This story has been updated to include additional information from the jury verdict.
NEW YORK – A California jury has found BGI and its affiliates responsible for patent infringement and has awarded Illumina $8 million in damages.
In a verdict reached on Tuesday, the jury found that the infringement was willful, allowing Illumina to potentially collect triple damages. It also invalidated Illumina's US Patent No. 7,541,444, titled "Modified nucleotides," and claim one of US Patent No. 10,480,025, titled "Labelled nucleotides."
"We are pleased that the jury found that four of Illumina’s patents directed to our proprietary azido sequencing-by-synthesis chemistry were valid and willfully infringed by BGI," Illumina said in a statement. "We respectfully disagree with the jury’s decision to invalidate [the '444 patent]. We will appeal that part of the jury’s decision."
"We are pleased to see that the jury invalidated the claim of [the '444 patent] asserted by Illumina," MGI said in a statement. "This patent contained the broadest of all the asserted claims and had the longest remaining life of the five asserted patents. With this result, MGI may potentially begin selling CoolMPS technology-based products in the US ten months earlier, by August 2022.
"In addition, the jury awarded Illumina much smaller damages ($8 million), only a third of what it was seeking," MGI said. "We firmly believe that MGI has not infringed any valid Illumina claim and are evaluating options for post-trial proceedings."
In a note to investors, Cowen analyst Dan Brennan suggested the decision will block BGI from entering the US market in the next year or two assuming the verdict is held up on appeal. According to Illumina, the '444 patent was set to expire in June 2023 and US Patent No. 7,771,973, also titled "Modified nucleotides," will expire in August 2022.
The jury's verdict follows the decision of Judge William Orrick, in the same case, to award Illumina summary judgment on claims of infringement by BGI's StandardMPS and CoolMPS products. Orrick had also awarded Illumina a preliminary injunction, blocking BGI and its affiliates from marketing their sequencing platforms in the US.
"The evidence at trial overwhelmingly supported the validity of all the patents which cover a technological breakthrough that directly lead to the dramatic reduction in cost of sequencing over the past 15 years," Illumina said. "Numerous patent tribunals around the world have found these patents valid and infringed by BGI, including in the UK, Germany, Switzerland, and the European Patent Office affirmed their validity."
MGI noted that a suit alleging that Illumina infringed two patents owned by Complete Genomics, a US affiliate of MGI, will go to trial in April 2022. "We also have pending antitrust claims against Illumina in the US District Court for the Northern District of California," MGI said.