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ARTICLE · 18 APRIL 2024

Petition Denied For Lacking Section 112(f) Construction And Fintiv

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On March 7, 2024, the PTAB denied institution in 10x Genomics, Inc. v. President and Fellows of Harvard College, IPR2023-01299, Paper 15 (PTAB Mar. 7, 2024) ("Decision").

United StatesIntellectual Property
Luke Cipolla
Luke Cipolla
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David Maiorana
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On March 7, 2024, the PTAB denied institution in 10x Genomics, Inc. v. President and Fellows of Harvard College, IPR2023-01299, Paper 15 (PTAB Mar. 7, 2024) ("Decision"). The PTAB denied institution on two separate grounds: (1) the Petitioner, 10x Genomics, did not properly assert a Section112(f) construction in the alternative in its Petition under 37 C.F.R. §42.104(b)(3); and (2) the circumstances of a parallel U.S. District Court of Delaware proceeding called for a discretionary denial under 35 U.S.C. §314(a) under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) ("Fintiv").

The docket for the parallel proceeding can be found at 10X Genomics, Inc. et al v. Vizgen, Inc., Docket No. 1:22-cv-00595 (D. Del. May 3, 2022). The counterclaim for infringement relevant to the patent in the Petition was filed August 30, 2022. Decision at 2.

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