Bio-Rad Laboratories, Inc. v. International Trade Commission, 10X Genomics Inc.
TARANTO, CHEN, STOLL
April 29, 2021
Brief Summary: ITC infringement and no co-ownership findings affirmed. Summary: Bio-Rad appealed International Trade Commission (ITC) decision finding infringement and no co-ownership of 10X’s US 9,689,024, 9,695,468, and 9,856,530 regarding nucleic acid analysis using droplet samples (e.g., a microcapsule, gel bead attached to analytes or reagents, “oligonucleotide barcodes”). The ITC’s administrative law judge (ALJ) determined infringement and “that 10X practiced the claims, the latter fact satisfying the requirement of a domestic industry ‘relating to the articles protected by the patent’” as required by 19 USC section 1337(a)(2) (the “domestic requirement”). Regarding infringement, Bio-Rad unsuccessfully argued it does not infringe since, e.g., “the stimulus used in its system acts on the oligonucleotides rather than the gel bead”, “the solutions of the oligonucleotide molecules and the sample do not form an aqueous mixture at the first junction”, and “its droplets begin to form barcoded molecules immediately upon droplet formation, i.e., barcoding begins before at least 1,000 droplets are formed.” The ALJ, relying in part on expert testimony, disagreed (e.g., “10X’s expert explained that the two solutions ‘come together and then immediately are formed into a droplet’”, “the barcoding process may begin before 1,000 droplets are formed, but claim 1 requires only that the barcoding process may not be completed before 1,000 droplets are formed”). The ALJ also disagreed with Bio-Rad’s argument that “10X’s domestic products, on which 10X relied to meet this requirement, do not practice the independent claim 1”. The ALJ also disagreed with Bio-Rad’s ‘530 patent indefiniteness arguments. The 10X inventors had left Bio-Rad shortly before founding 10X and filing its patent application, and Bio-Rad argued prior assignments entitled it to co-ownership. The ALJ disagreed, concluding “that Bio-Rad had not shown that the ‘inventive concept’ of the asserted patents was conceived before the inventors left Bio-Rad” and “[n]o provision of any of the applicable contracts governs future inventions’ merely because the future inventions ‘are based on or developed from work done during employment’” (the “‘ideas’…were too ‘generic’”). The FC panel found the ALJ/ITC’s infringement conclusions to be supported by substantial evidence. It also agreed with the domestic requirement conclusions (a test that is “essentially [the] same as that for infringement, i.e., a comparison of domestic products to the asserted claims” (Alloc, FC 2003)). The FC panel also found “no merit to Bio-Rad’s indefiniteness appeal” (e.g., “modification of a claim construction does not imply or presumptively suggest indefiniteness”). Bio-Rad’s co-ownership arguments were based “on the undisputed legal premise that co-inventorship (equivalently, joint inventorship) entails co-ownership” (Israel, FC 2007). The agreements required assignment to Bio-Rad of any intellectual property “that Employee conceives, develops or creates alone or with the aid of others during the term of Employee’s employment with the Company”, which the FC panel interpreted (under CA law) to limit the assignments “to subject matter that itself could be protected as intellectual property before the termination of employment” (“may be a step toward the potential ultimate existence of the only pertinent intellectual property, namely, a completed “invention,” but the pertinent intellectual property does not exist until at least conception of that invention” (REG Synthetic Fuels, FC 2016; Dawson, FC 2013; Burroughs Welcome, FC 1994; FilmTec, FC 1992 (“the inventor, continuing to work on the invention after the agreement ended, added certain ‘narrow performance limitations in the claims’”, nothing of “inventive significance because they were mere “refine[ments]”, “claimed inventions…conceived during the agreement”); Stanford, FC 2009 (“quite different contract language”, “conceived or made ‘as a consequence of’ his work at Cetus”). The ITC decision was therefore affirmed.