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of words, like barcodes, gel beads. It's actually how they're all put together, which is really 

important for driving the performance of the system."). Because there is no evidence that Dr. 

Heredia had an idea of how the elements that he allegedly conceived of would be put together to 

achieve the desired result, he made no significant contribution. 

Absent evidence that Dr. Heredia' s liquid bead contributed anything of significance to 

the patented technology ( or any technology), Bio-Rad cannot demonstrate clearly and 

convincingly that Dr. Heredia is a joint inventor. 

B. Ownership 

As an affirmative defense to lOX's allegations of infringement, Bio-Rad claims 

ownership of each of the asserted patents in this investigation. lOX disputes Bio-Rad's claims of 

ownership, and Staff agrees with 1 OX. Although, in briefing the matter, the parties have lost 

their way in arguments concerning the law of inventorship, this is a contract dispute that boils 

down to a simple question: is there evidence that the idea embodied in the asserted patents was 

conceived by Drs. Hindson and Saxonov during the period in which they were employed by 

Quanta/Life and Bio-Rad? If the answer is yes, then as a matter of contract law, the asserted 

patents belong to Bio-Rad. If the answer is no, the asserted patents belong to l0X. 

1. Legal Standards 

"It is elementary that inventorship and ownership are separate issues." Beech Aircraft 

Corp. v. EDO Corp., 990 F.3d 1237, 1248 (Fed. Cir. 1993). Accord, Israel Bio-Eng'g Project v. 

Amgen, Inc., 475 F.3d 1256, 1263 (Fed. Cir. 2007) ("[I]ssues of patent ownership are distinct 

from questions of inventorship."). Ownership "is a question of who owns legal title to the 

subject matter in a patent," while "inventorship is a question of who actually invented the subject 

matter claimed in a patent." Beech, 990 F.2d at 1248. Bio-Rad confuses the issue by attempting 

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to use the legal analysis that applies to joint inventorship to resolve its ownership dispute with 

1 OX. The distinction is illustrated in this case: the question whether Dr. Heredia should be 

treated as a co-inventor is one of inventorship; but there is no question that Drs. Hindson and 

Saxonov are inventors on the asserted patents. The question with respect to them is one of 

ownership, i.e., do their contractual agreements with Bio-Rad and QuantaLife require that the 

asserted patents be assigned to Bio-Rad? See FilmTec Corp. v. Hydranautics, 982 F.2d 1546, 

1550 (Fed. Cir. 1992) (stating that in a case that "turns on" "ownership", the court only needs "to 

decide whether the invention ... was made or conceived" during the period of employment). 22 

Bio-Rad's ownership claims arise solely as the result of the contract terms governing the 

employment ofDrs. Hindson and Saxonov, who are among the named inventors of the asserted 

P,atents. In general, contract terms must be construed under state law. Board of Trustees of 

Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 583 F.3d 832, 841 (citing Jim 

Arnold Corp. v. Hydrotech Sys., 109 F.3d 1567, 1572 (Fed. Cir. 1997)). The exception to this 

22 Bio-Rad asserts that I adopted joint inventorship as a "guide" to ownership. RIB at 20 (citing 

Order No. 34). To the contrary, on reconsideration, Order. No. 41 clarified that "Order No. 34 

did not conclusively establish the legal framework for deciding Bio-Rad's ownership claim." 

Order No. 41 at 2. In affirming denial of lOX's motion for summary determination on the 

ownership issue, Order No. 41 recognized that the "legal standard for addressing the ownership 

issue" continued to be disputed, and that "the parties' dispute would be better resolved after the 

conclusion of the evidentiary hearing, with the benefit of a complete evidentiary record regarding 

the contractual relationships between the parties and the contributions of the inventors." Id. As 

stated in Order No. 41, doubt concerning the facts and the law precluded a ruling on summary 

determination, including on the applicable legal standards. See also Gen 'l Elec. Co. v. Wilkins, 

No. CV F 10-0674 LJO JLT, 2012 WL 3778865(£.D. Cal. 2012) at *19 note 3 ("[T]his Court is 

not bound by its interlocutory orders, which are not final, and may reconsider or modify them at 

any time.") (quoting Marconi Wireless Telegraph Co. v. United States, 320 U.S. 1, 63 (1943); 

City of Los Angeles, Harbor Div. v. Santa Monica Baykeeper, 254 F.3d 882(9th Cir. 2001)). 

