NanoString Technologies Europe v President and Fellows of Harvard College (CFI, 17 October 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision of 17 October 2024 (UPC_CFI_252/2023), the Munich Central Division upheld NanoString Technologies Europe’s revocation action against EP 2 794 928 of the President and Fellows of Harvard College, which concerns a method of detecting multiple analytes through successive hybridisations of decoder probes. Claim 1 as granted lacks novelty over the Göransson paper (D10), auxiliary request 1 lacks inventive step over the same document and auxiliary requests 2 to 8 cannot save the patent in part, so it is revoked in its entirety. The decision is also notable for the refusal to stay pending German proceedings on the German part of the patent and for the rejection of a late auxiliary request. The patent was revoked for France, Germany and the Netherlands, and the proprietor was ordered to bear NanoString’s costs (operative part, points 1 and 2).

Facts and procedure

The patent, in force in Germany, the Netherlands and France, was granted on 20 February 2019. A revocation action was brought on 29 July 2022 before the Federal Patent Court by NanoString Technologies Germany, which revoked the German part on 7 May 2024, an appeal is pending before the Federal Court of Justice (paragraphs 1.2 and 5.10). The UPC action was filed on 27 July 2023 (paragraph 1.1). The Munich Local Division had refused provisional measures based on the patent on 10 October 2023 (paragraph 1.3). The preliminary objection based on lis pendens was withdrawn at the hearing of 18 September 2024 (paragraphs 1.5 and 5.4).

The applicable law

International jurisdiction is examined of the Court’s own motion under the Brussels I recast Regulation, in particular Articles 29 to 31 and 71c, and Article 32(1)(d) UPCA (paragraphs 5.6 and 5.9). Novelty and inventive step fall under Articles 54 and 56 EPC, admission of a subsequent application to amend is governed by Rules 30.2 and 50.2 RoP.

Question

Should the UPC stay the action pending the Federal Court of Justice’s ruling, and is the claimed method, as granted and as amended, novel and inventive over Göransson?

Decision

The NanoString group companies are not the same parties within Article 29 of the Regulation: membership of the same group is not enough, so Articles 29 and 31 do not apply (paragraphs 5.16 and 5.17). The actions are related under Article 30, but the Division refused a stay: both parties sought a decision, the case was ready, the German ruling was not expected within a year, the Dutch and French parts had to be decided in any event and the Federal Patent Court had reached the same result (paragraphs 5.18 to 5.21), the same outcome followed under Rule 295(m) RoP (paragraph 5.22). The claim does not require the same detection reagent to remain bound throughout the method (paragraphs 8.23 to 8.33), and Göransson discloses every feature directly and unambiguously (paragraph 9.15). The new auxiliary request 2, filed in March 2024 after the written procedure had closed, was refused: the Court of Appeal’s construction in NanoString v 10x Genomics was no surprise, the point having been in issue since the reply of 27 November 2023 (paragraphs 10.3 and 10.4). For auxiliary request 1, limited to in situ use, Göransson was a realistic starting point and transferring its decoding method in situ was obvious, with no particular difficulties expected (paragraphs 11.22 to 11.42). The claim sets no number of analytes, time, sensitivity or resolution, and the patent contains no experimental example of a FISH method with RNA as analyte: the in situ difficulties relied on by the proprietor cannot support inventive step without a concrete technical teaching (paragraph 11.43). Auxiliary requests 2 to 8 (fixed cell samples, spatial location, FISH, removal of the signal by cleavage, length of the subsequences and probes, a plurality of at least two) add no inventive contribution (paragraphs 12.1 to 12.6). The patent was therefore revoked in its entirety without the other grounds being examined, the Division noting that its outcome matches the Federal Patent Court and the Court of Appeal’s ruling in NanoString v 10x Genomics (paragraphs 13.1 to 13.3). The proprietor, as the unsuccessful party, bears the costs (Article 69 UPCA and Rule 118.5 RoP, paragraph 14.1).

Key points for practice

• Membership of the same group does not make two companies the same parties under Article 29 of the Brussels I recast Regulation (paragraph 5.16).
• A stay under Article 30 is refused where the case is ready for decision and other national parts of the patent must be decided anyway (paragraph 5.20).
• An auxiliary request filed in response to a Court of Appeal ruling is late if the construction point was already in dispute (paragraph 10.4).
• Practical point: proprietors should file with the defence auxiliary requests covering every plausible construction raised in the pleadings.

Provisions applied

Agreement on a Unified Patent Court

Arts. 32(1)(d), 65, 69 and 83(3)

Rules of Procedure

Rules 30.1, 30.2, 50.2, 118.5 and 295(m)

European Patent Convention

Art. 54, 56, 69 and 138(1)

Regulation (EU) No 1215/2012

Arts. 29, 30, 31 and 71c

Case law cited

NanoString v 10x Genomics, Court of Appeal, 26 February 2024, VusionGroup v Hanshow, Court of Appeal, 13 May 2024, Carrier v Bitzer, Court of Appeal, 28 May 2024, Sanofi v Amgen, Munich Central Division, 16 July 2024, Mala v Nokia, Court of Appeal, 17 September 2024, Mammut v Ortovox, Court of Appeal, 25 September 2024, 10x Genomics v NanoString, Munich Local Division, 19 September 2023, Munich Local Division, 10 October 2023, UPC_CFI_17/2023, Munich Local Division, 27 August 2024, UPC_CFI_201/2024

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.