UPC issues preliminary injunction in DNA kits patent spat

Düsseldorf local division orders US life sciences company Curio Bioscience to stop selling its products in Germany, France and Sweden in dispute with rival 10x Genomics

The Unified Patent Court (UPC) has ordered biotech company Curio Bioscience to stop selling certain nucleic acid detecting kits in Germany, Sweden and France as they have been found to infringe the patent of its rival 10x Genomics.

On 30 April, the UPC’s local division in Düsseldorf presided over by judge Ronny Thomas as judge-rapporteur, Judge Bérénice Thom, Judge András Kupecz and Judge Martin Schmidt, deemed the issuance of a prohibitory injunction to be “appropriate and justified” saying that the validity of the patent at issue is certain “to the extent required for the ordering of provisional measures”.

California-headquartered 10x Genomics had opposed the sale of the product Curio Seeker Spatial Mapping KIT, available in two different versions, believing the products to be directly or indirectly infringing its patent EP 2697391; it relates to an invention for the localised or spatial detection of nucleic acid in a tissue sample.

The court was convinced “with a sufficient degree of certainty” that 10x Genomics right was infringed by the offer and distribution of the products with the contested claims in Germany, France and Sweden.

The ruling says that the contested embodiments “make direct and literal use of” the teaching of the patent protected by claim 14. In contrast, an indirect infringement of patent claim 1 could not be established.

For each contravention of the order, the court said, the defendant will have to pay the court a penalty payment (which may be repeated) of up to €100,000 for each day of the contravention.

In response to the ruling, Curio Bioscience said it would comply with the order and “expects no impact to its commercial business”.

It continued that the “ruling is restricted to the three countries mentioned and does not affect Curio’s activities elsewhere, nor does it impact other Curio products”.

An appeal may be lodged by both parties within 15 days; the main action remains pending. 10x Genomics is represented by Bardehle Pagenberg’s Tilman Müller-Stoy, Martin Drews and Axel Berger.

Curio Bioscience is represented by Carpmaels & Ransford’s Agathe Michel-de Cazotte and Cameron Marshall.

German dominance

The preliminary injunction was issued the same week that the UPC announced it was hiring more German judges to keep up with the increasing caseload across the German divisions of the UPC.

Ulrike Voss and Daniel Voss will be joining the Munich local division. Ulrike Voss already works at the Munich central division and the new appointment will be in addition to this. It has also welcomed Dirk Böttcher as a newly appointed judge at the Mannheim local division.

The hours of current judges were also increasing to keep up with “evolving caseloads”, said the UPC in a statement on its website.

Judges’ hours at the central divisions in Paris and Munich and local divisions of Düsseldorf, Munich and Paris have been increased or will be increased in the coming months. In addition, the working time of some judges at the Court of Appeal has also been increased.

Florence Butin, president of the UPC’s Court of First Instance, said: “Over the past 10 months, we have observed a consistent rise in caseload, particularly in some of the divisions of the court. It is important for the presidium to ensure that UPC maintains the necessary capacity to manage this increase effectively.”   

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