RainDance Technologies Inc. et al v. 10X Genomics Inc.
MEMORANDUM OPINION. Signed by Judge Richard G. Andrews on 7/24/2019. (nms)
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IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
BIO-RAD LABORATORIES INC. and THE
UNIVERSITY OF CHICAGO,
1OX GENOMICS, INC. ,
Brian E. Farnan, Michael J. Farnan, FARNAN LLP, Wilmington, DE; Edward R. Reines, Derek
C . Walter, Amanda Branch, Christopher S. Lavin, WEIL, GOTSHAL & MANGES LLP,
Redwood Shores, CA; Robert T. Vlasis III, WEIL, GOTSHAL & MANGES LLP, Washington,
Attorneys for Plaintiffs.
Frederick L. Cottrell, III, Jason J. Rawnsley, Alexandra M. Ewing, RICHARDS , LAYTON &
FINGER, P.A. , Wilmington, DE; E. Joshua Rosenkranz, Melanie L. Bostwick, Elizabeth R.
Moulton, ORRICK HERRINGTON & SUTCLIFFE LLP, New York, NY; Matthew Powers,
Azra Hadzimehmedovic, Robert Gerrity, TENSEGRITY LAW GROUP LLP, Redwood Shores,
CA; David I. Gindler, Alan J . Heinrich, Lauren N . Drake, Elizabeth C. Tuan, IRELL &
MANELLA LLP, Los Angeles, CA.
Attorneys for Defendant.
July J,-1 2019
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Presently before the Court is Plaintiffs' post-trial motion (D.I. 512). Plaintiffs seek a
permanent injunction, attorneys' fees, enhanced damages, supplemental damages, and pre- and
post-judgment interest. (Id.) . I have reviewed the parties' briefing and the related amicus curiae
submission from the Broad Institute, Inc. (D.I. 513 , 524, 536, 522). For the following reasons,
Plaintiffs' motion is GRANTED with respect to the permanent injunction, supplemental
damages, and pre- and post-judgment interest, and DENIED with respect to the attorneys' fees
and enhanced damages.
On February 12, 2015, RainDance Technologies, Inc. and the University of Chicago filed
suit against lOX Genomics, Inc. alleging infringement of several patents. On May 30, 2017,
Bio-Rad Laboratories Inc. substituted for RainDance. (D.I. 180). I held a jury trial from
November 5 to 13, 2018. 1 Only three patents remained at issue-U.S. Patent Nos. 8,889,083
("the ' 083 patent"), 8,304,193 ("the' 193 patent"), and 8,329,407 ("the ' 407 patent"). (See D.I.
499). The jury found all three patents valid and infringed, that the infringement was willful, and
that Plaintiffs were entitled to $23 ,930,718 in damages. (D.I. 476).
Courts "may grant injunctions in accordance with the principles of equity to prevent the
violation of any right secured by patent, on such terms as the court deems reasonable. " 35
U.S.C. § 283. "According to well-established principles of equity, a plaintiff seeking
a permanent injunction must satisfy a four-factor test before a court may grant such relief." eBay
Inc. v. MercExchange, LLC, 547 U.S. 388, 391 (2006). "A plaintiff must demonstrate: (1) that it
I cite to the trial transcript as "Tr."
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has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages,
are inadequate to compensate for that injury; (3) that, considering the balance of hardships
between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public
interest would not be disserved by a permanent injunction." Id. "The essential attribute of
a patent grant is that it provides a right to exclude competitors from infringing
the patent." Acurned LLCv. Stryker Corp., 551 F.3d 1323, 1328 (Fed. Cir. 2008).
For the following reasons, I find that Plaintiffs have satisfied the eBay factors in support
of their proposed permanent injunction. (D.I. 513 , Ex. A).
A. Irreparable Injury
Direct competition strongly suggests the potential for irreparable harm absent an
injunction. Presidio Components, Inc. v. Arn. Tech. Ceramics Corp., 702 F.3d 1351 , 1363 (Fed.
Cir. 2012) (vacating denial of a permanent injunction based on finding no irreparable injury
because the record showed "direct and substantial competition between the parties"); see also
Douglas Dynamics, LLC v. Buyers Prod. Co., 717 F.3d 1336, 1345 (Fed. Cir. 2013) ("Where two
companies are in competition against one another, the patentee suffers the harm--often
irreparable--of being forced to compete against products that incorporate and infringe its own
patented inventions."). A patentee may establish irreparable harm by showing "that [the parties]
were competitors and that [the patentee] lost market share while [the infringer] gained it." See
Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1338 (Fed. Cir. 2013) (upholding the district
court' s grant of a permanent injunction).
Plaintiffs argue that Bio-Rad and 1OX are competitors in "the market for products that
perform genetic analysis on a droplet platform," and within that market, they are "undisputedly
head-to-head competitors with their single-cell droplet products." (D.I. 513 at 6-7). At trial,
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l0X's counsel stated that Bio-Rad' s ddSEQ product competes directly with l0X' s single cell
product. Tr. at 92:3-7, 1519:4-6. Ms. Tumolo, Bio-Rad' s President of Life Sciences, agreed. Id.
lOX argues that Bio-Rad is not a direct competitor. 1OX has five accused product lines,2
each of which allegedly "profiles different aspects of a sample and provides fundamentally
different biological information, using different chemistries, data analysis, and visualization
software." (D.I. 524 at 7). Of those five, l0X argues that the only one that may compete with
Bio-Rad is the single cell product, but that customers view Bio-Rad' s product as inferior. (Id. at
I find that 1OX and Bio-Rad are direct competitors in the market for products that
perform genetic analysis on a droplet platform. 1OX admitted at trial that its single cell product
competes directly with Bio-Rad' s ddSEQ. Tr. at 92:3-7. Each of l0X' s products are variants of
the same infringing droplet process. (See D.I. 536 at 4; D.I. 476). Regardless, l0X's single cell
product accounts for over 80% of l0X' s sales. (See D.I. 536 at 4; PTX 1255). The fact that
customers may prefer 1OX' s single cell product to ddSEQ does not negate the fact that the
products are competing.
