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

Background

The court held a hearing about two joint discovery-letter disputes in two related patent cases. The order addressed Illumina’s requests for additional responses from the BGI defendants and Illumina’s subpoenas to MyChem LLC and MyChem’s general manager, Chanfeng Zhao.

Interrogatories and worldwide sales information

In Case No. 20-cv-01465, Illumina moved to compel further answers to interrogatories 2 and 22. Interrogatory 2 sought information about every use, distribution, offer for sale, or sale of CoolMPS. Interrogatory 22 sought comparable information about StandardMPS. The BGI defendants said CoolMPS had not been sold, distributed, or offered for sale in the United States, but acknowledged development work and use of commercial kit products at CGI’s San Jose facility beginning around January 2020. They also said they had used StandardMPS internally but did not state how many times.

The court ruled that the number of uses was responsive and relevant to damages because each alleged use could represent an infringement. The court rejected the argument that producing an exact number was too burdensome. It said the defendants could use samples, review selected periods or experiments, extrapolate from those results, and interview employees to develop informed estimates.

Illumina also sought worldwide sales information for the accused products. The court found that information relevant to whether a permanent injunction should issue, including possible price erosion and lost market share. It also found worldwide sales relevant to whether CoolMPS was an available and acceptable non-infringing alternative if StandardMPS were found to infringe. The defendants did not identify a specific burden associated with producing consolidated audited financial information or database-based worldwide sales information.

The court therefore granted Illumina’s motion to compel for the reasons stated in the order.

Subpoenas to MyChem and Zhao

Illumina’s document subpoena sought information about chemicals MyChem supplied to the defendants, MyChem’s development work involving chemicals containing azidomethyl, and communications with the defendants about that development work. The deposition subpoena sought Zhao’s testimony. MyChem and Zhao objected to the subpoenas.

For requests concerning the supplied chemicals and communications, the court held that the information could be obtained more conveniently from the defendants. The defendants had already produced custodial documents, including emails, using searches that included “azid,” and had offered to produce all non-privileged custodial emails containing “MyChem.” The court ordered the defendants to honor that offer and produce those emails. It found no justification for obtaining the same information from MyChem.

For MyChem’s internal development documents, the court applied the rule requiring a substantial need before discovery of confidential research, development, or commercial information from a nonparty. The court found no substantial need. It concluded that Illumina’s existing infringement contentions did not identify a theory that the defendants induced MyChem or other suppliers to infringe, and Illumina had not moved to amend those contentions. The court also rejected Illumina’s alternative argument that the documents might show the defendants’ knowledge of or copying of Illumina’s patents, calling that theory speculative and noting that the defendants’ own documents were more likely to provide that information.

The court likewise found that Illumina had not shown a substantial need to depose Zhao about MyChem’s confidential information. It quashed Illumina’s subpoenas to MyChem and Zhao.

Ruling

Judge Hixson granted Illumina’s motion to compel the interrogatory and worldwide-sales information, ordered production of the non-privileged custodial emails containing “MyChem,” and quashed the subpoenas to MyChem and Zhao. The opinion was signed by Thomas S. Hixson, although the supplied case metadata identifies William Orrick as the judge.