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

EPG-Rechtsprechung | 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.

Contributor: Sebastian Giese

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.

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.

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