GlaxoSmithKline v Pfizer (UPC_CFI_476/2024)
Decision date:
02 December 2024
Osborne Clarke summary
- Eight Pfizer entities filed a revocation action against GSK concerning its patent relating to RSV F protein compositions and methods for making them in the Milan CD. Prior to this, GSK had already filed an infringement action concerning the same patent against fourteen Pfizer entities in the Düsseldorf LD. GSK later lodged a preliminary objection in the revocation proceedings objecting to the competence of the Milan CD.
- GSK argued that the Milan CD did not have the competence to decide on the validity of the patent in suit pursuant to Article 33(4) UPCA because of the existence of an earlier filed infringement action between the same parties relating to the same patent. Pfizer also lodged a preliminary objection in the infringement proceedings, which it argued was admissible and therefore it contended that the infringement proceedings were inadmissible.
- The Milan CD found that GSK's preliminary objection was admissible but it was not well founded. The court held that the infringement action before the Düsseldorf LD and the revocation action before the Milan CD did not relate to "the same parties" as required by Article 33(4) UPCA. "Parties" in the sense required by Article 33(4) UPCA relates to legal entities and may not be understood in a broad way as referring to companies within the same corporate group. There must be identity of parties and a partial overlap between the parties is not enough to engage Article 33(4) UPCA. In this case, claimants 1 and 8 were not sued in the infringement proceedings.
- GSK made an auxiliary request requesting that the Milan CD decline competence for claimants 2 to 7 where there was overlap with the infringement proceedings. The court declined to do this, stating that the infringement action was lodged before the patent was granted (prior to its publication in the European Patent Bulletin) and therefore was inadmissible on the day it was lodged and could not challenge the competence of the Milan CD. The revocation action was filed on the grant date and therefore was admissible.
Issue
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