BY DARREN SMYTH, PARTNER AND HEAD OF KNOWLEDGE AT EIP | IMAGE: SHUTTERSTOCK
The biggest news in the patent community now is the Unified Patent Court (UPC), which came into being on 1 June 2023. It is the world’s first supranational patent court, and currently has jurisdiction over European patents in 17 out of the 27 EU member states, including France, Italy and Germany, but excluding, for example, Spain and Poland. Ireland was planning a referendum to allow it to join the system, but recently announced that it was postponing the vote.
The UPC has multiple first instance court divisions spread across participating countries, with a Court of Appeal in Luxembourg. It will generally take a little over a year for a patent infringement action filed at the UPC to reach a first instance decision. There are, therefore, no decisions on any of the infringement actions that have been filed so far. According to figures from the UPC, up to the end of April 2024, 123 infringement actions had been filed.
However, one substantive matter has advanced as far as a first instance decision and an appeal to the Court of Appeal. This relates to a provisional injunction, where the claimant requests the Court orders the defendant to take their product off the market pending the full hearing and substantive decision on the merits of the case. In order to obtain a provisional injunction, the Court generally requires the claimant to demonstrate that they have not delayed in commencing the infringement action and that they will suffer harm if the infringement continues. And that such harm is greater than the harm to the defendant if the provisional injunction is granted and the patent turns out to be either invalid or not infringed in the decision on the merits of the case. The Court may also require the claimant to show that the patent is likely valid and infringed on the basis of preliminary evidence and a short hearing.
10x Genomics is the licensee of EP4108782, which relates to multiplexed detection of biomolecules in cells or tissue, particularly detection of nucleic acid sequences. 10x Genomics requested a provisional injunction against NanoString.
The Court considered that there was no delay in bringing the claim even though the grant of the patent was delayed in order to benefit from the new Unitary Patent – the clear advantages of a Unitary Patent justified this delay, and the action itself had been filed on the first possible day.
The Court considered that the balance of harm was equally balanced both ways – both sides argued that a purchaser of a product from either the claimant or defendant would thereby commit themselves to purchasing the detection reagents and decoder probes from that party for many years.
Therefore, the Court undertook a detailed examination of the substantive merits of the case and in a lengthy and detailed judgment concluded with a high degree of conviction that the patent would ultimately be found to be valid and infringed by the defendant. It therefore ordered the provisional injunction on 19 September 2023.
A few weeks later, considering that NanoString had not taken sufficient action rapidly enough by amending its website to remove the accused products from offer for sale in European countries, the Court ordered a penalty payment of €100,000 (paid to the Court, not to 10x Genomics) for breach of the provisional injunction. On the other hand, in another action between the same parties based on a different patent, a preliminary injunction was refused because of doubts about the validity of the patent.
In arguing against the grant of the provisional injunction, NanoString had indicated that it risked bankruptcy if the injunction was ordered – and indeed, in February 2024, NanoString filed for Chapter 11 bankruptcy protection in the US.
In the meantime, however, NanoString appealed the provisional injunction to the UPC Court of Appeal. The Court of Appeal interpreted the claims of the patent somewhat differently, and concluded that there was a high probability that the patent was in fact invalid, and so lifted the injunction in an order of 11 March 2024. It is surprising that in such a high profile and significant case the two specialised tribunals could have viewed the situation so differently, even on the basis of only preliminary evidence.
We may not get a full decision on the merits of the case after consideration of all the evidence, because due to the insolvency of NanoString the Court of Appeal has now stayed the proceedings, although an earlier request for stay was rejected, to allow the injunction decision to be issued.
Darren Smyth is a patent attorney specialising in chemistry. He is Partner and Head of Knowledge at EIP.
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