On September 19, 2023, the second substantive hearing took place before the Munich Local Division of the UPC, confirming the overall positive impression that observers had gained in the first hearing on September 5 and 6, 2023 (see http://www.eplit.eu/first-substantive-hearing-before-the-upcs-local-division-munich/). Also in this case the court was well prepared, asked specific questions to clarify the facts and legal issues, and gave the parties sufficient time to present their case. The hearing was conducted in German.
The parties facing each other were essentially the same as in the September 5 and 6 hearing, namely 10x Genomics (Claimant) and NanoString (Respondent), and the bench was composed of the same Judges Dr. M. Zigann, T. Pichlmaier (both DE) A. Kupecz (NL) and E. Enderlin (FR). The teams of attorneys from the law firms Bardehle Pagenberg and Bird & Bird, respectively, were also more or less the same. The patent-in-suit, EP 2 794 928 B1 (Patentee: President and Fellows of Harvard College) was from the same patent family as the patent asserted in the first proceedings and also concerns “compositions and methods for the detection of analytes“.
While the patent discussed in the first hearing was a unitary patent, the patent asserted in these second proceedings is a “classic” EP bundle patent granted in 2019 of which the Claimant requests the DE, NL and FR parts to be provisionally enforced in Germany, the Netherlands and France. Another peculiarity is that main proceedings had already been successfully conducted in Germany based on an action filed in spring 2022. The action was awarded by the district court and that judgment was provisionally enforced by the plaintiff. The appeal against this decision is pending. In addition, an action for revocation was filed against the patent in August 2022. On September 18, 2023 – i.e., one day before the oral proceedings – the Claimant filed a main infringement action also with the local division in Munich.
The proceedings again proceeded along the lines of known German proceedings for requesting an preliminary injunction. The Chairman introduced the facts of the case and the dispute and explained the issues on which the parties were to make submissions. The following main points were discussed:
Scope of the Requests
The Claimant did not assert the patent as granted, but rather the patent in a restricted version, as is readily possible under German procedural law. According to the legal opinion of the Respondent, however, the patent can only be asserted in the granted version. Respondent referred to Art. 2 and 32 UPCA and to Rules 30 and 50 of the Rules of Procedure, which refer to the “granted patent”. Therefore, the assertion of a restricted version before the UPC was not possible. This is also in accordance with the national procedural law in France.
One issue here was the understanding of a certain feature of the claim and a possible contradiction between the claim and the description.
The Claimant literally described the wording in the claim as a “lapse”, which, however, could easily be corrected by way of interpretation. (as an observer, one has to think of the BGH decision “Rotorelemente” of May 12, 2015, Ref. X ZR 43/13, in which the BGH corrected the mixing-up of two terms in the claim by way of “benevolent interpretation” – according to one commentator).
As expected, the Respondent disagreed and considered the correction of the feature to be a violation of Art. 123(3) EPC, as it would extend the scope of protection of the patent after grant. Nor was the correction offered an obvious error within the meaning of Rule 139 EPC.
In the Respondent’s view, not surprisingly, the patent is not valid. In particular, the deletion of alternative substances in the claim is an infringement of Art. 123(2) EPC, since this constitutes an inadmissible selection from two lists, according to the case law of the boards of appeal. (Based on this, e.g., in decision T 1150/15 – grounds 2.10 – the EPO Board of Appeal revoked patent EP 1 422 218 (which was the subject of the BGH decision “Raltegravir” of July 11, 2017, case no. X ZB 2/17 on the grant of a compulsory license). At the request of the Chairman, the Respondent had to explain this argument in more detail. Furthermore, the Respondent briefly explained why the teaching of the patent had been obvious to the person skilled in the art.
The Claimant – also unsurprisingly – viewed these matters differently.
Balancing the Parties‘ Interests
According to Art. 62(2) UPCA, the court “shall weigh” the interests of the parties “in its discretion, taking into account, in particular, the possible damages which might result to one of the parties, based on the rejection of the request”. This wording is also found verbatim in Rule 211(3) of the Rules of Procedure. However, the same rule then states in para. 4 that the court will also take into account “unreasonable delay in applying for provisional measures”.
In German proceedings on the issuance of a preliminary injunction for patent infringement, the Claimant must establish the actual claim (“Verfügungsanspruch”), but also the reason (“Verfügungsgrund”) for requesting preliminary injunction, in a credible manner. The “reason” for the injunction (which also requires a balancing of interests) includes the so-called “urgency”, which, in the view of many patent litigation chambers in Germany, is considered to be forfeited if the Claimant waits more than one month after knowing about the infringement before filing the Request..
In the present case, the Chamber did not indicate how it understood the term “unreasonable delay”, but devoted a considerable part of the oral proceedings to this question.
It was discussed which standard is decisive for the assessment of the time factor (urgency) in the case of a bundled patent, the individual national parts of which, according to the Respondent, are to be regarded as different patents. Is the country decisive, in which the Claimant waited the longest, or is it the country in which the Claimant has reacted the fastest, or is this to be considered differently from country to country?
The length of the main proceedings, which according to the UPCA should only take 12 to 15 months, also played a role in the discussion. Is it to be taken into account in the balancing of interests that – as the Respondent has said – the main action was not filed until three months after filing the request for provisional measures and thus, as the Respondent put it, three months “were given away”.
The Claimant discussed in detail the measures that were taken to establish infringement with certainty. The Claimant should not be expected to accept a costly and reputationally damaging defeat in the event of uncertain proof of infringement, simply because the proof of infringement was ultimately considered insufficient. With regard to the timeline, the Claimant stated that the distribution of market shares would be decided in the next few months, and that these could then no longer be changed for several years. Therefore, it would not be possible to wait for a decision on the merits.
During this discussion, a small dispute arose between the court and the Claimant concerning the admissibility of evidence according to Art. 53 UPCA. The Respondent had partially contested the factual submissions of the Claimant with lack of knowledge (“Nichtwissen”), whereupon the representative of Claimant gave a lawyer’s affidavit that it was correct. The presiding judge, however, pointed out that a lawyer’s affidavit was not listed as evidence in Art. 53 UPCA, to which the Claimant countered that Art. 53 UPCA only mentioned evidence that is admissible “in particular” evidence and thus does not exclude a lawyer’s affidavit.
After a short preliminary deliberation of the court, the hearing was closed shortly before 13:00. A decision is to be announced on October 10, 2023.
Dr. Michael Wallinger for EPLIT