Bio-Rad Laboratories, Inc. v. Itc ( 2021 )

Case: 20-1785 Document: 80 Page: 1 Filed: 04/29/2021
United States Court of Appeals
for the Federal Circuit
______________________
BIO-RAD LABORATORIES, INC.,
Appellant
v.
INTERNATIONAL TRADE COMMISSION,
Appellee
10X GENOMICS INC.,
Intervenor
______________________
2020-1785
______________________
Appeal from the United States International Trade
Commission in Investigation No. 337-TA-1100.
______________________
Decided: April 29, 2021
______________________
BRIAN C. CANNON, Quinn Emanuel Urquhart & Sulli-
van, LLP, Redwood Shores, CA, argued for appellant.
Also represented by KEVIN P.B. JOHNSON; DAVID LEON
BILSKER, ANDREW EDWARD NARAVAGE, NATHAN SUN, San
Francisco, CA; SEAN GLOTH, II, New York, NY; S. ALEX
LASHER, Washington, DC.
BENJAMIN S. RICHARDS, Office of the General Counsel,
United States International Trade Commission, Washing-
ton, DC, argued for appellee. Also represented by
Case: 20-1785 Document: 80 Page: 2 Filed: 04/29/2021
2 BIO-RAD LABORATORIES, INC. v. ITC
DOMINIC L. BIANCHI, WAYNE W. HERRINGTON, SIDNEY A.
ROSENZWEIG.
MATTHEW D. POWERS, Tensegrity Law Group, LLP,
Redwood Shores, CA, argued for intervenor. Also repre-
sented by PAUL EHRLICH, ROBERT LEWIS GERRITY, UTSAV
GUPTA, DANIEL RADKE, JENNIFER ROBINSON, STEFANI
SMITH; AZRA HADZIMEHMEDOVIC, SAMANTHA A. JAMESON,
AARON MATTHEW NATHAN, McLean, VA.
______________________
Before TARANTO, CHEN, and STOLL, Circuit Judges.
TARANTO, Circuit Judge.
10X Genomics Inc. filed a complaint against Bio-Rad
Laboratories, Inc. with the International Trade Commis-
sion, alleging that Bio-Rad’s importation and sale of
microfluidic systems and components used for gene se-
quencing or related analyses violated section 337 of the
Tariff Act of 1930, 19 U.S.C. § 1337. Invoking the stat-
ute’s bar on importation and sale “of articles that . . .
(i) infringe a valid and enforceable United States patent,”
19 U.S.C. § 1337(a)(1)(B), 10X alleged that Bio-Rad in-
fringed certain claims of several of 10X’s patents, includ-
ing U.S. Patent Nos. 9,689,024, 9,695,468, and 9,856,530.
The Administrative Law Judge (ALJ) determined that
Bio-Rad violated the statute with respect to all three
patents. Specifically, the ALJ found that Bio-Rad in-
fringed the patent claims now at issue and also that 10X
practiced the claims, the latter fact satisfying the re-
quirement of a domestic industry “relating to the articles
protected by the patent,” id. § 1337(a)(2). In addition, the
ALJ rejected Bio-Rad’s defense that it could not be liable
for infringement because it co-owned the asserted 10X
patents under assignment provisions that two of the
named inventors signed when they were employees of Bio-
Rad (and its predecessor), even though the inventions
claimed were not made until after the employment. The
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BIO-RAD LABORATORIES, INC. v. ITC 3
Commission affirmed the ALJ’s determinations, though it
modified some of the ALJ’s reasoning. We affirm.
I
A
The first two of the three patents at issue on appeal,
i.e., the ’024 patent and ’468 patent, share a specification. 1
Both patents are entitled “Methods for Droplet-Based
Sample Preparation.” And both list Benjamin Hindson,
Serge Saxonov, and Michael Schnall-Levin as the co-
inventors. On the record and arguments before us, we
take as a given that the conception date for the claims at
issue was no earlier than in January 2013.
The shared specification describes methods of prepar-
ing samples that can include “fragmenting molecules,
isolating molecules, and/or attaching unique identifiers to
particular fragments of molecules.” ’024 patent, col. 1,
lines 34–37. The material of interest (analyte)—which
may be polynucleotides (e.g., DNA segments), cells, or
other material—can be subdivided into “an assembly of
partitions (e.g., microwells, droplets) that are loaded with
microcapsules.” Id., col. 4, lines 24–27. Each partition, or
a microcapsule in it, may contain a sample of the analyte
and a reagent, the latter of which may be a unique identi-
fier that enables tracking partition content in further
processing. Id., col. 4, lines 29–44.
In one embodiment, of central importance to the pre-
sent matter, “a microcapsule may be a gel bead.” Id., col.
9, lines 28–34. Analytes or reagents may be coupled to
the interior or to the outer surface of the gel bead. See id.,
1 Before the Commission, 10X also alleged in-
fringement of a fourth patent, U.S. Patent No. 9,644,204,but the ALJ rejected the allegation, the Commission
affirmed, and 10X has not appealed that ruling.
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4 BIO-RAD LABORATORIES, INC. v. ITC
col. 9, lines 35–42. The analytes or reagents may then be
released from the microcapsule via a stimulus, or “trig-
ger,” which take the form of, e.g., chemical agents, en-
zymes, light, heat, or magnetic fields. Id., col. 22, lines 4–
21.
One example of a reagent is a “molecular barcode”
that can serve as a unique identifier. See id., col. 12, lines
9–14. Molecular barcodes can be used to identify and
track individual molecules of (say) the nucleic acid seg-
ments. See id. For example, if multiple samples are
analyzed simultaneously by pooling them, see id., col. 12,
lines 31–39, and the analytes from each sample are
tagged with a barcode, analytes from different samples
can be identified and tracked in the pooled sample, id.,col. 12, lines 36–39. “Oligonucleotide barcodes . . . may be
particularly useful in nucleic acid sequencing.” Id., col.
12, lines 43–44.
10X asserted independent claim 1 and dependent
claims 5, 17, 19, and 22 of the ’024 patent against Bio-
Rad. Claim 1 recites:
1. A method for sample preparation, comprising:
a) providing a droplet comprising a porous gel
bead and a target nucleic acid analyte, wherein
said porous gel bead comprises at least 1,000,000
oligonucleotide molecules comprising barcode se-
quences, wherein said oligonucleotide molecules
are releasably attached to said porous gel bead,
wherein said barcode sequences are the same se-
quence for said oligonucleotide molecules;
b) applying a stimulus to said porous gel bead to
release said oligonucleotide molecules from said
porous gel bead into said droplet, wherein upon
release from said porous gel bead, a given oligonu-
cleotide molecule from said oligonucleotide mole-
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BIO-RAD LABORATORIES, INC. v. ITC 5
cules attaches to said target nucleic acid analyte;
and
c) subjecting said given oligonucleotide molecule
attached to said target nucleic acid analyte to nu-
cleic acid amplification to yield a barcoded target
nucleic acid analyte.
Id., col. 33, line 56, through col. 34, line 7.
With respect to the ’468 patent, 10X asserted inde-
pendent claim 1 and dependent claims 6, 7, 9, and 21
against Bio-Rad. Claim 1 recites:
1. A method for droplet generation, comprising:
(a) providing at least 1,000,000 oligonucleotide
molecules comprising barcode sequences, wherein
said barcode sequences are the same sequence for
said at least 1,000,000 oligonucleotide molecules,
wherein said at least 1,000,000 oligonucleotide
molecules are releasably attached to a bead,
wherein said bead is porous;
(b) combining said at least 1,000,000 oligonucleo-
tide molecules and a sample comprising a nucleic
acid analyte each in an aqueous phase at a first
junction of two or more channels of a microfluidic
device to form an aqueous mixture comprising
said at least 1,000,000 oligonucleotide molecules
attached to said bead and said sample; and
(c) generating a droplet comprising said at least
1,000,000[ ]oligonucleotide molecules attached to
said bead and said sample comprising said nucleic
acid analyte by contacting said aqueous mixture
with an immiscible continuous phase at a second
junction of two or more channels of said microflu-
idic device.
