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USPTO Board Denies Illumina Request to Review BGI Patent

This story has been updated to include comments from BGI.

NEW YORK – The US Patent and Trademark Office's Patent Trial and Appeals Board has denied claims made by Illumina that certain sequencing-related intellectual property held by BGI was unpatentable.

On Wednesday, the PTAB issued a decision denying Illumina's petition for Inter Partes Review, a process that can lead to invalidation of patents, for US Patent No. 9,222,132, "Methods and compositions for efficient base calling in sequencing reactions."

Awarded in 2015 to California-based BGI subsidiary Complete Genomics, the patent covers methods and compositions for acquiring nucleotide sequence information of a target sequence. A BGI spokesperson said the patent was related to Complete Genomics' two-color sequencing technology.

Illumina had challenged the patent on the grounds that its subject matter was obvious; however, the sequencing firm "has not demonstrated a reasonable likelihood of prevailing with respect to challenged claims … of the '132 patent," the PTAB wrote in its decision. 

The decision resolves just one skirmish in a globe-spanning legal conflict between the companies over next-generation sequencing IP, including patents for sequencing-by-synthesis. Illumina has sued BGI or its affiliates as recently as February and has done so in many countries, including Denmark, Germany, Sweden, Switzerland, Turkey, and the UK.

BGI has also sued or countersued Illumina in several US actions, including a suit filed last year in the US District Court for the District of Delaware, alleging Illumina had infringed the '132 patent.

"Two-color sequencing technology is part of MGI’s core proprietary technology in the sequencing field," BGI Group VP and General Counsel Wei Wei said in a statement. "We are committed to protecting our intellectual property around the globe, and are pleased that our patent infringement lawsuit against Illumina in the District of Delaware will move forward without any possibility of a stay resulting from Illumina's failed Inter Partes Review petition."

Either party can appeal the PTAB decision to the US Court of Appeals for the Federal Circuit, although it's unclear whether they will do so. Illumina did not immediately respond to a request for comment.

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