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rule covers matters that are "intimately bound up with the question of standing in patent cases," 

such as "whether contractual language effects a present assignment of patent rights, or an 

agreement to assign rights in the future." Id. No such question is presented-here. 23 This is 

important because the standard for determining joint ownership is a matter of patent law 

determined by federal courts, while the federal courts defer to state law on questions of contract. 

"[Q]uestions of contract law are matters of state law, questions related to patent law are 

interpreted according to federal law." General Elec. Co. v. Wilkins, No. CV F 10-0674 LJO JLT, 

2012 WL 3778865 (E.D.Cal. 2012). 

Confusing the two issues leads to error, as described by the federal court in 

STMicroelectronics, Inc. v. Harari, Case No. C 05-4691 JF, 2006 WL 2032580 (N.D. Cal. 

2006). 24 In that case, the court addressed a dispute similar to the facts here: a company sued its 

former employee alleging that certain inventions were subject to a contract in which the 

employee agreed to assign inventions made during the term of his employment. Id. at *1-2. The 

district court initially found federal jurisdiction based on a substantial question of federal patent 

law. Id. at *2. The court reversed its decision on reconsideration, holding that"[ o ]wnership and· 

inventorship issues are completely separate issues," and that the resolution of the ownership 

dispute depended entirely on the terms of the employment contract and the question of when "the 

23 Obviously, if Bio-Rad owns the patents, l0X lacks standing to assert them. But this is not a 

case in which there is a dispute concerning a present vs. a future assignment of rights, or how the 

actual assignment of patent rights among multiple parties affects standing. Interpretation of the 

contractual provisions, not application of the law of standing, determines the outcome in this 

instance. 

24 Harari is an unpublished decision. It is cited here not as precedent but as an instance in which 

a court mistakenly applied patent law inventorship principles to the issue of ownership, and 

thereafter recognized and corrected its mistake. 

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inventions described in the subject patents were 'made or conceived."' Id. at * 10-11. This 

"presen[ted] a factual question that does not implicate a substantial question of patent law," the 

court ruled, sending the case back to state court. Id. at *12-14. 

The Harari court explicitly rejected the idea that determining the "inventive 

contribution" made by the employee mattered at all in deciding whether the company owned the 

inventions made by him. "It is unclear," the court lamented, "how Defendants, and subsequently 

the Court, came to inject the phrase 'inventive contribution' into the discussion ofHarari's 

contractual disclosure and assignment obligations. The phrase does not appear in the Inventions 

Agreement .... " Id. at *8. Because the employment agreements required disclosure and 

assignment of all inventions and rights to inventions made during the term of employment, 

"there was no need to inquire into Harari's precise inventive contribution." Id. at *11. 

Harari relies onAT&Tv. Integrated Network Corp., 972 F.2d 1321 (Fed. Cir. 1992), a 

precedential Federal Circuit decision involving similar facts, in which the Federal Circuit 

reversed a district court decision asserting jurisdiction and remanded with instructions to send 

the case to a state court. Id. at 1325. InAT&T, four employees left AT&T to join another firm, 

INC, "as a team." Id. at 1323. The employees were subject to agreements giving AT&T 

assignment rights in inventions made or conceived, either solely or jointly with others, during the 

course of their employment. Id. 

The patent in question was filed about a year and a halflater, naming the four former 

AT&T employees as inventors, and disclosing that the application for the patent was assigned to 

INC. Id. AT&T sued alleging that the invention in question had been disclosed in a proprietary 

[AT&T] memorandum prepared by one of the four employees during the period of employment. 

