By: Yury Kalish and David Maiorana – In a recent order, the Commission again declined to institute an Early Disposition Pilot Program (100-day Pilot Program), this time citing the complexity of the issues raised in the request. In the Matter of Certain Microfluidic Systems And Components Thereof And Products Containing Same (“In re Microfluidic Systems”), Inv. No. 337-TA-1100, Order Denying Request For Entry Into Early Disposition Pilot Program, February 14, 2018.

As we previously noted (here), the 100-Day Pilot Program is intended “to test whether earlier rulings on certain dispositive issues in some section 337 investigations could limit unnecessary litigation, saving time and costs for all parties involved” but it remains rare for the Commission to agree to utilize the Program. In this investigation, complainant 10X Genomics (“10X”) filed a complaint against proposed respondent Bio-Rad Laboratories, Inc. (“Bio-Rad”), accusing them of infringing four patents related to microfluidic chips or cartridges used for DNA sequencing. Some of the inventors on the 10X patents were employed by QuantaLife but left the company shortly after it was acquired by Bio-Rad. They went on to found 10X and obtain the patents at issue in this investigation.

Shortly after the filing of the complaint, Bio-Rad requested that this investigation, if instituted, be included in the 100 Day Pilot Program. Bio-Rad asserted that it had “an ownership interest in the asserted patents because at least two of the inventors are former Bio-Rad employees who conceived of the inventions in whole or in part while employed by Bio-Rad and/or its predecessor in interest.” According to Bio-Rad, 10X’s asserted patents “arose out of these inventors’ work at Bio-Rad and its predecessor, and thus are owned by Bio-Rad” since, according to Bio-Rad, these inventors “were under contractual obligation to assign to QuantaLife all their ideas, inventions, and discoveries.”

Bio-Rad believed that the situation lent itself perfectly to the Pilot Program because “[t]here is no need to litigate infringement and validity if the respondent has an ownership interest in the patents being asserted” and because “standing is a threshold question, and it is both procedurally and substantively efficient to resolve this issue first.”

The Commission disagreed and “determined not to use the Early Disposition Pilot Program for this investigation.” It explained that the issues of inventorship, ownership, and standing “may be too complex to be decided within 100 days of institution.”


Investigations in which the Commission has agreed to institute a 100 Day Program remain rare. In this situation, the Commission believed the issues were too complex to be resolved in 100 days. To be successful, proposed respondents seeking institution of the 100-Day Pilot Program should demonstrate that the issue to be addressed is dispositive of the entire investigation, and that it is not too complex to decide in 100 days. Conversely, a complainant faced with such a request should show that the issue is not actually dispositive or is too complex for the pilot program.

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Dave Maiorana is a trial lawyer with a notable combination of significant experience as a USPTO examiner along with 20 years litigating complex intellectual property matters. He has represented clients as both plaintiffs and defendants around the country and in the ITC. Dave has experience in diverse technology areas, including teeth whitening, diapers, fem care products, self-inflating tires, oxygen concentrators, flash memory, and digital cameras.