NanoString Technologies Europe Limited v. President and Fellows of Harvard College (UPC 252/2023) Decision of 17 October, 2024 (ORD_598480/2023[1]) This decision from the Central Division in Munich relates to EP2794928 belonging to President and Fellows of Harvard College, of which 10x Genomics is the licensee. 10x Genomics was refused a provisional injunction against NanoString on the basis of this patent (reported here[2]) – the Munich local division had doubts about the validity of the patent at least according to the claims as granted, and was not convinced that it was actually infringed. NanoString Technologies Europe Limited filed a revocation action against the patent at the UPC at the Munich Central Division on 27 July 2023. There was already pending a national revocation action in Germany related to the same patent, filed on 29 July 2022 by NanoString Technologies Germany GmbH. Lis Pendens The patent proprietor objected to the action on the basis of the lis pendens rules with respect to the prior German action. This objection was withdrawn at the oral hearing, but the Court considered that it was under obligation to nevertheless examine its international jurisdiction of its own motion since this was required under the Brussels I recast Regulation. Since the claimants in the UPC and German actions were not the same company, the Court considered that the situation did not fall under Article 29 of the Brussels I recast Regulation, which would require a mandatory stay. Instead, the case fell under the “related actions” provisions of Article 30 of the Brussels I recast Regulation, in which a stay is discretionary. The Court exercised its discretion to proceed with the action and not order a stay, because it had been requested to do so by the parties who stated their wish to have legal certainty as soon as possible. Moreover, the proceedings were at an advanced stage and the case was ready for a decision, so the procedural benefit of a stay at this stage would be limited, while a decision from the German Bundesgerichtshof was not expected for at least a year. In addition, a stay would cause delay in respect of the countries covered by the patent other than Germany; while it would be possible in principle to stay only the German part of the UPC action, this would have little benefit in terms of procedural economy. Validity The Court construed the claim more broadly than contended for by the proprietor, and on that basis it considered that the claims as granted lacked novelty over the prior art of Göransson. This is a similar conclusion to that in the provisional injunction proceedings. In particular, the Court construed the term “sample” broadly according to the description of the patent. It rejected the proprietor’s argument that Göransson does not disclose the detection of analytes “in a sample” because the sample is genomic DNA and in Göransson it is not this genomic DNA that is fixed on the slides, but only laboratory-amplified fragments derived from the genomic DNA (termed ASMs) – the Court considered that the term “sample” in the claims was broad enough to include ASMs prepared from genomic DNA and fixed on a microscopic slide as disclosed by Göransson. The Court consider eight auxiliary requests lodged with the defence to revocation, but declined to admit the further auxiliary requests filed later. Each of the eight auxiliary requests considered were acknowledged to be novel with regard to Göransson, but were considered to lack inventive step. The UPC noted that it had come to same conclusion as the Bundespatentgericht on essentially similar grounds. It was also noted that the conclusion was substantively in line with the findings of the UPC Court of Appeal in the NanoString/10x Genomics appeal which dealt with similar issues in respect of a related patent.[3] Accordingly, the Court ordered that the patent be revoked in its entirety. [1] https://www.unified-patent-court.org/en/node/1200 [2] https://eip.com//knowledge_hub/article/10x_genomics_not_successful_second_time_around/ [3] https://eipamar.com/en/knowledge_hub/article/why_did_the_court_of_appeal_reverse_the_local_division_injunction_in_10x_genomics_vs_nanostring/

Koninklijke Philips N.V. v. Belkin GmbH, Belkin Limited, Belkin International, Inc. (UPC_CFI_390/2023) Decision of 13 September 2024 (ORD_598464/2023)[1] Philips asserted their patent EP 2867997[2], relating to wireless charging, against Belkin at the Munich local division of the UPC. The UPC found the patent both valid and infringed. The Qi wireless charging standard defines interactions between a power transmitter and a power receiver. According to the prior art standard, there was a mandatory configuration phase initiated by the power receiver. The patent in suit in this case provides for an additional ‘negotiation phase’ which can be requested by the power receiver. Claim 20 (directed to the power transmitter) includes the limitation: “means for acknowledging … by transmitting an acknowledgement … being indicative of an accept or rejection of the request […]” The ‘request’ here relates to the request to enter the negotiation phase. The issue of infringement hinged on whether a device which only ever transmitted an acknowledgement which indicated ‘accept’ (and never sent a ‘reject’) was within the scope of the claim. The defendant argued that the acknowledgement must be capable of indicating both accept and reject. The court found in favour of the claimant’s broader construction, based on an extensive review of the patent specification. This discloses an example (paragraph 46) where it is mandatory, for a transmitter which supports the negotiation phase, to accept a request