’468 patent, col. 33, line 56, through col. 34, line 9.
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6 BIO-RAD LABORATORIES, INC. v. ITC
The third patent asserted by 10X here is the ’530 pa-
tent, entitled “Methods and Systems for Processing Poly-
nucleotides.” It lists Benjamin Hindson, Serge Saxonov,
and Michael Schnall-Levin as three of six inventors. It is
undisputed that the conception date for the inventions of
this patent is no earlier than the January 2013 date for
the ’024 and ’468 patents.
Although the ’530 patent does not share a specifica-
tion with the other two patents at issue here, the subject
matter of the asserted claims is related to that of the
asserted ’024 and ’468 patent claims. 10X asserted inde-
pendent claim 1 and dependent claims 4, 11, 14, 19, 26,
and 28 of the ’530 patent. Claim 1 recites:
1. A method for nucleic acid preparation or analy-
sis, comprising:
(a) providing:
(i) at least 1,000 gel beads;
(ii) releasably attached to each of said at
least 1,000 gel beads, at least 1,000 bar-
code molecules comprising identical bar-
code sequences that are distinct from
barcode sequences of at least 1,000 bar-
code molecules releasably attached to any
other gel bead of said at least 1,000 gel
beads; and
(iii) a plurality of cells each comprising a
plurality of polynucleotide molecules;
(b) generating a plurality of droplets, wherein at
least 1,000 droplets of said plurality of droplets
each comprise:
(i) a single gel bead from said at least
1,000 gel beads; and
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BIO-RAD LABORATORIES, INC. v. ITC 7
(ii) a single cell from said plurality of cells;
and
(c) in each of said at least 1,000 droplets, using
said plurality of polynucleotide molecules from
said single cell and barcode molecules of said at
least 1,000 barcode molecules from said single gel
bead to generate a plurality of barcoded polynu-
cleotide molecules,
wherein said barcode molecules become detached
from said gel bead.
’530 patent, col. 47, line 58, through col. 49, line 4.
B
By mid-2010, two of the named inventors of the 10X
patents—Dr. Hindson and Dr. Saxonov—were working for
a company called QuantaLife, Inc., which Dr. Hindson
had co-founded. Each of them signed an agreement (Dr.
Hindson in 2009, Dr. Saxonov in 2010) that provided, as
relevant here:
(a) Employee agrees to disclose promptly to the
Company the full details of any and all ideas, pro-
cesses, recipes, trademarks and service marks,
works, inventions, discoveries, marketing and
business ideas, and improvements or enhance-
ments to any of the foregoing (“IP”), that Employ-
ee conceives, develops or creates alone or with the
aid of others during the term of Employee’s em-
ployment with the Company . . . .
(b) Employee shall assign to the Company, with-
out further consideration, Employee’s entire right
to any IP described in the preceding subsection,
which shall be the sole and exclusive property of
the Company whether or not patentable.
J.A. 3199, 3209.
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8 BIO-RAD LABORATORIES, INC. v. ITC
In 2011, Bio-Rad acquired QuantaLife, and Drs.
Hindson and Saxonov became Bio-Rad employees. In
October of that year, they each signed an agreement that
provided, as relevant here:
All inventions (including new contributions, im-
provements, designs, developments, ideas, discov-
eries, copyrightable material, or trade secrets)
which I may solely or jointly conceive, develop or
reduce to practice during the period of my em-
ployment by Bio-Rad shall be assigned to Bio-Rad.
J.A. 3193, 3195.
Drs. Hindson and Saxonov left Bio-Rad in April 2012,
and together they formed 10X in July 2012. J.A. 10042.
By August 2012, 10X filed the first of several provisional
patent applications that focused on using microcapsules
in capsule partitions or droplet partitions (referred to as
capsule-in-capsule and capsule-in-droplets architecture,
respectively) for barcoding. See J.A. 1215. By January
2013, the 10X inventors had conceived of a different
architecture: “gel bead in emulsion” (GEM). See J.A.
1215–20, 10178. The GEM architecture involves “parti-
tioning nucleic acids, DNA or RNA, in droplets together
with gel beads that are used to deliver the barcodes into
the droplet,” where the “barcodes are released from the
gel beads using a stimulus.” J.A. 269 (internal quotation
marks omitted); see also J.A. 1215–16, 1233. The asserted
10X patent claims all involve this architecture.
After 10X began selling its products, including the
GemCode and Chromium products, Bio-Rad released its
own ddSEQ™ system, whose ordinary use, 10X alleges,
practices its patents. See J.A. 543–44. The ddSEQ sys-
tem uses oligonucleotide molecules that are attached to a
gel bead and can be released from the bead via a stimu-
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BIO-RAD LABORATORIES, INC. v. ITC 9
lus. J.A. 161. 2 The stimulus used by Bio-Rad’s system is
an enzyme complex that cleaves the oligonucleotides from
the gel bead. J.A. 161.
C
The ALJ ruled for 10X in the respects relevant to the
appeal (while resolving other issues not presented on
appeal). J.A. 138–298. The ALJ found that ordinary use
of Bio-Rad’s ddSEQ system infringes the asserted claims
of the ’024, ’468, and ’530 patents, that the same is true of
10X’s products, and that both the infringing-articles and
domestic-industry requirements of section 337 are met.
J.A. 159–72, 200–07, 232–59. 3 The ALJ also rejected Bio-
Rad’s contention, based on the assignment provisions,
that it co-owned these patents and therefore could not
infringe them. J.A. 277–93. When Bio-Rad petitioned for
review of the ALJ’s Initial Determination, the Commis-
sion decided to review it in part. See Certain Microfluidic
Systems and Components Thereof and Products Contain-
ing Same; Commission Determination To Review in Part
a Final Initial Determination Finding a Violation of
Section 337 and To Extend the Target Date; Schedule for
Filing Written Submissions, 84 Fed. Reg. 56,835, 56,835
(Oct. 23, 2019) (notice). On February 12, 2020, the Com-
2 We use the singular “system,” even though there
are several accused versions of ddSEQ. The versions at
issue do not differ in a way that is material on appeal.
3 The asserted claims are method claims, and the
ALJ also found the requirements of indirect infringement
met. J.A. 168–72, 204–05, 246–53. Those findings are
not challenged on appeal. Although the claims are meth-
od claims, in this matter we lose no needed precision by
sometimes referring to a system or product as practicing a
claim or meeting claim requirements or infringing a claim
or patent.
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10 BIO-RAD LABORATORIES, INC. v. ITC
mission affirmed the ALJ’s determinations regarding
infringement, the domestic-industry requirement, and
ownership. J.A. 29–137.
1
With respect to the ’024 patent, the ALJ determined
that Bio-Rad’s ddSEQ system practices all challenged
claims of the ’024 patent, including, as relevant on appeal,
the second step of the method in claim 1, which requires
“applying a stimulus to said porous gel bead to release
said oligonucleotide molecules from said porous gel bead.”
’024 patent, col. 33, line 65–67 (emphasis added); J.A.
159–72. Bio-Rad contended that its system does not meet
that claim limitation because the stimulus used in its
system acts on the oligonucleotides rather than the gel
bead. The ALJ disagreed, finding that “the oligonucleo-
tides are part of the gel bead,” so that “[a]ny stimulus
applied to the oligonucleotide is therefore also applied to
the gel bead.” J.A. 164–65 (citing J.A. 4870 (Bio-Rad
expert testifying that “the enzyme enters the entire
volume of the bead”); and then citing J.A. 10074). On
review, the Commission affirmed the ALJ’s determina-
tion, without any modification relevant to this appeal.
J.A. 37.
