ACT 551180/2023
—·EP2794928: COMPOSITIONS AND METHODS FOR ANALYTE DETECTION
- Verfahrensdetails
- Status—VerfahrensartNichtigkeitKategorieHauptnichtigkeitsklage
- Parteien
- Division
- Munich CD
- Richter
- Andras Kupecz · Judge-Rapporteur (Munich Central Division)
- Technology
- Biotech · Analyte Detection · Biotechnology
- Sprache
- —
- Erste Entscheidung
- 31. Jan. 2024
- Letzte Entscheidung
- 17. Okt. 2024
- 2024-10-17Nichtig erklärtNichtigkeit (Hauptsache)Revocation Action
The Munich Section of the Central Division revoked European Patent EP 2 794 928 B1 (owned by President and Fellows of Harvard College) in its entirety, with effect in France, Germany, and the Netherlands, in a revocation action brought by NanoString Technologies Europe Limited. The Court found that the main claim lacked novelty over the prior art disclosure 'Göransson', and that all eight auxiliary requests (AR1–8) also lacked inventive step over Göransson. Harvard's auxiliary requests to amend the patent were all rejected. Harvard as the unsuccessful party must bear NanoString's legal costs.
Rechtsfragen:Revocation — novelty under Art. 54(1) EPCInventive step over Göransson prior artLate auxiliary requests under R. 50.2 RoPStay of proceedings / lis pendens under Art. 29–32 Brussels I RecastInternational jurisdiction of the UPC - 2024-01-31Revocation Action
The Munich Central Division judge-rapporteur issued an interim conference order (R. 103/105.5 RoP) in the revocation action by NanoString Technologies Europe against Harvard concerning EP 2 794 928. The order recorded directions from the interim conference, including admission of document D46 with a response period for the defendant, and setting the value of proceedings at EUR 7,500,000.
Rechtsfragen:Admission of late-filed prior art document (D46)Front-loaded proceedings and submission of prior artValue of proceedings set at EUR 7,500,000 - 2024-01-31Revocation Action
Procedural order from Munich Central Division (judge-rapporteur András Kupecz) following the interim conference in a revocation action brought by NanoString Technologies Europe Limited against President and Fellows of Harvard College concerning EP 2 794 928. The order addresses admissibility of document D46 (filed as prior art in the reply): the defendant withdrew its objection, D46 was admitted into proceedings, and the defendant was given six weeks to respond in writing. Further, the judge-rapporteur indicated the case value for cost purposes. No substantive ruling.
Rechtsfragen:Admissibility of late-filed prior art document (D46)Front-loaded proceedings (R. 43 RoP)Interim conference procedure (R. 103/105.5 RoP)
- 66B26211CD475B24EBA8673C72B85610_en.pdf2024-01-31EN
- A38FC42F5189D122AAF606457A2ADAFB_en.pdf2024-01-31ENGLISH
- E3525787BD221DB1D17219E701C341E3_en.pdf2024-10-17EN
NanoString Technologies Europe Limited brought a revocation action before the Munich Central Division against President and Fellows of Harvard College concerning EP 2 794 928, a patent directed to compositions and methods for analyte detection. The court found claim 1 as granted lacked novelty over the prior art document Göransson, and all eight auxiliary requests lacked inventive step, resulting in full revocation of the patent with effect in France, Germany, and the Netherlands. The decision aligned with the German Federal Patent Court's findings and the Court of Appeal's reasoning in a related NanoString/10x Genomics appeal.
Claim 1 as granted lacks novelty over Göransson
KlägerRechtsgrundlage: Art. 54(1) EPCHinweis: NanoString successfully established that the subject-matter of claim 1 of EP 2 794 928 was directly and unambiguously disclosed in the prior art document Göransson, resulting in revocation of the main request.
All auxiliary requests 1–8 lack inventive step over Göransson
KlägerRechtsgrundlage: Art. 56 EPCHinweis: The Central Division (Munich) found that each of Harvard's eight auxiliary requests also failed to establish inventive step over Göransson, as none of the additional features rendered the claimed subject-matter inventive.
Subsequent auxiliary requests should not be admitted as they could and should have been filed earlier under the front-loaded UPC procedure
KlägerRechtsgrundlage: R. 50.2 RoP; R. 30.2 RoP; Preamble 7 RoPHinweis: The court declined to admit late-filed auxiliary requests from Harvard on the basis that the front-loaded nature of UPC proceedings requires parties to set out their full case as early as possible.
Proceedings should be stayed pending related national revocation action
BeklagterRechtsgrundlage: Art. 30 Brussels I recast RegulationBegründung: The Central Division declined to exercise its discretion to stay proceedings under Art. 30 Brussels I recast Regulation, finding the circumstances did not warrant a stay.
Auxiliary requests 2–8 render the claimed subject-matter patentable
BeklagterRechtsgrundlage: Art. 56 EPCBegründung: Each auxiliary request was found to lack inventive step for the same or analogous reasons as AR1; additional features such as cleavage-based removal, specified lengths of subsequences and decoder probes, and 'at least two' plurality were all held not to establish inventive step over Göransson.
Weitere Fälle zu diesem Grundsatz ansehen.
- GöranssonNeuheitsschädlich
- D46Erfindungsmüh-Kombination
The court interpreted 'a plurality' of predetermined subsequences as meaning 'at least two', which was consistent with NanoString's position and formed part of the basis for finding lack of novelty/inventive step against AR8. No further detailed claim construction is described in the available excerpt.