Short Summary
Promosome LLC brought a patent infringement action before the Local Division Munich of the Unified Patent Court against BioNTech and Pfizer entities concerning European patent EP 2 401 365, targeting several Comirnaty® COVID-19 vaccine variants. The defendants raised a preliminary objection challenging the UPC's jurisdiction over the Comirnaty® Original/Omicron BA.1 variant (embodiment 2b), arguing it was produced and sold only before 1 June 2023, making jurisdiction contrary to the non-retroactivity principle under Art. 28 VCLT. The judge-rapporteur held that the preliminary objection was admissible but deferred its final determination to the main proceedings under Rule 20.2 RoP, pending a related Court of Appeal decision.
Detailed Summary
Promosome LLC (Claimant) filed a patent infringement action before the Local Division Munich of the Unified Patent Court (UPC) under Art. 3(c) and Art. 32(1)(a) of the Agreement on a Unified Patent Court (UPCA), relying on European patent EP 2 401 365. The action was directed against several variants of the Comirnaty® COVID-19 vaccines developed and marketed by the BioNTech and Pfizer defendants, namely: Comirnaty® Original (embodiment 2a), Comirnaty® Original/Omicron BA.1 (embodiment 2b), Comirnaty® Original/Omicron BA.4-5 (embodiment 2c), Comirnaty® Omicron XBB.1.5 (embodiment 2d), and Comirnaty® JN.1 (embodiment 2e).
On 7 March 2025, the defendants raised preliminary objections (Rule 19.1(a) RoP) challenging the UPC's jurisdiction. The defendants did not contest jurisdiction over Comirnaty® variants sold on or after 1 June 2023 (embodiments 2a and 2c–2e), but objected to jurisdiction over embodiment 2b (Comirnaty® Original/Omicron BA.1), which they claimed was produced and sold only before 1 June 2023. They argued that assuming jurisdiction over such concluded acts would violate the principle of international law that treaties have no retrospective effect, as codified in Art. 28 of the Vienna Convention on the Law of Treaties (VCLT). They contended that the UPC is silent on retroactivity and contains no provisions allowing such an interpretation.
The Claimant countered that the existence of different infringing products obtained by the same infringing method does not change the continuous nature of the infringing use. The Claimant further argued that the defendants had not substantiated their claim that embodiment 2b was not produced or sold after 1 June 2023, and had not addressed other potentially infringing activities such as offering, placing on the market, or storing. The Claimant also pointed to existing UPC case law holding that the UPC has jurisdiction over infringing acts that were ongoing and/or concluded prior to 1 June 2023.
The judge-rapporteur, András Kupecz, found that the preliminary objection was duly filed in accordance with Rules 19.1(a), 19.2, and 19.3 RoP, and that it was permissible to base such an objection on alleged lack of jurisdiction over acts committed in certain time periods. On the merits, the judge-rapporteur expressed his non-binding view concurring with prior UPC case law (including LD Mannheim's order in Fingon/Samsung and LD Munich's order in Industria Lombarda Materiale Elettrico/PHOENIX CONTACT) that the UPC's subject matter competence covers allegedly infringing acts committed before the UPCA's entry into force, and that this does not constitute retroactive application of the treaty.
However, the judge-rapporteur declined to conclusively decide the preliminary objection at this stage, noting that the defendants had not challenged jurisdiction over embodiments sold on or after 1 June 2023, meaning the action would proceed in any event under Rule 19.7 RoP. Given that an appeal was pending from the LD Munich order in Industria Lombarda Materiale Elettrico/PHOENIX CONTACT before the Court of Appeal, the judge-rapporteur considered it most efficient to defer the preliminary objection to the main proceedings under Rule 20.2 RoP, so that the outcome of the appeal could be taken into account. The judge-rapporteur also noted that competence/jurisdiction and applicable law are separate issues to be assessed separately, inviting the parties to address applicable law in their regular pleadings.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Munich (DE) Local Division. Understanding the court's reasoning in BioNTech SE, BioNTech Manufacturing GmbH , BioNTech Europe GmbH , BioNTech Manufacturing Marburg GmbH , BioNTech Innovative Manufacturing Services GmbH vs Promosome LLC is valuable context for structuring arguments or assessing risk in similar proceedings.