Plaintiffs argue that, as direct competitors, 1OX is causing Bio-Rad lasting competitive
harm by using infringing technology to gain a lead in the emerging droplet market and derail
Bio-Rad's product roadmap. (D.I. 513 at 7). Ms. Tumolo testified that Bio-Rad "felt a lot of
pressure to get [its single cell] product on the market because 1OX had a really, really big head
start, frankly we felt using our technology." Tr. at 130:3-6. Plaintiffs assert that the same head
2 There are six accused products: Chromium Genome/Exome, Chromium Genome/Exome with Kynar,
GemCode Long Read, Chromium Single Cell 3' , Chromium Single Cell 3' with Kynar, and Chromium Single Cell
V(D)J with Kynar. (D.1. 476). I OX does not state which products belong to which product line. (D.I. 524 at 7).
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start has allowed 1OX to collaborate with early adopters and key opinion leaders and develop
"sticky" customer relationships. (D.I. 513 at 7-8). As a result, lOX has cultivated a market bias
towards its single cell product and Bio-Rad has been forced to increase its marketing costs. (Id.
Plaintiffs have shown that they will suffer irreparable competitive harm absent an
injunction. Plaintiffs are being forced to compete with 1OX' s products that incorporate and
infringe their own patented inventions. See Douglas Dynamics, 717 F.3d at 1345. Based on
those infringing products, lOX has established a strong market lead over Bio-Rad-lOX has sold
over 1000 of its single cell units, while Bio-Rad has sold less than 100. (D.I. 398, Ex. Z, at K-2,
J-3 , J-4). It seems likely that, absent an injunction, Bio-Rad will struggle to regain its lost
market share and will continue to suffer associated harms such as increased marketing costs.
The party seeking an injunction must also show a causal nexus between the infringement
and the harm. The infringing features do not need to be the "exclusive or predominant reason"
that consumers buy the accused products, but there must be " 'some connection' between the
patented features and the demand for [the accused] products." Apple Inc. v. Samsung Elecs. Co. ,
809 F.3d 633 , 642 (Fed. Cir. 2015). That is, "the patented features impact consumers' decisions
to purchase the accused devices." Id.
1OX argues that Plaintiffs have failed to show a causal nexus because they have not
proven that "simply using droplets-as opposed to other, non-patented features--drives demand
for, or contributes to the success of, any lOX products." (D.I. 524 at 5). 1OX applies the wrong
standard. Plaintiffs need not show that the patented features drive demand, but just that they
"impact consumers ' decisions to purchase the accused devices. " Apple, 809 F.3d at 642;
Genband US LLC v. Metaswitch Networks Corp., 861 F.3d 1378, 1384-85 (Fed. Cir. 2017). The
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patented droplet technology is the foundation of 1OX' s droplet products. In fact, 1OX tried and
failed with other methods of partitioning such as capsules and wells before moving to droplets.
Tr. at 953:1-954:13 ; (D.I. 513 at 10). There is clearly "some connection" between the patented
technology and the demand for lOX's products. Therefore, Plaintiffs have shown that they will
suffer irreparable harm from 1OX' s infringement absent injunctive relief.
B. Remedies Available at Law
Damages are inadequate to compensate for loss of market share. Douglas Dynamics, 717
F.3d at 1345 ("[M]ere damages will not compensate for a competitor's increasing share of the
market, a market which Douglas competes in, and a market that Douglas has in part created with
its investment in patented technology."); E.I DuPont de Nemours & Co. v. Unifrax I LLC, 2017
WL 4004419, at * 5 (D. Del. Sept. 12, 2017) ("Monetary damages are inadequate to compensate
Plaintiff here because Plaintiff would be forced to compete against a rival gaining market share
with Plaintiffs technology."), aff'd, 921 F.3d 1060 (Fed. Cir. 2019). The underlying concerns
are particularly strong here because lOX 's infringement coincided with the emergence of the
droplet market, thus allowing 1OX to capture and define the market with its infringing
technology. See Illumina, Inc. v. Qiagen, NV., 207 F. Supp. 3d 1081, 1093 (N.D. Cal. 2016)
(finding the patentee would suffer irreparable harm in part because, being at a "crucial inflection
point in the development of the market," the infringer would be allowed to "capture and define
the market with pirated technology").
1OX argues that damages are adequate based on quantifiable licensing fees derived from
Bio-Rad's internal documents. (D.I. 524 at 13). I disagree. Although Bio-Rad seems to have
had some interest in licensing the asserted patents (DTX 1481 at 26), they were never actually
licensed. Cf Nichia Corp. v. Everlight Americas, Inc., 855 F.3d 1328, 1343 (Fed. Cir. 2017)
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("[T]he fact of the grant of previous licenses, the identity of the past licensees, the experience in
the market since the licenses were granted, and the identity of the new infringer all may affect
the district court' s discretionary decision concerning whether a reasonable royalty from an
infringer constitutes damages adequate to compensate for the infringement.") (quoting Acumed
LLC v. Stryker Corp., 551 F.3d 1323, 1328 (Fed. Cir. 2008)).
