NanoString buyer claims ‘win for science’ as German court invalidates 10x patent
Biotech firm to ask Munich court to permanently lift injunction on CosMx products following ruling | Judgment comes a day after acquisition by Bruker was finalised.
A German court has invalidated a patent owned by 10x Genomics in the country where it had asserted the same patent against NanoString Technologies.
The ruling, which applies to the “German part” of the patent, delivers a win to the biotech firm in the same week it was acquired by Bruker.
On Tuesday (May 7), Bruker announced that the German Federal Patent Court had invalidated the German part of European patent number 2794928 B1, entitled ‘Compositions and Methods for Analyte Detection’.
California-based 10x had accused NanoString of infringing the ‘928 patent through its CosMx Spatial Molecular Imager (SMI) platform for RNA detection.
NanoString will now ask the German Higher Regional Court of Munich to permanently lift an injunction on sales of CosMx products in Germany, which was ordered by the lower Munich Regional Court in May 2023, Bruker said.
The injunction was lifted subject to the payment of a security bond in December last year, when the Higher Regional Court of Munich cited concerns with the lower court’s decision.
NanoString, which became a Bruker business on Monday (May 6), also expects to recoup its attorney’s fees and legal expenses following the ruling.
Mark Munch, president of the Bruker Nano Group, said: “NanoString has consistently maintained that the patents being asserted by 10x Genomics against NanoString’s CosMx SMI products are invalid.
“Today’s ruling of the German Federal Patent Court is a decisive victory for NanoString and Bruker and a resounding vindication of NanoString’s belief from the outset that these cases are without merit.
“This ruling is also a win for science and enables a re-levelling of the playing field in the research tools industry in Germany.”
Kristin Cardillo, VP, corporate communication at 10x, told GenomeWeb: “Two courts in Europe have now found the ‘928 patent at least preliminarily valid and two courts have found otherwise.
“We strongly believe that the ‘928 patent, invented by the renowned Dr George Church at Harvard, is valid and covers important in situ techniques. We are determined to prove that.”
‘Turning of the tide’
In February, the Unified Patent Court (UPC) Court of Appeal revoked a preliminary injunction against NanoString based on another, closely related 10x Genomics patent, EP 4108782 B1.
In that ruling—the Court of Appeal’s first substantive decision—judges said that it was “overwhelmingly likely” that the subject matter of claim 1 of the ‘782 patent would prove to be obvious.
Munch commented that this week’s decision was “further evidence of the turning of the tide in our favour” in these cases.
“Bruker expects to build on this significant legal victory and to further fight for scientific freedom,” he said.
NanoString filed for Chapter 11 bankruptcy in a Delaware court in February, citing debts of $325 million. It was found to have infringed three 10x patents in 2023.
Under the asset purchase agreement finalised this week, Bruker acquired NanoString’s assets and rights including the nCounter, GeoMx, CosMx and AtoMx product lines for approximately $392.6 million.
