There have been four preliminary injunction (PI) decisions from the UPC, to date, and all are very different: one granted ex parte, one refused on non-infringement, and one refused for procedural reasons (the patent had been opted-out). But, in a fourth – a PI awarded to 10x Genomics against NanoString – the court examines all the relevant substantive factors for the first time.
What are the main points we can learn from the 10x Genomics decision?
Well, at over 140 pages, it is a thoughtful and well-reasoned judgment, which is reassuring.
What is immediately clear is that the court (here, the Munich Local Division) is taking all of the merits factors – validity and infringement – urgency, irreversible damage and other commercial factors, into account (as the Rules of Procedure would lead us to expect).
In particular, the court says that it is going to assess the role of patent validity in its own way, rather than adopting the approach of any national court.
It sets the validity bar as follows: "a preponderance of probability is necessary, but also sufficient. It must therefore be more probable for a sufficiently certain conviction of the court that the patent is valid than that it is not valid".
It is not enough that the invalidity of the patent is "merely possible".
To this end, the court takes a ‘mini-trial’ approach to both validity and infringement. The court said it would also take into account decisions from the EPO and other courts on the merits, but there were no such decisions in this case.
But, even with validity, infringement and urgency established to the court’s satisfaction in this case, it is the argument on irreversible damage that seems to confirm the need for the PI.
Here, the market for the patented products was very young and in an initial phase, in which it is decided to which suppliers customers will commit themselves for the next decade. The potential damage of being excluded from the market cuts both ways, but it would be harder for the claimant to reverse it.
So, the particular commercial circumstances in this case are important. But, the approach of the court seems to be that irreparable harm, or some other similarly serious factor, will be needed as well as the merits to be sure a PI will be granted.
Another PI decision, in a second 10x Genomics case, is expected soon.