Therefore, I find damages inadequate to compensate for lOX' s infringement.
C. Balance of Hardships
When assessing the balance of hardships, it is appropriate for courts to consider "the
parties' sizes, products, and revenue sources." i4i Ltd. P 'ship v. Microsoft Corp., 598 F.3d 831 ,
862-63 (Fed. Cir. 2010), aff'd, 564 U.S. 91 (2011). Not relevant, however, are the expenses
incurred in creating the infringing products and the consequences to the infringer of its
infringement, such as the cost ofredesigning the infringing products. Id. at 863.
An injunction would prevent 1OX from selling any of its current products. (D.I. 524 at
14). 1OX thus argues that an injunction would devastate the company, possibly causing it to go
out of business. It is clear, however, that 1OX has been pursuing a design-around for some time.
At the September 5, 2018 discovery conference, lOX's counsel represented that the components
of the new design were complete but the "full commercialized product" was not. (D.I. 365 at
20:25-21:11). In January 2019, lOX' s Dr. Schnall-Levin testified that lOX intended to have its
redesign on sale in April 2019 and that 1OX was "confident that the chip will work as well" as
the existing product. (D.I. 537, Ex. 4 at 19:19-22, 25:17-25). His only caveat about an April
launch was that 1OX might not have "all the training materials" and "quite as much rigor around
having naive users try [the product] out." (Id. at 25:25-26:7). Thus, it now being July 2019, I
would expect 1OX to be nearly ready, if not ready, to bring its design-around to market.
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On the other hand, Bio-Rad is undoubtedly a much larger operation. Bio-Rad is a
multibillion-dollar company with over 9,000 products. (D.I. 524 at 14 (citing Bio-Rad 10-Q at
29)). Bio-Rad' s ddSEQ product accounted for only 0.2% of its $2 billion in sales in 2017. (Id.
(citing D.I. 398, Ex. Z at J-2)). Those revenues, however, are greatly outstripped by Bio-Rad's
investments in its droplet business. Ms. Tumolo testified that Bio-Rad has spent over half a
billion dollars to develop its droplet products, including acquisitions and $20 to $25 million a
year on research and development. Tr. at 121:6-22, 125:23-126:5.
"[O]ne who elects to build a business on a product found to infringe cannot be heard to
complain if an injunction against continuing infringement destroys the business so elected."
Windsurfing Int '! Inc. v. AMF, Inc., 782 F.2d 995, 1003 (Fed. Cir. 1986). The fact that lOX has
gained commercial success from its infringing products and thus risks losing that success does
not shield lOX from injunctive relief. See i4i, 598 F.3d at 863 (finding the defendant "not
entitled to continue infringing simply because it successfully exploited its infringement");
Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 704 (Fed. Cir. 2008) (same). Regardless,
given that 1OX has a design-around that is complete or very close to complete, I do not think
1OX is likely to be "devastated" if enjoined from selling its existing products. On the other hand,
although Bio-Rad' s ddSEQ currently accounts for only a fraction of Bio-Rad's revenues, BioRad has invested substantial resources in developing its droplet business. Therefore, I find the
balance of hardships weighs in favor of granting injunctive relief, or, at minimum, is neutral.
D. Public Interest
It is generally in the public interest to uphold patent rights. Broadcom , 543 F.3d at 704
(citing Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1547 (Fed. Cir. 1995)). However, "[i]f a
patentee's failure to practice a patented invention frustrates an important public need for the
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invention, a court need not enjoin infringement of the patent. Accordingly, courts have in rare
instances exercised their discretion to deny injunctive relief in order to protect the public
interest." Rite-Hite, 56 F.3d at 1547 (internal citations omitted).
lOX's main argument is that its customers, many of whom are in the middle oflong-term
studies, would lose valuable data and funding if forced to stop using their 1OX systems and
switch to new systems mid-study. (D.I. 524 at 15-17); see also D.I. 522, Ex. 1. That argument
would be compelling if it were true . Plaintiffs have made clear that lOX' s current customers will
not be enjoined from using their installed systems so long as 1OX pays the appropriate damages .
(D.I. 536 at 1, 8-9). "By excluding users who purchased or licensed infringing [lOX] products
before the injunction' s effective date, the injunction greatly minimizes adverse effects on the
public." See i4i, 598 F.3d at 863 (upholding the district court' s finding that the public interest
favored injunctive relief) . To extent that the public may be harmed because there are no current
alternatives to 1OX' s products, both 1OX and Bio-Rad have indicated that they will be releasing
new products soon. As discussed, 1OX' s design-around is largely complete and expected to
work as well as its existing products. See supra Section II.C. Bio-Rad has also asserted that it
expects to release a new system this year "to leap-frog lOX in performance." (D.I. 513 at 8).
Therefore, I find the public interest weighs in favor of granting injunctive relief.
