This story has been updated to include comments from Illumina.
NEW YORK – A US federal court has ordered Illumina to make as many as nine inventors of patents covering sequencing-by-synthesis chemistry available for videoconferencing-based depositions as part of a patent infringement lawsuit the firm has brought against BGI.
In an order dated Aug. 24, 2020, Magistrate Judge Thomas Hixson of the US District Court for the District of Northern California suggested that Illumina must exercise a contractual right to compel the inventors to testify in US patent proceedings, which was written into their assignment agreements for US Patent Nos. 7,566,537 and 9,410,200, both titled "Labelled Nucleotides."
The inventors who may be compelled to be deposed include Shankar Balasubramanian, a professor of chemistry at the University of Cambridge and Solexa cofounder; Colin Barnes, a former Solexa scientist who is now a patent attorney in the UK; Xiaohai Liu, Illumina's director of SBS sequencing chemistry research; John Milton, former Solexa senior director of R&D, now chief scientific officer at Oxford Nanopore Technologies; Harold Swerdlow, former Solexa senior director of Research, now senior director of NGS R+D at DNA Electronics; and Xiaolin Wu, an associate principal scientist at Illumina. Illumina acquired Solexa in 2007.
"The court has some concerns that plaintiffs may have been priming the inventors to refuse to attend a deposition," Hixson noted. At a hearing held earlier in August on the matter, "Plaintiffs repeatedly described the inventor depositions as optional and said that no one had volunteered," he wrote.
According to a transcript of the hearing, "there's two inventors that are noncooperating, that are at competitors," Illumina attorney Edward Reines told the court, including one that had "ghosted us." Illumina had been unable to track down a third, whose last presumed location was Australia. A fourth inventor is undergoing cancer treatment and is gravely ill.
"[I]t may be that plaintiffs' efforts to compel the inventors to make themselves available for deposition have consisted of meekly asking them to volunteer to travel great distances and imperil their lives," Hixson wrote. "If plaintiffs cannot make any of the inventors available for a deposition by videoconference, they may face sanctions."
"This gives BGI a fair opportunity to explore the facts in the case," said David Bilsker, an attorney for the defendants. Bilsker, a San Francisco-based attorney at Quinn Emmanuel Urquhart & Sullivan who joined the case in May, added that Illumina had previously only offered two of the nine inventors for depositions.
"While we respectfully disagree with the order to make all nine of the inventors available for depositions, especially given that most of these inventors left our employ over a decade ago, we are working diligently to reasonably comply with the order," an Illumina spokesperson said in an email. "We do not believe that the order will impact the merits of the patent infringement case or the preliminary injunctions already issued against BGI."
Illumina filed the suit in 2019, alleging that BGI and its subsidiaries infringed the two patents. In June, the court awarded Illumina a preliminary injunction preventing BGI from distributing and promoting its sequencing systems in the US.
Earlier this month, BGI won a partial stay of the preliminary injunction pending an appeal to the US Court of Appeals for the Federal Circuit regarding the scope of the injunction. BGI has also countersued Illumina, alleging infringement of its own patents and that Illumina's patents were invalid.
Hixson's order noted that BGI is "arguing that the asserted patents lack a written description sufficient to enable one of skill in the art to make and use the claimed inventions," and that "the inventors did not possess the claimed inventions at the time the priority applications were filed."
These arguments were considered and rejected by Judge William Orrick during preliminary injunction hearings. "Therefore, it will probably fail on summary judgment or at trial," Hixson wrote. "However, probably does not mean certainly. A litigant who is on the losing end of a preliminary injunction is still entitled to take discovery in an attempt to turn the case around."
At the hearing, Bilsker told the court, "We've come up with … new invalidity arguments that are based on written description and enablement."
How long Illumina has to produce the inventors is unclear. Hixson said Illumina had 10 days to inform the court of its efforts to locate the inventor who had so far eluded the firm.
"If plaintiffs can show that despite all diligent efforts to enforce their contractual right to have the inventors testify in this legal proceeding, events beyond their control made that impossible, the court might not award sanction," Hixson wrote. "However, the evidence relevant to the diligence inquiry does not include only the steps plaintiffs take starting tomorrow. It also includes communications to date, including any that may have suggested that a deposition was voluntary, inconvenient, or dangerous."