Case 1:19-cv-01699-RGA Document 8 Filed 11/05/19 Page 1 of 835 PageID #: 1486
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`BIO-RAD LABORATORIES, INC. and
`PRESIDENT AND FELLOWS OF HARVARD
`COLLEGE
`
`C.A. No. 19-1699-RGA
`
`Plaintiffs,
`
`DEMAND FOR JURY TRIAL
`
`v.
`10X GENOMICS, INC.,
`Defendant.
`
`FIRST AMENDED COMPLAINT
`
`Bio-Rad Laboratories, Inc. (“Bio-Rad”) and the President and Fellows of Harvard College
`
`(“Harvard University”) (collectively “Plaintiffs”) hereby allege for their Complaint (“Complaint”)
`
`against Defendant 10X Genomics, Inc. (“10X”), on personal knowledge as to their own actions
`
`and on information and belief as to the actions of others, as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action for patent infringement arising under the United States
`
`Patent Act 35 U.S.C. §§1 et seq., including 35 U.S.C. § 271.
`
`2.
`
`Plaintiffs bring this action to halt 10X’s infringement of their rights under
`
`the Patent Laws of the United States 35 U.S.C. §1, et. seq., which arise under U.S. Patent No.
`
`8,871,444 (“the ’444 patent”), which is attached hereto as Exhibit 1, U.S. Patent No. 9,919,277
`
`(“the ’277 patent”), which is attached hereto as Exhibit 14.
`
`3.
`
`Bio-Rad by itself brings this action to halt 10X’s infringement of its rights
`
`under the Patent Laws of the United States 35 U.S.C. §1, et. seq., and U.S. Patent No. 10,190,115
`
`(“the ’115 patent”), which is attached hereto as Exhibit 15.
`
`1
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`

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`THE PARTIES
`
`4.
`
`Plaintiff Bio-Rad is a Delaware corporation having a principal place of
`
`business at 1000 Alfred Nobel Drive, Hercules, CA 94547.
`
`5.
`
`Harvard University is a research university incorporated as a Massachusetts
`
`not-for-profit institution, with its principal place of business at 1563 Massachusetts Ave.,
`
`Cambridge, Massachusetts 02138. Harvard University is a patent owner and licensor for the ’444
`
`and ’277 patents.
`
`6.
`
`10X is a company organized and existing under the laws of Delaware, with
`
`its principal place of business at 7068 Koll Center Parkway, Suite 401, Pleasanton, CA, 94566.
`
`JURISDICTION AND VENUE
`
`7.
`
`This action for patent infringement arises under the patent laws of the
`
`United States, Title 35 of the United States Code.
`
`8.
`
`This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331
`
`and 1338(a).
`
`9.
`
`This Court has personal jurisdiction over defendant 10X. 10X has
`
`substantial contacts with the forum as a consequence of conducting business in Delaware, and has
`
`purposefully availed itself of the benefits and protections of Delaware state law by incorporating
`
`under Delaware law.
`
`10.
`
`This Court has personal jurisdiction over nominal defendant Harvard
`
`University. Harvard University has substantial contacts with the forum as a consequence of
`
`conducting business and activities in Delaware.
`
`2
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`

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`11.
`
`Venue is proper in this District under 28 U.S.C. §§ 1391(b) and (c), and
`
`1400(b) because Bio-Rad and 10X are both Delaware corporations and Delaware is a convenient
`
`forum for resolution of the parties’ disputes set forth herein.
`
`BACKGROUND
`
`12.
`
`Bio-Rad is a leader in the field of life science research and clinical
`
`diagnostics, and today many of Bio-Rad’s products and tools used in the biotechnology industry
`
`are recognized as the gold standard.
`
`13.
`
`A centerpiece of many of Bio-Rad’s products is its Droplet Digital™
`
`technology. This technology involves partitioning biological samples by placing them in
`
`individual microdroplets that are formed based on emulsion chemistry. Using this technology,
`
`researchers can create a large numbers of partitions, each one for carrying out a reaction, with a
`
`minimum amount of sample handling and a minimum amount of sample volume. A variety of
`
`different reactions may be carried out inside the droplets, including polymerase chain reaction
`
`(“PCR”), and various reactions to prepare samples for next generation sequencing (“NGS”).
