Illumina, Inc. v. BGI Genomics Co.

• Decision Date: 27 March 2022
• Docket Number: 19-cv-03770-WHO,20-cv-1465-WHO
• Court: U.S. District Court — Northern District of California
• Parties: ILLUMINA, INC., et al., Plaintiffs, v. BGI GENOMICS CO., LTD, et al., Defendants.

ILLUMINA, INC., et al., Plaintiffs,
v.
BGI GENOMICS CO., LTD, et al., Defendants.

Nos. 19-cv-03770-WHO, 20-cv-1465-WHO

United States District Court, N.D. California

March 27, 2022

ORDER RE POST-TRIAL MOTIONS; ADMINISTRATIVE MOTIONS TO SEAL

Re: Dkt. Nos. 529, 530, 574, 575, 576, 577, 578, 579, 580, 581, 598, 602, 603, 604, 608, 611

William H. Orrick United States District Judge

Plaintiffs Illumina Inc. and Illumina Cambridge Ltd. (collectively, “Illumina”) and defendants BGI Genomics Co., Ltd., BGI Americas Corp., MGI Tech Co., Ltd., MGI Americas, Inc., and Complete Genomics, Inc.'s (collectively, “Defendants”) have filed six post-trial motions. Illumina moves for judgment as a matter of law, permanent injunction, attorney fees and enhanced damages, and prejudgment interest. Defendants move for judgment as a matter of law and a new trial. For the reasons explained below, Illumina's motion for judgment as a matter of law is GRANTED in part and DENIED in part. Its motions for permanent injunction and prejudgment interest are GRANTED. Defendants' motions for judgment as a matter of law and a new trial as well as Illumina's motion for attorney fees and enhanced damages are DENIED.

BACKGROUND

Illumina filed its original complaint in Illumina Inc., et al., v. BGI Genomics Co., Ltd., et al., Case No. 19-cv-03770 (N.D. Cal.) (“Illumina I”) on June 27, 2019. Dkt. No. 1.^[1] The first

1

amended complaint in Illumina I asserts infringement of two patents against Defendants' product, StandardMPS: U.S. Patent Nos. 9, 410, 200 (the “'200 Patent”) and 7, 566, 537 (the “'537 Patent”). Dkt. No. 52 (“Illumina I FAC”) ¶¶ 2, 33-44. Defendants filed counterclaims to Illumina I FAC, alleging that Illumina's DNA sequencing systems infringe claims 1-3 and 5 of its patent, U.S. Patent No. 9, 944, 984 (the “'984 Patent”). Dkt. No. 94 (“Illumina I Answer”) ¶ 10. On February 19, 2020, Illumina filed a motion for preliminary injunction. Dkt. No. 84-4 (“Illumina I PI Mot.”).

On February 27, 2020, Illumina filed a complaint in Illumina Inc., et al., v. BGI Genomics Co., Ltd., et al., Case No. 20-cv-1465 (N.D. Cal.) (“Illumina II”). 1465 Dkt. No. 1. (“Illumina II Compl.”). Illumina alleged infringement of three patents against Defendants' products, StandardMPS and CoolMPS: U.S. Patent Nos. 7, 777, 973 (the “'973 Patent”), 10, 480, 025 (the “'025 Patent”), and 7, 541, 444 (the “'444 Patent”). Id. On the same day, Illumina filed a motion for preliminary injunction in that case. 1465 Dkt. No. 11 (“Illumina II PI Mot.”). On June 13, 2020, I granted both motions for preliminary injunction. Dkt. No. 185 (“PI Order”).

On August 27, 2021, I denied Defendants' motion for summary judgment that the '973 Patent is invalid for failure to satisfy the enablement and written description requirements under 35 U.S.C. § 112. 1465 Dkt. No. 469 (“MPSJ Order”). In the same order, I granted Defendants' motion for summary judgment on the CoolMPS products' non-infringement of the '025 Patent. Id. On September 9, 2021, I granted Illumina's motion for summary judgment that (1) its accused products do not infringe the '984 Patent; (2) Defendants' StandardMPS products directly infringe all asserted claims of the '537 Patent, the '200 Patent, the '025 Patent, the '973 Patent, and the '444 Patent; (3) Defendants' CoolMPS products directly infringe the asserted claims of the '973 and '444 Patents; (4) all of the asserted claims of the '537, '200, '025, '973, and '444 Patents are not invalid as anticipated; and (5) the '444 Patent is not invalid for lack of written description or enablement. Dkt. No. 424 (“MSJ Order”) at 19, 20, 25.

A jury trial took place from November 15, 2021, through November 22, 2021. At trial, Illumina asserted induced, contributory, and willful infringement of claim 3 of the '444 Patent, claim 13 of the '973 Patent, claims 1, 4, and 6, of the '537 Patent, claims 11 and 19 of the '200 Patent, and claims 1, 9, 27, 31, 33, 34, 42, 47, and 50 of the '025 Patent (collectively, the

2

“Asserted Claims” of the “Asserted Patents”). I had determined that the Defendants had directly infringed the Asserted Claims of each of the Asserted Patents. Dkt. No. 521 (“Final Jury Instructions”) at 17-20. Defendants contended invalidity of the Asserted Claims on the basis that they were obvious or failed to satisfy the written description requirement or enablement requirement. Id. at 21. At the close of all evidence, Illumina moved for judgment as a matter of law on its affirmative case regarding all claims of indirect infringement and willful infringement. Dkt. No. 529. It also moved for judgment as a matter of law on its rebuttal case regarding the validity of all Asserted Claims. Dkt. No. 530. Defendants also moved for judgment as a matter of law on all the issues. Dkt. No. 540 at 724; Dkt. No. 542 at 1155. I allowed all issues to pass to the jury.

