NEW YORK – 10x Genomics has countersued Bio-Rad Laboratories in a US District Court patent infringement suit.
Last week, 10x responded to Bio-Rad's allegations that 10x's Next GEM microfluidic chips infringe US Patent No. 10,190,115, "Methods and compositions for nucleic acid analysis" which covers the partitioning of a sample into droplets, in some cases.
In addition to denying the allegations, 10x also countersued, asking the US District Court for the District of Northern California to dismiss Bio-Rad's suit, issue a declaratory judgment that 10x did not infringe Bio-Rad's patent, and declare the patent is invalid for "failure to comply with the conditions for patentability. 10x also asked the court to make Bio-Rad pay attorneys' fees and costs.
This litigation is an offshoot of the latest installment in a series of lawsuits between the rival Bay Area companies. Filed on the eve of 10x's IPO in September 2019, Bio-Rad's allegations of infringement of this patent have moved venue twice.
Patent infringement allegations for two other patents – US Patent Nos. 9,919,277 and 8,871,444, held by Bio-Rad and licensed from Harvard University —are being heard in the US District Court for the District of Massachusetts. On April 30, District of Massachusetts Judge William Young denied 10x's motion to dismiss the suit related to those two patents.
Elsewhere, both sides have been able to claim victory on different fronts. In November 2018 Bio-Rad won $24 million after a Delaware jury found that 10x's older GEM chips infringed Bio-Rad patents; 10x has appealed that case on multiple grounds. Both companies have also brought patent infringement cases before the US International Trade Commission, which can prohibit importation of products found to infringe US patents. In February the ITC determined that Bio-Rad imported microfluidics products to the US that indirectly infringed 10x patents and in December 2019 the ITC determined that 10x's Next GEM chips did not infringe patents held by Bio-Rad.