Doctrine of Equivalents – fluorinated vs non-fluorinated

by Dennis Crouch

Bio-Rad Laboratories, Inc. v. 10X Genomics Inc., 19-2255 (Fed. Cir. 2020).

Without opinion, the Federal Circuit has denied defendant-appellant 10X Genomics’ en banc rehearing petition on the following three questions:

  1. Whether a patentee can overcome prosecution history estoppel under the tangentiality exception merely because the inventors ceded more claim scope than necessary;
  2. Whether a claim term written in binary form is vitiated by an equivalent that is the opposite of that term; and
  3. Whether the requirement to apportion reasonable royalty damages in every case applies in comparable license cases.

EnBancPetition.  The petition filed by Joshua Rosenkranz sets-up a push for writ of certiorari with the Supreme Court.

The $100 million case involves technology for growing and analyzing eukaryotic cells using microchip technology. Effectively cyborg technology albeit at a 1-cell-at-a-time level rather than whole organism.

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Bio-Rad’s U.S. Patent No. 8,889,083 is particularly directed to a microfluidic system.  The claims require “a non-fluorinated microchannel.”  But, it turns out that 10X’s product uses a fluorinated microchannel.  This automatically raises the issue of vitiation and thus 10X’s question “Whether a claim term written in binary form is vitiated by an equivalent that is the opposite of that term.”

BioRadJuryVerdict. The jury was particularly asked about whether the element was satisfied under the doctrine of equivalents, and said yes, it was DOE infringement. On appeal, the Federal Circuit affirmed — rejecting “10X’s attempt to limit the inquiry to a binary choice between ‘fluorinated’ and ‘nonfluorinated’ microchannels.”

The appropriate inquiry is whether a reasonable juror could have found that a negligibly-fluorinated microchannel performs the same function, in the same way, and achieves the same result, as a non-fluorinated microchannel. Here, based on the evidence presented at trial … the district court concluded that a reasonable juror could find that a 0.02% Kynar-containing microchannel is insubstantially different from a non fluorinated microchannel.

Slip Op.

Damages 1 vs 3: The jury found infringement of three separate patents. However, on appeal the Federal Circuit reversed claim-construction for two of the patents and thus vacated the infringement judgment. Although the damages verdict was based upon three patents, the appellate panel affirmed “the entirety of the jury’s damages award” even after finding no infringement for two of the patents.  The court explained: “The jury verdict and jury instructions show that the damages award is not predicated on infringement of any one patent.”

9 thoughts on “Doctrine of Equivalents – fluorinated vs non-fluorinated

  1. 4

    THe inventor’s discovery here was that you could use a fluorinated carrier liquid in a microchannel having non-fluorinated walls. Apparently, that causes less sticking or something. The infringer did not use a fluorinated carrier liquid in a microchannel having non-fluorinated walls, if that is your question?

  2. 3

    If these three very different arguments “sets-up a push for writ of certiorari with the Supreme Court” they are off to a bad start with a classically ineffective “shotgun” approach. A simple “rife” approach would be more along the line of may a claim specifically limited by amendment to “Not X” be infringed by a product with X?

  3. 2

    What? From outside, and reading blog threads, I had gained the idea that the DoE had lost all its potency. But what could be more potent than holding that “not X” is equivalent to the claimed “X” and therefore counts as an infringement of the duly issued claim?

    Has the doctrine of re-capture (of scope voluntarily surrendered during prosecution) any relevance here

    Who volunteers to straighten up my understanding of the ongoing level of potency off the DoE, these days, going forward?

    1. 2.1

      The “potency” of the DoE is rather hit and miss these days. It often comes down to the specific judge and their experience with it. If a judge has little experience with it and has no clue as to what the technology is actually about, they are easily swayed by a good lawyer in either direction – use it or not. These judges are ones that often don’t see lots of patent cases. Judges that see a lot of patent cases are often very good at getting it right. Those judges see a lot of technology and often (not always) have a better understanding of it. That allows them to better evaluate the experts opinions and lawyer arguments presented.

      1. 2.1.1

        Useful reply. Thanks. But I’m intrigued what is meant by “getting it right”.

        Since 1973, Europe has required judges hearing infringement actions to strike a balance on claim construction (and DoE). See the Protocol on the Interpretation of Art 69 of the EPC. The only permitted claim construction is that which not only delivers a “fair” scope of protection to the patent owner but also preserves a reasonable degree of “legal certainty” for the public with an interest in what the patent covers. Presumably, Dvan, those of your judges who are “very good” get “right” exactly that same balance?


          I agree. It seems rather problematic that a claim that literally says “wherein it is not X” is interpreted as meaning “wherein it may or may not be X”, because it doesn’t matter if it is X (or something along those lines).

  4. 1

    Setting aside the claim dispute – did the infringer use the inventor’s discovery or did they solve the problem a different way?

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