The Unified Patent Court has refused to grant 10x Genomics a second preliminary injunction against rival NanoString, as it was not convinced of the infringement of 10x’s patent.
The case concerned European Patent 2 794 928 B1 (EP 928 patent). In a reaction to the decision, 10x Genomics pointed out: ‘the injunctions granted by the Regional Court Munich I in May and by the UPC in September both remain in full force and effect and are not affected by today’s decision in terms of scope or duration. The September injunction prevents NanoString from selling or providing services using its CosMx Spatial Molecular Imager (SMI) instruments and CosMx reagents for RNA detection in all 17 countries of the UPC based on NanoString’s infringement of European Patent 4 108 782 B1 (“the EP 782 patent,” docket No. 459756/2023). The EP 928 patent is in effect in only a subset of the 17 UPC countries – Germany, France and the Netherlands. Had it been granted, the injunction for the EP 928 patent would not have changed the scope of the injunction that is already in effect.’
In September, 10x Genomics won a PI against NanoString for infringing European Patent 4 108 782 B1. That was the UPC’s first PI in a case were an oral hearing was held with both parties. NanoString immediately announced it would appeal the order in the UPC Court of Appeal in Luxembourg. 10x Genomics has not yet made clear whether it will appeal the UPC’s decision concerning the EP 928 patent.
Reasoned decision in first case
A certified English translation of the reasoned decision on the first PI has become available on the EPLAW website.
As to the validity of the patent in suit, the UPC decision reads: ‘The Local Division is also satisfied with a clear preponderance of probability that the patent in suit is valid; (…) The Local Division is also clearly convinced that provisional measures are necessary due to the infringement of a valid patent, both in terms of substance and time. (…) The Local Division also does not see the possibility of longterm harm resulting from the granting of the provisional measures or their refusal as being one-sided to the detriment of Respondents.’
On the Pinsent Masons website, Julia Traumann writes ‘burdens will attach to preliminary patent injunction applications’. ‘Stating that the claimants do not bear the initial burden of proof for the validity of the patent in suit, but then asking claimants to provide evidence on the validity of the patent in suit, appears to be inconsistent at first, even when understanding the legal nuance. In any case, it has significant implications for claimants. It means that they must prepare and submit evidence on the validity of the patent in suit, and even other patents belonging to the same patent family if they are under a validity attack, at a very early stage of litigation – specifically, when applying for a preliminary injunction.’
In an analysis for EPLIT, Michael Wallinger also points out: ‘The court rejects the Defendants’ argument that according to German national case law, the revocation of the patent does not have to be predominantly probable, but only possible, with the remark that “this case law on national procedural rules” is “not relevant in the scope of application of the UPCA and the RoP”.’
In his conclusions, Wallinger applauds the court: ‘With this judgement, the newly installed Unified Patent Court shows its strength. The streamlined conduct of proceedings established by the Rules of Procedure and, in particular, the technical expertise on the bench allow the court to decide even technically complex matters in a very efficient time frame.’
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It is interesting to note that the patent for which an injunction has been granted, EP4108782, a divisional of EP3425063, whereby EP2794928 is the parent, an opposition has been filed, whereas the patent for which the injunction was refused, EP2794928, the parent, was not subject to an opposition.
It will be interesting to see whether EP4108782 will survive the opposition and in which form, knowing that only around 15% of the oppositions are, after appeal before the boards of appeal of the EPO, actually rejected.
One of the fundamental problems, which has been ignored during the setting up of the UPC is a possible divergence of case law on interpretation and validity between the boards of appeal of the EPO and the various panels of the UPC.
Contrary to what “Watch Global” has said in a previous comment, there is no EU patent law as such since the EU has never joined the EPC. The EPC is an autonomous granting and opposition system which covers a much larger group of countries than the UPC will ever do.
It is doubtful that the non-EU countries, and within the EU, the non-UPC countries, will ever accept a supremacy of UPC. The supremacy of the UPC was the hope expressed by Sir Robin Jacob at one of the conferences on the UPC held in Munich a few years ago. I am not convinced that this will happen.
The EPO and its boards of appeal are making great efforts in accelerating the opposition and opposition appeal procedures. It can therefore be expected that a stay of procedure before the UPC will have to become the norm rather than the exception, when an opposition is running at the EPO. In view of the difference in fees and in costs for an opposition before the EPO vs. a nullity action before the UPC, it cannot be expected that the number of oppositions at the EPO will diminish.
As “Watch Global” said in the same comment, there are diverging predictions as to whether the UPC will stick to the case law of the EPO. If prominent legal judges made their independence vis-à-vis the EPO case law very clear, the clash of jurisprudence with respect to interpretation and validity of patents, between the UPC and the boards of appeal of the EPO is pre-programmed. Whether this clash of jurisprudence will really help the European industry at large and European SMEs in particular remains to be seen. Serious doubts are permittedThe boards of appeal of the EPO will defend their independence as much as any other court.
Claiming that a UPC bashing going on is really far-fetched. Drawing the attention to intrinsic problems of the UPC, is a legitimate reaction of some people in favour of European integration, but not the type of integration forced upon by the UPC and its staunch supporters.
There are many more intrinsic problems with the UPC, but those have been willingly swept under the carpet. That the Presidium of the UPC and the Administrative Committee of the UPC superbly ignore the VCLT is just a further problem.
for sure a potential conflict between EPC and UPC is far more desirable and manageable than all the existing contradictions between EPC and national tribunals, that UPC and EPC are not geographically overlapping is a fact and derives from political (sometimes even specious) reasons and because of these no one can expect an identical approach, especially the UE/non-UPC countries