Illumina, Inc. v. BGI Genomics Co., Ltd
- William Orrick
- 3:19-cv-03770
- U.S. District Court · Northern District of California
- 2
In Illumina v. BGI Genomics, Magistrate Judge Thomas S. Hixson granted Illumina’s motion to compel discovery for its opposition to a stay motion.
The order affected the defendants, who were required to produce non-privileged, non-work-product documents responsive to Request for Production 98, and the plaintiffs, who sought the documents for their opposition to the stay motion.
What happened
Illumina asked the court to require BGI Genomics and the other defendants to produce documents about harm they claimed resulted from the preliminary injunction. Illumina wanted the documents before filing its opposition to the defendants’ request to pause parts of that injunction during an appeal.
The court found the requested documents relevant and proportional because the defendants’ predicted harm was part of the analysis for whether to stay the injunction. The court also noted that predicted layoffs had begun and that actual harm was the best evidence of likely harm.
Magistrate Judge Thomas S. Hixson granted Illumina’s motion to compel. He ordered the defendants to produce all responsive documents that were not privileged or protected as attorney work product by noon on July 30, 2020.
The detailed version
- Illumina, Inc. v. BGI Genomics Co., Ltd · No. 3:19-cv-03770
- William Orrick
- July 29, 2020
Background
Judge Orrick had issued a preliminary injunction in the related cases on July 8, 2020. The defendants moved to stay, or pause, certain parts of that injunction while they pursued an appeal, including its application to internal development activities.
Illumina and the other plaintiffs asked the court to order the defendants to produce documents responsive to Request for Production 98. That request sought documents and things related to any claim that the defendants had suffered harm from the preliminary injunction. The plaintiffs wanted the documents for their opposition to the stay motion, which was due shortly after the discovery request.
The court had previously ordered discovery about the defendants’ claim that the preliminary injunction would harm them. That claim included predictions about employee layoffs and harm to resources invested in CoolMPS. The defendants’ stay motion again relied on predictions that additional employees would have to be laid off if internal development remained enjoined.
Court’s analysis
The court considered whether the requested discovery was relevant and proportional. It concluded that it was. The balance of hardships is a factor in deciding whether to issue an injunction or stay one, so evidence concerning the defendants’ claimed harm was relevant to the stay request and to the plaintiffs’ patent-infringement claim.
The court rejected the idea that the preliminary injunction’s issuance made the subject irrelevant. Although the defendants’ claimed harm was predictive, the event triggering the prediction—the issuance of the injunction—had occurred. The court cited Ninth Circuit authority stating that harm that actually occurred because of an injunction is the best evidence of harm likely to occur because of it. Defense counsel also stated during the hearing that the predicted layoffs had begun.
The court further stated that defense counsel had made clear that Request for Production 98 was not unduly burdensome, disproportionate, or difficult to answer within the requested time.
Ruling
Magistrate Judge Thomas S. Hixson granted the plaintiffs’ motion to compel. He ordered the defendants to produce all non-privileged, non-work-product documents responsive to Request for Production 98 by noon on July 30, 2020. The order did not decide the defendants’ motion to stay the preliminary injunction.
Read the full 2-page opinion on CourtListener, the free public archive maintained by the Free Law Project.