Patent Case Summaries June 2, 2021

Patent Case Summaries | Week Ending May 28, 2021

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.


Bio-Rad Laboratories, Inc. v. ITC, Nos. 2020-1475, 2020-1605 (Fed. Cir. (ITC) May 28, 2021). Opinion by Lourie, joined by Newman and Dyk.

Bio-Rad alleged in an International Trade Commission investigation that 10X Genomics infringed three Bio-Rad patents relating to systems and methods for generating microscopic droplets by using a device commonly referred to as a “chip.” The ITC found that 10X’s “GEM Chips” infringed three asserted patents but that 10X’s “Chip GB” did not infringe one of the asserted patents. Both Bio-Rad and 10X appealed.  The Federal Circuit consolidated the appeals and affirmed in all respects.

Regarding the ITC’s noninfringement ruling, Bio-Rad argued on appeal that the ALJ erred as a matter of law by interpreting the claims to require that a “sample” be biological and “of interest” to end-user customers. The Federal Circuit rejected the argument, explaining that the ALJ’s claim construction order had adopted the parties’ agreed construction for the term “sample,” which properly excluded “reagents.”

Next, Bio-Rad argued that the ALJ erred in finding that the “monomer input” for the Chip GB is not a sample. The Federal Circuit rejected this argument as well. The court ruled that substantial evidence supported the ALJ’s factual finding that the monomer input for the Chip GB was a reagent and, thus, not a sample.

Regarding the ITC’s rulings that 10X’s GEM Chips infringed three patents, 10X argued that the ALJ improperly construed the claim term “droplet-generation region.” The Federal Circuit declined to alter the construction because it was consistent with the intrinsic evidence.

10X also challenged the Commission’s findings regarding induced and contributory infringement. 10X argued, for example, that substantial evidence does not support the Commission’s findings with respect to the knowledge requirements. Also, for contributory infringement, 10X argued that the GEM Chips are suitable for substantial noninfringing uses. The Federal Circuit disagreed with each argument. The Federal Circuit ruled that 10X was largely attacking the ALJ’s credibility determinations and weighing of the evidence, and noted that “it is not within our purview to reweigh the evidence or to question the ALJ’s credibility determinations.”

Regarding the alleged substantial noninfringing uses, the Federal Circuit rejected 10X’s argument because “10X failed to point to any real available noninfringing uses.” Instead, as the Commission found, “each of 10X’s proposed design-arounds was a hypothetical system that is not yet available to 10X’s customers.”

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Becton, Dickinson & Co. v. Baxter Corp. Englewood, No. 2020-1937 (Fed. Cir. (PTAB) May 28, 2021). Opinion by Dyk, joined by Prost and Clevenger.

Becton petitioned for IPR of certain claims of a Baxter patent relating to “systems for preparing patient-specific doses and a method for telepharmacy” in which data are provided to a remote site for review and approval by a pharmacist. Becton argued that the claims were obvious over a combination of three prior art references. The Board found that the claims were not invalid as obvious, ruling that the references failed to disclose the “verification” and “highlighting” limitations of the challenged claims. Becton appealed.

Addressing the verification limitation, the Federal Circuit ruled that substantial evidence does not support the Board’s interpretation of one of the prior art references. After describing the reference, the court ruled that “there is no significant difference” between the teaching of the prior art reference and the patent’s verification requirement. Therefore, the Board’s determination was not supported by substantial evidence.

Next, addressing the highlighting limitation, the Federal Circuit ruled that substantial evidence did not support the Board’s determination that the limitation was not obvious. The Federal Circuit described the disclosures of the pertinent references and concluded that the highlighting limitation would have been obvious to one of ordinary skill in the art.

In the appeal, Baxter also argued that the Board erred in determining that one of the asserted references is prior art under 35 U.S.C. § 102(e)(2) (pre-AIA), which refers to situations where the invention was described in “a patent granted on an application for patent by another.” Baxter argued that one of the references was not prior art under § 102(e)(2) because the reference’s claims were cancelled following an IPR. The Federal Circuit disagreed because “the text of the statute requires only that the patent be ‘granted,’ meaning the ‘grant[]’ has occurred.” “The statute does not require that the patent be currently valid.”

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