Fed Circuit orders new Bio-Rad trial, but upholds $24m award
The US Court of Appeals for the Federal Circuit has partially lifted an injunction on 10X Genomics, but the biotech company must still pay almost $24 million for infringing a Bio-Rad patent.
In a ruling issued yesterday, August 3, the Federal Circuit overturned a Delaware court’s summary judgment that 10X infringed two patents owned by Bio-Rad.
But because the Delaware court’s finding of infringement still stands with respect to a third patent, which affects the same products, 10x is still liable for damages.
Bio-Rad’s patented technology splits biological samples into “microdroplets” enabling researchers to create samples with minimal handling and a small total volume.
Also known as “labs-on-a-chip”, these systems are used for DNA, RNA, and protein analysis in medical diagnostics.
In November 2018, Bio-Rad Laboratories and the University of Chicago accused 10X Genomics of infringing three “labs-on-a-chip” patents (US numbers 8,889,083; 8,304,193; and 8,329,407).
The US District Court for the District of Delaware found that all three patents were valid and willfully infringed. The court also issued a permanent injunction barring the sale of multiple 10X product lines, and awarded enhanced damages of $23.9 million.
On appeal, the Federal Circuit rejected 10X’s arguments on the damages award, ruling that the jury’s findings were supported by substantial evidence.
10X also argued that the district court misconstrued the asserted claims of the ’407 and ’193 patents, and that “the preambles of these patents’ independent claims are limiting”.
While the court affirmed the judgment of infringement of the ’083 patent, it reversed the district court’s ruling that the ’407 and ’193 patents were infringed.
According to the Federal Circuit, the Delaware court wrongly took certain language in the preambles of the two patents in isolation from the rest of the text.
The court held that it was not clear if 10X’s systems would infringe under the correct claim construction and ordered a new trial to determine if the patents were infringed.
But the Federal Circuit upheld the $24 million damages award, because the infringed ‘083 patent still covers all six of the accused 10X product lines.
The court upheld the permanent injunction for all but two of the accused product lines, one of which 10X has already discontinued.
According to the Federal Circuit, the Linked-Reads sequencing technology and Single Cell CNV analysis tool should not be covered by the injunction because there are no non-infringing alternatives.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories sent like this straight to your inbox.
