UPC CFI 846/2024

At the UPC: Promosome LLC (15 cases)·BioNTech Group (21 cases)

• 2026-07-07
  Counterclaim for revocationPublic

  Summary: The Local Division Munich revoked European patent EP 2 401 365 in its entirety with effect to Germany, France and Sweden, finding claim 1 as granted lacks novelty over prior art D1 (WO 91/01374) and D2 (Matsuda et al. 2006), and all 25 auxiliary requests invalid. The infringement action brought by Promosome LLC against BioNTech/Pfizer was dismissed both because the patent is invalid and because the claimant failed to sufficiently substantiate that the attacked Comirnaty embodiments practised the claimed method of mutating actual secondary initiation codons.

  Show the legal issues (7)

  • Standing to sue — whether Promosome LLC holds an exclusive licence under Art. 47(2) UPCA sufficient to bring infringement proceedings
  • Temporal jurisdiction — whether the UPC has competence over acts of infringement committed before 1 June 2023 (Art. 28 VCLT / Art. 32 UPCA)
  • Claim construction — whether 'secondary initiation codon' in claim 1 requires an actual (functional) codon at which protein synthesis initiates, or merely a putative/potential codon
  • Lack of novelty of claim 1 over D2 (Matsuda et al. 2006, RNA) and D1 (WO 91/01374) — enabling disclosure of prior art for novelty
  • Infringement — whether Comirnaty mRNA vaccines practise the claimed method of mutating actual secondary initiation codons versus codon optimisation
  • Validity of 25 auxiliary requests — lack of novelty (AR1, AR3, AR5), added matter (AR2), lack of inventive step (AR1, AR3, AR4), partial-problem approach for AR4 combining secondary-initiation-codon mutation and miRNA-binding-site mutation
  • Admissibility of late-filed evidence (exhibits VB37, VB38) and Rule 36 RoP further written pleadings
• 2025-04-09
  Public

  Summary: Procedural order on applications by BioNTech and Pfizer defendants for security for costs of EUR 5,000,000 each (total EUR 10,000,000) against Claimant Promosome LLC under Rule 158 RoP. The court considered whether Promosome's financial position gave legitimate and real concern that a costs order would not be recoverable.

  Show the legal issues (3)

  • Security for costs (Rule 158 RoP, Art. 69.4 UPCA)
  • Financial position of claimant
  • Default decision
• 2025-04-03
  Procedural OrderPublic

  Summary: Procedural order on defendants' application (Rule 190 RoP) for production of detailed experimental materials and raw data underlying an expert report submitted by the claimant. The court ordered disclosure of additional supporting data and methodology to enable the defendants to assess the accuracy and reliability of the claimant's test results.

  Show the legal issues (3)

  • Request to produce evidence (Rule 190 RoP)
  • Expert report disclosure
  • Experimental raw data production