1 E.

JOSEPH CONNAUGHTON (SBN 166765)

[email protected]

2 JEFFREY P. AMES (SBN 234871)

401 B Street, Tenth Floor

3 PAUL, PLEVIN, SULLIVAN & CONNAUGHTON LLP 4 San Diego, California 92101-4232
Telephone: 619-237-5200

MATTHEW S. WROBLEWSKI (SBN 251091)

5 Facsimile: 619-615-0700 6 DAVID G. HANSON

(PRO HAC VICE APPLICATION PENDING) (PRO HAC VICE APPLICATION PENDING) 1000 North Water Street, Suite 1700 Telephone: 414-298-8376

7 JESSICA HUTSON POLAKOWSKI

8 REINHART BOERNER VAN DEUREN S.C. 9 Milwaukee, Wisconsin 53202 10 Facsimile: 414-298-8097 11 Attorneys for Plaintiff ILLUMINA, INC. 12 13 14 15 ILLUMINA, INC., 16 17 18 19 20 21 22 23 24 25 26 27 28
PAUL, PLEVIN, SULLIVAN & CONNAUGHTON LLP

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA

'11CV3022 LAB NLS Case No.: ___________

Plaintiff, v. Patent COMPLAINT JURY TRIAL DEMANDED

LIFE TECHNOLOGIES CORPORATION, APPLIED BIOSYSTEMS LLC, and ION TORRENT SYSTEMS, INC., Defendants.

Plaintiff Illumina, Inc. ("Illumina") alleges as follows: I. NATURE OF THE ACTION 1. This is an action arising under the patent laws of the United States (35 U.S.C.

271 et seq.) based upon infringement by Defendants Life Technologies Corporation, Applied BioSystems LLC, and Ion Torrent Systems, Inc. (collectively "Life Tech") of a patent owned by
COMPLAINT; JURY TRIAL DEMAND

1 Illumina. 2
2. Illumina seeks damages for Defendants' willful infringement, including treble

3 damages and attorneys' fees, and a permanent injunction restraining Defendants from further 4 infringement. 5 6 7
3. II. THE PARTIES Plaintiff Illumina is a Delaware corporation with a principal place of business at

8 5200 Illumina Way, San Diego, CA 92122. 9 10

4. 5. Illumina is one of the leading companies in genetic analysis. Illumina's revolutionary products have enabled rapid advances in disease research,

11 drug development, and the development of molecular tests for clinical use. 12
6. Illumina has made heavy investments in the research and development of new

13 technologies in this field. 14

7. Upon information and belief, Life Technologies Corporation is a Delaware

15 corporation with a principal place of business at 5791 Van Allen Way, Carlsbad, California 16 92008. 17
8. Upon information and belief, Applied BioSystems LLC is a wholly-owned

18 subsidiary of Life Technologies Corporation with a principal place of business at 5791 Van Allen 19 Way, Carlsbad, California 92008. 20
9. Upon information and belief, Ion Torrent Systems Inc. is a Delaware corporation

21 with a principal place of business at 246 Goose Lane, Suite 100, Guilford, Connecticut 06437. 22
10. Upon information and belief, Life Technologies Corporation acquired Ion Torrent

23 Systems, Inc. in 2010. 24 25 26

11. III. JURISDICTION AND VENUE This is an action for patent infringement arising under the patent laws of the

27 United States, Title 35 of the United States Code. 28 / / /

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1 2

12. 13.

This Court has subject matter jurisdiction under 28 U.S.C. 1331 and 1338(a). Venue is proper in this judicial district under 28 U.S.C. 1391 and 1400(b)

3 because, upon information and belief, Defendants Life Technologies Corporation, Ion Torrent 4 System, Inc. and Applied BioSystems LLC have, among other things, committed infringing acts 5 in this district. Moreover, Illumina, Inc., Life Technologies Corporation and Applied Biostems 6 LLC have their principal places of business in this district, and do business in this district 7 generally. 8 9 10
14. IV. BACKGROUND United States Patent No. 7,060,431 ("the '431 Patent"), entitled "METHOD OF

11 MAKING AND DECODING OF ARRAY SENSORS WITH MICROSPHERES" was filed on 12 June 24, 1999 and was issued by the United States Patent and Trademark Office on June 13, 13 2006. A copy of the '431 Patent is attached hereto as Exhibit A. 14
15. The '431 Patent is a reflection of Illuminas heavy investment in research and

15 development of technologies for genetic analysis. 16

16. The '431 Patent claims priority to U.S. Patent Application No. 09/189,543 filed

17 November 10, 1998 and U.S. Patent Application No. 60/090,473 filed on June 24, 1998. 18
17. The '431 Patent issued in the names of Mark S. Chee, John R. Stuelpnagel, and

19 Anthony W. Czarnik. 20 21
18. 19. Illumina is the assignee of all right, title and interest in and to the '431 Patent. The '431 Patent claims, amongst other things, methods for making dense arrays

22 using beads that do not have an optical signature. 23

20. Claim 1 of the '431 Patent is directed to "[a] method of making a bead array

24 comprising: a) contacting a substrate with a surface comprising discrete sites at a density of at

2 25 least 100 sites per 1 mm with a solution comprising a population of different beads, wherein said

26 beads do not comprise an optical signature; and b) applying energy to said substrate or said 27 solution, or both, such that at least a subpopulation of said different beads randomly associate 28 onto sites."
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COMPLAINT; JURY TRIAL DEMAND

21.

