Introduction: The Groundbreaking Preliminary Injunction
The Court of Appeal of the Unified Patent Court has overturned the first instance decision to grant a pan-European preliminary injunction to Harvard University (proprietor) and 10x Genomics (licensee) in their ongoing UPC infringement claim against NanoString Technologies based on unitary patent EP4108782. The original preliminary injunction was the first time the UPC granted a truly pan-European injunction covering 17 countries, demonstrating the power and value of the new UP & UPC system.
In the first instance decision, the Munich Local Division of the UPC found that the patent is valid with a sufficient degree of certainty—an essential criterion for the grant of provisional measures according to the UPC Rules of Procedure. The Court of Appeal took a broader interpretation of the claim than the Court of First Instance and found that the first instance decision erred in the substantive analysis of validity in finding that: “it is more likely than not that the subject-matter of claim 1… will prove to be obvious”.
UPC's Attractiveness in International Litigation
The Unified Patent Court remains a very attractive tool in the international litigation toolbox given the speed at which both the application for the preliminary injunction (3.5 months from filing to grant) and the main UPC infringement proceedings (expected within 12 months) proceed. Even though the Court of Appeal has now reversed the original decision, it did so on specific substantive grounds. Indeed, the Court of Appeal reaffirmed the first instance position that a “sufficient degree of certainty” that the patent is valid, as called for in the Rules of Procedure, corresponds to a relatively low standard of “more likely than not”, indicating that it will continue to be easier to obtain a wide-ranging preliminary injunction at the UPC than in most other major jurisdictions around the world.
This decision is a setback for 10x Genomics, but the preliminary injunction may have already had a significant impact. NanoString is currently navigating Chapter 11 bankruptcy proceedings in the USA and consumer confidence in a product that is still at risk of being permanently removed from the market at the conclusion of the main UPC infringement proceedings is likely to be low.
