Patent Case Summaries - April 2021 #3

Alston & Bird

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.

Bio-Rad Laboratories, Inc. v. ITC, et al., No. 2020-1785 (Fed. Cir. (ITC) Apr. 29, 2021). Opinion by Taranto, joined by Chen and Stoll.

The Federal Circuit affirmed the International Trade Commission’s determinations that (i) Bio-Rad Laboratories infringed three patents held by 10X Genomics, (ii) 10X satisfied the domestic-industry requirement, (iii) the claims in one of the patents were not indefinite, and (iv) Bio-Rad could not avoid liability based on its alleged co-ownership of the patents stemming from assignment provisions that two of the inventors had signed while employees of Bio-Rad and its predecessor.

First, the Federal Circuit analyzed the Commission’s factual findings and rulings leading to the conclusions of infringement of all three patents. The court determined that substantial evidence supported the Commission’s findings. For example, addressing one of the patents, the Federal Circuit explained that the Commission had credited 10X’s expert and rejected Bio-Rad’s response. The Federal Circuit concluded that substantial evidence supported the Commission’s view.

Second, the Federal Circuit saw “no reversible error in the Commission’s determination” that 10X satisfied the domestic-industry requirement as to one of the patents. Bio-Rad’s argument about why 10X’s product allegedly did not practice the asserted claims was similar to Bio-Rad’s argument for noninfringement. The Commission’s findings were supported and, addressing one of the Commission’s rulings, the Federal Circuit observed that “Bio-Rad does not explain why [the Commission’s] conclusion is wrong on appeal.”

Third, addressing indefiniteness of the asserted claims in one of the patents, the Commission ruled that Bio-Rad had forfeited its argument and, in any event, the claims were not indefinite. The Federal Circuit affirmed. Foremost, the court noted that “Bio-Rad did not contest the Commission’s forfeiture ruling in its Opening Brief,” which “ordinarily” waives the issue, and the court saw “no persuasive reason not to apply that principle here.” Nevertheless, the court analyzed the merits and rejected Bio-Rad’s argument that the Commission’s modification of a claim construction rendered the construed term indefinite. The modification was merely an “amplification” of a correct claim construction that served to give “greater clarity than was earlier provided.”

Finally, the Federal Circuit addressed Bio-Rad’s co-ownership defense. Two of the named inventors had signed assignment agreements with Bio-Rad and its predecessor. Bio-Rad asserted that the inventors had conceived ideas that contributed to the patented inventions. Reviewing the agreements under California law, the Federal Circuit ruled that, “crucially, the assignment provisions are limited temporally,” covering only “subject matter that itself could be protected as intellectual property before the termination of employment.” Here, the patented inventions occurred after the inventors’ employment had ended, and their pre-termination contributions were too general to support Bio-Rad’s co-ownership defense.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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