The jury deliberated for five days and reached a verdict on November 30, 2021. The first issue was whether Illumina had proven by a preponderance of the evidence that Defendants had induced and/or contributed to the infringement of its patents. The jury found that Illumina had proven that Defendants had induced and contributed to the infringement of the '444 Patent and the '973 Patent. Dkt. No. 550 (“Verdict”) ¶¶ 1-4. It found that Illumina had proven that Defendants had induced the infringement of the '537 Patent and the ‘200 Patent but it found that Illumina had not proven that Defendants had contributed to the infringement of these two patents. Id. ¶¶ 5-8. The jury also found that Illumina had not proven that Defendants had induced or contributed to the infringement of the '025 Patent.

The second issue was whether Defendants had proven by clear and convincing evidence that the asserted claims of Illumina's patents were invalid. The jury found that Defendants had proven that claim 3 of the '444 Patent and claim 1 of the '025 Patent were invalid as obvious. Id. ¶¶ 11, 21. It found that Defendants had not proven that claim 13 of the '973 Patent, claims 1, 4, and 6 of the '537 Patent, claims 11 and 19 of the '200 Patent, and claims 9, 27, 31, 33, 34, 42, 47, 50 of the '025 Patent were invalid as obvious or invalid for failure to satisfy the written description requirement or the enablement requirement. Id. ¶¶ 12-23. It also found that Defendants had not proven that claim 1 of the '025 Patent was invalid for failure to satisfy the written description requirement or the enablement requirement. Id. ¶¶ 22-23. Third, the jury

3

found that $8 million in damages would fairly and reasonably compensate Illumina for Defendants' infringement from early 2014 through June 2020. Id. ¶ 24. Finally, the jury found that Illumina had proven by a preponderance of the evidence that Defendants' infringement was willful. Id. ¶ 25. The parties filed their respective post-trial motions on January 11, 2022. The motions hearing took place on March 2, 2022. Dkt. No. 663 (“Hearing Tr.”).

DISCUSSION

I.ILLUMINA'S MOTION FOR JUDGMENT AS A MATTER OF LAW

Illumina renews its motion for judgment as a matter of law (“JMOL”), or in the alternative a new trial, that Defendants have failed to meet their burden of proving by clear and convincing evidence that Claim 1 of the '025 Patent and Claim 3 of the '444 Patent are invalid as obvious under 35 U.S.C. § 103. Dkt. No. 579 at 2. For the reasons below, there is substantial evidence to support the jury's conclusion regarding Claim 3 of the '444 Patent but there is not substantial evidence to support the jury's conclusion regarding Claim 1 of the '025 Patent.

A. Legal Standards

1. Judgment As a Matter of Law

The Federal Circuit “reviews decisions on motions for JMOL, motions for a new trial, and evidentiary rulings under the law of the regional circuit.” InTouch Techs., Inc. v. VGO Commc'ns, Inc., 751 F.3d 1327, 1338 (Fed. Cir. 2014). In the Ninth Circuit, judgment as a matter of law is appropriate where “the evidence, construed in the light most favorable to the nonmoving party, permits only one reasonable conclusion, and that conclusion is contrary to that of the jury.” White v. Ford Motor Co., 312 F.3d 998, 1010 (9th Cir. 2002). This standard requires a court to uphold “any jury verdict supported by substantial evidence, ” substantial evidence being “evidence that a reasonable mind would accept as adequate to support a conclusion.” Callicrate v. Wadsworth Mfg., Inc., 427 F.3d 1361, 1366 (Fed. Cir. 2005). Neither a “mere scintilla” of evidence, nor pure speculation, is enough to sustain a verdict against a motion for JMOL. Lakeside-Scott v. Multnomah Cty., 556 F.3d 797, 802-03 (9th Cir. 2009).

2. New Trial

Under Federal Rule of Civil Procedure 59(a), a trial court “may grant a new trial, even

4

though the verdict is supported by substantial evidence, if the verdict is contrary to the clear weight of the evidence, or is based upon evidence which is false, or to prevent, in the sound discretion of the trial court, a miscarriage of justice.” United States v. 4.0 Acres of Land, 175 F.3d 1133, 1139 (9th Cir. 1999) (internal quotation marks omitted); accord Wordtech Sys., Inc v. Integrated Networks Sols., Inc., 609 F.3d 1308, 1313 (Fed. Cir. 2010). In considering a motion for a new trial, a court “has the duty to weigh the evidence as the court saw it, and to set aside the verdict of the jury, even though supported by substantial evidence, where, in the court's conscientious opinion, the verdict is contrary to the clear weight of the evidence.” Molski v. M.J. Cable, Inc., 481 F.3d 724, 729 (9th Cir. 2007) (internal quotation marks and alterations omitted). The Ninth Circuit “review[s] [a] district court's ruling on a motion for a new trial under Rule 59(a) for an abuse of discretion.” E.E.O.C. v. Go Daddy Software, Inc., 581 F.3d 951, 962 (9th Cir. 2009). The denial of a motion for a new trial is reversible “only if the record contains...