DCT
3:07-cv-00623
Eppendorf AG v. Bio Rad Laboratories Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Eppendorf AG (Germany)
- Defendant: Bio-Rad Laboratories, Inc. (Delaware), MJ GeneWorks, Inc. (Wisconsin), and MJ Research, Inc. (Massachusetts)
- Plaintiff’s Counsel: Michael Best & Friedrich LLP; Wilson Sonsini Goodrich & Rosati
- Case Identification: 3:07-cv-00623, W.D. Wis., 04/01/2008
- Venue Allegations: Venue is alleged based on Defendants' substantial contacts with Wisconsin, including committing acts of patent infringement by selling or causing infringing products to be sold within the district.
- Core Dispute: Plaintiff alleges that Defendants’ thermal cycler products, which are used for laboratory processes like PCR, infringe a patent related to temperature-regulating blocks that can create a temperature gradient across a sample plate.
- Technical Context: The technology concerns thermal cyclers, laboratory instruments essential for the Polymerase Chain Reaction (PCR) and other temperature-sensitive biochemical reactions, where precise and rapid temperature control is critical for experimental success.
- Key Procedural History: The complaint alleges that Defendant Bio-Rad acquired Defendants MJ Research and MJ GeneWorks in or around August 2004, shortly after the patent-in-suit was issued. It further alleges that the acquired entities committed acts of infringement both before and after this acquisition.
Case Timeline
| Date | Event |
|---|---|
| 1996-11-08 | ’512 Patent Priority Date |
| 2004-07-27 | ’512 Patent Issue Date |
| 2004-08 | Bio-Rad acquires MJ Research, Inc. and MJ GeneWorks, Inc. (approximate date) |
| 2008-04-01 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 6,767,512, "Temperature-Regulating Block With Temperature-Regulating Devices," issued July 27, 2004.
The Invention Explained
- Problem Addressed: Prior art thermal blocks, used for processes like PCR, often controlled temperature from the ends of the block. This method was slow to reach equilibrium and could create inaccurate temperature profiles, particularly when trying to establish a controlled gradient across the samples (’512 Patent, col. 1:26-35).
- The Patented Solution: The invention proposes a thermostated block with multiple heat-regulating devices that make "large-area contact" with the side of the block opposite the sample wells. This arrangement allows for direct, faster, and more uniform temperature control over the entire surface, enabling the creation of precise temperature gradients by operating adjacent devices at different temperatures (’512 Patent, Abstract; col. 1:39-48).
- Technical Importance: This approach provided a method for more rapid and precise temperature cycling and for optimizing reaction conditions by simultaneously testing multiple temperatures across a single sample block.
Key Claims at a Glance
- The complaint asserts dependent claims 2 and 3, which rely on independent claim 1.
- Independent Claim 1 (Essential Elements):
- A body of thermally conductive material having a wells side with a plurality of wells for receiving vials.
- A contact side opposite the wells side.
- At least two heat regulating devices spaced from each other.
- The devices are operable at different temperatures to provide a temperature gradient in one direction across the thermostated block.
- The devices are arranged at the contact side of the body in an "area contact" with the contact side.
- The thermostated block comprises at least two heat regulating devices arranged behind one another in a transverse direction, operable for providing a temperature gradient in that transverse direction.
III. The Accused Instrumentality
- Product Identification: The complaint names a range of "thermal cycler devices with gradient functionality," including products with the trade names DNA Engine, DNA Engine Dyad, DNA Engine Tetrad 2, PTC-200, MJ Mini, Dyad Disciple, iQ5, Opticon 2, MiniOpticon, MyCycler, Chromo4, iCycler, MyiQ, C1000, S1000, and CFX96 (Compl. ¶23).
- Functionality and Market Context: The complaint alleges these are thermal cyclers that possess "gradient functionality" (Compl. ¶23). This functionality allows a user to set a temperature gradient across the sample block, enabling simultaneous experiments at different temperatures. The complaint does not provide further technical detail on how the accused devices achieve this functionality.
IV. Analysis of Infringement Allegations
The complaint does not contain a claim chart or detailed infringement contentions beyond a general allegation. The following chart maps the narrative allegations to the elements of the asserted independent claim.
No probative visual evidence provided in complaint.
