UPC_CFI_191/2025 – Genevant v Moderna

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

Expert Commentary

Extension of time Facts 1. Moderna asks for protection of confidential information. 2. After the deadline for the Statement of Defence/Counterclaim for Revocation for all defendants was set on 8 July 2025, defendants filed a redacted and an unredacted version. 3. The claimants received the redacted version on 11 July 2025 and the representatives of claimants the unredacted version on 17 July 2025. 4. The order confirming the agreement about the confidentiality was issued on 4 August 2025. 5. Claimants asked for an extension for reply/answer in the counterclaim until 4 October 2025. The JR The JR states that in general, the periods mentioned in the Rules are sufficient and that extension should be granted only in exceptional circumstances so that the 12-14 months until oral argument can be met. The JR cites all the different decisions of Local Division with respect to extension of term because of confidentiality requests and grants an extension until 24 September 2025. Comment 1. This is a well-reasoned and in my opinion correct decision. It is better than the decisions of Düsseldorf where there is an (almost automatic) extension to the full term starting with the date of R. 262A RoP order. The JR is of course right that representatives can immediately start working on the reply/answer when they receive the redacted and unredacted versions. 2. With respect to the promised deadline, the JR states that the oral hearing should take place within 12-14 months. I think that the oral hearing should in normal cases take place within one year (Preamble 7 RoP) with a judgment as soon as possible after the oral hearing but at least within 6 weeks (R. 118.6 RoP).