With respect to the ’468 patent, too, the ALJ deter-
mined that Bio-Rad’s ddSEQ system practices all chal-
lenged claims. J.A. 200–04. As relevant on appeal, Bio-
Rad argued to the Commission that its system does not
meet the claim requirement of “combining said at least
1,000,000 oligonucleotide molecules and a sample com-
prising a nucleic acid analyte . . . at a first junction of two
or more channels of a microfluidic device to form an
aqueous mixture.” ’468 patent, col. 33, line 64, through
col. 34, line 1. Citing testimony from 10X’s expert (Dr.
Butte), Bio-Rad contended that the solutions of the oligo-
nucleotide molecules and the sample do not form an
aqueous mixture at the first junction, but remain sepa-
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BIO-RAD LABORATORIES, INC. v. ITC 11
rate until later, when droplets form. J.A. 202 (citing J.A.
10104); see also J.A. 10104 (Dr. Butte testifying that “it
would be a big mess” if the two solutions mixed “without
forming a droplet”). The ALJ disagreed and found 10X’s
proof of satisfaction of this claim requirement persuasive,
because 10X’s expert explained that the two solutions
“come together and then immediately are formed into a
droplet.” J.A. 203 (quoting J.A. 10104). On review, the
Commission affirmed the ALJ’s determination, without
any modification relevant to this appeal. J.A. 51.
With respect to the ’530 patent, the ALJ likewise de-
termined that Bio-Rad’s ddSEQ system practices all
challenged claims. In a claim construction, the ALJ
concluded that claim 1 requires the (second) step of gen-
erating “at least 1,000 droplets” to be completed before
the (third) step of “generating a plurality of barcoded
polynucleotide molecules.” J.A. 233. Bio-Rad argued that
its system does not meet that requirement because the
enzymes in its droplets begin to form barcoded molecules
immediately upon droplet formation, i.e., barcoding begins
before at least 1,000 droplets are formed. J.A. 240. The
ALJ rejected this argument as taking too constrained a
view of the claim requirement. Even if the enzymes are
active and barcoding begins immediately after a droplet is
formed, the ALJ found, there was evidence that the
enzymes do not work quickly enough to finish cleaving all
barcoded molecules from the gel bead within the droplets
before 1,000 droplets are formed. J.A. 241–44. In other
words, the barcoding process may begin before 1,000
droplets are formed, but claim 1 requires only that the
barcoding process may not be completed before 1,000
droplets are formed. See J.A. 241–44. On review, the
Commission affirmed and made clear that the ALJ’s
construction does not forbid any barcoding to occur in any
droplet before at least 1,000 droplets are generated in the
second step. See J.A. 72–81, 99–100.
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12 BIO-RAD LABORATORIES, INC. v. ITC
Bio-Rad also argued that the domestic-industry re-
quirement was not established for the asserted ’530
patent claims because, Bio-Rad urged, 10X’s domestic
products, on which 10X relied to meet this requirement,
do not practice the independent claim 1 (or therefore the
other asserted claims). The ALJ found that the 10X
products do practice claim 1. J.A. 254–57. On review, the
Commission agreed with the ALJ’s bottom-line finding
that 10X’s products practice claim 1, even while conclud-
ing that the particular evidence cited by the ALJ did not
support the finding. J.A. 82–88. After its own review of
the record, the Commission determined that enough
barcodes in the 10X products are released after at least
1,000 droplets have been generated: Even if gel beads
begin to dissolve immediately after droplet generation,
the beads do not dissolve so quickly that fewer than 1,000
of them still have a plurality of barcodes attached upon
the completion of droplet formation. J.A. 83–88.
Finally, the Commission rejected Bio-Rad’s argument
that the asserted ’530 patent claims are invalid for indefi-
niteness. The Commission concluded that Bio-Rad had
forfeited the argument by not timely raising it earlier.
J.A. 89–94. In the alternative, the Commission concluded
that the claims are not indefinite. J.A. 95–100.
2
As an affirmative defense, Bio-Rad argued that it co-
owns the three 10X patents asserted against it because
Drs. Hindson and Saxonov conceived of the ideas embod-
ied in the patents while they were still employed by Bio-
Rad (or its predecessor QuantaLife), with which Drs.
Hindson and Saxonov had signed assignment agreements.
The ALJ rejected the defense. J.A. 282–92. The ALJ
concluded that Bio-Rad had not shown that the “inventive
concept” of the asserted patents was conceived before the
inventors left Bio-Rad. J.A. 282–83. That was decisive,
the ALJ concluded, because “[n]o provision of any of the
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BIO-RAD LABORATORIES, INC. v. ITC 13
applicable contracts governs future inventions” merely
because the future inventions “are based on or developed
from work done during employment.” J.A. 285–86. Based
on the record, the ALJ found that it was not “more likely
than not that conception of the inventive idea in the
asserted patents occurred before [the two co-inventors’]
departure” from Bio-Rad. J.A. 292.
On review, the Commission agreed with the ALJ that
Bio-Rad does not co-own the asserted patents. J.A. 104–
08. The Commission stated that Bio-Rad’s identified
“ideas” that Drs. Hindson and Saxonov worked on while
at QuantaLife and Bio-Rad were too “generic”; they did
not include the specifics required by the 10X patent
claims at issue. J.A. 104–05. The Commission added that
Bio-Rad’s own evidence showed that the inventors, while
at Bio-Rad and QuantaLife, worked chiefly on droplet-in-
droplet architecture, which is different from the gel-bead
architecture to which Drs. Hindson and Saxonov later
shifted their focus to make the inventions now at issue. 4
J.A. 105. The Commission also determined that Bio-Rad
had not shown that any of the ideas that Drs. Hindson
and Saxonov worked on when with Bio-Rad or QuantaLife
remained outside the published prior art by the concep-
tion date for the patents at issue. J.A. 106. The Commis-
sion mentioned that many of the ideas that Bio-Rad
identified were disclosed in U.S. Patent No. 9,347,059,which named Dr. Saxonov as an inventor and was as-
signed to Bio-Rad. J.A. 106 (“Moreover, the existence of
the ’059 patent demonstrates that Bio-Rad received the
benefit of its bargain with respect to the employment
agreements. For the ideas that were conceived at
4 Droplet-in-droplet architecture uses a droplet as
the vehicle to deliver barcodes into another droplet con-
taining the analyte, whereas the asserted claims use a gel
bead as the delivery vehicle. See J.A. 6216.
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14 BIO-RAD LABORATORIES, INC. v. ITC
QuantaLife or Bio-Rad, Dr. Saxonov did assign his
rights.”). Finally, the Commission clarified the ALJ’s use
of the term “‘inventive concept’” to mean “‘the specific
arrangement of elements claimed in the asserted pa-
tents.’” J.A. 107–08 (quoting J.A. 283). The Commission
reasoned that the inventive concept here was the combin-
ing of several elements resulting in gel beads that deliver
barcodes into the droplets with nucleic acid samples, in
which the barcodes are releasably attached to the gel
beads. J.A. 108. For those reasons, the Commission
concluded, Bio-Rad had not shown it was entitled to an
ownership interest in any of the asserted patents.
Bio-Rad timely appealed. We have jurisdiction under
19 U.S.C. § 1337(c) and 28 U.S.C. § 1295(a)(6).
II
We now generally refer to all determinations on re-
view as those of the Commission, whether or not made by
the ALJ or by the full Commission. “We review the
Commission’s final determinations under the standards of
the Administrative Procedure Act.” Guangdong Alison
Hi-Tech Co. v. Int’l Trade Comm’n, 936 F.3d 1353, 1359
(Fed. Cir. 2019); see also 19 U.S.C. § 1337(c); 5 U.S.C.
