Opinions and Legal Insights

Doctrine of Equivalents – fluorinated vs non-fluorinated

by Dennis Crouch

Bio-Rad Laboratories, Inc. v. 10X Genomics Inc., 19-2255 (Fed. Cir. 2020).

Without opinion, the Federal Circuit has denied defendant-appellant 10X Genomics’ en banc rehearing petition on the following three questions:

  1. Whether a patentee can overcome prosecution history estoppel under the tangentiality exception merely because the inventors ceded more claim scope than necessary;
  2. Whether a claim term written in binary form is vitiated by an equivalent that is the opposite of that term; and
  3. Whether the requirement to apportion reasonable royalty damages in every case applies in comparable license cases.

EnBancPetition.  The petition filed by Joshua Rosenkranz sets-up a push for writ of certiorari with the Supreme Court.

The $100 million case involves technology for growing and analyzing eukaryotic cells using microchip technology. Effectively cyborg technology albeit at a 1-cell-at-a-time level rather than whole organism.

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Bio-Rad’s U.S. Patent No. 8,889,083 is particularly directed to a microfluidic system.  The claims require “a non-fluorinated microchannel.”  But, it turns out that 10X’s product uses a fluorinated microchannel.  This automatically raises the issue of vitiation and thus 10X’s question “Whether a claim term written in binary form is vitiated by an equivalent that is the opposite of that term.”

BioRadJuryVerdict. The jury was particularly asked about whether the element was satisfied under the doctrine of equivalents, and said yes, it was DOE infringement. On appeal, the Federal Circuit affirmed — rejecting “10X’s attempt to limit the inquiry to a binary choice between ‘fluorinated’ and ‘nonfluorinated’ microchannels.”

The appropriate inquiry is whether a reasonable juror could have found that a negligibly-fluorinated microchannel performs the same function, in the same way, and achieves the same result, as a non-fluorinated microchannel. Here, based on the evidence presented at trial … the district court concluded that a reasonable juror could find that a 0.02% Kynar-containing microchannel is insubstantially different from a non fluorinated microchannel.

Slip Op.

Damages 1 vs 3: The jury found infringement of three separate patents. However, on appeal the Federal Circuit reversed claim-construction for two of the patents and thus vacated the infringement judgment. Although the damages verdict was based upon three patents, the appellate panel affirmed “the entirety of the jury’s damages award” even after finding no infringement for two of the patents.  The court explained: “The jury verdict and jury instructions show that the damages award is not predicated on infringement of any one patent.”