Roche & Roche v Tandem (UPC_CFI_88/2024)
Decision date:
09 September 2024
Osborne Clarke summary
- Tandem filed a revocation action and sought a declaration of non-infringement in the Paris CD, relating to a patent held by Roche in the field of insulin infusion therapy. In response, Roche filed an infringement claim in the Hamburg LD.
- If invalidity proceedings between the same parties and relating to the same patent are already pending before the CD, it is at the discretion of the LD or RD before which the infringement proceedings are instituted whether to proceed in accordance with Article 33(3) UPCA and pursuant to Article 33(5) UPCA. In making its decision, the division responsible for the infringement actions should take into account how far the validity action has progressed in the CD (Rule 75.4 RoP).
- Rule 37.4 RoP states that infringement proceedings shall be stayed if there is a "high likelihood" that the patent will be invalidated by the final decision in the invalidity proceedings. Under Rule 295(m) RoP, the court may stay the proceedings if the proper administration of justice requires it.
- In this instance, Tandem's request to stay the infringement action was dismissed as Roche's interest in continuing the proceedings outweighed Tandem's interest in a stay.
Issue
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