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.

Bio-Rad Laboratories, Inc. v. Stilla Technologies, Inc. et al. (19-cv-11587).

Judge Young granted Stilla’s motion for a 90 day stay of this patent litigation related to droplet digital PCR technology. Bio-Rad accuses Stilla’s Naica™ System of infringement. Stilla sought to stay the case to allow its France-based staff, who are under severe travel and work restrictions, to focus on their development of a COVID-19 diagnostic test kit that uses the Naica™ System. Deciding to prolong a litigation is not the norm for Judge Young, who in December refused to accept a joint schedule that proposed trying the case in mid-February, 2021, stating that the case would go to trial no later than January 2021. The pandemic changes things, however, and the stay was granted just three days after it was sought, despite Stilla’s notice that Bio-Rad opposed the stay.

Annis et al. v. Shinbone Alley, Inc. et al. (20-cv-10449).

Christopher Annis was engaged by Shinbone Alley to assist with photography for Shinbone’s planned website. Annis’ work included retouching photographs, work as a digital capture technician set styling and lighting, and photography over the course of several sessions. After delaying payment several times, Shinbone ultimately did not pay Annis for his work. The photographs were, however, put up on Shinbone’s website, www.shinbonealley.com, when it went live. Annis, having registered copyright in seventeen of the photographs, demanded Shinbone cease and desist using the photographs, which Shinbone has not done. Annis asserts copyright infringement, breach of contract, breach of the covenant of good faith and fair dealing, promissory estoppel, quantum meruit and unjust enrichment and breach of M.G.L. c. 93A. The complaint further notes that the Massachusetts Attorney General’s office has been given the information to review and that Annis will seek to amend the complaint to add a claim under M.G.L. c. 149 § 150, which relates to requirements for payment of wages, if the Attorney General fails to take action. Judge Young is assigned to the case.

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

Bio-Rad and Harvard brought an infringement suit against 10X Genomics, accusing the California business of infringing three patents (two 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 Laboratories, Inc. et al. v. Stilla Technologies, Inc. et al. (19-cv-11587).

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 International SA et al. v. ConforMIS, Inc. (19-cv-11160).

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.  myknee texas orthopedics.jpg

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.

DTP-patient-kit

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 USA v. B & B Pest Control et al. (19-cv-10307).

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.