`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`
`BIO-RAD LABORATORIES, INC.
`
`
`
`Plaintiff,
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`C.A. No. _____________
`
`
`
`DEMAND FOR JURY TRIAL
`
`
`v.
`
`10X GENOMICS, INC.,
`
`Defendant,
`
`
`
`and
`
`PRESIDENT AND FELLOWS OF HARVARD
`COLLEGE
`
`Nominal Defendant.
`
`
`COMPLAINT
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`Bio-Rad Laboratories, Inc. (“Bio-Rad”) hereby alleges for its Complaint (“Complaint”)
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`against Defendant 10X Genomics, Inc. (“10X”) and nominal Defendant President and Fellows of
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`Harvard College (“Harvard University”), on personal knowledge as to their own actions and on
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`information and belief as to the actions of others, as follows:
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`NATURE OF THE ACTION
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`1.
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`This is an action for patent infringement arising under the United States Patent
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`Act 35 U.S.C. §§1 et seq., including 35 U.S.C. § 271.
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`2.
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`Bio-Rad brings this action to halt 10X’s infringement of its rights under the Patent
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`Laws of the United States 35 U.S.C. §1, et. seq., which arise under U.S. Patent No. 8,871,444
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`(“the ’444 patent”), which is attached hereto as Exhibit 1.
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`
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`Case 1:19-cv-01699-RGA Document 1 Filed 09/11/19 Page 2 of 12 PageID #: 2
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`THE PARTIES
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`3.
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`Plaintiff Bio-Rad is a Delaware corporation having a principal place of business at
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`1000 Alfred Nobel Drive, Hercules, CA 94547.
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`4.
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`10X is a company organized and existing under the laws of Delaware, with its
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`principal place of business at 7068 Koll Center Parkway, Suite 401, Pleasanton, CA, 94566.
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`5.
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`Harvard University is a research university incorporated as a Massachusetts not-
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`for-profit institution, with its principal place of business at 1563 Massachusetts Ave., Cambridge,
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`Massachusetts 02138. Harvard University is a patent owner and licensor for the ’444 patent.
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`Harvard University is named as a nominal defendant in this action for purposes of subject matter
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`jurisdiction only and pursuant to the United States Supreme Court’s holding in Independent
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`Wireless Tel. Co. v. Radio Corp. of Am., 269, U.S. 459, 468 (1926), that “[i]f the owner of a
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`patent, being within the jurisdiction, refuses or is unable to join an exclusive licensee as
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`coplaintiff, the licensee may make him a party defendant by process, and he will be lined up by
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`the court in the party character which he should assume.” Bio-Rad requested that Harvard
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`University join as a party in this action, but Harvard University has thus far not agreed to do so.
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`Although Harvard University is named as a nominal defendant, Bio-Rad seeks relief realigning
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`Harvard University as a plaintiff.
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`JURISDICTION AND VENUE
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`6.
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`This action for patent infringement arises under the patent laws of the United
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`States, Title 35 of the United States Code.
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`7.
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`This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and
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`1338(a).
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`2
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`
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`Case 1:19-cv-01699-RGA Document 1 Filed 09/11/19 Page 3 of 12 PageID #: 3
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`8.
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`This Court has personal jurisdiction over defendant 10X. 10X has substantial
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`contacts with the forum as a consequence of conducting business in Delaware, and has
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`purposefully availed itself of the benefits and protections of Delaware state law by incorporating
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`under Delaware law.
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`9.
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`This Court has personal jurisdiction over nominal defendant Harvard University.
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`Harvard University has substantial contacts with the forum as a consequence of conducting
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`business and activities in Delaware.
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`10.
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`Venue is proper in this District under 28 U.S.C. §§ 1391(b) and (c), and 1400(b)
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`because Bio-Rad and 10X are both Delaware corporations and Delaware is a convenient forum
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`for resolution of the parties’ disputes set forth herein.
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`BACKGROUND
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`11.
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`Bio-Rad is a leader in the field of life science research and clinical diagnostics,
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`and today many of Bio-Rad’s products and tools used in the biotechnology industry are
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`recognized as the gold standard.
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`12.
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`A centerpiece of many of Bio-Rad’s products is its Droplet Digital™ technology.
