Case 1:17-cv-01353-RGA Document 1 Filed 09/25/17 Page 1 of 19 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`PACIFIC BIOSCIENCES OF CALIFORNIA, INC.
`Plaintiff,
`
`
`
`
`
`vs.
`
` OXFORD NANOPORE TECHNOLOGIES, INC.
`Defendant.
`
`Civil Action No. _______________
`
` JURY TRIAL DEMANDED
`
`
`
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff Pacific Biosciences of California, Inc. (“Plaintiff” or “PacBio”) for its complaint
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`against Defendant Oxford Nanopore Technologies, Inc. (“Oxford”) alleges and states the
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`following:
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`NATURE OF THE ACTION
`
`1.
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`This is an action for patent infringement arising under the United States Patent
`
`Act, 35 U.S.C. §§1, et seq., including 35 U.S.C. § 271.
`
`2.
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`PacBio brings this action to halt Oxford’s infringement of PacBio’s rights under
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`the Patent Laws of the United States 35 U.S.C. § 1, et seq., which arise under U.S. Patent Nos.
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`9,678,056 (the “’056 patent,” attached as Exhibit 1) and 9,738,929 (the “’929 patent,” attached as
`
`Exhibit 2).
`
`THE PARTIES
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`3.
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`PacBio is a corporation organized and existing under the laws of the State of
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`Delaware, having a principal place of business at 1305 O’Brien Drive, Menlo Park, California
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`94025.
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`PACBIO Ex. 2003 p.1
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`

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`Case 1:17-cv-01353-RGA Document 1 Filed 09/25/17 Page 2 of 19 PageID #: 2
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`4.
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`PacBio was founded in the year 2000. PacBio develops, manufactures, and sells a
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`novel DNA sequencing platform that helps researchers resolve genetically complex problems.
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`PacBio’s DNA sequencing technology is based on real-time detection of the incorporation of
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`nucleotides into a single strand of DNA. That technology goes by the name “SMRT®”
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`sequencing, which is short for “Single Molecule, Real-Time” sequencing. PacBio’s SMRT®
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`sequencing platform encompasses not just DNA sequencing instruments but also novel
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`sequencing chips and chemical reagents for use with PacBio’s DNA sequencing instrument and
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`sophisticated software for analyzing the data that emerges from PacBio’s sequencing
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`instruments.
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`5.
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`PacBio’s SMRT® Sequencing Platform and technology allows researchers to
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`carry out numerous applications, including at least: (1) de novo genome assembly to finish
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`genomes in order to more fully identify, annotate, and decipher genomic structures; (2) targeted
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`sequencing to more comprehensively characterize genetic variations; and (3) identification of
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`DNA base modifications to help characterize epigenetic regulation and DNA damage. PacBio’s
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`SMRT® Sequencing Platform and technology provides high-accuracy, ultra-long reads and
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`uniform coverage, and is believed to be the only DNA sequencing technology that provides the
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`ability to simultaneously detect epigenetic changes.
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`6.
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`In addition to the commercialization of its flagship SMRT® sequencing platform,
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`PacBio has broad expertise in single-molecule sequencing and is engaged in exploratory work
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`related to single-molecule sequencing, including techniques related to single-molecule
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`sequencing based on detection platforms such as nanopores. Collectively, PacBio’s research and
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`development efforts have resulted in a patent portfolio that includes over 330 issued U.S. patents
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`and pending applications related to single-molecule sequencing techniques.
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`2
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`PACBIO Ex. 2003 p.2
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`Case 1:17-cv-01353-RGA Document 1 Filed 09/25/17 Page 3 of 19 PageID #: 3
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`7.
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`Defendant Oxford is a corporation organized under the laws of Delaware with its
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`principal place of business at 1 Kendall Square, Bldg. 200, Cambridge, Massachusetts 02139.
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`On information and belief, Oxford is engaged in the commercialization throughout the United
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`States of nanopore-based single-molecule sequencing products, including at least the MinION,
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`GridION X5, PromethION, and SmidgION sequencing instruments, reagents and kits for use
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`with these instruments, and the 2D and 1D Squared products.
