Moderna v Genevant & Anor (UPC_CFI_191/2025 & UPC_CFI_192/2025)
Decision date:
18 August 2025
Osborne Clarke summary
- Genevant and Arbutus initiated two separate infringement proceedings at The Hague LD concerning the alleged infringement of two patents (EP 254 and EP 767) by fifteen Moderna entities domiciled across UPC contracting states, other non-UPC EU member states and third states, such as the US, UK and Switzerland.
- Moderna filed preliminary objections, challenging the UPC's international jurisdiction over certain defendants. For example those domiciled outside UPC Member States, and those that were neither domiciled nor accused of infringing acts in the Netherlands.
- Pursuant to a procedural order, the judge-rapporteur dismissed Moderna's preliminary objections save that it reserved its decision concerning the long-arm jurisdiction with respect to defendants Moderna US, Moderna US-TX, Moderna Switzerland, Moderna Spain, Moderna Norway, Moderna UK and Moderna Poland, to be dealt with in the main proceedings.
- Following this, Moderna filed an application under Rule 9 RoP for the panel to review the judge-rapporteur's case management order pursuant to Rule 333 RoP.
- Moderna argued that: (a) the decision did not take into account the burden of proof for infringing acts within the UPC territory; (b) the decision did not reflect the fact that holding a marketing authorisation for use by other entities within a group structure does not qualify as an act of patent infringement, but was merely an unlawful act for which the UPC has no competence; and (c) the judge-rapporteur wrongly stated that the requirements of Article 8(1) of the recast Brussels Regulation (or Article 6(1) of the Lugano Convention) had been met.
- The Hague LD found that the application had only been substantiated in respect of Moderna Norway and Spain. As such, the application was deemed not to have challenged the decision to refer consideration of the long-arm jurisdiction to the main proceedings.
- Jurisdiction with respect to Moderna Spain was based on Articles 7(2) and 8(1) recast Brussels Regulation. Under Article 7(2), the UPC has jurisdiction in an infringement action within the meaning of Article 31(1)(a) UPCA against a person domiciled in an EU Member State where the harmful event occurred or may occur. Under Article 8(1), a person domiciled in an EU Member State may also be sued where it is one of a number of defendants provided that the claims are so closely connected. This applied to Moderna Spain directly because it is domiciled in an EU Member State.
- With respect to Moderna Norway, it is not domiciled in an EU Member State, but Norway is a party to the Lugano Convention. The Lugano Convention provides provisions corresponding to Article 7(2) and 8(1) recast Brussels Regulation. The Hague LD assumed (and it was not contested by the parties) that the jurisdiction rules of the recast Brussels Regulation that apply to the UPC, correspondingly apply in the assessment of the jurisdiction rules under the Lugano Convention. As such, jurisdiction was established over Moderna Norway.
- Nonetheless, Moderna contested the court's international jurisdiction by arguing that the assessment that Moderna Spain and Norway (threaten to) infringe the patents within the UPC territory is incorrect. The court noted that for establishing international jurisdiction, it is sufficient for the claimants to allege in a substantiated way that either Moderna Spain or Norway infringe the same patents with the allegedly infringing product in their home countries collectively with Moderna Netherlands, with Moderna Netherlands acting as an anchor defendant. The Hague LD found that the burden for establishing international jurisdiction in relation to a preliminary objection is considerably lower than for the establishment of infringement in the main proceedings. Based on the available evidence, Genevant and Arbutus were considered to have sufficiently substantiated the home infringements in Norway and Spain connectively with the infringement involving Moderna Netherlands.
- Accordingly the Hague LD confirmed the judge-rapporteur's procedural order and refused the Moderna's request for an interim appeal of the decision.
Issue
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