Derek C. Walter

Weil, Gotshal & Manges LLP

Redwood Shores

Patent litigation

Walter, a partner in Weil, Gotshal & Manges' patent litigation practice, said the chemistry Ph.D. he earned before law school is a big help in his work representing biotechnology pioneers like Bio-Rad Laboratories Inc., Illumina Inc. and Pacific Biosciences of California Inc.

"I researched in bacterial genetics and took theoretical computational chemistry," he said. "Those disciplines are well-suited for the cases we're seeing these days."

In a high stakes battle on behalf of Hercules-based Bio-Rad Laboratories, Walter faced off with rival 10X Genomics Inc. of Pleasanton. At issue were trailblazing inventions in droplet technology that makes possible a DNA lab on a chip.

"These were based on IP developed at the University of Chicago," he said. "You can study tens of millions of reactions on a tiny scale at once. You can study the behavior of individual cells."

The conflict played out over four years. In July 2019, a Delaware federal judge granted a permanent injunction barring 10X from manufacturing or selling all the accused products that infringed the patents. Bio-Rad Laboratories Inc. v. 10X Genomics Inc., 15-CV00152 (D. Del., filed Feb. 12, 2015).

10X's appeal is currently before the U.S. Court of Appeals for the Federal Circuit.

The case involved Bio-Rad's claim that 10X infringed six of Bio-Rad's RainDance patents covering genetic analysis using droplet microfluidics. In November 2018, the jury awarded Walter's client and the University of Chicago $24 million in damages.

U.S. District Judge Richard G. Andrews of Delaware increased that sum to more than $34 million and further set 10X's appeal bond at $52 million, based on his conclusion the judgment would grow to that amount due to post-verdict infringing sales.

"We fought in multiple venues, including fending off IPRs at PTAB," Walter said. When we finally went to trial, we told a very compelling story through a witness, the inventor, who had never testified in court before. We prepped him thoroughly, and we respected the jury's ability to understand the concepts at issue when you present coherent theories grounded in reality."

Also in 2019, Walter nullified an attempt by another competitor, Agilent Technologies Inc., to invalidate two key Bio-Rad patents. The Patent Trial and Appeal Board declined to institute inter partes review, stating Agilent failed to adequately articulate its obviousness rationale.

The patents describe innovations in nucleic acid analysis. Agilent Technologies Inc. v. Bio-Rad Laboratories Inc., IPR2019-00266 (PTAB, filed Nov. 8, 2018).

"These attacks are a sign of how important this technology is. They wouldn't have fought so hard otherwise," Walter said. "Now these competitors are trying to design around our patents. This work never gets boring."

-- John Roemer