Pre-Invention Innovations Not Captured by Employment Agreement Duty to Assign
“At its core, this is an employer-inventor dispute in the area of gene sequencing technology. Saxonov & Hindson co-founded company QuantLife that was bought out by Bio-Rad. The pair then became Bio-Rad employees. At both companies they signed agreements to transfer invention rights to Bio-Rad. In April 2012 the pair left Bio-Rad; in July 2012 formed 10X; and began filing new patent applications in August 2012. These applications eventually issued as patents and include the patents-in-suit: US Patent Nos. 9,689,024, 9,695,468, and 9,856,530,” posts Dennis Crouch in Patentlyo.
“Bio-Rad and 10X are competitors and 10X sued for patent infringement. In defense, Bio-Rad argued that it owns the patents. The USITC rejected that argument and the Federal Circuit has now affirmed.”
“The agreements are clear that they are limited to the term of employment: Each promised to assign anything conceived, developed, or reduced-to-practice ‘during the period of my employment.'”
