August 12, 2020
Authored and Edited by Tyler B. Latcham; Caitlin E. O'Connell; Elizabeth D. Ferrill
In Bio-Rad Labs., Inc. v. 10X Genomics Inc., No. 2019-2255 (Fed. Cir. Aug. 3, 2020), the Federal Circuit rejected 10X’s prosecution history estoppel and claim vitiation defenses and upheld the jury’s finding of willful infringement under the doctrine of equivalents.
Bio-Rad sued 10X for infringement of three patents covering microscopic droplets of fluids for biochemical reactions, often called “labs-on-a-chip.” Bio-Rad amended the patents’ claim language during prosecution to claim “a non-fluorinated microchannel,” and further argued that, unlike the prior art, the claims require the microchannel be “chemically similar to the carrier fluid and chemically different from the channel walls.” 10X argued that its product, which includes 0.02% of a fluorine-containing resin in its microchannels, did not infringe.
The Court rejected 10X’s prosecution history estoppel argument because the non-fluorine claim element was only tangentially related to the accused equivalents. Bio-Rad amended the claim language to distinguish its invention from prior art product in which a chemical reaction occurs between the fluorine-containing microchannel and the carrier fluid. 10X’s product contained such a small amount of fluorine that it would not chemically react with the carrier fluid; therefore, prosecution history estoppel did not bar Bio-Rad from asserting that microchannels containing a negligible amount of fluorine are equivalent. 10X’s claim vitiation argument similarly failed because the element is not “effectively eliminated” by Bio-Rad’s theory as a fluorine-containing microchannel that reacts with the carrier fluid would not infringe.
prosecution history estoppel, Doctrine of Equivalents, willful infringement, Judgment as a Matter of Law (JMOL), jury trial, permanent injunctions, damages, reasonable royalty
Copyright © 2020 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.
Lecture
Patent Protection for Software-Related Inventions in Europe and the USA Training Course
June 5, 2024
Hybrid
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.