May 28, 2021

Don’t Forget to Claim What the Device Is, Not Just What the Device Does

In Bio-Rad Laboratories, Inc. v. ITC[2020-1475, 2020-1605] (May 28, 2021), the Federal Circuit affirmed the Commission’s determination that 10X did not infringe the claims of U.S. Patent No. 9,500,664, and that 10X infringed the claims of U.S. Patent Nos. 9,636,682 and 9,649,635.

The patents relate generally to the field of microfluidics, and specifically to the generation of microscopic droplets, and in particular to systems and methods for generating microscopic droplets by using a micro-fluidic device commonly referred to as a “chip.”

Regarding the ‘664 patent, the ALJ determined that because the accused Chip GB does not involve a “sample,” it “does not include a ‘sample well,’ a sample channel, sample-containing droplets, or the claimed ‘droplet generation region.’” The Federal Circuit found that the patent distinguished between samples and reagents, and that the accused product was used with reagents and not samples as required by the claims. 10X and the ITC argued that the ALJ applied the exact construction of “sample” to which the parties agreed, and that Bio-Rad’s challenge is really directed at the ALJ’s factual application of that construction to the accused Chip GB, which the Federal Circuit found was supported by substantial evidence.

Bio-Rad also contended that, regardless whether the monomer solution in the accused Chip GB is a “sample,” the claims recite structural limitations all of which are included in the accused Chip GB.

The Federal Circuit rejected the argument for several reasons. First, it was not clear that Bio-Rad raised this argument before the Commission. Second, the argument is premised on rewriting the claims in an oversimplified form and removing all limitations that differentiate the recited structures from each other.

The Federal Circuit noted that the inventors did not seek patent protection for a broad claim to “a chip with three wells and interconnecting channels.” Nor did the inventors choose to differentiate the wells and channels from each other based on physical characteristics (e.g., shape, size, depth, location, etc.). Instead, the inventors chose to characterize the wells and channels based on the material contained within them. “Bio-Rad cannot escape that choice by pointing to the general proposition of law that “apparatus claims cover what a device is, not what a device does.”

With respect to the appeal of the finding infringement of the ‘682 and ‘635 patents, 10X argued error with respect to the ITC construction of “droplet-generation region.” However, the Federal Circuit found that the ALJ’s construction of the term “droplet-generation region” was consistent with the intrinsic evidence, and like the ITC, the Federal Circuit rejected 10X’s attempt to impose an unclaimed limitation that requires a channel to extend directly from the sample well to the droplet-generation region.

The Federal Circuit found that under the ALJ’s correct construction, substantial evidence supported the Commission’s finding that the use of 10X’s accused chips directly infringes the asserted claims of the ’664, ’682, and ’635 patents.

On the issues of contributory infringement and inducement of infringement, the Federal Circuit concluded there was substantial evidence to support the ALJ’s findings.