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7,767,441 (the “‘441 Patent”).
−Removed: We plan to vigorously defend in this matter.
−Removed: On November 20, 2019, we filed our answer to the complaint, denying infringement and seeking a declaratory judgement of invalidity of the ‘441 Patent.
−Removed: On June 22, 2020, we filed a petition requesting institution of an inter-partes review ("IPR") to the Patent Trial and Appeals Board (the “Board”) at the United States Patent Office requesting the Board to find a set of claims in the ‘441 Patent invalid.
−Removed: On June 27, 2020, we filed a second petition requesting institution of an IPR requesting the Board to find another set of claims in the ‘441 Patent invalid.
−Removed: The two petitions (the “PacBio IPR Petitions”) requesting IPRs assert that all of the claims relevant to the PGI complaint are invalid.
+Added: The complaint alleges that our Sequel™ Systems and Sequel II Systems infringe the ‘441 Patent.
+Added: The complaint seeks unspecified monetary damages and an order enjoining us from infringing the ’441 Patent.
+Added: On November 20, 2019, we filed our answer to the complaint, denying infringement and seeking declaratory judgments of non-infringement and invalidity of the ‘441 Patent.
+Added: On June 22, 2020, we filed a petition requesting institution of an inter-partes review ("IPR") to the Patent Trial and Appeals Board (the “Board”) at the United States Patent Office (IPR2020-01163) requesting the Board to find a set of claims in the ‘441 Patent invalid.
+Added: On June 27, 2020, we filed a second petition (IPR2020-01200) requesting institution of an IPR requesting the Board to find another set of claims in the ‘441 Patent invalid.
+Added: The two petitions (the “PacBio IPR Petitions”) together asserted that all of the claims relevant to the PGI complaint are invalid.
On January 19, 2021, the Board ordered that both PacBio IPR Petitions be instituted on all grounds presented.
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In the second IPR, the Board did not find the disputed claims unpatentable.
−Removed: We are appealing the decision in the second IPR to the U.S.
−Removed: Court of Appeals for the Federal Circuit, which has scheduled a hearing for December 7, 2023.
+Added: PGI and PacBio each appealed to the U.S.
+Added: Court of Appeals for the Federal Circuit, which affirmed both IPR decisions on January 9, 2024.
On August 25, 2020, the court ordered a stay of the PGI District Court matter based on a joint stipulation by the parties pending a final written decision on the IPRs.
−Removed: Following the final decision on the IPRs described above, on February 2, 2022, the judge ordered that the PGI District Court matter be reopened.
+Added: Following the final written decisions on the IPRs described above, on February 2, 2022, the judge ordered that the PGI District Court matter be reopened.
However, in a subsequent order dated September 15, 2022, the judge stayed the PGI District Court matter pending a final decision by the U.S.
Court of Appeals for the Federal Circuit regarding the appeal described above.
+Added: On February 26, 2024, we moved to transfer the case from the District of Delaware to the Northern District of California.
+Added: On March 18, 2024, the parties filed a joint status report in which PGI requested the Court set a revised scheduling order and we requested grant of our motion to transfer and proposed an alternate scheduling order.
We plan to vigorously defend against the remaining claims.
−Removed: In December 2022, Take2 Technologies, Ltd.
+Added: On December 14, 2022, Take2 Technologies, Ltd.
("Take2") and the Chinese University of Hong Kong filed a complaint in the U.S.
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11,091,794 (the “’794 Patent”) (C.A.
−Removed: 22- cv-01595).
+Added: 22- cv-01595) (the "Take2 District Court matter").
The complaint alleges that our Sequel™ II systems, Sequel IIe Systems, and Revio™ Systems that operate version 11.0 or later of the SMRT™ Link software, infringe the ‘794 Patent.
The complaint seeks unspecified monetary damages and an order enjoining us from infringing the ’794 Patent.
−Removed: We filed a motion to dismiss on February 14, 2023.
−Removed: We also filed a motion to transfer the case to the Northern District of California which was granted on August 2, 2023 and the case was transferred on August 16, 2023 (C.A.
+Added: We filed a motion to dismiss on February 14, 2023, which was denied on March 25, 2024.
+Added: We also filed a motion to transfer the case from the District of Delaware to the Northern District of California which was granted on August 2, 2023.
+Added: The case was transferred on August 16, 2023 (C.A.
5:23-cv-04166).
−Removed: The hearing on the motion to dismiss is scheduled for December 13, 2023.
Take2 filed a motion to disqualify our in-house legal department from representing PacBio in the district court action on September 20, 2023.
We opposed Take2’s disqualification motion on October 4, 2023.
−Removed: An oral hearing on the disqualification motion was held on October 26, 2023 and the court is expected to issue an order on the motion in due course.
−Removed: We filed a petition for inter parties review at the USTPO (IPR2024-00028) challenging the validity of all claims of the ’794 patent on October 17, 2023.
−Removed: A hearing was held on August 9, 2023.
−Removed: We believe the infringement allegations in the complaint lack merit and we intend to vigorously defend in this matter.
+Added: An oral hearing on the disqualification motion was held on October 26, 2023 and the court issued orders on November 6 and December 4 of 2023 partially granting the motion.
+Added: While some members of the in-house legal department were disqualified, General Counsel for PacBio was not disqualified and continues to represent PacBio in the Take2 District Court matter.
+Added: We filed a petition for inter partes review at the Board (IPR2024-00028) challenging the validity of all claims of the ’794 patent on October 17, 2023.
+Added: The Chinese University of Hong Kong filed a preliminary response to the petition on January 26, 2024.
+Added: On April 22, 2024, we filed our answer to the complaint, denying infringement and seeking declaratory judgments of non-infringement and invalidity of the ‘794 Patent.
+Added: On April 24, 2024, the Board granted institution of IPR2024-00028 on the validity of all claims of the ’794 patent.
+Added: On May 2, 2024, the parties filed a joint stipulation and proposed order to stay the Take2 District Court matter pending inter partes review.
+Added: We intend to vigorously defend in this matter.
Proceedings in China
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On September 2, 2021, the CNIPA issued its decision on the Invalidation Petition and determined that all claims (1-61) of the CN321 patent were invalid.
−Removed: On December 1, 2021, PGI filed an appeal with the Beijing IP Court, contesting the CNIPA decision.
+Added: On December 1, 2021, PGI filed an appeal with the Beijing IP Court, contesting the CNIPA decision, and the hearing was held on August 9, 2023.
+Added: The Beijing IP Court issued a ruling maintaining the CNIPA’s invalidation decision on November 19, 2023.
+Added: PGI appealed to the Supreme People’s Court on December 25, 2023.
We filed a petition with the Wuhan Intermediate People’s court requesting dismissal of the infringement action based on the CNIPA invalidation decision, and PGI filed a petition to withdraw its complaint.
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Compared sentence by sentence after normalising whitespace, quotation marks, case and digits, so re-formatting and restated figures do not read as changed language. Wording changes appear as one removal and one addition. The current filing and the prior one are authoritative.