10x Genomics & Harvard v NanoString (UPC_CFI_298/2023)
Decision date:
13 January 2025
Osborne Clarke summary
- NanoString sought to dismiss 10x Genomics' request to amend its patent. Or, alternatively, it sought to limit the number of auxiliary requests made by 10x Genomics as 55 auxiliary requests had been filed within its application to amend its patent.
- The judge-rapporteur initially ordered 10x Genomics to reduce the number of auxiliary requests to a one-digit number. However, the panel modified that order on the basis that the reasonable number of auxiliary requests depends on the complexity of the case: in particular, the number of grounds of invalidity raised, the importance of the patent in issue and the interrelationship with other proceedings.
- Parallel invalidity proceedings were before the EPO and the parties had agreed to stay the UPC proceedings pending the decision of the Opposition Division, which the judge-rapporteur agreed to. However, the panel noted that the stay of the UPC proceedings could only mean that the decision of the Opposition Division should be taken note of in the UPC proceedings, otherwise they could have continued independently. As such, the panel agreed that it should be possible for 10x Genomics to adjust its auxiliary requests according to the Opposition Division decision. It was given 20 days from the Opposition Division decision within which to do this.
Issue
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