`
`14.
`
`Bio-Rad began offering its Droplet Digital™ PCR (“ddPCR™”) Systems
`
`brands in 2011 following its $162 million acquisition of QuantaLife, Inc. (“QuantaLife”) and its
`
`digital droplet PCR technology. The work at QuantaLife, and subsequently at Bio-Rad, led to a
`
`large number of patents being granted throughout the world concerning droplet-based emulsion
`
`systems and methods.
`
`15.
`
`Bio-Rad’s droplet digital technology was a breakthrough that greatly
`
`advanced the capabilities of PCR and NGS. Just one year after the launch of Bio-Rad’s first
`
`generation product, the number of papers citing Bio-Rad’s droplet digital method using PCR
`
`3
`
`

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`nearly quintupled. Indeed, more than 250 peer-reviewed papers have been published in the fields
`
`of cancer, liquid biopsy, virology, and other diseases that cited to BioRad’s technology.
`
`16.
`
`Bio-Rad’s ddSEQ™ Single-Cell Isolator uses Droplet Digital™ technology
`
`to encapsulate single cells and barcodes into subnanoliter droplets, where cell lysis and barcoding
`
`of cellular messenger RNA occur. Libraries are generated representing the messenger RNAs from
`
`single cells that can be sequenced for Single Cell Analysis.
`
`17.
`
`Bio-Rad has spent years and hundreds of millions of dollars researching,
`
`acquiring and developing its Droplet technology and portfolio that is the foundation for many
`
`droplet-based applications such as ddPCR™ and NGS and Single Cell Analysis.
`
`18.
`
`For instance, in addition to its $162 million acquisition of QuantaLife, Bio-
`
`Rad completed an $87 million acquisition of RainDance Technologies, Inc. (“RainDance”), and
`
`all of its intellectual property.
`
`19.
`
`As another example, Bio-Rad is the exclusive licensee of droplet
`
`intellectual property from world-renowned institutions, such as Harvard University and Lawrence
`
`Livermore National Laboratory. Likewise, by virtue of its acquisition of RainDance, Bio-Rad
`
`acquired an exclusive licensee to foundational droplet technology developed at the University of
`
`Chicago.
`
`20.
`
`Starting in 2012, several Bio-Rad employees, including Serge Saxanoff (the
`
`sole inventor of the ’115 patent) left to found 10X Technologies, Inc., which later became
`
`Defendant 10X. This company, like Bio-Rad, focused on developing systems and methods for
`
`generating droplet-based emulsions.
`
`21.
`
`In 2015, 10X launched a droplet-based emulsion system called GemCode
`
`that used the claimed microchips and chemistry for forming droplets that can be used in, among
`
`4
`
`

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`other things, Next Generation Sequencing and Single Cell Analysis. Approximately one year later,
`
`10X launched an updated version of its droplet-based emulsion system called Chromium. These
`
`platforms compete against Bio-Rad’s Droplet Digital™ technology.
`
`22.
`
`In February 2015, RainDance filed a lawsuit in this district accusing 10X’s
`
`GemCode and Chromium platforms of infringing several patents developed at the University of
`
`Chicago. Following its acquisition of RainDance, Bio-Rad substituted itself as the lead Plaintiff
`
`in this litigation. In November 2018, Bio-Rad obtained a jury verdict of willful infringement
`
`against 10X Genomics, and in August 2019 Bio-Rad obtained a permanent injunction.
`
`23.
`
`Following the jury verdict, 10X announced a new line of products, which it
`
`recently began selling under the tradename “Next GEM.” The Next GEM platform consists of an
`
`instrument known as the Chromium Controller along with reagent kits for carrying out various
`
`genetic analyses, including at least 10X’s Chromium Single Cell Gene Expression Solution,
`
`Chromium Single Cell Immune Profiling Solution, and Chromium Single Cell ATAC Solution.
`
`See generally Exs. 2-3.
`
`24.
`
`The Next GEM platform is at the heart of a $362 million IPO that 10X will
`
`launch imminently. As 10X stated in its prospectus, “[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 our Chromium sales by the end of 2020.” Ex. 4 at 7.
