Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Bio-Rad Laboratories Inc. v. International Trade Commission, No. 20-1785 (April 29, 2021). The Court affirmed the holding of the ITC that Bio-Rad infringed certain claims of patents owned by 10X Genomics Inc.
10X filed a complaint with the ITC alleging that Bio-Rad’s importation and sale of microfluidic systems and components used for gene sequencing infringed four of its valid and enforceable U.S. patents in violation of 19 U.S.C. § 1337(a)(1)(B). The ALJ determined Bio-Rad infringed various claims of three of the asserted patents and rejected Bio-Rad’s defense asserting co-ownership of the asserted patents. The ALJ further found 10X satisfied the domestic industry requirement. The ITC affirmed the ALJ’s determinations. Bio-Rad appealed.
The Federal Circuit affirmed. The Court first considered Bio-Rad’s challenge to the infringement determinations and concluded that substantial evidence supported the ITC’s infringement findings. The Court next considered Bio-Rad’s challenge to the domestic industry requirement and found no reversible error in the ITC’s conclusion that the 10X product practiced the patent claims and, therefore, satisfied the domestic industry requirement. The Court also refused Bio-Rad’s belated challenge to the ITC’s rejection of its indefiniteness argument. The Court held the challenge was not only waived, but also substantively without merit because the “mere amplification of an initial [claim] construction to resolve a material dispute about claim meaning” does not suggest a claim element is indefinite.
Lastly, the Court considered Bio-Rad’s argument, made as a defense to infringement, that it co-owns the three patents it was found to infringe. Bio-Rad argued that it co-owned the patents because two of the inventors were previously employed by Bio-Rad and had signed employment agreements containing assignment provisions. In rejecting Bio-Rad’s co-ownership argument, the Court explained that the assignment obligations applied only to “subject matter that itself could be protected as intellectual property before the termination of employment.” Because the two inventors had left Bio-Rad in April 2012, and the record reflected a conception date no earlier than January 2013 for the patents at issue, the assignment duty did not apply to the patents. The Court explained that, even if work the inventors performed while employed by Bio-Rad was “a step toward the potential ultimate existence” of an invention, “the pertinent intellectual property d[id] not exist until at least conception of that invention.”