UPC CFI 252/2023
Jul 27, 2023·EP2794928 · COMPOSITIONS AND METHODS FOR ANALYTE DETECTION
Action number: ACT 551180/2023
- Case details
- StatusCase Closed (Patent revoked)ActionRevocationCategoryMain revocation action
- Parties
- Claimants
- NanoString Technologies Europe LimitedOperating co.
Representatives- Daniela Kinkeldey-Bird & Bird LLP
- Oliver Jan Jüngst-Bird & Bird LLP
- Jan van Dieck-Bird & Bird LLP
- Anne Halbach-Bird & Bird LLP
- Moritz Schroeder-Bird & Bird LLP
- Anna Schadel-Bird & Bird LLP
- Alexander Bothe-Bird & Bird LLP
Respondents- President and Fellows of Harvard CollegeUniversity / research
Representatives- Axel Berger-Bardehle Pagenberg
- Division
- Munich CD
- Technology
- InstrumentsAnalysis of biological materials
- ChemistryBiotechnology
- Language
- English
- First decided
- Oct 4, 2023
- Last decision
- Oct 17, 2024
| Patent revoked | Median days to first decision | |
|---|---|---|
| All UPC | 37% (34/91) | 124 |
| Munich CD | Locked | Locked |
| Judge Ulrike Voß | Locked | Locked |
| Judge András Kupecz | Locked | Locked |
| Judge Eric Enderlin | Locked | Locked |
At the UPC: NanoString Group (21 cases)·President and Fellows of Harvard College (21 cases)
This dispute contains 3 other proceedings
13 other defendants litigating the same or a related patent
UPC CFI 3233/2026·UPC CFI 1594/2026·UPC CoA 681/2025·UPC CoA 654/2024·UPC CoA 470/2023 and 8 more
- 2024-10-17Revocation ActionPublic
Summary: 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.
Show the legal issues (5)
- Revocation — novelty under Art. 54(1) EPC
- Inventive step over Göransson prior art
- Late auxiliary requests under R. 50.2 RoP
- Stay of proceedings / lis pendens under Art. 29–32 Brussels I Recast
- International jurisdiction of the UPC
- 2024-01-31Revocation ActionPublic
Summary: The Munich Central Division issued orders following the interim conference in the NanoString v. Harvard revocation action, admitting document D46 as prior art, confirming the oral hearing for 17 April 2024, and setting the value of proceedings at EUR 7.5 million.
Show the legal issues (3)
- Admission of prior art document D46 under Rules 103/105.5 RoP
- Setting of oral hearing date and value of proceedings
- Interim conference procedure
- 2024-01-31Revocation ActionPublic
Summary: 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.
Show the legal issues (3)
- Admission of late-filed prior art document (D46)
- Front-loaded proceedings and submission of prior art
- Value of proceedings set at EUR 7,500,000
- 2024-01-31Revocation ActionPublic
Summary: 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.
Show the legal issues (3)
- Admissibility of late-filed prior art document (D46)
- Front-loaded proceedings (R. 43 RoP)
- Interim conference procedure (R. 103/105.5 RoP)
- 2023-10-30Revocation ActionPublic
Summary: The Munich Central Division ordered Harvard College (claimant/defendant in revocation action) to provide security for legal costs under Article 69(4) UPCA and Rule 158 RoP, finding legitimate concern about enforcement of a potential cost order against NanoString Technologies Europe (a UK-based entity) in light of a preliminary injunction already imposed.
Show the legal issues (4)
- Security for legal costs (Art. 69(4) UPCA, Rule 158 RoP)
- Enforcement in UK
- Proportionality
- Article 47 EU Charter
- 2023-10-04Revocation ActionPublic
Summary: The Munich Central Division ordered that a preliminary objection based on Articles 29 and 30 Brussels Ibis Regulation (lis pendens / related actions) be dealt with in the main proceedings rather than separately, for reasons of procedural economy and efficiency under Rule 20.2 RoP.
Show the legal issues (4)
- Preliminary objection (Rule 48 RoP)
- Jurisdiction (Arts. 29-30 Brussels Ibis)
- Lis pendens
- Rule 20.2 RoP
| Document title | Date | Public |
|---|---|---|
| Procedural Order | 2025-01-03 | Not public |
| Order re Release of Security | 2024-12-17 | Not public |
| Headnote-and-Keywords | 2024-12-17 | Not public |
| Outcome of the Order | 2024-12-17 | Not public |
| final order application to release security | 2024-12-17 | Public |
| final order application to release security | 2024-12-17 | Not public |
| Template-Order | 2024-12-17 | Not public |
| Reply | 2024-12-09 | Not public |
| 241125 NanoString - Response to order re security | 2024-11-25 | Not public |
| preliminary order | 2024-11-18 | Not public |
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
ClaimantLegal basis: Art. 54(1) EPCNote: 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 EPCNote: 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 RoPNote: 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
RespondentLegal basis: Art. 30 Brussels I recast RegulationReason: 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 EPCReason: 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.
Browse other cases on this principle.
- GöranssonNovelty-destroying
- D46Obviousness combination
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.