Argument Preview

The only case being argued next week that attracted an amicus brief is Bio-Rad Laboratories, Inc. v. 10X Genomics Inc. The appellant in this case, 10X Genomics,Inc., presented five issues for the court to review, covering aspects of literal infringement, infringement under the doctrine of equivalents, claim construction, damages, and injunctive relief. The amicus brief, however, focused only on the issue of injunctive relief. This case will be argued at the Federal Circuit on Friday, April 10. This is our argument preview.

In its opening brief, 10X Genomics Inc. argues that Bio-Rad Laboratories, Inc. “was barred from asserting infringement under the doctrine of equivalents for two independent reasons: prosecution history estoppel and claim vitiation.” Under the prosecution history estoppel rationale, 10X argues that Bio-Rad failed to rebut the presumption of “total surrender,” thus “precluding any inquiry into ‘whether the accused element is in fact equivalent to the limitation at issue.’” Under the claim vitiation rationale, 10X argues that Bio-Rad made “a clear and binding statement to the public that [10X’s products] are excluded from the protection of the patent” and “cannot now ‘recapture the excluded subject matter.’” Additionally, 10X argues that Bio-Rad’s own expert admitted that 10X’s products function differently that Bio-Rad’s products, thus it is “impossible for 10X’s products to infringe the claim.” 10X also argues that a claim preamble is limiting, and if it is limiting there is no literal infringement. Regarding damages, 10X maintains that none of the alleged comparable licenses were truly comparable and the “trial testimony did not account for the technological and economic differences between the licenses and the hypothetical negotiation.” Moreover, 10X contends that “Bio-Rad’s damages theory also did not apportion the reasonable royalty to the value of the patented technology.” Finally, 10X argues that the injunction should be vacated because it “does not prevent any irreparable harm to Bio-Rad.”

Bio-Rad, in its response brief, argues that 10X is merely recycling the same arguments that it presented to an “experienced District Court judge” and to the jury, which “found that all of 10X’s products willfully infringed three different patents.” Bio-Rad claims that “it is undisputed” that 10X’s modification was “trivial” and “meaningless” because “it did not-and was intended to-change the behavior of 10X’s [products].” Bio-Rad maintains that the District Court finding that only part of the preamble is limiting “was supported by a thoughtful decision both before and after trial.” Regarding damages, Bio-Rad argues that “[t]here are multiple comparable licenses that each constitute substantial evidence supporting the verdict” and that “10x’s factual disagreements are insufficient to overturn the damages award, as the District Court correctly concluded.” Finally, concerning the injunction, according to Bio-Rad “there is detailed evidence establishing competition and irreparable harm that 10x simply ignores.”

In its reply brief, 10X reiterates its principal arguments. It argues that, “[b]ecause 10x does not infringe any of the three patents as a matter of law, the Court should reverse” or, “[a]t a minimum, 10x is entitled to a new trial.”

As previously noted, this case attracted an amicus brief. That amicus brief, filed by the Broad Institute of MIT and Harvard, supports neither party. The Institute uses its brief to focus on the injunctive relief issued by the district court. Specifically, the brief applauds the court for “recogniz[ing] a strong public interest in access to the technology at issue, and craft[ing] an injunction that allowed 10X to continue to sell consumables for use in ongoing research.” Nevertheless, the Institute claims that because the court failed to “appreciate the lack of interchangeability among the instruments at issue,” it improperly imposed an injunction that “limits the use of technology essential to ambitious biomedical research efforts currently being undertaken.” The brief goes on to say that the injunctive relief granted by the district court “protects private appropriation of publicly funded research to the clear detriment of the public good.” According to the Institute, “[p]atents based on publicly funded research should be used to maintain access to innovation—allowing researchers at academic and non-profit research institutions to develop products that enable further research and to build new technologies—not to prevent the distribution of the fruits of research, as is being done here.” In sum, the Institute argues that the Federal Circuit should reject any injunction in this case.

We will keep track of this case and report on any developments.