Edward R. Reines

Reines is co-head of Weil’s patent litigation and life sciences practice, where he does work for long-standing technology clients such as Illumina Inc., Bio-Rad Laboratories Inc. and Guardant Health Inc.

“The genomics play various roles in addressing Covid,” Reines noted of many of his clients’ specialties. Reines notched significant wins amid the crisis.

He extended a winning streak for genetic analytic innovator Illumina in February 2021 when he secured an affirmance from a U.S. Court of Appeals for the Federal Circuit panel in an infringement dispute with Columbia University. The panel upheld the Patent Trial and Appeal Board’s invalidation of five Columbia University patents involving the sequencing-by-synthesis approach to DNA sequencing. Trustees of Columbia University v. Illumina Inc., 19-02302 (Fed. Cir., op. filed Feb. 1, 2021).

“This was a long-running case with a very satisfying outcome,” Reines said. “The stakes were substantial. We invalidated a total of eight patents in three waves of proceedings.”

In another Illumina matter, Reines won a major ruling granting a motion for preliminary injunction against BGI Genomics, a Chinese competitor. In June 2020, U.S. District Judge William H. Orrick III of San Francisco blocked BGI’s planned billion-dollar launch of its DNA sequencers in the U.S. Illumina Inc. v. BGI Genomics Co. Ltd., 3:19-cv-03770 (N.D. Cal., filed June 27, 2019).

Reines noted that the preliminary injunction litigation took place while BGI continued to pursue its U.S. market roll-out, refusing to delay the project even as the pandemic spread worldwide. “This was the first preliminary injunction I’ve pursued via Zoom, and it came at the peak of Covid uncertainty.” Trial is set for November.

Also in 2020, Reines broke new ground in process patent eligibility under section 101 of the Patent Act by persuading a Federal Circuit panel to reverse a trial court’s summary judgment order in favor of an Illumina rival. Two months after Reines’ oral argument, the panel ruled 2-1 that the patents-in-suit, which relate to DNA tests for Down syndrome, describe a “method of preparation” that distinguishes them from diagnostics patents. It was the first time the circuit had identified a method of preparation as a category in the patentable subject matter analysis. Illumina Inc. v. Ariosa Diagnostics Inc., 19-1419 (Fed. Cir., op. modified Aug. 3, 2020).

“Courts had been unfriendly to patents in the biotech space,” Reines said. “This was an important decision over a patent for preparing DNA.”

- John Roemer