Hoffmann Eitle and MGI prevail as Boards of Appeal revoke Illumina patent

For years, US biotechnology company Illumina has been litigating in various countries and at the European Patent Office against BGI and its subsidiary MGI over DNA sequencing technology. Now the EPO Boards of Appeal has revoked one of several patents-in-suit, disrupting Illumina's winning streak across other European jurisdictions.

Illumina’s EP 3 002 289, which the Boards of Appeal revoked due to added subject matter, is one of several patents protecting “modified nucleotides for polynucleotide sequencing”. The BoA judges argued that the literal claim construction could not be amended by reference to the description. It thus considered Illumina’s two auxiliary claim requests, which contained amendments and a deletion of claims respectively, as inadmissible.

Illumina stumbles over claims

As such, the second instance did not only overturn a first-instance decision of the EPO Opposition Division, but also took a different stance to several national courts, which have in previous years enforced the patent. Illumina also requested a referral to the Enlarged Boards of Appeal, to clarify whether a term must be interpreted consistently across all claims. However, the boards rejected this.

EP 289 is one of several DNA sequencing technology patents in dispute between Illumina and BGI/MGI. These include the original patent EP 1 530 578 and its divisionals, EP 3 587 433, EP 3 363 809, as well as the now-revoked EP 289. The dispute spans several countries, incuding the UK, Germany, France, Belgium, Spain, Sweden, Italy, Switzerland, and the US.

In early 2021, the UK High Court declared five of Illumina’s patents valid and infringed, including EP 289. Only a few months later, however, the Paris Judicial Court denied the patent holder a preliminary injunction against MGI in the cases over EP 578 and EP 289.

Successful streak ended

With this decision, the Paris Judicial Court jurisprudence departed from other European courts. Until 2021, Illumina had mostly been successful in parallel proceedings in the UK and Germany.

In September 2021, the German Federal Court of Justice dismissed a nullity suit against parent patent EP 578 and thus upheld the patent (case ID: 3 Ni 30/19). In parallel infringement proceedings, the Higher Regional Court Düsseldorf had already found EP 578 to be infringed in 2020, thus partially confirming a first-instance ruling (case ID: I-2 U 52/20).

Now, however, the patent owner has had to accept defeat at the EPO. The Opposition Division recently revoked another patent of the same family due to added matter, namely EP 3 587 433 covering “modified nucleotides”. In this case, a Latvia-based MGI subsidiary was the opponent. This patent was also part of infringement proceedings in the UK and France.

Illumina turns international

For several years, Illumina has relied on the London office of US firm Cooley for filing and prosecution, which also handles all opposition proceedings in connection with the patent family. Patent attorney and partner Colm Murphy had represented the client during his time at Venner Shipley, where he moved after several years of in-house experience as a patent attorney at Impulse Pharmaceuticals. He joined Cooley in 2016, bringing the client with him.

Several national law firms are representing the US biotechnology company in the infringement proceedings. While Powell Gilbert represents the client in the UK, it relied on Hoyng ROKH Monegier in France. In Germany, Rospatt Osten Pross acted for the patent owner in infringement and nullity proceedings.

Hoffmann acts as straw man

In the current proceedings, mixed IP firm Hoffmann Eitle filed an opposition to the patent under its own name, presumably as a straw man opponent. Danish patent law firm Budde Schou led the opposition on behalf of Chinese biotechnology company, MGI.

However, in the opposition proceedings for EP 433, Hoffmann Eitle represented MGI. It is a former subsidiary of genomics company BGI Group, formerly Beijing Genomics Institute.

In infringement proceedings against Illumina, Allen & Overy is acting for BGI and MGI in Germany, the UK and France. The London team around partner Mark Ridgway is coordinating the pan-European proceedings.