European Patent Litigators Association

First Substantive Hearing before the UPC’s Local Division Munich

FThe Local Division Munich of the UPC held its first substantive hearing on September 5 and 6 in preliminary injunction proceedings initiated by 10x Genomics and Harvard University against Nanostrings Inc. While the Court’s decision will only be announced on September 19, the hearing provided interesting insights on the approach of at least the Local Division of Munich (LDM) to such proceedings.

As Matthias Zigann, the Presiding Judge of the LDM quipped in his opening remarks, the LDM is a „Strong Division“ permanently composed of two experienced German judges (Mr. Zigann and Tobias Pichlmaier), one further Legally Qualified Judge (in this case András Kupecz from the Netherlands, who also has a technical qualification in the field of biotechnology) and French national Mr. Eric Enderlin, who is a patent attorney with a background in biotechnology, as Technically Qualified Judge. Thus, the panel was well powered with both legal and technical competence, which was matched by sizeable mixed teams of attorneys at law and patent attorneys from Bardehle Pagenberg on behalf of the applicants and from Bird&Bird on behalf of the defendants. The judges, in particular all Legally Qualified Judges, proved to be very active throughout the hearing. Time and again, they poked the party representatives with questions, and sometimes quite tricky ones. The panel was clearly well-prepared and expected the same from the parties.

The language of the proceedings was German, and the whole proceedings indeed strongly resembled German preliminary injunction proceedings. Mr. Zigann gave a long and detailed introduction into the case and presented the panel’s provisional opinion on the key points that the judges wanted to be briefed on.  He also cautioned the parties not to spend too much time on issues that the court had considered but did not think merit further discussion. Initially Mr. Zigann hinted that the court wanted to conclude the discussion on day 1, but it turned out at the end of this day that both the parties and the members of the court were fairly exhausted by spending the whole day in an overheated and fairly small hearing room with no air conditioning. Opening the windows helped to allow at least some oxygen in, but was impeded by the incredible noise of a nearby construction site. As the defendant still wanted to present further parts of its invalidity case and arguments why in regard to the balance of interest a preliminary injunction should not be granted and estimated that this would take another two hours of speaking time, the court used the following day to conclude the discussion and to allow both parties the full right to be heard. The hearing was then finished at about noon on day 2.

Even though the Presiding Judge presented the court’s preliminary view in the beginning of the hearing, the panel made a sincere effort to appear fair, unbiased and open to be persuaded by (better) arguments from the parties. No impartiality objections were raised by any of the parties.

The case was about an application for a preliminary injunction based on an EP-UE, which was filed on the very first day when the UPC opened its doors, i.e. on June 1, 2023. A recurring theme, both in the written proceedings and during the hearing, was that the UPC’s Case Management System is still riddled with errors. A particular manifestation of such an error was a message that the UPC CMS sent to the parties‘ representatives informing them that the hearing would only start at 10 am, not 9 am as provided in the summons. It turned out that this message was generated automatically without input by or information to the panel. As a result, one of the parties appeared 30 min late, but with a good excuse in view of the circumstances. Mr. Zigann admonished the parties (and the public) that the only relevant time is the one shown on the summons signed by the Presiding Judge. For the time being, just relying on the CMS is no good idea. We can only hope that the CMS‘ teething problems will soon be overcome, but according to Mr. Zigann there are quite a lot of them.

The court dealt with these and other peripheral issues very pragmatically and tried to spend as little time on them as possible. At least in this case, the judges were clearly more interested in an in-depth discussion of the really substantive issues, i.e. infringement and in particular validity, rather than spending much time on questions of urgency, irreparable harm, the licensing relationship between 10x Genomics and Harvard, anti-trust law, or territorial scope of the decision.

A particularly interesting aspect of this preliminary injunction case was that plaintiff did not assert the patent as granted, but according to a slightly limited claim 1 (main request). During the hearing plaintiff even filed an auxiliary request including a further amendment to claim 1, which the German Federal Patent Court had preliminarily found sufficient to establish novelty and inventive step of the parent of the patent in suit. While the court reserved its decision on admissibility of this auxiliary request, it became at least transparent that it is not an absolute no go to try obtaining a preliminary injunction based on a limited version of the patent. I would hope that the UPC will shine further light on this important practical question in its decision.

All in all, two very interesting days of a hearing on a complex and intricate biotech case. The impression could be gained, at least from this first substantive hearing in Munich, that the UPC will become a serious forum for patent litigation that will be able to handle even complex cases both fairly, diligently and speedily. A good start!

EPLIT News Workgroup

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European Patent Litigators Association