPCA territory. This concerns Moderna US, Moderna US-TX, Moderna Switzerland, Moderna Spain, Moderna Norway, Moderna UK and Moderna Poland. 7. Lastly, only in case 191/25, Moderna additionally argues that the formal requirements for the withdrawal of the opt-out of the patent at issue were not met and consequently the UPC has no jurisdiction to hear the case with respect to any of the Defendants. The withdrawal request was only filed on behalf of Claimant 2, whereas the application for withdrawal of the opt-out for the patent at issue should have been filed by or on behalf of both Claimant 1) (Moderna clearly means Claimant 2, the patent proprietor, JR) and "Protiva Biotherapeutics Inc." because that company is registered as he patent proprietor in Greece, Hungary and Austria. 8. In all four applications Moderna announced that it intends to file counterclaims for revocation and that it reserves the right to initiate national nullity actions in particular jurisdictions outside the scope of the UPCA. In addition, Moderna announced that it will request that the proceedings be stayed insofar as they concern infringing acts of Moderna allegedly committed in jurisdictions that are not member states of the UPCA. 9. Claimants replied to both PO’s in action 191/25 in one submission dated 7 May 2025, requesting to dismiss the PO’s. In action 192/25 Claimants also replied to both PO’s with one submission dated 7 May 2025, requesting the court to dismiss the PO’s. GROUNDS FOR THE ORDER In cases 191/25 and 192/25 10. The four PO-applications are based mostly on the same or similar grounds (the PO’s in case 191/25 are based on an additional ground) and concern the same parties. A combined order will be issued regarding the four PO’s for practical reasons. This order will be uploaded in all four workflows in order to close them. PO’s admissible? 11. As a preliminary point, it needs to be established whether the requests for preliminary objections were raised within the time limit set out in Rule 19(1) RoP and are thus admissible. According to R.19.1 RoP a PO must be filed within 1 month from of service of the statement of claim. The court must assess ex officio whether this requirement is met. By order of 16 April 2024 (ORD_18458/2025), Moderna’s requests in both actions for the extension of the deadlines for the PO’s was rejected. The JR considered that PO’s are generally particular for each defendant and therefore there is no reason to align these deadlines for all fifteen defendants. 12. The defendants on which service of the SoCs in both cases wwa affected first, are Moderna UK, Belgium and Moderna Germany and in case 192/25 also Moderna Poland. Service on those 9 entities took place on 21 March 2025. Due to (national) holidays, the deadline for filing the PO for these defendants expired on 22 April 2025. The PO’s in both cases on behalf of Moderna UK were filed on this date and are therefore admissible. The PO’s filed on 24 April 2025 also on behalf of Moderna Belgium, Moderna Germany and Poland, arenot admissible for these defendants (for Moderna Poland this only applies to action 192/25), as they are late filed. For all other defendants, on whom the service was affected later (on or after 24 March 2025), the PO’s are admissible (including for Moderna Poland in action 191/25). 13. Pursuant to R.19.7 RoP, Moderna Belgium, Moderna Germany and Moderna Poland (the latter only in case 192/25) are therefore considered to submit to the jurisdiction and competence of the court and of the LD The Hague. International jurisdiction: Art. 7(2) or Art. 8(1) BR 14. Moderna only substantiates its objection to the UPC’s international jurisdiction (pursuant to Art. 31 and 32 UPCA) with respect to defendants Moderna Spain, Moderna Poland and Moderna Norway. The other defendants, in particular also those based outside the territory of the UPC, notably Moderna US, Moderna US-TX, Moderna Switzerland and Moderna UK, are therefore considered to submit to the international jurisdiction of the UPC. For Moderna Poland the objection is only admissible in case 191/25 as set out above, there this defendant is considered to submit to the international jurisdiction of the court in case 192/25. 15. The UPC is a common court within the meaning of Art. 71a(1) BR (Art. 71a(2)(a) BR). Therefore, the UPC has (international) jurisdiction where the courts of a Contracting Member State would have jurisdiction in an action within the meaning of Art. 32(1) UPCA (Art. 71b(1) BR). Under Art. 7(2) BR, the courts of a Contracting Member State have jurisdiction in an infringement action within the meaning of Art. 32(1)(a) UPCA against a person domiciled in an EU Member State where the harmful event occurred or may occur in that Contracting Member State. Pursuant to Art. 8(1) BR, a person domiciled in an EU Member State may also be sued where he 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. 