967 F.3d 1353
Fed. Cir.2020Background
- Bio-Rad (and University of Chicago) sued 10X Genomics for infringement of three microfluidics patents (U.S. Pat. Nos. 8,889,083; 8,304,193; 8,329,407) covering droplet/plug formation and reactions in microfluidic channels.
- At trial (D. Del., Nov. 2018) a jury found the patents valid and willfully infringed and awarded $23,930,716; the district court entered a permanent injunction.
- 10X had modified its chips during litigation to include 0.02% Kynar (a fluorinated resin) in microchannels; Bio‑Rad relied on the doctrine of equivalents to prove infringement of the ’083 patent.
- On appeal the Federal Circuit affirmed infringement of the ’083 patent and the full damages award, but reversed the district court’s claim construction for the ’407 and ’193 patents (preamble is limiting), vacated infringement of those patents, and remanded for a new trial on infringement of ’407 and ’193.
- The court also vacated the injunction only as to 10X’s Linked‑Reads and CNV product lines and otherwise left the injunction in place for the remaining product lines.
Issues
| Issue | Plaintiff's Argument (Bio‑Rad) | Defendant's Argument (10X) | Held |
|---|---|---|---|
| 1) Whether prosecution‑history estoppel or claim vitiation bars doctrine of equivalents for the ’083 claim term “non‑fluorinated microchannels” (accused chips contain 0.02% Kynar). | Amendment distinguishing fluorinated microchannels in prior art was tangential to the accused de‑minimis fluorination; equivalents available. | Amendment surrendered all fluorinated microchannels; a fluorinated microchannel is the antithesis of non‑fluorinated (estoppel and vitiation should bar DOE). | Affirmed for Bio‑Rad: estoppel inapplicable (tangential); vitiation not shown — a jury could find 0.02% Kynar insubstantially different from non‑fluorinated. |
| 2) Whether the surface‑tension claim in the ’083 requires actual contact between plug fluid and channel wall. | Claim does not require physical contact; it requires the stated surface‑tension relationship so plugs do not stick. | Droplets in accused products never contact the wall, so the plug‑wall interface limitation cannot be met. | Affirmed for Bio‑Rad: the claim does not require actual contact and substantial evidence supported the jury. |
| 3) Whether the preamble of the ’407 and ’193 claims (“conducting a reaction in plugs in a microfluidic system”) is limiting (on‑chip vs off‑chip reactions). | Preamble is non‑limiting statement of purpose; district court correctly limited only antecedent terms. | Preamble requires reactions to occur on‑chip; 10X’s products perform reactions off‑chip and thus do not infringe. | Reversed: preamble is limiting (intertwined antecedent language and intended meaning) — vacated infringement and remanded for new trial on these patents. |
| 4) Admissibility and sufficiency of comparable licenses for reasonable royalty (15%): were the three licenses admissible and adequately apportioned? | Comparable licenses (Caliper/RainDance; AppliedBio/QuantaLife; Applera/Bio‑Rad) supported the 15% rate; apportionment built into comparators. | Licenses are technologically/economically non‑comparable and lack apportionment; testimony should have been excluded or award vacated. | Affirmed for Bio‑Rad: district court did not abuse discretion admitting testimony; substantial evidence supported the jury’s royalty and apportionment analysis. |
| 5) Whether permanent injunction was appropriate and whether scope was proper (all product lines). | Bio‑Rad suffered irreparable competitive harm from willful infringement; injunction justified; historical installed base carve‑outs and royalties mitigate public harm. | 10X argued lack of irreparable harm, disproportionate hardship (company depends on enjoined lines), and public‑interest concerns; two product lines lacked non‑infringing alternatives. | Vacated injunction only for Linked‑Reads and CNV (abuse of discretion to enjoin those two given lack of non‑infringing alternatives); otherwise injunction affirmed. |
Key Cases Cited
- Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002) (prosecution‑history‑estoppel framework for doctrine of equivalents)
- Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359 (Fed. Cir. 2003) (en banc) (application of tangentiality exception to estoppel)
- Warner‑Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997) (doctrine of equivalents and claim vitiation principles)
- TomTom, Inc. v. Adolph, 790 F.3d 1315 (Fed. Cir. 2015) (preamble‑limitation analysis and antecedent basis)
- Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349 (Fed. Cir. 2012) (doctrine‑of‑equivalents and non‑binary claim elements)
- Brilliant Instruments, Inc. v. GuideTech, LLC, 707 F.3d 1342 (Fed. Cir. 2013) (vitiation/‘diametrically‑opposed’ inquiry)
- Cadence Pharm., Inc. v. Exela PharmSci Inc., 780 F.3d 1364 (Fed. Cir. 2015) (caution against labels like “antithesis” in lieu of equivalence analysis)
- i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010) (standards for injunction and appellate review)
- eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006) (four‑factor test for permanent injunctions)
- LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51 (Fed. Cir. 2012) (limits on using inapposite licenses for reasonable‑royalty proof)
- Ericsson, Inc. v. D‑Link Sys., Inc., 773 F.3d 1201 (Fed. Cir. 2014) (degree of comparability of licenses goes to weight, not necessarily admissibility)