Id. AT&T alleged contract and tort claims. INC removed the case to federal district court, but 

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AT&T moved the district court to remand the case back to state court, arguing that it would seek 

to prove that the invention was conceived during the period of employment by AT&T, and that 

this did not present "a substantial question of federal patent law." Id. Accord, e.g., ReCor Med. 

Inc. v. Warnking, C.A. No. 7387-VCN, 2013 Del. Ch. LEXIS 142 at *34 (Del. Ch. Ct. May 31, 

2013) ("[T]he Court can see no reason why patent law should displace contract law here." (citing 

AT&]).) 

The district court kept the case but on appeal, the Federal Circuit held that it should be 

remanded to the state court for decision. Id. at 1324. The Circuit explained that "conception of 

inventions, as used in the employment agreement, is [not] solely a technical question of patent 

law." Id. Specifically, the Circuit opined that the moment "when an invention was conceived 

may be more a question of common sense than of patent law." Id. The Circuit said the state 

court was "free to look for guidance to the law on the conception of inventions as we may have 

explained it, but in light of the different facets of the word conceive, indeed of inventions, this 

may well not be determinative of the outcome .... " Id. at 1325 (quoting Ingersoll-Rand Co. v. 

Ciavatta, 542 A.2d 879 (1988). Accord, e.g., Motorola, Inc. v. Lemko Corp., No. 08 C 5427, 

2012 WL 74319, at *4-5 (N.D. Ill. Jan. 10, 2012) ("the parties did not necessarily use terms in 

their agreements in the same way in which they are defmed in patent law"). 

While the jurisdictional question addressed in AT&T does not arise in a case brought 

pursuant to section 337, the principle is the same: where an action sounding in contract is 

brought, the resolution of the contract dispute should be decided based on state law, even in a 

patent case. 25 A state court may look to federal law for "guidance" on questions of inventorship 

25 Ingersoll-Rand states that it is the employer's burden to establish that conception occurred 

during the period of the employment contract. 542 A.2d at 894. Accord, e.g., ReCor, 2013 Del. 

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where that is appropriate, but an action for breach of contract remains a question of state law and 

does not arise under federal patent law. AT&T, supra. In the case before me, as in AT&T, the 

contract requires determination of when the idea that gave rise to the patents-in-issue was 

conceived. The time of conception, as the Circuit noted in AT&T, is not a patent law issue. 

The parties in this case fall into the same trap bemoaned by the court in Harari to the 

extent that they argue about whether the concept of "complete inventorship" applies to Drs. 

Hindson and Saxonov. The notion of "complete inventorship" has no application with respect to 

ownership under the pertinent contracts. These contracts, like the contracts in Harari, are silent 

as to any inventive contribution, complete or incomplete, made by an employee. Under the 

unambiguous contract provisions, see infra, the only fact that matters is the actual time when the 

inventors conceived of the inventive idea embodied in the asserted patents. See also Motorola, 

2012 WL 74319 at *5 ("[T]he terms 'developed or conceived ... during the term ofmy 

employment' are not ambiguous. Their meaning is sufficiently clear that a jury could simply 

examine evidence of when the inventions or ideas embodied in the Lemko patents first came into 

existence in order to determine whether Pan and Labun's actions were within the scope of the 

contractual term."). 

2. Discussion 

The real dispute involves defining the inventive concept in the asserted patents. Bio-Rad 

has the burden to identify the idea of which it claims ownership. It has not done so. Instead, it 

has briefed the matter as if it owned a share of the patents because it could trace some elements 

of the asserted patents to work done at Quanta/Life and Bio-Rad. This is inconsistent with the 

Ch. LEXIS 142 at *32 (employer "must show by a preponderance of the evidence that it is 

entitled to the relief it requested"). 

