UPC: the Munich CD revokes EP2794928 in NanoString v Harward

By first instance decision dated 17 October 2024, the Munich CD of the UPC revoked EP2794928B1 “Compositions and methods for detecting analytes" (EP928) held by President and Fellows of Harvard College (Defendant), granting the revocation action brought on 27 July 2023 by NanoString Technologies Europe Ltd (Claimant) (UPC_CFI_252/2023).

This case is part of a larger dispute between the parties, also involving the Defendant’s divisional patent EP4108782 (EP782) and its licensee 10x Genomics, that we also commented upon here on this blog: UPC Court of Appeal lifts preliminary injunction in Genomics vs NanoString.

The decision at issue elaborates on the need to dismiss or stay the case due to the pending of parallel proceedings between affiliated companies and provides a summary of the criteria to be followed in interpreting claims and assessing novelty and inventive steps. It is in line with other decisions already commented on this blog, e.g. the Genomics one mentioned above and the following ones:

-       Paris LD merits decision on infringement and revocation in DexCom v. Abbott;

-       Düsseldorf LD on the concept of “imminent infringement”.

Below are the key takeaways from the decision.

1.    Suspension of the proceedings

Revocation proceedings regarding the German part of EP928 were started in Germany in July 2022 by NanoString Technologies Germany GmbH, an affiliate of the Claimant. As the UPC case also regarded the German part of the patent, the Defendant had originally filed a Preliminary Objection claiming that the UPC case was to be dismissed or stayed in respect of such German part, pursuant to Articles 29-31 Brussels I recast Regulation (no. 1215/2012).

Although this Preliminary Objection was later withdrawn, in the decision at issue the Court highlighted that the Articles 29-31 of the Regulation are compulsory and must be applied by the Court on its own motion, hence it examined its international jurisdiction anyway, and decided not to dismiss or stay the case on the following grounds:

a.    Arts. 29 and 31 of the Regulation did not apply, as the parties to the proceedings were not identical, and the fact that NanoString Technologies Germany and NanoString Technologies Europe belonged to the same group and had the same parent company was insufficient to conclude that “there is such a degree of identity between the interests of the parties to both proceedings that a judgment delivered against one of them would have the force of res judicata against the other”.

b.    The UPC proceedings and the German proceedings were indeed related for the purposes of Art. 30 of the Regulation, since the parties were closely related, both proceedings concerned the same national part of the same European patent and the proceedings were largely similar in terms of facts, grounds, arguments and (auxiliary) requests brought forward by the parties. However, it was not appropriate to stay the UPC proceedings under Art. 30 of the Regulation, because:

i)               the parties to the UPC proceedings had unanimously requested the Court to issue a decision, also for the German part of the Patent, as they wished to have legal certainty as soon as possible (whilst no decision in the German proceedings could be expected before 2026);

ii)              the first instance proceedings before the Central Division was already in an advanced stage, hence the procedural economical benefits for the Central

Division to stay its proceedings were limited;

iii)            staying the action in its entirety risked preventing the parties from obtaining a decision on the other national parts of the Patent within a reasonable time;

iv)            staying the action only for the German part of the Patent would have little benefits in terms of procedural economy as the grounds, facts and arguments brought forward by the parties would have to be considered in any event for the other national parts of the Patent.

For the above reasons, the Court noted, interests of the parties and procedural economy outweighted the risk of contradictory decisions, which made the Court rule against the stay of the UPC revocation action.

The Court also noted that it would come to the same conclusion if it were to exercise its discretionary power to stay proceedings on the basis of Rule 295(m) RoP: “in view of the facts and circumstances discussed above, also in light of the principles of efficiency and expeditious decisions set out in points 4 and 7 of the Preamble of the RoP and Recital 6 of the UPCA, the Court considers that, in the present situation, it is not in the interest of the proper administration of justice to stay proceedings”.

2.    Claim interpretation

The Court recalled that, in accordance with Art. 69 EPC and the Protocol on its interpretation, a patent claim is not only the starting point, but the decisive basis for determining the scope of protection of a European patent.

