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US Federal Court Judge Rules BGI Sequencing Chemistries Infringe Illumina Patents

This story has been updated to include comments from a patent law expert and to correct patent expiration dates.

NEW YORK – A Federal Court judge has ruled that BGI's StandardMPS and CoolMPS products infringe several Illumina patents.

In an order issued Thursday, Judge William Orrick of the US District Court for the Northern District of California awarded Illumina's request for summary judgement on those issues and also rebuffed BGI's counterclaim that Illumina infringed its US Patent No. 9,944,984, "Methods and Compositions for Efficient Base Calling in Sequencing Reactions."

Illumina's allegations of infringement "are not rebutted by BGI's expert opinions and BGI's counsel confirmed that its experts did not serve reports on these issues," Orrick wrote. "BGI does not contend that there is a genuine issue of material fact. BGI only asserts that Illumina failed to show there were no disputed issues of fact and that these issues are best addressed during the preparation of pre-trial submissions. I disagree and grant summary judgment in favor of Illumina."

Regarding the BGI countersuit, the judge wrote that "because all of BGI's infringement theories rely on a flawed opinion that the accused dsDNA contain multiple copies of one single DNA sequence, there is no evidence that Illumina's Accused Products infringe the '984 Patent."

"It's a pretty major victory for Illumina," said Jacob Sherkow, a patent law expert and professor at the University of Illinois College of Law. "At least in the near term, it should continue to entrench Illumina's market position in the US, relative to BGI and its affiliates."

"While we respect the court's decision, we intend to vigorously defend our intellectual property, as we have in other jurisdictions, and strive for choice in the market. We will continue to do our utmost to protect the interests of our customers, research collaborators, and business partners," BGI said in a statement. "We have a robust patent portfolio in the field of gene sequencing, and we will continue to defend our intellectual property assets on a global scale."

Illumina did not immediately respond to a request for comment.

Illumina has sued BGI several times in the US to keep the Chinese company from launching its products there. Illumina began in 2019 by alleging that BGI's StandardMPS sequencing method infringed its US Patents Nos. 7,566,537 and 9,410,200. In early 2020, Illumina sued again, alleging that BGI's CoolMPS reagents, introduced just a few days earlier, infringed its US Patent Nos. 7,541,444 and 7,771,973, both titled "Modified nucleotides," and its US Patent No. 10,480,025, titled "Labeled nucleotides."

In these cases, Illumina has successfully obtained a preliminary injunction preventing BGI and its affiliates from marketing their sequencing platforms in the US.

BGI affiliate Complete Genomics has sued Illumina, alleging patent infringement of its two-color sequencing technology.

Having a judge issue summary judgment in patent infringement cases is common, Sherkow said; however, "the way in which summary judgement was granted in favor of Illumina is pretty uncommon."

"It seems like it was granted simply because BGI didn't put up a robust enough defense," he said, suggesting that there may be "some strategic consideration behind doing this."

According to Illumina, the '973 patent will expire August 2022 and the '444 patent in June 2023.