UPC_CFI_140/2024 – 10x Genomics v Curio

Expert Commentary

Providing samples / Preparation of the oral argument The Judge-Rapporteur (“JR”) The Court has noted that the defendant has the intention to provide samples during oral argument. The Court recalls (R. 9.2 RoP) that it may disregard these as not having been submitted in accordance with the time set by the Rules (in this case, after the written procedure, one week before the hearing). A definite decision shall be made by the Court during the oral hearing. The JR points out that it is up to the discretion of the Court to order publication of the decision in the media, and that the interest of the claimant in publication must outweigh the negative consequences for the defendant; The JR corrects vague language in the request; The JR furthermore asks parties to give a preliminary estimate of the legal costs and asks for the uploading of documents and sketches which they want to use for clarification during oral argument. The JR furthermore indicates that the presiding judge will give an introduction of the case with a preliminary assessment so far, notwithstanding that it will also take into consideration the oral argument. The JR adds that if the Court did not raise an issue, that does not mean that the Court has not noted it. After the introduction, the parties will get an hour for the first instance and 30 minutes for reply and rebuttal. Comment A reminder for representatives: you cannot, without permission of the Court, present any new fact, submission, samples, etc., after the closure of the written procedure. So if you want to show samples, use a video or blown-up drawings, etc., during an oral hearing, make sure you file them during the written phase; then you do not run any risk. If for one reason or another you have not done so, then lodge a timely Art. 9 request (I would say around 4 weeks before the oral argument) arguing that the item you want to show is for explanatory reasons only but does not contain new facts. Send at the same time a sample to the opposing party. Probably such a request will be granted, but there is no guarantee! Of course, if the other side does not object and it also helps the Court to understand the case better, then acceptance is likely. Representatives (especially patent attorneys among them) should realize that many lawyers (legal minds) sometimes have difficulty converting two-dimensional drawings in their mind into the real three-dimensional object. So samples, maquettes, etc., can be useful! Publication of the decision should in my view (and that seems also the opinion of the Court) be the exception, for which the claimant should have convincing reasons. I think it is good that the Court states that documents and sketches to be used for clarification can be filed. It would be good if that has to happen a certain time before the oral argument so that the other side can study them and, if necessary (if they contain new facts or are misleading), can object. As written earlier, if the Court does not give an order (as in this case the JR wisely does), then you should timely request the Court to allow to use such materials (with a copy to the opposing party). I am not such a fan of a “preliminary assessment”. Although the JR says that of course the oral argument will be taken into consideration, my (limited) experience in the national German courts has been that in almost all cases, that preliminary assessment was the outcome of the case. On the contrary, I have no problem and applaud if the Court indicates which questions they still have or what they want to discuss after reading the written submission. However, to indicate that at the beginning of the hearing and then give parties some time to think about it (discuss internally) is far from ideal and can even lead to the wrong results. Also, it seems to me a waste of time. It is much better to send the questions or subjects to be discussed to the parties a week before the hearing. Representatives should make sure that they make the observations which they think are important for their case, even if the Court did not address it and maybe even ignore it if you raise it. On appeal, you cannot make such observations anymore! Although I accept that a certain local flavour should be possible, I wonder if during a next training session, judges should agree on a somewhat more common approach to the oral hearing (and the role of the interim conference). Not only is that easier for the judges in the panel that come from other traditions with respect to oral arguments, but also for the representatives, a somewhat more uniform approach makes it easier to appear in all Divisions.

Full Decision Text

Düsseldorf Local Division UPC_CFI_140/2024 Procedural Order of the Court of First Instance of the Unified Patent Court issued on 30 April 2025 concerning EP 2 697 391 B1 CLAIMANT: 10x Genomics, Inc., legally represented by the Board of Directors, this represented by the CEO Serge Saxonov , 6230 Stoneridge Mall Road, 94588-3260 Pleasanton, CA, USA represented by: Attorney-at-law Prof Dr Tilman Müller-Stoy, Attorney-at-law Dr Martin Drews, Patent attorney Dr Axel Berger, Prinzregenten platz 7, 81675 Munich, Germany electronic address for service: mueller-stoy@bardehle.de DEFENDANT: Curio Bioscience Inc., represented by its CEO Stephen Fodor 4030 Fabian Way, Palo Alto, CA 94303, USA represented by: Attorney-at-law Agathe Michel-de Cazotte, European Patent attorney Cameron Marshall, 1 Southampton Row WC1B 5HA London, United Kingdom electronic address for service: U010318UC@carpmaels.com co-counsel: PATENT AT ISSUE: Attorney-at-law Dr Christoph Höhne, Attorney-at-law Isabelle Schaller, Breite Strasse 29 – 31, 40213 Düsseldorf, Germany European patent n° EP 2 697 391 B1 PANEL/DIVISION: Panel of the Local Division in Düsseldorf DECIDING JUDGES: This order was issued by Presiding Judge Thomas acting as judge-rapporteur. LANGUAGE OF THE PROCEEDINGS: English SUBJECT OF THE PROCEEDINGS: R. 9 RoP – Application to make sample available for inspection ORDER: 1. 2. 3. The Court has taken note of the Defendant’s intention to provide samples. The Court recalls that it may disregard any step, fact, evidence or argument which a party has not taken or submitted in accordance with a time limit set by the Court or by the Rules of Procedure (R. 9.2 RoP). As the Defendant has not provided any reasons why the sample should be made available after the closure of the written proceedings and one week before the hearing, the Court is considering making use of this possibility. The Panel will decide on this issue, also taking into account the parties’ submissions at the oral hearing. This workflow will be closed by this order. DETAILS OF THE ORDER: App_20508/2025 under main file reference ACT_15774/2024 UPC-number: UPC_CFI_140/2024 Type of procedure: Infringement action Issued in Düsseldorf on 30 April 2025 NAMES AND SIGNATURES Presiding Judge Thomas 2

Key Holdings

• Late submission of samples may be disregarded (R. 9.2 RoP).
• Publication of decision in media is discretionary and exceptional.
• Preliminary cost estimate and clarification documents requested.
• Preliminary assessment to be given at oral hearing.

Tags

• Case Management
• Evidence
• Late Submissions
• Oral Hearing
• Publication of Decision

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