`
`25.
`
`10X, however, infringes, literally or under the doctrine of equivalents, at
`
`least the ’444 patent through its activities connected to the Next GEM platform.
`
`5
`
`

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`COUNT I
`
`(Infringement of U.S. Patent No. 8,871,444)
`
`26.
`
`Plaintiffs re-allege and incorporates by reference the allegations contained
`
`in paragraphs 1 through 25 above as relevant to this count.
`
`27.
`
`On October 28, 2014, the United States Patent and Trademark Office duly
`
`and legally issued the ’444 patent, entitled “In vitro evolution in microfluidic systems.” A copy
`
`of the ’444 patent is attached as Exhibit 1.
`
`28.
`
`Andrew David Griffiths, David A. Weitz, Darren R. Link, Keunho Link,
`
`and Jerome Bibette are the sole and true inventors of the ’444 patent. By operation of law and as
`
`a result of written assignment agreements, United Kingdom Research and Innovation (“UKRI”)
`
`and President and Fellows of Harvard College (“Harvard University”) obtained the entire right,
`
`title and interest to and in the ’444 patent.
`
`29.
`
`Pursuant to license agreements Bio-Rad entered into with UKRI and
`
`Harvard University, Bio-Rad obtained an exclusive license to the ’444 patent in the field of
`
`microfluidic systems, kits and chips.
`
`30.
`
`On information and belief, 10X has infringed and continues to infringe at
`
`least claims 1-2, 4, and 8 of the ’444 patent pursuant to 35 U.S.C. § 271(a), literally or under the
`
`doctrine of equivalents, by using within the United States without authority the Next GEM
`
`products. As an example, attached as Exhibit 5 is a preliminary and exemplary claim chart
`
`detailing 10X’s infringement of multiple claims of the ’444 patent. This chart is not intended to
`
`limit Plaintiff’s right to modify this chart or any other claim chart or allege that other activities of
`
`10X infringe the identified claims or any other claims of the ’444 patent or any other patents.
`
`Exhibit 5 is hereby incorporated by reference in its entirety. Each claim element in Exhibit 5 that
`
`6
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`is mapped to 10X’s Next GEM platform shall be considered an allegation within the meaning of
`
`the Federal Rules of Civil Procedure and therefore a response to each allegation is required.
`
`31.
`
`10X’s infringement of the ’444 patent has been knowing and willful. 10X’s
`
`founders, senior-most executives, and senior scientists became aware of Bio-Rad’s license with
`
`Harvard University at least in connection with 10X’s November 2018 trial against Bio-Rad in this
`
`district, where 10X was found to willfully infringe intellectual property from the University of
`
`Chicago. Moreover, 10X has become deeply familiar with the full scope of the Harvard University
`
`droplet patent portfolio (including the ’444 patent), at least because it has licensed certain patents
`
`from Harvard University, as confirmed by Dr. Ben Hindson, 10X’s co-founder and Chief Scientific
`
`Officer, during 10X’s November 2018 trial. In fact, Dr. Hindson confirmed that 10X was well
`
`aware of the work of at least one named inventor of the ’444 patent, including Dr. Weitz.
`
`32.
`
`Consistent with the foregoing, going back to at least April 4, 2014, 10X has
`
`filed Information Disclosure Statements with the United States Patent Office in which it has cited
`
`U.S. Patent Application No. 2006/0078888, which is a published version of the priority application
`
`that the ’444 patent is a continuation of. See Exs. 10-13.
`
`33.
`
`On information and belief, in view of 10X’s (1) knowledge of Bio-Rad’s
`
`license with Harvard University, (2) knowledge of the Harvard University droplet patents, and (3)
`
`prior willful infringement of intellectual property controlled by Bio-Rad, 10X has carefully
`
`monitored and analyzed the Harvard University droplet patent portfolio and, through that work,
`
`become aware of the ’444 patent and the fact that the Next GEM platform infringes the ’444 patent.
`
`Despite being aware of these facts, 10Xs has nonetheless launched its Next GEM platform, even
`
`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
`
`7
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`

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`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
`
`our Chromium sales by the end of 2020.” Ex. 4 at 7.
`
`34.
