The UPC Court of Appeal in action: Insights from the first hearing before the UPC Court of Appeal

The case at issue: the appeal in summary proceedings filed by Nanostring Technologies Inc et al (Nanostring) against 10x Genomics, Inc. and the President and Fellows of Harvard (10x Genomics) (case number APL_576355/2023 UPC_CoA_335/2023).

The hearing was open to the public, so anyone who wanted to get a glimpse of the first features of a UPC Court of Appeal hearing could take a seat in the room. Allen & Overy’s UPC litigators were there. In this post we discuss some interesting insights into how the Court of Appeal handled this first appeal hearing. 

Background of the case

The appeal followed first instance summary proceedings in which 10x Genomics obtained a preliminary injunction based on their European patent, 4 108 782 (EP 782), for ‘compositions and methods for the detection of analytes’. Nanostring allegedly infringed by offering their CosMx Spatial Molecular Imager device and CosMx reagents for RNA detection. On 19 September 2023, the Munich Local Chamber of the UPC rendered its’ decision, granting 10x Genomics a preliminary injuction against Nanostring. That preliminary injunction is now under appeal by Nanostring. 

These summary proceedings, together with another application before the UPC for interim measures based on a related patent from the same family, are part of a wider patent litigation in Europe and the US between these parties.

The appeal hearing

The hearing was led by the President of the Court of Appeal, Klaus Grabinski, who chaired the panel with Francoise Barutel (legally qualified), Peter Blok (legally qualified), Rainer Friedrich (technically qualified) and Cornelis Schüller (technically qualified).

Some of the key takeaways from the hearing are as follows:

Well-prepared Court and a structured hearing

• The Court came up well-prepared and structured the hearing carefully. The hearing was opened with a 50-minute introductory outline of the key points at stake in the appeal, according to the Court. The President explained that there had been pre-deliberations by the judges where different issues had been discussed already, and also pointed out on which topics they leaned towards agreeing with the first instance decision. In addition, parties were invited to comment on specific topics in their pleadings (e.g. validity of the patent, urgency and proportionality as part of the balance of interests). The introduction was therefore important in setting the tone for the hearing and making clear which points the Court wanted to hear about and discuss.

Understanding the case matters more than time limits

• The hearing lasted for about 7 hours. The President had set time limits in advance (i.e. 90 minutes of pleadings and 30 minutes rebuttal for each party), but these time limits seemed somewhat flexible. For instance, Nanostring faced a few questions on an auxiliary request, which gave them an extra 20 minutes in their rebuttal. The Court’s main focus seems to be a thorough understanding of the (technical aspects of the) case and arguments instead of strict observance of the timing for pleadings.

Expect an active Court of Appeal

• Although parties were generally not interrupted as questions were saved until the end of their pleadings, the Court made a great effort in asking multiple and different questions. Legally qualified judges raised questions in relation to the impact of a PI on Nanostring (e.g. whether clients had yet terminated contracts with them following the first instance decision), whereas the technically qualified judges focused on questions related to the interpretation and scope of protection of the patent. As such, parties can expect a very active Court of Appeal, leaving room for the parties to make their point at the hearing, and a Court of Appeal that will enter into discussions with the parties on specific parts of their argument.

A decision in this appeal will be handed down in the new year. 

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