Partial win for 10x Genomics in PI proceedings against Curio Bioscience
The UPC Düsseldorf local division has ruled in favour of 10x Genomics' PI request in the patent dispute with competitor Curio Bioscience, although it found only one of the two main patent claims to be infringed. The case has previously attracted interest due to the questions raised concerning the language of proceedings.
2 May 2024 by Laura King
At the end of March, the Düsseldorf local division heard a preliminary injunction application by 10x Genomics against competitor Curio Bioscience. The court has now granted the PI. According to JUVE Patent information, 10x Genomics will enforce its injunction claim. Both parties may appeal.
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.
The company filed an application for a PI with the UPC last December (case ID: ACT_590953/2023), which it 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 the sale of Curio’s kits in Germany, France and Sweden.
One claim infringed
The Düsseldorf local division has now ruled that Curio Bioscience infringed claim 14 of EP 391, but not claim 1. As a result, Curio Bioscience may not sell any devices that infringe claim 14 in France, Germany, and Sweden. However, 10x Genomics must first deposit a payment as security for legal costs in order to enforce the preliminary injunction.
Cameron Marshall, partner at Carpmaels & Ransford and lead advisor for Curio, says, “System claim 14 is narrow in scope. Thus, Curio expects no impact to its commercial business. This ruling is restricted to the three countries mentioned and does not affect Curio’s activities elsewhere, nor does it impact other Curio products.”
An additional aspect in the case was the matter of patent ownership, as Curio had disputed that 10x Genomics was the rightful patent holder. But the chamber headed by Ronny Thomas ruled that 10x Genomics had sufficiently demonstrated that it had lawfully acquired the patent.
Curio requests English
Furthermore, in late January, Curio Bioscience applied to change the language of proceedings from German to English under Article 49(5) UPCA. It argued that both parties are US companies and that English is the language of the patent and underlying technology field. Curio’s operating language is also English.
As a result, the majority of documents in the proceedings are in English. In addition, Curio argued that, while it operates with a much smaller workforce than its competitor, it is disadvantaged by having to prepare documents in German within the strict time limits. However, president of the UPC court of first instance Florence Butin rejected these arguments.
Curio then turned to the UPC Court of Appeal. On 17 April, the appeals court issued its first decision on such a request. The court declared that it would take into account “all relevant circumstances” when dealing with a request to change the language of proceedings, with the “position of the defendant [the] decisive factor” if the interests between parties are balanced (case no: UPC_CoA_101/2024/ACT_5164/2024).
Tilmann Müller-Stoy
Language for the future
As such, the court of appeal largely followed Curio’s arguments. According to its decision on the language of proceedings, “the relevant circumstances brought forward by Curio Bioscience carry more weight than the relevant circumstances brought forward by 10x Genomics”.
Therefore, the court concluded that the previous order of the first instance must be set aside and “the language of the patent, i.e. English, shall be used as the language of the proceedings.”
Nevertheless, the Düsseldorf local division judges drafted their judgment in German. This means that the decision on the language of the proceedings will only take effect in a possible appeal of the PI proceedings. The main action remains pending.
Carpmaels goes it alone
A mixed team led by lawyer Tilman Müller-Stoy and patent attorney Axel Berger acted for 10x Genomics. The lawyers represented the US company in the previous disputes with NanoString at the UPC and at the Munich Regional Court.
Agathe Michel-de Cazotte
Mixed IP law firm Carpmaels & Ransford conducted the defence for Curio Bioscience. According to JUVE Patent information, local advisors from other law firms were not present. This marks the first time that a UK law firm has conducted UPC proceedings completely independently.
Carpmaels & Ransford’s European patent attorneys are mostly authorised to conduct UPC proceedings and in 2022, the firm secured London-based litigator Agathe Michel-de Cazotte. She is qualified as a French lawyer and also speaks German. Michel-de Cazotte acted for Curio in the present case, alongside lead partner Cameron Marshall.
For a detailed list of advisors, see our case preview. (Co-author: Christina Schulze)
Unified Patent Court, Düsseldorf local division (UPC_CFI_463/2023)
Ronny Thomas (presiding judge), Berenice Thom, Andras Kupecz, Martin Schmidt (TQJ)
