10x Genomics v Nanostring (UPC_CFI_2/2023)
Decision date:
19 September 2023
Osborne Clarke summary
- 10x Genomics filed an application for preliminary injunction alleging direct and indirect infringement of its EP relating to compositions and methods for analyte detection.
- To decide the application, the Munich LD conducted a thorough assessment of both validity and infringement. It considered the validity of the patent under novelty, inventive step, added matter and sufficiency. The court decided that the patent was valid as, on the balance of probabilities, it had "sufficient certainty" under Article 62(4) UPCA and Rule 211.2 RoP.
- To determine unreasonable delay under Article 62 UPCA, the court must consider (1) when the claimant first became aware of the patent infringement and then (2) when the application was brought. Here, 10x Genomics had requested delay of grant of the EP to be able to benefit from a UP. The court considered the clear advantage of the UP justified the delay, and the action was brought on the first possible day.
- The court also considered the balance of the parties' interests in deciding whether to grant the order (in particular the respective harm). The court explained that it would be more likely to grant an injunction where damages would not be an adequate remedy and where there was greater certainty that the patent would be valid. However, if when weighing the interests there may be a point to undermine the court's conviction, then the court may be more lenient and only order security or even dismissal of the request.
- Upon consideration of the various factors the court granted a preliminary injunction, closely tracking the words of the claims of the EP, with a penalty of €250,000 for each infringement if breached. No security was required from 10x Genomics.
Issue
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