By Jody Coultas, J.D.
Patents directed to methods and an assembly designed to reduce contamination when handling samples not directed to a natural phenomenon.
The federal district court in Wilmington, Delaware, declined to dismiss patent infringement claims filed by Bio-Rad Laboratories, Inc., a manufacturer of products for the life science research and clinical diagnostics markets, against competitor 10X Genomics, Inc., holding that the patent claims were not directed to ineligible subject matter. The court also declined to dismiss Bio-Rad’s requested relief (Bio-Rad Laboratories, Inc. v. 10X Genomics, Inc., April 8, 2019, Andrews, R.).
Bio-Rad Laboratories alleged that 10X Genomics infringed U.S. Patent Nos. 9,562,837 (the ' 837 patent) and 9,896,722 (the '722 patent), which cover technology related to handling samples in a way that reduces sample contamination and sample loss. 10X Genomics moved to dismiss for lack of patent eligibility under 35 U.S.C. § 101, and moved to dismiss and/or strike for failure to state a claim of induced, contributory, or willful infringement.
The patent claims are not directed to ineligible subject matter, according to the court. 10X Genomics’ argument that the patents are directed to "the natural phenomenon of allowing two different liquids of different densities to separate from each other" improperly oversimplified the claims by reducing them to a single claim element. Although the claims utilize the separation of liquids with different densities to effect the desired outcome, this was insufficient to determine that the claims are wholly directed to a patent ineligible concept. The court concluded that the claims are directed to a new and useful technique and system for minimizing contamination when handling samples, which is a type of constructive process carried out by an artisan to achieve a new and useful end. Therefore, the claims were exactly the type of claim that is eligible for patenting.
Also, the court noted the claims were distinguishable from cases where the Federal Circuit has determined that the claims are directed to a natural phenomenon. Here, the end result of the claims is not simply an observation or detection of the ability of liquids to separate by density. Rather, the recited steps and assembly achieve an improved way of handling samples that reduces the sample contamination that would otherwise occur.
10X Genomics was also denied dismissal of the prayer for relief by the court. Bio-Rad Laboratories’ requests were supported by the claims for relief as they have been plead, and merely preserve a broad range of potential remedies by requesting relief that could be granted, depending on the facts as ultimately proven. 10X Genomics was unable to cite any authority that limits the court’s flexibility or precludes the court from granting an injunction or enhanced damages in the appropriate circumstances. The available relief will be determined closer to trial, if not at or after trial, the court noted.
This case is No. 18-1679-RGA.
Attorneys: David Ellis Moore (Potter Anderson & Corroon LLP) for Bio-Rad Laboratories Inc. Alexandra M. Ewing (Richards, Layton & Finger, PA) for 10X Genomics, Inc. f/k/a 10X Technologies, Inc.
Companies: Bio-Rad Laboratories Inc.; 10X Genomics, Inc. f/k/a 10X Technologies, Inc.
MainStory: TopStory Patent DelawareNews
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