On February 23, 2016, Illumina, Inc. of San Diego, California (“Illumina”), the University of Washington of Seattle, Washington, and UAB Research Foundation of Birmingham, Alabama (collectively, “Complainants”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that Oxford Nanopore Technologies Ltd. of the United Kingdom and Oxford Nanopore Technologies, Inc. of Cambridge, Massachusetts (collectively, “ONT”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain nanopores and products containing same that infringe one or more claims of U.S. Patent Nos. 8,673,550 (the ‘550 patent) and 9,170,230 (the ‘230 patent) (collectively, the “asserted patents”). 

According to the complaint, the asserted patents generally relate to proteins that can be incorporated into a membrane, such as a lipid bilayer, to form microscopic pores called nanopores. In particular, the asserted patents describe Mycobacterium smegmatis porin (“Msp”) nanopores, nanopore systems, and methods of making and using such nanopores and systems.

In the complaint, Complainants state that ONT imports and sells products that infringe the asserted patents.  The complaint specifically refers to ONT MinION and PromethION products as infringing products.

Regarding domestic industry, Complainants refer to Illumina’s Msp nanopores as domestic industry products and state that Illumina satisfies the domestic industry requirement through its significant U.S. investment in plant and equipment, significant employment of U.S. labor and capital, and substantial U.S. investment in the exploitation of the asserted patents, including through engineering and research and development.  The complaint cites to a confidential declaration as support for its domestic industry allegations.

As to related litigation, Complainants state that, concurrently with the filing of the instant ITC complaint, Illumina is filing a complaint against ONT in the U.S. District Court for the Southern District of California alleging infringement of the asserted patents.  Complainants also refer to certain pending inter partes review (IPR) proceedings involving the ‘550 patent.  Lastly, Complainants refer to a state court litigation in Washington involving a request by Illumina to enjoin the disclosure of certain materials from the University of Washington to ONT relating to Illumina’s license to the ‘550 patent.  According to the complaint, the Washington state court found in Illumina’s favor on this issue and entered judgment accordingly in November 2015.

With respect to potential remedy, Complainants request that the Commission issue a permanent limited exclusion order and permanent cease and desist orders directed at ONT.