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Fed Circ affirms mixed ITC ruling in 10x and Bio-Rad's patent fight

4 minute read

REUTERS/Chip East

  • ITC ruled some 10x 'chips' infringe, others don't
  • Chips relate to single-cell genetic analysis
  • Court rejected challenges from both 10x and Bio-Rad

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(Reuters) - The U.S. Court of Appeals for the Federal Circuit affirmed an International Trade Commission ruling Friday that some genetic-analysis products imported by 10x Genomics Inc infringe rival Bio-Rad Laboratories Inc's patents.

U.S. Circuit Judge Alan Lourie, writing for a three-judge panel, said the ITC properly interpreted all three patents at issue in the mixed decision, rejecting challenges from both 10x and Bio-Rad.

The case is part of a multi-front patent fight between 10x and Bio-Rad over microfluidic genetic analysis technology. Pleasanton, California-based 10x was founded by former Bio-Rad employees in 2012.

Bio-Rad's attorney, Brian Cannon of Quinn Emanuel Urquhart & Sullivan, said in an email that the company was "pleased" that the court affirmed that 10x's GEM Chip products infringe.

10x spokeswoman Shernaz Daver said in an email that the ruling was "expected," and "does not affect our business as it relates to products we no longer sell."

Hercules, California-based Bio-Rad filed a complaint at the ITC in 2017, alleging imports of 10x's GEM Chips and Chip GB products infringed its patents. The chips are devices that make microscopic droplets used in analyzing individual cells, utilizing technology allegedly covered by three Bio-Rad patents.

The ITC determined in 2019 that GEM Chips infringed all three Bio-Rad patents, but Chip GB chips didn't infringe one of them. 10x appealed the infringement ruling, and Bio-Rad appealed the noninfringement ruling.

Lourie, joined by Circuit Judges Pauline Newman and Timothy Dyk, affirmed the entire ITC decision.

Bio-Rad challenged the ITC's ruling that the monomer solution used in Chip GB chips was a "reagent" and didn't meet its patent's definition of a "sample," arguing among other things that the same substance can be both a reagent and a sample.

But the patent "consistently makes clear that a sample is not a reagent," Lourie said, and defines a reagent as a substance that is "combined with a sample" to perform a particular test.

Lourie also rejected Bio-Rad's argument that the patent covers the chips' physical makeup of "three wells and interconnecting channels" regardless of whether the solution is a sample.

Lourie said Bio-Rad may have waived the argument by failing to raise it earlier, and that even if it didn't, the argument was "premised on rewriting the claims in an oversimplified form and removing all limitations that differentiate the recited structures."

10x challenged the ITC's ruling that its GEM Chips included the Bio-Rad patents' "droplet-generation region," arguing the patented technology requires a "single channel" to "extend directly from the sample well to the droplet-generation region," unlike its chips.

The relevant parts of the patents indicate that the droplet-generation region is only "a location on the chip where a network of channels intersect or meet," and nothing else in the patents justified the requirement that 10x proposed, Lourie said.

The case is Bio-Rad Laboratories Inc. v. 10x Genomics Inc., U.S. Court of Appeals for the Federal Circuit, No. 20-1475.

For Bio-Rad: Brian Cannon of Quinn Emanuel Urquhart & Sullivan

For 10x: Nicholas Groombridge of Paul Weiss Rifking Wharton & Garrison

Read more:

Federal Circuit affirms Bio-Rad infringed rival 10x Genomics' patents

Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at blake.brittain@thomsonreuters.com

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