UPC CFI 140/2024: LD Düsseldorf provides further guidance on claim interpretation in 10x Genomics vs. Curio Bioscience infringement decision

UPC Case Law | 27.06.2025

Court docket: LD Düsseldorf, decisions of 16.04.2025 - CFI 140/2024 [EP 2 697 391]
Parties: 10x Genomics v. Curio Bioscience Inc.

Headnote

As claim construction is a matter of law and the Court must independently construe the claims (UPC_CoA_768/2024, Order of 30 April 2025, Headnote 1 - Insulet Corporation v EOFlow), the first reference to (further) subclaims at the oral hearing may be admissible provided that the feature in question was already in dispute and the subclaims merely provide additional arguments in support of the party’s previously expressed position.

Significance/Relevance of the decision

In the first-instance decision regarding the infringement action of 10x Genomics against Curio Bioscience, the LD Düsseldorf provides further guidance on claim interpretation – and its limits – at the UPC (see para. 66-90). While acknowledging that, from a functional perspective, the release of nucleic acid from an intact (i.e., an ordered) array may not be required for obtaining transcriptional information in accordance with the patent in suit, the Court emphasizes that the person skilled in the art should not only take into account such functional considerations. They consider that, in the present case, these functional considerations cannot be reconciled with the clear wording of the claim, according to which an intact array is required in the release step. And, since Art. 69 EPC should not be understood to mean that the claims serve only as a guideline and that the protection actually conferred may extend to what a skilled person would have thought of when considering the description and drawings, the Court decides that the clear wording of the claim prevails, so that claim 1 is not infringed.

The primacy of the claims, which the LD Düsseldorf emphasizes in this decision, is already well-established at the EPO. Also the fact that the description and the drawings must always be taken into account for interpreting the claims has now been confirmed by both the UPC and the EPO. In the recently published decision G 1/24, the EPO’s Enlarged Board of Appeal held that: “The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC. The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation.” It thus seems like the UPC and EPO are finding common ground on the principles of claim interpretation.

Additionally, the LD Düsseldorf in this decision establishes the principle that “the first reference to (further) subclaims at the oral hearing may be admissible provided that the feature in question was already in dispute and the subclaims merely provide additional arguments in support of the party’s previously expressed position” (see headnote). This, too, seems in line with EPO practice. For example, in decision T 247/20, the EPO Board of Appeal held that “illustrating, refining or further developing the arguments already presented with the grounds of appeal” should be allowable because “oral proceedings would serve no purpose if the parties were limited to presenting a mere repetition of the arguments put forward in writing”. Referring to subclaims in support of a party’s previously expressed position could be seen as “further developing the arguments” and, in line with T 247/20, may thus also be allowable in EPO oral proceedings - even before the Boards of Appeal.

Brief Summary

Key Facts

  • Infringement Action
    • The patent in suit and the challenged embodiment relate to obtaining transcriptomic information with spatial resolution, i.e., to determining what is expressed where in a tissue sample.
    • The Claimant alleges:
      1. Indirect infringement of claim 1 (method for localised detection of nucleic acid in a tissue sample)
      2. Direct infringement of claim 14 (product, i.e., array for use in the localised detection of nucleic acid in a tissue sample)
    • The challenged embodiment is a kit comprising spatially indexed beads that are coated with barcoded oligonucleotides and located on tiles.
    • The oligonucleotides can hybridise (i.e., bind) to tissue mRNA (i.e., to nucleic acid) for determining which and where the mRNA is expressed in the tissue. 
  • Previous Ruling
    • A preliminary injunction (PI) had been granted by the same panel of the LD Düsseldorf in April 2024, finding infringement of claim 14 but not of claim 1.

Core Legal Issues & Arguments

1. Interpretation of “array” (step (e) of claim 1)

  • Step (e) of claim 1 requires the release of nucleic acid from the surface of an “array”.
  • The parties disagreed on whether, in the challenged embodiment, nucleic acid is released “from the surface of the array” as required by claim 1, or whether the array is disordered and thus destroyed before the release so that the release does not occur from an (intact) array.
  • Claimant’s Position:
    • The term “array” is used broadly in the patent in suit and step (e) of claim 1 does not require that that the nucleic acid is released from an ordered array.
    • According to the patent in suit, the array must be kept in an “ordered” form only for as long as is necessary to obtain the positional information on the tissue nucleic acid.
    • Therefore, even if nucleic acid is released from disordered beads in the challenged embodiment, this is a release “from the surface of the array” in accordance with claim 1.
    • During the oral hearing, the Claimant submitted that such a broad interpretation of the term “array” is also supported by subclaims 7 and 9, because a narrower interpretation would result in that embodiments of these claims are not covered by claim 1.
  • Defendant’s Position:
    • An “array” implies an ordered arrangement.
    • For step (e) of claim 1, i.e., for “releasing [...] from the surface of the array,” the array including its ordered arrangement must still be intact.
    • Since, in the challenged embodiment, the nucleic acid is released from disordered beads, it is not released from an (intact) array in the sense of the patent in suit.
  • Court’s Analysis:
    • According to Article 69 EPC, the claim is the decisive basis for determining the scope of protection, but the description and the drawings must always be taken into account as aids to the interpretation.
    • According to the description of the patent in suit, an array requires an “ordered arrangement” of oligonucleotides.
    • Since, in the challenged embodiment, the beads are detached from the underlying surface and thus disordered before the nucleic acid is released, the array is destroyed before the release of the nucleic acid.
    • Therefore, the nucleic acid is not released from an “array” in the sense of step (e) of claim 1.
    • The Claimant’s arguments based on subclaims 7 and 9 are taken into account but do not change the Court’s conclusion.

2. Interpretation of Claim 14

  • The Court holds that the challenged embodiment literally meets the structural requirements of claim 14, which is directed to an array for use in the localised detection of nucleic acid in a tissue sample.
  • Since claim 14 is a product claim, it is irrelevant how the claimed array is produced - the structure is decisive.

Outcome

  • Confirmation of PI decision by the same panel, i.e.:
    • no infringement of claim 1 because the array no longer exists at the time of nucleic acid release; and
    • infringement of claim 14 because the kit’s structural features match the protected array features.

Bottom line:
Claim 14 (product) is infringed by Curio Bioscience’s kit, while claim 1 (method) is not because the array is destroyed before the required “release” step.

Contribution: Sebastian Giese

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