Court of Appeals of Barcelona, 17 January 2025, Genomic Health, Inc. v. NanoString Technologies, Inc., Case no. ECLI:ES:APB:2025:582
The plaintiff, Genomic Health, Inc., owner of EP2258872, validated in Spain as ES2433992, filed a patent infringement complaint against NanoString Technologies, Inc., and its subsidiaries, NanoString Technologies Spain, S.L., Izasa Scientific, S.L.U., and Oncogenomics, S.L., involved in the marketing of the so-called PROSIGNA® test in Spain.
The invention protected by patent EP872 “Gene expression profiling in biopsied tumor tissues” refers to a method for predicting survival in breast cancer patients based on the expression of the BAG1 gene. This gene is implicated in the regulation of apoptosis (programmed cell death), and its overexpression is associated with a better prognosis in breast cancer, indicating a lower probability of relapse after tumor removal.
In the claim, Genomic Health alleged that the PROSIGNA® test, which analyses a panel of 50 genes, including BAG1, directly infringes patent EP872. According to the plaintiff, even if the PROSIGNA® test uses a different technology which expands on the number of genes analysed, the use of the BAG1 gene makes the test directly fall within the scope of protection of the patent. Under such interpretation of the patent’s scope of protection, any method using BAG1 analysis to predict the survival of breast cancer patients without recurrence is protected by the patent, regardless of technical differences in the procedure.
The entire summary can be read here.
A copy of the judgment (in Spanish) can be read here.
An English machine translation of the judgment can be read here.