E. Scope of the Permanent Injunction
1. Enjoined Products and Notice of Injunction
Plaintiffs request that 1OX be enjoined from making, selling, offering to sell, using and
importing the accused products and "those no more than colorably different," and from otherwise
infringing the ' 083 , ' 193, and ' 407 patents. (D.I. 513 at 12 & Ex. A). As discussed, Plaintiffs
agree that 1OX may continue to sell consumables, at a 15% royalty, for use with already sold
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systems. (D.I. 536 at 9). Plaintiffs also include a notice provision requiring 1OX to provide a
copy of the injunction to all affiliates, including customers and "any company to which 1OX
intends in the future to directly or indirectly sell" the enjoined products. (D.I. 513 , Ex. A § III).
1OX asserts that Plaintiffs' proposed injunction is overbroad. First, 1OX argues that its
existing instruments and reagents, when combined with its new redesigned chips, will not
infringe the asserted patents. Therefore, 1OX should not be enjoined from making, using, or
selling its existing instruments and reagents for use with the new chips. (D .I. 524 at 17-18). lOX
essentially asks the Court to find that its new redesigned product does not infringe the asserted
patents. An injunction has satisfactory scope if it prohibits infringement by the accused products
and those that are not "colorably different. " United Constr. Prod. , Inc. v. Tile Tech, Inc., 843
F.3d 1363, 1371 (Fed. Cir. 2016) (discussing Federal Rule of Civil Procedure 65(d)). Whether
lOX' s new product is "colorably different" is a separate legal issue that has yet to be addressed
and which may never need to be addressed.
Second, 1OX argues that it should be able to sell its products that do not compete against
Bio-Rad' s ddSEQ product. (D.I. 524 at 18). I do not think that is an appropriate distinction for
purposes of the injunction. The parties are competitors in the droplet market, see supra Section
II.A, and each of lOX' s accused products uses the same infringing droplet system.
Third, lOX argues that Bio-Rad' s notice provision is unduly burdensome and
unnecessary. lOX argues that it should not be required to give notice to "its thousand customers"
and companies to which it intends to sell enjoined products, because customers will not be able
to practice the asserted patents once lOX stops selling its consumables (reagents and chips).
(D.I. 524 at 18). 1OX will not be enjoined, however, from continuing to sell consumables to
customers with existing systems. Given that 1OX almost certainly maintains customer lists, I do
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not think it will be unduly burdensome for 1OX to make reasonable efforts to provide its existing
customers with notice. See Power Integrations, Inc. v. Fairchild Semiconductor Int '!, Inc. , 2008
WL 5210843, at *2 (D. Del. Dec. 12, 2008) (upholding the notice provision of a permanent
injunction). However, I do not see why 1OX should be required to provide notice to customers to
which it "intends in the future" to sell the accused products. lOX will be enjoined from making
any sales to new customers regardless of whether 1OX had intended to make those sales or not.
2. Start Date
1OX requests that if an injunction is entered, it be stayed pending appeal. (D.I. 524 at 1920). Four factors guide the stay analysis: "(l) whether the stay applicant has made a strong
showing that he is likely to succeed on the merits; (2) whether the applicant will be irreparably
injured absent a stay; (3) whether issuance of the stay will substantially injure the other parties
interested in the proceeding; and (4) where the public interest lies." Standard Havens Prod. , Inc.
v. Gencor Indus., Inc., 897 F.2d 511 , 512 (Fed. Cir. 1990) (quoting Hilton v. Braunskill, 481
U.S. 770, 776 (1987)). As discussed, Plaintiffs have shown that they will be irreparably injured
absent an injunction and that the public interest lies in their favor. See supra Sections II.A, II.D.
lOX argues that it is likely to succeed on the merits on appeal. (D.I. 524 at 19-20). I disagree.
1OX merely repeats two arguments from its Rule 50(b) motion for judgment as a matter of law.
(D.I. 510 at 1-9). I addressed those arguments in my opinion denying lOX's motion. (D.I. 559
at 7-10, 13-15). 3 Therefore, I find the factors weigh against a stay.
At minimum, 1OX requests a nine-month sunset period to allow it to finish its designaround and for researchers to complete their ongoing experiments and transition to the new
system. (D.I. 524 at 20-22). Again, because customers with existing systems will be allowed to
Although 1OX raises a reasonable argument under the doctrine of equivalents, see infra p. 17, I do not
trunk it has made a "strong showing" of likely success on appeal.
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continue to use those systems, the injunction does not need to account for ongoing experiments.
As for the design-around, 1OX stated in September 2018 that the design was complete, and in
January 2019 that it intended for the new product to be on sale in April 2019. It is now July
2019. It would follow that lOX is ready, or nearly ready, to sell its design-around. See supra
Section II.C. To allow 1OX an additional nine months would be a windfall. Therefore, I do not
think a sunset period is warranted.
Thus, I will deny the request for stay pending appeal. However, I will delay the effective
date of the permanent injunction by two weeks from its entry in order to give the Court of
Appeals an opportunity to consider any expedited appeal relating to the denial of the stay.
ATTORNEYS' FEES AND ENHANCED DAMAGES
A. Attorneys' Fees
"The court in exceptional cases may award reasonable attorney fees to the prevailing
party." 35 U.S.C. § 285. " [A]n ' exceptional' case is simply one that stands out from others with
respect to the substantive strength of a party' s litigating position (considering both the governing
law and the facts of the case) or the unreasonable manner in which the case was litigated.
