Reference nos: UPC_CoA_335/2023 APL_576355/2023 App_6601/2024

Order of the Court of Appeal of the Unified Patent Court issued on 26/02/2024 in the proceedings for granting provisional measures concerning EP 4 108 782

HEADNOTE

In accordance with the principles of procedural economy and cost efficiency as well as a fair balance between the legi�mate interests of the par�es, which must be considered in the interpreta�on of the Rules of Procedure pursuant to Ar�cle 41(3) UPCA, the proceedings are not required to be stayed under Rule 311.1, first sentence RoP, if a party is declared insolvent only a�er the oral proceedings have concluded and the dispute is ready for a decision.

KEYWORDS:

Appeal , Insolvency of a party.

DEFENDANTS and APPELLANTS

NanoString Technologies Inc.

530 Fairview Ave N -98109 -Seatle (WA) -US

NanoString Technologies Germany GmbH

Birketweg 31 -80639 - Munich - DE

NanoString Technologies Netherlands B.V.

Paasheuvelweg 25 -1105BP - Amsterdam - NL

Represented by: Oliver Jan Jüngst, Atorney -atlaw, Bird & Bird LLP

APPLICANTS and RESPONDENTS

10x Genomics, Inc.

6230 Stoneridge Mall Road -94588 3260 --Pleasanton (CA) -US

President and Fellows of Harvard College

Suite 727E, 1350 Massachusets Avenue -02138 -Cambridge (MA) -US

Represented by: Prof Dr Tilman Müller Stoy, Atorney --atlaw, Bardehle Pagenberg

Partnerscha� mbB

P ATENT AT ISSUE

EP 4108782

P ANEL AND DECIDING JUDGES

First Panel

Klaus Grabinski, President of the Court of Appeal and Judge -Rapporteur Françoise Barutel, Legally qualified Judge Peter Blok, Legally qualified Judge Rainer Friedrich, Technically qualified Judge Cornelis Schüller, Technically qualified Judge

L ANGUAGE OF PROCEEDINGS

German

I MPUGNED ORDER

Order ("Decision and Orders") of the Court of First Instance (Munich Local Division) of 19 /09/2023 -UPC CFI 2/2023

F ACTS AND REQUESTS OF THE PARTIES

The Applicants and Respondents (hereina�er the Applicants) are seeking injunc�ve relief against the Defendants and Appellants (hereina�er the Defendants) for direct and indirect infringement of the European patent with unitary effect (unitary patent) 4 108 782 (patent at issue). The Defendants are affiliated as a group of companies, consis�ng of the American parent company, the German sales and marke�ng company and a Dutch company, which also maintains the European headquarters of the group of companies.

The Court of First Instance largely granted the Applicants' corresponding request. The Defendants have lodged an appeal against this Order. The Applicants have defended the Order.

Following writen proceedings, the oral hearing on the appeal was held before the Court of Appeal of the Unified Patent Court on 16 December 2023.

On 4 February 2024, all Defendants filed a joint pe��on with one of their sister companies in the US Bankruptcy Court for the District of Delaware to open insolvency proceedings under Chapter 11 of the Bankruptcy Code.

At the Defendants' request, on 6 February 2024, the same court granted an Order confirming, resta �ng and enforcing the worldwide automa�c stay , an� discrimina�on provisions and -ipso facto protec�on of Sec�ons 362, 365, 525 and 541(c) of the Bankruptcy Code, subject to certain condi�ons (see US Bankruptcy Court for the District of Delaware , order of 6 February 2024, B39).

In light of this development, the Applicants request that the proceedings be stayed for a period to be determined by the Court.

The D efendants consent to the request that the proceedings be stayed in all respects, including, but not limited to, the issuance of a Decision by the Court of Appeal.

GROUNDS FOR THE ORDER

The par�es' applica�ons for a stay of the proceedings lack merit .

Pursuant to Rule 311.1, first sentence, RoP the Court shall stay the proceedings for up to three months if a party is declared insolvent under the law applicable to the insolvency proceedings.

According to the American law applicable as lex fori concursus , Chapter 11 Bankruptcy Code (Chapter 11) proceedings have been opened regarding the assets of the Defendants. Pursuant to Sec �ons 301 and 362 of the Bankruptcy Code, the opening of the proceedings was effected by the applica�on filed by the Defendants on 4 February 2024. In addi�on, the US Bankruptcy

Court for the District of Delaware has confirmed the automa�c worldwide enforcement, the an� discrimina�on provisions and the -ipso facto protec�on of Sec�ons 362, 365, 525 and 541(c) of the Bankruptcy Code -subject to certain condi�ons -and thus the opening of insolvency proceedings by Order dated 6 February 2024.