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contracts: 

- Bio-Rad, as lOX freely concedes, owns many ideas conceived by Drs. Hindson 

and Saxonov, but it does not own the idea for the specific arrangement of elements claimed in 

the asserted patents, as discussed herein, because there is insufficient evidence that that idea was 

conceived during the period of employment. 

As described by Dr. Hindson, the invention claimed in the asserted patents is complex 

and consists of many elements. CX-OOOlC (Hindson WS) at Q/A 88. The inventive idea, which 

emerged from many other ideas (some of which clearly were in the prior art), is to combine these 

elements in a process resulting in what 1 OX calls the GEM ("gel bead in emulsion") architecture. 

As confirmed by both parties, the inventive idea is a specific arrangement of elements which, 

when combined, works to achieve a desired goal. See Tr. (Metzker) at 728:14-22 ("[I]t has to 

work within the architecture of a droplet, so partitioning the analyte from other analytes, having 

a reagent delivery system that adds the reagents that we can then combine, barcode, analyze and 

then track back to the different droplets, to what is the makeup of that analyte. All of that, all of 

that together is important."). See also Tr. (Schnall-Levin) at 230:15-24 ("[T]his invention is not 

like a bag of words, like barcodes, gel beads. It's actually how they're all put together, which is 

really important for driving the performance of the system."). The asserted patents each claim 

particular steps in the GEM architecture, and for purposes of ownership, the employment 

contracts at issue require determination of who conceived of this architecture and when. See 

ReCor, 2013 Del. Ch. Ct. LEXIS at *29, 42 (examining the record to determine when the "aha" 

or "eureka" moment occurred). Bio-Rad does not address squarely the critical contractual 

question of when the inventive concept in the asserted patents was conceived. Instead, Bio-Rad 

clouds the real issue with misplaced argument~ about inventive contributions. 

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Consistent with the Federal Circuit's holding in AT&T, California law governs the 

pe1tinent employment agreements between Bio-Rad and Drs. Hindson and Saxonov. RX-0624C 

at ,I 11; RX-0623C at ,I 11; RX-06 l 9C at ,I 11; R..,-X-0620C at,I 11. ''Under California law, the 

interpretation of a written contract is a matter of law for the comt even though questions of fact 

are involved." Southland Co,p. v. Emerald Oil Co., 789 F.2d 1441, 1443 (9th Cir.1986). 

Contract language that is plain and unambiguous requires no construction. "'In interpreting an 

unambiguous contractual provision we are bound to give effect to the plain and ordinary 

meaning of the language used by the paities. '" Lockyer v. R.J. Reynolds Tobacco Co., 107 Cal. 

App. 4th 516,517 (2003) (quoting Coast Pla::a Doctors Hospital v. Blue Cross of California, 83 

Cal. App. 4th 677, 684 (2000)). Where "'contract language is clear and explicit and does not 

lead to absurd results, we asce1tain intent from the w1itten te1ms and go no fmther. '" Shaw v. 

Regents of Univ. of California, 58 Cal. App. 4th 44, 53, 67 (1997). See Cal. Civ. Code§ 1639 

("When a contract is reduced to writing, the intention of the paities is to be asce1tained from the 

,vriting alone, if possible."). 

The contracts in this case state, in pe1tinent pa1t, with respect to QuantaLife: 

I 

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And with respect to Bio-Rad: 

RJC-0619C at iii! 3, 6; RX-0620C at iii! 3, 6. 

As set fo1th above, the QuantaLife contracts 

RX-0623C at i!2(a). The Bio-Rad contracts 

- RJC-0619C at ili!3, 6. 

Id. at i\3. 