District courts may determine whether a case is ' exceptional' in the case-by-case exercise of
their discretion, considering the totality of the circumstances." Octane Fitness, LLC v. ICON
Health & Fitness, Inc. , 572 U.S. 545, 554 (2014). In assessing the totality of the circumstances,
the Court may consider "frivolousness, motivation, objective unreasonableness (both in the
factual and legal components of the case) and the need in particular circumstances to advance
considerations of compensation and deterrence." Id. at 554 n.6. The party seeking fees must
show that a case is exceptional by a preponderance of the evidence. Id. at 557-58 .
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Plaintiffs argue that this is an exceptional case because 1OX willfully infringed, had
unusually weak defenses, and engaged in substantial litigation misconduct. (D.I. 513 at 13-22).
For the following reasons, I do not find this case to be exceptional.
1. Willful Infringement
Plaintiffs argue that the jury' s willfulness finding favors awarding fees, particularly given
l0X's "contrived and baseless" attempts to rebut willfulness. (D.I. 513 at 13-14).
Although willfulness is a factor relevant to an exceptional case determination, it is not
dispositive. See Octane Fitness, 572 U.S. at 554 (" [T]here is no precise rule or formula for
making [exceptional case] determinations, but instead equitable discretion should be exercised")
(internal citation and quotation marks omitted); Energy Heating, LLC v. Heat On-The-Fly, LLC,
889 F.3d 1291 , 1307 (Fed. Cir. 2018) (citing case law from 1986 requiring "an explanation of
why the case was not exceptional in the face of an express finding of willful infringement").
Plaintiffs focus on testimony from Dr. Ness, co-founder and former Chief Technology
Officer of l0X, which l0X presented as part of its rebuttal to willfulness. (D.I. 513 at 13-14).
Dr. Ness initially stated that he formed the personal view that l0X' s products, because of their
high number of partitions, did not infringe the asserted patents. Tr. at 930:8-18. He later
admitted that he did not have any belief as to whether the products infringed while at 1OX. Id. at
934:22-935:5. Therefore, he could not testify as to l0X' s state of mind to rebut Plaintiffs'
allegation of willful infringement. Dr. Ness ' s testimony does not support awarding fees. At
most, Plaintiffs have shown that the testimony was irrelevant to willfulness, an issue for which
Plaintiffs bore the burden of proof. That does not make this an exceptional case.
2. Strength of Defenses
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Plaintiffs assert that 1OX relied on unsupportable invalidity and non-infringement
defenses. Plaintiffs take a "kitchen sink" approach, arguing that none of the following invalidity
theories were viable: (1) the ' 193 and ' 407 patents are anticipated by, or obvious in view of, the
Quake reference, (2) the ' 193 and '407 patents are not enabled, and (3) the ' 083 patent is
indefinite. Plaintiffs, however, did not move for summary judgment on any of l0X' s invalidity
positions presented at trial, which suggests that Plaintiffs did not always view those positions as
frivolous. (D.I. 524 at 13); see also Stragent, LLC v. Intel Corp., 2014 WL 6756304, at *5 (E.D.
Tex. Aug. 6, 2014). Plaintiffs further assert that l0X did not have any legally cognizable noninfringement theories. I do not think Plaintiffs have shown that l0X' s theories were frivolous ,
unreasonable, or brought in bad faith.
First, Plaintiffs address 1OX' s theory that the ' 193 and ' 407 patents are invalid in view of
the Quake reference. Plaintiffs assert that the same theory was previously rejected by the Patent
Office, which declined to institute an IPR on either patent and upheld the validity of both on ex
parte reexamination. (D.I. 513 at 15; D.I. 26 at 2; D.I. 378). Although the Patent Office did
consider invalidity arguments based on Quake, 1OX asserts that its theories at trial relied on
Quake in combination with other references not considered by the Patent Office. (D.I. 524 at
23). It was not unreasonable for 1OX to argue invalidity based on those different combinations.
Plaintiffs also argue that l0X' s expert, Dr. Chang, presented "half-baked" invalidity
arguments and made no effort to show reasonable expectation of success in combining the prior
art references. (D.I. 513 at 15). I disagree. Dr. Chang provided reasonable explanations for his
theories and gave testimony relating to reasonable expectation of success. Tr. at 968:20-1017:8;
id. at 983:20-984:14, 998 :6-23 , 999 :1-20.
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Second, Plaintiffs address 1OX' s argument that Dr. Ismagilov, an inventor of the asserted
patents, copied portions of those patents from Quake. (D.I. 513 at 15-16). The Court allowed
lOX to proceed with its copying theory for the limited purpose of impeaching Dr. Ismagilov' s
credibility as witness. (D.I. 429). Plaintiffs argue that 1OX blatantly ignored the Court' s order
and attempted to use the copying as direct evidence of invalidity. During openings, 1OX stated
that the language in the asserted patents was "copied essentially verbatim" from Quake. Tr.
