10x Genomics, Inc. v. Curio Bioscience Inc., UPC, Court of First Instance, Düsseldorf (DE) Local Division, 20 February 2025 Case no. UPC_CFI_463/2023
10xGenomics had been successful in its application to substitute its previous security by way of bank guarantee. As we reported previously (reported on here) on 30 April 2024 the Unified Patent Court (“UPC”) Düsseldorf Local Division awarded 10x Genomics a preliminary injunction (“PI”) application against competitor Curio Bioscience in respect of its European Patent EP 2 697 391 B1 (“EP391”).
Rule 352.1 of the Rules of Procedure (“RoP”) provides that decisions and orders may be subject to the rendering of a security (whether by deposit or bank guarantee or otherwise) by a party to the other party for legal costs and other expenses. Rule 352.2 RoP grants the Court has the power to release a security by order.
Background to security for costs application
On 30 April 2024, Düsseldorf Local Division granted a preliminary injunction against Curio and ordered 10x Genomics to provide security of EUR 2,000,000, either as a deposit or a bank guarantee. The choice of security was at 10x Genomics’ discretion, and it opted for the deposit. For financial reasons 10x Genomics now wishes to replace the deposit with a bank guarantee.
Legitimate interest of Applicant- Decision of the Düsseldorf Local Division
Referring to (UPC_CFI_452/2023, App_28993/2024 – Ortovox v. Mammut) (reported on here), the Court noted that whilst provision of double security can be a means for release of security, this decision does not entitle the applicant to exercise the right of discretion regarding security as often as they wish. The Court will take into account the interests of all the parties involved. The Court further explained that the applicant, 10x Genomics, may have a legitimate interest in exchanging security when they initially opted to provide security where it was more expeditious.
10x Genomics clarified that it initially provided a deposit to ensure prompt enforcement. As a US company with its bank being a principal US bank not supervised by an EU Bank, 10x Genomics was not in a position to provide a bank guarantee at that time.
The Court acknowledged that it was economically disadvantageous for 10x Genomics to provide security. Therefore, the Court ordered that pursuant to Rule 352.2 RoP since a bank guarantee had been lodged as security, 10x Genomics could request repayment of the deposit.
Observations
Wisely, Curio Bioscience refrained from submitting any comments regarding this application, thereby rendering the process more of an administrative formality. In this instance, the applicant’s grounds were compelling and unequivocal. To proceed expeditiously, the 10x Genomics had no alternative but to lodge security.
The Court made it unequivocally clear that parties cannot indiscriminately exercise the right of discretion to switch security. When appropriate, the Court will consider the interests of all parties involved.
The order is here.
