June 13, 2021

Volume XI, Number 164

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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. 

© 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 125
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About this Author

Associate

Gordon Wright focuses on patent litigation, patent prosecution, and proceedings before the U.S. Patent and Trademark Office (USPTO). He has worked with a variety of technologies in the mechanical and electrical fields, including aerospace, agricultural, home appliance, medical device, and industrial manufacturing. 

Gordon has experience in several stages of litigation and USPTO proceedings. Notably, he has assisted in developing infringement and invalidity contentions, drafting motions, and conducting discovery.

While...

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Kara Specht Patent Litigation Attorney Finnegan, Henderson, Farabow, Garrett & Dunner Law Firm Atlanta GA
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Kara Specht focuses on patent litigation before district courts and before the International Trade Commission (ITC). Her practice covers a wide range of electronic and electrical technology areas related to computers, consumer electronics, and computer-implemented business methods.

Kara has experience in all aspects of patent litigation before district courts, the ITC, and the Federal Circuit. Before district court and the ITC, Kara has experience from both a plaintiff and defendant perspective, ranging from pre-filing planning and strategy,...

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Elizabeth Ferrill Patent Attorney Finnegan Law Firm
Partner

Elizabeth Ferrill is an “undisputed expert on design patents” who is “always updated and enlightening others with her deep knowledge,” “very involved in the design bar,” and “gives her clients an outstanding service” as noted in Intellectual Asset Management Patent 1000. She focuses her practice on all aspects of design patents, including prosecution, counseling, post-grant, and litigation.

Elizabeth counsels clients who hold design patents as well as those accused of infringement. She has experience with design patents related to consumer and industrial products, medical...

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