Know Thyself

Bio-Rad Labs v. ITC and 10X Genomics, 20-1475 (Fed. Cir. May 28 2021).

In April 2021, the Federal Circuit decided a separate ITC appeal between these parties, affirming that Bio-Rad infringed the micro-fluidic chip patents owned by 10X (a company started by Bio-Rad former employees). U.S. Patent Nos. 9,689,024, 9,695,468, and 9,856,530.

Cross-allegation: In this separate ITC action, Bio-Rad accused 10X of infringing its U.S. Patent Nos. 9,500,664, 9,636,682, and 9,649,635 (mechanisms for generating droplets suitable for droplet-based assays).   In this counter lawsuit, the ITC split its decision, finding two of the patents infringed but one not infringed. On appeal here, the Federal Circuit has affirmed.

The most losing argument on appeal centered on the ITC’s judgment that 10X was liable for inducement and contributory infringement. On appeal, 10X argued that it could not be held liable because it did not have knowledge of the patents-in-suit.

• Inducement requires that the defendant “knew of the patent” and knew that the “induce acts constitute patent infringement” as well as “specific intent to encourage” the infringement.
• Contributory Infringement also requires that the defendant knew of the patent and the patent infringement.

In an ordinary case, the evidence of knowledge presented by Bio-Rad might have been insufficient.  This case has a kicker — some of named inventors on Bio-Rad’s patents left Bio-Rad to form 10X.

• Bio-Rad Named Inventor – Ben Hindson – later 10X Chief Science Officer.
• Bio-Rad Named Inventor – Kevin Ness – later 10X CTO/COO.
• Bio-Rad Named Inventor – Don Masquelier – later 10X Director of Engineering.

10X admitted that these individuals had knowledge of the patent applications, there was no proof that they had evidence of the issued patents themselves.  On appeal, the Federal Circuit found the argument incredible–not credible–and explained:

10X’s various arguments attempt to distract from the reality of this case: named inventors of the asserted patents sold their company and patent rights to Bio-Rad, worked for Bio-Rad for a short time, left Bio-Rad to start a new company, and launched new products that have been determined to infringe the patents they assigned to Bio-Rad. . . .

Ultimately, 10X fails to persuade us that there is a lack of substantial evidence to support the ALJ’s findings regarding  induced and contributory infringement.

Affirmed.