NEW YORK – 10x Genomics will find itself in court soon facing off against a familiar adversary: Bio-Rad Laboratories.
On June 14, 2021, the companies will add another chapter to their legal history when 10x's patent infringement suit against Bio-Rad subsidiary Celsee goes to trial. The case, filed in federal court in 2019, did not begin as a dispute between the foes, but Bio-Rad acquired Celsee in April 2020, making the case its business.
This week, Judge Colm Connolly of the US District Court for the District of Delaware all but guaranteed a courtroom showdown when he denied five total motions filed by both sides that sought to have aspects of the case decided without a trial.
According to court documents, the jury trial is scheduled to last seven days.
Pleasanton, California-based 10x has alleged Celsee's products infringe multiple patents covering single-cell technologies including US Patent Nos. 10,155,981; 10,240,197; 10,227,648; 10,273,541; 10,280,459; 10,392,662; and 10,400,280. 10x also accused Celsee of making false or misleading statements about the capabilities of Celsee's Genesis Platform.
Celsee has countersued, seeking judgments of non-infringement, unenforceability, and invalidity of the patents. Celsee has also claimed the '648, '541, and '280 patents are unenforceable because they actually belong to Bio-Rad. Celsee alleges that when 10x submitted the patents to the US Patent and Trademark Office, the firm improperly omitted at least two inventors from the patents, Nicholas Heredia and Paul Blainey, because they would have to assign patent rights to Bio-Rad. Celsee did not specify in court documents what contributions Heredia and Blainey made to merit inventorship.
Heredia, now an R&D manager at Bio-Rad, was an employee of QuantaLife, the digital PCR company Bio-Rad acquired in 2012 that shared several cofounders with 10x, including 10x CEO Serge Saxonov. Blainey, now on the Broad Institute faculty, was a technical consultant to QuantaLife, Celsee claims.
The IP battle between 10x and Bio-Rad has occurred on multiple fronts, with each side able to claim victories. In November 2018, Bio-Rad won a $24 million jury verdict for a patent infringement suit filed in 2015. In the aftermath of that case, the court issued a permanent injunction against 10x's older GEM microfluidic chips and tacked on approximately $10.5 million more in penalties.
Hercules, California-based Bio-Rad also sued 10x in 2019 alleging infringement of US Patent Nos. 8,871,444; 10,190,115; and 9,919,277, covering techniques for detecting enzymatic reactions in microfluidic droplets. 10x countersued last year, alleging invalidity of the '115 patent. In February 2020, the US International Trade Commission upheld a finding that certain microfluidic products imported by Bio-Rad indirectly infringed patents held by 10x.