The Court of Appeals for the Federal Circuit vacated the district court's judgment that 10X Genomics infringed the patents of Bio-Rad Laboratories and remanded for a new trial on this issue. A key point relating to infringement was whether or not the preamble of Bio-Rad's two patents (8,304,193 patent and 8,329,407) are limiting. 10X argued that, under the correct claim construction, the preambles limit the claims to methods of conducting reactions inside a microfluidic syste

The Court of Appeals for the Federal Circuit provided some guidance in this case as to how restrictive the limitations in the preamble are when determining the claims scope. Patent practitioners may be aware that "a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim." Something that might not be as well known is that "a preamble is not limiting 'where a patentee defines a structur

Anticipation rejection is overcome because the recitation of “travel trailer” in the preamble served as antecedent basis for a term appearing in the body of a claim and should therefore be considered as a limitation. The "travel trailer" thus is not anticipated by a refrigerated trailer without living quarters. Moreover, an examiner must only articulate the level of ordinary skill in the art when the applicant argues that the level of ordinary skill would change the result.