for that phase. It also discloses (paragraphs 172-173) various examples where no negotiation phase occurs: the receiver does not request negotiation; the receiver requests negotiation, but the transmitter does not support it, and sends an explicit rejection; the transmitter does not support the feature and ignores, without responding, any request. The receiver assumes, from the absence of any response, that the transmitter does not support the request; and the transmitter supports the feature but elects to “fall back to a [legacy] power transmission strategy (and associated communication strategy)”. The court understood that in case 4), this meant that the transmitter appeared to behave as in case 3), i.e., no response is transmitted at all (and therefore could not be within the scope of the claim in any case, because there is no acknowledgement at all). The court used a two-step approach to understand the claim scope: Does the description describe the possibility that an acknowledgement might only indicate ‘accept’? If yes, does the claim reflect such an embodiment? Based on the example in paragraph 46, the answer to question 1 was ‘yes’. To answer the second question, the court stated that the correct approach was to read the claim together with the description and figures; the claim must be understood so that there are no contradictions between the claim and the description. The paragraph 46 embodiment must only be considered excluded from the claim scope if it was clear from the claim that something different was claimed. The court nevertheless emphasized that the wording of the patent claim takes precedence over the description. The court considered that the plain reading of the claim did not require the claimed transmitter to be capable of sending a rejection in response to the request. There being nothing in the specification to counter this presumption, the court found that it was not necessary for a transmitter to have means for sending an acknowledgement indicating ‘reject’. On this basis, the claim was infringed. Commentary Courts in Germany (LG Dusseldorf and the BPG/Federal Patent Court) had previously concluded that the transmitter must be able to send both accept and reject responses. In the present judgment, the question addressed is whether or not it is mandatory for an infringing device to be capable of sending a rejection. However, the claim refers to an “acknowledgement … being indicative of an accept or rejection”. It is not clear why the focus was on whether ‘being indicative of’ was a limitation of the substance of the actual response(s) sent by the transmitter, rather than a limitation of the format of the acknowledgement. In particular, the court does not appear to address the following question: Would a device which always sent an ‘accept’ acknowledgement infringe the claim if the format of the acknowledgement (as specified by the Qi standard) also allowed for a rejection? In any case, the UPC local division did not consider that the claim language itself inherently required the possibility of both alternatives. However, in hypothetical analogous claims to a ‘vehicle capable of travelling forwards or in reverse’ or ‘an indicator indicative of a forward or reverse gear’, it seems readily apparent that ‘or’ represents mutually exclusive options which must nevertheless both be satisfied (“conjunctive OR”). Instead, the court gave significant weight to the example of paragraph 46 and construed the claim explicitly with the effect of including that example within the claim scope. Before describing the example in which it is mandatory for transmitters to accept any request for the negotiation phase, paragraph 46 also discloses that “In some embodiments, it may also be optional between negotiation phase capable devices, and may possibly only be entered if desired by the power receiver. Although the negotiation phase will be optional, it may be mandatory that new devices support it.”. The skilled person may understand from this that devices (including power transmitters) could have the possibility to avoid the negotiation phase in at least some cases, consistent with the need for an acknowledgement capable of indicating both accept and reject. This would appear consistent with the ‘conjunctive OR’ interpretation. Paragraph 46 forms part of the ‘Summary of the invention’ section. This section begins at paragraph 41: “According to an aspect of the invention there is provided method of operation …according to claim 1 comprising …”. However, the remainder of that paragraph does not reflect the granted claim, but rather the independent claim in the application as filed (see WO 2014/001983 A1) and does not include the ‘accept or rejection’ limitation. The patent was published in 2016. Since then, practice at the EPO has evolved to require applicants to amend the description (and, particularly, the ‘Summary of invention’ section) to be more strictly aligned with the claims. In this case, it is unlikely that the granted patent would have included paragraphs 41 and 46 in their current form, had such an alignment been carried out. The conclusion of the court might, in such case, have been quite different. Conclusion Applicants should take care that, in complying with a request for aligning the claims and description, unintended consequences for claim construction cannot arise. In court proceedings, parties should be alive to whether or not such alignment has been carried out, and whether this should be taken into account in claim construction. [1] https://www.unified-patent-court.org/en/node/1087 [2] Prosecution history: https://register.epo.org/application?number=EP13759578&lng=en&tab=doclist