BGI didn’t infringe one Illumina patent, fails to invalidate another

The US District Court for the Northern District of California has denied an attempt by Chinese company BGI Genomics to invalidate an Illumina DNA sequencing patent in a summary judgment, leaving the dispute over infringement of another Illumina patent to be decided at trial.

The order on a motion for partial summary judgment ruled that BGI’s CoolMPS gene sequencing product does not infringe Illumina’s US patent 10,480,025 patent, but also denied BGI’s motion that Illumina’s US patent 7,777,973 is invalid.

Separate from this motion, both parties sought additional claim construction regarding the ‘025 patent following the addition of a new infringement theory brought by Illumina.

But with the court ruling that the CoolMPS did not infringe the patent, the hearing, which was scheduled for September 3, has been vacated.

‘973 validity

BGI alleged that the ‘973 patent was invalid for failure to satisfy the enablement and written description requirements of the patent claims.

BGI posed a “simultaneous nucleotide addition” theory, arguing that the scope of the claims did not properly describe the situation where multiple nucleotide types are bought into contact with the target simultaneously.

In its counterargument, Illumina claimed that BGI failed to disclose this theory in its contentions required when arguing invalidity, meaning it should not be applied to invalidity proceedings.

While the court held that BGI did not waive its right to present the theory, it upheld that claims 1 and 13 of the ‘973 patent were valid.

‘025 infringement

Illumina argued that BGI waived its non-infringement argument because it did not raise a question regarding claim construction early enough.

Specifically, BGI argued that “a base linked to a detectable label”, detailed in the ‘025 patent requires that a detectable label be linked “only” to the base.

In the order, district judge Orrick wrote: “The specification clearly disavows the attachment of the label to the sugar and there is no factual dispute that the CoolMPS attaches labels to the sugar. As a result, there can be no literal infringement of the ’025 Patent.”

Case history

Illumina first filed its complaint against BGI after it learned that the company would be selling its CoolMPS product in the US.

It alleged that BGI’s product infringed claim 13 of the ‘973, claim 1 of the ‘025 patent and claim 3 of the ‘444 patent.

In November 2020, the court entered a claim construction order on disputed terms in the three patents and on June 16, 2021, BGI filed the motion for partial summary judgment, alleging the ‘973 patent is invalid for failure to satisfy the enablement and written description requirements and that CoolMPS does not infringe the ‘025 patent.

In February, BGI was given the go-ahead to appeal an English High Court ruling in an ongoing lawsuit launched by competitor Illumina regarding its DNA sequencing patents.

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