I came across an article outlining a long patent dispute between Illumina and Qiagen since 2012 (click here).
It contains the following exciting paragraphs:
Illumina, Columbia, and Qiagen have been caught up in patent infringement suits for the last five years. Columbia first sued Illumina in 2012, claiming the firm infringed on five patents it had licensed to Intelligent Bio-Systems, which Qiagen subsequently purchased. Illumina countersued later that year, claiming that Columbia, IBS, and Qiagen infringed on three of its patents.
In 2014, the US Patent and Trademark Office and the Patent Trial and Appeal Board deemed a number of claims from patents held by either side invalid. And, after Qiagen commercially launched the GeneReader, Illumina sued again.
Then, last year, a federal court issued a preliminary injunction against Qiagen, halting the sale of its GeneReader instrument in the US. Several months later, though, Qiagen said it was developing new chemistry for the GeneReader, which it launched in the US early this year.
I have never heard of such a thing as a preliminary injunction in patent cases in the US.
Key Reasons for Granting a Preliminary Injunction
The above article came with links to more information, and so I found the article entitled “Court Issues Preliminary Injunction Against Qiagen in Illumina Sequencing IP Dispute” (click here).
This article includes a brief description of the reasons why the court issued a preliminary injunction before the trial in the patent litigation had even begun.
This is the article’s brief description of the sequence of events:
The dispute between Illumina and Qiagen traces back to patent disputes between Illumina, Columbia University, and Intelligent-Bio Systems, which Qiagen acquired. Columbia sued Illumina in 2012, arguing that it infringed on patents it licensed to IBS, and Illumina countersued. The lawsuit was put on hold, however, because the patents in question underwent an inter partes review.
In 2014, the US Patent and Trademark Office appeals board invalidated eight claims in one of Illumina’s patents that was under inter partes review — US Patent No. 8,158,346 — and the Patent Trial and Appeal Board canceled eight claims in Illumina’s US Patent No. 7,057,026. The PTAB also ruled certain claims in the patents that Columbia asserted against Illumina as invalid in 2014 — a ruling that was appealed, but upheld.
In a nutshell, according to the article, the decision to grant Illumina’s preliminary injunction was based on three grounds:
#1 Illumina demonstrated that it was likely to succeed in its patent dispute with Qiagen;
#2 Illumina demonstrated that it would likely suffer “irreparable harm” if the motion were not granted; and
#3 the injunction was in the public interest.
With respect to the first prong, “#1 Illumina has demonstrated that it is likely to succeed in its patent litigation with Qiagen,” the judge found it important that a) one of Illumina’s patents had already undergone an inter partes review, and b) that the claims Illumina asserts against Qiagen were found to be valid in that review. This persuaded the judge that Illumina was likely to prevail in the litigation, and I find this argument persuasive, but not sufficient. It may still be the case that Qiagen’s products do not satisfy all the elements of the relevant claims in Illumina’s patent. But who am I to judge from a distance? What is remarkable here is that the so-called doctrine of “unconditional presumption of validity” of a patent, which was applied in the “good old days before the AIA 2013”, is no longer used today.
The second reason, that “#2 Illumina has shown that it is likely to suffer irreparable harm if the motion is not granted,” was based on the judge’s assumption that Qiagen’s GeneReader could become widely available. This was based on the fact that Illumina had demonstrated that, although Illumina is the leading sequencing technology in the targeted clinical sequencing market, Qiagen has a “foothold” in this market segment “due to its other product lines. Another important aspect for the judge was that Illumina was able to show that Qiagen planned to a) undercut Illumina on price, b) allow customers to rent a GeneReader, and c) offer a “pay per use” rather than purchase its products outright.
The following paragraph from the court’s reasons for granting a preliminary injunction underscores the judge’s sentiment about the case:
“At this crucial inflection point in the development of the market for DNA sequencing equipment for clinical laboratories, Illumina would suffer irreparable harm if Qiagen were allowed to capture and define the market with pirated technology alongside its preexisting relationships and disruptive business model.“
I find the terms “to capture and define the market with pirated technology” quite strong for a court decision in a civil case between two commercial parties. One would probably see such language more often in criminal matters, and I believe that this contributed to finding ground #3 “the injunction was in the public interest” as present in this case.
My personal opinion comes with a caveat: I am not a US patent attorney, and I am not qualified to give legal advice under US law. However, I have been practicing patent law for 30 years, and I have followed a large number of US patent litigations, including for my own clients from outside the US. Therefore, I believe I can afford to add my insights to what I read in the two articles above.
It is not often that a preliminary injunction is granted in US patent litigation. But when it is, it is a powerful sword.
If you are facing US patent litigation because a patent owner has sent you a cease-and-desist letter, you should contact a US patent attorney as soon as possible. They will tell you what to avoid in order to avoid a preliminary injunction. Don’t become a Qiagen.
Martin “Litigation” Schweiger