No provision of any of the applicable contracts governs future inventions that are based 

on or developed from work clone during employment. To the contra1y, the plain, unambiguous 

contract language pertains only to ideas actually conceived during the employment period. Bio144 

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Rad's arguments improperly read out the plain meaning of the durational limitation in the 

pertinent contracts, and in its place suggest an interpretation of the contracts in which inventions 

developed by the employee after his employment belong to the company if they are related to 

ideas conceived during employment. "'When a dispute arises over the meaning of contract 

language, the first question to be decided is whether the language is 'reasonably susceptible' to 

the interpretation urged by the party. If it is not, the case is over."' Lockyer, 107 Cal. App. 4th 

at 524. Bio-Rad's (implicit) construction is not reasonable. 26 

Bio-Rad's contention that "[b]ecause Hindson and Saxonov made contributions to the 

inventions that are now claimed in the Asserted Patents 

... Bio-Rad has a pro rata undivided co-ownership interest in the Asserted 

Patents based on those contributions," RRB at 40, therefore is unavailing. Bio-Rad owns no 

interest in any of the patents unless it can demonstrate, in conformity with the contractual 

requirements, that Drs. Hindson and Saxonov actually conceived the inventive idea embodied in 

the asserted patents during the employment period. Bio-Rad does not cite to any provision of the 

employment contracts to support its contentions that an idea that is related to the invention 

embodied in the asserted patents, but is not the actual inventive idea in the asserted patents, 

confers ownership on Bio-Rad. 

On review of this record, Bio-Rad has failed to present any direct evidence that the actual 

inventive idea embodied in the asserted patents was first conceived at Quanta/Life or Bio-Rad, as 

required by the contracts. Since it has presented no direct evidence of conception, Bio-Rad 

necessarily falls back on circumstantial evidence, asking me to infer that conception likely 

26 Bio-Rad has not actually offered any alternative construction of the contract terms. 

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occuned during the period of employment. Bio-Rad's argument is grounded mainly 011 the 

temporal proximity ofDrs. Hindson and Saxouov's departure from Bio-Rad and the inventions 

developed thereafter by 1 OX. 

These facts are basically undisputed: fu October 2011, Bio-Rad acquired QuantaLife ■ 

RIB at 44 (citing RX-0502C (Tumolo DWS) at Q/A 32). Drs. 

Hindson and Saxonov worked at Bio-Rad for six mouths thereafter, leaving in what was a 

"coordinated event" iu April 2012. Id. at 44-45 (citing Tr. (Hindson) at 162:3-9, 163:6-14; Tr. 

(Saxouov) at 797:4-21, 798:3-9). After taking off several mouths, Drs. Hindson and Saxouov 

fonned l0X. Tr. (Hindson) at 163:3-164:3; CX-000lC (Hindson WS) at Q/A 38-40. Within 

four months of leaving Bio-Rad and less than a month after f01mding 1 OX, they filed then: first 

provisional patent application at l0X on August 14, 2012, Provisional App. No. 61/683,192 (the 

"'192 application"). RX-0299. 

This chronology alone does not establish circumstantially that the inventions at issue 

were conceived during Drs. Hindson and Saxonov's employment with QuautaLife and Bio-Rad. 

The circumstances of their departure make it likely that Drn. Hindson and Saxonov left Bio-Rad 

with the intention of pursuing opportunities to invent and market new technologies-they were 

free to do so. But these circumstances in themselves do not support a finding that Drs. Hindson 

and Saxonov conceived of the idea embodied in the asse11ed patents before they left Bio-Rad's 

employ. 27 

27 The record indicates that Drs. Hindson and Saxonov left Bio-Rad because 

Tr. (Saxonov) at 798:14-24. 

]; . at 797:15-21. 

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Bio-Rad challenges Dr. Hindson's credibility, asking me to infer that he is lying about the 

time frame in which the inventive idea in the asserted patents was conceived. Bio-Rad maintains 

that the '192 provisional application, submitted in August 2012, refers to gel beads, and that that 

disclosure is inconsistent with Dr. Hindson's testimony that conception of the claimed porous gel 

beads did not occur until the . Id. at 45 (citing CX000lC (Hindson WS) at Q/A 85). In context, however, Dr. Hindson's testimonythatis not 

inconsistent with the '192 provisional. Dr. Hindson recalls 

CX-0001 C (Hindson WS) at QI A 86. "Around that time or shortly thereafter, I 

Id. Bio-Rad has not pointed to any portion of the 

'192 provisional patent application showing that the idea to use porous gel beads to deliver 

barcodes was conceived- before the events described in detail by Dr. Hindson. 28 

Bio-Rad also points to a paper published in 2009 by inventors at Harvard, referred to as 

the "Beating Poisson" article. RIB at 47. The significance of the "Beating Poisson" article is 

that it discusses using microfluidics to deliver deformable gel beads to droplets that can be 

