Bruker v. Terry: Deposition Motion Dismissed in 15 Days After Agreement
Bruker Spatial Biology, Bruker Corp., and Bruker Nano filed an emergency motion in Massachusetts District Court to compel the deposition of Richard Terry, a witness in a parallel Delaware infringement case involving US11542554B2. The motion resolved in just 15 days after Terry agreed to a 3.5-hour deposition by November 15, 2024.
A Discovery Dispute Resolved Before It Reached the Merits
On October 23, 2024, Bruker Spatial Biology, Inc., Bruker Corp., and Bruker Nano, Inc. filed a motion in the Massachusetts District Court before Judge Leo T. Sorokin to compel the deposition of Richard Terry. The motion arose not from the Massachusetts case itself, but from an underlying infringement action — Case No. 22-261-MFK — pending in the District of Delaware, in which 10x Genomics, Inc. and the President and Fellows of Harvard College are the plaintiffs against Bruker entities. The patent at the centre of that Delaware proceeding is US11542554B2, covering a method and apparatus for volumetric imaging.
The Massachusetts motion was dismissed without prejudice on November 7, 2024, just 15 days after filing. The resolution came by stipulation: Richard Terry agreed to sit for a deposition of up to 3.5 hours in the Delaware case no later than November 15, 2024. No opposition had been filed by the respondent, and the dismissal was effected pursuant to FRCP 41(a)(1)(A)(i), the mechanism that permits a plaintiff to voluntarily dismiss an action before an opposing party serves a response.
The speed of resolution — 15 days from filing to dismissal — suggests the motion served primarily as a procedural catalyst rather than a contested dispute requiring judicial intervention. The absence of any opposition and the swift scheduling of the deposition are consistent with Terry having been a reluctant but ultimately cooperative witness. The public record does not disclose why Terry’s deposition was initially resisted or what testimony Bruker sought. The substantive battle over US11542554B2 continues in the District of Delaware.
Filing to Dismissed without Prejudice in 15 days
Resolved in 15 days — unusually swift for a discovery motion to compel
Dismissed without prejudice: what the stipulated resolution means
FRCP 41(a)(1)(A)(i): voluntary dismissal before opposition
A dismissal under FRCP 41(a)(1)(A)(i) is filed by the movant before the opposing party serves any response. It is effective automatically upon filing and requires no court order. Here, Bruker’s motion to compel was dismissed by stipulation under this rule once Terry agreed to appear voluntarily. The court was not required to rule on the merits of the compulsion request.
No merits adjudicationDismissal without prejudice preserves Bruker’s options
A dismissal without prejudice means Bruker retains the right to refile a motion to compel if the agreed deposition does not proceed as stipulated — for example, if Terry fails to appear or the scope of examination is disputed. It does not constitute any finding on the merits of the compulsion request. In contrast, a dismissal with prejudice would have permanently extinguished the motion. The public record is silent on whether any conditions were attached beyond the November 15 deadline.
Refiling right preservedTerry agrees to a 3.5-hour deposition by 15 November 2024
By agreeing to sit for up to 3.5 hours in the Delaware case, Richard Terry avoided a court order compelling his attendance. The capped duration suggests the parties negotiated the scope of examination as part of the resolution. Whether that cap limits Bruker’s ability to develop its full evidentiary position in the Delaware case is a question the public record does not answer.
Negotiated deposition scopeSubstantive fight remains live in Delaware
This Massachusetts proceeding was purely ancillary — a mechanism to secure a witness located outside the Delaware court’s subpoena range. The underlying dispute over US11542554B2, asserted by 10x Genomics and Harvard against Bruker in Case No. 22-261-MFK, remains ongoing in Delaware. The outcome here has no direct bearing on the merits of the infringement claims but may affect the evidentiary record available to Bruker in that matter.
Delaware case continuesFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Bruker Spatial Biology, Inc., | Company | Instrumentation and life-science technology group — holder of US11542554B2Search in Eureka ↗ |
| Co-Plaintiff | Bruker Corp., | Company | Search in Eureka ↗ |
| Co-Plaintiff | Bruker Nano, Inc., | Company | Search in Eureka ↗ |
| Defendant | Richard L. Terry | Individual | Individual deponent, Richard L. Terry, sought as a witness in related Delaware proceedingsSearch in Eureka ↗ |
| Plaintiff counsel | Connor Houghton | Attorney | Counsel for Bruker Spatial Biology, Inc.,Search in Eureka ↗ |
| Plaintiff law firm | Reichman Jorgensen Lehman & Feldberg LLP | Law Firm | Representing Bruker Spatial Biology, Inc.,Search in Eureka ↗ |
| Presiding judge | Judge Leo T. Sorokin | Judge | Massachusetts District CourtSearch in Eureka ↗ |
Official order — verbatim text
The stipulated order confirms that Bruker’s motion to compel was resolved entirely by agreement rather than judicial determination. The verdict language — Terry ‘has now agreed to sit for a deposition of up to 3.5 hours’ — indicates the motion functioned as intended leverage. No court findings were made on the merits of compulsion, on Terry’s relevance as a witness, or on any underlying privilege or objection. The dismissal without prejudice means the Massachusetts court retains no ongoing jurisdiction unless a further motion is filed.