§ 706. The Commission’s factual findings are reviewed for
substantial-evidence support and its legal determinations
are reviewed de novo. Guangdong, 936 F.3d at 1359. “A
finding is supported by substantial evidence if a reasona-
ble mind might accept the evidence as adequate to sup-
port the finding.” Henny Penny Corp. v. Frymaster LLC,
938 F.3d 1324, 1330 (Fed. Cir. 2019).
A
Bio-Rad argues that the Commission erred in finding
that Bio-Rad infringes the asserted claims of the ’024,
’468, and ’530 patents, in finding that 10X’s domestic
products practice the asserted claims of the ’530 patent,
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BIO-RAD LABORATORIES, INC. v. ITC 15
and in rejecting Bio-Rad’s indefiniteness challenge to the
asserted claims of the ’530 patent. We disagree.
1
Bio-Rad argues that it does not infringe the asserted
claims of the ’024 patent because its system’s stimulus is
applied to the oligonucleotide, not the gel bead. Bio-Rad
Opening Br. at 41–47. The Commission rejected the
contention and found infringement. We review that
factual finding for support by substantial evidence.
ATEN Int’l Co. v. Uniclass Tech. Co., 932 F.3d 1364, 1367
(Fed. Cir. 2019). We conclude that such support exists.
Claim 1 of the ’024 patent requires a “porous gel bead
[that] comprises at least 1,000,000 oligonucleotide mole-
cules comprising barcode sequences, wherein said oligo-
nucleotide molecules are releasably attached to said
porous gel bead.” ’024 patent, col. 33, lines 58–62 (em-
phasis added). It further requires “applying a stimulus to
said porous gel bead to release said oligonucleotide mole-
cules from said porous gel bead.” Id., col. 33, lines 65–67
(emphases added). The Commission found Bio-Rad’s
system to satisfy those requirements. The parties agreed
that the “applying a stimulus . . .” phrase has “its plain
and ordinary meaning.” J.A. 159. “Releasably attached”
was construed to mean “‘attached in a manner that allows
the attached object to be released.’” J.A. 159 (quoting J.A.
643). That construction is not challenged on appeal.
The evidence shows that in Bio-Rad’s system, the oli-
gonucleotide molecules that include barcode sequences
are contained within the gel bead. J.A. 165 (citing J.A.
4983 (describing oligonucleotides “in the volume of the . . .
bead”)). It further shows that the oligonucleotide mole-
cules that include barcode sequences are attached
through linking molecules to the gel bead. See J.A. 160–
64, 1278–84. When an enzyme is applied to release
oligonucleotides that contain barcode sequences, the
“‘enzyme enters the entire volume of the bead,’” and it
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16 BIO-RAD LABORATORIES, INC. v. ITC
releases those nucleotides. J.A. 164 (quoting Bio-Rad’s
expert, J.A. 4870); see also J.A. 160–66, 1278–84, 3235,
3240–51. The evidence reasonably permitted the Com-
mission to find the claim limitation at issue met when the
enzyme is “appl[ied],” ’024 patent, col. 33, line 65, to the
entirety of the gel bead at a time when the bead includes
the specified oligonucleotide molecules. J.A. 165.
Focusing on the claim’s requirement that specified “ol-
igonucleotide molecules are releasably attached to said
porous gel bead,” Bio-Rad argues that two items that are
attached to each other must not be treated as identical.
See Bio-Rad Opening Br. at 43–44 (citing In re Cuozzo
Speed Techs., LLC, 793 F.3d 1268, 1280 (Fed. Cir. 2015)
(affirming Board’s construction of “integrally attached” to
mean “discrete parts physically joined together as a unit
without each part losing its own separate identity”)).
That observation does not undermine the Commission’s
finding that the claim limitation, given its plain and
ordinary meaning, is met. The Commission did not treat
the bead and the specified oligonucleotide as the “same
object.” Id. at 43. The Commission properly found that,
after the specified oligonucleotides have been releasably
attached to the gel bead, the specified “oligonucleotides
are part of the gel bead,” J.A. 165 (emphasis added), and
it is after that attachment that the enzyme is applied to
the entirety of the bead.
Bio-Rad argues that its enzyme removes or cleaves a
part of the oligonucleotide molecule and not some part of
the gel material, pointing to a portion of the ’024 patent
specification. Bio-Rad Opening Br. at 46–47 (citing ’024
patent, col. 2, lines 20–25 (describing the gel bead as
“degradable upon the application of a stimulus”)). But the
claim language merely requires “applying a stimulus to
said porous gel bead to release said oligonucleotide mole-
cules,” the “said” molecules having only to consist of
oligonucleotides that contain barcoding sequences (which
may be less than the entirety of an oligonucleotide mole-
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BIO-RAD LABORATORIES, INC. v. ITC 17
cule bonded with a gel bead). ’024 patent, col. 33, lines
65–66 (emphasis added); J.A. 162. That language re-
quires application of an enzyme to the gel bead, but it
does not further specify which bonds must be broken to
release the specified oligonucleotides that contain barcode
sequences. Moreover, the specification contemplates that
any number of stimuli could be applied, including “chemi-
cal triggers.” ’024 patent, col. 19, lines 36–46; see also id.,col. 9, lines 52–56 (“For example, in the case where an
oligonucleotide barcode is immobilized to a gel bead via a
disulfide bond, exposure of the disulfide bond to a reduc-
ing agent can cleave the disulfide bond and free the
oligonucleotide barcode from the bead.”). We conclude
that substantial evidence supports the Commission’s
finding that Bio-Rad’s system practices the asserted
claims of the ’024 patent.
2
Bio-Rad argues that it does not infringe the asserted
claims of the ’468 patent because its system’s nucleic-acid-
sample solution and reagent solution do not mix until
droplets are formed. Bio-Rad Opening Br. at 47–51. The
Commission reasonably found otherwise.
Claim 1 of the ’468 patent requires both the oligonu-
cleotide and nucleic-acid samples to be in an aqueous
phase that meet at a “first junction . . . to form an aque-
ous mixture.” ’468 patent, col. 33, line 64, through col. 34,
line 3. Thereafter a droplet is generated by having the
aqueous mixture and an “immiscible continuous phase,”
e.g., oil, meet at a second junction. Id., col. 34, lines 4–9.
As the Commission described, 10X’s expert testified that
Bio-Rad’s system met the requirement of an aqueous
mixture after the first junction, pointing to Bio-Rad
documents that described the mixing of the two solutions.
J.A. 201 (citing J.A. 1333–34). Bio-Rad responded that
10X’s expert had admitted that Bio-Rad’s oligonucleotide
solution and its nucleic-acid-sample solution are kept
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18 BIO-RAD LABORATORIES, INC. v. ITC
separate until they get to the second junction where the
droplet is formed, lest the solutions react before being
encased in a droplet. See J.A. 202; see also J.A. 10104
(10X expert Dr. Butte testifying that “it would be a big
mess” if the two solutions mixed “without forming a
droplet”). The Commission credited 10X’s expert and
rejected Bio-Rad’s response, noting that 10X’s expert had
explained that the potentially worrisome reaction (lysis)
is not instantaneous and a droplet is formed soon enough
after the solutions are combined to avoid creation of a
mess. J.A. 203 (citing J.A. 10104).
On appeal, Bio-Rad’s challenge to the Commission’s
finding on this point relies crucially on a somewhat hazy
image of the Bio-Rad system that seems to show a hori-
zontal line between the two solutions until they are past
the second junction—an image that, Bio-Rad argues,
establishes that the two solutions do not mix together
before the second junction (where the oil is introduced to
form a droplet). Bio-Rad Opening Br. at 50 (citing J.A.
2207). But Bio-Rad does not point to any evidence in the
record that explains the horizontal line in the image.
Without record evidence explaining what the line is, we
cannot say that the Commission lacked substantial evi-
dence to find that Bio-Rad infringed the ’468 patent.
