The UPC has issued its first preliminary injunction in inter partes proceedings – and it was granted for a Unitary Patent. A decision in relation to the related case that was heard yesterday will be announced next month.

At the hearing before the UPC’s Munich local division two weeks ago, where the applicants 10x Genomics, Inc. and President and Fellows of Harvard College (licensee and patentee) pursued a preliminary injunction against US, German and Dutch entities of NanoString Technologies based on unitary patent EP 4108782, the focus was on the patent’s validity, with the parties discussing novelty, inventive step, and added matter in detail before a panel of judges consisting of Matthias Zigann as chair; Tobias Pichlmaier as rapporteur; András Kupecz as legally qualified judge (LQJ); and Eric Enderlin as technically qualified judge (TQJ). Yesterday, the court handed down its decision in relation to this case – and granted a preliminary injunction. Until now, the local division in Dusseldorf has granted a preliminary injunction ex parte in June 2023, and the Vienna local division decided not to grant a preliminary injunction after an inter partes hearing last week.

Before this decision was handed down, the same panel of judges heard submissions in the parallel proceedings concerning the root case EP 4108782, which additionally involved several NanoString Technologies directors as defendants. Instead of the validity questions that were the focus two weeks ago, the judges saw a particular need for discussion in relation to two other aspects relevant for granting a preliminary injunction: the question of infringement (Article 62(4) UPCA and Rule 211(2) RoP) and whether there had been an unreasonable delay in seeking provisional measures (Rule 211(4) RoP). The judges stated in their preliminary remarks that they saw points regarding the patent’s validity and the defendants’ non-technical defences (e.g. in relation to US domestic law and EU competition law) in much the same way as in the parallel case two weeks ago; this assessment presumably also extending to other factors under consideration in PI proceedings such as weighing up the parties’ interests and taking into account potential harm under Article 62(2) UPCA, which were therefore also not discussed in any detail at the hearing.

Infringement

The court invited submissions on infringement because the claim wording of the patent at issue in these proceedings was different from the divisional case to an extent that, in their preliminary remarks, the court identified two possible claim interpretations – only one of which would lead to a conclusion of infringement. The parties provided their contrasting views on this point.

Unreasonable delay

Furthermore, this patent, in contrast to its divisional, had been granted over four years ago and had been the subject of (successful but appealed) infringement proceedings against NanoString entities in Germany, but not in the Netherlands or France – the three countries for which the claimants have applied for a preliminary injunction in these proceedings before the UPC. The court therefore invited comments on whether there has been an unreasonable delay.

The applicants admitted that there had been a delay, but argued that it was not ‘unreasonable’. In particular, the applicants pointed to German academic writing on this topic, according to which the proper assessment was not only one of maximum speed but also of chances of success. The applicants said that they previously had not had enough evidence to start an infringement action in France or the Netherlands, and were prevented from applying for a preliminary injunction in Germany due to its case law on requiring the patent to have survived a validity test (which came only later in the form of the German Federal Patent Court’s preliminary opinion). NanoString Technologies was also said to have started a massive EU‑wide marketing campaign for its machines only recently in April 2023, so the clock allegedly started ticking only from then, and the applicants then filed their application supposedly at the very first opportunity when the court opened on 1st June. The UPCA or Rules of Procedure according to the applicants also did not set a specific period which would count as an ‘unreasonable delay’, anyway. The criterion of an ‘unreasonable delay’ was also only one of many factors for the court to consider, and depending on the circumstances of the case some factors should be given more weight than others.

The defendants agreed with the applicants that an ‘unreasonable delay’ was only one of many factors that the court would need to consider, but said that the other factors – in particular the patent’s validity – also weighed against the applicants. The court appeared particularly interested in the first market entry for NanoString Technologies’ machines, which the defendants identified as December 2022. Apparently for the first time in these proceedings, the applicants also claimed that they had engaged detectives in Germany to investigate whether NanoString Technologies would offer its machines to them; and how this evidence, obtained in March 2022, triggered the parallel German infringement action. The defendants disputed that this had happened, and argued that the applicants’ knowledge of infringement and thus assessment of chances of success was the same for Germany, France, and the Netherlands, and that therefore the applicants could and should have filed actions in France and the Netherlands at the same time as in Germany, rather than wait for the UPC to open.

Both parties also discussed the ‘urgency’ (“Dringlichkeit”) of the application for a preliminary injunction. This was surprising, because Rule 211(4) RoP is concerned with an unreasonable delay, not an assessment of the application’s urgency. The aspect of ‘urgency’ matters in relation to the court’s examination of the application under Rule 209 RoP, for example giving the standing judge the discretion to decide “immediately” on the application for provisional measures in cases of “extreme urgency” (Rule 209(3) RoP). However, Rule 211 RoP regarding an order on the application for provisional measures does not mention ‘urgency’ – the criterion in Rule 211(4) RoP is one of ‘unreasonable delay’.

Do PI proceedings have to be based on the claims as granted?

At the hearing, the applicants relied not on the patent as granted but on an amended claim 1 which was said to be narrower than a claim preliminary held to be novel by the German Federal Patent Court. The defendants referred to their admissibility arguments submitted at the last hearing, i.e. that according to the UPCA and the court’s Rules of Procedure, the subject of proceedings for a preliminary injunction could be only the patent as granted, but the patent as granted lacked novelty in the German Federal Patent Court’s preliminary opinion. The defendants also pointed in particular to French law and practice prohibiting provisional measures based on amended claims; however, the court briefly noted that this practice was possible in German proceedings. The defendants then argued that the claim amendments introduced by the applicants added matter, and briefly referred back to inventive step arguments provided at the hearing two weeks ago. The applicants also referenced their arguments from the parallel hearing two weeks ago. The court’s decision to grant the PI for EP 4108782 based on amended claims would suggest that the UPC Munich local division favours following the German approach.

The court’s decision

The court will announce its decision regarding yesterday’s proceedings in relation to EP 2794928 on 10th October 2023.