NanoString Technologies v 10x Genomics (CoA, 10 December 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In an order of 10 December 2024 (UPC_CoA_470/2023), given in German, the Court of Appeal set aside the Munich Local Division’s order of 5 December 2023 imposing a penalty payment of €100,000 on the NanoString companies for breach of a preliminary injunction obtained by 10x Genomics and the President and Fellows of Harvard College (EP 4 108 782). As the injunction itself had been set aside by the Court of Appeal on 26 February 2024, the penalty lost its legal basis, including for breaches committed before that date. The Court laid down the principle that setting aside a first-instance order has retroactive effect. In practice, a party enforcing a preliminary injunction through penalty payments bears the risk of the injunction being set aside on appeal.

Facts and procedure

On 19 September 2023 the Munich Local Division granted provisional measures against NanoString, backed by penalty payments of up to €250,000 per infringement. On 10x’s application under Article 82(4) UPCA and Rule 354.4, it imposed on 5 December 2023 a penalty of €100,000, finding among other things an offer to perform the patented method in NanoString’s Amsterdam laboratory and offers of CosMx products. On 26 February 2024 the Court of Appeal set aside the order of 19 September 2023 and dismissed the application for provisional measures. On 6 August 2024 it rejected 10x’s request to reopen those proceedings. The parties waived an oral hearing.

The applicable law

Article 75(1) UPCA and Rule 242.1 govern the effect of an appeal decision setting aside a first-instance decision. The Court read them in the light of Directive 2004/48, in particular Article 3, and of the mechanisms compensating the defendant where provisional measures are lifted (Articles 7(4) and 9(7) of the Directive, Articles 60(9) and 62(5) UPCA), referring to the CJEU judgment in Mylan v Gilead (paragraph 11).

Question

Can a penalty payment order stand, for earlier breaches, once the preliminary injunction on which it was based has been set aside on appeal?

Decision

Setting aside a first-instance order has, as a rule, retroactive effect: the order set aside is to be regarded as having had no legal effect from the outset. Setting aside a preliminary injunction backed by penalty payments therefore removes the legal basis for any subsequent penalty order, even in respect of breaches before the set-aside (paragraph 10). This is consistent with the balance struck by the Directive between protecting intellectual property rights and the rights of the defendant (paragraph 11). Since the impugned order rested on the injunction of 19 September 2023, it was set aside and 10x’s applications dismissed (paragraph 12). 10x bears the costs at both instances (paragraph 13), and the Registry was instructed to refund to NanoString the amount paid to comply with the order (paragraph 14).

Key points for practice

• Setting aside a preliminary injunction on appeal brings down the penalty payments ordered on its basis, whatever the date of the breaches.
• Sums paid under a penalty order deprived of its basis are refunded.
• The Court did not need to examine NanoString’s other grounds, the lack of a legal basis being decisive.
• Practical point: while an appeal against a preliminary injunction is pending, a penalty application remains exposed to retroactive annulment, which should be weighed before enforcement is pursued.

Provisions applied

Agreement on a Unified Patent Court

Arts 60(9), 62(5), 75(1) and 82(4)

Rules of Procedure

Rules 242.1 and 354.4

Directive 2004/48/EC

Arts 3, 7(4) and 9(7)

Case law cited

10x Genomics v NanoString, Munich Local Division, 19 September 2023, 10x Genomics v NanoString, Munich Local Division, 5 December 2023, NanoString v 10x Genomics, Court of Appeal, 26 February 2024, 10x Genomics v NanoString, Court of Appeal, 6 August 2024, CJEU, 11 January 2024, Mylan v Gilead, C-473/22

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.