3
Bio-Rad makes three arguments about the ’530 pa-
tent. We reject all three arguments.
a
Bio-Rad argues that substantial evidence does not
support the Commission’s finding that Bio-Rad’s system
practices the asserted claims of the ’530 patent. Bio-Rad
Opening Br. at 58–60. We disagree. Bio-Rad’s argument
must fail unless the Commission erred, as a matter of
claim construction, in determining that the claim permits
some barcode detachment (from the gel of the bead) to
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BIO-RAD LABORATORIES, INC. v. ITC 19
occur before 1,000 droplets are formed—as long as the
claim-required number of detachments occur after 1,000
droplets have formed. J.A. 74–76, 81, 99–100, 232. But
Bio-Rad does not even argue for a different claim con-
struction, and in any event, we see no error in the Com-
mission’s construction, which fits the evident meaning of
the claim. 5
The method of claim 1 of the ’530 patent requires
three steps. As relevant here, it is not disputed that, as
the Commission and ALJ both concluded, see J.A. 99–100,
233, the second step of generating “at least 1,000 drop-
lets” (each containing the specified analyte along with a
gel bead having at least 1,000 barcode molecules) must be
completed before the third step of generating a “plurality
of barcoded polynucleotide molecules” by detachment from
the gel bead is performed in the 1,000 droplets. ’530
patent, col. 48, line 59, through col. 49, line 4. Critically,
that conclusion does not mean, and the claim language
does not require, that there be no barcode detachment
before 1,000 droplets are generated. J.A. 74–76, 81, 99–
100, 232. All the claim language requires is that, after at
least 1,000 droplets are formed, the required barcode
detachment/generation occur in each of them. As long as
that occurs, “[t]he fact that barcoding of other polynucleo-
tides also happened before 1,000 droplets were generated
is irrelevant.” J.A. 99–100.
5 Bio-Rad does argue indefiniteness, resting that
argument on the contention that the Commission and
ALJ adopted conflicting constructions over time. Bio-Rad
Opening Br. at 60–63. As we conclude infra, however,
Bio-Rad has forfeited any indefiniteness challenge, and in
any event, all the Commission (and ALJ) did was to
resolve, correctly, a potential uncertainty in an initial
formulation of the proper claim meaning, a process that
does not support a conclusion of indefiniteness.
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20 BIO-RAD LABORATORIES, INC. v. ITC
Without directly (or persuasively) challenging that
claim construction, Bio-Rad argues on appeal that be-
cause barcoding begins immediately after a droplet is
formed, 10X has not proven infringement. Bio-Rad Open-
ing Br. at 59–60. But the Commission found that barcode
molecules are not released from the gel beads instantane-
ously and that, instead, the barcoding process merely
begins to occur upon droplet formation, with enough
barcode detachment still occurring after 1,000 droplets
are formed to meet the claim requirement. See J.A. 79–
81. Indeed, the Commission found that “the bulk of
cleavage and barcoding occur” after 1,000 droplets are
formed. J.A. 80. The Commission cited sufficient evi-
dence to support its findings. See, e.g., J.A. 2169, 2290,
2631–32.
b
Invoking the same claim limitations as those just dis-
cussed, Bio-Rad contests the Commission’s determination
that 10X’s product comes within the asserted claims of the
’530 patent and thereby satisfies the domestic-industry
requirement of the Tariff Act. See 19 U.S.C. § 1337(a)(2)
(requiring that a domestic industry “relating to the arti-
cles protected by the patent . . . exist[] or [be] in the
process of being established”). “The test for satisfying the
‘technical prong’ of the [domestic] industry requirement is
essentially [the] same as that for infringement, i.e., a
comparison of domestic products to the asserted claims.”
Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1375
(Fed. Cir. 2003). Bio-Rad argues that 10X’s product does
not practice the asserted claims of the ’530 patent be-
cause, in 10X’s product (as, Bio-Rad says, in its own
systems), barcode molecules are released after droplets
are formed. Bio-Rad Opening Br. at 53–58. In particular,
Bio-Rad challenges the Commission’s finding, based in
part on information from 10X investor presentations, that
at least 1,000 gel beads remain to be dissolved after at
least 1,000 droplets are formed. Id. (citing J.A. 83–87).
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BIO-RAD LABORATORIES, INC. v. ITC 21
We see no reversible error in the Commission’s determi-
nation.
In its decision on the domestic-industry issue, the
Commission found that a typical run of droplet formation,
which can generate 8,000 droplets from one gel bead, lasts
6.5 minutes, suggesting that more than 1,000 droplets are
generated in the last minute of the droplet-formation
process. J.A. 83 (citing J.A. 1363–64, 1693). Bio-Rad does
not explain why that conclusion is wrong on appeal. See
Bio-Rad Opening Br. at 55. The Commission also found
that gel beads are only partially dissolved two minutes
after droplet formation. J.A. 85–87. In so finding, the
Commission relied on a slide from a presentation 10X
made to investors in 2013. J.A. 85–87 (citing J.A. 1429).
In addition, the Commission credited testimony from Dr.
Schnall-Levin (a co-inventor) that the gel bead does not
“instantaneously” disappear after droplet formation. J.A.
87–88 (citing J.A. 10057 (“Q. When you take the first
droplet, the cell and bead disappear immediately; right?
A. No, I don’t think so.”)). On those bases, the Commis-
sion found that the ’530 patent’s claim requirement at
issue is met, i.e., “at least 1,000 droplets” are generated
before generating a “plurality of barcoded polynucleotide
molecules.” J.A. 87.
On appeal, Bio-Rad argues that the Commission erred
in relying on the investor slide because there was no
evidence to suggest that the slide, from 2013, J.A. 1394,
accurately represented the operation of the commercial
products that 10X actually sold (GemCode products
starting in 2015, Chromium products starting in 2016,
J.A. 36, 1237). Bio-Rad Opening Br. at 55–56. But the
slide explicitly refers to the “10X GEM System,” which is
the GEM architecture that is used in 10X’s products. See
J.A. 1429. The 10X Chromium User Guide itself describes
the use of the GEM architecture in the product. See J.A.
1557. The evidence, not contradicted by any evidence
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22 BIO-RAD LABORATORIES, INC. v. ITC
that Bio-Rad identifies, suffices for the Commission to
rely on the investor slides.
Bio-Rad also argues that it never had the opportunity
to present evidence disputing the significance of the slide
with respect to the domestic-injury requirement because
10X did not cite the slide for that purpose until the pro-
ceedings before the Commission, on review of the ALJ
determination. Bio-Rad Opening Br. at 56–57 (citing J.A.
83). But Bio-Rad is responsible for the timing it criticizes:
In the evidentiary proceeding before the ALJ, Bio-Rad
never disputed that 10X’s products practice the barcode-
release requirement. Compare J.A. 3807–10 (Bio-Rad
Pre-Trial Brief), 4103–04 (Bio-Rad Post-Trial Brief),
4247–28 (Bio-Rad Post-Trial Reply Brief), with J.A. 789
(Petition for Commission Review). Bio-Rad raised this
issue for the first time in seeking Commission review,
after the evidentiary record was complete. J.A. 789.
When the Commission ordered additional submissions on
this issue (among others), it directed the parties to identi-
fy all evidence supporting their positions. J.A. 831. After
Bio-Rad made its submission, 10X responded, citing the
in-the-record slide as supporting evidence. See J.A. 83–
85. Bio-Rad does not show that it asked the Commission
for an opportunity to submit further evidence to counter
the slide evidence. In these circumstances, when there is
no concrete showing of prejudice even now, we see no
reversible error in the Commission’s reliance on the slide
evidence.
Bio-Rad also argues that the Commission erred in re-
lying on Dr. Schnall-Levin’s statement as corroborating
the Commission’s understanding of the dissolution rate of
the gel beads. Bio-Rad Opening Br. at 57. But when Bio-
Rad asked Dr. Schnall-Levin, “When you take the first
droplet, the cell and bead disappear immediately; right?”,
he responded, “No, I don’t think so.” J.A. 10057. That
statement lends support to the Commission’s finding, and,
of course, it does not stand alone.
