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

Background

Illumina filed two related cases and sought preliminary injunctions concerning BGI’s CoolMPS technology. On June 15, 2020, the court granted both requests and later issued the preliminary injunctions. BGI appealed to the Federal Circuit, challenging the scope of the injunctions rather than the court’s determinations concerning infringement and patent validity.

BGI moved to stay or modify the injunctions while the appeal was pending. It sought permission to conduct internal development work, including testing, optimizing, and validating sequencing chemistries and developing new applications. BGI represented that the work would remain internal, would not be published or used in marketing or sales materials, and would not be used externally. It also sought to use sequencing reagents that did not practice or embody the asserted patent claims.

The parties agreed that 24 library preparation products would be excluded from the injunction, making BGI’s challenge concerning those products moot. Illumina argued that BGI’s development work could make BGI’s services and products more competitive, including outside the United States. BGI argued that preventing development would cause harm to its technology and employees and would deprive the public of potentially competing, noninfringing products.

Legal standard and analysis

Federal Rule of Civil Procedure 62 allows a district court to stay an injunction pending appeal. The court considered four factors: the applicant’s likelihood of success on appeal, irreparable harm without a stay, harm to other interested parties, and the public interest.

The court found that the first factor weighed slightly in Illumina’s favor. Although BGI had not shown a strong likelihood of success on its challenge to the injunction’s scope, a stay could still be appropriate if BGI showed a substantial case on the merits. The court concluded that the remaining factors favored BGI. It reasoned that sufficiently specific and enforceable controls could prevent Illumina’s alleged harm, including commercial use in the United States, overseas harm flowing from the development work, and use of the work to improve BGI’s existing services.

The court also rejected Illumina’s arguments that BGI should not be allowed to develop possible noninfringing alternatives or that BGI had waived its argument concerning noninfringing activities. The court stated that internal, purely noncommercial development of noninfringing technology would not harm Illumina in the circumstances presented.

Ruling

The court granted BGI’s motion as conditioned below. It ordered that the preliminary injunctions in both related cases were partially stayed pending BGI’s appeal so that they did not enjoin: (1) the 24 products containing no azidomethyl blocked nucleotides, as described in the cited docket material; or (2) BGI’s use of the accused sequencers with noninfringing sequencing reagents.

The court further ordered that, once it approved BGI’s protocols, the injunctions would also be stayed as to BGI’s internal development activities relating to CoolMPS that stopped short of commercialization. BGI had 14 days to provide Illumina and file protocols or controls designed to ensure that the development activities remained noncommercial. The injunction remained in place as to those development activities until the parties stipulated to the protocols or the court approved them. The court also vacated the hearing and decided the motion without oral argument.