November 14, 2018
On November 13, 2018, a Delaware federal jury issued a verdict awarding Weil clients Bio-Rad Laboratories and the University of Chicago approximately $24 million in damages in a patent infringement suit brought against competitor 10X Genomics regarding sophisticated genetic testing methods. After brief deliberations, the jury held that all of our clients’ asserted patents are valid and infringed, and that the infringement was willful, and awarded the full amount of requested damages. With all the claims, defenses and products involved, the jury answered 100 verdict questions, nearly all in our clients’ favor.
In February 2015, RainDance Technologies (which was acquired by Bio-Rad in 2017), along with the University of Chicago, commenced this seven-patent infringement action in U.S. District Court for the District of Delaware. These patents relate to devices and methods for genetic analysis using microfluidics, and protect the invention of using tiny droplets of water flowing through a stream of oil in a tiny chip to perform complex DNA reactions. This technology is used to diagnose cancer and for other advanced research, and is the backbone of a rapidly expanding industry.
In response to that infringement suit, 10X requested inter partes review of five of the University of Chicago patents. Weil convinced the PTAB not to institute review of four of the patents because 10X had not presented a sufficiently credible case. The fifth patent went to trial in June 2016, following which the PTAB upheld our clients’ patent, finding that 10X failed to prove its invalidity case, even though the Patent Office had originally found the invalidity case credible enough to conduct a full review.
Following the inter partes reviews, 10X then requested ex parte re-examination of three of the University of Chicago patents with a different division of the Patent Office. Again, Weil convinced the Patent Office of the validity of the patents, and the Patent Office issued reexamination certificates for all three of the patents.
Trial in the district court case commenced on November 1 and lasted until November 13, when the jury issued a complete verdict in favor of our client.
The Weil team was led by Ed Reines, Co-Head of Weil’s Patent Litigation and Life Sciences practices, and included counsel Derek Walter and Robert Vlasis, and associates Amanda Branch, Chris Lavin, Kathryn Culver (not yet admitted) and Robert Magee.