10x Genomics v NanoString (CFI, 19 September 2023)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By decision of 19 September 2023 (UPC_CFI_2/2023, App_528389/2023), the Munich Local Division, sitting as a panel of four including a technically qualified judge, ruled on the application for provisional measures brought by 10x Genomics and President and Fellows of Harvard College against three NanoString companies on the basis of the unitary patent EP 4 108 782. It held the main request admissible and largely well founded and ordered, in seventeen States, an injunction without security, with a penalty of up to EUR 250,000 per breach, the value in dispute being set at EUR 7,000,000. Its headnotes lay down three principles of general reach: validity must be shown on a preponderance of probability, delay is assessed for a unitary patent from the time an application to the UPC became possible, and national enforcement of a classic European patent is not equivalent to enforcing a unitary patent before the UPC.

Facts and procedure

The patent, a divisional filed on 27 April 2022 and entitled « Compositions and methods for analyte detection », was granted on 11 May 2023 after a request to defer grant. Unitary effect was requested on 9 May 2023. Harvard, the registered proprietor, licensed it to 10x Genomics for Germany and then for the other UPC states. The applicants targeted the CosMx Spatial Molecular Imager and associated reagents and consumables. On 17 May 2023 the Munich Regional Court I had found infringement of the German part of the parent patent. The application, received on 1 June 2023, was heard on 5 and 6 September 2023, NanoString filed an EPO opposition in July 2023 and raised lack of jurisdiction, inadmissibility, Harvard’s lack of standing under the Bayh-Dole Act, invalidity, non-infringement, lack of urgency and disproportionality.

The applicable law

The application falls under Art. 62 UPCA and Rules 206 et seq. RoP. The Local Division’s jurisdiction rests on Art. 33(1)(a) UPCA, and the registered proprietor’s standing on Art. 47(1) UPCA.

Question

Does the Munich Local Division have jurisdiction, is the application admissible, and by what standards are validity, delay and the availability of other means of enforcement to be assessed where a unitary patent is relied on?

Decision

A plausibly pleaded infringement suffices for jurisdiction, without a full legal assessment at that stage: an online offer with delivery within the Union, deliveries to a Berlin institute and promotional events in Hanover and Würzburg, attributed to all respondents, were taken into account. The requirements of Rule 206.2(d) RoP regarding validity are not to be applied too strictly. Rule 206.2(e) RoP, which calls for a short description of the main action, is disapplied by teleological reduction where the measure sought coincides with the relief on the merits. Whether the application is unfounded is a merits question, not one of admissibility. There is a legal interest, as UPC decisions take effect in all Contracting Member States and the national action concerned the parent patent. Harvard, as registered proprietor, has standing, its compliance with the Bayh-Dole Act not being disputed. 10x sues at least as non-exclusive licensee under Art. 47(3) UPCA, the validity of an exclusive licence remaining doubtful in view of a decision of the US District Court for the District of Delaware. According to the headnotes, validity must be established on a preponderance of probability, which is both necessary and sufficient. Delay is assessed by first establishing when the applicant learned of the infringement and then when provisional measures could be sought before the UPC. Enforcing a European patent without unitary effect state by state is not equivalent to enforcing a unitary patent before the UPC.

A « cell or tissue sample » excludes isolated genomic DNA, a subpopulation of reagents is defined by the analyte targeted without the probes having to be identical, and the detection step must be repeated in each round. The burden of proving invalidity lies on the respondents, general revocation statistics being irrelevant. Neither added matter, nor Göransson or US 2010/0151472 against novelty, nor Duose, WO 03/003810 or Göransson against inventive step, nor insufficiency was persuasive. Direct infringement of the method, applied in Amsterdam and offered, and indirect infringement by the reagents, the instrument and the probes, were found with high probability. Cloud analysis outside the territory is irrelevant, the final feature being a mere statement of purpose. For the instrument and probes, which can also be used for proteins, the injunction is conditional on warnings and customer undertakings backed by penalties. The request to « remedy » beyond the injunction was dismissed for want of a basis in the Agreement.

Urgency was established: the UPC could not be seised before 1 June 2023, deferring grant to obtain unitary effect is not delay, and national actions on the parent patent are not an equivalent route. The risk of lasting customer lock-in, symmetrical for both sides, tips the balance in favour of the proprietor. No licence was owed: NanoString is not a third-party beneficiary of the NIH agreement, no abuse of a dominant position was shown, and outside standard-essential patents it is for the prospective licensee to make a concrete offer, the one made at the hearing being late and unsuitable. Neither product complexity, nor Harvard’s status as a non-practising entity, nor research interests made the injunction disproportionate, and no security was required absent enforcement difficulties in the United States. The respondents bear the costs.

Key points for practice

• The preponderance of probability test sets the degree of conviction required on validity in UPC interim proceedings.
• For a recently granted unitary patent, time runs from when the UPC could be seised, not merely from knowledge of the infringement.
• The possibility of suing before national courts on a classic European patent does not deprive the applicant of its interest in seising the UPC.
• Practical point: Rule 206.2(e) RoP should not become a formal obstacle where the provisional measure sought coincides with the relief on the merits.

Provisions applied

Agreement on a Unified Patent Court

Arts. 21, 25, 26, 27, 32(1)(a) and (c), 33(1)(a), 42, 47, 54, 62 and 69

Rules of Procedure

Rules 16, 181, 206, 208, 209, 210, 211, 350 and 354

European Patent Convention

Art. 76(1), 54, 56 and 123(2)

Case law cited

CJEU, 16 July 2015, C-170/13, Huawei v ZTE, CJEU, 28 April 2022, C-44/21, Phoenix Contact v Harting, CJEU, C-307/18 and C-549/10 P

Related decisions

• 10x Genomics v NanoString, 10 July 2023, earlier order setting the time limits for written submissions.

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.