United States District Court, N.D. California
IN RE APPLICATION OF ILLUMINA CAMBRIDGE LTD. for issuance of subpoenas under 28 U.S.C. § 1782
ORDER GRANTING APPLICATION FOR LEAVE TO SERVE
SUBPOENAS RE: DKT. NO. 1
S. HIXSON, UNITED STATES MAGISTRATE JUDGE
Cambridge Ltd. seeks leave to serve subpoenas on Complete
Genomics, Inc., BGI Americas Corp. and MGI Americas, Inc.
(collectively, “Respondents”) under 28 U.S.C.
§ 1782. Appl., ECF Nos. 1-2. No. opposition has been
filed. For the reasons set forth below, the Court
GRANTS Illumina Cambridge's application.
Cambridge, a United Kingdom subsidiary of Illumina Inc., is a
California based company that develop, manufactures, and
markets DNA sequencing devices. Appl. at 1. It owns the
1. European Patent No. EP 1 530 578 Bl, (the '578
Patent), Danish PatentDK/EP 3 002 289 T3, which is the Danish
designation of a divisional of the '578 Patent (the
'289 Patent), and Turkish Patent Number TR 2018 04580
(the '4580 Patent), which is the Turkish validation of
the '289 Patent, all of which are entitled
“Modified nucleotides for polynucleotide
sequencing.” Id. These patents cover modified
nucleotides with an azidomethyl blocking group, which are
used in a method of DNA sequencing known as
“sequencing-by-synthesis” or “SBS.”
2. European Patent No. EP 1 828 412 B2 (the '412 Patent),
which is entitled “Improved method of nucleotide
detection.” Id. This patent covers the use of
a detection buffer containing ascorbic acid that may be used
in SBS. Id.
Cambridge has brought several actions outside the United
States asserting that companies of the BGI Group, a Chinese
conglomerate headquartered in Shenzhen, the People's
Republic of China, infringe on its patent rights.
Id. at 2. Illumina Cambridge seeks leave to serve
subpoenas on Respondents to obtain documents and testimony
for use in the following foreign patent infringement actions:
1. An action asserting infringement of the '578 Patent in
the Dusseldorf (Germany) Regional Court (the “German
Action”) against Latvia MGI Tech SIA;
2. An action asserting infringement of the '578 Patent
and the '412 Patent in the Federal Patent Court in
Switzerland (the “Swiss Action”) against Latvia
3. An action asserting infringement of the '4580 Patent
in the Istanbul Civil Court for Intellectual and Industrial
Rights (the “Turkish Action”) against Genoks
Teknoloji Saglik Bilisim Turizm Hiz. Endustriyel Makine
Elektrik Elektronik Ithalat Ihracat San. Tic. Ltd. Sti.; and
4. An action asserting infringement of the '289 Patent in
the Maritime and Commercial Court of Denmark (the
“Danish Action”; collectively the “Foreign
Actions”) against BGI Europe A/S.
MGI, the defendant in the German and Swiss Actions, is a
subsidiary of MGI Tech Co, Ltd., which is in turn another
Chinese-based company and a subsidiary of BGI. Id.
at 2-3. Genoks, the defendant in the Turkish Action, is a
distributor for BGI in Turkey. Id. at 3. BGI Europe,
located in Denmark and the defendant in the Danish Action,
serves as BGI's European headquarters. Id. BGI
Europe provides laboratory services in the area of DNA
sequencing primarily under the BGI brand. Id. BGI
also manufactures its own DNA sequencing devices through MGI
Tech. Id. BGI's DNA sequencing devices on which
its SBS method is performed include the BGISEQ-500 and the
MGISEQ-2000 (the “BGI/MGI Sequencing ...