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UPC CFI 187/2024

Apr 22, 2024·EP1910572 +1 more · METHODS OF DETECTING NUCLEIC ACIDS IN INDIVIDUAL CELLS AND OF IDENTIFYING RARE CELLS FROM LARGE HETEROGENEOUS CELL POPULATIONS

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Case details
Status
Case Closed (No infringement)
Action
Infringement
Category
Main infringement action
Parties
Claimants
Representatives
  • Judith Krens-Pinsent Masons
  • Christopher Sharp
  • Kristina Cornish
  • Nicolas Bitsch
Respondents
Representatives
  • Marianne Schaffner-Gowling WLG
  • Matthew Spencer
  • James Legg
  • Anne Marie Verschuur
  • Celine Bey
Patents
Division
The Hague LD
Judges
Technology
  • Chemistry
    Organic fine chemistry · Biotechnology · Chemical engineering
Language
English
First decided
Nov 18, 2025
EPO Opposition
  • Affymetrix, Inc.Admissible2015-04-27
How this compares
The court's record for this kind of case, counted in first-instance rulings. A figure in brackets is the number of rulings a rate rests on.
Infringement foundMedian days to first decision
All UPC53% (62/117)124
The Hague LDLockedLocked
Judge Edger BrinkmanLockedLocked
Judge Margot KokkeLockedLocked
Judge Alima ZanaLockedLocked
Judge Michael AltLockedLocked

At the UPC: Advanced Cell Diagnostics, Inc. (2 cases)·Molecular Instruments, Inc. (2 cases)

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Related cases

This dispute contains 1 other proceedings

UPC CFI 507/2024

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More cases: The Hague LD·2024

Decisions
  • 2025-11-18
    Infringement ActionPublic

    Summary: The Hague Local Division decided in proceedings on infringement and counterclaim for revocation concerning Advanced Cell Diagnostics' RNAscope technology patents (EP 1 910 572 and EP 2 500 439) against Molecular Instruments; the decision addressed novelty, inventive step, and infringement of in situ hybridisation method claims.

    Show the legal issues (4)
    • In situ hybridisation RNA detection method patents
    • Novelty
    • Inventive step
    • Infringement
Documents
Show all 400 documents
Document titleDatePublic
Case closed2025-11-25Not public
Oral procedure closed2025-11-18Not public
Decision2025-11-18Not public
Decision2025-11-18Public
Communication2025-11-13Not public
Other Documents2025-10-29Not public
Cover sheet2025-10-03Not public
Other document2025-10-03Not public
Other document2025-10-03Not public
Receipt2025-10-03Not public
Plain-English summary

Advanced Cell Diagnostics (ACD) sued Molecular Instruments for infringement of its RNAscope in situ hybridisation patents EP 1 910 572 and EP 2 500 439 at The Hague Local Division. The court upheld both patents as valid (dismissing Molecular Instruments' revocation counterclaim) but found no infringement, either literal or by equivalence, because Molecular Instruments' HCR products use probes with a 1-4 nucleotide overlap rather than the strictly non-overlapping arrangement claimed, and that overlap serves an independent technical function that distinguishes the HCR approach from the patented invention.

Accepted arguments
What the court agreed with — by party.

  • Both EP 1 910 572 and EP 2 500 439 are valid (novelty and inventive step upheld); counterclaim for revocation dismissed

    ClaimantLegal basis: Art. 54 EPC; Art. 56 EPC

    Note: The court dismissed Molecular Instruments' counterclaim for revocation in its entirety, confirming both RNAscope patents are valid.

  • Equivalence arguments introduced in the reply to the statement of defence are admissible

    ClaimantLegal basis: R. 7 RoP

    Note: Court held the equivalence arguments were a legitimate response to the defence, directed to the same patent and same accused products, and the defendant had full opportunity to respond.

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

  • Literal infringement of claim features 1(d)(iii), 1(h), 1(j) and 1(k)(iii) of EP 1 910 572 by HCR Products

    ClaimantLegal basis: Art. 25 UPCA

    Reason: Defendant's HCR products use probes that hybridise to partly overlapping regions of the hairpin initiator rather than to non-overlapping regions as claimed in feature 1(h); the product does not literally implement the 'non-overlapping' feature.

  • Infringement by equivalence for the missing 'non-overlapping' feature 1(h)

    ClaimantLegal basis: Doctrine of equivalents

    Reason: The court rejected equivalence on three grounds: (1) legal certainty for third parties makes it impossible to define how much overlap is still equivalent; (2) the patents are not a major inventive step so fair protection does not require equivalence; (3) the 1-4 nucleotide overlap in HCR has an independent technical function (kinetic barrier reduction) serving a different way of achieving the result, making it more than a mere work-around.

Key legal principles
Doctrines and rules cited in the reasoning.
Doctrine of equivalents: fair protection balanced against legal certainty for third partiesEquivalence rejected where alternative design has an independent technical function of its own, not merely a work-aroundPatents representing modest inventive contribution do not demand broad equivalence scopeEquivalence arguments first raised in reply are admissible where they respond to defence arguments and relate to the same featuresCounterclaim for revocation dismissed where both patents found valid

Browse other cases on this principle.

Prior art relied on
References cited and the role they played.
  • WO 2007/001986 A2 (WO986) — EP572 priority documentBackground
Claim construction notes

The disputed claim feature was 'non-overlapping' regions in the probe/hairpin hybridisation scheme of EP 1 910 572 claim 1 (feature 1(h)). The court found that HCR products use probes hybridising to partly overlapping regions (1-4 nucleotide overlap), which does not literally meet the 'non-overlapping' requirement. On equivalence, the court held that the 1-4 nucleotide overlap is technically functional and not a mere cosmetic variant, relying heavily on the specific energy-relaxation mechanism that the overlap enables.