(1) 10x Genomics, Inc. and (2) President and Fellows of Harvard College v. (1) NanoString Technologies Inc., (2) NanoString Technologies Germany GmbH and (3) NanoString Technologies Netherlands B.V., Munich Local Division, 13 January 2025, Case no. UPC_CFI_298/2023
On 13 January 2025, the Munich Local Division considered a motion by the Defendant (Nanostring) seeking dismissal of the Claimants’ request to amend the patent in suit. In the alternative, the Defendant sought to limit the number of auxiliary requests on file and require that any requests pursued in the UPC proceedings are also included in parallel EPO opposition proceedings.
Given that a hearing in the opposition proceedings had been scheduled for 18-20 March 2025, the panel confirmed that staying the UPC proceedings was appropriate pending the outcome of the EPO hearing – an approach which had been agreed upon by the parties and previously ordered by the Judge Rapporteur. The panel ordered that the Claimants submit any auxiliary requests within 20 days of the Opposition Division decision so that the UPC proceedings could take that outcome account into account.
The Defendant argued that the 55 auxiliary requests filed by the second Claimant were excessive. In response, the second claimant contended that this should not be assessed in isolation, emphasizing that 42 validity attacks had been raised in the revocation action, and that therefore the number of requests on file was not unreasonable.
While the Judge Rapporteur had initially ordered the number of auxiliary requests to be reduced to a single digit figure, this restriction was not upheld by the panel, which left the matter open for now. The panel indicated that the reasonableness of the number of auxiliary requests should be assessed in light of the scope of the counterclaim for revocation, the principle of fairness, the need for an adequate defence against all counterclaims, and the Opposition Division’s decision. The final number of auxiliary requests permitted would also influence the timeframe for the Defendant’s response.
The full decision can be read here.
