10x Genomics v Vizgen (CFI, 15 August 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 15 August 2024 (UPC_CFI_22/2023), the judge-rapporteur of the Hamburg Local Division, in the infringement action brought by 10x Genomics and President and Fellows of Harvard College against Vizgen on EP 4 108 782, accepted that an application for production of evidence (Rule 190 RoP) may be used to support an abuse of rights defence, which does not derive directly from the UPCA. She ordered production, within two weeks, of the licence agreement of 9 September 2019 between Harvard and ReadCoor and its amendments, but dismissed the requests for emails and for documents on price-based exclusionary abuse, which lies outside the UPC’s jurisdiction.

Question

Can production of documents held by the opponent be ordered to support an abuse of rights defence or competition law objections raised against an infringement action?

Decision

The « claims » referred to in Art. 59(1) UPCA and Rule 190 RoP also cover defences based on general principles of civil law, such as the prohibition of abuse of rights, recognised in all Member States and by the Court of Justice. The defence is only relevant, however, where the conduct relied on is connected with the parties’ relationship and with the claims arising from the infringement (grounds, I). The ReadCoor agreement is relevant: beyond the undisputed grant of an exclusive licence, its content is unknown to Vizgen and may shed light on the no-conflict warranty given in Vizgen’s own licence (II.1). The emails were not linked to any specific defence (II.2). Price-based exclusionary abuse has no bearing on infringement and is a matter for the Commission, national competition authorities or competent courts. The UPC only deals with abuse of dominance arising from the enforcement of the patent (II.3). Production is necessary: the claimants refused cross-use of the US protective order, and Vizgen was not required first to use the 35 U.S.C. § 1782 procedure (III).

Key points for practice

• An abuse of rights defence can support a production request, provided it is connected with the parties’ relationship and the alleged infringement.
• Practical point: competition objections based on pricing policy fall outside the UPC and do not justify production, US discovery and Rule 190 RoP are independent routes.

Provisions applied

Agreement on a Unified Patent Court

Arts 1(1), 32(1)(a) and 59(1)

Rules of Procedure

Rules 190 and 191

Regulation (EU) No 1257/2012

Art. 5(3)

Case law cited

CJEU, 5 July 2007, Kofoed, C-321/05, CJEU, 22 November 2017, Cussens, C-251/16, CJEU, 26 February 2019, T Danmark and Y Denmark, C-116/16 and C-117/16.

Related decisions

• 10x Genomics v Vizgen, 1 November 2024, later order granting a further production request on the same basis.

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.