[UPCKat] Sufficient certainty of patent validity/infringement in PI proceedings

The UPCKat is getting the hang of 
so many UPC hearings in Munich

As part of our UPCKat reporting on the latest UPC developments, the IPKat continues its series of reports that analyze the development of preliminary injunction case law from the UPC.  With our guest UPCKat team in the form of guest UPCKats Agathe Michel-de Cazotte and Hiske Roos and members from the team at Carpmaels, this post will examine the need (or not) for sufficient certainty on validity and infringement.  

Over to Agathe and Hiske who take us to Munich back to 10 October 2023 in the 10x Genomics v NanoString case:  

"While a lot has been written on the 10x Genomics v NanoString PI decision from the Munich Local Division where in injunction was issued (see for example this IPKat article), there is another decision from the Munich Local Division on preliminary proceedings between the same parties in relation to the same technology which has not received as much attention yet (UPC_CFI_17/2023).

Unrightly so, according to these UPCKats, as in this order the Local Division Munich shines some helpful light on the question of validity and infringement in preliminary proceedings, and furthermore assesses necessity and weighs the interests of the parties (as is not always the case).

10xc Genomics’ patent EP 2 794 928 discloses compositions and methods for analyte detection. 10x Genomics filed for provisional measures on the bases if this patent. Spoiler alert: in these proceedings the requested injunction was rejected.

Before discussing validity and infringement in more detail, it is worth mentioning that NanoString brought several inadmissibility arguments, including an argument that infringement proceedings were pending in relation to the patent in suit in Germany (before the Munich Regional Court). All arguments on inadmissibility were rejected by the Munich Local Division.

Infringement of the patent

On infringement, there was some dispute on how the claims should be interpreted. The Munich Local Division  decided that in principle an understanding of the patent claim that deviates from the mere wording of the claim (asserted by 10x Genomics) is possible. Nevertheless, in the context of preliminary proceedings, it did not seem sufficiently certain to the Munich Local Division to grant an injunction based on that interpretation as this resulted in difficult technical and legal questions which could not be revolved in the context of the preliminary proceedings at hand.

Validity of the patent

The patent in suit was also subject of a nullity action before the Federal Patent Court in Germany. In the German proceedings the patent had been limited following a preliminary opinion of the Federal Patent Court which considered the patent valid on the basis of an auxiliary request (AR 1). 10x Genomics asserted the patent before the Munich Local Division as limited in the German nullity proceedings. NanoString argued that thereby 10x Genomics had asserted a limited, unexamined version of the patent. Validity of the patent in suit could therefore not be presumed on the basis of which it was granted.

The Munich Local Division seemed to agree and clarified that the question of “sufficient certainty” of validity of the patent in PI proceedings relates to whether the patent in suit is valid in its present version (and thus not the amended version):

"Die nach Art. 62 Abs. 4 EPGÜ und Regel 211 Nr. 2 VerfO erforderliche Überzeugungsbildung hinsichtlich des Rechtsbestandes des Streitpatentes (siehe zum Kriterium der „ausreichenden Sicherheit“ der richterlichen Überzeugung die Entscheidung UPC_CFI_2/2023) betrifft nicht die Frage, ob das Streitpatent in einer geänderten Fassung erteilungsfähig gewesen sein könnte, sondern die Frage, ob das Streitpatent in seiner gegenwärtigen Fassung (hier also in der vom Europäischen Patentamt erteilten Fassung) gültig ist; Regel 211 Nr. 2 VerfO bezieht sich dementsprechend ausdrücklich auf „das betreffende Patent“.

The unofficial English translation being:

"The conviction required under Art. 62(4) UPCA and Rule 211 no. 2 RoP regarding the validity of the patent in suit (see decision UPC_CFI_2/2023 on the criterion of "sufficient certainty" of the judicial conviction) does not concern the question of whether the patent in suit could have been grantable in an amended version, but the question of whether the patent in suit is valid in its current version (i.e. here in the version granted by the European Patent Office); Rule 211 no. 2 RoP refers accordingly expressly to "the patent in question"."

The preliminary opinion of the Federal Patent Court considering that the amended version of the patent (AR1) to be valid suggested that the patent will not be maintained in its granted version.

The Munich Local Division considered there to be insufficient certainty in these proceedings in light of both the uncertainty following the claim amendment, as well as the need for an interpretation that deviates from the wording of the claim. It also doubted necessity and found that (also) based on the balance of interest of parties, an injunction was not justified. The injunction was therefore rejected."