Federal Circuit: Bio-Rad Does Not Co-Own 10x Genomics’ Disputed Patents

The Federal Circuit on Thursday affirmed a determination by the International Trade Commission (ITC) that Bio-Rad Laboratories Inc. violated the Tariff Act through infringing claims of various patents belonging to 10x Genomics, simultaneously rejecting Bio-Rad’s claims that it co-owns the disputed patents.

10x originally filed a complaint against Bio-Rad with the ITC under the Tariff Act, which makes unlawful the importation and sale “of articles that … infringe a valid and enforceable United States patent.” The patents-in-suit include U.S. Patent Nos. 9,689,024, 9,695,468, and 9,856,530, which cover single-cell genomics sequencing technologies.

An administrative law judge (ALJ) adjudicating the December 2019 ITC ruling sided with 10x, finding that Bio-Rad infringed on all three patents. Bio-Rad had contended that it co-owned the asserted intellectual property “under assignment provisions that two of the named inventors signed when they were employees of Bio-Rad … even though the inventions claimed were not made until after the employment,” the court explained. This reasoning failed to convince the ALJ and ITC at the time — and it did not prevail past the Federal Circuit’s three-judge panel, either.

The court acknowledged that Bio-Rad’s argument that a co-owner of a patent cannot infringe the patent is sound; however, in examining the assignment provisions Bio-Rad invokes, the court did not find sufficient evidence that Bio-Rad owns the rights to patents that former employees now own, following the finding of the ALJ that “(n)o provision of any of the applicable contracts governs future inventions.”

“To accept Bio-Rad’s contention after we give the required deference to the Commission’s factual (and, in one instance, procedural) rulings would require that we find joint inventorship simply because Drs. Hindson and Saxonov, while at Bio-Rad … were working on the overall, known problem—how to tag small DNA segments in microfluidics using droplets—that was the subject of widespread work in the art,” the court reasoned.

The circuit court additionally detailed the technical specifications guiding its agreement with the ITC that Bio-Rad infringed on 10x’s patents.

Quinn Emanuel Urquhart & Sullivan LLP represents Bio-Rad. Tensegrity Law Group LLP represents 10x.