By Andy Yang, Esq., Patent Attorney — The Law Office of Andy Yang
Even Granted Patents Can Fall
A patent granted by the U.S. Patent and Trademark Office (USPTO) can still be challenged—and sometimes overturned entirely.
A recent decision from the U.S. District Court for the District of Delaware shows how fragile patent protection can be, even for billion-dollar biotech companies such as 10x Genomics.
The Case: Parse Biosciences v. Scale Biosciences / 10x Genomics
The Delaware court granted Parse Biosciences’ motion for summary judgment of invalidity against U.S. Patent No. 11,634,752, owned by Scale Biosciences (now part of 10x Genomics).
The court held the ’752 patent invalid for lack of written description and enablement under 35 U.S.C. § 112.
In practical terms, the patent was too broad and insufficiently supported—it claimed the result (“barcoding of target molecules within cells or organelles”) without enough detailed, reproducible steps to teach others how to do it.
The patent covered “reagent kits for barcoding target molecules in or on cells or organelles.”
Parse and Scale had been rivals in the single-cell RNA sequencing (scRNA-seq) market for years, even before 10x acquired Scale.
Earlier in 2024, the USPTO’s Patent Trial and Appeal Board (PTAB) also invalidated two additional 10x Genomics patents after petitions filed by Parse.
Together, these rulings show Parse’s effective “offensive-defense” strategy—neutralizing competitors’ patents proactively through post-grant challenges rather than waiting for infringement suits.
How a Granted Patent Can Be Overturned
There are only a few official routes to invalidate an issued patent:
1️⃣ Post-Grant Administrative Challenges (USPTO)
- Post-Grant Review (PGR): Filed within nine months of issuance. Can raise any invalidity ground—subject matter, novelty, obviousness, or enablement.
- Inter Partes Review (IPR): Available after the PGR window closes. Focuses on prior-art-based challenges under §§ 102 and 103.
- Ex Parte Reexamination: May be requested anonymously. It is the lowest-cost, least-adversarial way to question patent validity using new prior art.
2️⃣ Federal Court Litigation
A patent can also be attacked in district court—either:
- As an invalidity defense in an infringement action, or
- Through a declaratory-judgment suit filed by the challenger.
As shown in the Parse-Scale case, a single district judge can invalidate a patent outright if it fails statutory requirements such as enablement, written description, or non-obviousness.
These cases don’t award damages to challengers—they simply erase or narrow the patent.
When Courts Override the USPTO
Many patent attorneys argue that district courts wield too much power to invalidate patents, often overturning the USPTO’s expert findings without the same technical depth or procedural safeguards.
While judicial review is an important check, critics say summary-judgment invalidations—like in Parse Biosciences v. 10x Genomics—undermine confidence in the patent system and devalue legitimate innovation.
This debate reflects a growing tension between judicial authority and administrative expertise.
For a deeper look at this controversy, see my related article:
👉 Why Many Patent Attorneys Believe District Courts Shouldn’t Invalidate Patents.
Legal Takeaway: Enablement and Written Description
The Delaware court emphasized two key requirements of § 112:
- Enablement — The patent must teach a person skilled in the art how to make and use the invention without undue experimentation.
- Written Description — The patent must show that the inventor actually possessed the full scope of what is claimed at filing.
10x/Scale’s patent failed both tests—it claimed broad results without sufficient disclosure or working examples.
Drafting Lessons for Inventors and Companies
Broad patents offer strong protection only if they are technically supported. To maintain enforceability:
- Keep claims technically specific (e.g., padlock-probe ligation, enzymatic cleanup, RCA, centrifugation, AI-based enumeration).
- Use broader categories—like “a Φ29-family polymerase” or “a fluorescence imaging module”—to cover variations without limiting scope.
- Ensure the specification supports each variation, including experimental ranges and examples.
- Add a robust “equivalents and alternatives” paragraph to strengthen enablement while preserving flexibility.
Finding that balance—broad enough for protection but detailed enough for enablement—is crucial to surviving both PTAB and district-court scrutiny.
Strategic Insight
Patent litigation is expensive and unpredictable. Large companies like Parse are learning to attack weak competitor patents early through administrative review instead of waiting to be sued.
For start-ups and innovators, the lesson is clear: draft carefully, disclose thoroughly, and plan for dual-track defense.
A patent’s strength depends not only on its claims but also on the quality of its specification, enablement, and written description.
About the Author
Andy Yang, Esq. is a California-licensed attorney and registered U.S. Patent Attorney. He represents inventors, startups, and companies in patent prosecution, trademark registration, and business litigation.
📍 Based in Silicon Valley | ⚙️ Patent Drafting · Office Action Response · Defensive & Offensive IP Strategy