Ideas Not Rising to the Level of Protectable IP Do Not Trigger an Obligation to Assign

In Bio-Rad Laboratories, Inc. v. ITC, No. 2020-1785, (Apr. 29, 2021), the Federal Circuit affirmed the ITC’s decision that Bio-Rad infringed three patents owned by 10X Genomics by importing and selling microfluidic systems.

Bio-Rad presented an ownership defense to infringement—that it co-owned and therefore could not infringe—the asserted patents. Inventors on 10X Genomics’ asserted patents worked at Bio-Rad before inventing the claimed subject matter. While employed by Bio-Rad, these inventors assigned to Bio-Rad their “entire right to any IP” developed “during the term of [their] employment.” Slip op. at 27, 28. Bio-Rad asserted that the inventors were obligated to assign their co-ownership interest to Bio-Rad because they developed ideas while employed by Bio-Rad that contributed to their post-employment inventions.

On appeal, the Federal Circuit rejected this argument, reasoning that the inventors’ assignment obligation was “limited to subject matter that itself could be protected as intellectual property before the termination of employment.” Id. at 28. Here, the inventors’ ideas developed at Bio-Rad were not protectable IP but rather were “at a level of generality” and “involve[d] nothing more than elements in the already-published prior art.” Id. at 31.