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15 September 2025
Local Division Munich, Sanofi v Accord/Stada/Reddy/Zentiva
UPC_CFI_145/2024 – UPC_CFI_463/2024
UPC_CFI_146/2024 – UPC_CFI_496/2024
UPC_CFI_147/2024 – UPC_CFI_374/2024
UPC_CFI_148/2024 – UPC_CFI_503/2024
Second interim conference
Facts
Points raised during second interim conference:
- The Board of Appeal (“BoA”) of the European Patent Office (“EPO”) had not yet uploaded the written reasoned decision following the oral hearing of 2-4 June 2025. According to a BoA communication, the parties could expect the written decision by 15 September 2025 or the end of September. The Court decides that the parties have until 8 October 2025 to comment on the decision.
- The claimant informs that an appeal has been filed against the French nullity decision. An oral hearing is scheduled for 18 June 2026.
- The experts (2) will be heard on the basis of their written submissions and will be answering 10 detailed questions formulated by the JR. Such questions mainly relate to the issue whether the skilled person thinks there is a reasonable chance of success if the third phase oncological studies have been approved and have been ongoing for three years without premature interruption.
- The JR sets a detailed agenda for a three-day hearing. (There are four different generic companies and each has its own representative.)
- A late filed declaration by Zentiva is refused as the request to file further evidence could have been filed earlier.
- JR confirms the value of the litigation as set out in the order of 22 January 2024.
- Parties are again suggested to conclude an agreement on costs.
Comment
- The BoA decided on 4 June 2025 to uphold the patent (for a new treatment of prostate cancer). Why is there no written decision after more than 3,5 months while the BoA has been informed about the pending litigation? It all shows that the UPC should be very conservative in granting stays because of a pending opposition. This is also what the Rules of Procedure reflect.
- In this case the oral hearing is scheduled for 14-17 October 2025. The BoA promised to issue its written decision by the end of September. Let us hope for the parties and the Court that they keep their promise!
- Note that in France, the hearing date before the Appeal Court is only scheduled for 18 June 2026. So the Munich Local Division has (also) to decide for France (assuming Sanofi included that in their claim) before the fate of the French EP is known, all also assuming that the nullity case in France is not between the same parties. If that is indeed not the case, the Munich Local Division can stay the case for France or make its decision for France conditional on the outcome of the French appeal, if it considers the patent valid and infringed.
- The JR again asks the parties to agree on costs. It is hoped that the representatives will now indeed follow the request of the JR. I noticed that generally representatives from most UPC countries do not have experience with agreeing on costs. It would be good if a conference organizer (or EPLAW together with EPLIT?) would organize a conference about costs in the UPC and how to reach agreement on costs. Far too much of the Court’s time and clients’ money is spent on costs, while for most (normal) patent practitioners it is also not their favorite subject!
In the same case, the JR issued also on 15 September 2025 a procedural order for summoning the experts to the oral hearing (see here). [link: https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/8C24B868EB8A72616EC2A5792021E3AE_en.pdf]
15 September 2025
Local Division Mannheim, Total Semiconductor v Texas Instruments
Review of cost order
Facts
1. The claimant, Total Semiconductors, is a US company.
2. Defendants 2 and 3 asked for security of costs.
3. They argued:
a. A claim for cost reimbursement would be difficult to enforce in the US;
b. The claimant has probably not enough funds to reimburse costs;
c. The claimant was founded recently for litigation purposes by third party investors;
d. The representative of the US company, Tacitus Technologies Ventures LLC, has a seat in a co-working place.
4. The claimants opposed the request.
5. The JR had ordered the claimant to provide security.
The Court
1. The Court confirmed that the fact that the claimant is a startup company as such does not justify an order to provide security, but all the additional circumstances justified the JR’s decision.
2. The request for review was rejected.
Comment
1. When do representatives realize that requests to review are almost never successful? The outcome of this request was clearly predictable.
2. If outside investors are financing litigation of a startup company which has insufficient assets, the financing should include a guarantee to cover the opposing party’s costs in the event the litigation is lost.
3. Different from the US litigation, in the UPC the losing party has to pay the (recoverable) costs of the winner.