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UPC – 10x Genomics v. Curio Bioscience: 10x Genomics finds new success in securing a preliminary injunction against Curio

02 May 2024

Sarah Taylor

Pinsent Masons

Stefan van Kolfschooten

Pinsent Masons

10x Genomics, Inc. v. Curio Bioscience Inc., UPC, Court of First Instance, Düsseldorf (DE) Local Division, 30 April 2024, Case no. UPC_CFI_463/2023

In a further chapter of 10x Genomics’ Unified Patent Court (“UPC”) litigation record, the Düsseldorf Local Division has awarded a preliminary injunction (“PI”) to the biotech company to enforce its European Patent EP 2 697 391 B1 (“EP391”) patent against competitor Curio Bioscience. The granted PI prohibits Curio from offering its Curio Seeker Spatial Mapping Kits (which enable spatial mapping of the entire transcriptome of tissue) in France, Germany and Sweden and is enforceable against a collateral of €2 million.

The successful PI follows the earlier loss by 10x Genomics in its dispute with NanoString (reported on here, with a subsequent rectification reported on here). In that case, the UPC Court of Appeal had overturned the PI granted by the Munich Local Division in favour of 10x Genomics due to doubts over the validity of the asserted unitary patent (EP 4 108 782 B1).

In the present proceedings, the Düsseldorf Local Division first reiterated the standard for granting PI’s that it should be “more likely than not” that the asserted patent is valid even where validity has not previously been challenged, and found that the EP391 patent passed this threshold. The court noted that the fact that the patent had not yet been subject to a validity challenge before the EPO or a national court did not prevent the validity from being sufficiently certain.

In cases where the patent in issue was granted a number of years earlier but validity was not challenged, such as the present case (where the patent was granted in 2019), the court will assess the prior art presented by the defendant to determine whether validity is sufficiently certain. On summary examination, the court found that Curio’s arguments did not give rise to significant doubts as to validity. The court also noted that the filing of auxiliary requests by 10x Genomics is an expression of legal caution and does not give rise to doubts as to validity.

The court then went on to shed light on the issues of the presumption of patent ownership, the role of a stated purpose in patent claims for the finding of infringement, the notion of urgency in respect to knowledge of infringement and the provision of security of costs in PI proceedings. This decision provided us with a lot to unpack in this short blog.

On the right to bring a claim and the presumption of patent ownership, Article 47 of the Agreement of a Unified Patent Court (“UPCA”) states that the applicant should in principle prove that it is the patent proprietor and is as such entitled to commence proceedings before the courts of the UPC.

In order to prove its entitlement, 10x Genomics submitted extracts from the national patent registers of the three jurisdictions where the patent was registered under its name – France, Germany and Sweden. Pursuant to Rule 8.5(a) of the Rules of Procedure (“RoP”), the Local Division stated that there is a presumption that the legal person registered as the proprietor on national registers is indeed entitled to commence proceedings and that the defendant bears the burden of proof of rebutting that presumption. In this case, Curio was unsuccessful in its argument by stating that the inventive work by one of the three inventors was done in his role as a post-doctoral researcher for another institute. In the dismissal of the rebuttal, the Local Division however refrained from providing guidance on what would be needed to successfully rebut the stated presumption.

As to the finding of infringement, the Local Division indicated that if a patent claim contains stated purposes, these usually serve to improve the understanding of an invention. As a rule, they have the indirect effect of defining the subject matter protected by the patent in such a way that it must not only fulfil the spatial-physical features, but must also be designed to be usable for the purpose stated in the patent claim. Therefore, for there to be an infringement, the allegedly infringing product must embody all claim limitations as well as be suitable for the purposes contained therein.

Based on the finding that Curio’s mapping kit was suitable to be used for the purposes as stated in claim 14, the Local Division was satisfied with a sufficient degree of certainty that the contested embodiments infringed the patent at issue (in accordance with Article 62(4) UPCA and Rule 211.2 RoP). Curio moreover failed to demonstrate why the weighing-up of interests would have moved the needle in its favour to dismiss the application.

Regarding the required urgency to file a PI application, the Local Division first reiterated that as soon as a patentee has knowledge of the alleged infringement, it must take the necessary measures and obtain the documents required to support its claims. Once the patentee has all the knowledge and documents that reliably enable a promising legal action, it must file the application for the ordering of provisional measures within one month. In the absence of such positive knowledge of an infringement, or at least where such knowledge cannot sufficiently be established, as was the case here, grossly negligent ignorance or wilful blindness to the infringement is considered equivalent to positive knowledge of an infringement.

According to the Local Division, the patentee is however not required to monitor the entire market as to become aware of any possible infringing acts, but should act reasonably expeditious once it discovers indications thereof. Failure to swiftly take the subsequent steps to support its claims may result in the loss of the required urgency.

The court also found that the granting of a PI is necessary due to the threatened damage 10x Genomics was likely to be subject to by Curio’s activities. The weighing-up of interests also favoured 10x Genomics.

Finally, on 10x Genomics’ order for the provision of security of costs by Curio, the Local Division clarified that if the UPCA is not in conflict with a specific provision, the RoP may make additional provisions. In this case, while Article 69(4) UPCA only envisages that the claimant provides security for the defendant’s legal costs, Rule 158 RoP extends the scope of recipients of such an order to “the parties”, thereby including the defendant. Security for costs can as such go both ways.

However, the Local Division found that the ordering of security for costs of proceedings is only applicable in main proceedings. In urgent proceedings, such as these PI proceedings, there is neither scope nor a need for the (analogous) application of Rule 158 RoP given the urgent nature. Instead, there is a possibility to request an order obliging the defendant to provide an interim award of costs (R. 211.1(d) RoP). If the applicant avails itself of this option, the resulting cost order can be promptly enforced, thereby adequately addressing the security needs of the applicant.

If 10x Genomics’ previous dispute with NanoString has any predictive value, it is to be expected that this case will also be brought before the UPC Court of Appeal in Luxembourg. You may now place your bets before 15 May, as it marks the end of the term for appeal.

The full order can be read here.