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`This technology involves partitioning biological samples by placing them in individual
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`microdroplets that are formed based on emulsion chemistry. Using this technology, researchers
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`can create a large numbers of partitions, each one for carrying out a reaction, with a minimum
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`amount of sample handling and a minimum amount of sample volume. A variety of different
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`reactions may be carried out inside the droplets, including polymerase chain reaction (“PCR”),
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`and various reactions to prepare samples for next generation sequencing (“NGS”).
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`13.
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`Bio-Rad began offering its Droplet Digital™ PCR (“ddPCR™”) Systems brands
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`in 2011 following its $162 million acquisition of QuantaLife, Inc. (“QuantaLife”) and its digital
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`3
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`Case 1:19-cv-01699-RGA Document 1 Filed 09/11/19 Page 4 of 12 PageID #: 4
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`droplet PCR technology. The work at QuantaLife, and subsequently at Bio-Rad, led to a large
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`number of patents being granted throughout the world concerning droplet-based emulsion
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`systems and methods.
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`14.
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`Bio-Rad’s droplet digital technology was a breakthrough that greatly advanced
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`the capabilities of PCR and NGS. Just one year after the launch of Bio-Rad’s first generation
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`product, the number of papers citing Bio-Rad’s droplet digital method using PCR nearly
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`quintupled. Indeed, more than 250 peer-reviewed papers have been published in the fields of
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`cancer, liquid biopsy, virology, and other diseases that cited to BioRad’s technology.
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`15.
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`Bio-Rad’s ddSEQ™ Single-Cell Isolator uses Droplet Digital™ technology to
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`encapsulate single cells and barcodes into subnanoliter droplets, where cell lysis and barcoding
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`of cellular messenger RNA occur. Libraries are generated representing the messenger RNAs
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`from single cells that can be sequenced for Single Cell Analysis.
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`16.
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`Bio-Rad has spent years and hundreds of millions of dollars researching,
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`acquiring and developing its Droplet technology and portfolio that is the foundation for many
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`droplet-based applications such as ddPCR™ and NGS and Single Cell Analysis.
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`17.
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`For instance, in addition to its $162 million acquisition of QuantaLife, Bio-Rad
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`completed an $87 million acquisition of RainDance Technologies, Inc. (“RainDance”), and all of
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`its intellectual property.
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`18.
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`As another example, Bio-Rad is the exclusive licensee of droplet intellectual
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`property from world-renowned institutions, such as Harvard University and Lawrence Livermore
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`National Laboratory. Likewise, by virtue of its acquisition of RainDance, Bio-Rad acquired an
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`exclusive licensee to foundational droplet technology developed at the University of Chicago.
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`4
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`Case 1:19-cv-01699-RGA Document 1 Filed 09/11/19 Page 5 of 12 PageID #: 5
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`19.
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`Starting in 2012, several Bio-Rad employees left to found 10X Technologies,
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`Inc., which later became Defendant 10X. This company, like Bio-Rad, focused on developing
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`systems and methods for generating droplet-based emulsions.
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`20.
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`In 2015, 10X launched a droplet-based emulsion system called GemCode that
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`used the claimed microchips and chemistry for forming droplets that can be used in, among other
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`things, Next Generation Sequencing and Single Cell Analysis. Approximately one year later,
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`10X launched an updated version of its droplet-based emulsion system called Chromium. These
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`platforms compete against Bio-Rad’s Droplet Digital™ technology.
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`21.
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`In February 2015, RainDance filed a lawsuit in this district accusing 10X’s
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`GemCode and Chromium platforms of infringing several patents developed at the University of
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`Chicago. Following its acquisition of RainDance, Bio-Rad substituted itself as the lead Plaintiff
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`in this litigation. In November 2018, Bio-Rad obtained a jury verdict of willful infringement
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`against 10X Genomics, and in August 2019 Bio-Rad obtained a permanent injunction.
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`22.
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`Following the jury verdict, 10X announced a new line of products, which it
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`recently began selling under the tradename “Next GEM.” The Next GEM platform consists of
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`an instrument known as the Chromium Controller along with reagent kits for carrying out
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`various genetic analyses, including at least 10X’s Chromium Single Cell Gene Expression
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`Solution, Chromium Single Cell Immune Profiling Solution, and Chromium Single Cell ATAC
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`Solution. See generally Exs. 2-3.
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`23.
