Chloe Sullivan

November 2024

Background

The multi-territory dispute between NanoString and 10x Genomics, which has been ongoing in the US and Europe for quite some time, was expanded to the Unified Patent Court soon after it opened its doors in June last year.

The battle before the UPC began in September 2023, when European patent No. EP 4108782 B1, owned by Harvard College and licensed to 10x Genomics, was the subject of one of the first successful applications for a preliminary injunction before the UPC.

This article concerns the more recent UPC decision on a revocation action filed by NanoString against European Patent No. EP 2794928 B1, also in the name of Harvard College and licensed to 10x Genomics. Both European patents belong to the same patent family and protect a spatial profiling technology. 10x Genomics allege that NanoString’s use of CosMx technology for RNA detection infringes their patent family.

Summary of the Decision

Briefly, EP 2794928 was revoked at oral proceedings due to lack of inventive step of one of the auxiliary requests on file.

The Court came to the decision that the claims as granted lacked novelty and so moved on to one of the auxiliary requests. The auxiliary request was then found to lack inventive step, but how the Court arrived at this finding is quite interesting.

The UPC’s Approach to the Assessment of Inventive Step

In deciding that the claims of the auxiliary request lacked an inventive step, the UPC did not apply the usual steps of the EPO problem-solution approach, as we know them.

Firstly, rather than defining the “objective technical problem” by identifying any features of the claims which are considered novel over the prior art and, from there, determining whether there are any surprising or non-obvious technical effects associated with such features, as we would expect the EPO to do, the UPC referred instead to the “underlying problem”. The UPC defined the underlying problem as the problem that the patent alleges to be solved by the invention. Hence, the UPC appear to be more inclined to take the patentee’s definition of the problem to be solved at face value, as opposed to defining their own problem to be solved in the same way we would expect the EPO to.

The Court then went on to consider the motivation of the skilled person to modify the prior art in order to arrive at what is being claimed. In doing so, rather than asking how the skilled would solve the objective technical problem, as we would expect the EPO to, the UPC identified various passages in the prior art which suggested that the methods disclosed therein were ‘generic’ and the UPC interpreted these passages to indicate that the disclosure could be modified to lead the skilled person to the claimed invention.

These subtle differences with respect to the well understood EPO problem-solution approach appear to be common across a number of recent UPC decisions, indicating that the UPC may be moving towards a slightly different approach to inventive step, specifically when it comes to the assessment of inventive step for inventions in the life sciences sector.

The UPC’s Competence to Hear to the Case

Another reason why this case is interesting is because 10x Genomics questioned the competence of the UPC to hear the case, in respect of parallel litigation already taking place before the German national court.

The UPC’s decision, on this matter in particular, comes at a convenient time following the recent decision on the Nokia v Mala case, in which the Court of Appeal of the UPC confirmed that the UPC does not have jurisdiction to hear a case if proceedings involving the same cause of action and between the same parties are pending before the national court of a UPC Member State. Our recent article reporting on this decision can be found here.

In the present case, EP 2794928 B1 is a granted European patent in effect in Germany, the Netherlands and France. The proprietor did not request unitary effect, but the patent has not been opted out of the UPC, hence why NanoString were able to bring a revocation action before the UPC.

10x Genomics argued the UPC is not competent to decide on the validity of the German patent resulting from EP 2794928 B1, due to a revocation action already pending before the German national court involving the same parties. Earlier this year the German patent was revoked by the German Federal Patent Court, 10x Genomics appealed this decision and the appeal is currently pending at the German Federal Court of Justice.

10x Genomics raised a preliminary objection, alleging that the UPC do not have jurisdiction to hear the case under Article 29 of the Brussels I Regulation (otherwise referred to as the “lis pendens” rules). According to this provision, where proceedings involving the same cause of action and between the same parties are brought in the courts of different Member States any court other than the court first seized shall decline jurisdiction in favour of that court.

The key difference between the present case and the recently decided Nokia v Mala case is that the claimants are not identical in the present case. Specifically, in the present case, NanoString Technology Germany are the claimant before the German national court and NanoString Technology Europe are the claimant before the UPC.

10x Genomics initially argued that NanoString Technology Germany belong to the same group as NanoString Technology Europe, therefore they form part of the same party. NanoString countered this argument by protesting that the claimants should not be considered the same party within the meaning of Article 29 merely because they belong to the same group.

At the oral hearing, 10x Genomics actually withdrew their preliminary objection. However, the Munich Central Division still addressed the point, and it was concluded that NanoString Technologies Germany and NanoString Technologies Europe are not the same legal entity, hence their interests are not necessarily identical. Thus, Article 29 does not apply in the present case and the UPC do have jurisdiction.

Upon asserting their competency to hear the case, the Munich Central Division decided that the patent should be revoked and, hence, EP 2794928 B1 is now invalid in France and the Netherlands, as well as Germany. Although, given the history between NanoString and 10x Genomics, this is unlikely to mark the end of the battle in Europe. As mentioned, the decision of the German national court is already under appeal and this UPC decision is also subject to appeal.