Sequenom and Illumina prevail in UK confidentiality dispute
The England and Wales High Court has ruled in favour of Sequenom and Illumina, after the companies asked the court to rule that they were entitled to receive confidential information in legal proceedings against three competitors without additional restriction.
The court said Tuesday, January 22 that medical laboratories TDL, TDL Genetics and molecular diagnostics company Ariosa Diagnostics, had been wrong to try to impose additional restrictions on Sequenom and Illumina’s in-house legal counsel to see confidential information.
The ruling comes amid patent dispute between the two parties.
Sequenom is the registered owner of the ‘321 patent (EU number 1 524 321 B2). The patent is for an invention to detect genetic abnormalities in a foetus by sampling the blood of the mother, which contains DNA of the baby. Illumina claims it is an exclusive licensee of the patent.
Sequenom and Illumina claim TDL Genetics, The Doctors Laboratory (TDL) and Ariosa Diagnostics infringed the ‘321 patent with their product, “Harmony Prenatal Test”.
In their response, TDL, TDL Genetics and Ariosa denied infringement and sought to invalidate the patent on the grounds of insufficiency, want of novelty and want of inventive step.
In the early phases of litigation, the two parties agreed a “consent order” to deal with confidentiality, and set up a “confidentiality club”.
Under the terms of the deal, Illumina appointed two in-house lawyers and Sequenom appointed one in-house lawyer. The lawyers would be responsible for protecting confidential information received by the other party.
The consent order said that it would be up to the party providing the information to designate the information as “confidential”.
Additionally, the consent order allowed the admission to the “confidentiality club” of an external expert who could give “expert evidence in the proceedings” of the case.
On October 5, 2018, Herbert Smith Freehills, an international law firm representing Ariosa Diagnostics, sought to introduce additional confidentiality restrictions regarding Ariosa’s “Product and Process Description” (PPD).
It said Illumina had issued similar infringement proceedings against Ariosa in the Northern District of California, concerning the Harmony Prenatal Test.
Ariosa said the individuals named as in-house counsel for Illumina have been involved in litigation against the company since 2014 and it was “concerned about them being privy to confidential information”.
Ariosa added, if Illumina wished for its counsel to see the PPD, it should first confirm that they will not be involved in any non-UK litigation concerning Harmony.
Illumina and Sequenom declined to accept the restrictions.
The court found in favour of Illumina and Sequenom, finding that the confidentiality regime agreed to included disclosure of the PPD and that there was no good reason to require their counsel to agree not to participate in non-UK litigation over the patent.
Additionally, the expert appointed by Illumina and Sequenom, Michael Lovett, who is chair of systems biology at the national heart and lung institute, was denied access to the confidentiality club by TDL, TDL Genetics and Ariosa.
The companies said they would only give consent under the condition that Lovett would not assist Illumina in foreign proceedings in the US.
In his decision, Judge Anthony Mann said the defendant’s case for imposing a “foreign proceedings” restriction on Lovett was “thin to the point of contrivance”.
He said there was no reason to suggest that Lovett will be “anything other than conscientious in his use of the information he gets”, and that consent had been “unreasonably withheld”.
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