UPC_CoA_646/2025;UPC_CoA_641/2025 – Amgen v Sanofi

Expert Commentary

Settlement Facts 1. The Local Division Düsseldorf dismissed the counterclaim for revocation of EP 3 536 712 filed by Amgen. 2. Amgen filed an appeal. 3. On 10 March 2026, the parties were summoned to the oral hearing scheduled for 6 October 2026. 4. On 12 March 2026, Amgen filed an application for withdrawal. 5. Sanofi agreed. Each party would bear its own costs. The Court 1. The Court accepted the withdrawal. 2. The Court held that reimbursement must be assessed according to the new schedule, as the request was made after 31 December 2025. 3. The Court also held that the withdrawal was requested after closure of the written proceedings. The Rules do not provide for reimbursement of the court fees where withdrawal occurs after closure of the written proceedings. Comment 1. As there is no reimbursement anymore if a case is settled after the closure of the written procedure under the new Rules, the Court does not return any fees. 2. The Court states that the new Rules are applicable because the request is made after 1 January 2026, but I read page 4 as saying that the new fees are applicable only to actions and applications filed after 31 December 2025. This action was filed before 31 December 2025. In any event, the normal rule is that new law takes immediate effect. So if that is the interpretation of the Court of Appeal, then that is fine with me, as it leaves more money with the Court.

Full Decision Text

1 DECISION of the Court of Appeal of the Unified Patent Court issued on 25 March 2026 concerning an application for withdrawal (R. 265 RoP) regarding an application for rehearing (R. 245 RoP) and an application for reimbusement of Court fees (R. 370.9 RoP) APPLICANTS (RESPONDENTS BEFORE THE COURT OF APPEAL AND CLAIMANTS BEFORE THE COURT OF FIRST INSTANCE) 1. SANOFI-AVENTIS DEUTSCHLAND GMBH, Brüningstrasse 50, 65926, Frankfurt am Main, Germany 2. SANOFI-AVENTIS GROUPE S.A., 82 Avenue Raspail, 94250 Gentilly, France 3. SANOFI WINTHROP INDUSTRIE S.A., 82 Avenue Raspail, 94250 Gentilly, France hereinafter: (”Sanofi”) represented by Daniel Wise, attorney-at-law, Carpmaels & Ransford, London, The United Kingdom and other representatives from that law firm and Regeneron Pharmaceuticals Inc., 777 Old Saw Mill River Road, Tarrytown, NY 10591, USA hereinafter: (”Regeneron”) represented by Niels Hölder, attorney-at-law, Carpmaels & Ransford, London, United Kingdom, and other representatives from that law firm RESPONDENT (APPELLANT BEFORE THE COURT OF APPEAL AND DEFENDANT BEFORE THE COURT OF FIRST INSTANCE) AMGEN, INC, One Amgen Center Drive, CA 91320-1799, Thousand Oaks, USA hereinafter: (“Amgen”) represented by represented by Koen Bijvank, attorney-at-law, Brinkhof N.V., Amsterdam, The Netherlands and representatives from Bardehle Pagenberg, Munich, Germany Appeal n°: UPC CoA 528/2024 UPC CoA 529/2024 2 PATENT AT ISSUE EP 3 666 797 DECIDING JUDGES Klaus Grabinski, President of the Court of Appeal Nathalie Sabotier, legally qualified judge and judge-rapporteur Peter Blok, legally qualified judge LANGUAGE OF THE PROCEEDINGS English DECISION UNDER REVIEW □ Decision of the Court of Appeal of the Unified Patent Court dated 25 November 2025 □ Numbers attributed by the Court of Appeal: UPC CoA 528/2024 UPC CoA 529/2024 FACTS, REQUESTS AND SUBMISSIONS 1. On 1 June 2023, Sanofi brought a revocation action against the patent at issue before the Central Division, section Munich. On the same day, Amgen brought an infringement action based on the same patent before the Local Division Munich against Sanofi and Regeneron. Regeneron filed a counterclaim for revocation, which was subsequently, with the agreement of the parties, referred to the Central Division Munich, where it was joined to the pending revocation action lodged by Sanofi. The infringement action has been stayed. 2. On 16 July 2024, the Central Division Munich revoked the patent in its entirety and ordered Amgen to bear Respondents’ legal costs. 3. Amgen timely lodged two appeals against this decision respectively regarding the counterclaim for revocation (UPC CoA 529/2024) and the revocation action (UPC CoA 528/2024). 4. On 25 November 2025, the Court of Appeal set aside the impugned decision, rejected the request for revocation of the patent at issue. 5. On 26 January 2026, Sanofi and Regeneron filed an application for rehearing. Together with this application for rehearing, Sanofi and Regeneron requested the Court of Appeal to order that the lodging of the application for rehearing has suspensive effect. 6. The application for suspensive effect was rejected by an Order dated 18 February 2026. 7. On 25 February 2026, Amgen filed its reply to the application for rehearing. 3 8. On 11 March 2026, Sanofi and Regeneron filed an application to withdraw the Application for rehearing and a request for reimbursement of Court fees. The applicants request that the Court of Appeal: a. permit the withdrawal of the Application for Rehearing dated 26 January 2026; b. reimburse Claimants 50% of the Court Fees; and c. close the Application for Rehearing. 9. On 13 March 2026, Amgen, in response to the application for withdrawal, consented to the withdrawal of the application for rehearing and indicated that no decision on costs is necessary. GROUNDS FOR THE DECISION Conditions for permitting withdrawal 10. Pursuant to R.265.1 RoP, as long as there is no final decision in an action, a claimant may, pursuant to R. 265.1 RoP, apply to withdraw his action. The Court shall decide upon the application after hearing the other party. The application to withdraw shall not be permitted if the other party has a legitimate interest in the action being decided by the Court. 11. This provision equally applies to withdrawals of appeals (CoA, 5 July 2024, CoA 234/2024, 10x Genomics vs Curio Bioscience, para 9 and CoA, 23 December 2025, CoA 691/2025, Lindal Dispenser v Rocep, para 5) and applications for rehearing. 12. In view of Sanofi and Regeneron’s request and given the consent from Amgen, the Court of appeal permits the withdrawal of the application for rehearing. Costs 13. R. 265.2 (c) RoP provides that the Court shall issue a cost decision in accordance with Part 1, Chapter 5 (R.150 to 152 RoP). 14. Before the Court of Appeal seised of the application for rehearing, none of the parties requests such a decision. Therefore, there is no need for a cost decision. Reimbursement of Court fees 15. In the present case, it appears that Sanofi and Regeneron paid only one fee when lodging their two applications for the rehearing of the two cases (528 and 529/2024), although two fees were due. It follows that there is no reason for a reimbursement of Court fees by virtue of R. 370.9 (b) RoP. DECISION The Court of Appeal 16. permits the withdrawal of the applications for rehearing UPC CoA 528/2024, and UPC CoA 529/2024, and declares the proceedings closed; 17. orders that the decision be entered on the register; 18. Rejects the request for a reimbursement of the Court fees. This decision was issued on 25 March 2026. 4 Klaus Grabinski, President of the Court of Appeal Nathalie Sabotier, legally qualified judge and judge-rapporteur Peter Blok, legally qualified judge

Key Holdings

• Withdrawal of an appeal is accepted if the opposing party agrees.
• Reimbursement of court fees upon withdrawal is assessed according to the rules applicable at the time of the request, not necessarily the filing of the action.
• Under new rules, no reimbursement of court fees is provided if withdrawal occurs after closure of written proceedings.

Tags

• Settlement
• Withdrawal
• Court Fees
• Reimbursement
• Appeal
• Procedural

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