2023-11-20 - CD Munich - ASTELLAS INSTITUTE FOR REGENERATIVE MEDICINE v. Healios K.K et al. - UPC_CFI_80/2023
- Aktenzeichen:
- UPC_CFI_80/2023
- Datum:
- Spruchkörper:
- Court of First Instance - Munich (DE) Central Division - Section
- Art:
- Order
- Parteien:
- ASTELLAS INSTITUTE FOR REGENERATIVE MEDICINE v. HELIOS K.K, OSAKA UNIVERSITY
Kernaussage: The Court has discretion to stay proceedings awaiting any relevant decision from the EPO, provided such decision is expected rapidly.
2023-11-20 - CD Munich - ASTELLAS INSTITUTE FOR REGENERATIVE MEDICINE
v.
Healios K.K et al. - UPC_CFI_80/2023
The Court has discretion to stay proceedings awaiting any relevant decision from the EPO, provided such decision is expected rapidly. There should be a concrete expectation (i.e. a known date in time) for a decision which date should be in the near future such that it is clearly expected to be delivered before an expected decision by the UPC. In exercising Court’s discretionary power on the basis of Article 33(10) UPCA in connection with Rule 295 sub a RoP, the Court has to assess the relevant facts and circumstances and has to take into account the interests of both parties. Where the interests of the parties do not align, the Court has to weigh up the interests upon deciding a request to stay proceedings.
landmark
In the first UPC stay order, Munich CD (Panel 1 — Voß presiding, Kupecz JR, Gerli TQJ) rejected Healios/Osaka's request to stay Astellas's revocation action on EP 3 056 564 pending EPO opposition proceedings. The panel laid down foundational interpretative guidance on Art. 33(10) UPCA / Rule 295(a) RoP: (i) stay is discretionary and is not limited to final EPO decisions — any relevant EPO decision, including an OD decision, may qualify provided it is expected 'rapidly'; (ii) 'rapid' requires a concrete expectation (a known date) in the near future, clearly before the anticipated UPC decision; (iii) the discretion is exercised by weighing the interests of all parties under Preamble 2, 4 and 5 RoP principles (proportionality, flexibility, fairness, equity); (iv) the stay applicant bears the initial burden of showing stay is appropriate, but all parties contribute to the interest-weighing. On the facts, even if the anticipated OD decision on 4 March 2024 could be treated as 'rapid', Claimant's legitimate interest in obtaining freedom-to-operate certainty for its RPE cell product ASP7317 (in clinical trials) outweighed the Defendants' interest in saving parallel-proceeding costs — particularly where a final EPO decision was not expected until mid-2028 and an appeal from the OD was highly likely (no undertaking given by Defendants not to appeal). The Court balanced the competing interests by continuing the revocation action at least through the interim conference on 14 March 2024, reserving the possibility to stay or postpone the oral hearing after the OD's 4 March 2024 decision if the patent is revoked in its entirety; the Court also stated it would contact the EPO to request the written OD decision be rendered before 24 May 2024. Leave to appeal granted as the first UPC stay order.
Stichwörter
Article 33(10) UPCA. Rule 295 sub a RoP. Stay of proceedings (no). Parallel EPO proceedings. Rapid decision. Discretion.