Bio-Rad Laboratories, Inc. v. International Trade Commission, No. 20-1785 (Fed. Cir. Apr. 29, 2021)
In Bio-Rad, the Federal Circuit affirmed a decision of the International Trade Commission holding that the contributions of two of a company’s former employees did not entitle the former employer to co-ownership of a patent, where the conception date of the patented invention occurred after the employees left the company.
10X Genomics, Inc. filed a complaint against Bio-Rad Laboratories, Inc. with the International Trade Commission under the Tariff Act of 1930, which allows U.S. companies to sue competitors for unfair import practices, often by importing products that infringe U.S. intellectual property rights. 10X cited Bio-Rad’s import and sale of microfluidic systems for gene sequencing, which infringed several of 10X’s patent holdings. Bio-Rad argued that based on assignments by two of the 10X inventors, who had previously been Bio-Rad employees, it co-owned the patents in question, and could therefore not be liable for infringement. Bio-Rad argued that several ideas that contributed to the patents in question were developed during the employees’ time at the company. However, the uncontested date of conception of the invention was nine months after the inventors’ employment ended. The ITC concluded that Bio-Rad did not have ownership interest in the 10X patents, as the assignments only covered work while employed at Bio-Rad. Bio-Rad appealed the decision of the ITC before the Federal Circuit.
The Federal Circuit upheld the decision of the International Trade Commission that the assignment did not cover ideas developed during employment, simply because the ideas contributed to a post-employment patentable invention. In other words, ideas that contribute to an invention that were devised before an invention was conceived cannot be considered an inventive contribution to that invention, while ideas developed after the conception of an invention may be part of the inventive concept. In addition, the Federal Circuit determined that the ideas cited by Bio-Rad were too general to support joint inventorship, and further, because many of the ideas were published well before the conception of the invention in question, they could not be considered part of the inventive concept. Therefore, because Bio-Rad was not deemed a co-owner of the patents, they were held liable for infringement.
Where the undisputed conception date of an invention occurred after an employee left their company, the employee’s pre-conception work at the company cannot be considered an inventive contribution entitling the company to co-ownership of the patented invention.