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

Background

Illumina Inc. and Illumina Cambridge Ltd. sued BGI Genomics Co., Ltd., BGI Americas Corp., MGI Tech Co., Ltd., MGI Americas, Inc., and Complete Genomics, Inc. Illumina alleged that BGI’s CoolMPS products infringed claim 13 of U.S. Patent No. 7,777,973 (the ’973 Patent), claim 3 of U.S. Patent No. 7,541,444, and claim 1 of U.S. Patent No. 10,480,025 (the ’025 Patent).

BGI moved for partial summary judgment under Rule 56, which allows judgment when no genuine dispute of material fact exists and the moving party is entitled to judgment as a matter of law. BGI argued that the ’973 Patent was invalid for failing the patent-law requirements of enablement and written description under 35 U.S.C. § 112. BGI also argued that CoolMPS did not infringe the ’025 Patent.

The ’973 Patent

BGI argued that the ’973 Patent did not teach a skilled person how to determine a sequence when multiple unlabeled nucleotides were added simultaneously. Illumina argued that this was outside the scope of the claims and that BGI had not shown the patent to be invalid.

The court held that BGI had not waived this invalidity theory because it was additional evidence supporting BGI’s previously disclosed theory concerning unlabeled nucleotides, rather than a new theory. The court then denied summary judgment on invalidity.

For enablement, the court explained that a patent specification must teach skilled people how to make and use the full scope of the claimed invention without undue experimentation. The court had previously determined that the claims allowed labeled and unlabeled nucleotides and did not require a particular order for adding them. But the claims did not require multiple unlabeled nucleotides to be added simultaneously. Because the allegedly unworkable embodiment was outside the claim scope, the patent did not need to enable that embodiment.

The court also ruled that, even if the claims covered simultaneous addition of multiple unlabeled nucleotides, factual disputes would prevent summary judgment. The parties disputed whether the specification disclosed a method that could be adapted for that purpose and whether a skilled person could use it without undue experimentation.

For written description, the court asked whether the specification would have objectively shown a skilled person that the inventors possessed the claimed subject matter when they filed the application. The court found a genuine dispute about whether the specification disclosed the contested combination. It therefore denied BGI’s motion for summary judgment that the ’973 Patent was invalid.

The ’025 Patent

BGI argued that CoolMPS did not infringe the ’025 Patent because its detectable antibody complexes bind to both the nucleotide’s base and sugar. Illumina argued that the claims required a label linked at least to the base and did not exclude a label that also interacted with the sugar.

The court considered BGI’s argument even though Illumina said BGI had not raised the proposed interpretation during claim construction. The court treated the argument as a request for a non-infringement ruling based on the claim language’s plain meaning, not as a request for a new claim construction.

The court held that the ’025 Patent’s specification clearly and unequivocally disclaimed claim scope covering a detectable label attached to the sugar. The specification repeatedly described the invention as linking the label to the base and contrasted it with prior art in which the label was attached to the sugar. The court concluded that this disclaimer excluded a nucleotide or nucleoside with a label attached to the sugar.

The court found no genuine dispute that CoolMPS antibodies bind to both the base and the sugar. It therefore held that CoolMPS could not literally infringe the ’025 Patent. The court also held that Illumina could not pursue infringement under the doctrine of equivalents—a theory that treats an accused feature as legally equivalent to a claimed feature—because Illumina could not use that doctrine to cover a structure that the patent specifically excluded. The court granted BGI’s motion for summary judgment on CoolMPS’s non-infringement of the ’025 Patent.

Motions to Seal and Disposition

The court granted in part and denied in part both administrative motions to seal. It granted sealing for material discussing BGI’s trade secrets and confidential research and development information. It denied sealing for other materials and ordered the clerk to unseal Docket Nos. 408-4, 408-6, 408-8, 408-12, 408-14, 419-4, and 419-8, as specified in the order.

The court concluded that BGI’s partial motion for summary judgment was granted in part and denied in part. BGI’s motion concerning invalidity of the ’973 Patent was denied. BGI’s motion concerning CoolMPS’s non-infringement of the ’025 Patent was granted. The court also vacated the September 3, 2021 claim-construction hearing.