💡𝐔𝐏𝐂 𝐍𝐞𝐰𝐬: 𝐏𝐚𝐭𝐞𝐧𝐭 𝐫𝐞𝐯𝐨𝐤𝐞𝐝 𝐢𝐧 𝐍𝐚𝐧𝐨𝐒𝐭𝐫𝐢𝐧𝐠 𝐯. 𝐏𝐫𝐞𝐬𝐢𝐝𝐞𝐧𝐭 𝐚𝐧𝐝 𝐅𝐞𝐥𝐥𝐨𝐰𝐬 𝐨𝐟 𝐇𝐚𝐫𝐯𝐚𝐫𝐝 𝐂𝐨𝐥𝐥𝐞𝐠𝐞
In a merits decision (https://lnkd.in/eaKcRCWG) between NanoString Technologies (claimant) v. President and Fellows of Harvard College (defendant), the CD Munich revokes the patent in its entirety. The CD concludes that the main request lacks novelty, while the auxiliary requests either lack inventive step or novelty. The decision aligns with earlier decisions on the same patent: (1) the LD Munich’s denial of a preliminary injunction (UPC_CFI_17/2023), and (2) the German Federal Patent Court’s finding of invalidity of the German part of the patent, which is currently under appeal. Besides Germany, the patent in suit was in force in the Netherlands and France.
First, the CD examines its international jurisdiction on its own motion, despite parties' agreement to submit to the UPC’s jurisdiction. In the light of the parallel German invalidity proceedings, the CD applies the Brussels I recast Regulation.
▪ Art. 29 and 31 Brussels I recast on lis pendens are not applicable, as the parties in the two proceedings are not the same. The fact that both parties belong to the same group of companies and have the same parent company is not sufficient (CoA, Mala/Nokia, https://lnkd.in/eDh3F4d7).
▪ Art. 30 Brussels I recast on related actions is applicable, but the CD decides not to stay proceedings. The CD finds that the interests of the party and the procedural economy outweigh the risk of contradictory decisions. Relevant factors include: the legal certainty requested by both parties, the advanced stage of the present case, and the fact that the Dutch and French parts of the patent are not affected by the German proceedings.
In its assessment of validity, the CD finds that claim 1 as granted lacks novelty over prior publication Göransson, which directly and unambiguously discloses all features of claim 1. The CD then examines the auxiliary requests:
▪ Auxiliary request 1 lacks inventive step. Göransson is a realistic starting point, and it was obvious for the skilled person to transfer the method of Göransson to an in situ context, thereby arriving at the claimed subject matter. “Problems” raised by defendant would not have caused the skilled person to not have a reasonable expectation of success.
▪ Auxiliary requests 2-8 fail to overcome the deficiencies established in the earlier claims.
▪ New auxiliary request 2 is late-filed and inadmissible. Defendant’s argument that it awaited the CoA's PI decision is insufficient. Claimant’s claim interpretation followed by the CoA was already known to defendant from the present merits, i.e. before the CoA’s decision. Defendant could and should have filed the auxiliary request earlier.
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