UK and the UPC
The UK is not expected to take part in the new European Unified Patent Court system despite previous ratification.
Since the launch of the Unified Patent Court (UPC) in June 2023, the first decisions have started to build legal precedents and understanding around the new unitary system.
The 10x Genomics v NanoString cases were the first cases in the life sciences sector to receive decisions on preliminary injunctions. Analysing these decisions can help develop understanding around the procedure and the requirements for preliminary injunctions at the UPC.
10x Genomics Inc is an American biotechnology company which designs and manufactures gene sequencing technology. 10x Genomics has a number of patents to protect its analytical methods and analytes.
NanoString is a biotech company which, among other things, develops and manufactures analytical systems and molecular imaging devices.
In June, two cases were submitted by 10x Genomics claiming that NanoString was infringing its Unitary Patents, and 10x Genomics requested preliminary injunctions.
In September the first of these cases was decided by a panel of 3 judges in the Munich division of the UPC.
During a substantive hearing, there was significant deliberation on whether the NanoString products infringed the 10x Genomics patent and whether the 10x Genomics patent was valid.
The Munich local division held that there are two requirements to qualify for provisional relief at the UPC:
10x Genomics Inc filed its request for a preliminary injunction on the first day of the UPC (1st June 2023), thereby satisfying the urgency requirement since they filed the requests on the earliest possible date. The Munich local division deemed that there was threatened harm and specified that “Even if the Claimants currently achieve profits with their products on the market despite the actions of the Defendants … this does not mean that the contested actions of the Defendants do not cause the described (long-term) harm to the Claimants” The court therefore determined that both requirements were satisfied.
After two weeks of deliberation, it was decided that NanoString was infringing 10x Gemonics’ unitary patent and the decision was made to grant a preliminary injunction to prevent NanoString from selling its CosMX Spatial Molecular Imaging products and related products including reagents in 17 EU countries.
In October the second of the two cases were deliberated.
Again, the Munich local division deliberated whether a second 10x Genomics patent was valid and whether the NanoString product infringed it.
It was found that the product was not infringing the valid patent and therefore a preliminary injunction was not granted. This second patent was only in effect in a subset of the 17 UPC countries, and the NanoString products were also the CosMx Spatial Molecular Imager and related products, so a second preliminary injunction would not have changed the scope of the injunction granted in September.
The 10x Genomics v NanoString cases took a number of days before a final decision was made, this was likely due to the substantial arguments submitted by both parties. We have also seen cases such as myStromer AG v Revolt Zycling AG which had a decision made on a preliminary injunction on the day (likely due to the lack of arguments submitted by the defendant).
Both of these cases showed the importance of being able to prove validity of the patent in suit and also of other patents belonging to the same family, in detail, as well as infringement of the patent in suit, early in litigation proceedings.
Whilst the decision may have taken a number of days, these rulings resulted in a preliminary injunction in 17 EU countries at once, with a single court proceeding, and this highlights the potential litigation power of a unitary patent.
For advice regarding the UPC, please get in touch with us.