Bio-Rad Wins Bid to Block Sales of 10X Genomics Devices

July 24, 2019, 9:24 PM

Bio-Rad Laboratories Inc. and the University of Chicago triumphed in stopping rival 10X Genomics Inc. from selling certain gene analysis devices in the U.S.

The U.S. District Court for the District of Delaware July 24 granted Bio-Rad’s request for a permanent injunction, effective in two weeks, to block 10X’s machines. A jury in November found that 10X had infringed three patents that the university licenses to Bio-Rad and awarded Bio-Rad $24 million in damages.

The ruling illustrates how district courts weigh four factors, laid down in eBay Inc. v. MercExchange LLC eBay, before granting injunctions. The Supreme Court’s 2006 ruling made it more difficult to win injunctions in patent infringement cases.

Patent owners can get an injunction under the eBay test if they can show they face irreparable injury without one, and that monetary damages wouldn’t be enough to mitigate the injury. They also must prove that a permanent injunction wouldn’t harm public interest, and that they weighed potential harms with and without injunctive relief.

The dispute began after the university and Bio-Rad sued 10X in 2015 for infringing patents covering microfluidic systems, known as labs-on-a-chip, used to identify biomolecules.

Bio-Rad argued it competes “head-to-head” with 10X and could face irreparable harm such as increased marketing costs without an injunction against its competitor, the court said. Damages wouldn’t cover the loss of market share gained by 10X from sales of infringing products, the court said.

10X said it would be “devastated” and out of business if it couldn’t sell its products. But a 10X executive testified in January 2018 that the company planned to sell a redesigned device that should be “nearly ready, if not ready” to hit the market by July 2019, according to the opinion.

“The fact that 10X has gained commercial success from its infringing products and thus risks losing that success does not shield 10X from injunctive relief,” the court said.

10X said at trial that consumers faced potential harm because no alternatives exist to 10X’ s products. “Both 10X and Bio-Rad have indicated that they will be releasing new products soon,” the court said.

U.S. District Judge Richard G. Andrews granted Bio-Rad supplemental damages accounting for 10X sales from July 2018 to November 2018, plus a 15% royalty. He denied Bio-Rad’s request for attorneys’ fees and enhanced damages.

Andrews wrote the opinion. Farnan LLP and Weil, Gotshal & Manges LLP represented Bio-Rad. Richards, Layton & Finger PA, Orrick, Herrington & Sutcliffe LLP, Tensegrity Law Group LLP and Irell & Manella LLP represented 10X.

The case is Bio-Rad Laboratories, Inc. et al v. 10X Genomics Inc., D. Del., No. 1:15-cv-00152, 7/24/19.

To contact the reporter on this story: Malathi Nayak in Washington at mnayak@bloomberglaw.com

To contact the editors responsible for this story: Rebecca Baker at rbaker@bloomberglaw.com; Keith Perine at kperine@bloomberglaw.com

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