Illumina, Inc. v. BGI Genomics Co., Ltd

Background

Illumina and BGI compete in DNA sequencing. Illumina alleged in two related cases that BGI’s standardMPS and CoolMPS products infringed five Illumina patents concerning sequencing-by-synthesis technology. That technology adds and reads DNA building blocks one at a time. The patents include U.S. Patent Nos. 7,566,537, 9,410,200, 7,771,973, 7,541,444, and 10,480,025.

Illumina sought preliminary injunctions, which are temporary court orders issued before a final trial decision. To obtain them, Illumina had to show a likelihood of success on the merits, likely irreparable harm without an injunction, a favorable balance of hardships, and that an injunction would serve the public interest.

Likelihood of infringement and patent validity

The court found that Illumina showed a likelihood that BGI’s standardMPS products infringed the ’537 and ’200 patents. The court also found a likelihood that CoolMPS infringed claims of the ’973 and ’444 patents. Among other things, the court rejected BGI’s proposed narrow reading of the ’973 patent’s requirement concerning when the blocking group must be removed. The court concluded that CoolMPS practiced the claim’s limitations even though it added an additional step.

For the ’444 patent, the court found sufficient evidence that the claim’s final limitation did not apply when the claimed molecule used an azidomethyl group. The court therefore found a likelihood that CoolMPS infringed the ’444 patent as well.

BGI challenged the validity of the asserted patents based on lack of enablement, anticipation, and obviousness. Enablement requires a patent’s description to teach a skilled person how to make and use the claimed invention without undue experimentation. The court concluded that BGI had not shown that the relevant claims lacked enablement. The court also rejected BGI’s argument that the ’444 patent was anticipated by the Zavgorodny reference, reasoning that the reference disclosed a nucleoside rather than the claimed nucleotide. Finally, the court found that BGI had not adequately shown that the asserted claims were obvious based on combinations involving Zavgorodny and other references.

Irreparable harm and other injunction factors

The court found that Illumina would likely suffer harm that monetary damages could not adequately remedy. It cited the prospect of a two-player market, lost sales, price erosion, damage to Illumina’s market position, and harm from BGI’s offering products at no cost to influential industry leaders. The court also found a sufficient connection between the alleged infringement and the threatened harm because accurate DNA sequencing drove sales of the competing products.

The court rejected BGI’s arguments that its research and development investment, potential effects on jobs, and the public benefits of increased competition outweighed Illumina’s interests. It concluded that the balance of equities and the public interest favored an injunction. The court did not decide the merits of BGI’s separate patent-infringement allegations against Illumina in this motion.

Ruling and scope

Judge Orrick granted Illumina’s motions for preliminary injunctions. The court held that BGI’s research and development activities, including no-cost trials with influential industry leaders, could be enjoined. The court also concluded that BGI’s standardMPS research and development activities were properly subject to the injunction.

The court accepted BGI’s argument that its sample-preparation systems, standing alone, had not been shown to infringe because they could be used with unaccused sequencing systems. Those systems were therefore not included in the injunction. The court noted, however, that sample-preparation systems sold as part of infringing sequencer modules would be enjoined. The order was a preliminary-injunction ruling, not a final trial judgment on infringement or patent validity.