En Banc: When Employees Leave with a Half-Baked Invention

I have been following the patent ownership lawsuit of Bio-Rad Laboratories, Inc. v. International Trade Commission and 10X Genomics.  The case is now pending on a petition for en banc rehearing before the Federal Circuit.

Several former Bio-Rad employees left to form 10X Genomics.  While at Bio-Rad, the individuals began development of a number of ideas but did not complete conception or reduction-to-practice.  Some months later, after leaving and forming 10X, they completed the inventions and filed patent applications. Bio-Rad now argues that it has partial ownership rights to the inventions based upon the inventor’s contributions while employees.

In the appeal, the Federal Circuit sided with 10X, holding that the terms of the employment agreement were limited to Intellectual Property, and pre-conception ideas were not enough.

Pre-Invention Innovations Not Captured by Employment Agreement Duty to Assign

Now, Bio-Rad  has petitioned for en banc rehearing arguing that the decision is contrary to a host of Federal Circuit decisions:

First, the panel’s decision conflicts with this Court’s precedent that employment contracts such as Bio-Rad’s are to be given their full import and not limited to a final conceived patentable invention.  See, e.g., AT&T v. Integrated Network Corp., 972 F.2d 1321 (Fed. Cir. 1992).

Second, the panel’s decision also conflicts with precedent regarding joint inventorship that can occur serially over time and that contribution of a single idea to a final invention can qualify as joint inventorship, which is a protectable right subject to contract. See, e.g,. Vanderbilt Univ. v. ICOS Corp., 601 F.3d 1297 (Fed. Cir. 2010).  Precedent does not impose a temporal restriction on when a person can become a co-inventor. The analysis requires comparing the significance of the work alleged to be an inventive contribution to the claims as a whole. Fina Oil & Chem Co. v. Ewen, 123 F.3d 1446 (Fed. Cir. 1997).


Bio-Rad is correct that the Federal Circuit appears to have been too tight in its statements of the law, but it may well be that the contributions made while employees at Bio-Rad were still insufficient.

12 thoughts on “En Banc: When Employees Leave with a Half-Baked Invention

  1. 5

    “When Employees Leave with a Half-Baked Invention”

    Disappointed with the title as it led me to believe this involved a Cannabis-related invention.

  2. 4

    Expect Chien to be all over this. She will probably make sure to put pre-conception into the next Trade Secret bill so that employees know their proper place as the b*tches of the employer.

    1. 4.1

      Probably the language will be something like an invention or work derived from the Trade Secret of another company …. and so forth.

      Mark my words. Chien is just waiting for the right opportunity for her to give her SV masters their payoff.

  3. 3

    Must be nice having clients with the money, and the will, to just burn cash tilting at windmills. What are the odds that this loser petition for en banc becomes a petition for cert when it’s denied?

      1. 3.1.1


        Consider the source – there is too much Liberal Left misinformation in that piece.


          The whole thing is misinfo except for the accurate reporting of the fact that Karen is now on the field and is a player.

  4. 2

    Curious why the employer did not originally attempt to alternatively argue a taking of trade secret rights in the patent-application-incomplete ideas? Public disclosure by the employer?

    1. 2.1

      Trade secret assertions would have to have good faith presence of actual trade secrets.

      Post hoc labeling of something as “trade secret” generally won’t cut it.

      It is relatively easy to surmise that no actual program (to merit the actual Trade Secret label) may have ever been present.

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