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

Background

This order resolves motions heard around the pretrial conference in patent litigation between Illumina and BGI. The court ruled on motions to exclude expert reports and motions in limine, which are requests to limit evidence or arguments at trial. The court had previously granted summary judgment for Illumina on the issue of inequitable conduct, meaning whether Illumina’s patent-related conduct before the Patent and Trademark Office involved an intent to deceive.

Illumina’s motion to exclude expert opinions

The court granted Illumina’s request to exclude Dr. Hrdlicka’s and Dr. Metzker’s opinions about the inventors’ state of mind and alleged reliance on the Zavgorodny and Kovacs prior-art references. The court held that opinions retracing the inventors’ path to the invention improperly relied on hindsight and did not address what a hypothetical person of ordinary skill in the field would have found obvious. The court also concluded that any limited relevance to witness credibility was outweighed by the risk of prejudice, confusion, and misleading the jury, particularly after the court’s prior inequitable-conduct ruling.

The court also granted Illumina’s request to exclude portions of Dr. Metzker’s opinions concerning invalidity of the ’973 Patent. Metzker interpreted the patent claims to require monitoring sequential nucleotide incorporation on the same growing primer and the same target molecule through multiple cycles. The court held that this was the claim interpretation it had rejected during claim construction. It also held that the patent did not limit the detection method in the specific way Metzker proposed.

The court denied Illumina’s request to exclude portions of Dr. Kearl’s damages opinions concerning bargaining power in a hypothetical 2014 license negotiation. The court treated Illumina’s objections to Kearl’s assumption of a 50/50 bargaining split as a factual dispute suitable for cross-examination rather than a basis to exclude the testimony.

BGI’s motion concerning Dr. Prowse

The court granted BGI’s motion to exclude the amended report of Illumina’s damages expert, Dr. Prowse. The court held that the amended report went beyond the amendments permitted by an earlier order. It struck the entire amended report without leave to amend. It also ordered that portions of Prowse’s original report that had previously been struck without prejudice would now be struck with prejudice. Illumina could still rely on the return-on-investment damages theory identified as the first data point in Prowse’s original report.

Illumina’s motions in limine

The court granted Illumina’s request to exclude objective-indicia evidence not disclosed in an expert report. It also granted the request to exclude arguments that the inventors intended to deceive the Patent and Trademark Office or that the patents were obvious based on the inventors’ path to the invention.

The court deferred ruling on evidence about BGI patents not at issue, explaining that the relevance of those patents depended on context. It granted Illumina’s request to exclude assertions of antitrust claims, undue market power, and unrelated conduct, but denied it as to evidence of allegedly anticompetitive conduct related to Illumina’s defense of commercial success. The court specifically allowed evidence concerning CGI and Pacific Biosciences and excluded unrelated evidence concerning Illumina’s acquisition of Grail.

The court granted the request to exclude evidence and arguments about negative effects of a verdict against BGI, including claimed effects on COVID-relief efforts. It denied the request as to discussion of BGI’s COVID-related products for background and as to BGI’s rebuttal to possible arguments about moving research and development outside the United States. The court denied the request to bar BGI from presenting evidence that Illumina copied BGI’s technology or observed BGI sequencers because such allegations could be relevant to willfulness and industry practice.

The court granted the request concerning attorney advice and privileged deposition subjects, subject to allowing testimony about nonprivileged opinions. It also granted the request to exclude evidence about Dr. Romesberg’s personal life and involvement in a Title IX investigation. The court denied the request to bar Metzker’s testimony about specified claims of the ’025 Patent because it viewed those claims as variations of limitations Metzker had addressed.

BGI’s motions in limine

The court granted BGI’s request to exclude arguments or suggestions that BGI posed a national-security risk, while allowing certain COVID-19 evidence if Illumina opened the door. It granted the request to exclude arguments maligning Chinese companies or business practices, but denied it as to factual references concerning BGI’s location, corporate ownership, resources in China, and any relationship with the Chinese government.

The court denied the request to exclude the video from Dr. Jian Wang’s translated deposition, subject to the parties meeting and conferring about edits. It granted the request to exclude evidence about the preliminary injunction and required the parties to stipulate that damages stopped in 2020 without referring to the injunction. It denied the request concerning the Qiagen injunction and inter partes review proceedings, finding them relevant to willfulness and obviousness.

The court granted the request to exclude results of foreign litigation between the parties, while allowing Illumina to introduce the outcome if BGI referred to the fact of that litigation. It granted the request as to evidence solely related to Illumina’s request for a permanent injunction but denied it as to evidence related to damages. It denied requests concerning testimony from BGI’s experts in the earlier preliminary-injunction proceedings, experts’ other affiliations, and foreign sales, while allowing possible limiting instructions for the foreign-sales evidence.

The court granted the request to exclude evidence about discovery conduct. It deferred ruling on nonwaived privileged subjects, stating that the parties could not provoke privilege assertions. Finally, it granted the request to bar suggestions that BGI’s lack of an opinion of counsel had significance for infringement, validity, or willfulness, while allowing Illumina to address BGI’s withholding of legal advice if BGI relied on legal advice for those issues.

Disposition

Judge Orrick entered the order on October 27, 2021. The order contains multiple grants, denials, and deferred rulings on the parties’ evidentiary motions; it does not decide the underlying patent claims in this order.