UPC_CFI_621/2025; UPC_ CFI_1707/2025; UPC_ CFI_1708/2025 – Glaxo v Pfizer/BioNTech

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

Expert Commentary

Stay? Facts 1. The oral hearing was scheduled for 30 September 2026. 2. The two patents invoked in this case are EP 4 226 941 (“EP941”) and EP 4 066 856 (“EP856”). 3. After the exchange of written pleadings, EP941 was revoked by the Opposition Division (“OD”) of the European Patent Office (“EPO”) for lack of novelty and the revocation of EP856 was confirmed by the Technical Board of Appeal (“TBA”). 4. Pfizer/BioNTech requested a stay until the appeal decision at the EPO on EP941. 5. The consequences of the decisions and the request for a stay were discussed during an interim conference on 27 July 2026. The Court 1. In the EP856 revocation case there is no need to adjudicate. Glaxo has to bear the costs. 2. The impact of the EP856 decision of the TBA on the validity of EP941 can only be properly judged after the written decision of the TBA, which is to be expected in October. The Court will decide after that written decision and then (if no stay is granted) set a new date for the oral hearing. Comment One would maybe have expected a stay in view of the fact that both patents are divisionals of the same application and the OD has already revoked the patent, but the The Hague Division applied the (correct) principle that stays are the exception in the UPC and does not grant a stay unless from the written decision of the Board of Appeal in the EP856 case it becomes clear that the TBA will likely confirm the decision of the OD in the EP941 case.

