United States District Court, D. Delaware
BIO-RAD LABORATORIES, INC. and THE UNIVERSITY OF CHICAGO, Plaintiffs,
10X GENOMICS, INC., Defendant.
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.
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.
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.
patents-in-suit relate to methods and systems for creating
"plugs" in a microfluidic system and for conducting
reactions within those "plugs."
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.
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.
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.
Plaintiffs' Motion for Summary Judgment
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.).
Infringement of Claims 1, 10, and 11 of the '407
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
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).
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 ...