Illumina Azidomethyl Blocker Patent Claims Invalidated in Patent Infringement Suit Against BGI Genomics

Wilson Sonsini Goodrich & Rosati

On November 30, 2021, a jury in the patent infringement suits between Illumina, Inc. and BGI Genomics Co. in the U.S. District Court for the Northern District of California returned a verdict invalidating certain patent claims of Illumina's U.S. Patent No. 7,541,444 (the '444 Patent) and U.S. Patent No. 10,480,025 (the '025 Patent) asserted against BGI in the suit, which are directed to blocked nucleotide molecules. The verdict also found patent claims in Illumina's U.S. Patent Nos. 7,771,973 (the '973 Patent), 7,566,537 (the '537 Patent), and 9,410,200 ('200 Patent) directed to methods of using or making blocked nucleotide molecules useful for nucleic acid sequencing applications valid and infringed by BGI, and awarded Illumina $8,000,000 in damages.

On June 27, 2019, Illumina filed its first complaint in the U.S. District Court for the Northern District of California against BGI, alleging that BGI's sale of its standard MPS technology in the United States constituted willful infringement of the '537 patent and the '200 patent to Illumina.1 On February 27, 2020, Illumina filed its second complaint in the district court, alleging that BGI's sale of its CoolMPS technology constituted willful infringement of the '444 patent, the '973 patent, and the '025 patent to Illumina.2 BGI's responses alleged affirmative defenses of noninfringement and invalidity under 35 U.S.C. §§ 101, 102, 103, 112, and the judicial doctrine of obviousness-type double patenting of the asserted Illumina patents. The court, with Honorable Judge William H. Orrick presiding, related the two cases, and on September 23, 2020, granted a preliminary injunction in Illumina's favor enjoining BGI from making, using, selling, importing, or offering for sale in the United States the accused infringing technology.

Trial was held from November 15 to November 22, 2021. The jury verdict was delivered on November 30, 2021. The jury found claims 1 and 3 of the '444 Patent and claim 1 of the '025 Patent invalid as obvious. The jury found claims 1 and 13 of the '973 Patent, claims 1, 4, and 6 of the '537 Patent, and claims 11 and 19 of the '200 Patent valid and infringed by BGI.

 

[1] Illumina, Inc. et al v. BGI Genomics Co., Ltd et al, 3:19-cv-03770 (N.D. Cal.) (Filed 6/27/2019).

[2] Illumina Inc. et al v. BGI Genomics Co., Ltd. et al, 3:20-cv-01465 (N.D. Cal.) (Filed 2/27/2020).

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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