UPC infringement case can resume after EPO upholds 10x Genomics patent

EP 4 108 782 is one of the patents-in-suit in 10x Genomics’ high-profile UPC battle with NanoString. The patent belongs to Harvard University and protects a spatial profiling technology. 10X Genomics is exclusive licensee.

In February 2024 the UPC Court of Appeal had concerns about the validity of EP 782 and denied 10x Genomics a Europe-wide PI. Now, according to law firm Bardehle Pagenberg, the EPO Opposition Division has upheld the patent in amended form.

As a result, the infringement proceedings against NanoString at the Munich local division can now proceed. The court had stayed the case due to the validity challenge at the EPO. NanoString can lodge an appeal against the EPO’s decision with the Boards of Appeal.

Full focus on infringment

However, 10x Genomics, with the help of its regular advisors from Bardehle Pagenberg, will probably do everything in its power to ensure that the UPC proceedings are now resumed. As a precautionary measure, the court had already set a date for the oral hearing in mid-September 2025.

It is unlikely 10x Genomics will mount a second attempt to obtain a PI, as the UPC could rule on the permanent injunction more quickly than on a new PI application.

The first PI proceedings between 10x Genomics and NanoString concerning EP 782 led to the UPC Court of Appeal’s first landmark judgment. In February 2024, the Court of Appeal overturned the Munich local division’s preliminary injunction against NanoString in Europe.

The court ruled that EP 782 would likely be declared invalid in the main proceedings. Consequently, there was no basis for the PI.

Second case on hold

10x Genomics also filed a second case against NanoString over infringment of EP 2 794 928. But in October 2024, the Munich central division found EP 928 invalid due to lack of novelty and lack of inventive step of one of the auxiliary requests. The ruling is subject to appeal.

In early October 2023, the Munich local division had denied 10x Genomics a PI against NanoString based on EP 928.

Bardehle has a very close relationship with 10x Genomics and its chief legal officer Eric Whitaker. Patent attorney Axel Berger as well as lawyers Tilman Müller-Stoy and Tobias Wuttke lead the Bardehle Pagenberg team.

NanoString has relied on a mixed team from Bird & Bird since 10x Genomics brought the initial claims to German courts. Munich-based patent attorney Daniela Kinkeldey and Düsseldorf-based partner Oliver Jüngst are leading the case.