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BIO-RAD LABORATORIES, INC. v. ITC 23
Finally, Bio-Rad repeats an argument that the Com-
mission rejected—namely that certain 10X promotional
materials explain that its gel bead dissolves “immediate-
ly” after droplet generation. J.A. 83. Bio-Rad points to
documents like the 10X Chromium Single Cell User
Guide, which states that “[i]mmediately following genera-
tion of a GEM [droplet], the Single Cell 5’ Gel Bead is
dissolved.” J.A. 1557; see also J.A. 3259 (Bio-Rad expert
explaining that “[a]fter encapsulation into droplets, cell
lysis starts almost immediately following rapid mixing in
the droplets”). We see no error in the Commission’s
calculations, or in its conclusion that “immediately” does
not mean “instantaneously” or so fast that fewer than
1,000 gel beads would have barcodes attached after drop-
let formation was complete. J.A. 87–88. The evidence
that Bio-Rad cites could also mean, as the Commission
found, that gel bead dissolution begins immediately but is
not completed “instantaneously.”
c
Bio-Rad seeks reversal of the Commission’s rejection
of Bio-Rad’s indefiniteness challenge to the asserted
claims of the ’530 patent. Bio-Rad Opening Br. at 60–63.
The Commission determined that Bio-Rad forfeited its
indefiniteness argument by failing to raise it to the ALJ
and also rejected the argument on its merits. J.A. 89–
100. Where, as in this case, Bio-Rad does not dispute any
findings of material underlying facts on appeal, a ruling
on indefiniteness is reviewed de novo. See Nevro Corp. v.
Bos. Sci. Corp., 955 F.3d 35, 37 (Fed. Cir. 2020). We
reject Bio-Rad’s challenge.
First, the Commission’s forfeiture determination in-
dependently sufficed to reject the indefiniteness chal-
lenge, apart from the merits of the challenge, and Bio-Rad
did not contest the Commission’s forfeiture ruling in its
Opening Brief. Cf. Bio-Rad Reply Br. at 29 (responding to
10X and the Commission’s argument that “indefiniteness
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24 BIO-RAD LABORATORIES, INC. v. ITC
is waived”). “Ordinarily, an appellant waives issues or
arguments not properly raised in its opening brief.” In re
Apple Inc., 979 F.3d 1332, 1337 (Fed. Cir. 2020). We see
no persuasive reason not to apply that principle here.
Second, and in any event, Bio-Rad’s indefiniteness
challenge rests on the contention that indefiniteness is
shown by the Commission’s (and ALJ’s) clarification of
the initially formulated construction. But even a modifi-
cation of a claim construction does not imply or presump-
tively suggest indefiniteness: Modifications are proper
and sometimes necessary steps as disputes sharpen
during litigation. See, e.g., Pfizer, Inc. v. Teva Pharms.
USA, Inc., 429 F.3d 1364, 1377 (Fed. Cir. 2005). Mere
amplification of an initial construction to resolve a mate-
rial dispute about claim meaning—which is sometimes
necessary, see, e.g., O2 Micro Int’l Ltd. v. Beyond Innova-
tion Tech. Co., 521 F.3d 1351, 1360–62 (Fed. Cir. 2008)—
provides an even weaker potential basis for a suggestion
of indefiniteness. Such amplification is all that occurred
here. And the result of the amplification in this case was
to state, with greater clarity than was earlier provided,
what we think is the correct interpretation of the claim
limitations at issue. In these circumstances, we see no
merit to Bio-Rad’s indefiniteness appeal.
B
On appeal, Bio-Rad renews its argument, made as a
defense to infringement, that it co-owns the three assert-
ed patents based on the assignment provisions in the
employment contracts signed by Drs. Hindson and Sax-
onov. It is undisputed that, if Bio-Rad is a co-owner, it
cannot be an infringer. See 35 U.S.C. § 262 (“[E]ach of the
joint owners of a patent may make, use, offer to sell, or
sell the patented invention . . . without the consent of and
without accounting to the other owners.”). But co-
ownership is disputed.
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BIO-RAD LABORATORIES, INC. v. ITC 25
We accept the finding that the asserted claims in this
matter had a conception date no earlier than January
2013, after Drs. Hindson and Saxonov left their employ-
ment at Bio-Rad (and its predecessor QuantaLife) See
J.A. 282–92; J.A. 1209–16, 6205. On appeal, Bio-Rad has
not squarely asserted, let alone shown, otherwise. Before
the Commission, Bio-Rad did not present an alternative
conception date (earlier than January 2013), see J.A.
10179 (Bio-Rad’s expert declining to dispute conception
date), and it lost the opportunity to argue conception of
certain claim elements while Drs. Hindson and Saxonov
were at QuantaLife, as the Commission decided (for
procedural reasons) in a ruling that Bio-Rad has not
appealed, see J.A. 104 n.15, 701–02, 7243.
Bio-Rad nevertheless argues for co-ownership, build-
ing that contention on the undisputed legal premise that
co-inventorship (equivalently, joint inventorship) entails
co-ownership. See Israel Bio-Eng’g Project v. Amgen, Inc.,
475 F.3d 1256, 1263 (Fed. Cir. 2007). Bio-Rad’s conten-
tion has two components. First, Bio-Rad asserts, if Drs.
Hindson and Saxonov, when working at Bio-Rad (or its
predecessor QuantaLife), had ideas that contributed to
the post-employment inventions at issue, and if those
contributions would make them co-inventors (regardless
of post-employment contributions to the inventions), then
the assignment provisions required assignment of their
co-ownership interest to Bio-Rad. Second, Bio-Rad as-
serts, Drs. Hindson and Saxonov did in fact have such co-
inventorship-qualifying ideas while employed at Bio-Rad
(specifically, while working for QuantaLife). 6
6 Although some language used by Bio-Rad sug-
gests a view that the assignment provisions reach beyond
even what would count as co-inventorship, Bio-Rad ulti-
mately develops no alternative interpretation. The only
argument Bio-Rad develops is that “joint inventorship is
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26 BIO-RAD LABORATORIES, INC. v. ITC
The Commission rejected both assertions advanced by
Bio-Rad to claim co-ownership. J.A. 101–08 (Commis-
sion); see also J.A. 277–93 (ALJ). Bio-Rad seeks reversal;
it does not ask for a remand for further proceedings on the
issue. We affirm the Commission’s ruling.
The assignment provisions by their terms are gov-
erned by California law. J.A. 3194, 3196, 3202, 3212; see
also Intell. Ventures I LLC v. Erie Indem. Co., 850 F.3d
1315, 1320 (Fed. Cir. 2017) (applying state law to inter-
pret contracts for assignments of patents). “Under Cali-
fornia law, ‘the interpretation of a contract is a question of
law subject to de novo review’ on appeal.” Semitool, Inc.
v. Dynamic Micro Systems Semiconductor Equip. GmbH,
444 F.3d 1337, 1341 (Fed. Cir. 2006) (quoting Int’l Rectifi-
er Corp. v. SGS-Thompson Microelectronics, No. CV 90-
4802, 1994 WL 896313, at *19 (C.D. Cal. Aug. 22, 1994)).
“Inventorship is a mixed question of law and fact: The
overall inventorship determination is a question of law,
but it is premised on underlying questions of fact.” Eli
Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1362 (Fed.
Cir. 2004). We accept the Commission’s underlying
findings of fact unless they lack support in substantial
evidence. See id. (same for inventorship in jury case); see
also Dana-Farber Cancer Inst., Inc. v. Ono Pharm. Co.,
964 F.3d 1365, 1370 (Fed. Cir. 2020), petition for cert.
filed, No. 20-1258 (U.S. Mar. 11, 2021).
the appropriate framework to view this case.” Bio-Rad
Reply Br. at 6; see also Bio-Rad Opening Br. at 25, 36.
Bio-Rad’s argument is one for co-ownership, not full
ownership, and co-inventorship is the sole cited legal
basis for co-ownership. We therefore restrict our atten-
tion to the two-step argument for assignment based on co-
inventorship.
