10x Genomics v Vizgen (CFI, 1 November 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 1 November 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, granted Vizgen’s third production request: emails and deposition transcripts obtained in discovery in the parallel proceedings before the US District Court for the District of Delaware, together with the deposition of a Bio-Techne witness. The documents are reserved to the representatives registered in the CMS and their staff. The order builds on that of 15 August 2024 on the abuse of rights defence and sets out how US discovery material can be brought before the UPC.

Question

Can documents disclosed in US discovery under a protective order be produced before the UPC to support an abuse of rights defence, and under what confidentiality regime?

Decision

Referring to the order of 15 August 2024, the judge-rapporteur confirmed that an abuse of rights defence can ground a request under Art. 59(1) UPCA and Rules 190 and 191 RoP (grounds, I). The documents, described in terms agreed between the parties and submitted to the US court, might show Harvard’s knowledge of certain matters when negotiating Vizgen’s licence, coordination between the claimants and use of the action to unsettle customers. Not all are decisive, but they must be assessed together (II.1 and II.2). The request is proportionate, since the documents are already in the US record (II.3). Necessity is established: the claimants refused cross-use, and the 35 U.S.C. § 1782 procedure is not a prerequisite. Production within two weeks, on an « outside attorneys’ eyes only » basis (Rule 262A RoP), without prejudice to access by counsel in the US case.

Key points for practice

• Practical point: a party whose US counsel hold discovery documents under a protective order can obtain their production before the UPC by identifying them by production number, and the court may mirror the « outside attorneys’ eyes only » regime.

Provisions applied

Agreement on a Unified Patent Court

Art. 59(1)

Rules of Procedure

Rules 190, 191, 262A and 333

Case law cited

10x Genomics v Vizgen, Hamburg Local Division, 15 August 2024, orders of the same division of 15 August 2024 (confidentiality) and 22 October 2024 (Rule 333) in the same case.

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.