10x Genomics and Bardehle win UPC PI against NanoString

The subject of the case between opponents NanoString and 10x Genomics was a preliminary injunction concerning EP 4 108 782. 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.

As defendant NanoString announced in a press release, it is appealing the ruling. Plaintiff 10x Genomics also sued NanoString Technologies on the merits before the UPC.

10x Genomics allege infringement

US-based company 10x Genomics alleges that the use and distribution of NanoString’s CosMx products for RNA detection infringe European patents EP 4 108 782 B1 and EP 2 794 928 B1. Both patents 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.

Regarding EP 782, the judges saw the patent as most likely valid and infringed. They therefore granted the patent holder’s request for preliminary injunction, which is valid in all 17 UPC member states.

The decision was issued without the provision of a security payment, meaning 10x Genomics can enforce it immediately. This is one of the first PI to be issued in UPC proceedings (case ID: UPC_CFI_2/2023). However, an EPO opposition is also pending against the patent.

In addition to the decision on EP 782, the court also heard 10x Genomics’ further claim for a PI for EP 928 (case ID: UPC_CFI_17/2023). A judgment is scheduled for 10 October. NanoString has also filed a revocation action against the patent at the UPC.

NanoString setback in German case

In German proceedings, NanoString Technologies this year suffered a setback in May, after the Munich Regional Court prohibited the US manufacturer from selling two products in Germany. It also ordered an anti-anti-suit injunction against applications filed by NanoString in the US to prevent the pronouncement and enforcement of the German judgments.

Tilman Müller-Stoy

The Regional Court had issued the AASI ex-parte in May. NanoString subsequently withdrew the corresponding ASI application in the US but filed an objection against the AASI order.

In the objection proceedings, the court heard arguments from both companies at length, but ultimately came to the same conclusion and rejected the objection on 20 July.

10x Genomics forges on

In the meantime, 10X Genomics has enforced the two preliminary injunctions issued by the Munich Regional Court upon provision of a security deposit. NanoString has appealed to the Higher Regional Court Munich (case IDs: 6U 2359/23e and 6 U 2360/23e).

The company also filed a nullity suit against the German part of the EP 928 at the German Federal Patent Court.

As well as ongoing disputes at the EPO and in the US, 10x Genomics also filed another UPC suit at the local division in Hamburg against Vizgen’s Merscope products for infringement of EP 782. According to press reports, 10x Genomics had already filed a lawsuit against Vizgen in the US.

Familiar faces

Both companies relied on the same representatives as in the German proceedings. Tilman Müller-Stoy and Tobias Wuttke of Bardehle Pagenberg took the lead for plaintiff 10x Genomics, while a team led by Bird & Bird partner Oliver Jüngst defended NanoString.

The judges were Matthias Zigann and Tobias Pichlmaier, who are renowned for patent litigation, and former Dutch lawyer and patent attorney András Kupecz. Kupecz has experience in life sciences litigation. In addition, French patent attorney Eric Enderlin, who has a background in biochemistry, sat on the bench as technical judge.

Oliver Jüngst

For 10x Genomics
Bardehle Pagenberg (Munich): Tilman Müller-Stoy (lead), Tobias Wuttke,  Axel Berger (patent attorney, all partners); associates: Martin Drews, Kerstin Galler, Monika Harten
In-house (San Francisco): Eric Whitaker (chief legal officer), Randy Wu (vice president IP and litigation)

For NanoString Technologies
Bird & Bird (Düsseldorf and Munich): Oliver Jüngst (lead), Daniela Kinkeldey (patent attorney, both partners); counsels: Moritz Schroeder, Anne Halbach, Jan van Dieck (both patent attorneys); associates: Alexander Bothe

Unified Patent Court, Munich local division
Matthias Zigann (presiding judge), Tobias Pichlmaier, András Kupecz, Eric Enderlin (technical judge)

Update 11.10.2023: In the second PI proceeding (ACT_459996/2023 UPC_CFI_17/2023) the Munich local division denied a PI for 10x Genomics against NanoString. This case is still not listed in the public UPC case register.

JUVE Patent updated this article on 11.10.2023 to reflect the latest developments in the case between 10x Genomics and NanoString.