NanoString Technologies v 10x Genomics (CoA, 11 March 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 26 February 2024 (UPC_CoA_335/2023, APL_576355/2023), the Court of Appeal, sitting with five judges including two technically qualified judges, set aside the order of the Munich Local Division of 19 September 2023 granting the application for provisional measures of 10x Genomics and the President and Fellows of Harvard College against NanoString, and dismissed that application. The Court considered it more likely than not that EP 4 108 782 is invalid for lack of inventive step. The order, which carries three headnotes, lays down rules that now frame provisional measures practice at the UPC: claim construction, which is the same for infringement and validity, and the degree of certainty required by Rule 211.2 RoP, together with the allocation of the burden of proof.

Facts and procedure

The Munich Local Division had prohibited NanoString, in seventeen states, from using the method of claim 1 and from supplying devices, reagents and probes for RNA detection (the CosMx system), subject to penalty payments of up to EUR 250,000 per infringement. NanoString appealed. The hearing took place on 18 December 2023. The patent concerns a high throughput optical multiplexing method for detecting target molecules in a sample.

The applicable law

Provisional measures are governed by Article 62 UPCA and Rules 206 to 213 RoP, Rule 211.2 RoP requires the Court to be satisfied with a sufficient degree of certainty that the applicant is entitled to commence proceedings and that the patent is infringed. The extent of protection is determined by Article 69 EPC and its Protocol on Interpretation.

Question

What degree of certainty must the Court reach as to infringement and validity before ordering provisional measures, and how are the claims to be construed at that stage?

Decision

The jurisdiction of the Munich Local Division was confirmed (point 1). The requirements of Rule 206.2(b) to (e) RoP go to the merits of the application, not to its admissibility. Failure to meet them may only weigh in the Court’s discretion (point 2). The challenge to standing was rejected (point 3).

The claims are the decisive basis for the extent of protection, but the description and drawings must always be consulted, from the skilled person’s perspective, and the same principles apply to infringement and validity (point 4.d.aa). A « cell or tissue sample » must remain recognisable as such, which excludes isolated and amplified DNA. Claim 1 does not require the reagents to remain bound throughout the method (points 4.d.bb and 4.d.cc).

Sufficient certainty requires the Court to consider it at least more likely than not that the applicant has standing and that the patent is infringed. It is lacking where the Court considers the patent more likely than not to be invalid. The applicant must prove standing and infringement. Save for measures ordered without hearing the defendant, the defendant must prove invalidity (point 5.a). Although prior art D6 (Göransson et al., 2009) did not destroy novelty, the main request was likely to lack inventive step starting from D6, since the skilled person had reason to apply the in vitro method in situ (points 5.b.bb, 5.b.cc and 5.c). The auxiliary request, adding IHC and FISH and limiting the analytes to RNA molecules, was not likely to be valid either. Its admissibility was left open (point 6). The applicants were ordered to bear the costs, the request for immediate enforceability of that order was refused and the value in dispute was set at EUR 7 million (points 7 and 8 and operative part).

Key points for practice

• The Rule 211.2 RoP threshold is « more likely than not », for infringement and validity alike (headnote 3 and point 5.a).
• Except in ex parte proceedings, the burden of proving invalidity lies on the defendant to the application for provisional measures (point 5.a).
• Claim construction always draws on the description and drawings, and is the same for infringement and validity (headnote 2 and point 4.d.aa).
• Practical point: a defendant to provisional measures should focus on a well documented inventive step attack capable of making invalidity more likely than validity.

Provisions applied

Agreement on a Unified Patent Court

Arts 26(1), 32(1)(c), 33(1)(a), 47(1) and (3), 54, 60, 62, 63, 64, 65(1) and 68

Rules of Procedure

Rules 8.4, 13.1, 16, 25.1, 44, 206.2, 208.1, 209, 211.2, 212, 213, 222.1 and 355.1

European Patent Convention

Arts 52 to 57, Art. 64 and Art. 69 and Protocol on Interpretation

Directive 2004/48/EC

Art. 9

Related decisions

• 10x Genomics, 26 February 2024, order of the same day refusing to stay the proceedings after the opening of Chapter 11 proceedings.

Put the decision in context

Explore the claim interpretation reading path, including G 1/24 and T 439/22 at the EPO. The comparison concerns the role of the description. EPO patentability and UPC litigation remain distinct legal frameworks.

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.