Holding
In
Background
In 2010, the two named inventors, Drs.
In 2011, Bio-Rad acquired QuantaLife, and Drs. Hindson and Saxonov became Bio-Rad employees. They each signed another assignment agreement stating, “[a]ll inventions (including new contributions, improvements, designs, developments, ideas, discoveries, copyrightable material, or trade secrets) which I may solely or jointly conceive, develop or reduce to practice during the period of my employment by Bio-Rad shall be assigned to Bio-Rad.”
In
The ITC rejected Bio-Rad's co-ownership affirmative defense. The Administrative Law Judge (ALJ) found that the inventors had not conceived of the inventive concept of the asserted patents before leaving Bio-Rad. The ALJ explained this finding as decisive, as the applicable contracts did not “'govern[] future inventions' merely because the future inventions 'are based on or developed from work done during employment.'” On review, the full Commission agreed, finding that Bio-Rad did not co-own the asserted patents. The “ideas” Bio-Rad identified that Drs. Hindson and Saxonov worked on while at QuantaLife and Bio-Rad were too “generic” in that they did not include the specifics required by the asserted patent claims. Additionally, while at QuantaLife and Bio-Rad, the inventors worked on droplet-in-droplet architecture, not the claimed GEM architecture. Moreover, many of the identified ideas were disclosed in another patent, naming Dr. Saxonov as an inventor, assigned to Bio-Rad.
Federal Circuit
On appeal, the Federal Circuit also rejected Bio-Rad's co-ownership theories premised on the assignment provisions in Drs. Hindson's and Saxonov's employment contracts. Under
Despite the asserted patent claims having a
Examining the assignment provisions, the Federal Circuit first found that the agreements were limited by their terms to IP created during the employee's employment term. As to patents, the pertinent IP does not exist until at least conception of the claimed invention. Thus, as the panel explained, such assignments cannot capture contributions, however significant, to post-employment inventions before the invention is made.
The panel further noted that state laws governing the assignment provisions supported its decision. Specifically,
Second, the Federal Circuit panel refused to find joint inventorship where the inventors merely worked on the “overall, known problem—how to tag small DNA segments in microfluidics using droplets—that was the subject of widespread work in the art.” Moreover, many of Bio-Rad's “ideas” were disclosed in its patent, the application for which published in
The panel also rejected Bio-Rad's assertions that three ideas developed at QuantaLife were not publicly known in the art at the time Drs. Hindson and Savonov worked on them, specifically, tagging droplets, using double-junction microfluidics, and using oligonucleotides as barcodes. Bio-Rad's arguments necessarily looked to a time before the
Takeaway Lessons
Bio-Rad reaffirms that conception—formation of a definite and permanent idea of the complete and operative claimed invention—is the touchstone of inventorship, despite significant, earlier contributions to the invention borne from work on an overall known problem. The decision similarly highlights that joint inventors must do more than merely explain to the true inventors well-known concepts or the state of the art. Finally, while companies may freely arrange their business dealings through employment agreements, Bio-Rad informs practitioners that courts may not read assignment provisions broadly when doing so may impede former employees from pursuing future work in a similar field.
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