The latest decision builds on an increasing number of UPC decisions relating to preliminary injunctions, and provides further insights into how the UPC may assess the necessity for provisional measures.

Infringement and validity

The patent at issue was EP 2697391, which is directed to a method for localised detection of nucleic acids in a tissue sample. The alleged infringing product is Curio’s Seeker spatial mapping kit.

After first evaluating 10x Genomics’ entitlement to bring the action, the Local Division moved on to claim construction and infringement. The Local Division concluded that it was “more likely than not” that Curio Bioscience’s products would be found to make literal use of the technical teaching of the patent at issue.

Next, the Local Division evaluated the validity of 10x Genomics’ patent. The Local Division pointed out that “the fact that the patent at issue has not yet survived any adversarial validity proceedings does not prevent the validity of the patent from being sufficiently certain”. Following its summary examination, the Local Division concluded that Curio Bioscience’s arguments had not had “the potential to give rise to significant doubts” on the validity of claim 14.

So, after finding that Curio Bioscience was, more likely than not, infringing 10x Genomics’ patent, and that the validity of that patent was sufficiently certain, the Local Division had to decide on the necessity of ordering provisional measures. The Local Division highlighted that it had to consider both temporal and substantive circumstances.

Temporal circumstances

The Local Division stated that as soon as a party with a potentially infringed patent had all the necessary knowledge and documents to reliably enable a promising legal action, it must file an application for the ordering of provisional measures within one month.

Two letters sent from 10x Genomics to Curio Bioscience, entered as evidence by Curio Bioscience, failed to prove that 10x Genomics had positive knowledge of the alleged infringement. The first letter merely referenced 10x Genomics’ existing patent portfolio in general terms, and was sent prior to the worldwide distribution of Curio Bioscience’s products. The second letter suggested that 10x Genomics was aware of Curio Bioscience’s product but did not indicate that it knew about any potential infringing activities in contracting member states where the patent was validated.

Where a defendant cannot prove positive knowledge of the infringement the Local Division held that “grossly negligent ignorance” or “wilful blindness” to the infringement would be considered equivalent. However, the Local Division also pointed out that the applicant was under “no general obligation to observe the market”.

In this case, the Local Division found that it had not been demonstrated that 10x Genomics had specific knowledge suggesting an infringement that would have triggered an obligation for further investigation.

Substantive circumstances

The Local Division also analysed the threat of damage to 10x Genomics due to the alleged infringement. Curio Bioscience and 10x Genomics’ products were found to address the same target audience of researchers and research institutes. The Local Division concluded that since researchers cannot readily exchange products part way through a research project because of a lack of comparability of results, customer relationships would likely be long-term and orders would be made for enough kits to cover entire projects.

It was therefore decided that preliminary measures were necessary from both a temporal and substantive perspective, and a preliminary injunction was granted against a security of EUR 2,000,000 and with a penalty payment of EUR 100,000 for each day of contravention.

While the decision may still have to survive an appeal, this case gives an insight into how Local Divisions may assess requests for preliminary injunctions. In terms of evaluating the necessity of provisional measures, it seems that it is important for an applicant to act in good time once positive knowledge of an infringement is gained or to investigate further if infringement is suspected. However, this does not constitute an obligation for a potential applicant to observe the market.