US11542554B2 — Method and apparatus for volumetric imaging
US11542554B2 claims methods and apparatus for volumetric imaging — technology that enables three-dimensional spatial resolution of biological samples at the molecular level. The application number US17/395534 situates this patent within a post-2021 filing window, placing it squarely in the era of rapid commercialisation of spatial omics platforms. The patent is asserted by 10x Genomics and Harvard College against Bruker in the District of Delaware, suggesting it covers core platform-level functionality rather than a peripheral feature.
Volumetric imaging at single-cell resolution is a foundational capability for next-generation spatial biology instruments. A patent of this scope, backed by a Harvard co-inventorship claim, carries significant weight in freedom-to-operate analyses for any company developing spatial transcriptomics or spatial proteomics hardware. Competitors in the spatial omics instrumentation market — including those developing slide-based or flow-through imaging systems — should treat this patent as a potential blocking position and assess their claim exposure accordingly.
Should you run an FTO against US11542554B2?
Any organisation developing volumetric imaging instruments, spatial transcriptomics platforms, or related sample-imaging workflows should treat US11542554B2 as a priority FTO target. The patent’s involvement in active litigation against a major instrumentation group — Bruker — signals that the rights holders are prepared to enforce broadly. Product teams building hardware or software that processes three-dimensional biological image data should assess whether their claim mapping creates infringement exposure.
PatSnap Eureka’s FTO Search Agent allows R&D and IP teams to map the claim landscape of US11542554B2 against their own product architecture, identify prosecution history estoppel that may narrow claim scope, and surface design-around options. Eureka can also monitor continuation applications in the US17/395534 family, alerting your team to new claim filings before they reach grant.
Run a freedom-to-operate analysis on US11542554B2 to assess your product’s exposure
Run FTO in Eureka →Similar patent disputes in spatial biology and imaging technology
Related cases involving volumetric and spatial imaging patent enforcement in US district courts, including the live Delaware action against Bruker entities.
What this case signals for the spatial biology IP landscape
A 15-day ancillary motion reveals how discovery leverage is used in high-stakes genomics patent wars.
Ancillary district motions are effective litigation tools
Filing a motion to compel in the witness’s home district is a well-established tactic when a key deponent resists a subpoena issued in a remote court. Here, Bruker achieved its objective — a scheduled deposition — within 15 days and without a hearing. Parties should monitor such ancillary filings as signals of escalating discovery disputes in the primary case.
The 3.5-hour cap on deposition duration signals negotiated compromise
Agreeing to a time-limited deposition in exchange for dropping a motion to compel is consistent with a negotiated resolution where both sides made concessions. For practitioners, such caps can limit the depth of examination available to the deposing party and may be challenged if disputed issues require more time than originally agreed.
Bruker v Richard — key questions answered
Bruker Spatial Biology, Bruker Corp., and Bruker Nano filed a motion in Massachusetts District Court to compel the deposition of Richard Terry, a witness relevant to a parallel patent infringement case in Delaware (Case No. 22-261-MFK). The underlying Delaware case involves US11542554B2, covering volumetric imaging methods. The Massachusetts motion was dismissed without prejudice after Terry agreed to a 3.5-hour deposition.
Motions to compel depositions of non-party witnesses are typically filed in the district where the witness resides or works, which may differ from the court handling the primary case. Richard Terry appears to be located in Massachusetts. Federal rules require that subpoenas for depositions be enforceable in the district where the deponent is located, making a Massachusetts filing necessary to compel his appearance.
A dismissal without prejudice means Bruker retains the right to refile the motion to compel if Terry fails to appear as agreed or if a dispute arises about the scope or conduct of the deposition. It does not reflect any judicial finding on the merits of the compulsion request and imposes no res judicata bar. Bruker’s litigation position in the underlying Delaware case is unaffected by this procedural outcome.
US11542554B2, titled to cover a method and apparatus for volumetric imaging, is among the patents asserted by 10x Genomics, Inc. and the President and Fellows of Harvard College against Bruker Spatial Biology, Inc. and related entities in the District of Delaware (Case No. 22-261-MFK). The Massachusetts motion to compel was ancillary to discovery in that Delaware infringement action.
FRCP 41(a)(1)(A)(i) permits a plaintiff or movant to dismiss an action without a court order by filing a notice of dismissal before the opposing party serves an answer or motion for summary judgment. It was used here because Terry had not filed any opposition to Bruker’s motion to compel, meaning Bruker could effect dismissal automatically by stipulation. This is the most straightforward and cost-efficient mechanism for resolving a motion that has achieved its purpose through negotiation.
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