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BIO-RAD LABORATORIES, INC. v. ITC 27
1
Bio-Rad has furnished no persuasive basis for disturb-
ing the Commission’s conclusion that the assignment
provisions do not apply to a signatory’s ideas developed
during the employment (with Bio-Rad or QuantaLife)
solely because the ideas ended up contributing to a post-
employment patentable invention in a way that supports
co-inventorship of that eventual invention.
Bio-Rad itself declares that what the assignment pro-
visions apply to is “intellectual property.” Bio-Rad Reply
Br. at 1, 3. The agreements lend support to that charac-
terization as a limitation on coverage. The QuantaLife
agreement, on which Bio-Rad has focused, first imposes a
requirement to disclose to the Company (QuantaLife)
trademarks, inventions, and other ideas (all of which it
parenthetically calls “IP”) that bear specified relations to
the Employee’s employment or the Company’s business.
J.A. 3199 (§ 2(a)). The assignment provision follows, and
it states that “Employee shall assign to the Company . . .
Employee’s entire right to any IP described in the preced-
ing subsection, . . . whether or not patentable.” J.A. 3199
(§ 2(b)) (emphasis added). The language of “right to”
suggests that the subject of the required assignment must
be “intellectual property,” whether or not the right is a
patent, trademark, trade secret, copyright, or other form
of intellectual property. See J.A. 3199 (§ 2(b)); see also
J.A. 3195 (Bio-Rad agreement, after acquisition of
QuantaLife, using “inventions” as the umbrella term);
Oral Arg. at 1:50–2:45 (Bio-Rad agreeing that the scope of
the assignment duties is the same).
Crucially, the assignment provisions are limited tem-
porally. The assignment provision of the QuantaLife
agreement reaches only a “right to any IP described in the
preceding section,” J.A. 3199 (§ 2(b)), and the preceding
(disclosure-duty) section is limited to IP “that Employee
conceives, develops or creates alone or with the aid of
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28 BIO-RAD LABORATORIES, INC. v. ITC
others during the term of Employee’s employment with the
Company,” J.A. 3199 (§ 2(a)) (emphasis added). See J.A.
3195 (§ 3) (before adding a limitation, stating: “All inven-
tions . . . which I may solely or jointly conceive, develop, or
reduce to practice during the period of my employment by
Bio-Rad shall be assigned to Bio-Rad.”). The most
straightforward interpretation is that the assignment
duty is limited to subject matter that itself could be
protected as intellectual property before the termination
of employment (even if any formal government grants
needed for protection may not have been acquired).
Bio-Rad does not argue, much less demonstrate, that
a person’s work, just because it might one day turn out to
contribute significantly to a later patentable invention
and make the person a co-inventor, is itself protectible
intellectual property before the patentable invention is
made. Such work is merely one component of “possible
intellectual property.” Bio-Rad Reply Br. at 3. In the
case of a patent, it may be a step toward the potential
ultimate existence of the only pertinent intellectual
property, namely, a completed “invention,” but the perti-
nent intellectual property does not exist until at least
conception of that invention. See, e.g., REG Synthetic
Fuels, LLC v. Neste Oil Oyj, 841 F.3d 954, 958 (Fed. Cir.
2016); Dawson v. Dawson, 710 F.3d 1347, 1353 (Fed. Cir.
2013); Burroughs Wellcome Co. v. Barr Labs., Inc., 40
F.3d 1223, 1227–28 (Fed. Cir. 1994).
Significantly, Bio-Rad has not cited any decision that
held a significant contribution to post-employment inven-
tions to come within an assignment provision that was
limited to intellectual property developed during the term
of employment. In Israel Bio-Engineering Project, which
Bio-Rad cites, we read a contractual agreement as not
reaching inventions conceived after the term of the
agreement (two of the patent claims at issue), even
though those inventions were based on work done during
the term of the agreement. 475 F.3d at 1267–68. The
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BIO-RAD LABORATORIES, INC. v. ITC 29
contractual limitation to information “developed in the
[specified] R&D programs,” we held, limited the assign-
ment to information developed “during the term of the
Sub-R&D Agreement,” and that temporal limit excluded
assignments of “any other newly developed inventions,
even when these inventions built on proprietary infor-
mation developed during the R&D process.” Id. at 1267(emphasis and internal quotation marks omitted). We did
not look beyond the conception of the claimed inventions
to consider whether a merely significant contribution to
those inventions might be subject to the assignment duty.
The FilmTec case cited by Bio-Rad involved language
of an agreement, and language of the statutory command
embodied in the agreement, that expressly assigned
ownership to the United States of certain inventions as
long as they were “conceived” during performance of
government-supported work under a contract. FilmTec
Corp. v Hydranautics, 982 F.2d 1546, 1548 (Fed. Cir.
1992). We examined the claimed invention, namely, a
composition conceived during the term of the agreement,
where conception meant the “‘formation in the mind of the
inventor, of a definite and permanent idea of the complete
and operative invention, as it is hereafter to be applied in
practice.’” Id. at 1551–52 (quoting Hybritech Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed.
Cir. 1986)). We noted that the inventor, continuing to
work on the invention after the agreement ended, added
certain “narrow performance limitations in the claims.”
See id. at 1553. But we treated the performance limita-
tions as not adding anything of inventive significance
because they were mere “refine[ments]” to the invention
already conceived during the term of the agreement. See
id. at 1552–53. We held the claimed inventions to have
been conceived during the agreement—something that
Bio-Rad accepts is not true here. We did not deem a mere
joint inventor’s contribution to a post-agreement concep-
tion sufficient.
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30 BIO-RAD LABORATORIES, INC. v. ITC
Finally, the Stanford case, on which Bio-Rad relies,
involved quite different contract language from the lan-
guage at issue here. See Bd. of Trustees of the Leland
Stanford Junior Univ. v. Roche Molecular Sys., Inc., 583
F.3d 832, 837 (Fed. Cir. 2009), aff’d on different grounds,
563 U.S. 776 (2011). The case involved a Stanford em-
ployee who was spending time at Cetus in order to learn
important new research techniques; as part of the ar-
rangement, the Stanford employee signed an agreement
with Cetus committing to assign to Cetus his “right, title,
and interest” in the ideas, inventions, and improvements
he conceived or made “as a consequence of” his work at
Cetus. Id. at 837 (internal quotation marks omitted).
Stanford was not a former-employee case, as we recently
explained. Whitewater West Indus., Ltd. v. Alleshouse,
981 F.3d 1045, 1056 (Fed. Cir. 2020). The language at
issue in Stanford did not contain the temporal limitation
at issue here. And the agreement here does not contain
the broad “as a consequence of” language at issue in
Stanford. 7
7 Other decisions cited by Bio-Rad likewise do not
hold that assignment language like the language here
covers work during employment as long as it supports co-
inventorship of post-employment patentable inventions.
See AT&T Co. v. Integrated Network Corp., 972 F.2d 1321,
1324–25 (Fed. Cir. 1992) (dismissing for want of jurisdic-
tion where state-law claims did not necessarily raise
federal patent-law issue); Venclose Inc. v. Covidien Hold-
ing, Inc., No. 16-cv-07372, 2017 WL 3335984, at *1–2, *7
(N.D. Cal. Aug. 4, 2017) (dismissing state-law claims,
including contract claims, because they did not necessari-
ly raise federal patent-law issues); Motorola, Inc. v. Lem-
ko Corp., No. 08 C 5427, 2012 WL 74319, at *3, *11–12
(N.D. Ill. Jan. 10, 2012) (addressing assignment of com-
pleted inventions, where issue was conception date).
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BIO-RAD LABORATORIES, INC. v. ITC 31
The governing law of California provides a confirma-
tory reason not to read the assignment provision at issue
here more broadly than we do. In particular, California
law recognizes significant policy constraints on employer
agreements that restrain former employees in the practice
of their profession, including agreements that require
assignment of rights in post-employment inventions. See
Whitewater, 981 F.3d at 1051–57. Substantial questions
about compliance with that policy would be raised by an
employer-employee agreement under which particular
subject matter’s coverage by an assignment provision
could not be determined at the time of employment, but
depended on an unknown range of contingent future
work, after the employment ended, to which the subject
matter might sufficiently contribute. Such an agreement
might deter a former employee from pursuing future work
related to the subject matter and might deter a future
employer from hiring that individual to work in the area.
