NanoString to appeal 10x’s UPC injunction ‘immediately’
The spatial biology firm will appeal the Unified Patent Court’s preliminary injunction | NanoString accuses 10x of ‘misusing non-final court rulings…to eliminate competition in the spatial transcriptomics market’.
NanoString Technologies has said it will “immediately appeal” the preliminary injunction served by the Unified Patent Court (UPC) this week in favour of 10x Genomics.
In the latest development in the dispute between the two biotechnology research companies, the UPC granted the injunction on Tuesday, September 10—the first announcement by the UPC of an injunction in open court.
The move will temporarily block NanoString’s ability to market and sell its CosMx Spatial Molecular Imager products for ribonucleic acid (RNA) detection within EU member states.
The UPC’s decision came after 10x accused Nanostring of infringing two of its European patents (2 794 928 B1 and 4 108 782 B1) via the latter’s CosMx products.
Global litigation
Both firms have been head-to-head over patents covering the in-situ detection of analytes for more than two years, with 10x bringing lawsuits against its rival in a number of multi-jurisdictional lawsuits.
Brad Gray, president and CEO of Seattle-based NanoString, said in a statement on Tuesday that the company is “disappointed” with the UPC’s decision and “will immediately appeal the preliminary injunction in the UPC Court of Appeal in Luxembourg”.
“We are confident in our belief that we do not infringe the asserted patents, and that the patents will ultimately be found to be invalid,” said Gray.
“We also respectfully believe the court erred by failing to adequately consider evidence demonstrating that the patents asserted by 10x were funded by a grant of over $19 million from the National Institutes of Health that required open and non-exclusive licensing to promote the public interest.
“NanoString remains steadfast in our commitment to defend the scientific community’s access to our products and researchers’ scientific freedom to select the platforms that best advance their research.”
He added that the ruling “does not impact NanoString’s legal ability” to market or sell its CosMx products in the EU, nor impact the “lawful selling” of any of the said products in the US, UK or countries outside of the EU member states participating in the UPC system.
An historic decision
The NanoString president went on to allege that 10x has “resorted to the courts and is misusing non-final court rulings as part of its commercial strategy to eliminate competition in the spatial transcriptomics market to the detriment of the public good”.
Randy Wu, 10x’s vice-president of intellectual property and litigation, told LSIPR on Tuesday that the company is “overjoyed” with the “historic” decision.
“We will be steadfast in protecting the inventions that scientists have worked so hard to create,” he said, “as innovation is what fuels and funds the development of future 10x technologies that benefit researchers—and ultimately patients.”
In response, Gray added: “NanoString is committed to defending a competitive, innovative marketplace…we look forward to presenting multiple arguments to invalidate the asserted patents and demonstrate our non-infringement of these patents at the full UPC hearings on the merits of our case.”
A date has not yet been set for the full hearings, although the UPC said that it would issue a decision in the preliminary injunction matter related to the ’928 patent on October 10.
NanoString said it currently estimates that, as of August 31, 2023, less than 10% of its CosMx instruments orders in its backlog are for the EU countries directly impacted by the UPC’s decision.
The company—whose mission is to “map the universe of biology”, according to its website—also reiterated its total revenue for 2023 at $175–$185 million.
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