25 September 2023

10x Genomics at the UPC – “more likely than not” a patentee-friendly venue for interim relief?

Reading the runes of the UPC’s early decisions suggests that those seeking early injunctions in Europe have been given a boost

The Unified Patent Court (UPC) is a new forum for patent disputes in Europe. Covering 17 European Union states (including France, Germany, Italy and the Netherlands), it is a forum available to litigate both the new Unitary Patent (covering the same group of states) and “classical” European patents having effect in those states. In the lead up to the Court’s opening on 1 June 2023, much focus was on the possibility for owners of those “classical” patents to “opt-out” of the new system, but we are now beginning to see results for those who have actively chosen to take part.

Interim measures

Given the early stage of the court’s existence, final decisions on the merits of full proceedings have not yet been reached. However, the UPC does provide for interim measures, including preliminary injunctions, in cases of urgency. These cases are starting to filter through and provide early indications of how the UPC might position itself.

Ex-parte injunctions have been decided upon previously, including the recent MyStromer case, the impact of which we report upon here, but for the first time the Court’s decision on a major inter partes dispute is publicly available. There is much to unpick here, but one aspect which may have far-reaching consequences is the discussion provided on the necessary level of confidence the Court must have in a patent’s validity before a preliminary injunction can be ordered.

A “sufficient degree of certainty”

 According to the UPC Rules of Procedure, the Court must be satisfied that various criteria are met to a “sufficient degree of certainty” when agreeing to interim measures. The question arises: what is a “sufficient degree of certainty” in the context of a contested patent’s validity? The decision in 10x Genomics recognises that the language of the Rules is open to interpretation, characterising the options in terms of probability – “overwhelming probability”, “substantial probability” and so forth.

Following from this, a discussion is provided of what the standard should be, and it is argued that the standard of probability required for interim measures should be lower than that required for final measures.  The Court opines that the correct standard to apply should be a “preponderance of probability”, that is that the patent is more likely than not to be held valid. The Court is also clear that the burden of proof on issues of validity lies with the party asserting the patent is invalid.

It is explicitly recognised in the decision that this approach is different, and effectively more patentee-friendly, from that adopted by the German courts. Similarly, it appears on the face of it to offer more scope for preliminary injunctions than the US – in which a “substantial question” of validity may prevent a preliminary injunction. The approach suggested by 10x Genomics requires a respondent looking to avoid an injunction to do more than show there is a meaningful question to be answered about the patent’s validity; they must show the patent is probably invalid.

As part of this analysis, it was made clear that general statistics (for example, regarding the overall success of challenges to patent validity) would have no influence on the Court’s view. On the other hand, the Rules of Procedure directly affirm that successful defence of a patent’s validity at EPO Opposition proceedings or in the national courts might be considered an indication of likely validity, albeit that the Court confirmed that such proceedings must relate to the specific patent in question (and not a related case, for example).

Context and consequences

The decision in 10x Genomics has been highly anticipated due to its timing, but whether the approach laid out there is ultimately adopted consistently by the UPC is yet to be seen. The decision was issued by one of the UPC’s many first instance “divisions” (in this case, the Munich Local Division) and others may take a different route. Moreover, while a “preponderance of probability” was argued to be the correct test, the Court found that in the specific circumstances of the case a higher bar was met.

Notwithstanding this, the ability to obtain early injunctions across the 17 countries currently participating in the UPC is a powerful tool with the potential to significantly disrupt competitors. Those looking to obtain such results may be encouraged to consider the UPC by the suggestion that an early injunction cannot be avoided simply by muddying the waters around validity, while those nervous of such wide-ranging injunctions will know that any defence based on invalidity will need to be fully developed.