`
`In addition, 10X has had knowledge of and notice of the ’444 patent and its
`
`infringement since at least, and through, the filing and service of this Complaint and despite this
`
`knowledge continues to commit the aforementioned infringing acts. For at least the reasons stated
`
`in this paragraph and in paragraphs 31-33 above, this infringement has been willful.
`
`35.
`
`10X actively, knowingly, and intentionally has induced, or has threatened
`
`to induce, infringement of at least claims 1-2, 4, and 8 of the ’444 patent through a range of
`
`activities. First, on information and belief, 10X has induced infringement by controlling the design
`
`and manufacture of, offering for sale, and selling the Next GEM platform and/or its individual
`
`components with the knowledge and specific intent that its customers will use the Next GEM
`
`platform to infringe the ’444 patent, literally or under the doctrine of equivalents, by performing
`
`the claimed method for detecting a product of an enzymatic reaction.
`
`36.
`
`Second, on information and belief, 10X has induced infringement by its
`
`customers through the dissemination of promotional and marketing materials relating to the Next
`
`GEM platform with the knowledge and specific intent that its customers will use the Next GEM
`
`platform to infringe the ’444 patent, literally or under the doctrine of equivalents, by performing
`
`the claimed method for detecting a product of an enzymatic reaction. For instance, 10X promotes
`
`the Next GEM platform on its website. As 10X states on the Technology portion of its website,
`
`its “proprietary Next GEM technology fuels our Chromium System with an innovative reagent
`
`delivery system, set of algorithms and turnkey software analysis tools that enable the discovery of
`
`previously inaccessible genetic information at massive rate and scale.” Ex. 3 at 1.
`
`8
`
`

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`37.
`
`Third, on information and belief, 10X has induced infringement by its
`
`customers through the creation of distribution channels for the Next GEM platform and/or its
`
`individual components in the United States with the knowledge and specific intent that its
`
`customers will use the Next GEM platform to infringe the ’444 patent, literally or under the
`
`doctrine of equivalents, by performing the claimed method for detecting a product of an enzymatic
`
`reaction.
`
`38.
`
`Fourth, on information and belief, 10X has induced infringement through
`
`the distribution of other instructional materials, product manuals, and technical materials with the
`
`knowledge and the specific intent to encourage and facilitate its customer’s infringing (either
`
`literally or under the doctrine of equivalents) use of the Next GEM platform. See, e.g., Exs. 2, 7-
`
`9. 10X is liable for its induced infringement of the ’444 patent pursuant to 35 U.S.C. § 271 (b).
`
`39.
`
`10X has engaged in the above activities with knowledge of the ’444 patent
`
`and with the specific intent to encourage and cause infringement by its customers, as shown by the
`
`allegations set forth in ¶¶ 31-38 above.
`
`40.
`
`10X has contributed to, or has threatened to contribute to, the infringement
`
`by its customers of the ’444 patent by, without authority, selling and offering to sell within the
`
`United States materials and apparatuses for practicing the claimed invention of the ’444 patent,
`
`including at least the Next GEM platform as a whole and/or the individual components of the Next
`
`GEM platform (including without limitation reagent kits). When, for example, the Next GEM
`
`platform is used by 10X’s customers for the various applications 10X offers, the claimed method
`
`for detecting the product of an enzymatic reaction is performed, thereby infringing, literally or
`
`under the doctrine of equivalents, at least claims 1-2, 4, and 8 of the ’444 patent. The Next GEM
`
`9
`
`

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`platform and/or its individual components, supplied by 10X, constitute a material part of the
`
`claimed invention of the ’444 patent.
`
`41.
`
`On information and belief, 10X knows that the Next GEM platform and/or
`
`its individual components constitute a material part of the inventions of the ’444 patent and that
`
`they are not a staple article or commodity of commerce suitable for substantial noninfringing use.
`
`As documented above and in Exhibit 5, the Next GEM platform consists of a specialized
`
`microfluidic device along with specialized reagents for conducting reactions in microfluidic
`
`droplets. See supra ¶ 23; Exs. 2, 7-9. As such, no part of the Next GEM platform is a staple article
`
`of commerce suitable for substantial non-infringing use. 10X knows that the Next GEM platform
`
`and its individual components are not staple articles or commodities of commerce suitable for
`
`substantial non-infringing use because the Next GEM platform and its individual components have
`
`no use apart from infringing the ’444 patent. 10X is liable for its contributory infringement of the
`
`’444 patent pursuant to 35 U.S.C. § 271(c).
