UPC Denies Second Preliminary Injunction
Request; Prior Injunctions Against NanoString's CosMx Products in
Europe Remain in Full Effect
PLEASANTON, Calif., Oct. 10,
2023 /PRNewswire/ -- 10x Genomics, Inc. (Nasdaq:
TXG), a leader in single cell and spatial biology, announced today
that the European Unified Patent Court ("UPC") has declined to
issue a second preliminary injunction against NanoString
Technologies, Inc. (Nasdaq: NSTG) based on European Patent 2 794
928 B1 ("the EP 928 patent," docket No 459996/2023). However, the
injunctions granted by the Regional Court Munich I in May and by
the UPC in September both remain in full force and effect and are
not affected by today's decision in terms of scope or
duration.
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The September injunction prevents NanoString from selling or
providing services using its CosMx Spatial Molecular Imager (SMI)
instruments and CosMx reagents for RNA detection in all 17
countries of the UPC based on NanoString's infringement of European
Patent 4 108 782 B1 ("the EP 782 patent," docket No. 459756/2023).
The EP 928 patent is in effect in only a subset of the 17 UPC
countries - Germany, France and the
Netherlands. Had it been granted, the injunction for
the EP 928 patent would not have changed the scope of the
injunction that is already in effect.
Eric S. Whitaker, Chief Legal
Officer for 10x Genomics, said, "Today's decision in no way impacts
both existing injunctions against NanoString and the underlying
strength of our cases. While the UPC found that the EP 928 patent
did not warrant preliminary relief, we expect to continue to pursue
our claims on the EP 928 patent in a main action of the UPC."
The rulings of the UPC are subject to appeal. The full opinions
of the UPC will be posted here when available:
10xgen.com/munich-spatial-news.
Related Litigation
In the United States, 10x filed
suit against NanoString in the U.S. District Court for the District
of Delaware alleging that
NanoString's GeoMx Digital Spatial Profiler and associated
instruments, reagents and services infringe: (a) U.S. Patent No.
10,472,669; (b) U.S. Patent No. 10,961,566; (c) U.S. Patent No.
10,983,113; (d) U.S. Patent No. 10,996,219; (e) U.S. Patent No.
11,001,878; (f) U.S. Patent No. 11,008,607 and (g) U.S. Patent No.
11,293,917. Trial is scheduled from November
13-17, 2023. On September
7, the Court issued summary judgment in favor of 10x and
dismissed NanoString's defenses relating to invalidity for
indefiniteness. 10x has stated that it intends to seek more than
$30 million in damages for sales
prior to trial; this amount can be trebled in the event that the
jury finds NanoString's infringement willful. 10x also intends to
seek an injunction against sales of GeoMx as well as ongoing
damages.
10x filed a second suit against NanoString in the U.S. District
Court for the District of Delaware
alleging that NanoString's CosMx Spatial Molecular Imager and
associated instruments, reagents and services infringe multiple
patents in the same patent family as EP 782 and EP 928, the patents
NanoString has been enjoined from infringing by the UPC and German
courts. The patents asserted in the second U.S. suit against
NanoString include (a) U.S. Patent No. 10,227,639; (b) U.S.
Patent No. 11,021,737; (c) U.S. Patent No. 11,293,051; (d) U.S.
Patent No. 11,293,052; (e) U.S. Patent No. 11,293,054 and (f) U.S.
Patent No. 11,542,554. Trial is scheduled for September
2024.
As previously announced, in February
2023, a five judge panel from the German Federal Patent
Court, which included technical experts, issued a preliminary
opinion finding the asserted claims of the EP 928 patent valid
(docket no. 3 Ni 20/22). An oral hearing is scheduled for
May 7, 2024. On May 17, a three judge panel of the Munich
Regional Court found that the EP 928 patent was infringed and
issued an injunction that requires NanoString to stop selling and
supplying CosMx SMI instruments as well as CosMx reagents for RNA
detection in Germany (docket No. 7
O 2693/22). NanoString appealed this decision to the Higher
Regional Court Munich (docket No. 6 U 2360/23 e). A decision is not
expected before late 2024.
Prior to today's preliminary injunction ruling on the EP 928
patent, 10x filed two main actions before the UPC to obtain
decisions on the merits regarding infringement of the EP 782 and EP
928 patents by NanoString selling or providing services using its
CosMx Spatial Molecular Imager (SMI) instruments and CosMx reagents
for RNA detection. On September 19,
the UPC issued a preliminary injunction which prevents NanoString
from selling or providing services using its CosMx Spatial
Molecular Imager (SMI) instruments and CosMx reagents for RNA
detection in all 17 countries of the UPC in which EP 782 patent is
in effect. Decisions on both main actions are expected for late
2024 (docket No 568963/2023 re EP 782; docket No 573637/2023 re EP
928).
About 10x Genomics
10x Genomics is a life science
technology company building products to accelerate the mastery of
biology and advance human health. Our integrated solutions include
instruments, consumables and software for single cell and spatial
biology, which help academic and translational researchers and
biopharmaceutical companies understand biological systems at a
resolution and scale that matches the complexity of biology. Our
products are behind breakthroughs in oncology, immunology,
neuroscience and more, fueling powerful discoveries that are
transforming the world's understanding of health and disease. To
learn more, visit 10xgenomics.com or connect with us on LinkedIn or
X (Twitter).
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