Chapter 11 proceedings aim to reorganise and restructure a company by drawing up a reorganisa�on plan, which must be accepted by the creditors and confirmed by the court. For the dura�on of the proceedings, the debtor generally retains the power of administra�on and representa�on under the ipso facto protec�on of Sec�ons 362, 365, 525 and 541(c) of the Bankruptcy Code and an administr ator is appointed only in excep�onal cases.

Whether the opening of proceedings under Chapter 11 can be regarded as a declara�on of insolvency within the meaning of Rule 311. 1 , first sentence, RoP, irrespec�ve of the Defendants' con�nu ed ability to trade , does not require a final decision (see on the one hand the judgement by the BGH (German Federal Court of Jus�ce) of 13 October 2009 X ZR 79/06, -GRUR 2010, 861 on Sec. 240 ZPO (German Code of Civil Procedure) ; on the other hand see EPO Legal Board of Appeal Decision of 13 October 1998 -J 26/95, on Rule 90(1)b) [now Rule 142.(1)b)] of the Implemen�ng Regula�ons to the Conven�on on the G rant of European Patents IR ( EPC)).

Even if this is affirmed and thus the requirements for the applicability of Rule 311.1, first sentence, RoP are met, there is nevertheless no reason to stay the proceedings.

According to the wording of Rule 311. 1 , first sentence, RoP a stay is provided for if a party has been declared insolvent.

However, the Rules of Procedure are to be interpreted in accordance with Art. 41(3) UPCA so as to ensure a fair balance between the legi�mate interests of all par�es, that the proceedings are conducted in the most efficient and cost effec�ve manner and that the required level of discre�on of judge is provided without impair ing the predictability of proceedings for the par�es. However, it would not be compa�ble with the principles of procedural economy and cost efficiency if the proceedings had to be stayed even in a case in which a party was only declared insolvent a�er the oral hearing had concluded and the legal dispute was ready for a decision. At this stage of the proceedings, the par�es have already taken all procedur al steps and all costs have already been incurred by the par�es. If the decision or order has an effect on the insolvency estate, it does not differ from the effect that a decision or order issued before the declara�on of insolvency would have had. Furthermore, the interest in a �mely order weighs par�cularly heavily in proceedings aimed at provisional legal protec�on, as is the case here. Furthermore, it leads to a fair balance between the legi�mate interests of the par�es if events that only occurred a�er the conclusion of the oral hearing are also no longer to be considered in the decisionmaking process.

The fact that in par�cular the principles of procedural economy and cost efficiency as well as a fair balance between the legi�mate interests of the par�es speak in favour of not s tay ing the proceedings if a party is declared insolvent a�er the oral hearing has concluded and the legal dispute is ready for a decision is confirmed by comparable provisions in the na�onal civil procedural law o f several contrac�ng M ember States to the Agreement.

According to the French and German codes of civil procedure, the opening of insolvency proceedings regarding the assets of a party generally results in the interrup�on of the civil proceedings; however, this does not apply if the insolvency proceedings are only opened a�er the conclusion of the oral hearing (Art. 369, 371 Code de procédure civile ; §§ 240, 249(3) Zivilprozessordnung ). In Italy, the interrup�on occurs if the representa�ve of the party whose assets are subject to insolvency proceedings (Art. 300 Codice di procedura civile ) declares this at the hearing or no�fies the other par�es; however, according to the case law of the Corte di Cassazione , this is no longer possible a�er the conclusion of the oral hearing ( Corte di Cassazione, 3 March 2022 -7076/2022). In the Netherlands, the proceedings for payment claims are stayed with the declara�on of insolvency, while for other claims the claimant may request a stay in order to involve the insolvency administrator in the proceedings (Art. 28 and 29 Faillissementswet ); however, these provisions are not applicable if the case is already ready for a decision (Art. 30 Faillissementswet ).

In view of the above, the decision not to stay the proceedings in the present case is jus�fied because the Chapter 11 proceedings concerning the Defendants' assets were not opened un�l a�er the conclusion of the oral hearing.

ORDER

The requests by both par�es for a stay of proceedings are dismissed.