Bio-Rad Laboratories, Inc. et al. v. 10X Genomics, Inc. (19-cv-12533).

Bio-Rad and Harvard University sued 10X Genomics in 2019, accusing 10X of infringing two patents owned by Harvard and exclusively licensed by Bio-Rad and of infringing one Bio-Rad – owned patent.  Judge Young denied 10X Genomics’ motion to dismiss the induced and willful infringement claims on the three patents, finding these claims to be sufficiently pled.  The complaint alleges that 10X knew of the two Harvard-owned patents – with knowledge being an element of both induced and willful infringement – by way of previous litigation between the parties on the patents-in-suit that was dismissed in favor of the current suit and by way of 10X’s own license agreements with Harvard.  This knowledge is further evidenced by 10X having cited the published application that matured into one of the patents in an IDS with the Patent Office.  The complaint further alleges 10X had knowledge of the Bio-Rad patent because the sole inventor on that patent subsequently left Bio-Rad to form 10X.  That patent was also cited by 10X in an IDS.  Importantly, the complaint alleges that the knowledge of the three patents came about before the litigation was filed, as willfulness cannot in this district be predicated on knowledge resulting from the complaint.  Judge Young further noted that, at the motion to dismiss stage, a pleading alleging pre-suit knowledge of the patents and continued sale of the allegedly infringing products is sufficient to state a claim of willful infringement.

10X also moved to dismiss for improper forum or transfer the Bio-Rad – owned patent claim.  Judge Young denied the dismissal request.  He found that this patent, unlike the Harvard-owned patents, was not the subject of the forum selection clause found in 10X’s license with Harvard that directed claims be brought in Massachusetts.  Further, the patent venue statute had been held to limit suits to districts in which the defendant resides or has committed acts of infringement and has a regular place of business.  10X is incorporated in Delaware and is located in California, and the complaint lacks allegations that 10X has a physical location in Massachusetts.  The patent venue statute thus does not provide for venue in Massachusetts.  Judge Young determined that Bio-Rad could rely on pendant jurisdiction, because the non-Harvard infringement claims were directed towards the same products that the Harvard-owned infringement claims.  He granted 10X’s request, however, to transfer the infringement claim with respect to the Bio-Rad patent to the Northern District of California.  As Harvard is not a co-plaintiff on that claim, the forum selection clause in the Harvard license does not apply and the sole connection with Massachusetts does not exist.  Both Bio-Rad and 10X are headquartered in N.D. California, the sole named inventor on the patent resides in the district, and the parties are already litigating a different patent, related to the Bio-Rad patent in this case, in that district.  Judicial economy favors transfer.

Canon, Inc. v. Avigilon USA Corporation, Inc. et al. (19-cv-10931).

Canon sued Avigilon earlier this year, accusing Avigilon of willfully infringing and inducing infringement of a Cannon patent covering transmission of video data. Judge Gorton has now granted Avigilon’s motion to dismiss the induced infringement and willful infringement allegations, finding that Canon’s complaint failed to plead facts sufficient to support an inference of actual pre-suit knowledge of the asserted patent by Avigilon, instead only making conclusory statements to that effect. Judge Gorton noted that there is a conflict between district courts as to whether an alleged inducer must be shown to have had knowledge of the patent prior to the filing of the lawsuit, with a minority of courts holding that post-suit knowledge (as through the complaint itself) of the asserted patent improperly bootstraps the knowledge to pre-suit acts, and more to the point, that the District of Massachusetts has limited the acceptability of knowledge through the filing of a complaint to later-amended complaints that expressly limit the inducement claims to post-filing conduct. He further found the same issues applied to the willfulness allegations, which also require proof of knowledge of the asserted patent. He therefore dismissed the inducement and willfulness claims without prejudice to allow Canon to appropriately amend the complaint, should circumstances permit.