10xGenomics v NanoString (CFI, 5 December 2023)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By an order of 5 December 2023 (UPC_CFI_2/2023, ACT_459746/2023, App_577241/2023), the Munich Local Division (judges Zigann, presiding, Pichlmaier, rapporteur, Kupecz and Enderlin, technically qualified) imposed on NanoString Technologies Inc., NanoString Technologies Germany GmbH and NanoString Technologies Netherlands B.V. a penalty payment totalling EUR 100,000, payable to the Court, for breach of the provisional measures order of 19 September 2023 granted to 10x Genomics, Inc. and the President and Fellows of Harvard College on the basis of EP 4 108 782.

The order clarifies the conditions for enforcing UPC provisional measures: service through the CMS is enough, without any prior national formality. It also sets out the criteria for fixing a penalty payment, which sanctions fault, and grants leave to appeal, the decision being among the first of its kind.

Facts and procedure

The order of 19 September 2023, served through the CMS on 20 September, prohibited in particular use of the patented method and offers of CosMx devices, reagents and probes in the listed states unless accompanied by a prominent disclaimer, under a penalty of up to EUR 250,000 per breach, and was immediately enforceable. On 28 September 2023 the applicants sought penalties for online offers, the promotion of events, user manuals and an offer of laboratory tours. The respondents argued that the national enforcement requirements (service, prior notice) were not met and denied any breach. The division decided without an oral hearing.

The applicable law

Art. 82(4) UPCA and Rule 354.4 RoP allow penalty payments payable to the Court for breach of an order. The conditions for a penalty are laid down exhaustively in Art. 82(4) UPCA, national enforcement law comes into play only if the penalty is not paid. Offering is understood within Art. 25(a) UPCA. Costs follow Art. 69 UPCA and Rule 118.5 RoP, applied by analogy.

Question

Is a provisional measures order served through the CMS enforceable without further formality, which publications amount to a breach, and how is the amount of the penalty to be fixed?

Decision

The order was enforceable upon service through the CMS, under Rule 354.1 RoP and its own terms: no prior notice, national enforcement order or party service was required, Rule 118.8 RoP does not apply to orders under Art. 62 UPCA.

The following were breaches: an offer on the website of the CX-Lab in Amsterdam to carry out the method, which a later disclaimer did not cure, a CosMx product page offering shipment without the required disclaimer, which was only added after 21 September 2023, promotion of summits in Paris and Frankfurt whose disclaimer was made confusing by wording suggesting unrestricted use, manuals with a disclaimer too small to be prominent, and the offer of laboratory tours expressly covering RNA analysis. The website content is attributed to the respondents.

A penalty payment serves both a coercive and a quasi-criminal purpose and requires fault. Its amount reflects the nature, extent and duration of the breaches, the degree of fault, the benefit obtained and the risk of further infringement. The breaches, traced to a single cause (the website design) and at least grossly negligent, are weighed against the short time since service and the corrections made, but also against the high revenue per instrument and the reagent market. The respondents, each liable for the whole, bear the costs, the amounts requested being only a proposal. The value of the penalty proceedings is set at EUR 250,000.

Key points for practice

• A UPC order served through the CMS and declared immediately enforceable can ground a penalty payment without any national formality.
• A disclaimer required by the order must be prominent and consistent with the rest of the marketing material. A tiny disclaimer, or one contradicted by the surrounding text, will not do.
• An applicant that obtains a finding of breach bears no costs even if the penalty imposed is lower than the amount suggested.
• Practical point: once provisional measures are served, the respondent must audit all its online material, manuals and service offers, as each non-compliant item may ground a penalty.

Provisions applied

Agreement on a Unified Patent Court

Art. 25(a), Art. 62, Art. 69(1) and (2), Art. 73(2)(b)(ii) and Art. 82(3) and (4)

Rules of Procedure

Rules 118.5, 118.8, 220.2, 264, 352.1, 354.1 and 354.4

Case law cited

myStromer AG v Revolt Zycling AG, Düsseldorf Local Division, 18 October 2023

Related decisions

• 10x Genomics v NanoString, 19 September 2023, provisional measures order whose breach is sanctioned.

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.