16. Moderna Spain and Moderna Poland are both EU Member States and therefore the above applies directly. Moderna Norway is not an EU Member State, but both the EU and Norway are contracting parties to the Art. 5.3 revised Lugano Convention (“Lugano”), which was concluded to extend the principles laid down in Regulation (EC) No 44/2001 (the ‘predecessor of the BR) to the Contracting Parties to this instrument to strengthen legal and economic cooperation. Lugano consequently has provisions that correspond to Art. 7(2) BR and Art. 8(1) BR as Art. 5(3) and Art. 7(1) respectively. The JR understands that the jurisdiction rules of the BR that apply to the UPC, also apply to the assessment of jurisdiction of the UPC in proceedings concerning persons domiciled in Lugano Contracting Parties (such as Norway). This was not contested (or discussed) by the parties. 17. Claimants argue, both in the SoCs and in the replies to the objections, that all Defendants, including Moderna Spain and Moderna Poland, have infringed or threaten to infringe the patents within and outside UPC territory, and that they do so both individually and collectively. 17.1 For Moderna Spain it pointed out that it is the holder of the European market authorisation (“MA”) for the allegedly infringing product Spikevax. As this product is 10 commercialised, also within UPC territory, Moderna Spain facilitated this by making the MA available. In case this does not qualify as direct infringement, it in any case therewith facilitates infringement, which may qualify as the providing of services used by a third party to infringe (cf. Art. 63 UPCA). Furthermore, Claimants point out that Moderna Spain is also one of the manufacturers for batch release of Spikevax destined for the European market. 17.2 Regarding Moderna Poland, Claimants assert, substantiated with references to the activities mentioned on Moderna Poland’s website, that Moderna Poland supports the infringement of the other Moderna defendants, and that Moderna Poland is planned to be expanded to provide commercial capabilities. Those constitute an (enablement/participation in) infringement, including within the UPC territory and all selected EPC states, or at least qualify as services which are being used by a third party to infringe, according to Claimants. 17.3 Concerning Moderna Norway, Claimants, based on the public information available to them, confess that currently they do not know if this entity performs (infringing) activities outside of Norway. However, due to this lack of information and the intertwined activities of the entire Moderna group, they cannot rule this out either and there is at least a threat of infringement. Defendants have not clarified Moderna Norway’s exact role. 17.4 Claimants also assert that Moderna Netherlands has a central role in the sales activities (as a ‘spider in the web’) and has successfully offered to supply (and sold) Spikevax in the past, and more recently in 17 European countries, including Norway. It qualifies this activity as (threatened) infringement in those countries (as far as the patents at issue are in force there). Moderna Spain in any case provides the necessary MA for these activities, and Moderna Poland likewise supports the commercialisation of the same product in the same countries where Moderna Netherlands infringes. Both Moderna Netherlands and Moderna Norway in any perform infringing activities in Norway with the same products. 17.5 Claimants thus argue that Moderna Poland, Moderna Norway and Spain each not only infringe individually (asserting that jurisdiction can be based on Art. 7(2) BR), but that they also infringe the patent jointly with Moderna Netherlands in their home country. Therewith they infringe the same (national parts of a European) patent with the same product, which is enough connectivity to consider them co-defendants within the meaning of Art. 8(1) BR. 18. The Defendants only dispute the international jurisdiction by arguing that Moderna Spain, Norway and Poland do not infringe the patents. The issue whether the patents are infringed, in which countries the infringement takes place and whether that infringement may (also) be attributed to those Defendants, however, falls within the scope of the examination of the substance of the action by the court having jurisdiction (Court of Appeal, Order of September 03, 2024, CoA_188/2024). For establishing international jurisdiction, Claimants have sufficiently substantiated that Moderna Spain, Moderna Poland and Moderna Norway allegedly infringe the patent in their home countries jointly with Moderna Netherlands, which is sufficient for jurisdiction of the UPC pursuant to Art. 8(1) BR (or Art. 7(1) Lugano). This ground for the objections, that was only raised for the three defendants mentioned, therefore fails. 11 Competence of the LD The Hague(Art. 33 UPCA) 17 With this ground, Moderna questions the local competence of the LD The Hague of the UPC to hear the cases vis a vis certain Defendants. Art. 33 UPCA governs the internal jurisdiction of the UPC. In the present case, one of the Defendants has its domicile in The Netherlands (Moderna Netherlands) and the other defendants have their respective seat outside the Netherlands, some in Contracting Member States (CMS), some in the European Union (EU) but outside UPC territory and others outside the EU. 18 Article 33(1)(b) UPCA provides that in case of multiple defendants, the local division hosted by the CMS where one of the defendants has its residence, is competent to hear the case, provided that the defendants have a commercial relationship and where the action relates to the same alleged infringement, regardless of whether the other defendants are based inside or outside the CMS or inside or outside the EU. Hence the only requirements to be met are: 1) the multiple defendants have a commercial relationship and 2) the action relates to the same alleged infringement. 