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`The Next GEM platform is at the heart of a $362 million IPO that 10X will launch
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`imminently. As 10X stated in its prospectus, “[w]e currently expect that, by the end of the third
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`quarter of 2019, all Chromium instruments that we sell will operate exclusively with our Next
`
`5
`
`
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`Case 1:19-cv-01699-RGA Document 1 Filed 09/11/19 Page 6 of 12 PageID #: 6
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`GEM solutions and that our Chromium products utilizing our Next GEM microfluidic chips will
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`constitute substantially all of our Chromium sales by the end of 2020.” Ex. 4 at 7.
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`24.
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`10X, however, infringes, literally or under the doctrine of equivalents, at least the
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`’444 patent through its activities connected to the Next GEM platform.
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`COUNT I
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`(Infringement of U.S. Patent No. 8,871,444)
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`25.
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`Plaintiff re-alleges and incorporates by reference the allegations contained in
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`paragraphs 1 through 24 above as relevant to this count.
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`26.
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`On October 28, 2014, the United States Patent and Trademark Office duly and
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`legally issued the ’444 patent, entitled “In vitro evolution in microfluidic systems.” A copy of
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`the ’444 patent is attached as Exhibit 1.
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`27.
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`Andrew David Griffiths, David A. Weitz, Darren R. Link, Keunho Link, and
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`Jerome Bibette are the sole and true inventors of the ’444 patent. By operation of law and as a
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`result of written assignment agreements, United Kingdom Research and Innovation (“UKRI”)
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`and President and Fellows of Harvard College (“Harvard University”) obtained the entire right,
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`title and interest to and in the ’444 patent.
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`28.
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`Pursuant to license agreements Bio-Rad entered into with UKRI and Harvard
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`University, Bio-Rad obtained an exclusive license to the ’444 patent in the field of microfluidic
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`systems, kits and chips.
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`29.
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`On information and belief, 10X has infringed and continues to infringe at least
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`claims 1-2, 4, and 8 of the ’444 patent pursuant to 35 U.S.C. § 271(a), literally or under the
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`doctrine of equivalents, by using within the United States without authority the Next GEM
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`products. As an example, attached as Exhibit 5 is a preliminary and exemplary claim chart
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`6
`
`
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`Case 1:19-cv-01699-RGA Document 1 Filed 09/11/19 Page 7 of 12 PageID #: 7
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`detailing 10X’s infringement of multiple claims of the ’444 patent. This chart is not intended to
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`limit Plaintiff’s right to modify this chart or any other claim chart or allege that other activities of
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`10X infringe the identified claims or any other claims of the ’444 patent or any other patents.
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`Exhibit 5 is hereby incorporated by reference in its entirety. Each claim element in Exhibit 5 that
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`is mapped to 10X’s Next GEM platform shall be considered an allegation within the meaning of
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`the Federal Rules of Civil Procedure and therefore a response to each allegation is required.
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`30.
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`10X’s infringement of the ’444 patent has been knowing and willful. 10X’s
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`founders, senior-most executives, and senior scientists became aware of Bio-Rad’s license with
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`Harvard University at least in connection with 10X’s November 2018 trial against Bio-Rad in
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`this district, where 10X was found to willfully infringe intellectual property from the University
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`of Chicago. Moreover, 10X has become deeply familiar with the full scope of the Harvard
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`University droplet patent portfolio (including the ’444 patent), at least because it has licensed
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`certain patents from Harvard University, as confirmed by Dr. Ben Hindson, 10X’s co-founder
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`and Chief Scientific Officer, during 10X’s November 2018 trial. In fact, Dr. Hindson confirmed
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`that 10X was well aware of the work of at least one named inventor of the ’444 patent, including
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`Dr. Weitz.
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`31.
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`Consistent with the foregoing, going back to at least April 4, 2014, 10X has filed
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`Information Disclosure Statements with the United States Patent Office in which it has cited U.S.
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`Patent Application No. 2006/0078888, which is a published version of the priority application
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`that the ’444 patent is a continuation of. See Exs. 10-13.
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`32.
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`On information and belief, in view of 10X’s (1) knowledge of Bio-Rad’s license
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`with Harvard University, (2) knowledge of the Harvard University droplet patents, and (3) prior
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`willful infringement of intellectual property controlled by Bio-Rad, 10X has carefully monitored
`
`7
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`
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`Case 1:19-cv-01699-RGA Document 1 Filed 09/11/19 Page 8 of 12 PageID #: 8
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`and analyzed the Harvard University droplet patent portfolio and, through that work, become
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`aware of the ’444 patent and the fact that the Next GEM platform infringes the ’444 patent.
