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Overview · Filed: —

ACT_551180/2023

COMPOSITIONS AND METHODS FOR ANALYTE DETECTION

RevocationMain Revocation ActionMunich CDRevocation Action—
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Plain-English summary

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.

Accepted arguments
What the court agreed with — by party.

  • Claim 1 as granted lacks novelty over Göransson

    ClaimantLegal basis: Art. 54(1) EPC

    Note: 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

    ClaimantLegal basis: Art. 56 EPC

    Note: 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

    ClaimantLegal basis: R. 50.2 RoP; R. 30.2 RoP; Preamble 7 RoP

    Note: 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.

Rejected arguments
What the court did not agree with — and why.

  • Proceedings should be stayed pending related national revocation action

    RespondentLegal basis: Art. 30 Brussels I recast Regulation

    Reason: 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

    RespondentLegal basis: Art. 56 EPC

    Reason: 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.

Key legal principles
Doctrines and rules cited in the reasoning.
novelty assessment requires direct and unambiguous disclosure of all claim features in prior artfront-loaded proceedings require parties to set out full case as early as possiblediscretion to stay proceedings where related national action pendinginternational jurisdiction examined of own motion where required by Union lawinventive step assessed using problem-solution approach

Browse other cases on this principle.

Prior art relied on
References cited and the role they played.
  • GöranssonNovelty-destroying
  • D46Obviousness combination
Claim construction notes

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.