The interpretation of a patent claim is to be made from the point of view of a person skilled in the art at the filing (or priority) date of the application. It does not depend solely on the strict, literal meaning of the wording used: rather, the description and the drawings must always be used as explanatory aids for the interpretation and not only to resolve ambiguities. These “may show that the patent specification defines terms independently and, in this respect, may represent a patent’s own lexicon. Even if terms used in the patent deviate from general usage, it may therefore be that ultimately the meaning of the terms resulting from the patent specification is authoritative”.

3.    Novelty

The Court recalled that, under Article 54 EPC, an invention shall be considered new if it does not form part of the state of the art, i.e. “everything made available to the public by means of a written or oral description, by use, or in any other way”, before the filing or priority date of the European patent application. An invention is not new if the subject-matter of the claim with all its features is directly and unambiguously disclosed in a prior art document.

Applying the above standards to the case at hand, the Central Division came to the conclusion that the subject matter of claim 1 of the Patent as granted lacked novelty, as all features of claim 1 of the patent as granted were disclosed directly and unambiguously by one prior art document cited by the Claimant.

4.    Inventive step

Since the Patent could not be maintained as granted, the Court proceeded to consider the application to amend the patent lodged by the Defendant with its Statement of Defence, comprising 8 Auxiliary Requests. The Court instead dismissed a subsequent application to further amend Auxiliary Request 2 as it was lodged by the Defendant late in the proceedings, “in violation of the Defendant´s obligation to set out its case as early as possible”.

The Court found that the claims as amended based on those Auxiliary Requests lacked inventive step over the same prior art mentioned above. In doing so, the Court noted as follows:

-       “According to Article 56 EPC, an invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art”.

-       “An objective approach must be taken to the assessment of inventive step. The subjective ideas of the applicant or inventor are irrelevant. In principle, it is also irrelevant whether the invention is the result of serendipity or of systematic work involving (potentially costly and laborious) experimentation. It is only relevant what the claimed invention actually contributes to the prior art”.

-       “Inventive step is to be assessed from the point of view of the skilled person on the basis of the state of the art as a whole, including the skilled person’s common general knowledge. The skilled person is assumed to have had access to the entire publicly available art on the relevant date. The decisive factor is whether the claimed subject matter follows from the prior art in such a way that the skilled person would have found it on the basis of their knowledge and skills, for example by obvious modifications of what was already known”.

-       “In order to assess whether or not a claimed invention was obvious to a skilled person, it is first necessary to determine a starting point in the state of the art. There has to be a justification as to why the skilled person would consider a particular part of the state of the art as a realistic starting point. A starting point is realistic if its teaching would have been of interest to a skilled person who, at the priority date of the patent at issue, was seeking to develop a similar product or method to that disclosed in the prior art which thus has a similar underlying problem as the claimed invention. There can be several realistic starting points. It is not necessary to identify the “most promising” starting point”.

-       “Comparing the claimed subject matter and the prior art, the subsequent question is whether it would be obvious for the skilled person to, starting from a realistic prior art disclosure, in view of the underlying problem, arrive at the claimed solution. If it was not obvious to arrive there, the claimed subject matter meets the requirements of Article 56 EPC”.

-       “In general, a claimed solution is obvious if, starting from the prior art, the skilled person would be motivated (i.e. have an incentive) to consider the claimed solution and to implement it as a next step in developing the prior art. On the other hand, it may be relevant whether the skilled person would have expected any particular difficulties in taking any next step(s)”.

-       “A technical effect or advantage achieved by the claimed subject matter compared to the prior art may be an indication for inventive step. A feature that is selected in an arbitrary way out of several possibilities cannot generally contribute to inventive step”.

-       “Hindsight needs to be avoided. The question of inventive step should not be answered by searching retrospectively, with knowledge of the patented subject matter or solution, for any (combination) prior art disclosures from which that solution could be deduced”.

In light of the above, the Court revoked the patent in its entirety and ordered the Defendant to pay the legal cost of the Claimant (the amount of which will be determined in separate costs proceedings).

The Parties can appeal the decision within 2 months of the date of its notification.

[For an overview of unitary patents and UPC, find our posts here on this blog and our podcast here on Spotify]