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.
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).
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