Carpmaels steps up for Curio as 10x Genomics challenges competitor at UPC

At the Unified Patent Court, US-based company 10X Genomics accuses Curio Bioscience of infringing its European patent EP 2 697 391 which protects a method and product for localised or spatial detection of nucleic acid in a tissue sample.

In December, the company filed an application for a PI with the Düsseldorf local division (case ID: ACT_590953/2023) directed against Curio’s Seeker Spatial Transcriptomics Kits. These enable the spatial mapping of the entire transcriptome of tissue. The 10X Genomics Visium platform uses similar spatial transcriptomics technology. With the filing, 10X Genomics wants to stop sales in Germany, France and Sweden.

According to several reports in the US media, in early December 10X Genomics also sued Curio Bioscience over several patents at the US District Court of Delaware. Currently the US biotech company is not directed against its long-term rival NanoString, but against another competitor.

10x Genomics active at UPC

Biotech company 10X Genomics is one of the UPC’s most active claimants. On the court’s first day, it filed lawsuits against competitor NanoString at the Munich local division, followed by another lawsuit against Vizgen at the Hamburg local division.

Tilmann Müller-Stoy

Two PI proceedings and two main proceedings are now pending against NanoString in Munich, with the PI proceedings in particular attracting attention.

Initially, the Munich local division did not want to grant 10x Genomics a PI. But the court granted the second PI and stopped the sale of NanoString’s CosMx Spatial Molecular Imager (SMI) instruments and CosMx reagents for RNA detection in Europe.

At the end of February, however, the UPC Court of Appeal overturned the Munich local division’s preliminary injunction. The decision, which allowed NanoString to return to most European markets, was the Court of Appeal’s first decision in a UPC main proceeding.

Principles set a precedent

The UPC’s highest court has thus laid down far-reaching principles for PI proceedings; these will play an important role in today’s oral hearing in Düsseldorf. Accordingly, the UPC judges must be sufficiently convinced of a high probability that the patent-in-suit is valid if they issue a PI. As such, the patent must have a high probability of surviving a revocation attack in the main proceedings.

JUVE Patent is not yet aware whether 10X Genomics has filed a main UPC action against Curio Bioscience, or if a revocation action against EP 391 is pending. The patent does not currently play a role in the disputes with NanoString and Vizgen.

Bardehle versus Carpmaels

For 10x Genomics, a mixed team consisting of lawyer Tilman Müller-Stoy and patent attorney Axel Berger is a familiar sight. They have already represented the US company in the previous disputes with NanoString at the UPC and at the Munich Regional Court.

On the other side of the courtroom, mixed IP law firm Carpmaels & Ransford is acting for Curio Bioscience. According to JUVE Patent information, local advisors from other law firms are not present.

Carpmaels backed the UPC at a very early stage: the firm did not let Brexit and the UK’s subsequent withdrawal from the UPC project deter its strategy. Its European patent attorneys are mostly authorised to conduct UPC proceedings and, like lead partner Cameron Marshall, the market considers them to be very experienced in litigation.

Agathe Michel-de Cazotte

In 2022, the firm secured London-based litigator Agathe Michel-de Cazotte. She is qualified as a French lawyer and also speaks German. For several years, she worked at Hogan Lovells in Düsseldorf, where she participated in German proceedings.

Carpmaels is also acting for Sanofi and Regeneron against Amgen for the blockbuster Praluent at the UPC. In this case, however, the UK law firm is working with Hoffmann Eitle.

Solo for Curio

Carpmaels is by no means the only UK law firm acting in UPC proceedings.

According to JUVE Patent information, Potter Clarkson, J A Kemp, Dehns and Powell Gilbert are also active. For example, IP boutique Powell Gilbert is involved in various cases for Edwards Lifesciences, AIM Sport and Ocado. Some oral hearings have already taken place, with Powell Gilbert conducting these with local advisors.

Potter Clarkson, J A Kemp and Dehns are still awaiting oral hearings in main proceedings, which will in any case predominantly take place in revocation cases at the central division.

But today’s hearing in Düsseldorf is a test as to whether UK law firms can conduct proceedings at a local UPC division without local advisors.

Cameron Marshall

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

For Curio Bioscience
Carpmaels & Ransford (London): Cameron Marshall (patent attorney), Agathe Michel-de Cazotte (both partners); associates: Hadi Godazgar, Laura Mikkelsen, Hiske Roos, Liam Batty; John Snape, Henry Evans (both patent attroneys)

Unified Patent Court, Düsseldorf local division
Ronny Thomas (presiding judge), Berenice Thom, Andras Kupecz; Martin Schmidt (TQJ)