Background
Bio-Rad Laboratories and the University of Chicago jointly owned three patents directed to droplet microfluidics technology—a method of performing biochemical reactions at very high throughput by encapsulating biological materials (including DNA and cells) in tiny oil droplets. The technology has become foundational in genomics and single-cell biology, enabling researchers to analyze thousands of individual cells simultaneously at dramatically lower cost than traditional methods.
10X Genomics entered the market with products using similar technology and quickly captured a significant market share. Bio-Rad sued for infringement of all three patents. A jury found 10X liable for willful infringement of all three patents and awarded $23,930,716 in damages. The district court entered a permanent injunction requiring 10X to stop selling several of its product lines. 10X appealed both the liability findings and the scope of the injunction.
The Court’s Holding
The Federal Circuit issued a mixed ruling. On the first patent, the court affirmed infringement outright, upholding the district court’s claim construction. On the second and third patents, however, the court found that the district court had construed key claim terms too broadly, and reversed on those patents—remanding for a new trial on infringement under the correct constructions.
Importantly, the court affirmed the entire $23.9 million damages award regardless of the infringement reversals, because the damages were supported by the affirmed infringement of the first patent alone. The court also affirmed the jury’s willful infringement finding—which 10X did not contest on appeal—and left intact the district court’s authority to enhance damages under 35 U.S.C. § 284 on remand.
On the injunction, the court affirmed it as to most product lines but carved out two exceptions: 10X’s Linked-Reads and CNV product lines. The court held that where a defendant has already developed or is in the process of developing non-infringing alternatives for specific products, equity may counsel against enjoining those specific products—particularly when the injunction would harm the defendant disproportionately relative to the harm the infringing products cause the patentee. For the remaining product lines, where 10X had not yet developed workarounds, the injunction was upheld.
Key Takeaways
- A damages award can survive even if infringement is overturned on some patents in the case—courts evaluate whether the remaining affirmed infringement is sufficient to support the award independently.
- Permanent injunctions in patent cases are granted based on the traditional four-factor eBay test; courts may shape injunctions to exclude products for which non-infringing alternatives are imminent or already developed.
- Willful infringement findings are fact-intensive and difficult to overturn on appeal; 10X did not challenge the finding, underscoring how seriously courts treat evidence that a defendant continued infringing despite knowledge of the patents.
- Precise claim construction is crucial in biotech patent cases where small technical distinctions can dramatically affect what products are found to infringe.
Why It Matters
The droplet microfluidics space is a high-stakes arena in genomics research, with applications ranging from single-cell sequencing to liquid biopsy. This decision came during a period when 10X Genomics was rapidly growing into a market leader, and the litigation had existential implications for its business model. The court’s willingness to uphold a substantial damages award—and a broad injunction—even while reversing on parts of the case sends a clear message that core foundational technology patents in the biotech space will be vigorously enforced.
The partial injunction ruling is also a useful illustration of how courts calibrate injunctive relief: a permanent injunction does not automatically sweep in every infringing product. When defendants can show they are already pivoting to non-infringing designs for specific products, courts may tailor the injunction rather than apply a blanket prohibition. This nuance matters for defendants in fast-moving technology markets where product redesigns happen in parallel with litigation.