The contract language before us does not demand a read-
ing that would test the California-law constraints. We do
not think it reasonable to test those constraints here by
adopting a broader reading of the contract language than
the straightforward reading we have identified.
2
In any event, Bio-Rad has not shown reversible error
in the Commission’s rejection of the contention that the
work of Drs. Hindson and Saxonov at Bio-Rad (or its
predecessor) qualified them for joint inventorship of the
patents at issue. Bio-Rad argues that Drs. Hindson and
Saxonov “conceived of key aspects of the claimed inven-
tions, if not the entirety of the claims, at QuantaLife/Bio-
Rad.” Bio-Rad Opening Br. at 26–36. The Commission
determined that many of these “ideas” are at a level of
generality that cannot support joint inventorship, see J.A.
104–06, or (sometimes and) involve nothing more than
elements in the already-published prior art, see J.A. 106
(“Bio-Rad has not shown that the ‘ideas’ it relies on to
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32 BIO-RAD LABORATORIES, INC. v. ITC
build its joint inventorship argument are distinct from the
prior art.”); Dana-Farber, 964 F.3d at 1371 (noting that
joint inventors must “‘do more than merely explain to the
real inventors well-known concepts and/or the current
state of the art’” (quoting Pannu v. Iolab Corp., 155 F.3d
1344, 1351 (Fed. Cir. 1998))). To accept Bio-Rad’s conten-
tion after we give the required deference to the Commis-
sion’s factual (and, in one instance, procedural) rulings
would require that we find joint inventorship simply
because Drs. Hindson and Saxonov, while at Bio-Rad (or
QuantaLife), were working on the overall, known prob-
lem—how to tag small DNA segments in microfluidics
using droplets—that was the subject of widespread work
in the art. We see no sound support for such a conclusion.
The Commission found that many of Bio-Rad’s “ideas”
are disclosed in Bio-Rad’s ’059 patent. J.A. 106. The
application for that patent was published on Decem-
ber 13, 2012, J.A. 2111, making the ideas disclosed in it
part of the published prior art before the undisputed
earliest January 2013 conception date of the 10X patents
at issue. Bio-Rad also argued in this matter that the ’059
patent anticipated the 10X patents (an argument rejected,
though not for reasons of lack of priority, in a ruling that
Bio-Rad does not appeal). See J.A. 735, 758–63, 790–91;
see also Oral Arg. at 16:00–17:45.
Bio-Rad contends that at least three ideas developed
at QuantaLife were not publicly known in the prior art at
the time Drs. Hindson and Saxonov were working on
them: tagging droplets to track a sample-reagent reaction
complex, using double-junction microfluidics to combine
sample and reagent, and using oligonucleotides as bar-
codes to tag single cells within droplets. But these con-
tentions, by their terms, look to a time long before the
January 2013 conception date for the inventions at issue
here. Bio-Rad does not deny that these ideas were in the
published prior art by the time of the conception of the
inventions at issue or that they were, by then, readily
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BIO-RAD LABORATORIES, INC. v. ITC 33
available to the co-inventors on the patents involved. For
that reason and others, the contentions are insufficient to
establish co-inventorship.
First, Bio-Rad argues that a slide from a May 2011
presentation shows that Dr. Hindson suggested, while
still at QuantaLife, that droplets could be “tagged” with
barcodes in a single-cell system. See J.A. 3442, 10040–41;
Bio-Rad Opening Br. at 27–29. The slide describes deliv-
ering oligonucleotide barcodes contained within an inner
droplet to the sample cell within the droplet, referred to
as a “droplet-in-droplet” architecture. See J.A. 3442. This
droplet-in-droplet architecture is materially different from
the architecture used in the 10X patents at issue here,
which deliver the oligonucleotide barcodes via gel beads.
See J.A. 105–06; see also J.A. 6204 (Hindson explaining
the significant difference). Moreover, Bio-Rad’s expert,
Dr. Metzker, acknowledged that droplet tagging has been
used as a method for sample preparation “[f]or a number
of years before the . . . priority date of the patents-in-suit.”
J.A. 7102. Dr. Metzker also pointed to the ’059 patent in
particular—published before the conception date at issue
here—as one example of prior art that discloses droplet
tagging. J.A. 7102.
Second, Bio-Rad argues that a slide from a May 2009
QuantaLife presentation shows that Dr. Hindson sug-
gested using a microfluidic device containing a double
junction to combine nucleic acid samples with reagents,
which is claimed in the ’468 patent. See J.A. 2885, 2904;
Bio-Rad Opening Br. at 34–35. This slide is part of a
group of slides describing an experiment that involved
multiple emulsions, conducted by Dr. Hindson in Febru-
ary 2009. See J.A. 10038. The evidence indicated, how-
ever, that the experiment was not an idea that Dr.
Hindson came up with, but rather was an attempt to
recreate an experiment already described in the prior art.
See J.A. 6203–04, 10046. Moreover, the double-junction
arrangement appeared in published prior art long before
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34 BIO-RAD LABORATORIES, INC. v. ITC
the conception date of the patents at issue here. See, e.g.,
J.A. 2683–84 (July 2009 article).
Third, Bio-Rad argues that an April 14, 2011 email
sent by Dr. Saxonov when at QuantaLife (with a copy to
Dr. Hindson, also at QuantaLife) lays out the idea of
using oligonucleotides as barcodes to tag single cells
within droplets, which is claimed in the ’024 and ’468
patents. See J.A. 2907–13; Bio-Rad Opening Br. at 32.
But the ’024 patent itself suggests that using oligonucleo-
tide molecules as barcodes was publicly known. See ’024
patent, col. 12, lines 9–17 (“In some cases, one or more
unique molecular identifiers, sometimes known in the art
as a ‘molecular barcode[],’ are used as sample preparation
reagents. These molecules may comprise a variety of
different forms such as oligonucleotide bar codes . . . .”).
The common core of the inventions in the asserted
10X patents is the use of gel beads with releasably at-
tached oligonucleotide barcode molecules as a system for
delivery of barcodes to nucleic acid segments. The Com-
mission could reasonably find that this invention was not
conceived at QuantaLife or Bio-Rad. See J.A. 1215–16
(discussing conception of the invention, particularly the
“gel bead in emulsion” concept, in January 2013), 10179
(Bio-Rad expert declining to dispute the conception date).
Although Bio-Rad suggests that certain emails in the
record on appeal would support a finding that Dr. Hind-
son thought of using gel beads as a delivery system when
at QuantaLife, see Bio-Rad Opening Br. at 32–34; J.A.
2907–13, 2303, a late-disclosure-based order of the ALJ—
not challenged by Bio-Rad on appeal—precluded Bio-Rad
from affirmatively contending that using gel beads was
conceived at QuantaLife, J.A. 104 n.15, 701–02, 7243.
Moreover, Bio-Rad was permitted to use Dr. Hindson’s
emails to cross-examine him and challenge his credibility,
but the ALJ found Dr. Hindson credible in his testimony,
including as to gel beads, and the Commission did not
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BIO-RAD LABORATORIES, INC. v. ITC 35
disagree. See J.A. 106, 289–90; see also J.A. 6200–05
(Hindson Statement), 6213–19 (Saxonov Statement).
In short, we see no lack of substantial evidence in
support of the findings that underlie, and no error in, the
rejection of Bio-Rad’s co-inventorship contention—or,
therefore, in the Commission’s rejection of Bio-Rad’s
ownership defense.
III
For the foregoing reasons, the decision of the Interna-
tional Trade Commission is affirmed.
AFFIRMED