Element's Curious Patentsieg

Last week news broke that Element Biosciences had won a patent lawsuit against Illumina, and that it affected MiSeq.  MiSeq???? How did a patent battle in 2026 affect a platform launched nearly a decade and a half ago?  And which had been launched about five years before Element incorporated.  Which is being put out to pasture, though the MiSeqDx version What witchcraft is this?  I've done limited digging - I really dislike trying to dig through patents - and it is a strange case.

The patents in question originated with Intelligent Biosystems (IBS), which then was acquired by QIAGEN as the core of their GeneReader NGS system.  More on that in a bit.  After QIAGEN bailed out, the patents went to Isoplexus, who thought they were relevant to some non-sequencing applications.  IsoPlexus merged with Berkeley Lights to form PhenomX, which was later swallowed by Bruker.  But while still IsoPlexus, they licensed rights to patents in the sequencing space to Element.

There's a number of patents mentioned in news reports on the judgement which seem to cover both base calling algorithms as well as details in instrument and consumable design.  I was immediately curious about possible prior art from the Church polony papers or the Polonator or SOLiD or Illumina Genome Analyzer.  Now it may be the key bit is not using a laser - that's what some analyses have pointed out.  But the really interesting result when I asked my good buddy Claude about this is - prior art wasn't relevant to the case!

Why not?  Because this was in a Munich court, and Claude knew (but I certainly did not) that in German patent proceedings determining infringement and litigating whether the patent is valid (i.e. did the patent examiners miss something like prior art) are completely separate.  Yet another reason for me to be loathe to comment on patents - perhaps in the US I have some grasp but go overseas and the rules are different!

But the main comment I'll make is this case seems to illustrate that patent fights are crapshoots which are very hard to predict.  After all, why didn't QIAGEN pursue this???  Illumina bludgeoned QIAGEN into abandoning the original GeneReader system using patent warfare.  Presumably QIAGEN's IP lawyers looked at their portfolio and judged there chances poor; Element looked at what they had licensed and decided it was worth a shot.   

Given the painful expense of patent warring - not to mention the likelihood of retaliation and the potential nightmare of going through the discovery process - any internal communications not with a company lawyer are fair game - patent battles are not to be entered into lightly.  And then there is the drawn-out uncertainty - years of battles between BGI and Illumina first 

Supposedly in the electronics world it is much more common to just pre-emptively cross-license patents.  There are definitely counterexamples - I was a bit surprised I can get an O2 reading from my Apple Watch as I remember them losing a lawsuit on that (though I don't really believe what it says; I should be passing out when I feel not remotely light headed if it is correct).  I don't know how companies facing that decide on the value of patents and which ones to cross-license - but even some excessive cross-licensing might be preferable to the pricey game of chance known as a patent lawsuit.