Full Decision Text

Unified Patent Court, The Hague Local Division Case Numbers: UPC_CFI_1708/2025, UPC_CFI_621/2025, UPC_CFI_1707/2025 Procedural Order delivered on 10/08/2026 Patent Numbers: EP4226941, EP4066856 **CLAIMANT** GlaxoSmithKline Biologicals SA, Rue de l’Institut 89, 1330 Rixensart, Belgium, GSK or Claimant, represented by Carlos Andres van Staveren, Tjibbe Douma, Nicole Jadeja (Bird & Bird) **DEFENDANTS** 1. C.P. Pharmaceuticals International C.V., Rivium Westlaan 142, 2909 LD Capelle aan den Ijssel, the Netherlands 2. Pfizer Export B.V., Rivium Westlaan 142, 2909 LD Capelle aan den IJssel, the Netherlands 3. Pfizer B.V., Rivium Westlaan 142, 2909 LD Capelle aan den IJssel, the Netherlands 4. Pfizer Manufacturing Belgium N.V., Rijksweg 12, 2870 Puurs-Sint-Amands, Belgium 5. Pfizer Service Company B.V./S.r.l., Hoge Wei 10, 1930 Zaventem, Belgium 6. Pfizer S.A./N.V., Boulevard de la Plaine 17, 1050 Brussels, Belgium 7. Pfizer Luxembourg SARL, Rond-Point du Kirchberg 51, Avenue J.F. Kennedy, L-1855 Luxembourg, Luxembourg 8. Pfizer Inc., 66 Hudson Boulevard East, New York, 10001-2192, the United States of America 9. Pfizer Corporation Austria Gesellschaft m.b.H, Floridsdorfer Hauptstraße 1, 1210 Vienna, Austria 10. Pfizer ApS, Lautrupvang 8, 2750 Ballerup, Denmark 11. Pfizer Oy, Tietokuja 4, 00330 Helsinki, Finland 12. Pfizer S.A.S., 23-25 avenue du Docteur Lannelongue, 75014 Paris, France 13. Pfizer Pharma GmbH, Friedrichstraße 110, 10117 Berlin, Germany 14. Pfizer S.r.l., Via Isonzo 71, 04100 Latina LT, Italy 15. Laboratórios Pfizer, Lda., Lagoas Park – Building 10, 2740 271 Porto Salvo, Portugal 16. Pfizer Romania S.R.L., Șoseaua București-Ploiești 172-176 (Willbrook Platinum Business and Convention Center), 013697 Bucharest, Romania 17. Pfizer AB, Solnavägen 3H, 113 63 Stockholm, Sweden 18. Pfizer, spol. S.r.o., Stroupežnického 3191/17, 150 00 Prague 5, Czech Republic 19. Pfizer Hellas A.E., Mesoghion Ave 243, Neo Psychiko 154 51, Athens, Greece 20. Pfizer, S.L., Avenida de Europa, 20-B, Parque empresarial, La Moraleja, 28108 Alcobendas Madrid, Spain 21. Pfizer Croatia d.o.o., Slavonska avenija 6, 10 000 Zagreb, Croatia 22. Pfizer Gyógyszerkereskedelmi Kft., Alkotásutca 53, H-1123 Budapest, Hungary 23. Pfizer Polska Sp. Z.o.o., ul. Żwirki I Wigury 16b, Warsaw 02-092, Poland 24. Pfizer Trading Polska Sp. Z.o.o., ul. Żwirki I Wigury 16b, Warsaw 02-092, Poland 25. Pfizer AG, Schärenmoosstrasse 99, 8052 Zurich, Switzerland 26. Pfizer AS, Drammensveien 288, 0283 Oslo, Norway 27. BioNTech SE, An der Goldgrube 12, 55131 Mainz, Germany 28. BioNTech Europe GmbH, An der Goldgrube 12, 55131 Mainz, Germany 29. BioNTech Manufacturing GmbH, Emil-von-Behring-Straße 76, 35041 Marburg, Germany 30. BioNTech Manufacturing Marburg GmbH, Emil-von-Behring-Straße 76, 35041 Marburg, Germany Defendants 1-26, together also “Pfizer”, are represented by Christian Dekoninck, Geert Theuws, Faziel Abdul, Thomas Witte, Simon Cohen, Ed Vickers, Paul England (Taylor Wessing) Defendants 27-30, together also “BioNTech” are represented by Tess Waldron, Dr. Penny Gilbert, Dr. Joel Coles, Peter FitzPatrick, Daniel Down, Gabriella Simon & Abraham Darby-Zaier and Charlotte Malley (Powell Gilbert) Defendants 1-30 are collectively referred to as “defendants” or as “PBNT”. **PATENTS AT ISSUE** Patent no. Proprietor/s EP4226941 GlaxoSmithKline Biologicals SA EP4066856 GlaxoSmithKline Biologicals SA **THE PANEL AND DECIDING JUDGES** The composition of the panel is as follows: Edger Brinkman presiding judge Stefan Schilling legally qualified judge Martin Schmidt technically qualified judge Margot Kokke judge-rapporteur This order is issued by the panel. **LANGUAGE OF PROCEEDINGS** English **POINTS AT ISSUE** 1. The oral hearing in these proceedings concerning infringement and validity of two patents, EP856 and EP941, is scheduled on 30 September 2026. EP856 and EP941 are divisionals originating from the same original patent application. 2. After the final written submission was filed on 11 June 2026, PBNT’s Rejoinder to the Application to Amend, the following developments took place: - EP941 was revoked by the opposition division (OD) of the European Patent Office (EPO) on 24 June 2026 for lack of novelty over prior art documents WO 378 and US 830 (D2 and D2a in those opposition proceedings; D2a is a priority document of WO378). The written decision with grounds was issued on 17 July 2026. - The Technical Board of Appeal (TBA) of the EPO at the oral hearing in the appeal proceedings of 20 July 2026 confirmed the revocation of EP856 based on lack of novelty over prior art documents WO 378/US 830 (referred to as D23 and D23a in those opposition proceedings). The written decision with grounds is ultimately due on 19 October 2026 (but might be issued earlier in view of the accelerated character of the appeal proceedings). 3. PBNT filed an application to stay the proceedings pursuant to R.9 and R.295 RoP on 8 July 2026, supplemented by submission of 23 July 2026 (after the 20 July 2026 decision of the TBA regarding EP856), requesting the Court to stay the proceedings until final decisions have been obtained in the opposition (appeal) proceedings which are currently pending before the European Patent Office. 4. GSK responded on 24 July 2026, requesting the court to dismiss the requests. 5. The above developments, and the (possible) consequences thereof for the pending proceedings, were discussed ex officio at the interim conference (IC) held on 27 July 2026, in particular also the possibility of a stay of the proceedings. **GROUNDS** R.360 no need to adjudicate CC UPC_CFI_1708/2025 (EP856) 6. During the IC parties agreed that, in view of the final revocation of EP856, there is no need to adjudicate the counterclaim action 1708/2025 pertaining thereto. This action is therefore disposed of by way of this order and the file shall be closed. GSK is considered to be the unsuccessful party and is obliged to bear the legal costs of Moderna. The actual amount of costs to be reimbursed is to be decided either in separate cost proceedings or, preferably, after agreement by the parties, in the course of the related infringement action. 7. The revocation of EP856 has only partial implications for the infringement action because the claims in that action are based on asserted infringement of EP941 as well. Stay of the proceedings? 8. The parties disagree on the relevance of the decision of the TBA on the invalidity of EP856 for the invalidity of divisional EP941. In the specific circumstances of these proceedings, the Court deems the assessment of the likelihood that the claims of EP941 will be held to be invalid a relevant consideration for its decision regarding a stay of the proceedings. Such assessment can only be properly made after the TBA has issued the written decision with grounds regarding EP856. This decision is expected ultimately on 19 October 2026. The oral hearing date of 2 October 2026 will therefore be rescheduled to a later date (to be decided), and the parties are provided the opportunity to file written submissions commenting on the impact on EP941, as set out below. Shortly thereafter, the Court will decide on the stay of the proceedings. **ORDER** The court, having heard the parties, regarding case UPC_CFI_1708 /2025 1. Disposes of counterclaim action UPC_CFI_1708/2025 concerning EP856 because it has become devoid of purpose; 2. As the unsuccessful party, GSK shall bear the reasonable and proportionate legal costs of Moderna. regarding cases UPC_CFI_621/2025 and UPC_CFI_1707/2025 3. The decision on the request for a stay of the proceedings is postponed. 4. The oral hearing scheduled for 30 September 2026 is cancelled and is to be rescheduled. 5. The parties are each given the opportunity to lodge a written statement, ultimately four weeks following the actual issuance of the written grounds of the TBA decision, only commenting on the impact of the decision of the Technical Board of Appeal on the pending infringement and revocation proceedings at the UPC regarding EP941, taking into account the written grounds of decision of the opposition division of 17 July 2026 regarding EP941 and the written grounds of the TBA decision regarding EP846 (which is ultimately expected on 19 October 2026). 6. Each of the parties may respond in writing to the written comments of the other party ultimately three weeks after the statement filed according to the previous paragraph/order. Brinkman Schilling Schmidt Kokke

Key Holdings

  • Stays in UPC proceedings are considered an exception and are not granted lightly.
  • A stay will not be granted merely because a related patent has been revoked by the EPO Opposition Division or confirmed by the TBA, especially if the written decision is pending.
  • The UPC will await the written decision of the EPO's Technical Board of Appeal to properly assess its impact on related patents.
  • If no stay is granted, the court will set a new date for the oral hearing.
  • Costs may be awarded against a party if there is no need to adjudicate a revocation case due to EPO decisions.

Tags

  • Stay of Proceedings
  • Revocation
  • EPO
  • Technical Board of Appeal
  • Costs
  • Procedural

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