Local Division Munich
UPC_CFI_298/2023
ACT_568963/2023
Procedural Order
of the Court of First Instance of the Unified Patent Court
Local Division Munich
issued on 11 April 2025
Headnotes:
1. In light of Rule 30.1 (c) RoP, a total of 4 auxiliary requests is indisputably in each
case reasonable in number.
2. The longer a proceeding has already lasted, the greater weight is given to the
right to be heard within a reasonable period of time in a fair proceeding when
deciding whether to continue the proceeding.
UPC_CFI_298/2023
2
Claimant:
1. 10x Genomics, Inc.
2. President and Fellows of Harvard College
represented by: Tobias Wuttke
Defendants:
1. Bruker Spatial Biology, Inc.
2. LUXENDO GmbH
3. BRUKER NEDERLAND B.V.
4. Bruker Corporation
represented by: Oliver Jan Jüngst
Language of the proceedings:
English
Patent at issue:
EP 4 108 782
Deciding Judge:
This order has been issued by presiding judge Matthias Zigann and the legally quali-
fied judges András Kupecz and Tobias Pichlmaier
Points at issue:
Continuation of the written procedure
UPC_CFI_298/2023
3
Facts
The infringement action on which this proceedings are based was filed on
31 August 2023.
In the meantime, the proceedings had to be stayed for many months, initially due to
insolvency on the part of the former defendants and later with regard to the oral
hearing before the Opposition Division of the EPO.
On 19 August 2024 claimant 2) filed 55 auxiliary requests within the application to
amend the patent at issue. The judge-rapporteur thereupon and with reference to Rule
30.1 c) RoP ordered claimant 2) to reduce the number of auxiliary requests to a one-
digit number. The Panel modified this order within a proceeding according to Rule 333
RoP. Claimant 2) was then ordered to submit auxiliary requests within 20 days after
the decision of the Opposition Division of the EPO. This order did not include a re-
striction on the number of auxiliary requests. Defendants have appealed against this
order. This appeal is pending.
Already in November 2024, the parties agreed on 17 September 2025 as the date for
the oral hearing in the proceedings before the Court of First Instance.
On 20 March 2025, the Opposition Division maintained the patent at issue in a limited
version
On 9 April 2025, claimants submitted a revised application to amend the patent with a
total of 4 auxiliary requests (App_17184/2025; App_17187/2025; App_17189/2025)
and an application for leave to change claim (App_17191/2025).
Reasons
The panel is aware that the Court of Appeal is dealing with the appeal dated 27 January
2025 concerning the admissibility of the former application to amend the Patent and
the quantity of auxiliary requests.
The panel is also aware that the court of appeal suggested to await the decision of the
Court of Appeal before submitting the revised application and/or drafting a response to
such revised application. However, this suggestion was made at a time when the Court
UPC_CFI_298/2023
4
of Appeal could not have known that the number of auxiliary requests would be reduced
to just four.
It cannot be ignored that the filing of new auxiliary requests on 9 April 2025 has created
a new situation: Claimant now has filed a one-digit number of auxiliary requests (4).
This is indisputably in each case a reasonable number of auxiliary requests according
to Rule 30.1 c) RoP.
In view of
- the fact that there are now only 4 auxiliary requests remaining in the pro-
ceedings,
- the fact that the proceedings have already lasted almost two years due to
the suspensions that have occurred,
- the fact that a date for an oral hearing has already been agreed with the
parties, which will become obsolete if the proceedings are not continued
without further delay,
- the fact that the Local Division is already booked up in such a way that it
would otherwise not be possible to hold the oral hearing this year,
- the right of the parties to be heard in a fair hearing within a reasonable pe-
riod of time,
the local division exercises its discretion in conducting the proceedings to order the
immediate continuation of the proceedings.
This decision is based on the consideration that the Unified Patent Court should be
devised to ensure expeditious and high quality decisions, striking a fair balance be-
tween the interests of both parties and taking into account the need for proportionality
and flexibility.
This specifically means that the longer a proceeding has already lasted, the greater
weight is given to the right to be heard within a reasonable period of time in a fair
proceeding when deciding whether to continue the proceeding.
UPC_CFI_298/2023
5
Order
1. The immediate continuation of the written procedure is ordered.
2. The deadline for defendants to lodge a reply to claimant's written submissions
dated 9 April 2025 (App_17184/2025; App_17187/2025; App_17189/2025 and
App_17191/2025) is set for 11 June 2025.
3. The deadline for claimants to lodge a reply to defendant's written submission, that
will be received not later than 11 June 2025, is set for 11 July 2025.
4. The deadline for defendants to lodge a reply to claimant's written submission, that
will be received not later than 11 July 2025, is set for 11 August 2025.
5. The date for the oral hearing as agreed with the parties (17/18 September 2025)
remains unchanged.
6. The parties are requested to indicate by 9 May 2025 whether they will be availa-
ble for an interim conference (by video conference) on 14 August 2025. The
judge-rapporteur offers Monday, 18 August 2025, as an alternative date for an
interim conference. If the parties are of the opinion that an interim conference is
not required, this must also be stated until 9 May 2025.
Dr. Matthias Zigann
Presiding Judge
András Kupecz
Legally qualified Judge
Tobias Pichlmaier
Legally qualified Judge
Tobias Günther
Pichlmaier
Digital unterschrieben von Tobias
Günther Pichlmaier
Datum: 2025.04.11 09:55:38 +02'00'
Matthias ZIGANNDigital unterschrieben von Matthias
ZIGANN
Datum: 2025.04.11 10:05:50 +02'00'
András Ferenc
Kupecz
Digital unterschrieben von
András Ferenc Kupecz
Datum: 2025.04.11
10:12:46 +02'00'