Edward Reines of Weil, Gotshal & Manges

Bio-Rad Laboratories Inc. has won an injunction excluding competitor 10x Genomics Inc. from marketing products that perform genetic analysis on a single-cell droplet platform.

Wednesday's decision from U.S. District Judge Richard Andrews of the District of Delaware follows a jury trial last fall that ended in a $24 million patent infringement award for Hercules, California-based Bio-Rad and the University of Chicago, from whom it licenses the patents. 10X managed to turn back Bio-Rad's request for enhanced damages and attorney fees.

According to Andrews' opinion, Pleasanton, California-based 10X's single-cell products account for more than 80% of its sales. Bio-Rad and the university “have shown that they will suffer irreparable competitive harm absent an injunction,” Andrews wrote. ”Plaintiffs are being forced to compete with 10x's products that incorporate and infringe their own patented inventions.”

Andrews declined to stay his order but gave 10x two weeks to seek a stay pending appeal from the U.S. Court of Appeals for the Federal Circuit.

The injunction cements a win for a Weil, Gotshal & Manges team of litigators led by partners Edward Reines and Derek Walter in the emerging field of droplet microfluidic technology. Opposing were an all-star team of lawyers from Irell & Manella, Tensegrity Law Group and Orrick, Herrington & Sutcliffe, among others.

“We're obviously pleased that the Delaware judge entered a permanent injunction to enforce respect for the University of Chicago's patents that have been licensed to Bio-Rad,” Reines said. “Respect for these patents is most deserved.”

10x said in a statement that it will “vigorously defend our position” on appeal and noted that current customers can continue using the products they have today, which are excluded from the injunction. “We are also taking steps to ensure that all researchers are able to continue the important work of making scientific discoveries with no interruption,” the company's statement said.

10x is a late-stage venture company backed by SoftBank, Fidelity Investments and others. Andrews found that 10x has established a strong market lead over the much larger Bio-Rad, having sold more than 1,000 of its single-cell units to fewer than 100 for Bio-Rad. Bio-Rad says it has invested more than $500 million developing its droplet technology.

10x had told Andrews that an injunction would devastate the company, possibly causing it to go out of business. But Andrews observed that 10x has been pursuing a redesigned product that would not infringe, and had told him it could be on the market soon.

10x had asked for at least a nine-month sunset period to wind down its infringing products, but Andrews dismissed that as an unwarranted “windfall.” Instead, he ruled that 10x can continue selling consumables at a 15% royalty for use with already sold products.

As for attorney fees, Bio-Rad had argued that 10x's expert witness presented “half-baked” theories of patent invalidity, but Andrews found he offered reasonable explanations.

“Both parties, in the name of zealous advocacy, made innumerable arguments over the course of this litigation, some which were undoubtedly weak,” Andrews wrote. “The fact that plaintiffs were able to identify a handful of 10x' s weaker arguments does not show that 10x engaged in a pattern of misconduct.”

Weil's team also included counsel Robert Vlasis, and associates Amanda Branch and Chris Lavin.