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

Background

This was a discovery order in Illumina’s patent-infringement case against BGI Genomics Co., Ltd. and other defendants. The parties submitted a joint letter about BGI’s answers to interrogatories, which are written questions requiring answers, and requests for production, which seek documents or other materials.

The first dispute concerned discovery about “design around” efforts—changes to an accused product intended to avoid infringing Illumina’s patents. Illumina’s interrogatory 11 sought details about changes made or planned in response to the patents or lawsuit, and request for production 44 sought documents about efforts to design or modify sequencing products because of the patents. Interrogatory 15 broadly sought every change or planned modification to the accused products, regardless of the reason.

The second dispute concerned interrogatory 16 and requests for production 103 and 104. Those requests sought information and documents about enzymes and polymerases used for sequencing with BGI’s StandardMPS or CoolMPS products, including amino-acid sequences and research into improved polymerases.

Design-Around Discovery

The court found interrogatory 11 and request for production 44 relevant and proportional. It explained that design-around efforts could bear on whether any infringement was willful, whether an available alternative design affected a possible permanent injunction, and whether the existence of a noninfringing substitute affected damages. The court also held that Illumina could pursue discovery related to its allegations of domestic sales, offers to sell, use, imports, and exports because those factual issues remained contested.

The court found interrogatory 15 too broad because it sought every product change, whether or not related to avoiding patent infringement. The court limited interrogatory 15 to information about changes made or planned for the purpose of designing around Illumina’s patents-in-suit.

The defendants had refused to answer interrogatories 11 and 15 based on the attorney-client privilege and work-product doctrine. The court rejected the position that all design-around information was protected. It held that the defendants’ factual efforts and plans to design around the patents were not protected merely because lawyers were involved or because the work related to possible litigation. However, actual communications with attorneys remained protected by attorney-client privilege, and attorney-written memoranda containing legal thoughts or impressions remained protected work product.

The court ordered the defendants to answer interrogatory 11 and interrogatory 15 as limited by the order. It also ordered production of nonprivileged, non-work-product documents responsive to request for production 44. Any responsive documents that were privileged or protected work product were to be identified on a privilege log, subject to the parties’ stated agreement concerning communications with outside counsel retained in the litigation.

Enzyme and Polymerase Discovery

The court concluded that the enzyme and polymerase discovery was relevant to Illumina’s asserted claims. After reviewing Illumina’s infringement contentions, the court observed that claims 12 and 13 of the ’025 patent concerned kits containing an enzyme and, in claim 13, a polymerase, terminal transferase, or reverse transcriptase. Illumina’s contentions alleged that BGI’s sequencing used enzymes and at least one polymerase.

The court rejected the defendants’ argument that Illumina could learn only that an enzyme or polymerase was used, without learning which materials were used or other details. The court stated that Illumina was entitled to discover the factual details of how the alleged infringement occurred, including the particular materials used. The court also noted Illumina’s argument that one enzyme used by the defendants might have been Illumina’s and might embody a patented claim, making identification relevant to allegations of copying and willfulness.

The court ordered the defendants to answer interrogatory 16 and produce nonprivileged documents responsive to requests for production 103 and 104.

Disposition

The order required responses and production on both discovery subjects, while limiting interrogatory 15 and preserving protection for actual attorney-client communications and attorney work product. The court did not decide the ultimate patent-infringement claims. Judge Thomas S. Hixson entered the order on December 1, 2020.