Full Decision Text

1 The Hague - Local Division UPC_CFI_191/2025 Order of the Court of First Instance of the Unified Patent Court delivered on 13/08/2025 regarding R.9.3 APPLICANTS/CLAIMANTS IN THE INFRINGEMENT ACTIONS/DEFENDANTS IN THE COUNTERCLAIMS 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 Represented by Markus Van Gardingen DEFENDANTS/DEFENDANTS IN THE INFRINGEMENT ACTIONS/CLAIMANTS IN THE COUNTERCLAIMS 1) Moderna, Inc. (Applicant) - 325 Binney Street MA 02142 - Cambridge - US Represented by Ruben Laddé 2) Moderna Belgium S.R.L. (Applicant) - Avenue Marnix 23 1000 - Brussels - BE Represented by Ruben Laddé 2 3) Moderna Denmark ApS (Applicant) - C/O CSC (DENMARK) ApS Sundkrogsgade 21 2100 - Copenhagen - DK Represented by Ruben Laddé 4) Moderna Sweden AB (Applicant) - c/o Scandinavian Trust AB, Birger Jarlsgatan 12 114 34 - Stockholm - SE Represented by Ruben Laddé 5) Moderna Switzerland GmbH (Applicant) - Peter Merian-Weg 10 4052 - Basel - CH Represented by Joachim Renken 6) Moderna Portugal Unipessoal LDA (Applicant) - Rua João Chagas 10-B DTO 1500-493 - Lisbon - PT Represented by Ruben Laddé 7) ModernaTX, Inc. (Applicant) - 325 Binney Street MA 02142 - Cambridge - US Represented by Ruben Laddé 8) Moderna Norway AS (Applicant) - c/o CSC (Norway) AS, Wergelandsveien 7 - 0167 - Oslo - NO Represented by Ruben Laddé 9) Moderna Poland SP. Z.O.O. (Applicant) - Rondo Ignacego Daszyńskiego 1 00-843 - Warsaw - PL Represented by Ruben Laddé 3 10) Moderna Netherlands B.V. (Applicant) - Claude Debussylaan 7 1082 MC - Amsterdam - NL Represented by Ruben Laddé 11) Moderna Biotech UK Limited (Applicant) - 54 Portland Place W1B 1DY - London - GB Represented by Ruben Laddé 12) Moderna Italy S.R.L. (Applicant) - Via Vittorio Veneto 54/B CAP 00187 - Rome - IT Represented by Ruben Laddé 13) Moderna Biotech Spain SL (Applicant) - C/ Julián Camarillo 31 28037 - Madrid - ES Represented by Ruben Laddé 14) Moderna France SASU (Applicant) - 19 Rue Cognacq-Jay 75007 - Paris - FR Represented by Ruben Laddé 15) Moderna Germany GmbH (Applicant) - Brienner Straße 45 a-d. c/o Design Offices Campus Königsplatz 80333 - Munich - DE Represented by Ruben Laddé PATENT AT ISSUE Patent no. Proprietor/s EP2279254 Arbutus Biopharma Corporation (in case 191/2025) 4 DECIDING JUDGE: Judge-rapporteur LANGUAGE OF PROCEEDINGS: English REQUESTS AND PROCEDURAL BACKGROUND 1. Applicants, claimants in the infringement action, “Claimants”, filed a (corrected version of the) statement of claim on 5 March 2025, which was subsequently served on the 15 Defendants. 2. In response to an application by Defendants pursuant to R.9.3 of the Rules of Procedure (“RoP”), (App_17259/2025), the deadline for lodging the statement of defence (“SoD”) was set on 8 July 2025 for all defendants by order of 17 April 2025. A request for a (further) extension of the deadline was rejected. 3. Defendants uploaded redacted and unredacted (confidential) versions of the SoD including a counterclaim for revocation (“CfR”) in the CMS on 8 July 2025 and filed a request for confidentiality (App_32589/2025, the “R.262A Application”) on the same day concerning the following information: 4. The submission comprises more than 200 pages and 901 paragraphs (‘Marginals’ in the table above). 5. The redacted versions of the SoD/CfR became available to Claimants in workflow ACT_10280/2025 in any case on 11 July 2025, following the completion of the formal checks by the registry. 6. Following a provisional order of the JR thereto of 10 July 2025 (the “R.262A Order), the unredacted versions of the pleadings were made available to the representatives of the Claimants on 17 July 2025, followed by unredacted versions of the exhibits on 18 July 2025 (after a corrected version of the SoD/CfR had been uploaded by Defendants on 15 July 2025 and the CfR was officially served on Claimants on that day). 10. In the R.262A Order the following was included: 5. Parties are requested to discuss and reach agreement on the members of the confidentiality club (in particular on the employees of Claimants) and on the terms/wording of the R.262A order, and to inform the JR thereof in the response to be filed. 11. On 24 July 2025 Claimants, in reply to the R.262A Order, submitted: 7 As such, Parties have agreed that the confidentiality club should include relevant employees of Claimants; outside counsel to UPC and US proceedings and their assistants; and experts. The 5 agreement reached between Parties, as to the members of the confidentiality club and terms/wording of the R. 262A order, is submitted as Exhibit G122. 12. In Exibit G122 ‘ The Parties request the Local Division to issue an order in view of the agreed terms/wording as detailed above.’ 13. Due to absence on the part of the Court, the final R.262A order wherein the agreement was confirmed was subsequently issued on 4 August 2025. 14. With identical applications uploaded on 1 August 2025, Claimants request to extend the deadline for filing their reply to the defence (“Reply”, App_34202/2025) and statement of defence in the counterclaim (“SoDCfR”, App_34218/2025) as well as a possible request to amend the patent, reflecting access of the claimants to confidential information on 4 August 2025 (the “R.9(a) Applications”). 15. Given the opportunity to respond, Defendants request the Court to dismiss the R.9(a) Applications 16. For further details, reference is made to the parties' written pleadings. GROUNDS 17. According to R.29(a) RoP a Reply and a SoD CfR have to be filed within two months of service of the SoD which includes a Counterclaim for revocation. Claimants may request that the Court apply its discretionary power to extend this time period pursuant to R. 9.3 (a) RoP, which was done with the present applications. 