99:24-101 :23 . 1OX failed to mention that the copying only related to Dr. Ismagilov' s credibility,
despite representing that it would be "very explicit." Id. at 7:20-24, 108:20-24. While
questioning Dr. Ismagilov, however, lOX did make clear that it was addressing "the issue of
credibility." Id. at 306:18-327:3, 328 :6-330:4. The Court also followed lOX' s questioning with
a limiting instruction. Id. at 327:4-328:5 (" [A]ll this testimony has been for a very limited
purpose and it has only to do with . .. evaluating Professor Ismagilov' s credibility in his
testimony."). Therefore, although close, I do not think lOX crossed the line with respect to its
Third, Plaintiffs address lOX' s enablement and indefiniteness theories. (D .I. 513 at 1617). 1OX argued that the ' 193 and ' 407 patents are not enabled because they fail to teach
reactions outside the microfluidic chip and the necessary surfactants, and that the ' 083 patent is
indefinite because the claimed surface tension relationship is impossible to measure. Plaintiffs
rely on select citations from the trial record to argue that lOX's positions were frivolous or
unreasonable. (D.I. 513 at 16-17). I do not find Plaintiffs' arguments persuasive. Regarding
enablement, Plaintiffs also imply that 1OX acted in bad faith by presenting evidence that the
claimed inventions required "bushy" surfactants. (Id. at 16). Plaintiffs assert that the "bushy"
language was not presented during discovery and that 1OX used new images at trial depicting its
Case 1:15-cv-00152-RGA Document 568 Filed 07/24/19 Page 16 of 23 PageID #: 44683
surfactants as "bushier" than in internal documents prepared before litigation. (D.I. 513 at 16).
Plaintiffs do not argue that 1OX failed to disclose their legal theory of lack of enablement of the
necessary surfactants. (Id. at 16-17). I do not think the use of the term "bushy" and related
demonstratives at trial indicates bad faith.
Fourth, Plaintiffs argue that lOX had no non-infringement defenses. (D.I. 513 at 17-18).
1OX presented non-infringement arguments for every accused product and asserted patent. Tr. at
1526:24-1536:7.4 Regardless, if true, the fact that lOX did not have a non-infringement theory
for each of the twelve pairings between asserted patents and accused products does not make this
an exceptional case. 5 lOX's primary defense was invalidity.
The theories that 1OX did present were not unreasonable. I denied summary judgment of
infringement of the '407 patent because there was a material dispute of fact as to "whether the
thermal cycler is part of the ' microfluidic system."' (D.I. 351 at 4). I reiterated that finding in
my Daubert opinion (D.I. 361 at 5), and later denied Plaintiffs' Rule 50(a) motion, Tr. at 1338:624. I do not think an argument that survived multiple challenges should be considered meritless.
For the ' 193 patent, 1OX argued that the Chromium Genome/Exome product did not meet
the "autocatalytic reaction" limitation because the Landlord reaction was not "autocatalytic." Tr.
at 1120:25-1121:3 ; (D.I. 510 at 9-10). Despite having found that lOX relied on an incorrect
reading of my claim construction, I do not think lOX' s view was unreasonable. (D.I. 559 at 1213).
Plaintiffs assert, without citation, that 1OX had no defense for infringement of the ' 193 patent by the
GemCode Long Read product. (D.I. 513 at 18). That does not appear to be true. See Tr. at 1533:2-1534: 12
(arguing the accused products do not meet the microfluidic system limitation in the ' 193 patent).
Six products were accused of infringing the '083 patent, two products were accused of infringing the ' 193
patent, and four products were accused of infringing the '407 patent. (D.I. 476).
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For the '083 patent, 1OX applied its indefiniteness theory to argue that the accused
products did not meet the claimed surface tension relationship because that relationship could not
be measured. Although I disagree, I do not think that argument was unreasonable. (See D.I. 559
at 10-11 , 27). lOX also argued that the products with Kynar did not meet the "non-fluorinated
microchannel" limitation. That theory, at least regarding literal infringement, clearly had merit
as the jury found no literal infringement. (D.I. 476 at 3). Further, although 1OX lost under the
doctrine of equivalents, I noted on several occasions that 1OX had raised legitimate concerns
regarding vitiation of the "non-fluorinated" limitation. Tr. at 379:3-8, 438:1-11 ; (D.I. 559 at 710).
3. Litigation Misconduct
" [L]itigation misconduct and unprofessional behavior may suffice, by themselves, to
make a case exceptional under§ 285." Monolithic Power Sys. , Inc. v. 02 Micro Int '! Ltd., 726
F.3d 1359, 1366 (Fed. Cir. 2013). "[M]any forms of misconduct can support a district court's
exceptional case finding, including ... litigation misconduct; vexatious, unjustified, and
otherwise bad faith litigation; a frivolous suit; or willful infringement." Id. Plaintiffs argue that
1OX engaged in a pattern of misconduct including, violation of the protective order, pursuit of
"baseless positions," and misrepresentations during trial. (D.I. 513 at 18-22).
It is undisputed that 1OX violated the protective order. (D.I. 524 at 26). I already
addressed the issue and determined that the violation was not done in bad faith. (D.I. 350 at
Plaintiffs make much of the fact that at the hearing over four months before trial, 1OX represented that the
violating attorney played a key role in its damages case. (D.1. 350 at 20:24-2 I :9). As Plaintiffs note, that attorney
did not visibly participate in the trial. What Plaintiffs do not mention is that I OX switched lead trial counsel
between the hearing and the trial. Regardless, 1OX asserts that the attorney remained involved in preparing damages
arguments. (D.1. 524 at 26).
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As for the "baseless positions," Plaintiffs cite to several instances where the Court ruled
against lOX. (D.I. 513 at 21). I do not think those instances rise to the level of litigation
misconduct. Both parties, in the name of zealous advocacy, made innumerable arguments over
the course of this litigation, some which were undoubtedly weak. The fact that Plaintiffs were
able to identify a handful of 1OX' s weaker arguments does not show that 1OX engaged in a
pattern of misconduct.