`
`42.
`
`10X’s infringement of the ’444 patent has injured Plaintiff in its business
`
`and property rights. 10X’s infringement of the ’444 patent has been and is deliberate and willful
`
`and constitutes egregious misconduct. Despite actual knowledge of the ’444 patent and numerous
`
`related patents and applications since at least its trial against Bio-Rad in this district in November
`
`2018, 10X continued to develop and launch its infringing products. As set forth in Exhibit 5, when
`
`customers use 10X’s Next GEM platform, they practice every element of multiple claims of the
`
`’444 patent. In developing and launching its product, 10X has been willfully blind to this ongoing
`
`infringement. Plaintiff is entitled to recover monetary damages for the injuries arising from 10X’s
`
`willful infringement pursuant to 35 U.S.C. § 284 in an amount to be determined at trial. 10X’s
`
`10
`
`

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`infringement of the ’444 patent has caused irreparable harm to Plaintiff and will continue to cause
`
`such harm unless and until 10X’s infringing activities are enjoined by this Court.
`
`COUNT II
`
`(Infringement of U.S. Patent No. 9,919,277)
`
`43.
`
`Plaintiffs re-allege and incorporate by reference the allegations contained in
`
`paragraphs 1 through 42 above as relevant to this count.
`
`44.
`
`On March 20, 2018, the United States Patent and Trademark Office duly
`
`and legally issued the ’277 patent, entitled “In vitro evolution in microfluidic systems.” A copy
`
`of the ’277 patent is attached as Exhibit 14.
`
`45.
`
`Andrew David Griffiths, David A. Weitz, Darren R. Link, Keunho Ahn, and
`
`Jerome Bibette are the sole and true inventors of the ’277 patent. By operation of law and as a
`
`result of written assignment agreements, United Kingdom Research and Innovation (“UKRI”) and
`
`President and Fellows of Harvard College (“Harvard University”) obtained the entire right, title
`
`and interest to and in the ’277 patent.
`
`46.
`
`Pursuant to license agreements Bio-Rad entered into with UKRI and
`
`Harvard University, Bio-Rad obtained an exclusive license to the ’277 patent in the field of
`
`microfluidic systems, kits and chips.
`
`47.
`
`On information and belief, 10X has infringed and continues to infringe at
`
`least claims 1-6, 8-9, 11, and 13-14 of the ’277 patent pursuant to 35 U.S.C. § 271(a), literally or
`
`under the doctrine of equivalents, by using within the United States without authority the Next
`
`GEM products. As an example, attached as Exhibit 16 is a preliminary and exemplary claim chart
`
`detailing 10X’s infringement of multiple claims of the ’277 patent. This chart is not intended to
`
`limit Plaintiff’s right to modify this chart or any other claim chart or allege that other activities of
`
`10X infringe the identified claims or any other claims of the ’277 patent or any other patents.
`
`11
`
`

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`Exhibit 16 is hereby incorporated by reference in its entirety. Each claim element in Exhibit 16
`
`that is mapped to 10X’s Next GEM platform shall be considered an allegation within the meaning
`
`of the Federal Rules of Civil Procedure and therefore a response to each allegation is required.
`
`48.
`
`10X’s infringement of the ’277 patent has been knowing and willful. 10X’s
`
`founders, senior-most executives, and senior scientists became aware of Bio-Rad’s license with
`
`Harvard University at least in connection with 10X’s November 2018 trial against Bio-Rad in this
`
`district, where 10X was found to willfully infringe intellectual property from the University of
`
`Chicago. Moreover, 10X has become deeply familiar with the full scope of the Harvard University
`
`droplet patent portfolio (including the ’277 patent), at least because it has licensed certain patents
`
`from Harvard University, as confirmed by Dr. Ben Hindson, 10X’s co-founder and Chief Scientific
`
`Officer, during 10X’s November 2018 trial. In fact, Dr. Hindson confirmed that 10X was well
`
`aware of the work of at least one named inventor of the ’277 patent, including Dr. Weitz.