Related Cases
Sanofi Mature IP, Sanofi AB, Sanofi B.V., Sanofi Winthrop Industrie, Sanofi A/S, Sanofi - Produtos Farmaceuticos Lda, Sanofi-Aventis GmbH, Sanofi S.r.l., Sanofi Belgium, Sanofi-Aventis France, Sanofi-Aventis Deutschland GmbHvsZentiva Pharma GmbH, Zentiva, k.s., Zentiva France
This is a procedural order issued by the Local Division Munich of the Unified Patent Court on 8 May 2025 in four consolidated sets of patent infringement proceedings concerning European Patent No. 2 493 466, which covers cabazitaxel in combination with prednisone/prednisolone for treating castration-resistant metastatic prostate cancer. The claimants are multiple Sanofi entities, and the defendants include Accord Healthcare, STADA, Dr. Reddy's, and Zentiva generic pharmaceutical companies across various UPC member states. The order addresses preliminary objections, sets further procedural deadlines, and confirms dates for interim conferences and the oral hearing.
Horl 1993 GmbHvsMagna-Tec e.K.
Horl 1993 GmbH, the registered proprietor of European Patent EP 4 117 857 B1 concerning a roller sharpener (Rollschleifer), brought a patent infringement action against Magna-Tec e.K. before the Local Chamber Hamburg. The court addressed key legal questions regarding the burden of substantiation for infringement claims relating to non-UPCA contracting states and the conditions under which a claimant is entitled to publication of the judgment. The decision was rendered following an oral hearing on 19 March 2026.
F. Hoffmann-La Roche AG a.o.vsA. Menarini Diagnostics S.r.l. a.o.
This is a procedural order issued by the Local Chamber Düsseldorf concerning European Patent EP 1 962 668 B1. The order addresses the protection of confidential information under Rule 262A of the Rules of Procedure, restricting access to certain unredacted documents containing trade secrets. The applicants (Roche entities) and respondents (Menarini entities) agreed on the classification of the information as confidential and on the circle of persons authorized to access it on the applicants' side.
Occlutech GmbHvsLepu Medical (Europe) Cooperatief U.A. a.o.
This is an appeal before the Court of Appeal of the Unified Patent Court concerning European Patent EP 1 998 686, which relates to an occlusion instrument. Occlutech, the patent holder, sought preliminary measures against Lepu for allegedly infringing the patent with its MemoCarna ASD and MemoCarna VSD products. The Local Chamber Düsseldorf had rejected the preliminary measures, finding it could not be established with sufficient certainty that the attacked embodiments comprised a mesh of more than one wire. The Court of Appeal set aside that decision, granted the preliminary measures, and ordered Lepu to cease the infringing activities in Germany, France, Italy, and the Netherlands, subject to a penalty of up to €250,000 per day of non-compliance.
APPLE Inc. (intervener) in Telefonaktiebolaget LM EricssonvsASUSTEK Computer Inc. and Arvato Netherlands B.V.
Apple Inc. applied to intervene in appeal proceedings before the Court of Appeal concerning Ericsson's appeals against orders of the Milan Local Division that had rejected an 'external eyes only' confidentiality regime. The Court of Appeal admitted Apple as an intervener, finding that Apple had demonstrated a legal interest in the outcome of the appeals because the confidential information at issue included information on agreements between Ericsson and Apple. The Court granted Apple the right to file a Statement in intervention, respond at the oral hearing, and participate in support of Ericsson's position, while rejecting Apple's separate applications to file further submissions.
Dealing with a patent challenge?
Whether it's a Section 3(d) rejection, a post-grant opposition, or a FRAND dispute, Arctic's patent litigation team has handled it. Get a strategy call.
Disclaimer: This page contains an automated summary based on publicly available judicial records. The content is generated for informational purposes only and does not constitute legal advice. Always verify details against the original source judgment before relying on this information for any legal purpose. If you believe any information is inaccurate, please contact us.