18. The discretionary power to extend deadlines must be construed narrowly and should be exercised with caution. The rationale is to avoid undermining the time regime set out in the RoP, which ensures that Court proceedings can be concluded swiftly and that there is sufficient time is allowed for preparation of the oral hearing which is to be held within 12-14 months of filing of the statement of claim. An extension is only justified in exceptional circumstances and must be limited to the extra time required. In principle, the time periods provided by the Rules of Procedure are sufficient. 19. When deciding whether to extend a time period, the interests of the parties involved (including the right to a fair hearing) and the interests of the Court and the public in the efficient conduct of proceedings must be weighed, taking into account the circumstances of the individual case. Special circumstances may justify an extension of a time period. See, for example, the orders of the CD Paris of 20 February 2024 (UPC_CFI_454/2023), the LD Munich of 9 April 2024 (UPC_CFI_501/2023), the LD Düsseldorf of 20 April 2024 (UPC_CFI_355/2023), the CD Paris of 17 September 2024 (UPC_CFI_189/2024) and the LD Mannheim of 16 July 2025 (UPC_CFI_750/2024). 20. In the circumstances of several cases where access to unredacted parts of a submission by the other party was delayed due to a confidentiality request pursuant to R.262A RoP, extensions of deadlines were considered appropriate. In the majority of cases, the deadline was extended whereby the issuing of the final R.262A orders was taken as starting date for the two month period (orders of LD Hamburg of 28 November and 5 December 2023 (UPC_CFI_54/2023), LD Dusseldorf of 24 June 2024 6 (UPC_CFI_456/2023)). In other cases, a shorter extension period was deemed appropriate (e.g. in an order of the LD Mannheim of 9 September 2024 (UPC_CFI_219 and 223/2023)). In a case concerning an application for provisional measures, postponing the start of the time period until the conclusion of the confidentiality proceedings according to R.262A RoP was deemed incompatible with the urgent nature of such proceedings (LD Dusseldorf, order of 23 February 2024, UPC_CFI_463/2023). In the latter case no extension was granted. 21. In view of the circumstances of this case, the date of the uploading of the agreement of the party regarding a confidentiality club, shall be taken as the start date for the two month time period. A limited extension for filing the Reply/SoDCfR will thus be granted until 24 September 2025. A further extension until 4 October 2025 as requested, is not justified. For this decision, the following was taken into account: • Defendants’ extension request for the deadline for filing the SoD/CfR was mostly rejected; granting a substantial extension would create disbalance in the proceedings; • The date of service of the corrected CfR on claimants was 15 July 2025, which is the official starting date of the time period specified in R.29(a)RoP; • From that date Claimants had access to the redacted SoD/CfR; access to the same document was already available even earlier in the workflow of the infringement action. • The confidential information forms only a minor part of the submission and although material (it contains product information of some allegedly infringing products), Defendants pointed out that the redacted information is in line with one of Claimants own observation (cf 218 SoC); • The representatives of Claimants were given access to the unredacted version of the submission on 17 and 18 July 2025; • From the time of an agreement by the parties regarding the confidentiality club, access by agreed natural persons of Claimants must have been available, or in any case could have been available; in the absence of a date on Exhibit G122, agreement must in any case have been reached by 24 July 2025, the day on which it was uploaded in the CMS; • Even in case natural persons of the Claimants were not given access to the unredacted parts of the SoD on or before 24 July 2025, Claimants have not presented convincing arguments that fair trial is negatively affected when the time period for discussion the confidential information with the Claimants is 7 slightly reduces (by less than two weeks), especially since the time period for replying to most of the SoD/CfR is effectively longer than two months; • The dates for the interim conference have been set (in February and May 2026); granting a longer extension would compromise those dates. 22. This order applies to both R.9(a) Applications, but for CMS/technical reasons it can only be uploaded in the workflow of App_34218/2025. ORDER 1. The R.9.3(a) submission is partly rejected. 2. The deadline for filing the Reply and the SoDCfR is 24 September 2025. APPEAL Within 15 days from the service of this order, a party can lodge a reasoned application for review of the order by the panel (R.333 RoP). ORDER DETAILS Order in Action Number: ACT_10280/2025 UPC number: UPC_CFI_191/2025 Action type: Infringement Action And in Counterclaim: CC_32138/2025 (UPC_CFI_617/2025;) Application No.: App_34218/2025 and App_34202/2025 Application Type: ROP 9.3 (a) – extension of deadline

Key Holdings

  • Extension of time granted due to confidentiality delays, but limited.
  • Full extension refused to maintain 12-14 month schedule.
  • Extensions granted only in exceptional circumstances.

Tags

  • Added Matter
  • Case Management
  • Confidentiality
  • Time Limits

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