Second Injunction Issued Against CosMx
PLEASANTON, Calif., Sept. 19,
2023 /PRNewswire/ -- 10x Genomics, Inc. (Nasdaq:
TXG), a leader in single cell and spatial biology, announced today
that the European Unified Patent Court ("UPC") issued a
preliminary injunction against NanoString Technologies, Inc.
(Nasdaq: NSTG) for infringing European Patent 4 108 782 B1 ("the EP
782 patent," docket No 459746/2023). The preliminary injunction,
issued by a panel of four judges with both legal and technical
expertise, 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.
Eric S. Whitaker, Chief Legal
Officer for 10x Genomics, said: "Since the formation of 10x, our
unwavering commitment has been to drive innovation to push science
forward. We have made massive investments in cutting edge research
and development resulting in revolutionary products transforming
the world's understanding of health and disease. The entire purpose
of patent systems around the world is to protect such innovations
and encourage such investments. We will be steadfast in protecting
the inventions that scientists have worked so hard to create, as
innovation is what fuels and funds the development of future 10x
technologies that benefit researchers – and ultimately
patients."
The injunction on the EP 782 patent requires that
NanoString stop selling or providing services using the CosMx SMI
instruments as well as CosMx reagents for RNA detection in
Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the
Netherlands, Portugal,
Slovenia and Sweden.
10x Genomics' acquisitions of ReadCoor and Cartana in 2020
accelerated its technology development of the Xenium in situ
platform and provided 10x with access to key inventions, including
what became the EP 782 patent, from the earliest pioneers of in
situ analysis. This patent relates to the initial discoveries of
critical and foundational technical features for in situ analysis,
which underpin 10x's Xenium platform, a high performance system
combining state-of-the-art instrumentation, curated and
customizable gene panels and robust software to deliver
best-in-class sensitivity, specificity and throughput.
"A patent holder must meet a very high standard to win a
preliminary injunction," added Whitaker. "Two separate courts have
now found that NanoString's CosMx products infringe two different
10x patents, and three separate courts have preliminarily found the
10x patents valid in the asserted scope. In total, three courts
have analyzed hundreds of pages of arguments made by NanoString and
have rejected NanoString's repeated claims that it does not
infringe 10x patents, that the patents are invalid or that
NanoString's claims to a license have merit. Although we welcome
legitimate competition on the merits, competition based on our own
innovations must stop."
The ruling of the UPC is subject to appeal. The preliminary
injunction takes immediate effect today. The full opinions of
the Unified Patent Court will be posted here when available:
10xgen.com/munich-spatial-news.
Related Litigation
In a separate case before the UPC, 10x also requested a
preliminary injunction against the CosMx Spatial Molecular Imager
(SMI) instruments and CosMx reagents for RNA detection for
infringing European Patent 2 794 928 B1 ("the EP 928 patent,"
docket No 459996/2023), which is in effect in France and the
Netherlands in addition to Germany. The UPC held a hearing on this
request today and announced that it expected to issue a decision on
October 10, 2023.
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 for November 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 782
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. 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).
Forward Looking Statements
This press release contains
forward-looking statements within the meaning of the Private
Securities Litigation Reform Act of 1995 as contained in Section
27A of the Securities Act of 1933, as amended, and Section 21E of
the Securities Exchange Act of 1934, as amended, which are subject
to the "safe harbor" created by those sections. All statements,
other than statements of historical facts, may be forward-looking
statements. Forward-looking statements generally can be identified
by the use of forward-looking terminology such as "may," "might,"
"will," "should," "expect," "plan," "anticipate," "could,"
"intend," "target," "project," "contemplate," "believe,"
"estimate," "predict," "potential," "would," "likely," "seek" or
"continue" or the negatives of these terms or variations of them or
similar terminology, but the absence of these words does not mean
that a statement is not forward-looking. These forward-looking
statements include statements regarding 10x Genomics, Inc.'s
expectations regarding litigation and remedies as well as possible
outcomes of litigation. These statements are based on management's
current expectations, forecasts, beliefs, assumptions and
information currently available to management, and actual outcomes
and results could differ materially from these statements due to a
number of factors. The material risks and uncertainties that could
affect 10x Genomics, Inc.'s financial and operating results and
cause actual results to differ materially from those indicated by
the forward-looking statements made in this press release include
those discussed under the captions "Risk Factors" and "Management's
Discussion and Analysis of Financial Condition and Results of
Operations" and elsewhere in the documents 10x Genomics, Inc. files
with the Securities and Exchange Commission from time to time.
Although 10x Genomics, Inc. believes that the expectations
reflected in the forward-looking statements are reasonable, it
cannot provide any assurance that these expectations will prove to
be correct nor can it guarantee that the future results, levels of
activity, performance and events and circumstances reflected in the
forward-looking statements will be achieved or occur. These
forward-looking statements do not reflect that our success will
depend on our ability to obtain, maintain and protect our
intellectual property rights, intellectual property litigation
could be expensive, time-consuming, unsuccessful and could
interfere with our ability to develop, manufacture and
commercialize our products or technologies, litigation outcomes are
unpredictable, or there may be changes in our litigation strategy.
The forward-looking statements in this press release are based on
information available to 10x Genomics, Inc. as of the date hereof,
and 10x Genomics, Inc. disclaims any obligation to update any
forward-looking statements provided to reflect any change in our
expectations or any change in events, conditions or circumstances
on which any such statement is based, except as required by law.
These forward-looking statements should not be relied upon as
representing 10x Genomics, Inc.'s views as of any date subsequent
to the date of this press release.
Disclosure Information
10x Genomics uses filings with
the Securities and Exchange Commission, our website
(www.10xgenomics.com), press releases, public conference calls,
public webcasts and our social media accounts as means of
disclosing material non-public information and for complying with
our disclosure obligations under Regulation FD.
Contacts
Investors: investors@10xgenomics.com
Media: media@10xgenomics.com
View original content to download
multimedia:https://www.prnewswire.com/news-releases/10x-wins-injunction-from-unified-patent-court-banning-sales-of-nanostrings-cosmx-products-in-europe-301932287.html
SOURCE 10x Genomics, Inc.