UPC_CFI_619/2025; UPC_CFI_1526/2025 – GlaxoSmithKline (GSK) v Moderna

Court
Local Division The Hague
Date
Outcome
Granted
Sector
Pharma/Bio
Decision Type
PROCEDURAL

Expert Commentary

Separating revocation action Facts GSK asserts two patents in an infringement action against Moderna. Moderna filed a defence and a counterclaim for revocation against both patents. The Court 1. Orders to separate the counterclaim in two different actions. 2. Reasons given: a. it is a complicated case; b. different stages of opposition proceedings pending for each patent at the EPO; c. paying only the (very low) flat fee once for two counterclaim actions is not justified. Comment 1. I fully agree that Moderna should pay extra €20,000 in court fees for having launched two revocation actions. In fact, such fees for these type of very valuable cases are far too low and the Court should have discretion in exceptional cases to increase the fees (for instance to a percentage of the recoverable costs). 2. What I do not understand is why apparently the infringement case is not split as well. It would seem more logical as the revocation actions are a reaction to the infringement actions. The current approach results in the strange situation that the Local Division is going to deal with one standalone revocation action for which in fact it is not competent. 3. The Drafting Committee did not envisage such use of R. 302.1 RoP. The counterclaim may be considered as separate proceedings due to CMS-related considerations but I think these remain the same proceedings between the same parties, consisting of a claim and a counterclaim.

Full Decision Text

Unified Patent Court The Hague - Local Division Einheitliches Patentgericht UPCCFI619/2025 Juridiction unifiée du brevet UPCCFI1526/2025 Procedural Order of the Court of First Instance of the Unified Patent Court delivered on 28/11/2025 concerning R.302 CLAIMANT/S 1. GlaxoSmithKline Biologicals SA Represented by Tjibbe Douma Rue de l'Institut 89 - 1330 - Rixensart - BE DEFENDANT/S 1. Moderna Netherlands B.V. (Defendant) - Claude Debussylaan 7 - 1082 MC - Amsterdam - NL 2. Moderna Biotech Spain, S.L. (Defendant) - C/Julián Camarillo 31 - 28037 - Madrid - ES 3. Moderna Biotech UK Limited (Defendant) - 54 Portland Place - W1B 1DY - London - GB 4. Moderna Biotech Distributor UK Ltd (Defendant) - MYO, 123 Victoria Street - SW1E 6DE - London - GB 5) Moderna Switzerland GmbH (Defendant) - Peter Merian-Weg 10 - 4052 - Basel - CH 6) Moderna Poland SP. Z.O.O. (Defendant) - Rondo Ignacego Daszynskiego 1 - 00-843 - Warsaw - PL 7) Moderna Inc. (Defendant) - 325 Binney Street - MA 02142 - Cambridge - US 8) ModernaTX, Inc. (Defendant) - 325 Binney Street - MA 02142 - Cambridge - US 9) Moderna Belgium S.R.L. (Defendant) - Avenue Marnix 23 - 1000 - Brussels - BE 10) Moderna France SASU (Defendant) - 19 Rue Cognacq-Jay - 75007 - Paris - FR 11) Moderna Germany GmbH (Defendant) - Brienner Strasse 45 a-d c/o Design Offices, Campus Köningsplatz - 80333 - Munich - DE 12) Moderna Italy S.R.L. (Defendant) - Via Vittorio Veneto 54/B - CAP 00187 - Rome - IT Defendants Defendants 13) Moderna Portugal Unipessoal LDA (Defendant) - Rua Joâo Chagas, 10-B Direito - 1500-493 - Lisbon - PT 14) Moderna Sweden AB (Defendant) - c/o Scandinavian Trust AB, Birder Jarlsgatan 12 - 114 34 - Stockholm - SE 15) Moderna Norway A/S (Defendant) - C/o CSC (Norway) AS, Wergelandsveien 7 - 0167 - Oslo – NO Defendants 1-15, collectively “Defendants” are represented by Gerjan Kuipers PATENTS AT ISSUE DECIDING JUDGE The Panel of the LD The Hague, consisting of: Edger Brinkman - presiding judge Stefan Schilling - legally qualified judge Martin Schmidt - technically qualified judge Margot Kokke - judge rapporteur LANGUAGE OF PROCEEDINGS English 3 POINTS AT ISSUE /GROUNDS 1. The Defendants submitted a statement of defence (“SoD”) and a counterclaim for revocation on 11 November 2025. 2. The counterclaim for revocation, registered as case number UPCCFI1526/2025, concerns the two patents at issue in the infringement actions. 3. For practical, procedural reasons, the court uses its discretionary power pursuant to R.302.1 RoP to order Defendants, the claimants in the counterclaim for revocation action to separate/split the proceedings into two counterclaims, one concerning each patent. In the present circumstances, also in view of the different stages of opposition proceedings pending before the EPO for both patents, and possible different outcomes for each patent, it is procedurally impractical to combine the two counterclaims for invalidity in one action. 4. Furthermore, in this case which the Court qualifies as complex and large, the payment of court fees also warrants separation of the action into two separate actions for each patent. Whereas in an infringement action concerning several related patents, the fact that two (or more) patents are involved can be taken into account for the determination of the value of the action for applying the Rules on Court fees. This is not the case for counterclaims for revocation where the court fee per counterclaim action is capped at EUR 20,000. This is confirmed in the Guidelines for the determination of the court fees and the ceiling of recoverable costs of the Administrative Committee, at II.2.a) (both in the original version of 2 April 2023 and as recently amended): 1. Counterclaim for revocation and revocation actions 2. a) Determining the value for applying the Rules on Court fees: There is no need to determine the value of revocation counterclaims or revocation actions since for both actions there is only a fixed fee to be paid It should be noted that for the determination of the value of the action for applying the Rules on recoverable costs, this is different; this is dealt with in II.2.b) of the aforementioned Guidelines. 5. The only way to reflect the complexity and size of the counterclaim action in view of court fees, is therefore to split the case. For the new counterclaim action, new court fees are due of EUR 20,000. 6. For a case that is split, the date of service of the original counterclaim is considered to be the service date for both counterclaim actions for the purpose of R.29 RoP. In this case, that is the day on which the checks were completed, and the Claimant was given access to the SoD-submission. This is 12 November 2025. 7. At this point in time, it is sufficient to upload the SoD-submission containing the counterclaims, in a new action, together with only the exhibits that are relevant for the separated CC action, clearly indicating to which patent the new counterclaim applies. The registry of the Court will ORDER The Court 1. Orders Defendants, claimants in the counterclaim action, to separate the counterclaim action UPCCFI1526/2025 concerning two patents into two actions, one for each patent, as set out above; 2. Orders that new court fees have to paid for the new counterclaim action to be created; 3. Confirms that the date of service for the SoD and both counterclaims is 12 November 2025; 4. Instructs the registry to assist with the adjustment mentioned at 7. above. Brinkman Schilling Schmidt Kokke On behalf of the registry

Key Holdings

  • The Court ordered the separation of a counterclaim for revocation into two distinct actions.
  • Reasons for separation included the complexity of the case, differing stages of EPO opposition proceedings for each patent, and the inadequacy of a single flat fee for two counterclaim actions.
  • The commentary supports the need for additional court fees for multiple revocation actions but questions why the corresponding infringement action was not also split.
  • The commentary suggests that the use of R. 302.1 RoP for this type of separation was not originally intended by the Drafting Committee.

Tags

  • Bifurcation
  • Costs
  • Counterclaim
  • Revocation

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