28 The '192 application states in pertinent part: "The microcapsules may also comprise a polymer 

within the interior of the capsule. In some instances this polymer may be a porous polymer bead 

that may entrap reagents or combinations of reagents. In other instances, this polymer may be a 

bead that has been previously swollen to create a gel." RX-0299 at if0050. This provision refers 

to a porous polymer bead that may entrap reagents but not to such a bead with barcodes or other 

reagents releasably attached, as in the asserted patents. As Staff notes, Bio-Rad's expert, Dr. 

Metzker, does not opine that the asserted claims were conceived in August 2012. SRB at 28 

(citing Tr. (Metzker) at 705:2-22.) 

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functionalized with DNA. Id. See R.X-0102. Dr. Hindson testifies in his direct witness 

statement he came across the "Beating Poisson" paper only in late 2012, while at IOX. CX000lC (Hindson WS) at Q/A 132. On cross-examination, he concedes that he had encountered 

the paper in April 2011, while still at QuantaLife, but he claims not to have read it at that time. 

Tr. at 169:5-22, 172:8-18. 

Bio-Rad maintains that Dr. Hindson's denial is implausible given the impo1tance of the 

''Beating Poisson" aiticle, pointing in pruticular to 

RIB at 48; Tr. (Hindson) at 169: 18-171:23). Bio-Rad maintains that Dr. Hindson's recollection 

also is undennined by 

Id. (citing JX-0145C; Tr. (Saxonov) 

at 793:8-794:5. 

I am not persuaded that this evidence undennines Dr. Hindson's credibility. I find it at 

least plausible that Dr. Hindson did not remember seeing the "Beating Poisson" a1ticle or 

. The record does not indicate that Dr. Hindson attached 

paiticular significance to the aiiicle at that time, or that indicated 

the conception of the idea for the inventions claimed in the asse1ied patents. 29 IfDr. Hindson did 

at that time conceived the idea asse1ted in the patents. On the contra1y, it indicates that they had 

not conceived the idea embodied in the patents at that time, because there is no mention of using 

porous gel b • • • • 

and Saxonov 

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not realize in 2011 the significance of porous gel beads in the eventual development of the GEM 

architecture at 1 OX, it would be easy to forget 

- I conclude that Dr. Hindson's alleged lack of credibility is a slim reed for Bio-Rad to 

stand on.30 

In addition to challenging Dr. Hindson's credibility, Bio-Rad points to evidence that 

certain concepts disclosed in Drs. Hindson and Saxonov's earlier work prefigured the patented 

invention. Presumably, Bio-Rad would contend (if Bio-Rad were attempting to establish 

conception under the correct legal theory) that because certain discoveries made by Drs. Hindson 

and Saxonov during the period of their employment included elements that also are found in the 

asserted patents, the particular arrangement of those elements, set forth in the asserted patents, 

must have occurred to them. For example, Bio-Rad discusses the conceptsRIB at 40-44. Dr. Saxonov testifies, 

however, that 

. If that in itself were suffi • t t tr· 

patented after they left Bio-Rad, the contracts' 

•• 

CX-1829C 

rship of inventions 

would be nullities. 

30 I agree with Bio-Rad that Dr. Hindson on several occasions was not forthcoming in his 

representations to Bio-Rad's representative about the work that was being conducted at lOX, but 

Dr. Hindson testifies credibly that he felt threatened by Bio-Rad; people are known to react 

defensively when they perceive they are under attack, even when they have done nothing wrong. 

