First Substantive Decision by the UPC Court of Appeal

The UPC Court of Appeal rendered its first substantive decision [1] on 26 February 2024. In re. 10x Genomics vs. NanoString, it revoked a preliminary injunction issued by the UPC local division in Munich.

Although the Court commented on many legal questions of the new UPC framework, the ultimate reason for the decision was the Court’s preliminary conclusion that the underlying patent probably lacks an inventive step.

It found that the prior art document D6 [2] discloses all features of the method of analysis subject to patent claim 1 except for the limitation that the method is applied to analytes "in a cell or tissue sample". This application, according to the Court of Appeal, was obvious to the skilled person in view of document D6 [2] alone or in combination with B30 [3].

The finding is just in preliminary proceedings and shall not be confused with a revocation of the patent as such.

Endnotes

[1] Original decision (in German): https://www.unified-patent-court.org/sites/default/files/upc_documents/576355-2023-AnordnungDE.final_.pdf

English translation: https://www.unified-patent-court.org/sites/default/files/upc_documents/576355-2023%20AnordnungEN.final_.pdf

[2] Document D6 = Jenny Göransson et al., „A single molecule array for digital targeted molecular analyses“, Nucleic Acids Research, 2009, Vol. 37, No. 1, e7 - https://academic.oup.com/nar/article/37/1/e7/1026581

[3] Document B30 = Magnus Stougaard et al., „In situ detection of non-polyadenylated RNA molecules using Turtle Probes and target primed rolling circle PRINS“, BMC Biotechnology 2007, 7:69, http://www.biomedcentral.com/1472-6750/7/69