Illumina Inc. v. BGI Genomics Co., Ltd.
3:20-cv-01465
N.D. Cal.Jun 11, 2021Background
- Illumina sued BGI alleging infringement of the ’025 patent; its April 3, 2020 preliminary contentions accused BGI’s StandardMPS product of literal infringement and accused CoolMPS only under the doctrine of equivalents (DOE).
- During parallel UK litigation, BGI submitted a confidential Product and Process Description (PPD) that depicted CoolMPS chemical structures; a redacted PPD reached Illumina’s U.S. team on March 5, 2021 and BGI produced an unredacted PPD on March 16, 2021 showing cleavable linking structures.
- After depositions (including Dr. Drmanac) confirming cleavable linkers, Illumina sought leave (filed April 13, 2021) to amend infringement contentions to add a literal-infringement theory that CoolMPS literally meets claims 1, 7, and 17 of the ’025 patent.
- BGI opposed, arguing lack of diligence and undue prejudice; Illumina argued it could not have discovered the PPD earlier (confidential foreign litigation) and that BGI failed to produce structural documents under Patent L.R. 3-4(a).
- The court found Illumina acted with reasonable diligence, that BGI’s productions did not disclose the cleavable linkers, and that allowing amendment would not unduly prejudice BGI; leave to amend was GRANTED.
- The court also resolved sealing requests, applying the Ninth Circuit "compelling reasons" standard and granting sealing for specified exhibits that contained trade secrets/confidential R&D information.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Illumina showed good cause / diligence to amend infringement contentions under Patent L.R. 3-6 | Illumina only learned of cleavable linkers when it received the unredacted PPD on March 16, 2021 from a foreign litigation; protective orders prevented earlier disclosure to U.S. counsel | BGI says public materials (CoolMPS paper, UK trial plan, depositions) should have put Illumina on notice earlier, so Illumina was not diligent | Court held Illumina acted with reasonable diligence and established good cause (amendment allowed) |
| Whether BGI violated Patent L.R. 3-4(a) by not producing documents showing CoolMPS structure | Illumina says BGI failed to produce documentation sufficient to show operation/structure of accused product, preventing earlier discovery of cleavable linkers | BGI contends Illumina never asserted a literal theory, so it was not required to produce such documents; the PPD was foreign/confidential and not in course of business | Court found BGI’s lack of structural production meant Illumina could not have discovered the linkers earlier; this supported allowing amendment |
| Whether amendment would unduly prejudice BGI (need to reopen discovery / claim construction) | Illumina: amendment adds no new patents/products; BGI already knew DOE theory and experts addressed literal theory; ample time remains before trial | BGI: would need additional fact/written discovery, reopen depositions, and potentially new claim construction | Court found no undue prejudice; allowed BGI to seek limited additional discovery or claim-construction relief via meet-and-confer or short joint letter if disputed |
| Whether sealing standard satisfied for submitted exhibits | Illumina: exhibits contain BGI trade secrets/confidential R&D supporting sealing | BGI sought sealing for its technical/confidential business information | Court applied Ninth Circuit "compelling reasons" standard and granted sealing for specified exhibits; ordered certain other documents unsealed as not requested to be sealed |
Key Cases Cited
- Nova Measuring Instruments Ltd. v. Nanometrics, Inc., 417 F. Supp. 2d 1121 (N.D. Cal. 2006) (local patent rules aim to crystallize theories early and require diligence in amending contentions)
- O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355 (Fed. Cir. 2006) (diligence is the primary inquiry for amending infringement contentions under local rules)
- Kamakana v. City & Cty. of Honolulu, 447 F.3d 1172 (9th Cir. 2006) (establishes standard for sealing judicial records)
- Nixon v. Warner Commc'ns, Inc., 435 U.S. 589 (U.S. 1978) (judicial records presumption of public access; standards for restricting access)
- Ctr. for Auto Safety v. Chrysler Grp., 809 F.3d 1092 (9th Cir. 2016) (compelling reasons standard applies when motion is more than tangentially related to underlying litigation)