Second Injunction Issued Against CosMx
PLEASANTON, Calif., Sept. 19, 2023 /PRNewswire/ -- 10x Genomics, Inc. (Nasdaq: TXG), a leader in single cell and spatial biology, announced today that the European Unified Patent Court ("UPC") issued a preliminary injunction against NanoString Technologies, Inc. (Nasdaq: NSTG) for infringing European Patent 4 108 782 B1 ("the EP 782 patent," docket No 459746/2023). The preliminary injunction, issued by a panel of four judges with both legal and technical expertise, prevents NanoString from selling or providing services using its CosMx Spatial Molecular Imager (SMI) instruments and CosMx reagents for RNA detection in all 17 countries of the UPC.
Eric S. Whitaker, Chief Legal Officer for 10x Genomics, said: "Since the formation of 10x, our unwavering commitment has been to drive innovation to push science forward. We have made massive investments in cutting edge research and development resulting in revolutionary products transforming the world's understanding of health and disease. The entire purpose of patent systems around the world is to protect such innovations and encourage such investments. We will be steadfast in protecting the inventions that scientists have worked so hard to create, as innovation is what fuels and funds the development of future 10x technologies that benefit researchers ? and ultimately patients."
The injunction on the EP 782 patent requires that NanoString stop selling or providing services using the CosMx SMI instruments as well as CosMx reagents for RNA detection in Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden.
10x Genomics' acquisitions of ReadCoor and Cartana in 2020 accelerated its technology development of the Xenium in situ platform and provided 10x with access to key inventions, including what became the EP 782 patent, from the earliest pioneers of in situ analysis. This patent relates to the initial discoveries of critical and foundational technical features for in situ analysis, which underpin 10x's Xenium platform, a high performance system combining state-of-the-art instrumentation, curated and customizable gene panels and robust software to deliver best-in-class sensitivity, specificity and throughput.
"A patent holder must meet a very high standard to win a preliminary injunction," added Whitaker. "Two separate courts have now found that NanoString's CosMx products infringe two different 10x patents, and three separate courts have preliminarily found the 10x patents valid in the asserted scope. In total, three courts have analyzed hundreds of pages of arguments made by NanoString and have rejected NanoString's repeated claims that it does not infringe 10x patents, that the patents are invalid or that NanoString's claims to a license have merit. Although we welcome legitimate competition on the merits, competition based on our own innovations must stop."
The ruling of the UPC is subject to appeal. The preliminary injunction takes immediate effect today. The full opinions of the Unified Patent Court will be posted here when available: 10xgen.com/munich-spatial-news.
In a separate case before the UPC, 10x also requested a preliminary injunction against the CosMx Spatial Molecular Imager (SMI) instruments and CosMx reagents for RNA detection for infringing European Patent 2 794 928 B1 ("the EP 928 patent," docket No 459996/2023), which is in effect in France and the Netherlands in addition to Germany. The UPC held a hearing on this request today and announced that it expected to issue a decision on October 10, 2023.
In the United States, 10x filed suit against NanoString in the U.S. District Court for the District of Delaware alleging that NanoString's GeoMx Digital Spatial Profiler and associated instruments, reagents and services infringe: (a) U.S. Patent No. 10,472,669; (b) U.S. Patent No. 10,961,566; (c) U.S. Patent No. 10,983,113; (d) U.S. Patent No. 10,996,219; (e) U.S. Patent No. 11,001,878; (f) U.S. Patent No. 11,008,607 and (g) U.S. Patent No. 11,293,917. Trial is scheduled for November 2023. On September 7, the Court issued summary judgment in favor of 10x and dismissed NanoString's defenses relating to invalidity for indefiniteness. 10x has stated that it intends to seek more than $30 million in damages for sales prior to trial; this amount can be trebled in the event that the jury finds NanoString's infringement willful. 10x also intends to seek an injunction against sales of GeoMx as well as ongoing damages.
10x filed a second suit against NanoString in the U.S. District Court for the District of Delaware alleging that NanoString's CosMx Spatial Molecular Imager and associated instruments, reagents and services infringe multiple patents in the same patent family as EP 782 and EP 928, the patents NanoString has been enjoined from infringing by the UPC and German courts. The patents asserted in the second U.S. suit against NanoString include (a) U.S. Patent No. 10,227,639; (b) U.S. Patent No. 11,021,737; (c) U.S. Patent No. 11,293,051; (d) U.S. Patent No. 11,293,052; (e) U.S. Patent No. 11,293,054 and (f) U.S. Patent No. 11,542,554. Trial is scheduled for September 2024.