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`Despite being aware of these facts, 10Xs has nonetheless launched its Next GEM platform, even
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`making it the centerpiece of a $362 million IPO. As 10X stated in in its prospectus in support of
`
`its IPO, “[w]e currently expect that, by the end of the third quarter of 2019, all Chromium
`
`instruments that we sell will operate exclusively with our Next GEM solutions and that our
`
`Chromium products utilizing our Next GEM microfluidic chips will constitute substantially all of
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`our Chromium sales by the end of 2020.” Ex. 4 at 7.
`
`33.
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`In addition, 10X has had knowledge of and notice of the ’444 patent and its
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`infringement since at least, and through, the filing and service of this Complaint and despite this
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`knowledge continues to commit the aforementioned infringing acts. For at least the reasons
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`stated in this paragraph and in paragraphs 30-32 above, this infringement has been willful.
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`34.
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`10X actively, knowingly, and intentionally has induced, or has threatened to
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`induce, infringement of at least claims 1-2, 4, and 8 of the ’444 patent through a range of
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`activities. First, on information and belief, 10X has induced infringement by controlling the
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`design and manufacture of, offering for sale, and selling the Next GEM platform and/or its
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`individual components with the knowledge and specific intent that its customers will use the
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`Next GEM platform to infringe the ’444 patent, literally or under the doctrine of equivalents, by
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`performing the claimed method for detecting a product of an enzymatic reaction.
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`35.
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`Second, on information and belief, 10X has induced infringement by its
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`customers through the dissemination of promotional and marketing materials relating to the Next
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`GEM platform with the knowledge and specific intent that its customers will use the Next GEM
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`platform to infringe the ’444 patent, literally or under the doctrine of equivalents, by performing
`
`8
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`
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`Case 1:19-cv-01699-RGA Document 1 Filed 09/11/19 Page 9 of 12 PageID #: 9
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`the claimed method for detecting a product of an enzymatic reaction. For instance, 10X
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`promotes the Next GEM platform on its website. As 10X states on the Technology portion of its
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`website, its “proprietary Next GEM technology fuels our Chromium System with an innovative
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`reagent delivery system, set of algorithms and turnkey software analysis tools that enable the
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`discovery of previously inaccessible genetic information at massive rate and scale.” Ex. 3 at 1.
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`36.
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`Third, on information and belief, 10X has induced infringement by its customers
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`through the creation of distribution channels for the Next GEM platform and/or its individual
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`components in the United States with the knowledge and specific intent that its customers will
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`use the Next GEM platform to infringe the ’444 patent, literally or under the doctrine of
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`equivalents, by performing the claimed method for detecting a product of an enzymatic reaction.
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`37.
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`Fourth, on information and belief, 10X has induced infringement through the
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`distribution of other instructional materials, product manuals, and technical materials with the
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`knowledge and the specific intent to encourage and facilitate its customer’s infringing (either
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`literally or under the doctrine of equivalents) use of the Next GEM platform. See, e.g., Exs. 2, 7-
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`9. 10X is liable for its induced infringement of the ’444 patent pursuant to 35 U.S.C. § 271 (b).
`
`38.
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`10X has engaged in the above activities with knowledge of the ’444 patent and
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`with the specific intent to encourage and cause infringement by its customers, as shown by the
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`allegations set forth in ¶¶ 30-37 above.
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`39.
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`10X has contributed to, or has threatened to contribute to, the infringement by its
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`customers of the ’444 patent by, without authority, selling and offering to sell within the United
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`States materials and apparatuses for practicing the claimed invention of the ’444 patent,
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`including at least the Next GEM platform as a whole and/or the individual components of the
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`Next GEM platform (including without limitation reagent kits). When, for example, the Next
`
`9
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`
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`Case 1:19-cv-01699-RGA Document 1 Filed 09/11/19 Page 10 of 12 PageID #: 10
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`GEM platform is used by 10X’s customers for the various applications 10X offers, the claimed
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`method for detecting the product of an enzymatic reaction is performed, thereby infringing,
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`literally or under the doctrine of equivalents, at least claims 1-2, 4, and 8 of the ’444 patent. The
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`Next GEM platform and/or its individual components, supplied by 10X, constitute a material
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`part of the claimed invention of the ’444 patent.
