Context: In December 2023, 10x Genomics filed with the Unified Patent Court’s (UPC) Dusseldorf Local Division a request for a preliminary injunction against Curio Bioscience.
What’s new: Today the Dusseldorf Local Division has entered an injunction over one of the two patent claims over which 10x requested it (official English translation of the order (PDF); original German decision (PDF)). On this occasion, the court also clarified the legal standard with respect to the rebuttable presumption of patent ownership, purposes stated in the claim language, what a patentee is and is not expected to do to file PI requests on a timely basis, and the provision of security for costs.
Direct impact: The defendant will presumably appeal.
Wider ramifications: This PI decision contributes to the development of UPC case law in multiple respects, provided that the UPC Court of Appeal gets to hear and decide the matter.
From the Munich Local Division, 10x Genomics obtained a PI against NanoString last year that was overturned on appeal.
The Dusseldorf injunction that issued today is based on claim 14 (a product claim) of EP2697391 on a “method and product for localised or spatial detection of nucleic acid in a tissue sample.” 10x also asserted claim 1 (a method claim), but Curio fended off that allegation of indirect infringement. The PI applies in Germany, France and Sweden and is enforceable against collateral amounting to €2 million.
Presiding Judge Ronny Thomas of the Dusseldorf LD also acted as rapporteur, and was joined on the panel by Judges Bérénice Thom, András Kupecz (in this case, chosen for his legal qualifications, though he is also technically qualified), and technically qualified judge Dr. Martin Schmidt. The plaintiff is represented by Bardehle Pagenberg’s Professor Dr. Tilman Mueller-Stoy (“Müller-Stoy” in German), Dr. Martin Drews and patent attorney Dr. Axel Berger, and the defendant by Carpmaels’ Agathe Michel-de Cazotte. Both parties are headquartered in the United States.
With respect to the prerequisite certainty of the patent-in-suit being valid, the Dusseldorf LD reiterates the previously-known “more likely (to be valid) than not” standard for patents that have not been battle-tested yet. The UPC presently appears to be a PI-friendlier forum than German national courts.
Here’s a quick summary of the guidance provided by the court in the form of headnotes (syllabus):
- The plaintiff just has to show that it’s listed as the holder of the relevant patent in the relevant national patent registers (an EPO-granted patent is registered on a country-by-country basis) in order to enjoy a legal presumption. The defendant can try to rebut that presumption, bearing the burden of proof.
- “If a patent claim contains stated purposes, these usually serve to improve understanding of the invention. As a rule, they have the indirect effect of defining the subject matter protected by the patent in such a way that it must not only fulfil the spatial-physical features, but must also be designed to be usable for the purpose stated in the patent claim.” In other words, stating purposes in a patent claim means that on top of showing that an accused product embodies all claim limitations, the accused product also has to be suitable to any purposes stated in the claim or there is no infringement. That was key to the court’s assessment that the defendant probably does not infringe claim 1.
- With a view to the urgency requirement, a moving party has to act reasonably swiftly when it becomes aware of an infringement, but is under no obligation to systematically monitor the entire market. Negligent ignorance or willful blindness can be deemed equivalent to actual knowledge, but in the present case the court is not convinced that the defendant made it sufficiently clear to the patentee that an infringement was ongoing or imminent.
- Security for costs can go both ways, but “[i]n urgent proceedings, there is neither scope nor (with regard to R. 211.1(d) RoP) a need for the (analogous) application of the provision, given the urgent nature of such proceedings.”
The Dusseldorf LD has provided useful clarification of its perspective, but some of these questions require guidance from the appeals court.