’512 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a body of thermally conductive material and having a wells side with a plurality of wells for receiving a plurality of sample liquid-containing vials...and a contact side extending opposite the wells side | The complaint alleges the accused products are "thermal cycler devices," which inherently implies the presence of a sample block with wells and an opposite side for thermal components. | ¶23 | col. 4:1-11 |
| at least two heat regulating devices spaced from each other and operable at different temperatures for providing a temperature gradient in one direction across the thermostated block | The complaint alleges the accused products have "gradient functionality," which suggests the use of multiple thermal elements operating at different temperatures to create such a gradient. | ¶23 | col. 6:39-50 |
| and arranged at the contact side of the body in an area contact with the contact side | The complaint does not specify the arrangement of the thermal components but alleges the products practice the invention, which requires this arrangement. | ¶23 | col. 4:15-17 |
| wherein the thermostated block comprises at least two heat regulating devices arranged behind one another in a direction transverse to the one direction for providing a temperature gradient in the transverse direction | The complaint’s allegation of infringement of claim 1, which contains this limitation, implies that the accused products meet this element. The complaint does not provide specific facts regarding a transverse gradient capability. | ¶23 | col. 8:24-40 |
- Identified Points of Contention:
- Scope Questions: A central question may be the scope of "area contact." The dispute could focus on how much surface contact is required to meet this limitation, and whether the accused devices' thermal interfaces qualify.
- Technical Questions: A key factual question will be whether the accused thermal cyclers, which are alleged to have "gradient functionality," actually achieve this using "at least two heat regulating devices" arranged in the specific longitudinal and transverse manner required by Claim 1. The complaint does not provide evidence on the internal structure of the accused devices to substantiate this.
V. Key Claim Terms for Construction
The complaint does not provide sufficient detail for a definitive analysis of claim construction disputes. However, based on the patent and technology, certain terms are likely to be critical.
The Term: "heat regulating devices"
Context and Importance: The definition of this term is fundamental. Defendants may argue for a narrow construction limited to the specific types disclosed, while the patentee will likely argue for a broader meaning covering any component that heats or cools. Practitioners may focus on this term because its scope determines what types of thermal technologies fall under the patent's purview.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim uses the general term "heat regulating devices" without further limitation, suggesting any device capable of regulating heat is covered (’512 Patent, col. 10:20-21).
- Evidence for a Narrower Interpretation: The specification repeatedly uses "Peltier element" as a primary example of a heat regulating device, which may be used to argue that the invention is focused on such thermoelectric coolers (’512 Patent, col. 4:20-23).
The Term: "area contact"
Context and Importance: This term defines the physical interface between the thermal block and the "heat regulating devices". The nature of this contact is central to the invention's alleged novelty over prior art end-contact systems. The dispute will likely center on what degree and quality of contact are required to constitute "area contact."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The abstract describes the devices as being in "large-area contact," and the summary of the invention states the devices "make contact over a large surface," suggesting the term refers to a significant surface, not necessarily a complete or perfect one (’512 Patent, Abstract; col. 1:40-42).
- Evidence for a Narrower Interpretation: The specification notes that in one embodiment, there is "a full area contact with the contact side, i.e., with the entire faces of the devices (19, 20) contacting the contact side," which could be used to argue for a more stringent requirement of complete surface-to-surface contact (’512 Patent, col. 6:35-39).
VI. Other Allegations
- Indirect Infringement: The complaint alleges indirect, contributory, and inducement of infringement but provides no specific supporting facts, such as identifying instructions or user manuals that would direct users to operate the devices in an infringing manner (Compl. ¶23).
- Willful Infringement: The complaint makes a conclusory allegation that infringement is "willful, deliberate, thereby rendering this an exceptional case" (Compl. ¶24). It does not allege any facts to support this claim, such as pre-suit knowledge of the patent or a refusal to cease infringement after notice.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope: can the term "heat regulating devices", described in the context of Peltier elements, be construed to cover the specific thermal components and assemblies used in the wide range of accused products?
- A key evidentiary question will be one of structural correspondence: does the internal architecture of the accused thermal cyclers actually feature "at least two" separate heat regulating devices arranged for both longitudinal and transverse gradients as required by claim 1, or do they achieve their "gradient functionality" through a different technical mechanism? The bare-bones allegations of the complaint leave this as a central open question.
- The viability of the willfulness and indirect infringement claims will depend on the development of facts not present in the complaint, specifically regarding Defendants' knowledge of the patent and any actions taken to encourage infringement by end-users.