`
`40.
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`On information and belief, 10X knows that the Next GEM platform and/or its
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`individual components constitute a material part of the inventions of the ’444 patent and that
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`they are not a staple article or commodity of commerce suitable for substantial noninfringing
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`use. As documented above and in Exhibit 5, the Next GEM platform consists of a specialized
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`microfluidic device along with specialized reagents for conducting reactions in microfluidic
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`droplets. See supra ¶ 22; Exs. 2, 7-9. As such, no part of the Next GEM platform is a staple
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`article of commerce suitable for substantial non-infringing use. 10X knows that the Next GEM
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`platform and its individual components are not staple articles or commodities of commerce
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`suitable for substantial non-infringing use because the Next GEM platform and its individual
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`components have no use apart from infringing the ’444 patent. 10X is liable for its contributory
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`infringement of the ’444 patent pursuant to 35 U.S.C. § 271(c).
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`41.
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`10X’s infringement of the ’444 patent has injured Plaintiff in its business and
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`property rights. 10X’s infringement of the ’444 patent has been and is deliberate and willful and
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`constitutes egregious misconduct. Despite actual knowledge of the ’444 patent and numerous
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`related patents and applications since at least its trial against Bio-Rad in this district in November
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`2018, 10X continued to develop and launch its infringing products. As set forth in Exhibit 5,
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`when customers use 10X’s Next GEM platform, they practice every element of multiple claims
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`of the ’444 patent. In developing and launching its product, 10X has been willfully blind to this
`
`10
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`
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`Case 1:19-cv-01699-RGA Document 1 Filed 09/11/19 Page 11 of 12 PageID #: 11
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`ongoing infringement. Plaintiff is entitled to recover monetary damages for the injuries arising
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`from 10X’s willful infringement pursuant to 35 U.S.C. § 284 in an amount to be determined at
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`trial. 10X’s infringement of the ’444 patent has caused irreparable harm to Plaintiff and will
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`continue to cause such harm unless and until 10X’s infringing activities are enjoined by this
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`Court.
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`
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`WHEREFORE, Bio-Rad prays for relief as follows:
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`PRAYER FOR RELIEF
`
`A.
`
`B.
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`Judgment that 10X has infringed one or more claims of the ’444 patent;
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`An order permanently enjoining 10X from further infringement of the
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`’444 patent or in the alternative an on-going royalty;
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`C.
`
`D.
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`An award of damages pursuant to 35 U.S.C. § 284;
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`A determination that 10X’s infringement of the ’444 patent has been and
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`is willful, and an award of enhanced damages, up to and including trebling of the damages
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`awarded to Bio-Rad;
`
`E.
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`An award to Bio-Rad of its costs, pre- and post-judgment interest, and
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`reasonable expenses to the fullest extent permitted by law;
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`F.
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`A declaration that this case is exceptional pursuant to 35 U.S.C. § 285, and
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`an award of attorneys’ fees and costs; and
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`G.
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`An award of such other and further relief as the Court may deem just and
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`proper.
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`DEMAND FOR JURY TRIAL
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`Pursuant to Federal Rule of Civil Procedure 38(b), Bio-Rad hereby demands a trial by
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`jury on all issues so triable.
`
`11
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`Case 1:19-cv-01699-RGA Document 1 Filed 09/11/19 Page 12 of 12 PageID #: 12
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`Dated: September 11, 2019
`
`
`Of Counsel:
`
`Edward R. Reines
`Derek C. Walter
`WEIL, GOTSHAL & MANGES LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`(650) 802-3000
`
`
`
`
`
`
`Respectfully submitted,
`
`FARNAN LLP
`
`/s/ Brian E. Farnan
`Brian E. Farnan (Bar No. 4089)
`Michael J. Farnan (Bar No. 5165)
`919 N. Market St., 12th Floor
`Wilmington, DE 19801
`(302) 777-0300
`(302) 777-0301 (Fax)
`bfarnan@farnanlaw.com
`mfarnan@farnanlaw.com
`
`
`Attorneys for Plaintiff Bio-Rad Laboratories,
`Inc.
`
`12
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`