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

Background

Defendants BGI Genomics Co., Ltd., BGI Americas Corp., MGI Tech Co., Ltd., MGI Americas Inc., and Complete Genomics Inc., referred to collectively as “BGI,” moved for leave to amend their invalidity contentions. They sought to add a prior-art reference titled Simple Synthesis of 5-Vinyl- and 5-Ethynyl-2’-Deoxyuridine-5’-Triphosphates, referred to as “Kovacs.” Plaintiffs Illumina Inc. and Illumina Cambridge Ltd., referred to collectively as “Illumina,” opposed the motion.

BGI’s counsel discovered a reference to Kovacs in a handwritten notebook that Illumina had produced in April 2020. Counsel found the notation while preparing for Dr. Xiaolin Wu’s December 10, 2020 deposition, obtained a copy of Kovacs on November 30, 2020, and then determined that BGI considered it relevant prior art. BGI asserted that Kovacs allegedly disclosed the same methodology used by inventors of Illumina’s ’444 and ’973 patents to convert nucleosides to nucleotides and provided a reason for a skilled person to make that conversion.

BGI moved to amend its answer to add an inequitable-conduct defense based on the alleged concealment of Kovacs on December 9, 2020. It sought Illumina’s consent to amend its invalidity contentions on December 17, 2020. After the parties exchanged written positions and met and conferred without reaching agreement, BGI filed this motion on January 27, 2021.

Legal Standard

Patent Local Rule 3-6 allows amendment of patent contentions only by court order and upon a timely showing of good cause. The rule identifies the recent discovery of material prior art despite an earlier diligent search as a circumstance that may support good cause, absent undue prejudice to the opposing party. Courts first examine the moving party’s diligence. If the party acted diligently, courts then consider whether the amendment would prejudice the opposing party.

Diligence

The court rejected Illumina’s argument that BGI was not diligent in finding Kovacs. The court considered the large number of handwritten notebooks, the difficulty of searching handwritten material, the relative illegibility of the notation, and the fact that the notation apparently listed the wrong publication year. The court also considered BGI’s extensive initial invalidity contentions and its expert’s detailed declaration identifying numerous other prior-art references as evidence that BGI had conducted a reasonably diligent initial search.

The court also rejected Illumina’s argument that BGI delayed unreasonably after discovering Kovacs. BGI publicly disclosed the discovery in its December 9, 2020 motion concerning its answer, sought consent to amend its invalidity contentions on December 17, 2020, and engaged in several weeks of correspondence and meet-and-confer efforts before filing the motion. The court concluded that BGI acted with reasonable diligence both in discovering Kovacs and in seeking leave to amend.

Prejudice

Illumina argued that amendment would be unduly prejudicial because claim construction was complete, fact discovery was nearing its end, and the amendment would require new obviousness combinations and claim charts. The proposed changes would add Kovacs in combinations involving the ’444, ’973, and ’025 patents.

The court found no undue prejudice. It noted that Illumina had known about Kovacs since early December 2020, that Kovacs had been formally part of the case since the court granted BGI’s related motion in February, and that Illumina did not identify anything it would have done differently during fact discovery or explain why additional fact discovery or a schedule change was necessary. The court concluded that the added reference would likely be addressed primarily during expert discovery, which had not yet begun.

Disposition

The court granted BGI’s motion for leave to amend its invalidity contentions. The order addressed permission to amend the patent contentions; it did not decide whether Kovacs ultimately invalidates any Illumina patent.