UPC Court of Appeal revokes NanoString injunction in first substantive decision

UPC overturns previous decision barring NanoString from selling CosMx products in 17 European countries | Court did not stay proceedings on account of NanoString’s Chapter 11 filing.

In its first substantive decision, the Unified Patent Court (UPC) Court of Appeal has revoked a preliminary injunction issued against NanoString regarding its CosMx Spatial Molecular Imager products—dealing a blow to 10x Genomics in the patent infringement battle between the rivals.

Yesterday’s decision (February 26) overturns a September 2023 ruling of the UPC’s Munich local division that had blocked NanoString’s ability to market and sell its CosMx products in 17 UPC member countries across Europe.

This had been the first announcement by the UPC of an injunction in open court, and followed 10x accusing NanoString of infringing two of its European patents: 4108782 and 2794928.

A panel of judges said that contrary to the judgment of the court of first instance, it was “overwhelming likely” that the subject matter of claim 1 of 10x Genomics’ ‘782 patent would prove to be obvious.

Earlier in February, NanoString filed for Chapter 11 bankruptcy in a Delaware court citing debts of $325 million, after it was found to have infringed three patents owned by 10x Genomics last year.

However, this did not affect the decision of the Court of Appeal because it was filed after the oral hearing had been held in December.

Green light for NanoString sales in Europe

Commenting on yesterday’s ruling, Brad Gray, president and CEO of NanoString, said: “We have maintained from the outset of this case that the patents being asserted by 10x and Harvard against us are invalid. The court’s ruling is a significant validation of our position.

“We are grateful to the UPC Court of Appeal for its in-depth analysis of the validity of the patent at issue and feel vindicated by its finding that it is ‘overwhelmingly likely’ that the patent is invalid on the basis of prior art.”

Gray went on to take aim at what he said was a “highly questionable litigation campaign” deployed by 10x that amounted to “an effort to eliminate competition in the research tools space to the detriment of science and the public good”.

“We believe that with today’s decision, the tide is turning in favour of NanoString and scientific freedom,” he said.

The ruling allows NanoString to immediately resume sales of its CosMx products in 16 impacted UPC member countries.

In a separate decision in December regarding NanoString’s related European patent 2794928, a Munich court ordered an injunction to be lifted on the sale of CosMx products in Germany, subject to a security bond payment.

NanoString said it was considering its options in Germany in light of the UPC’s decision and that currently the injunction remained in place.

UPC Court of Appeal ‘willing to hear all aspects’

The outcome of the decision in 10x Genomics v NanoString was closely watched, being one of the first to be issued by the UPC Court of Appeal.

In October last year, the Court of Appeal ruled on the time limit for filing a preliminary objection or statement of defence in Amgen v Sanofi and Regeneron.

Yesterday’s judgment is the first substantive decision of the court. Pinsent Masons associate Stefan van Kolfschooten, based in Amsterdam, commented that the appeals court had shown “a willingness to hear all aspects of the case by elaborating on a wide range of topics of interest”.

He noted that during proceedings, the court’s intention to discuss certain issues beyond those immediately arising in the appeal “appeared to surprise the parties”.

It could be that the court was taking a view to provide some guideline case law that could apply to other cases, van Kolfschooten suggested.

This reiterated the need for parties “to prepare to discuss all aspects of their case at UPC Court of Appeal hearings”.

Prior to the judgment, the court had made clear that the burden of proof would be on the applicant seeking a preliminary injunction to show that infringement had occurred.

In 10x Genomics and President and Fellows of Harvard College v NanoString Technologies, 10x and Harvard were represented by Tilman Müller-Stoy of Bardehle Pagenberg. Oliver Jan Jüngst of Bird & Bird represented NanoString.

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