`
`49.
`
`On information and belief, in view of 10X’s (1) knowledge of Bio-Rad’s
`
`license with Harvard University, (2) knowledge of the Harvard University droplet patents, and (3)
`
`prior willful infringement of intellectual property controlled by Bio-Rad, 10X has carefully
`
`monitored and analyzed the Harvard University droplet patent portfolio and, through that work,
`
`become aware of the ’277 patent and the fact that the Next GEM platform infringes the ’277 patent.
`
`Despite being aware of these facts, 10Xs has nonetheless launched its Next GEM platform, even
`
`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
`
`our Chromium sales by the end of 2020.” Ex. 4 at 7.
`
`12
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`

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`50.
`
`In addition, 10X has had knowledge of and notice of the ’277 patent and its
`
`infringement since at least, and through, the filing and service of this Complaint and despite this
`
`knowledge continues to commit the aforementioned infringing acts. For at least the reasons stated
`
`in this paragraph and in paragraphs 47-49 above, this infringement has been willful.
`
`51.
`
`10X actively, knowingly, and intentionally has induced, or has threatened
`
`to induce, infringement of at least claims 1-6, 8-9, 11, and 13-14 of the ’277 patent through a range
`
`of activities. First, on information and belief, 10X has induced infringement by controlling the
`
`design and manufacture of, offering for sale, and selling the Next GEM platform and/or its
`
`individual components with the knowledge and specific intent that its customers will use the Next
`
`GEM platform to infringe the ’277 patent, literally or under the doctrine of equivalents, by
`
`performing the claimed method for conducting an enzymatic reaction.
`
`52.
`
`Second, on information and belief, 10X has induced infringement by its
`
`customers through the dissemination of promotional and marketing materials relating to the Next
`
`GEM platform with the knowledge and specific intent that its customers will use the Next GEM
`
`platform to infringe the ’277 patent, literally or under the doctrine of equivalents, by performing
`
`the claimed method for conducting an enzymatic reaction. For instance, 10X promotes the Next
`
`GEM platform on its website. As 10X states on the Technology portion of its website, its
`
`“proprietary Next GEM technology fuels our Chromium System with an innovative reagent
`
`delivery system, set of algorithms and turnkey software analysis tools that enable the discovery of
`
`previously inaccessible genetic information at massive rate and scale.” Ex. 3 at 1.
`
`53.
`
`Third, on information and belief, 10X has induced infringement by its
`
`customers through the creation of distribution channels for the Next GEM platform and/or its
`
`individual components in the United States with the knowledge and specific intent that its
`
`13
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`customers will use the Next GEM platform to infringe the ’277 patent, literally or under the
`
`doctrine of equivalents, by performing the claimed method for conducting an enzymatic reaction.
`
`54.
`
`Fourth, on information and belief, 10X has induced infringement through
`
`the distribution of other instructional materials, product manuals, and technical materials with the
`
`knowledge and the specific intent to encourage and facilitate its customer’s infringing (either
`
`literally or under the doctrine of equivalents) use of the Next GEM platform. See, e.g., Exs. 2, 7-
`
`9. 10X is liable for its induced infringement of the ’277 patent pursuant to 35 U.S.C. § 271 (b).
`
`55.
`
`10X has engaged in the above activities with knowledge of the ’444 patent
`
`and with the specific intent to encourage and cause infringement by its customers, as shown by the
`
`allegations set forth in ¶¶ 47-54 above.
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`56.
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`10X has contributed to, or has threatened to contribute to, the infringement
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`by its customers of the ’277 patent by, without authority, selling and offering to sell within the
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`United States materials and apparatuses for practicing the claimed invention of the ’277 patent,
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`including at least the Next GEM platform as a whole and/or the individual components of the Next
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`GEM platform (including without limitation reagent kits). When, for example, the Next GEM
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`platform is used by 10X’s customers for the various applications 10X offers, the claimed method
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`for conducting an enzymatic reaction is performed, thereby infringing, literally or under the
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`doctrine of equivalents, at least claims 1-6, 8-9, 11, and 13-14 of the ’277 patent. The Next GEM
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`platform and/or its individual components, supplied by 10X, constitute a material part of the
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`claimed invention of the ’277 patent.
