Facts

Genomics is complicated enough, but throw patent infringement in the mix and it becomes another level of complicated. Plaintiff Illumina Inc. is an American company, incorporated in 1998. It develops, manufactures and markets integrated systems for analyzing genetic variation and biological function such as its DNA sequencing machine, NovaSeq, released in 2017 and adopted in labs all over the world. This machine has the capacity to sequence up to 48 whole human genomes per run, which could take up to 44 hours. Illumina owns several U.S. Patents for DNA-sequencing technology: Nos. 7,541,444 ( '444 Patent); 10,480,025 ( '025 Patent)--patents directed to blocked nucleotide molecules; and Nos. 7,771,973 (the '973 Patent); 7,566,537 ( '537 Patent), and 9,410,200 ( '200 Patent)--patents directed to methods of using or making blocked nucleotide molecules useful for nucleic acid sequencing applications.

Defendant BGI Genomics is a Chinese genome sequencing company formed in 1999 to participate in the Human Genome Project as a genetics research center. It provides sequencing services for DNA and RNA research applications and other genetics related services. In 2018, BGI unveiled its own genome sequencing machine, one that can sequence a whole genome in 24 hours, which is about six terabytes of sequencing data.

Illumina and BGI have been locked in several lawsuits against each other. In June 2019 (Illumina Cambridge Ltd et al. v. BGI Americas Corp et al., Case No. 3:19-cv-03770) and February 2020 (the present case, Case No. 3:20-cv-01465), Illumina filed lawsuits against BGI and its subsidiaries, including MGI Tech Co. and Complete Genomics Inc., charging the company with infringing on its proprietary sequencing-by-synthesis chemistry. The two cases were related by Judge William Orrick. Then in June 2020, Judge Orrick granted Illumina's motion for preliminary injunction, prohibiting BGI from launching its DNA sequencing instruments and related reagents in the United States.

PLAINTIFF'S CONTENTIONS: In June 2019, Plaintiff Illumina filed a complaint against BGI in the U.S. District Court for the Northern District. In that particular case, Illumina alleged that BGI's sale of its standard MPS technology in the United States was an infringement of its '537 and '200 patent. Then in February of the following year, Illumina filed its second complaint in the district court alleging that BGI's sale of its CoolMPS technology infringed its '444, '973, and '025 patents. Illumina contended that BGI infringed its genetic-sequencing machines, imitating Illumina's sequencers and marketing copies of the sequencing systems without authorization from Illumina and in violation of its patent rights. According to Illumina, after having copied the sequencing systems, defendant BGI began to import the sequencers into the United States, using them in its California facility, announcing a commercial launch and threatening to sell them throughout the United States. Specifically, as to this case, Illumina brought the action to stop BGI's infringement of the five patents. Illumina argued that its patents were technological breakthroughs that led to a dramatic reduction in the cost of gene sequencing.

DEFENDANT'S CONTENTIONS: Defendants BGI and its subsidiaries generally alleged that the patents were invalid or unenforceable. They also argued that Illumina's lawsuit was completely without merit and was pursued in order to try and maintain its market monopoly, suppress industry development, and prevent choice from being offered to customers. Specifically, BGI contended affirmative defenses of noninfringement and invalidity under 35 U.S.C. Sections 101, 102, 103, 112, and the judicial doctrine of obviousness-type double patenting of asserted Illumina patents. Also, BGI, and or its subsidiaries, have filed, in other lawsuits, complaints against Illumina alleging antitrust violations, and anticompetitive conduct.

Result

On November 30, 2021, the jury held that defendant BGI must pay Illumina $8 million for the gene-sequencing patent infringement. Specifically, the jury found claims 1 and 3 of the '444 Patent and claim 1 of the '025 Patent invalid as obvious, that is, that the invention was obvious to either the experts or general public and thus could not be patented. The jury found claims 1 and 13 of the '973 Patent, claims 1, 4, and 6 of the '537 Patent, and claims 11 and 19 of the '200 Patent valid and infringed by BGI. The jury also held that BGI's infringement was intentional, a finding that could increase the damage award threefold.

Other Information

Earlier this year, the U.K.'s High Court of Justice, Chancery Division, Patents Court, issued a judgment in Illumina's favor against one of BGI's subsidiary, which BGI is appealing. The two companies are embattled in several lawsuits involving patent infringement in other countries and the United States. One of BGI's subsidiaries, Complete Genomics, filed a lawsuit in Delaware, alleging that a number of genetic sequencers and related reagents from Illumina--including the NovaSeq 6000, NextSeq series, and MiniSeq--are infringing Complete Genomics' U.S. Patent No. 9,222,132 ( '132 Patent). The patent covers proprietary two-color sequencing technology, one of the core technologies for high-throughput, high-quality sequencing and a key technology in the sequencing technology invented by Complete Genomics.