Bio-Rad and Harvard brought an infringement suit against 10X Genomics, accusing the California business of infringing three patents (tow of which Bio-Rad exclusively licenses from Harvard, the third of which Bio-Rad is the owner) relating to partitioning of biological samples into individual droplets formed using emulsion chemistry technology, permitting the ability to perform multiple reactions while minimizing the amount of sample required. Bio-Rad asserts that its Droplet DigitalTM PCR Systems incorporate the patented technology, which it spent years and hundreds of millions of dollars developing. In 2012, Bio-Rad employee Serge Saxonov, the sole inventor on one of the asserted patents, left Bio-Rad and formed 10X, which came out with competing products. 10X was sued at that time for patent infringement by RainDance, and Bio-Rad substituted itself as plaintiff when it acquired RainDance. In that case, 10X was found to have willfully infringed several patents and was permanently enjoined. 10X subsequently came out with the accused “Next GEM” line of products. Bio-Rad asserts that this new product is at the heart of a $362 million IPO launched by 10X in September. Judge Young has the case.
Bio-Rad asserts that 10X is subject to personal jurisdiction through sales of the accused Next GEM Platform in the state, including to co-Plaintiff Harvard University, as well as through promoting the product in the state. Bio-Rad also points to a prior litigation in the District of Delaware involving two of the asserted patents, in which 10X Genomics claimed the patents were implicitly a part of a license it had with Harvard that included a forum selection clause designating Massachusetts as having sole jurisdiction. Bio-Rad asserts that 10X Genomics’ representations in that litigation, which was voluntarily dismissed by Bio-Rad, estop 10X from challenging jurisdiction or venue in Massachusetts. Bio-Rad charges 10X with direct, contributory, and induced infringement. It further alleges willfulness, based on both Saxonov’s knowledge of the portfolio and on a parent patent to the patents-in-suit having been cited in an IDS in one of 10X’s patent applications.
Bio-Rad and 10X Genomics are frequent adversaries. In addition to this case and the Delaware case referenced above, the parties are engaged in patent litigation in the Northern District of California and Delaware.
Bio-Rad and the University of Chicago accuse French company Stilla of infringing patents related to droplet digital PCR, a method of genetic analysis in which DNA molecules are separated into individual water droplets in an oil emulsion, eliminating the need for multiple test tubes or wells and allowing for analysis of smaller sample sizes than other PCR systems. Bio-Rad asserts that it spent more than $500 million developing the technology, through research and strategic acquisition, and that it has an extensive patent portfolio covering the technology. Bio-Rad accuses Stilla’s Naica System, introduced in 2016, of infringing two of those patents, one of which is owned by the University of Chicago and exclusively licensed to Bio-Rad and the second of which is owned directly by Bio-Rad. Personal jurisdiction is asserted in Massachusetts on the basis of Stilla’s recently-formed and Beverly-based U.S. entity, as well as on Stilla’s demonstration of the Naica System at the Circulating Biomarkers World Congress in Boston in March 2018, prior to the founding of Stilla’s U.S. entity. The case has been assigned to Judge Young.
Medacta makes and sells orthopedic and neurosurgical medical devices, including joint replacement products sold under the “MyKnee” mark. Medacta has a federal registration on a stylized version of the mark, in which the letter “M” is formed by two angled triangles.
While not yet incontestable, Medacta has filed the § 1065 declaration that should lead to incontestability. Medacta asserts that Conformis’ use of “#ThisIsMyKnee” in connection with advertisements for orthopedic products constitutes both federal and common law service mark infringement, as well as false designation of origin and dilution under Massachusetts law.
Medacta seeks injunctive relief and monetary damages, and asserts that the infringement is willful, despite making no allegations of having brought the issue to ConforMIS prior to filing suit. Judge Young has the case.
Ecolab sued B& B in February, accusing the pest control company of infringing its U.S. Patent 10,070,639, which claims heat systems for killing bed bugs and other pests. Ecolab had notified the manufacturer of a heat treatment system, called “AmCan BugStop Hot House,” and asked the manufacturer to provide notice of the ‘639 patent to all U.S. purchasers of the product. On this basis, Ecolab asserted that the infringement was willful, and sought treble damages and attorney’s fees. The dispute did not last long – On March 21, the owners of B & B, acting pro se, entered into a consent judgment, which Judge Young entered as a court order four days later. Under the consent judgment, B & B agreed that the ‘639 patent is valid and enforceable and that it infringed the patent. B & B further accepted a permanent injunction.
Greater Boston Authentication Solutions (“GBAS”) accuses Woburn’s Kaspersky of infringing three patents relating to remotely unlocking electronic data using cryptographic authentication. GBAS asserts that Kaspersky’s license activation and verification technology infringes the patents, either literally or through the doctrine of equivalence. Judge Young has the case.
The patent claims of this multi-claim lawsuit surrounding 3-D metal printing were bifurcated, and a jury trial on the patent claims was held in late July. The jury returned a verdict finding the two asserted patents valid but not infringed. The remaining trade secret, breach of contract, and unfair competition claims will be tried at a later date.
Following the trial in this case, in which Abhai was found to infringe a pair of Shire’s reissue patents and to have committed litigation misconduct warranting the award of attorneys’ fees (as well as a $30,000 sanction payable to the Court for wasting the Court’s time), Judge Young awarded fees of $1,501,455.32. He cut some time that would have been incurred regardless of the misconduct and for time spent on motions to compel that were not granted, reducing the award by $833k from what Shire had sought. The case will soon be in condition for appeal.