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

• Decision Date: 26 June 2018
• Docket Number: Civil Action No. 1:15-cv-00152-RGA
• Citation: 322 F.Supp.3d 537
• Parties: BIO-RAD LABORATORIES, INC. and The University of Chicago, Plaintiffs, v. 10X GENOMICS, INC., Defendant.
• Court: U.S. District Court — District of Delaware

322 F.Supp.3d 537

BIO-RAD LABORATORIES, INC. and The University of Chicago, Plaintiffs,

v.10X GENOMICS, INC., Defendant.

Civil Action No. 1:15-cv-00152-RGA

United States District Court, D. Delaware.

Signed June 26, 2018

Brian E. Farnan, Michael J. Farnan, Farnan LLP, Wilmington, DE, Derek C. Walter, Pro Hac Vice, Edward R. Reines, Pro Hac Vice, for Plaintiffs.

Jason James Rawnsley, Frederick L. Cottrell, III, Richards, Layton & Finger, PA, Wilmington, DE, Andrei Iancu, Pro Hac Vice, David I. Gindler, Pro Hac Vice, Dennis Courtney, Pro Hac Vice, E. Joshua Rosenkranz, Pro Hac Vice, Elizabeth R. Moulton, Pro Hac Vice, Elizabeth C. Tuan, Pro Hac Vice, Lauren N. Drake, Pro Hac Vice, Melanie L. Bostwick, Pro Hac Vice, Michael Strub, Pro Hac Vice, for Defendant.

MEMORANDUM ORDER

Richard G. Andrews, United States District JudgePresently 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, 106 S.Ct. 2548, 91 L.Ed.2d 265 (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 Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (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 , 477 U.S. at 323, 106 S.Ct. 2548.

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, 106 S.Ct. 1348, 89 L.Ed.2d 538 (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, 127 S.Ct. 1769, 167 L.Ed.2d 686 (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, 106 S.Ct. 2505. 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, 106 S.Ct. 2548.

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 and the at least one reagent for conducting the reaction with the at least one biological molecule[.]

( '407 patent, 78:66–79:8).

Whether use of Defendant's products meets step (d) appears to boil down to a claim construction issue. More specifically, the parties seem to dispute whether the phrase, "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." (See D.I. 236 at 24–27; D.I. 273 at 11–17).

The parties did not raise the disputed phrase in their joint claim construction brief. Accordingly, I did not construe it in my Markman opinion. However, in deciding whether the preamble of claim 1 was limiting, I stated that "it is clear that the reaction in question takes place ‘in the at least one plug.’ " (D.I. 116 at 13–14). I further stated, "Nothing in the body of the claims further limits the location of the reaction." (Id. at 14). Thus, I did not conclude that the claims limit the reaction to the "channel." In any event, I do not think the language upon which Defendant now relies requires that the reaction take place in the plug while "flowing through the channel." I think Defendant's reading is too limiting. 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."

While I decline to adopt Defendant's construction, I will deny Plaintiffs' motion as to claim 1 of the '407 patent because there is a dispute of material fact as to the outer limits of the "microfluidic system" in the preamble. Similarly, I will deny Plaintiffs' motion as to claims 10 and 11. Claim 10 depends from claims 1, 8, and 9, and claim 11 depends from claims 1 and 8. Thus, Plaintiffs' motion as to claims 10 and 11 depends in part on their arguments in regard to the preamble of claim 1.

Accordingly, Plaintiffs' motion for summary judgment is DENIED as to claims 1, 10, and 11 of the '407 patent.

2. Anticipation and Obviousness of the '083 Patent

Plaintiffs seek "summary judgment that the '083 patent is not invalid as anticipated or obvious in view of estoppel arising from 10X's failed attempt to invalidate the '083 patent in inter partes review (‘IPR’)." (D.I. 236 at 30).

I adopt my ruling in regard to IPR estoppel from the discovery conference held on September 6, 2017. (See D.I. 224 at 29:11–14; see...