10x Genomics and NanoString Yield no Ground in First UPC Court of Appeal Hearing

The UPC Court of Appeal in Luxembourg heard its first case. 10x Genomics and NanoString fought hard in their appeal against a preliminary injunction, with the judges led by presiding judge Klaus Grabinski putting both opponents under intense scrutiny. While the outcome remains completely open, their conduct of the negotiations will have an impact on future UPC proceedings. JUVE Patent reports directly from the hearing.

The oral hearing at the European Convention Centre on Luxembourg’s Kirchberg, between 10x Genomics and NanoString, began with UPC Court of Appeal president, Klaus Grabinski, clarifying what this Monday morning was all about. “This is a historic moment”, he says. “It is the first ever hearing of this court.”

The Court of Appeal is the highest instance in the UPC system and, on 18 December 2023, heard a case for the first time – a good six months after the UPC began its work. On the agenda was NanoString’s appeal against a PI ruling by the Munich local division in the dispute with 10x Genomics.

And the neighbourhood for this historic moment in European patent law could hardly be more exclusive. The European Court of Justice (CJEU) is just across the street on the other side of Avenue John F. Kennedy. However, as thick clouds of grey fog enveloped the Kirchberg, the two golden towers of the EU’s highest court shone less brightly than usual.

Grabinski introduces the case

Opposite, in the ultra-modern Convention Center, the five UPC judges around Klaus Grabinski are trying to shed light on the conflicting arguments of NanoString and 10x Genomics. At the start of the hearing, despite his introduction, the president does not spend time waxing lyrical about the historic moment. In typical German style, he quickly and pragmatically moves on to the case.

Following the tradition of German patent courts, Grabinski introduces the case for 45 minutes and presents the judicial panel’s view of the case. This is surprising, as the panel includes French native Francoise Barutel, and two Dutch natives in Peter Blok and the technically qualified judge, Cornelis Schuller. Another German, Rainer Friedrich, completes the panel as the second technical judge.

In other UPC countries such as France or Finland, such long introductions by the judges are not common practice. Or at least, as observers report with surprise during the first break in the proceedings, the introduction is kept very brief.

Examining the validity

Although the judges were obviously well prepared, the otherwise composed and seasoned president of the court is visibly nervous. While Grabinski’s four fellow judges look out into the auditorium with unreadable expressions, at times the president struggles to find the right words. At the agreement of both parties, the court hears the case in English, despite the Munich local division conducting the first-instance proceedings in German.

However, Grabinski quickly regains his confidence and conducts the hearing with charm and determination. Infringement, claim construction, validity, novelty, licence issues, and proportionality – he does not forget a single thing that belongs to a PI case.

On a large screen, a staff member displays the relevant documents. Grabinski points directly to the passages in the patent specification that the court wants to discuss with the lawyers from 10x Genomics and NanoString. “The case raises a lot of problems for both sides,” Grabinski concludes.

While the question of infringement was not discussed, the court primarily wants to discuss the urgency and proportionality – but firstly the validity – of the patent. NanoString filed an opposition at the EPO against EP 41 08 782, which belongs to Harvard University and was licensed to 10x Genomics. In addition, NanoString has filed a counterclaim for revocation against the patent with the UPC.

First days of the UPC

The stakes are high for NanoString. “Our products are no longer on the market in Europe since the ruling by the Munich local division”, NanoString’s lead counsel Oliver Jüngst will later say. The issue of unresolved validity is also why NanoString wants to intensively discuss the proportionality of the Europe-wide PI.

In the initial days of the UPC, 10x Genomics applied for the PI against NanoString’s CosMx Spatial Molecular Imager (SMI) instruments and CosMx reagents for RNA detection in the UPC jurisdictions. The US-based company alleges that the use and distribution of NanoString’s CosMx products for RNA detection infringe European patents EP 782 and EP 27 94 928.

Both patents belong to Harvard University and protect a spatial profiling technology. EP 782 is a Unitary Patent, while EP 928 is a non-opted-out European patent. EP 928 is in effect in Germany, the Netherlands and France, while EP 782 is in effect in all UPC member states.

17-state impact for NanoString

In mid-September, the Munich UPC judges announced their decision regarding EP 782. They saw the patent as most likely valid and infringed, thus granting the patent holder’s request for a PI valid in all 17 UPC member states. The judges issue the PI without the provision of a security payment, meaning it is effective without further measures (case ID: UPC_CFI_2/2023).

At the beginning of December, the same court then ordered a fine of €100,000 at the request of 10x Genomics. The US company opined that NanoString was not complying with the PI ruling. In addition to the judgment on EP 782, the Munich court denied a PI based on EP 928 in early October (case ID: UPC_CFI_17/2023).

However, in the meantime, 10x Genomics has also filed two main actions against NanoString with the UPC. In addition, the company sued another competitor, Vizgen, at the Hamburg local division for infringement of EP 782. NanoString is challenging both patents with UPC revocation actions.

Nationally, 10x Genomics and NanoString are also facing off in an intense dispute at the Munich Regional Court. The two companies are yielding nothing.