UPC_CFI_2/2023

COMPOSITIONS AND METHODS FOR ANALYTE DETECTION

Provisional measuresProvisional MeasuresMunich LDProvisional measuresCase Closed

Overview Decisions Reasoning Citations Documents Timeline

Plain-English summary

10x Genomics and President and Fellows of Harvard College obtained provisional measures against NanoString Technologies before the Munich Local Division for infringement of unitary patent EP 4108782 covering spatial genomics analyte detection methods. The court found preponderant likelihood of validity and infringement, and granted an injunction against MERSCOPE decoder probes covering both direct and indirect infringement, with EUR 250,000-per-violation penalties. In subsequent penalty proceedings, the court imposed a EUR 100,000 penalty for NanoString's failure to promptly update its website in compliance with the order, clarifying that no separate enforcement order is needed under Art. 82(4) UPCA for Art. 62 provisional measures.

Accepted arguments

What the court agreed with — by party.

Prima facie validity of unitary patent EP 4108782 established at preponderant likelihood standard
ClaimantLegal basis: Art. 62 UPCA
Note: No relevant prior art was presented by NanoString; court found preponderant likelihood of validity sufficient.
NanoString MERSCOPE decoder probes directly and indirectly infringe EP 4108782 (spatial genomics method patent)
ClaimantLegal basis: Art. 62 UPCA; Art. 64 UPCA
Note: Court found both direct infringement by applying the patented method and indirect infringement through supply of decoder probes as essential components.
Urgency: enforcement of European patent without unitary effect in all member states separately is not an equivalent remedy to UPC enforcement; delay assessed from when UPC enforcement became possible
ClaimantLegal basis: Art. 62 UPCA
Note: Court accepted that prior national enforcement steps do not amount to unreasonable delay for UPC provisional measures purposes.

Rejected arguments

What the court did not agree with — and why.

Applicants delayed unreasonably in seeking provisional measures
RespondentLegal basis: Art. 62 UPCA
Reason: Delay must be assessed from when infringement became known and from when UPC enforcement was available; prior enforcement of European patents nationally is not equivalent and does not start the delay clock for UPC measures.

Key legal principles

Doctrines and rules cited in the reasoning.

Preponderant likelihood of validity is necessary and sufficient for provisional measures under Art. 62 UPCA Delay for provisional measures purposes runs from when UPC enforcement of the unitary patent became possible, not from when the patentee first became aware of infringement generally Enforcement of national European patents piecemeal is not equivalent to UPC unitary patent enforcement; therefore prior national enforcement steps do not constitute unreasonable delay No separate enforcement order under Art. 82(4) UPCA is required before imposing penalty for breach of Art. 62 UPCA provisional measures order National enforcement law requirements of contracting member states do not apply to penalty enforcement of UPC provisional measures orders

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Claim construction notes

The Munich Local Division construed claim 1 of EP 4108782 (a spatial genomics method for analyte detection using decoder probes). The court found that NanoString's MERSCOPE decoder probes fell within the claim scope for both direct and indirect infringement. The court also addressed indirect infringement, finding that decoder probes are essential components for application of the patented method.