7 unchanged sentences
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 judgements 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.
2 unchanged sentences
In the second IPR, the Board did not find the disputed claims unpatentable.
−Removed: We appealed the decision in the second IPR to the U.S.
−Removed: Court of Appeals for the Federal Circuit, which held a hearing on December 7, 2023.
−Removed: On January 9, 2024, the U.S.
−Removed: Court of Appeals for the Federal Circuit affirmed the decisions of the Board.
+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 and that motion was granted on June 18, 2024.
+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.
+Added: A case management conference was held on October 10, 2024 and the Court set a trial date of October 5, 2026.
We plan to vigorously defend against the remaining claims.
−Removed: In December 2022, Take2 Technologies, Ltd.
−Removed: (“Take2”) and the Chinese University of Hong Kong filed a complaint in the U.S.
+Added: Fiscal 2024 Form 10-K
+Added: On December 14, 2022, Take2 Technologies, Ltd.
+Added: (“Take2”) and the Chinese University of Hong Kong (“CUHK”) filed a complaint in the U.S.
District Court for Delaware against us alleging infringement of U.S.
11,091,794 (the “’794 Patent”) (C.A.
−Removed: 22- cv-01595).
−Removed: The complaint alleges that our Sequel TM II systems, Sequel IIe Systems, and Revio TM Systems that operate version 11.0 or later of the SMRT TM Link software, infringe the ‘794 Patent.
+Added: 22- cv-01595) (the “Take2 District Court matter”) .
+Added: 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 believe the infringement allegations in the complaint lack merit and we intend to vigorously defend in this matter.
−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: A hearing occurred on February 22, 2024 on the motion to dismiss the case and the motion was taken under submission for future decision.
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 issued orders November 6 and December 4 of 2023 partially granting the motion.
−Removed: 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 district court action.
−Removed: On October 17, 2023, we filed a petition requesting institution of an IPR requesting the Board to find all claims of the ’794 patent invalid.
−Removed: We anticipate a decision by the United States Patent and Trademark Office on whether to institute a trial on the validity of the claims of the '794 patent on or before April 26, 2024.
+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 CUHK 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: On May 3, 2024, the Court granted the motion to stay, and the case currently remains stayed.
+Added: Briefing is complete in IPR2024-00028 and an oral hearing took place on January 23, 2025.
+Added: The Board is scheduled to issue a final decision on or before April 24, 2025 that addresses the validity of all claims of the ’794 patent.
+Added: On March 7, 2025, we entered into a purchase agreement with CUHK to purchase the ‘794 patent.
+Added: In connection with our purchase of the ‘794 Patent, each of Take2 and CUHK, on the one hand, and PacBio, on the other hand, agreed to waive and seek the discharge of all outstanding litigation claims and patent-related challenges, including with respect to the Take2 District Court matter and IPR2024-00028.
+Added: The agreement to discharge the litigation claims and the patent challenge remains subject to approval by the Northern District of California and the Board, respectively.
Proceedings in China
14 unchanged sentences
Regardless of the outcome, litigation can have an adverse impact on us because of litigation and settlement costs, diversion of management resources, and other factors.
+Added: Fiscal 2024 Form 10-K
MINE SAFETY DISCLOSURES
Not applicable.
+Added: Fiscal 2024 Form 10-K
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.