As previously announced, in February 2023, a five judge panel from the German Federal Patent Court, which included technical experts, issued a preliminary opinion finding the asserted claims of the EP 928 patent valid (docket no. 3 Ni 20/22). An oral hearing is scheduled for May 7, 2024. On May 17, a three judge panel of the Munich Regional Court found that the EP 928 patent was infringed and issued an injunction that requires NanoString to stop selling and supplying CosMx SMI instruments as well as CosMx reagents for RNA detection in Germany (docket No. 7 O 2693/22). NanoString appealed this decision to the Higher Regional Court Munich (docket No. 6 U 2360/23 e). A decision is not expected before late 2024.
Prior to today's preliminary injunction ruling on the EP 782 patent, 10x filed two main actions before the UPC to obtain decisions on the merits regarding infringement of the EP 782 and EP 928 patents by NanoString selling or providing services using its CosMx Spatial Molecular Imager (SMI) instruments and CosMx reagents for RNA detection. Decisions on both main actions are expected for late 2024 (docket No 568963/2023 re EP 782; docket No 573637/2023 re EP 928).
About 10x Genomics
10x Genomics is a life science technology company building products to accelerate the mastery of biology and advance human health. Our integrated solutions include instruments, consumables and software for single cell and spatial biology, which help academic and translational researchers and biopharmaceutical companies understand biological systems at a resolution and scale that matches the complexity of biology. Our products are behind breakthroughs in oncology, immunology, neuroscience and more, fueling powerful discoveries that are transforming the world's understanding of health and disease. To learn more, visit 10xgenomics.com or connect with us on LinkedIn or X (Twitter).
Forward Looking Statements
This press release contains forward-looking statements within the meaning of the Private Securities Litigation Reform Act of 1995 as contained in Section 27A of the Securities Act of 1933, as amended, and Section 21E of the Securities Exchange Act of 1934, as amended, which are subject to the "safe harbor" created by those sections. All statements, other than statements of historical facts, may be forward-looking statements. Forward-looking statements generally can be identified by the use of forward-looking terminology such as "may," "might," "will," "should," "expect," "plan," "anticipate," "could," "intend," "target," "project," "contemplate," "believe," "estimate," "predict," "potential," "would," "likely," "seek" or "continue" or the negatives of these terms or variations of them or similar terminology, but the absence of these words does not mean that a statement is not forward-looking. These forward-looking statements include statements regarding 10x Genomics, Inc.'s expectations regarding litigation and remedies as well as possible outcomes of litigation. These statements are based on management's current expectations, forecasts, beliefs, assumptions and information currently available to management, and actual outcomes and results could differ materially from these statements due to a number of factors. The material risks and uncertainties that could affect 10x Genomics, Inc.'s financial and operating results and cause actual results to differ materially from those indicated by the forward-looking statements made in this press release include those discussed under the captions "Risk Factors" and "Management's Discussion and Analysis of Financial Condition and Results of Operations" and elsewhere in the documents 10x Genomics, Inc. files with the Securities and Exchange Commission from time to time.
Although 10x Genomics, Inc. believes that the expectations reflected in the forward-looking statements are reasonable, it cannot provide any assurance that these expectations will prove to be correct nor can it guarantee that the future results, levels of activity, performance and events and circumstances reflected in the forward-looking statements will be achieved or occur. These forward-looking statements do not reflect that our success will depend on our ability to obtain, maintain and protect our intellectual property rights, intellectual property litigation could be expensive, time-consuming, unsuccessful and could interfere with our ability to develop, manufacture and commercialize our products or technologies, litigation outcomes are unpredictable, or there may be changes in our litigation strategy. The forward-looking statements in this press release are based on information available to 10x Genomics, Inc. as of the date hereof, and 10x Genomics, Inc. disclaims any obligation to update any forward-looking statements provided to reflect any change in our expectations or any change in events, conditions or circumstances on which any such statement is based, except as required by law. These forward-looking statements should not be relied upon as representing 10x Genomics, Inc.'s views as of any date subsequent to the date of this press release.
10x Genomics uses filings with the Securities and Exchange Commission, our website (www.10xgenomics.com), press releases, public conference calls, public webcasts and our social media accounts as means of disclosing material non-public information and for complying with our disclosure obligations under Regulation FD.
SOURCE 10x Genomics, Inc.
These press releases may also interest you