In 2010, Life Technologies acquired the technology of a company named Ion

2 Torrent, and launched Life Technologies Ion Personal Genome Machine (PGM) platform" and 3 Ion OneTouch System platform based on it. 4
22. Life Technologies describes the Ion Torrent technology as "post-light" sequencing

5 that is based on semiconductor sequencing. 6 7 8 9 10 11

24. 25. 23. The Ion Torrent technology uses dense arrays of beads without optical signatures. V. FIRST CLAIM FOR RELIEF (INFRINGEMENT OF THE '431 PATENT) Plaintiff incorporates paragraphs 1-23 of this Complaint here. Defendants have been and are making, using, selling, and offering to sell within

12 the United States instruments, reagents, kits and services for sequencing using dense arrays of 13 beads without optical signatures, thereby infringing, both directly and indirectly, at least one 14 claim of the '431 Patent. 15
26. Defendants' infringing activities include, without limitation, the making, using,

16 selling and offering to sell instruments, reagents and kits to perform semiconductor sequencing, 17 including without limitation the Ion Personal Genome Machine (PGM) platform and Ion 18 OneTouch System platform. 19
27. Upon information and belief, Life Tech provides a users' manual or other

20 instructions to users of the Ion Personal Genome Machine (PGM) platform and Ion 21 OneTouch System platform. 22
28. Upon information and belief, the instructions referenced in 27 include

23 instructions to contact a substrate with a surface comprising discrete sites at a density of at least
2 24 100 sites per 1 mm with a solution comprising a population of different beads.

25

29.

Upon information and belief, the beads referenced in 25 do not comprise an

26 optical signature. 27 / / / 28 / / /
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30.

Upon information and belief, instructions referenced in 27-28 include

2 instructions to apply energy to said substrate or said solution, or both, such that at least a 3 subpopulation of said different beads randomly associate onto sites. 4
31. Defendants have been and are making, using, selling and offering to sell the Ion

5 Personal Genome Machine (PGM) platform and Ion OneTouch System platform, and 6 providing users' manuals and instructions for operating the platforms. Defendants' actions 7 constitute active inducement of the '431 patent in violation of 35 U.S.C. 271(b), both literally 8 and under the doctrine of equivalents. 9
32. Defendants have been and are making, using, selling and offering to sell products

10 for use with the Ion Personal Genome Machine (PGM) platform and Ion OneTouch System 11 platform for use in practicing the claims of the '431 patent. Defendants do so knowing that the 12 Ion Personal Genome Machine (PGM) platform and Ion OneTouch System platform, and the 13 products for use with those platforms, are especially made and adapted for use in infringing the 14 claims of the '431 patent, and that the platforms and related products are not staple articles or 15 capable of a substantial non-infringing use. Accordingly, Defendants are liable to Illumina as 16 contributory infringers under 35 U.S.C. 271(c), both literally and under the doctrine of 17 equivalents. 18
33. Upon information and belief, practice of the methods claimed in the '431 Patent

19 are important for the commercial acceptance of Life Tech's Ion Personal Genome Machine 20 (PGM) platform and Ion OneTouch System platform. 21
34. Defendants' infringing acts are willful in that they have knowledge of Illumina's

22 rights under the '431 Patent, but have continued to infringe, and actively induce and contribute to 23 infringement by others. 24
35. Defendants' infringing acts have damaged and are continuing to cause damage to

25 Illumina and have caused and are continuing to cause irreparable harm to Illumina unless 26 permanently enjoined by this Court. 27 / / / 28 / / /
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1 2 3 4

VI. PRAYER FOR RELIEF Illumina demands judgment against Defendants as follows: A. A declaration that Defendants have infringed the '431 Patent, both directly and

5 indirectly, under 35 U.S.C. 271(a), (b), and (c), both literally and under the doctrine of 6 equivalents; 7
B. A permanent injunction enjoining Defendants, their officers, agents, servants,

8 employees, attorneys, and those persons in active concert or participation with any of them, from 9 infringing in any manner the Patent-in-Suit; 10 11 12 Patent; 13
E. An assessment of pre-judgment and post-judgment interest and costs against C. D. A declaration that Defendants' infringement of the '431 patent is willful; An accounting for damages by virtue of Defendants' infringement of the '431

14 Defendants, together with an award of such interest and costs, in accordance with 35 U.S.C. 15 284; 16
F. A declaration that this is an exceptional case under 35 U.S.C. 285 and an award

17 of treble damages and reasonable actual attorneys' fees; and 18 19 20 21 22 23 24 25 26 27 28

PAUL, PLEVIN, SULLIVAN & CONNAUGHTON LLP

G.

Such other and further relief as this Court may deem just and proper. VII. JURY DEMAND

Illumina demands a trial by jury on all issues properly tried to a jury. Dated: December 27, 2011 PAUL, PLEVIN, SULLIVAN & CONNAUGHTON LLP By: /s/ E. Joseph Connaughton E. JOSEPH CONNAUGHTON JEFFREY P. AMES MATTHEW S. WROBLEWSKI Attorneys for Plaintiff ILLUMINA, INC.
COMPLAINT; JURY TRIAL DEMAND

1 Of Counsel: 2 3 4 5 6 7 8 Mailing Address: P.O. Box 2965 10 Milwaukee, WI 53201-2965 9 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

PAUL, PLEVIN, SULLIVAN & CONNAUGHTON LLP

David G. Hanson (Pro Hac Vice application pending) Jessica Hutson Polakowski (Pro Hac Vice application pending) Reinhart Boerner Van Deuren s.c. 1000 North Water Street, Suite 1700 Milwaukee, WI 53202 Telephone: 414-298-1000 Facsimile: 414-298-8097

COMPLAINT; JURY TRIAL DEMAND

'11CV3022 LAB NLS