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

United States District Court, D. Delaware

September 28, 2018

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

          MEMORANDUM ORDER

         Presently before the Court are Plaintiffs Bio-Rad Laboratories Inc. ("Bio-Rad") and the University of Chicago's Motions to Exclude Expert Testimony of Drs. Wilheim Huck and John Quackenbush (D.I. 239, 240, 265, 293) and to Exclude Expert Testimony of Dr. Ryan Sullivan (D.I. 244, 245, 271, 294), and Defendant 10X Genomics, Inc.'s ("10X's") Motion to Exclude Expert Testimony of James E. Malackowski (D.I. 248, 249, 267, 287). I have considered the parties' briefing.

         I. BACKGROUND

         On February 12, 2015, RainDance Technologies, Inc. ("RainDance") and the University of Chicago filed suit against 10X alleging infringement of U.S. Patent Nos. 8, 273, 573 ("the '573 patent"); 7, 129, 091 ("the '091 patent"); 8, 304, 193 ("the '193 patent"); 8, 329, 407 ("the '407 patent"); 8, 822, 148 ("the '148 patent"); and 8, 889, 083 ("the '083 patent") (collectively, "the Ismagilov patents"). (D.I. 1). On October 18, 2016, RainDance and the University of Chicago filed a third amended complaint in which they asserted the original Ismagilov patents except for the '573 patent, and an additional patent on behalf of RainDance only. (D.I. 85). The RainDance patent was later dismissed. (D.I. 138). On May 30, 2017, Bio-Rad substituted for RainDance. (D.I. 180).

         II. LEGAL STANDARD

         Rule 702 provides that an expert witness may offer opinion testimony if (a) the expert's scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product of reliable principles and methods; and (d) the expert has reliably applied the principles and methods to the facts of the case. Fed.R.Evid. 702.

         The Rules also "assign to the trial judge the task of ensuring that an expert's testimony both rests on a reliable foundation and is relevant to the task at hand." Daubert v. Merrell Dow Pharms. Inc., 509 U.S. 579, 594, 597 (1993). "The relevance prong [of Daubert] requires the proponent [of the expert testimony] to demonstrate that the expert's 'reasoning or methodology can be properly applied to the facts in issue.'" Johnson v. Arkema, Inc., 685 F.3d 452, 459 (5th Cir. 2012) (quoting Curtis v. M& S Petroleum, Inc., 174 F.3d 661, 668 (5th Cir. 1999)). "The reliability prong [of Daubert] mandates that expert opinion 'be grounded in the methods and procedures of science and ... be more than unsupported speculation or subjective belief" Johnson, 685 F.3d at 459 (quoting Curtis, 174 F.3d at 668).

         In assessing the "reliability" of an expert's opinion, the trial court may consider a list of factors including: "whether a theory or technique . . . can be (and has been) tested," "whether the theory or technique has been subjected to peer review and publication," "the known or potential rate of error," "the existence and maintenance of standards," and "general acceptance" of a theory in the "relevant scientific community." Daubert, 509 U.S. at 593-94; see also Kumho Tire Co., Ltd. v. Carmichael, 526 U.S. 137, 150 (1999) ("Daubert makes clear that the factors it mentions do not constitute a 'definitive checklist or test.'"); U.S. v. Valencia, 600 F.3d 389, 424 (5th Cir. 2010). "The proponent need not prove to the judge that the expert's testimony is correct, but she must prove by a preponderance of the evidence that the testimony is reliable." Johnson, 685 F.3d at 459 (quoting Moore v. Ashland Chem., Inc., 151 F.3d 269, 276 (5th Cir. 1998) (en banc)). At base, "the question of whether the expert is credible or the opinion is correct is generally a question for the fact finder, not the court." Summit 6, LLC v. Samsung Elecs. Co., Ltd., 802 F.3d 1283, 1296 (Fed. Cir. 2015). Indeed, "[v]igorous cross-examination, presentation of contrary evidence, and careful instruction on the burden of proof are the traditional and appropriate means of attacking shaky but admissible evidence." Daubert, 509 U.S. at 596.

         III. ANALYSIS

         A. Drs. Wilheim Huck and John Quackenbush

         Plaintiffs move to exclude the testimony of Drs. Huck and Quackenbush as based on impermissible claim constructions. (D.I. 240 at 2). "As expert testimony inconsistent with the Court's claim construction is unreliable and unhelpful to the finder of fact, it should be excluded under the Daubert standard." EMC Corp. v. Pure Storage, Inc., 154 F.Supp.3d 81, 109 (D. Del. 2016) (internal quotation marks and citations excluded). Plaintiffs argue that Drs. Huck and Quackenbush present non-infringement theories for the' 193 and '407 patents based on improperly limiting the claims to reactions on a "chip" or "substrate." (D.I. 240 at 6-7; see also D.I. 116 at 9-13). Specifically, Plaintiffs object to (1) Dr. Huck's reliance on the claim preambles as limiting (D.I. 240 at 7-8; D.I. 241, Ex. 2 ¶¶ 156-77), and (2) Drs. Huck and Quackenbush's "channel" theory (D.I. 240 at 8-10; D.I. 241, Ex. 2 ¶¶ 318-38, Ex. 4 ¶¶ 208, 240, 242).

