Illumina Inc. et al. v. BGI Genomics Co. Ltd. et al.

Patent Infringement

Northern District

U.S. District Judge William H. Orrick III

Plaintiffs Attorney: Weil, Gotshal & Manges Llp, Edward R. Reines, Derek C. Walter, Douglas W. Mcclellan, Melissa L. Hotze, Andrew P. Gesior, Kathryn Leicht, Nathaniel Ngerebara, Melinda I. Root, Audra M. Sawyer

Defense Attorneys: Quinn Emanuel Urquhart & Sullivan, Llp, David L. Bilsker, Andrew E. Naravage, David A. Perlson, Margaret H. Shyr, Elle X. Wang, Allyson E. Parks, Anastasia N. Fernands, Kevin P.B. Johnson, Joseph Milowic Iii, Andrew Tigchelaar, Anne S. Toker

Edward R. Reines

A major reason Illumina Inc. was successful at trial against competing DNA-sequencer manufacturer BGI Genomics was because Illumina's sequencers were themselves very successful, according to Edward R. Reines, one of the company's attorneys.

The early machines used to sequence the human genome were the size of large washing machines and cost $1 million or more to decode a single person's DNA. But over the last decade plus, Illumina developed and patented technology with which it now makes sequencers that are smaller and can decode a person's DNA for less than $1,000, he said.

"And they essentially revolutionized health care and genomic science in the process," Reines said. As an example, testing for Down syndrome can be done with a blood sample rather than through amniocentesis.

BGI Genomics used Illumina's technology to make and sell its own sequencers in China, where it is based and where U.S. patents don't apply. It also used the technology internally for research and development in the United States, so Illumina sued for infringement. Illumina Inc. v. BGI Genomics Co. Ltd., 3:19-cv-03770 (N.D. Cal., filed June 27, 2019).

But then, BGI announced it would begin selling some of its sequencers in the United States in 2020. Weil Gotshal's first major victory for Illumina came that June when U.S. District Judge William H. Orrick issued a preliminary injunction to block the sales.

Winning that injunction was no small matter, Reines said. "Preliminary injunctions of a major product launch like this... don't fall off trees."

Another key victory along the way was winning summary judgment throwing out BGI's $54 million counterclaim alleging that Illumina was infringing one of the Chinese company's patents. "That was actually a substantial case from the damages standpoint," Weil's Derek C. Walter said.

During the six days of trial, some of the most important evidence was simply "the fantastic story of how Illumina got [its] technology out to so many more people by reducing cost," Reines said.

Under the patent law doctrine of "commercial success," an invention's success in the marketplace bolsters the claim that its patents are original and are not obvious. The thinking is that if a technology were obvious and likely to be in high demand in the market, then many people would have developed the technology sooner.

"If it was so obvious and there was a pot of gold at the end of the rainbow, then a lot of people would have done it a lot earlier," he said.

The jury returned its verdict of $8 million on the Tuesday after Thanksgiving last year. Reines said the amount was relatively low for a major patent victory because Orrick's injunction had prevented BGI from selling infringing devices in the U.S.

The parties are scheduled to return to Orrick's court in early March for a hearing on posttrial motions, including making the injunction permanent and trebling damages.

David L. Bilsker of Quinn Emanuel Urquhart & Sullivan LLP, one of BGI's lead attorneys in the trial, did not respond to a request to comment on the verdict.

- Don DeBenedictis