Bird & Bird succeeded in first substantive patent litigation appeal case at UPC Court of Appeal for NanoString

International law firm Bird & Bird achieved an outstanding success before the Court of Appeal of the UPC in the ongoing patent litigation between NanoString Technologies Inc. and group (NanoString) and 10x Genomics Inc. (10x Genomics) and President and Fellows of Harvard College (Harvard).

By Order of February 26, 2024, the Court of Appeal (CoA) of the Unified Patent Court has set aside the “decision and orders” of the Court of First Instance (Munich Local Chamber) dated 19/09/2023 - UPC CFI 2/2023 - and has fully dismissed a 10x Genomics/Harvard application for provisional measures (full document available here, in German).

The order is related to EP 4 108 782 and comes as part of a global patent dispute between the parties. In this overall context, the parent patent 2794928 B1 is litigated in Germany and at the UPC level, where a respective request for provisional measures launched by 10x/Harvard was already dismissed in the first instance on October 10, 2023 (UPC_CFI_17/2023).

This case is the first in many ways and for several parties. The respective request for provisional measures is dated June 1, 2023, so right at the start of the UPC. A protective letter by the Bird & Bird team was filed to shield against an ex parte order. The Munich Local Division then summoned for its first respective hearing which took place on September 5 and 6, 2023 and later substantially granted the application on September 19, 2023 thereby issuing the first order with injunctive relief enforceable in 17 UPC countries (the order was served on September 20, 2023). 

However, the Bird & Bird team filed the formal note of appeal to the CoA on September 25, 2023, only to follow-up with the substantial appeal reasons on October 2, 2023, i.e. even prior to expiry of the short 15 days deadline set out in ROP224(1)b.

The February 26, 2024 order is therefore the first substantive decision in an infringement/validity case and is based on the first hearing at the CoA which took place on December 18, 2023.

A parallel UPC main infringement action by Harvard/10x and validity attacks by NanoString (at the EPO as well as the UPC) are pending. It remains to be seen how the main case develops further. Another twist comes from a chapter 11 filing of NanoString entities in the US to restructure the business.

Bjorn Johnson, Vice President, Legal Affairs, at NanoString Technologies says: “A monumental victory!  Outstanding work by the Bird & Bird team.

Brad Gray, President and CEO of NanoString, says: “We have maintained from the outset of this case that the patents being asserted by 10x and Harvard against us are invalid. The court’s ruling is a significant validation of our position. We are grateful to the UPC Court of Appeal for its in-depth analysis of the validity of the patent at issue […]”.

Bird & Bird partners Oliver Jan Jüngst and Dr. Daniela Kinkeldey – representing successful NanoString Defendants in the matter – commented: “First and foremost we are very happy for our client that the Court of Appeal has lifted the Munich order regarding provisional measures based on its detailed concerns about validity. Secondly, and beyond this specific case, this first substantial CoA order in an infringement/validity case is historic and provides helpful guidance to UPC litigation in the future.

NanoString Technologies, Inc. (et al.) have been advised by Bird & Bird partner Oliver Jan Jüngst, LL.M. and counsel Dr. Moritz Schroeder, associate Dr. Alexander Bothe, all patent lawyers, Dusseldorf, partner Dr. Daniela Kinkeldey, counsel Dr. Jan van Dieck, counsel Dr. Anne Halbach and associate Dr. Anna Schadel, all patent attorneys, Munich.  

Background:

The Bird & Bird team already gained another exceptional decision for NanoString at the end of last year in the German litigation on the parent patent 2794928 B1. The German Higher Regional Court of Munich (Appeals Court; docket no. 6 U 2359/23 and 6 U 2360/23) decided that, in patent infringement proceedings initiated by 10x Genomics/Harvard, the enforcement of the judgments of the Regional Court of Munich, dated May 17, 2023 (First Instance Court; docket no. 7 O 2693/22 and 7 O 5812/22) is to remain against the provision of a security in the amount of EUR 2 million for NanoString Inc. and € 300.000 for NanoString GmbH. Read here.

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