10x Genomics and Bardehle achieve rare AASI in biotech dispute against NanoString

In mid-May, the Munich Regional Court ruled against US company NanoString Technologies and its German subsidiary for indirect infringement of the German part of European patent EP 2 794 928 B1 (case IDs: 7 O 2693/22 and 7 O 5812/22). The plaintiff has since published both judgments.

10x Genomics is a US company based in California that designs and manufactures life science technology for use in basic scientific research. NanoString is a biotech company based in Seattle offering discovery and translational research solutions. EP 928 B1 is owned by Harvard Corporation, while 10x Genomics is the exclusive licensee of the patent. The patent protects compositions and methods for analyte detection.

NanoString may no longer sell its CosMx Spatial Molecular Imager instruments and CosMx reagents in Germany, if the instruments are to be used for the detection of RNA. NanoString must also pay damages and disclose all invoices since mid-February 2023. However, 10x Genomics must first enforce the two judgments. NanoString immediately announced that it would appeal the decisions.

AASIs rare in life sciences

In addition, Munich Regional Court prohibited NanoString from preventing the pronouncement and enforcement of the German judgment by means of an anti-suit injunction in the US. At the end of April, NanoString filed an ASI and anti-enforcement motion with the US District Court for the District of Delaware.

Munich Regional Court responded with an AASI at the request of 10x Genomics. According to the plaintiff, NanoString subsequently withdrew the ASI application in the US (case ID: O 5416/23).

Quick response from NanoString

NanoString confirmed the Munich judgments in a press release. The US company writes that, “NanoString believes the Munich court came to an erroneous conclusion and will appeal the decision.”

Furthermore, the company announced that “the scope and impact of the Munich court’s decision is limited solely to Germany. In addition, the decision does not apply to the use of the CosMx SMI instrument for detection of proteins, which NanoString will continue to offer and support.”

US first, then Germany

In May 2021, 10X Genomics sued NanoString for the first time in Delaware for the infringement of seven US patents by NanoString’s GeoMx Digital Spatial Profiler, and related instruments and reagents.

In February 2022, more lawsuits followed in Delaware for the infringement of six US patents by NanoString products CosMx Spatial Molecular Imager, and related instruments and reagents. Among the patents-in-suit is the US counterpart of EP 928 B1.

Then, in March 2022, 10x Genomics hit NanoString with two patent infringement lawsuits at Munich Regional Court. NanoString responded by filing a nullity suit against the German part of EP 928 B1 at the Federal Patent Court (case ID: 3 Ni 20/22 (EP)). The hearing for this is on 7 May 2024.

Return of the ASI battles

Anti-suit and anti-anti-suit injunctions have come into play in recent years, especially in mobile phone disputes. Between 2019 and 2021, Munich Regional Court issued a very large number of AASIs at the request of SEP holders against ASIs from China and the US.

Tilman Müller-Stoy

However, they have very rarely been filed outside of SEP battles over standard essential mobile communication patents. JUVE Patent is not aware of any decisions in other industries in Europe. Munich Regional Court’s AASI decision is most likely the first in the life sciences sector.

AASIs are now also common in other German courts outside patent battles. In an investment protection dispute, the Higher Regional Court Hamm, located in North Rhine-Westphalia, recently prohibited two companies from seeking judicial measures outside the EU against a case pending in Essen. Spain made the request after the two companies had applied for an ASI in the US.

According to JUVE Patent information, AASI applications at the Regional Court Munich are still highly popular as part of global SEP disputes. However, notable decisions, such as the one in the 10x Genomics vs. NanoString case, have become rarer.

A few firsts

Neither 10x Genomics nor NanoString have so far attracted attention through patent litigation in Europe. Bird & Bird was retained by NanoString for the first time for this case. Bardehle Pagenberg has a longer client relationship with 10x Genomics, but also represented the company in the courtroom for the first time. Both firms represented their clients with mixed teams of lawyers and patent attorneys.

For 10x Genomics
Bardehle Pagenberg (Munich): Tilman Müller-Stoy (lead), Tobias Wuttke, Nadine Westermeyer, Axel Berger (patent attorney, all partners); associates: Martin Drews, Kerstin Galler
In-house (San Francisco): Eric Whitaker (chief legal officer), Randy Wu (vice president IP and litigation)

Oliver Jüngst

For NanoString Technologies
Bird & Bird (Düsseldorf and Munich): Oliver Jüngst (lead), Daniela Kinkeldey (patent attorney, both partners); associate: Jan Van Dieck (patent attorney)

Regional Court Munich, 7th Civil Chamber
Oliver Schön (presiding Judge), Hubertus Schacht, Dr. Straub

Update 02.06.2023: With the launch of the UPC yesterday, 10x Genomics has filed two further lawsuits against NanoString in Europe

According to a press release, 10x Genomics’ new lawsuits at the UPC allege that the use and distribution of NanoString’s CosMx products for RNA detection infringe European patents EP 2 794 928 B1 and EP 4 108 782 B1. The latter is a Unitary Patent, while EP 928 is a non-opted-out European patent. EP 928 is in effect in Germany, the Netherlands and France, while EP 782 is in effect in all UPC member states.

10x Genomics is seeking preliminary injunctions against NanoString’s CosMx Spatial Molecular Imager (SMI) instruments and CosMx reagents for RNA detection in the jurisdictions of the UPC (case IDs: G164482EVU – 459996/2023 (EP 928) and G164482EVU1 – 459746/2023 (EP 782)).

10x Genomics also filed suit at the local division in Hamburg against Vizgen’s MERSCOPE products for infringement of the EP 782 patent (case ID: G166545VLU – 460565/2023). According to press reports, 10x Genomics had already filed a lawsuit against Vizgen in the US.

It is not known whether the lawsuits are the first at the UPC, which was launched on 1 June. According to JUVE Patent information, around two dozen lawsuits were received by the UPC yesterday and today. 10x Genomics was thus the first company to use the new court to increase pressure on two competitors.

NanoString and Vizgen have not yet commented on the UPC lawsuits. However, it is very likely that the two companies will respond with nullity suits.

Update 03.08.2023: After filing two UPC claims against NanoString in early June, 10X Genomics has seen another success in the anti-anti-suit injunction case before the Regional Court Munich.

On 20 July, the court rejected an objection by NanoString against the AASI order. In May, the Regional Court had issued the AASI ex parte. NanoString subsequently withdrew the corresponding ASI application in the US but filed an objection against the AASI order. In the objection proceedings, the court heard arguments from both companies at length, but ultimately came to the same conclusion. Now NanoString could appeal.

In the meantime, 10X Genomics has enforced the two preliminary injunctions issued by the Munich Regional Court upon provision of a security deposit. NanoString has appealed to the Higher Regional Court Munich.

Furthermore, NanoString has also filed a revocation action against 10X Genomics’s patent EP 928 at the UPC central division in Munich. Bird & Bird is handling the case. As in all other lawsuits, Bardehle is likely to be active on behalf of 10X Genomics in this case.

JUVE Patent updated this article on 03.08.2023 to reflect the latest developments.