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`57.
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`On information and belief, 10X knows that the Next GEM platform and/or
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`its individual components constitute a material part of the inventions of the ’277 patent and that
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`they are not a staple article or commodity of commerce suitable for substantial noninfringing use.
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`14
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`

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`Case 1:19-cv-01699-RGA Document 8 Filed 11/05/19 Page 15 of 835 PageID #: 1500
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`As documented above and in Exhibit 16, 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 ¶ 23; Exs. 2, 7-9. As such, no part of the Next GEM platform is a staple article
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`of commerce suitable for substantial non-infringing use. 10X knows that the Next GEM platform
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`and its individual components are not staple articles or commodities of commerce suitable for
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`substantial non-infringing use because the Next GEM platform and its individual components have
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`no use apart from infringing the ’277 patent. 10X is liable for its contributory infringement of the
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`’277 patent pursuant to 35 U.S.C. § 271(c).
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`58.
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`10X’s infringement of the ’277 patent has injured Plaintiff in its business
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`and property rights. 10X’s infringement of the ’277 patent has been and is deliberate and willful
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`and constitutes egregious misconduct. Despite actual knowledge of the ’277 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 16,
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`when customers use 10X’s Next GEM platform, they practice every element of multiple claims of
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`the ’277 patent. In developing and launching its product, 10X has been willfully blind to this
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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 ’277 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 Court.
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`COUNT III
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`(Infringement of U.S. Patent No. 10,190,115)
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`59.
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`Bio-Rad re-alleges and incorporates by reference the allegations contained
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`in paragraphs 1 through 58 above as relevant to this count.
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`15
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`Case 1:19-cv-01699-RGA Document 8 Filed 11/05/19 Page 16 of 835 PageID #: 1501
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`60.
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`On March 20, 2018, the United States Patent and Trademark Office duly
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`and legally issued the ’115 patent, entitled “Methods and Compositions For Nucleic Acid
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`Analysis.” A copy of the ’115 patent is attached as Exhibit 15.
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`61.
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`Serge Saxonov is the sole and true inventor of the ’115 patent. By operation
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`of law and as a result of written assignment agreements, Bio-Rad obtained the entire right, title
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`and interest to and in the ’115 patent.
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`62.
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`On information and belief, 10X has infringed and continues to infringe at
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`least claims 1, 4-15, and 18-26 of the ’115 patent pursuant to 35 U.S.C. § 271(a), literally or under
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`the 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 17 is a preliminary and exemplary claim chart
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`detailing 10X’s infringement of multiple claims of the ’115 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 ’115 patent or any other patents.
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`Exhibit 17 is hereby incorporated by reference in its entirety. Each claim element in Exhibit 17
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`that is mapped to 10X’s Next GEM platform shall be considered an allegation within the meaning
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`of the Federal Rules of Civil Procedure and therefore a response to each allegation is required.
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`63.
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`10X’s infringement of the ’115 patent has been knowing and willful. 10X’s
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`founders, senior-most executives, and senior scientists were aware of the ’115 patent at least since
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`the founding of 10X. Serge Saxonov, a co-founder of 10X and former employee of Bio-Rad is the
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`sole inventor on the ’115 patent and worked on the invention encompassed by the ’115 patent
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`while he was employed at Bio-Rad. Thus, Serge Saxonov and 10X are deeply familiar with the
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`’115 patent.
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`16
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`Case 1:19-cv-01699-RGA Document 8 Filed 11/05/19 Page 17 of 835 PageID #: 1502
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`64.
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`Consistent with the foregoing, going back to at least December 4, 2015, 10X
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`has filed Information Disclosure Statements with the United States Patent Office in which it has
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`cited U.S. Patent Publication No. 2015/0376609 which is a published version of the application
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`that resulted in the ’115 patent. See Ex. 18.
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`65.
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`Despite being aware of these facts, 10X has nonetheless launched its Next
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`GEM platform, even making it the centerpiece of a $362 million IPO. As 10X stated in in its
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`prospectus in support of its I