Lastly, Plaintiffs point to several statements made by l0X's counsel during trial that
allegedly mispresented key facts. (D.I. 513 at 21-22). Only two statements, both during closing,
could possibly be significant-(1) "there' s evidence in the record specifically from PTX 333 at
Page 66 that the [lOX] chips come in from Germany," Tr. at 1532:4-6, and (2) "Quake expressly
says the fluids used in the invention may contain additive or surfactants such as fluorinated oil,"
id. at 1541 :3-6.
I already addressed the Germany statement at length. Id. at 1572:2-1587:20. Plaintiffs
argue that page 66 of PTX 333 was not discussed at trial or in evidence and was excluded by the
Court' s order on motions in limine. (D.I. 513 at 21). PTX 333 appears to be a document from
other unrelated actions, which was likely within the scope of my order granting Plaintiffs'
motion in limine to exclude reference to those actions. Tr. at 1577:2-10, 1587:16-18; (D.I. 371 at
1). However, there seemed to be a great deal of confusion over whether page 66 specifically had
been admitted into evidence and I determined that neither party had acted improperly. Tr. at
Regarding the Quake statement, Plaintiffs argue that 1OX mischaracterized the evidence
because Quake never uses fluorinated oil as a carrier fluid, "which is a crucial distinction from
the invention." (D.I. 513 at 21). l0X's expert, Dr. Chang, testified that Quake "mentions
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fluorinated oil," but does not disclose its use as a carrier fluid. He opined, however, that it would
have been obvious to a person of ordinary skill in the art to use it as a carrier fluid. Tr. at
981: 12-18. I do not think 1OX' s statements in closing are inconsistent with the testimony from
Dr. Chang or an intentional misrepresentation of the record.
Therefore, considering the totality of the circumstances, Plaintiffs have failed to meet
their burden of showing that this is an exceptional case warranting attorneys ' fees .
B. Enhanced Damages
"[T]he court may increase the damages up to three times the amount found or assessed. "
35 U.S.C. § 284. Section 284 "provid[es] that punitive or increased damages could be recovered
in a case of willful or bad-faith infringement." Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct.
1923 , 1930 (2016) (quotation marks omitted). "The Halo test merely requires the district court
to consider the particular circumstances of the case to determine whether it is egregious."
Presidio Components, Inc. v. Am. Tech. Ceramics Corp., 875 F.3d 1369, 1382 (Fed. Cir. 2017).
Although not required, the court may consider the Read factors as part of its analysis.
Presidio, 875 F.3d at 1382 (citing Read Corp. v. Portee, Inc., 970 F.2d 816, 827 (Fed. Cir.
1992)). The Read factors include: (1) whether the infringer deliberately copied the ideas or
design of another, (2) whether the infringer, when he knew of the other' s patent protection,
investigated the scope of the patent and formed a good-faith belief that it was invalid or that it
was not infringed; (3) the infringer' s behavior as a party to the litigation; (4) defendant's size and
financial condition; (5) closeness of the case; (6) duration of defendant' s misconduct; (7)
remedial action by defendant; (8) defendant's motivation for harm; and (9) whether defendant
attempted to conceal its misconduct. 970 F.2d at 827.
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Plaintiffs do not address Read factors one or nine. (See D.I. 513 at 23). For factor one,
lOX argues that testimony from Drs. Ness and Hindson7 shows that 1OX did not rely on the
asserted patents to develop its products. (D.I. 524 at 28). In view of the jury's willful
infringement verdict, which I upheld on JMOL, it is not clear to what extent 1OX considered the
asserted patents while developing its accused products. (See D.I. 559 at 22). However, it is clear
that Plaintiffs have not identified any evidence of copying. For factor nine, it is undisputed that
the accused products were freely available for purchase. (Id.). Thus, I find both factors one and
nine weigh against enhanced damages.
For Read factor two, Plaintiffs argue that the jury found willful infringement and that
lOX had no good-faith belief of non-infringement. (D.I. 513 at 23). I agree that, in view of the
willful infringement verdict, l0X did not have a good-faith belief of non-infringement. (See D.I.
559 at 22). Thus, I find factor two weighs in favor of enhanced damages.
For Read factor three, Plaintiffs argue that l0X engaged in extensive litigation
misconduct. (D.I. 513 at 23). As discussed, I do not think lOX's behavior rose to the level of
misconduct. See supra Section III.A.3. Thus, I find factor three weighs against enhanced
For Read factor four, Plaintiffs argue that 1OX is the market leader and has made
significant revenues from its infringing products. (D.I. 513 at 23). 1OX admits that it has made
tens of millions of dollars in yearly revenue but asserts that it has yet to turn a profit. (D.I. 524 at
29 (citing D.I. 246, Ex. 10 at C-1 (l0X quarterly financials from 2015-2017))). Thus, I find
factor four is neutral.
Dr. Hindson is co-founder and Chief Scientific Officer of 1OX. (D.l. 559 at 18).
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For Read factor five, Plaintiffs argue that 1OX presented weak defenses and that the jury
quickly ruled in their favor. 7 (D.l. 513 at 23). As discussed, I do not think l0X's defenses were
so weak as to be meritless. See supra Section III.A.2. In fact, the jury found in 1OX' s favor on
literal infringement of the '083 patent for the products with Kynar. Id. Thus, I find factor five
weighs against enhanced damages.
