Context: The Unified Patent Court (UPC) opened its doors on June 1, 2023, and only a few months later, in September 2023, 10x Genomics won a preliminary injunction against rival NanoString in the Munich Local Division (LD). NanoString nearly went out of business as a result of that loss, but apparently found an acquirer. The Court of Appeal (CoA) lifted the injunction in February 2024, citing doubts about the validity of the patent-in-suit, EP4108782 (“Compositions and methods for analyte detection”), which NanoString had been challenging in an opposition proceeding before the European Patent Office (EPO).
What’s new: 10x Genomics’ lead counsel, Bardehle Pagenberg partner Professor Tilman Mueller-Stoy (“Müller-Stoy” in German), has just announced on LinkedIn that the Opposition Division of the EPO “upheld EP 4 108 782 B1 in slightly amended form” after a three-day trial.
Direct impact: This decision is a breakthrough for 10x, yet does not mean that the injunction automatically enters into force again. But the next injunction could be a permanent UPC injunction based on the amended version of the patent. Main proceedings are pending in the Munich LD and were put on hold after the CoA decision, but 10x’s case will come back with a vengeance now. NanoString will presumably argue that the amended patent is not infringed and that the opposition division will be overruled on appeal.
Wider ramifications: The UPC remains a very important preliminary injunction jurisdiction, arguably the world’s leading patent PI forum. PIs are called “provisional measures” in the UPC. But the 10x Genomics v. NanoString rollercoaster ride shows that the UPC is balanced. In this case, the CoA decided to err on the side of caution, but the Munich LD was probably right with its original decision.
It was rightly considered a heroic feat how a Bird & Bird team led by attorney-at-law Oliver Jan Juengst (“Jüngst” in German) and patent attorney Dr. Daniela Kinkeldey temporarily turned this case around after the September 2023 PI grant. But the tide has turned again in this clash of patent litigation titans, and this week’s winning team comes from Bardehle Pagenberg: Professor Tilman Mueller-Stoy, Dr. Axel B. Berger, Dr. Kerstin Galler, Dr. Markus Ackermann and Dr. Tobias Wuttke.
It will presumably not take long before some case management order shows up in the UPC’s case management system. The parties are bound to disagree on the time that they should receive to brief the court on the implications of the claim amendments for the infringement read.