See CX-1828C (HindsonRWS) at Q/A 55 ("It was very clear to me based on our conversations 

what she was asking me was 'are you using Quantalife droplets,' essentially fishing for whether 

we were competing with our old Quantalife products, and the answer to that was clearly 'no,' 

because we were using GEMs.") 

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(Saxonov R WS) at QI A 22 ("We had not thought through these issues or come up with solutions 

that would have made it work."). 

Bio-Rad also points out that certain number ranges of "cells, droplets, beads, and 

barcodes" were disclosed in the '059 patent, JX-0031, and that the numbers discussed in the 

claims of the asserted patents, as Dr. Saxonov concedes, could be derived easily based on those 

ranges. RRB at 55 (quoting RX-0412C (Saxonov Dep. Tr.) at 148:15-149:12). These facts do 

not demonstrate, even circumstantially, that the idea for the inventions claimed in the asserted 

patents had already been conceived at the time the '059 application was filed. 31 

Bio-Rad also contends that the entries in notebooks offered into evidence by lOX to 

support conception by the 1 OX inventors is "much more consistent with the theory that Dr. 

Hindson and others founded 1 OX to commercialize the ideas they had at QuantaLife and BioRad." RRB at 57. Bio-Rad cites testimony from Dr. Schnall-Levin and Dr. Dear that ~llegedly 

corroborates Bio-Rad's argument that lOX's lab notebooks do not evidence the conception of the 

inventions claimed in the asserted patents. RIB at 130-131. Even assuming Bio-Rad's argument 

about the nature of lOX's notebooks is correct (and this is disputed), it would not necessarily 

31 IOX responds persuasively to each of the many circumstances alleged by Bio-Rad concerning 

the work done by Drs. Hindson and Saxonov during their period of employment, maintaining 

that their work was conducted in a variety of technological contexts distinct from the particular 

GEM architecture described in the asserted patents. See CIB at 139-151. It is not necessary or 

useful to try to resolve every one of the parties' disputes. These disputes are largely beside the 

point because, as discussed above, they are not probative on the issue of when the particular 

arrangement that constitutes the inventive concept of the asserted patents actually was conceived 

by Drs. Hindson and Saxonov. 

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lead to the conclusion that the claimed inventions were conceived at QuantaLife or Bio-Rad. 

Several months elapsed between the time Drs. Hindson and Saxonov left Bio-Rad and the 

founding of 1 OX. The actual idea could have been conceived at any time after Dr. Hindson and 

Saxonov left Bio-Rad's employ; the record does not indicate more likely than not that conception 

of the inventive idea in the asserted patents occurred before their departure. 32 

In sum, the evidence before me is insufficient to permit the conclusion that, more likely 

than not, the work Drs. Hindson and Saxonov did at QuantaLife and Bio-Rad led them to 

conceive the idea described in the 1 OX patents while they were still under contract. Compare 

Agilent Techs., Inc. v. Kirkland, C.A. No. 3512-VCS, 2010 WL 610725 at *15 (Del. Ch. Ct. Feb. 

18, 2010) (finding employees conceived of technology at issue "based upon insights they formed 

and recorded at Agilent from observing the empirical results of experiments they conducted at 

Agilent"). Bio-Rad presents no pertinent records showing insights or experiments that support 

the argument that the inventive idea in the asserted patents was conceived before these 

employees left Bio-Rad. Given that Bio-Rad bears the burden of proof on this issue, Bio-Rad 

has failed to establish ownership of the asserted patents. See CX-1827C (Dear RWS) at Q/A 

1129 ("Nothing [Dr. Metzker] cites shows whether there was a partial experiment involving 

some but not all of these elements. Nothing shows how the experiments would work. Nothing 

he cites shows any experimental observation. Dr. Metzker does not rely upon anything in his 

32 lOX's interrogatory responses detail with some specificity the timeline regarding development 

of the patented technology. See RX-0643C. In these res onses, lOX seeks to show that the 

claims of the patents were conceived in . Id. at 63-65. See also CX1827C (Dear RWS) at Q/A 1269-1279. Dr. Metzker, Bio-Rad's witness, reviewed lOX's 

timeline regarding conception and declined to offer an opinion disagreeing with lOX's alleged 

- conception dates. Tr. (Metzker) at 704:7-705:22. 