For Read factor six, Plaintiffs again argue that 1OX engaged in litigation misconduct,
which persisted throughout the case. (D.I. 513 at 23). Thus, for the same reasons as for factor
three, I find factor six weighs against enhanced damages.
For Read factor seven, Plaintiffs argue that 1OX has taken no post-trial remedial actions.
(Id.) . It is undisputed that 1OX is actively working on a design-around product. See supra
Section II.C. On the other hand, despite lOX' s representations, nothing has been launched.
Thus, I find factor seven is neutral.
For Read factor eight, Plaintiffs argue that the market for droplets is rapidly expanding
and has the potential to be worth up to a billion dollars. (D.I. 513 at 23). I do not think evidence
of market incentives is probative of motivation for harm warranting enhanced damages. "[T]he
fact that the infringer acted pursuant to a financial motive does not distinguish this case from the
garden-variety infringement case." Idenix Pharm. LLC v. Gilead Scis., Inc., 271 F. Supp. 3d
694, 702 (D. Del. 2017), appeal pending, No. 18-1691 (Fed. Cir.) (citing Sprint Commc 'ns Co.
L.P. v. Time Warner Cable, Inc., 2017 WL 978107, at* 14 (D. Kan. Mar. 14, 2017)); see also
Nox Med. Ehfv. Natus Neurology Inc., 2018 WL 6427686, at *4 (D. Del. Dec. 7, 2018) (finding
evidence of "harm incidental to direct business competition" did not show "motivation for
harm"). Thus, I find factor eight is neutral.
I do not think the length of jury deliberation is a meaningful metric.
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On balance, the Read factors weigh against enhanced damages. Plaintiffs essentially
repeat the arguments they made under§ 285 . Just as those arguments did not persuade me that
this case is exceptional, they do not persuade me that the facts of this case are egregious. 8
Therefore, despite the jury' s finding of willful infringement, I do not think enhanced damages
SUPPLEMENTAL DAMAGES AND INTEREST
Plaintiffs seek prejudgment supplemental damages and pre- and post-judgment interest.
(D.I. 513 at 23-29). 1OX only objects as to the interest rates that should apply. (D.1. 524 at 30).
The jury's damages award covered lOX sales through July 1, 2018. (Id. at 23). The
supplemental damages account for the sales made from July 1, 2018 through the date of the
judgment, November 13, 2018. (Id. at 24). The supplemental damages shall be calculated based
on the jury' s implied 15% royalty rate. 9 (D.1. 513 at 25 ; D.I.515111).
Plaintiffs also seek interest on their damages. Prejudgment interest should be awarded
"absent some justification for withholding such an award. " Gen. Motors Corp. v. Devex Corp. ,
461 U.S. 648, 657 (1983) . The only dispute is over the interest rate and compounding period
that should apply. Plaintiffs argue for the prime rate, compounded quarterly. (D.I. 513 at 2528). 1OX argues for the I-year Treasury constant maturity rate, compounded annually. (D.I. 524
at 30; D.I. 52713). " A trial court is afforded wide latitude in the selection of interest rates and
may award interest at or above the prime rate." Uniroy al, Inc. v. Rudkin-Wiley Corp. , 939 F.2d
1540, 1545 (Fed. Cir. 1991) (citations omitted). The decision to award compound interest is also
within the trial court' s discretion. Rite-Hite Corp, 56 F.3d at 1555 ("It has been recognized that
I gave the jury a willfulness instruction that did not require any finding of "egregiousness" or the
equivalent. (D.I. 470 at 29).
The jury' s lump sum damages award is based on Plaintiffs' proposed 15% rate . (D.I. 476); Tr. at 611 :20613:2.
Case 1:15-cv-00152-RGA Document 568 Filed 07/24/19 Page 23 of 23 PageID #: 44690
an award of compound rather than simple interest assures that the patent owner is fully
compensated.") (citation and quotation marks omitted).
This Court has noted that "the prime rate best compensate[s] a patentee for lost revenues
during the period of infringement because the prime rate represents the cost of borrowing money,
which is a better measure of the harm suffered as a result of the loss of the use of money over
time." Finjan Software, Ltd. v. Secure Computing Corp., 2009 WL 2524495, at *13 (D. Del.
Aug. 18, 2009), ajf'd in part, rev 'din part on other grounds, 626 F.3d 1197 (Fed. Cir. 2010)
(citations and quotation marks omitted). As for the compounding period, the prior license
agreements relied on by the parties' experts specify quarterly payments with interest
compounded quarterly. (D.I. 513 at 28). Therefore, I find prejudgment interest should be
calculated based on the prime rate, compounded quarterly.
Post-judgment interest is governed by 28 U.S.C. § 1961. Section 1961(a) provides,
"Such interest shall be calculated from the date of the entry of the judgment, at a rate equal to the
weekly average 1-year constant maturity Treasury yield, as published by the Board of Governors
of the Federal Reserve System, for the calendar week preceding the date of the judgment."
Accordingly, the Court will award Plaintiffs: (1) prejudgment supplemental damages for
the period from July 1 to November 13, 2018, based on a 15% royalty, (2) prejudgment interest
at the prime rate, compounded quarterly, and (3) post-judgment interest at the Treasury bill rate
as defined in§ 1961(a), compounded annually. The prejudgment interest applies to the total
prejudgment damages, including supplemental damages. The post-judgment interest applies to
the total prejudgment damages plus prejudgment interest.
A separate order will be entered.
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