Court of Appeal judges pave way back to European market for NanoString

BREAKING: The Court of Appeal today overturned the Munich local division's preliminary injunction against NanoString in Europe, allowing the company to return to most European markets. The court also refused to stay the proceedings due to NanoString's Chapter 11 filing in the US.

The Court of Appeal of the Unified Patent Court has just made legal history by issuing its long-awaited judgment in the appeal proceedings between 10X Genomics and NanoString. The court’s local division in Munich had heard the preliminary injunction dispute in December.

NanoString informed JUVE Patent that the UPC Court of Appeal under presiding judge Klaus Grabinski overturned the PI. According to the court, it is likely that the patent-in-suitEP 4 108 782will be declared invalid in the main proceedings. This means that there is no basis for the PI. 10X Genomics has confirmed this. The judgment has not yet been published, but has been made available to JUVE Patent.

Intense battle

In mid-September, the Munich UPC judges announced their decision regardingEP 782. They saw the patent as most likely valid and infringed, thus granting patent holder 10X Genomics’ request for a PI valid in all 17 UPC member states.

The judges issued the PI without the provision of a security payment, meaning it was effective without further measures (case ID:UPC_CFI_2/2023). NanoString immediately appealed to the UPC Court of Appeal. The latterheard the case in December(case ID: UPC_CoA_335/2023).

In addition to the judgment on EP 782, the Munich local division denied a PI based onEP 2 794 928in early October.

Setback for 10X Genomics

Today’s ruling is a setback for 10X Genomics, which had so far been successful against its competitor in Europe.

The US company had sued its competitor over several patents at Munich Regional Court in February 2022 and at the UPC in June 2023. Both courts imposed sales bans against NanoString in Germany and Europe respectively. This affects NanoString’s CosMx Spatial Molecular Imager (SMI) instruments and CosMx reagents for RNA detection.

NanoString appealed against the injunctions in each case. Even though Munich Higher Regional Court has provisionally allowed NanoString to sell products in Germany again, the UPC’s preliminary injunction remained in place until today.

With today’s ruling by the Court of Appeal, NanoString is now free to sell its products again in 16 of the 17 UPC states. However, NanoString will not yet sell any products in Germany. This is because the company has not yet paid the security deposit at the Higher Regional Court in Munich. As a result, the injunction issued by Munich Regional Court remains in force for the time being, despite the Higher Regional Court initially suspending the enforcement.

Chapter 11 irrelevant

In a second order, which the court issued today and which JUVE Patent has seen, the Court of Appeal rejected 10X Genomics’ request to stay the proceedings due to NanoString’s Chapter 11 filing in the US. NanoString had not opposed the motion.

NanoString filed the Chapter 11 petition at the beginning of February, after the UPC Court of Appeal had already heard the appeal. Rule 311.1 of the Rules of Procedure does not regulate how to proceed in this specific case.

The relevant guiding principle of the order (case ID:APL_576355/2023) states, “In accordance with the principles of procedural economy and cost efficiency as well as the fair balance between the legitimate interests of the parties, (…), the proceedings do not have to be stayed pursuant to Rule 311.1 sentence 1 of the Rules of Procedure if a party is declared insolvent only after the conclusion of the oral hearing and the legal dispute is ready for decision.”

The main proceedings between the two opposing parties concerning the infringement of EP 782 and EP 928 will now be decisive for the continuation of the dispute. The court has not yet scheduled oral hearings. However, the Munich local division can still decide to stay the proceedings until the US court has resolved the Chapter 11 petition.