NanoString demands damages for enforcement of PI

In September, the UPC’s Munich local division will consider whether NanoString is entitled to damages for the period it was barred from the market due to a preliminary injunction. The day before, the same division will hear the infringement case concerning the same patent.

The panel will comprise presiding judge Matthias Zigann and judges Tobias Pichlmaier and András Kupecz.

Writing UPC history

The case was among the first major disputes at the UPC. In the court’s early days, 10x Genomics sought a PI against NanoString’s CosMx Spatial Molecular Imager instruments and CosMx reagents for RNA detection in UPC jurisdictions. The US-based company alleged that the use and distribution of NanoString’s CosMx products infringed its EP 4 108 782 and EP 2 794 928.

Both patents, which protect spatial profiling technology, belong to Harvard University. While EP 928 is in effect in Germany, the Netherlands and France, EP 782 is valid in all UPC member states.

For EP 782, the Munich local division issued an injunction against NanoString in September 2023. NanoString appealed, but 10x Genomics enforced the PI, preventing NanoString from selling its products.

In early 2024, the Court of Appeal under President Klaus Grabinsky issued a landmark decision, overturning the first instance ruling and denying 10x Genomics a Europe-wide PI. The judges found it likely that the court would declare the patent-in-suit EP 782 invalid in the main proceedings. They thus argued that there was no basis for the provisional measures.

No security ordered

The EPO recently upheld EP 782 in a restricted form. Nevertheless, NanoString is claiming damages for the period during which it could not market its products due to the PI enforcement.

The amount claimed remains undisclosed. NanoString had requested security for the PI enforcement of at least €20 million, but the Munich local division did not order any enforcement security.

The court has scheduled an oral hearing on damages for 18 September. It is likely to be one of the first proceedings in which the UPC will hear compensation for a PI under RoP 213.2. This states that “where provisional measures are revoked (…) the Court may order the applicant (…) to provide the defendant with appropriate compensation for any injury caused by those measures”. Should the court rule in NanoString’s favour, further proceedings will likely determine the compensation amount.

To be continued

Meanwhile, the dispute continues in the main proceedings. On 17 September, the Munich local division will hear the EP 782 infringement case, which will likely address whether NanoString actually infringed the patent in its current EPO-restricted version.

Regarding EP 928, the German Federal Patent Court declared the German part invalid in May 2024. In October, the Munich central division of the UPC followed by revoking the French and Dutch parts due to lack of novelty. Appeals against both decisions are pending at the German Federal Court of Justice and the UPC Court of Appeal in Luxembourg.

Strong support

NanoString has relied on a mixed team from Bird & Bird since 10x Genomics first brought claims to German courts.

Düsseldorf partner Oliver Jüngst leads the damages case alongside counsel Moritz Schröder and Annika Lückemann. Munich-based patent attorney and partner Daniela Kinkeldey is assisting with validity aspects together with counsel Jan van Dieck and Anne Halbach.

Since the beginning of the lawsuit, 10x Genomics has relied on Bardehle Pagenberg, with which it maintains a close relationship. Litigation partners Tilman Müller-Stoy and Tobias Wuttke lead the team, with partner and patent attorney Axel Berger providing technical support.

The team also includes lawyers Martin Drews, Kerstin Galler, Monika Harten, Ronja Schregle and patent attorney Markus Ackermann. They will also represent the US client in the damages case.

The Bardehle team cooperates with in-house lawyers from 10x Genomics, Eric Whitaker (chief legal officer) and Randy Wu (vice president IP and litigation).