19 To avoid multiple actions regarding the same infringement and the risk of irreconcilable decisions from such separate proceedings, and to comply with the main principle of efficiency within the UPC, the interpretation of "a commercial relationship" and therefore the link between the defendants should not be interpreted too narrowly. The fact of belonging to the same group (of legal entities) and having related commercial activities aimed at the same purpose (such as R&D, manufacturing, sale and distribution of the same products) is sufficient to be considered as “a commercial relationship” within the meaning of the Article 33(1)(b) (cf LD Munich 29 September 2023, UPC_CFI_15/2023, LD Paris 11 April 2024, UPC_CFI_495/2023). The JR notes that Moderna has also not disputed that all Defendants belong to the same group. That the action relates to the same alleged infringement has also been established above in the course of international jurisdiction for certain defendants. For other defendants this is not contested nor plausible. Therefore, also this ground for the objections fails. and in case 191/25 Opt-out valid? 18 As Claimants explained in their reply to the PO’s in case 191/2025, the relevant patent in those proceedings was opted out from the exclusive competence of the UPC On 15 May 2023. The Claimants submitted the lodged opt-out and the UPC’s acknowledgment of the opt-out as exhibits. The opt-out was subsequently withdrawn on 10 December 2024 (also substantiated with an exhibit). Both the opt-out and the withdrawal were lodged on behalf of Arbutus Biopharma Corporation (Claimant 2) only, being the sole proprietor of the patent in all states for which the patent has been granted. The previous proprietor, that is apparently still incorrectly mentioned as such in the Greek, Austrian and Hungarian national registries, Protiva Biotherapeutics Inc, amalgamated with another company, to create the present patent holder, Claimant 2. on 1 January 2018 (also this fact is substantiated with an exhibit). This company therefore no longer exists. Furthermore, the Claimants point out that, in case Moderna’s reasoning regarding the withdrawal of the opt-out were to be correct, then the opt-out itself would also be invalid as this was also lodged on behalf of Claimant 2 only. In that 12 case, the relevant patent was never opted-out in the first place. In that circumstance, the patent is, and always has been, within the jurisdiction and competence of the UPC. 19 According to R. 8.5 (c) RoP, there is a rebuttable presumption that the person shown in a national patent registry (or the EPO registry) as proprietor, is the proprietor of a patent. In the present case the JR is convinced by the Claimants’ submissions that the registrations in Greece, Austria and Hungary, are not correct and that the present proprietor of the patent at issue as from 1 January 2018, is Claimant 2, also for these countries. The patent at issue was therefore validly opted-out and this opt-out was validly withdrawn. This ground therefore fails. and in case 191/25 and case 192/25 lack long-arm jurisdiction 20 In both cases, Moderna lastly argues that even if the court has jurisdiction for all Defendants, which has been established as all the grounds for the objections are dismissed hereabove or the jurisdiction was not contested (timely), the territorial scope of that jurisdiction is limited for certain Defendants and cannot extend beyond UPC territory. This part of the preliminary objections is to be dealt with in the main proceedings. ORDER I. Applications 19773/2025 and 19821/2025 are not admissible in so far as they were submitted on behalf of Moderna Belgium and Moderna Germany; II. Application 19821/2025 is not admissible in so far as it was submitted on behalf of Moderna Poland; III. The decision concerning long-arm jurisdiction with respect to defendants Moderna US, Moderna US-TX, Moderna Switzerland, Moderna Spain, Moderna Norway, Moderna UK and Moderna Poland, will be dealt with in the main proceedings; IV. On all other counts, the preliminary objections (19208/2025, 19773/2025, 19158/2025 and 19821/2025) are dismissed. ORDER DETAILS Order no. ORD_21852/2025 in ACTION NUMBER: ACT_10280/2025 UPC number: UPC_CFI_191/2025 And ACTION NUMBER: ACT_10284/2025 UPC number: UPC_CFI_192/2025 Action type: Infringement Action Application No.: 19208/2025, 19158/2025, 19773/2025 and 19821/2025 Application Types: Preliminary objections (R.19 RoP)

Key Holdings

  • Preliminary Objections rejected (partly late filed).
  • International jurisdiction affirmed for non-UPC defendants (Spain, Poland, Norway) under Art. 8(1) Brussels I bis/Lugano.
  • Opt-out validly withdrawn.
  • Long-arm jurisdiction decision deferred to main proceedings.

Tags

  • Brussels Regulation
  • Cross-Border
  • Jurisdiction
  • Lugano Convention
  • Opt-Out
  • Preliminary Objection

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