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

Background

Illumina Inc. and Illumina Cambridge Ltd. sought permission to amend their patent-infringement contentions concerning BGI Genomics Co., Ltd., BGI Americas Corp., MGI Tech Co., Ltd., MGI Americas, Inc., and Complete Genomics Inc. The proposed amendment would add a literal-infringement theory asserting that BGI’s CoolMPS sequencing reagent infringes claims 1, 7, and 17 of Illumina’s U.S. Patent No. 10,480,025. Illumina had previously asserted that CoolMPS infringed those claims under the doctrine of equivalents, a theory that treats a product as infringing even when it does not literally meet a claim limitation but is sufficiently equivalent to it.

Illumina’s original contentions accused BGI’s StandardMPS product of literally infringing claim 1 and accused CoolMPS under the equivalence theory because Illumina did not believe CoolMPS contained cleavable linking structures. During related United Kingdom litigation, BGI submitted a confidential Product and Process Description describing CoolMPS’s chemical structures. Illumina’s U.S. counsel received an unredacted version on March 16, 2021, and a deposition the next day confirmed that the structures were cleavable linking structures. Illumina notified BGI on March 24 that it planned to seek an amendment and filed the motion on April 13, 2021.

Diligence and good cause

Patent Local Rule 3-6 permits amendment of infringement contentions only by court order and upon a timely showing of good cause. The court explained that diligence has two parts: diligence in discovering the basis for amendment and diligence in seeking amendment after discovering it.

BGI argued that Illumina should have learned about the structures from the CoolMPS paper, a deposition of Dr. Chongjun Xu, other depositions, or Illumina’s United Kingdom trial plan. The court rejected those arguments. It found that the CoolMPS paper did not show that CoolMPS’s linking structures were cleavable, and that Dr. Xu’s testimony was insufficient to put Illumina on notice of such structures. The court also found that Illumina’s failure to locate the relevant United Kingdom trial document was not evidence of a lack of diligence because Illumina’s United Kingdom lawyers and in-house counsel were restricted by a protective order from sharing evidence with U.S. counsel.

The court further concluded that BGI’s failure to produce documents showing CoolMPS’s chemical structure under Patent Local Rule 3-4(a) meant that Illumina could not have discovered the basis for amendment through a reasonably diligent search. The court found that Illumina acted with reasonable diligence in both discovering the information and seeking leave to amend.

Prejudice to BGI

BGI argued that the amendment would prevent it from exploring the new theory through discovery or would require reopening discovery and delay the case. The court found no undue prejudice. The amendment added no new patent, product, or claim, and concerned BGI’s own product. BGI had known about the proposed amendment since mid-March 2021 and had known about Illumina’s related equivalence theory since April 2020. BGI’s expert had already addressed the literal-infringement issue in an expert report, and more than five months remained before trial.

The court allowed BGI to seek additional depositions or a claim-construction hearing if necessary. It directed the parties to meet and confer about any requested depositions and allowed them to submit a joint dispute letter if they disagreed.

Sealing motions and disposition

The court applied the “compelling reasons” standard to the sealing requests because the filings concerned a motion closely related to the underlying patent dispute. It granted the motion to seal Illumina’s motion for leave to amend and specified exhibits at Docket No. 341, granted BGI’s motion to seal specified exhibits to its opposition at Docket No. 360, and granted the motion to seal specified exhibits to Illumina’s reply at Docket No. 375. The court stated that the materials contained or revealed trade secrets, confidential technical and research information, or business information that could harm BGI’s competitive position.

The clerk was ordered to unseal the unredacted documents at Docket Nos. 341-6, 341-14, 341-16, and 375-4 because BGI had not requested that those documents be sealed.

Outcome

Judge William H. Orrick granted Illumina’s motion for leave to amend its infringement contentions. The opinion also granted the three identified motions to seal and ordered the specified unredacted documents unsealed. The text discusses additional docket entries referenced in the order header, including Docket Nos. 342 and 384, but does not clearly state a separate disposition for those entries.