10x Genomics, Inc. v Curio Bioscience Inc.
UPC_CFI_140/2024 (Dusseldorf Local Division)
Decision issued 16 June 2025 [1]
10x Genomics Inc. (10x Genomics) brought an infringement action against Curio Bioscience Inc. (Curio) accusing Curio of indirectly infringing claim 1, and directly infringing claim 14 of 10x’s patent EP 2 697 391 (‘the patent’) in their ‘Curio Seeker Spatial Mapping’ kits, sold in Germany, France and Sweden. Curio argued against this accusation, but did not counterclaim for revocation of the patent.
Claim 1 of EP 2 697 391 is directed to a method for localised spatial detection of RNA in a tissue sample, including providing an array comprising a substrate on which multiple species of capture probes are immobilized. Claim 13 is another method claim directed to making or producing an array for using in localised detection of nucleic acid in a tissue sample. Claim 14 is a system claim, directed to the array itself.
A preliminary injunction was issued on 30 April 2024 [2], granting 10x Genomics a preliminary injunction against Curio, with the Court finding that it was ‘more likely than not’ that Curio was infringing claim 14 of the patent, and had ‘sufficient certainty’ that the patent was valid.
Curio argued that 10x Genomics had not filed their application for provisional measures as early as possible, and so the action for provisional measures was not admissible, but they were unsuccessful. The Court determined that 10x Genomics had filed the action as soon as they could have done, ruling that, in the absence of positive knowledge of infringement, or at least where such knowledge cannot be established, grossly negligent ignorance or wilful blindness to infringement is considered equivalent. However, there is no general obligation to observe the market, and thus it is not sufficient for the Applicant to have been able to become aware of infringement through observing the competition. Curio’s attempts to show that 10x Genomics could have seen LinkedIn posts from its employees or its stall at a conference in London were found insufficient.
The Court further ruled that the ordering of provisional measures was necessary as research institutions cannot readily exchange products due to different characteristics of product lines resulting in lack of compatibility, meaning that the use of the infringing items is automatically long-term (e.g. the products are used over projects lasting several years), effectively sealing off the relevant market to 10x Genomics. It was ruled that it is neither foreseeable nor sufficiently predictable that 10x Genomics can easily regain at a later date the market share it is currently losing, and thus a preliminary injunction is appropriate.
Curio were ordered to refrain from offering marketing, using or possessing their kits in Germany, France, and Sweden. Whilst Curio initially appealed against this injunction, the appeal was later withdrawn before the main hearing.
The main proceedings closely followed the preliminary injunction decision, as the same division and panel of judges was used for both the preliminary injunction and main hearing. Thus, it is unsurprising that Curio was held to infringe claim 14.
However, the Court did not find that the use of Curio’s kits was sufficient to demonstrate indirect infringement of method claim 1. The sub-claims and description were referred to for interpreting claim 1, with the Court determining that one of the method steps required an intact array. As the array of probes in Curio’s kits is destroyed before analysis, Curio was not found to infringe this particular step of claim 1.
At the hearing, 10x Genomics presented new arguments stating that dependent claims 7 and 9 mean that claim 1 should be interpreted more broadly. Whilst this argument was not enough for Curio to be found to indirectly infringing claim 1, the Court notably admitted this argument without considering it ‘late’. As set out in the Headnotes of this decision, the Court reasoned that, because it must independently construe the claims [3] and because the construction of this feature was already in dispute, Curio’s arguments were merely additional arguments in support of the previously expressed position. While this may seem to be in contravention with the front-loaded approach, rather, it extends an approach that has developed over the past year of decisions. That is, the front-loaded approach applies to wholly new attacks and lines of arguments, and if “new” arguments merely extend an existing line of arguments or support an existing position, then it would likely not be regarded as ‘late’.
Notwithstanding the above, Curio additionally argued that the double territoriality requirement for indirect infringement of claim 1 was not fulfilled, arguing that method relating to the DNA sequence analysis were likely not to occur in the countries where the samples are collected, due to collaboration between research institutes around the world. Unfortunately, no decision was made on this point, as Curio were not found to infringe claim 1.
No counterclaim for revocation was filed, despite Curio arguing that a narrow interpretation of claim 1 was required in order for novelty over a cited prior art document. Whilst the Court did take a narrow interpretation of claim 1, they did not consider the cited prior art relevant to claim interpretation in this case. However, that is not to say prior art may never be considered for claim interpretation; the Court stated that, if prior art is discussed in the description and the patent distinguishes itself from the prior art in a particular way, this should be considered for claim interpretation.
In this case the prior art document was not mentioned in the patent description, so it could not be taken into account for determining the scope of protection.
Although novelty was raised in connection with the claim interpretation point, the Court regarded that validity of the patent had not been challenged because no counterclaim for revocation had been filed. This aligns with the earlier SodaStream v Aarke decision [4], which was cited by the Court at paragraph 65 of this decision.
The Court found Curio’s product to directly infringe claim 14 in Germany, France, and Sweden. The Court ordered that Curio pay 70% of the costs and damages, including for the preliminary injunction hearing, and ordered a permanent injunction including the recall and destruction of all of the offending products.
The infringement action was lodged in March 2024, a month before the preliminary injunction order was issued. However, it is evident that the decision for the preliminary injunction formed the vast majority of the basis for the ultimate infringement decision. This may have been due in part to the same Division (and in this case, panel of judges) being used for both sets of proceedings.
This decision may indicate that Divisions perform a comprehensive assessment of likelihood of validity and infringement for preliminary injunctions. It may also serve as a warning that, unless new facts or arguments are raised, the outcome of an infringement action may not differ from an earlier related preliminary injunction.
[1] https://www.unified-patent-court.org/en/node/125868
[2] https://www.unifiedpatentcourt.org/en/node/683, also notable for leading to a key Court of Appeal decision allowing a change of the language of proceedings to English, the language of the patent (UPC_CoA_101/2024)
[3] The Court refers to a Court of Appeal decision to support its position here (Insulet v EOFlow, UPC_CoA_768/2024, Order of 30 April 2025)
[4] UPC_CFI_373/2023 (LD Düsseldorf), Decision of 31 October 2024, headnote 2 SodaStream v Aarke