10x Genomics, Inc. and President and Fellows of Harvard College v. Vizgen, Inc.

This provisional procedural order (Vorläufige Verfahrensanordnung) was issued on October 24, 2024, by Judge-Rapporteur Sabine Klepsch of the Local Chamber Hamburg in case UPC_CFI_22/2023, a patent infringement action (Patentverletzungsklage) concerning European Patent EP4108782 owned by President and Fellows of Harvard College.

The parties are 10x Genomics, Inc. and President and Fellows of Harvard College (plaintiffs), represented by Prof. Dr. Tilmann Müller-Stoy, and Vizgen, Inc. (defendant), represented by Jérome Kommer. The proceedings are conducted in German.

The plaintiffs filed a request on August 29, 2024, seeking an order that the contents of exhibit BP 34 (a license agreement and related agreements submitted pursuant to order No. 33133/2024 in procedure 32879/2024) constitute confidential information to be treated as strictly confidential. They requested that access be limited to the defendant's legal representatives and their secretariats ('Outside Attorneys' Eyes Only'), as registered in the CMS as the Legal Team for this litigation, with no access by employees or representatives of the defendant. They also submitted a redacted version of the document.

The plaintiffs argued that BP 34 contained a license agreement and related agreements with highly sensitive business information revealing the nature and scope of the plaintiffs' business relationships. They contended this constituted trade secrets under Article 58 and Article 24(1)(a) of the EPG Agreement, in conjunction with Article 2(1) of EU Directive 2016/943. They emphasized that the information was neither generally known nor easily accessible, was subject to appropriate confidentiality measures, and had commercial value precisely because of its secrecy. They further noted that in the parallel US proceedings before the U.S. District Court for the District of Delaware (Case 1:22-cv-00595-MFK), the license agreement and related agreements had been disclosed only under the 'Outside Attorney's Eyes Only' restriction pursuant to a Protective Order.

The defendant did not dispute that the information in BP 34 constituted trade secrets but objected to restricting access to only legal representatives. Vizgen argued that under Rule 262A.6 of the Rules of Procedure, at least one natural person from each party should have access, and that the exception allowing exclusion of natural persons required mutual agreement of all parties, which did not exist regarding BP 34. Vizgen sought to grant access to a specific named person (redacted in the document) and argued for equal treatment with a license agreement it had submitted.

The court found the request admissible and well-founded. It held that the requirements of Rule 262A.2 and .3 were met, and the other party's representative had been given an opportunity to comment under Rule 262A.4. On the merits, the court applied Rule 262A.5, finding that the reasons advanced by the applicant outweighed the other party's interest in unrestricted access. The court noted that the existence of a trade secret need not be established with full certainty but only need be predominantly probable, citing Article 9(1) and (2)(a) of EU Directive 2016/943, which speaks alternatively of 'alleged trade secrets.' Article 58 of the EPG Agreement also supports protection of an extended range of confidential information.

Regarding the scope of access under Rule 262A.6, the court acknowledged the general rule that at least one natural person from each party must have access, but recognized an exception when all parties agree. The court found that such mutual agreement existed here, as the parties had agreed with the US court that documents subject to the Protective Order and identified by the defendant for submission in the UPC proceedings should be subject to a confidentiality regime with 'Outside Attorneys' Eyes Only' access restrictions. The court rejected Vizgen's argument for 'equality of arms' (Waffengleichheit), noting that the goal of equality could not override the parties' agreement to establish a protective order regime comparable to that in the US proceedings.

The final order: (1) declared the contents of exhibit BP 34 as confidential information to be treated as strictly confidential and not used or disclosed outside the litigation even after its conclusion; (2) restricted access to the legal representatives and their secretariats ('Outside Attorneys' Eyes Only'), with access by the parties' legal representatives in the parallel US Delaware proceedings remaining unaffected; (3) imposed obligations on the listed persons to maintain strict confidentiality even beyond the proceedings and to use the information exclusively for the purposes of this litigation, with an exception for information obtained from non-confidential sources not bound by confidentiality obligations to the plaintiffs; and (4) provided that violations could result in coercive fines (Zwangsgeld) in amounts to be determined by the court. The order is not appealable per se under Rule 220.1, and appeal would only be possible together with an appeal against the final decision.