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BIO-Rad Laboratories, Inc. v. 10X Genomics Inc.

United States District Court, D. Delaware

June 26, 2018

BIO-RAD LABORATORIES, INC. and THE UNIVERSITY OF CHICAGO, Plaintiffs,
v.
10X GENOMICS, INC., Defendant.

          MEMORANDUM ORDER

         Presently before the Court are Plaintiffs' Motion for Summary Judgment (D.I. 235) and Defendant's Motion for Summary Judgment of Non-Infringement and Invalidity (D.I. 242). The issues are fully briefed. (D.I. 236, 243, 263, 273, 289, 290). The Court held oral argument on February 5, 2018. (D.I. 349). For the reasons set forth below, Plaintiffs' motion and Defendant's motion are both granted in part and denied in part.

         I. Background

         On February 12, 2015, RainDance Technologies, Inc. and the University of Chicago filed suit against 10X Genomics, Inc. alleging infringement of six patents. (D.I. 1). Plaintiffs refer to these patents as the Ismagilov patents.

         On April 23, 2015, RainDance and the University of Chicago filed an amended complaint asserting an additional patent on behalf of RainDance only. (D.I. 12). On March 25, 2016, RainDance and the University of Chicago filed a second amended complaint in which they asserted the RainDance patent and only five of the Ismagilov patents. (D.I. 32). The RainDance patent was later dismissed. (D.I. 138). On May 30, 2017, Bio-Rad Laboratories, Inc. substituted for RainDance. (D.I. 180).

         The patents-in-suit relate to methods and systems for creating "plugs" in a microfluidic system and for conducting reactions within those "plugs."

         II. Legal Standard

         "The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). The moving party has the initial burden of proving the absence of a genuinely disputed material fact relative to the claims in question. Celotex Corp. v. Catrett, 477 U.S. 317, 330 (1986). Material facts are those "that could affect the outcome" of the proceeding, and "a dispute about a material fact is 'genuine' if the evidence is sufficient to permit a reasonable jury to return a verdict for the nonmoving party." Lamont v. New Jersey, 637 F.3d 177, 181 (3d Cir. 2011) (quoting Andersonv. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). The burden on the moving party may be discharged by pointing out to the district court that there is an absence of evidence supporting the non-moving party's case. Celotex, 477U.S. at 323.

         The burden then shifts to the non-movant to demonstrate the existence of a genuine issue for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986); Williams v. Borough of West Chester, Pa., 891 F.2d 458, 460-61 (3d Cir. 1989). A non-moving party asserting that a fact is genuinely disputed must support such an assertion by: "(A) citing to particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations ..., admissions, interrogatory answers, or other materials; or (B) showing that the materials cited [by the opposing party] do not establish the absence ... of a genuine dispute ... ." Fed.R.Civ.P. 56(c)(1).

         When determining whether a genuine issue of material fact exists, the court must view the evidence in the light most favorable to the non-moving party and draw all reasonable inferences in that party's favor. Scott v. Harris, 550 U.S. 372, 380 (2007); Wishkin v. Potter, 476 F.3d 180, 184 (3d Cir. 2007). A dispute is "genuine" only if the evidence is such that a reasonable jury could return a verdict for the non-moving party. Anderson, 477 U.S. At 247 -49. If the non-moving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter of law. See Celotex, 477 U.S. at 322.

         III. Discussion

         A. Plaintiffs' Motion for Summary Judgment

         Plaintiffs seek summary judgment on two issues. The first is that Defendant infringes claims 1, 10, and 11 of U.S. Patent No. 8, 329, 407 ("the '407 patent"). (D.I. 236 at 5). The second is that the asserted claims of U.S. Patent No. 8, 889, 083 ("the '083 patent") are neither anticipated nor obvious. (Id.).

         1. Infringement of Claims 1, 10, and 11 of the '407 Patent

         As to claim 1 of the '407 patent, Plaintiffs argue there is no dispute that use of Defendant's products "leads to performance of every single element" of that claim. (Id. at 11). The parties' briefing focuses on two elements in particular. They are the preamble and step (d).

         First, the preamble of claim 1 recites, "A method for conducting a reaction in plugs in a microfluidic system . . . ." ('407 patent, claim 1). I previously found the preamble limiting "only to the extent that it provides an antecedent basis for the terms 'microfluidic system' and 'reaction.'" (D.I. 116 at 14). I construed "microfluidic system" to mean, "system comprised of at least one substrate having a network of channels of micrometer dimension through which fluid may be transported." (Id. at 7).

         Whether use of Defendant's products meets the preamble of claim 1 appears to turn on whether the method is performed in a "microfluidic system." Plaintiffs' expert, Dr. Sia, maintains that Defendant's GemCode Long Read product performs reactions in a microfluidic system: "Specifically, after the reagents necessary for the PHASE reaction are packaged into droplets, the droplets are collected in a standard Eppendorf tube and placed on a thermal cycler, which is used to provide the suitable temperature conditions so that the PHASE reaction may occur." (D.I. 238, Exh. B ¶ 124). He offers a similar opinion in regard to Defendant's other products. (See Id. ¶¶ 125, 126). Defendant's expert, Dr. Huck, on the other hand, opines that "the barcoding reaction [in Defendant's products] takes place" during "thermal cycling" (see D.I. 274, Exh. E ¶¶ 68, 72, 79), and "[t]he thermal cycler [is] not [a] component[] of a microfluidic system" (id. ¶ 174). Given the experts' disagreement regarding whether the thermal cycler is part of the "microfluidic system," there is a dispute of material fact as to whether use of Defendant's products meets the preamble of claim 1.

Second, step (d) of claim 1 provides:
forming at least one plug of the aqueous fluid containing the at least one biological molecule and the at least one reagent by partitioning the aqueous fluid with the flowing immiscible carrier fluid at the junction of the at least two channels, the plug being substantially surrounded by the immiscible carrier fluid flowing through the channel, wherein the at least one plug comprises at least one biological molecule ...

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