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UPC CFI 166/2024

Apr 9, 2024·EP3805248 · PROCESS FOR CONCENTRATION OF ANTIBODIES AND THERAPEUTIC PRODUCTS THEREOF

Action number: ACT 18551/2024

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Case details
Status
Case Closed
Action
Provisional measures
Category
Provisional measures
Parties
Claimants
Representatives
Respondents
Representatives
Division
Dusseldorf LD
Judges
Technology
  • Chemistry
    Biotechnology · Pharmaceuticals
Language
English
First decided
Sep 6, 2024
EPO Opposition
  • Celltrion Inc.Withdrawn2023-10-16
  • Kilburn & Strode LLPAdmissible2023-10-18
How this compares
The court's record for this kind of case, counted in first-instance rulings. A figure in brackets is the number of rulings a rate rests on.
Preliminary injunction grantedMedian days to first decision
All UPC54% (38/70)124
Dusseldorf LDLockedLocked
Judge Berenice ThomLockedLocked
Judge Alima ZanaLockedLocked
Judge John PetersenLockedLocked

At the UPC: Novartis AG (4 cases)·Celltrion Inc. (1 case)

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All proceedings on this patent

1 other defendants litigating the same or a related patent

UPC CFI 165/2024

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More cases: Dusseldorf LD·2024

Decisions
  • 2024-09-06
    Application for provisional measuresPublic

    Summary: Order by Düsseldorf Local Division (UPC_CFI_166/2024, 6 September 2024) rejecting Novartis AG and Genentech Inc.'s application for provisional measures against Celltrion Inc. for alleged infringement of EP 3 805 248 B1 (biologic/antibody). The application was dismissed on the merits (infringement insufficiently established). Applicants were ordered to pay interim costs of EUR 138,562.80. The court addressed claim interpretation, imminent infringement, non-applicability of stay of proceedings (R. 295 RoP) to PI proceedings, and the costs gap in the absence of main proceedings.

    Show the legal issues (7)
    • Provisional measures (Art. 25, 62 UPCA)
    • Imminent infringement
    • Claim interpretation
    • Lis pendens
    • Non-applicability of R. 295 RoP (stay) to PI proceedings
    • Costs in PI proceedings (R. 118.5 RoP analogy)
    • Biosimilar / biologic patent
Documents
Show all 166 documents
Document titleDatePublic
Case Closure Formal Check2025-03-27Not public
Headnote-and-Keywords2024-09-06Not public
Measures_DecisionOutcome_Notification.pdf2024-09-06Not public
Final Order on PI Application2024-09-06Public
Final Order on PI Application2024-09-06Not public
18551-2024_OH_DUS-LOC_UPC202407310930AM_S012024-09-06Not public
18551-2024_OH_DUS-LOC_UPC202407310930AM_S022024-09-06Not public
18551-2024_OH_DUS-LOC_UPC202407310930AM_S032024-09-06Not public
18551-2024_OH_DUS-LOC_UPC202407310930AM_S032024-09-06Not public
18551-2024_OH_DUS-LOC_UPC202407310930AM_S012024-09-06Not public
Coverage: Partial.Reasoning extracted with partial coverage — some sections may be incomplete.
Plain-English summary

Novartis AG and Genentech, Inc. applied for provisional measures against Celltrion Inc. before the Düsseldorf Local Division concerning EP 3 805 248 B1, a patent directed to antibody concentration processes (relevant to biosimilars). The court dismissed the application because infringement was insufficiently established on the merits, and ordered Novartis/Genentech to pay interim costs of EUR 138,562.80. The court also clarified that R. 295 RoP stay provisions do not apply to PI proceedings.

Accepted arguments
What the court agreed with — by party.

  • Infringement insufficiently established; imminent infringement not proven to the required standard

    RespondentLegal basis: Art. 62(1) UPCA; Art. 25 UPCA

    Note: The Düsseldorf Local Division rejected the PI application on the merits, finding that Novartis/Genentech had not established infringement sufficiently for provisional measures.

  • R. 295 RoP (stay of proceedings) does not apply to PI proceedings

    ClaimantLegal basis: R. 295 RoP

    Note: The court held that R. 295 RoP refers to 'actions' and is therefore not applicable to applications for provisional measures, rejecting any basis for a stay in this PI context.

  • Companies outside contracting member states that play a key role in distribution network may be considered infringers

    ClaimantLegal basis: Art. 25 UPCA

    Note: The court articulated that group companies outside contracting states that supply products to group members in contracting states for onward distribution can be considered infringers under certain conditions — though this principle alone did not save the application.

Rejected arguments
What the court did not agree with — and why.

  • Preliminary injunction should be granted to prevent imminent infringement of EP 3 805 248 by Celltrion's biosimilar

    ClaimantLegal basis: Art. 62(1) UPCA; Art. 25 UPCA

    Reason: The court found infringement insufficiently established on the merits; specific claim interpretation and infringement evidence were not adequate to meet the standard required for provisional measures.

Key legal principles
Doctrines and rules cited in the reasoning.
imminent infringement characterised by preparations fully completed and infringement only awaiting actionR. 295 RoP stay of proceedings does not apply to PI proceedingsclaim interpretation mandatory for court and parties; technical argumentation must be focused and precise in PI proceedingsextraterritorial group company infringement liabilitycosts gap in absence of main proceedings addressed by analogy to R. 118.5 RoP or R. 213.2 RoP

Browse other cases on this principle.

Claim construction notes

The court stated that claim interpretation is not only mandatory for the court but also for the parties, who must submit their proposed interpretations in their briefs. Technical argumentation must be focused and precise, especially in PI proceedings given ambitious time limits. No specific disputed term construction is detailed in the available excerpt.