151 

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testimony offering a reasonable basis to conclude that any such experiments occurred nor, 

importantly, what happened in them."). 

C. Other Affirmative Defenses 

Bio-Rad raises several additional affirmative defenses. None has any merit. 

Bio-Rad's equitable estoppel defense has two prongs. Bio-Rad contends that the 

employment agreements signed by Drs: Hindson and Saxonov 

RIB at 132. 

First, the agreements cited by Bio-Rad give no such "explicit contractual assurances." Second, 

the evidence does not show that the inventions in the asserted 1 OX patents were made at 

QuantaLife and/or Bio-Rad. 

Bio-Rad also contends that lOX is equitably estopped from bringing this action because 

Bio-Rad had no notice of infringement until this litigation was instituted, and Bio-Rad allegedly 

relied on lOX's "silence and inaction" in developing its product line "with the reasonable belief 

that it would not be subject to an infringement action." Id. at 133. Bio-Rad points to no 

evidence to support the contention that it relied on any lack of notice of infringement from 1 OX. 

See id. Bio-Rad's equitable estoppel defense fails for lack of proof. 

Bio-Rad also claims to have an express license to practice each of the asserted patents, 

based on Drs. Hindson and Saxonov's 

Id. at 133. Since Bio-Rad has not shown that the invention 

embodied in the lOX patents was made during the course of the employment agreement, this 

defense also fails. 

152 

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information. 34 The parties' submissions under this subsection shall not be filed with the 

Commission Secretary but shall be submitted by paper copy to the Administrative Law Judge 

and by e-mail to the Administrative Law Judge's attorney advisor. 

SO ORDERED. 

lxt{&Y{./ 

Dee Lord 

Administrative Law Judge 

34 To avoid depriving the public of the basis for understanding the result and reasoning 

underlying the decision, redactions should be limited. Parties who submit excessive redactions 

may be required to provide an additional written statement, supported by declarations from 

individuals with personal knowledge, justifying each proposed redaction and specifically 

explaining why the information sought to be redacted meets the definition for confidential 

business information set forth in Commission Rule 201.6(a). 19 C.F.R. § 201.6(a). 

156 

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CERTAIN MICROFLUIDIC SYSTEMS AND 

COMPONENTS THEREOF AND PRODUCTS 

CONTAINING SAME 

Inv. No. 337-TA-1100 

PUBLIC CERTIFICATE OF SERVICE 

I, Lisa R. Barton, hereby certify that the attached INITIAL DETERMINATION has 

been served by hand upon the Commission Investigative Attorney, Monica Bhattacharyya, 

Esq., and the following parties as indicated, on August 12, 2019. 

On Behalf of Complainants lOX Genomics, Inc.: 

Paul T. Ehrlich, Esq. 

TENSEGRITY LAW GROUP LLP 

555 Twin Dolphin Dr., Suite 650 

Redwood Shores, CA 94061 

Lisa R. Barton, Secretary 

U.S. International Trade Commission 

500 E Street, SW, Room 112 

Washington, DC 20436 

□ Jia Hand Delivery 

!J('via Express Delivery 

□ Via First Class Mail 

□ Other: -----

On Behalf of Respondents Bio-Rad Laboratories, Inc.: 

S. Alex Lasher, Esq. _ 

QUINN EMANUEL URQUHART & SULLIVAN, LLP 

1300 I Street NW, Suite 900 

Washington, DC 20005 

□ )lia Hand Delivery 

'21 Via Express Delivery 

□ Via First Class Mail 

D Other: -----

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