Press release dated December 12, 2023

AAS/EIs available at Munich Local Division of the UPC
On October 5, 2023, BARDEHLE PAGENBERG requested – on behalf of theirclient 10x Genomics – the first ever preemptive anti-anti-suit/enforcement
injunction (AAS/EI) at the Unified Patent Court (UPC) against NanoString toprotect the enforcement of a preliminary injunction granted by the Munich
Local Division (MLD) based on the Unitary Patent EP 4 108 782 B1 (LDMunich, 19 September 2023, decision and orders on preliminary measures,
UPC_CFI_2/2023 » UPC Law). With preliminary order of October 6, 2023
(docket no. UPC CFI 357/2023) issued by the presiding judge, the MLD madeclear that it would grant an ex parte AAS/EI if NanoString would not provide
a sufficient cease and desist declaration to not request an AS/EI with the US
Delaware District Court within a very short deadline. As a consequence,NanoString provided a respective cease and desist declaration undercontractual penalty so that a decision by the MLD was no longer necessaryPrinzregentenplatz 781675 München
T +49.(0)89.928 05-0
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and the proceedings were terminated.
The background of this case is that NanoString had already previously tried toobstruct/delay the grant of an injunction in parallel national infringement proceedings inGermany by way of an AS/EI request before the United States District Court for theDistrict of Delaware. This was countered by 10x Genomics by successfully requesting anAAS/EI before the Regional Court of Munich I (docket no. 7 O 5416/23), which wasgranted within 24 hours (BARDEHLE PAGENBERG paves way to successful
infringement proceedings for 10x Genomics with anti-anti-suit-injunction | BARDEHLE
PAGENBERG). This AAS/EI was later confirmed upon NanoString’s appeal after the oral
hearing and the subsequent judgment dated July 20, 2023 (BARDEHLE PAGENBERG
achieves another victory for 10x Genomics against NanoString | BARDEHLE
PAGENBERG).
Notably, 10x Genomics had sent a warning letter to NanoString before approaching theUPC in this regard. NanoString failed to provide the respective cease and desist
declaration in response and in the subsequent oral hearings at the UPC and the oral
hearing in the German AAS/EI-proceedings at the Regional Court Munich I.
10x Genomics is a highly innovative US life science company that designs andmanufactures life science technology used in basic scientific research. In March 2022, it

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Singaporefiled two patent infringement lawsuits against NanoString with the Regional Court ofMunich I to protect its ground-breaking intellectual property underlying its Xenium
platform. The 10x Xenium platform allows analyses of gene expression in tissues anddistinguishes itself in characteristics that matter most to scientists.
The German patent infringement action against NanoString is based on indirect
infringement of claim 1 of the European patent EP 2 794 928 B1 restricted particularly toin-situ detection of RNA molecules (the patent). 10x Genomics obtained an exclusive
license to the patent. On May 17, 2023, the Court held that NanoString Technologies Inc.
and NanoString Technologies GmbH infringe the patent by offering and distributing theirproducts CosMx Spatial Molecular Imager and CosMx reagents for RNA detection inGermany (docket nos. 7 O 2693/22 and 7 O 5812/22). Both injunctions were provisionally
enforced against a provision of security. NanoString Technologies Inc. and NanoString
Technologies GmbH filed an appeal, which is currently pending.
On September 19, 2023, the MLD granted the first ever preliminary injunction based on
the first ever asserted Unitary Patent in favor of 10x Genomics against NanoString witheffect in all 17 Member States of the Agreement on a Unified Patent Court (UPCA) (docketno. UPC CFI 2/2023; BARDEHLE PAGENBERG secures landmark UPC victory for 10x
Genomics against NanoString | BARDEHLE PAGENBERG). The patent at issue isEP 4 108 782. After extensive briefing, a two-day inter partes hearing took place on
September 5 and 6, 2023, i.e. about three months after filing. This was the UPC’s very
first substantive hearing. The MDL pronounced the decision on September 19, 2023 andserved the written reasons on the parties on September 20, 2023. It held that NanoString
infringed the patent, that the patent is valid with a clearly preponderant likelihood andthat 10x Genomics’ interests in interim relief outweigh NanoString’s interests incontinuing the infringing business within the UPC territory. The MLD rejected manyother arguments made by NanoString and did not order 10x Genomics to provide anenforcement security. Thus, the injunction became effective immediately on
September 20, 2023. Specifically, the MLD held that NanoString Technologies Inc.,
NanoString Technologies Germany GmbH, and NanoString Technologies
Netherlands B.V. infringe the patent directly and indirectly by offering and distributing
their products CosMx Spatial Molecular Imager and CosMx reagents for RNA detection.
NanoString has filed an appeal on which a decision has not been yet rendered.
Meanwhile, parallel UPC main infringement proceedings are pending at the MLD.

Representatives of 10x Genomics:
BARDEHLE PAGENBERG (Munich, Germany)
2|3Prof. Dr. Tilman Müller-Stoy (Lead Attorney-at-Law (Rechtsanwalt), Certified IP Lawyer,
Commercial Mediator (MuCDR), UPC Representative, Partner)
Dr. Tobias Wuttke (Attorney-at-Law (Rechtsanwalt), Certified IP lawyer, UPC
Representative, Partner)
Dr. Martin Drews (Attorney-at-Law (Rechtsanwalt), UPC Representative, SeniorAssociate)
Dr. Kerstin Galler (Attorney-at-law (Rechtsanwältin), UPC Representative, SeniorAssociate)
Monika Harten, LL.M. (Univ. Chicago) (Attorney-at-law (Rechtsanwältin), UPC
Representative, Associate)
Representatives of NanoString Technologies:
Bird&Bird (Duesseldorf/Munich, Germany)
Oliver Jüngst, LL.M. (Attorney-at-Law)
Dr. Moritz Schroeder (Attorney-at-Law)
Munich Local Division
Presiding Judge Dr. Matthias Zigann
Judge Rapporteur: Tobias Pichlmaier

BARDEHLE PAGENBERG combines the professional expertise of attorneys-at-law,patent attorneys, professional representatives before the European Patent Office,specialized trademark lawyers and qualified technical consultants. Our consulting services
are tailored to our clients' individual needs and the specific circumstances of each case.
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Gabriela Tröger

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Marketing & PR

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gabriela.troeger@bardehle.de81675 Munich

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