         1. Preambles as Limiting

          The '193 and '407 patent preambles refer to "an autocatalytic reaction in plugs in a microfluidic system" and "a reaction in plugs in a microfluidic system," respectively. I previously found each preamble "limiting only to the extent that it provides an antecedent basis for the terms 'microfluidic system' and 'reaction.'" (D.I. 116 at 12-13). I rejected Defendant's proposed construction that each preamble limited the method such that the reaction must take place "in the substrate."[1] (Id.). Plaintiffs thus allege that Dr. Huck testifies contrary to my construction by opining that Defendant does not infringe, because it carries out reactions, not in the substrate, but on a 96-well plate placed in a thermal cycler. (D.I. 240 at 7-8).

         I disagree. The crux of Dr. Huck's theory is not that the reaction must occur in the substrate, but that the reaction must occur in the microfluidic system, which does not include the 96-well plate and thermal cycler. (See D.I. 241, Ex. 2 ¶¶ 156-77 ("166.... For each of 10X's products, once the droplets are mechanically removed from the microfluidic chip and mechanically transferred to a 96-well plate, the droplets cease to be part of the 'microfluidic system.' ... 168. The thermal cycler is certainly not part of the 'microfluidic system.'")). Dr. Huck does not dispute my constructions of "microfluidic system" and "reaction." (See Id. ¶ 158 ("I understand that the Court has construed 'microfluidic system' as a 'system comprised of at least one substrate having a network of channels of micrometer dimensions through which fluid may be transported.' I also understand from the Court's order that '[a] 'microfluidic system' is not limited to or the equivalent of a 'substrate." I understand that the court has construed 'reaction' as a "physical, chemical, biochemical or biological transformation.' The location of reactions is not limited to the substrate." (internal citations omitted))). Instead, Dr. Huck opines that elements of Defendant's product are not part of the "microfluidic system," because they are not physically connected to the micro fluidic chip or instrument. (See Id. ¶¶ 159, 166-68). I already held in my Summary Judgment Order that, despite the claim construction, there remains a dispute of material fact as to the outer limits of the "microfluidic system" in the preamble. (D.I. 351 at 4-5). I expressly found a dispute of material fact regarding whether the thermal cycler in Defendant's product meets the preamble. (Id. at 4). Therefore, it is proper for Dr. Huck to opine that the 96-well plate and thermal cycler are outside the scope of the "microfluidic system."

         2. The "Channel" Theory

         Plaintiffs object to Drs. Huck and Quackenbush's reliance on the "channel" theory-the argument that "the plug being substantially surrounded by an oil flowing through the channel" in claim 1 of the '407 and '193 patents requires reactions to occur while the plug is "flowing through the channel." (D.I. 240 at 8-10). Both rely on this alleged limitation to support a finding of non-infringement. Dr. Huck opines that "Dr. Sia's [infringement] analysis of' claim Id.' fails to analyze a crucial element of claim 1 of the '407 and '193 patents: 'the 'reaction' must take place within a 'plug' while the plug is 'substantially surrounded by the immiscible carrier fluid flowing through the channel."' (D.I. 241, Ex. 2 ¶ 320; see also id ¶¶ 318-38). Dr. Quackenbush likewise finds that the relevant reaction "does not occur in 'the at least one plug' as required by step le of the '193 and '407 patents," where '"the at least one plug' is a 'plug being substantially surrounded by an oil flowing through the channel.'" (D.I. 241, Ex. 4 ¶ 208; see also Id. ¶¶ 240, 242). Plaintiffs assert that nothing in the claim language imposes a requirement that reactions must occur during the flow conditions that prevail during droplet formation. (D.I. 240 at 8-10).

         I rejected Defendant's argument in my Summary Judgment Order. In the prior summary judgment briefing, Defendant asserted that "the plug being substantially surrounded by the immiscible carrier fluid flowing through the channel" requires that the biological reaction occur in "the at least one plug" while "flowing through the channel." (D.I. 351 at 4-5). I found this reading too limiting, and instead held, "The plain reading of the disputed language is that when the 'at least one plug' is formed, it is 'substantially surrounded by the immiscible carrier fluid flowing through the channel.'" (Id. (emphasis added)). The disputed language does not bear on the location of the reaction. Therefore, it is inconsistent with my claim construction for Drs. Huck and Quackenbush to opine that the reaction must occur while the plug is "substantially surrounded by the immiscible carrier fluid flowing through the channel." Their "channel" opinions are excluded.

         B. Dr. ...


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