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`JURISDICTION AND VENUE
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`8.
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`This action arises under the Patent Laws of the United States, Title 35, United
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`States Code, §§ 1 et seq., including 35 U.S.C. §§ 271 and 281.
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`9.
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`This Court has jurisdiction over the subject matter of this action pursuant to 28
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`U.S.C. §§ 1331 and 1338(a).
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`10.
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`This Court has personal jurisdiction over defendant Oxford. Oxford has
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`substantial contacts with the forum as a consequence of conducting business in Delaware, and
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`has purposefully availed itself of the benefits and protections of Delaware state law by
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`incorporating under Delaware law.
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`11.
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`Venue is proper in this District under 28 U.S.C. §§ 1391(b) and (c), and 1400(b)
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`because Oxford is a Delaware corporation and Delaware is a convenient forum for resolution of
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`the parties’ disputes set forth herein.
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`BACKGROUND
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`12.
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`On information and belief, in the 2015 timeframe, Oxford began commercializing
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`single-molecule sequencing products based on the use of protein nanopores. Oxford purports to
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`offer a single-molecule sequencing product that, like PacBio’s products, is capable of
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`determining the sequence of long stretches of DNA in a single pass. The ability to generate such
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`3
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`PACBIO Ex. 2003 p.3
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`“long reads” is an area where PacBio has and continues to be widely recognized as the technical
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`and commercial leader. PacBio and Oxford compete in the single-molecule sequencing market.
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`13.
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`Oxford’s single-molecule sequencing products include at least the MinION,
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`GridION X5, PromethION, and SmidgION sequencing instruments and reagents, consumables,
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`and software for use with same, including without limitation reagents and kits used to generate
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`“2D reads” and “1D squared reads” using Oxford’s sequencing instruments (collectively, the
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`“Accused Products”). For example, two views of a representative MinION device are shown
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`below:
`
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`Exhibit 5; Exhibit 6 at 292. The top image shows a working MinION device, and the bottom
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`view shows the interior of the device. The portion labeled “C” in the above photograph depicts a
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`flow cell with an array of individual nanopores. Nanopores are tiny holes embedded into a
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`membrane and are formed by inserting proteins that have a hollow tube through their center into
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`a polymer membrane, as shown in the image below:
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`4
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`PACBIO Ex. 2003 p.4
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`Case 1:17-cv-01353-RGA Document 1 Filed 09/25/17 Page 5 of 19 PageID #: 5
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`
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`Exhibit 7. The Accused Products each include one or more flow cells that include a “nanopore
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`array.”
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`14. While the MinION instrument includes a single flow cell, the PromethION
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`instrument includes 48 flow cells and has been described as a “whole box of MinION
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`sequencers.” Exhibit 8. A representative PromethION instrument with its 48 flow cells is shown
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`below:
`
`Id.
`
`
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`5
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`PACBIO Ex. 2003 p.5
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`15.
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`Similarly, the GridION X5 is an instrument that is described by Oxford as
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`containing “up to five MinION Flow Cells.” Exhibit 15. A representative GridION X5
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`instrument with its 5 flow cells is shown below:
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`
`
`Id.
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`16.
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`The SmidgION is an instrument that contains a single flow cell. Oxford describes
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`the SmidgION as “us[ing] the same core nanopore sensing technology as MinION” in a “smaller
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`device” “for use with smartphones or other mobile, low power devices.” Exhibit 14. A
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`representative image of the SmidgION instrument is shown below:
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`Id.
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`
`
`6
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`PACBIO Ex. 2003 p.6
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`17.
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`To sequence DNA using any one of the Accused Products, one first applies a
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`voltage across the membrane such that an electrical current flows through the hole. A strand of
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`DNA is then drawn through the hole:
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`
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`Exhibit 9. As the DNA passes through the hole, it disrupts the electrical current that is passing
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`through the hole, thus producing a signal. To evaluate the sequence, one can attempt to correlate
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`this signal with the DNA bases that are passing through the hole.
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`18. More particularly, in nanopore-based DNA sequencing systems, such as the
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`Accused Products sold by Oxford, the signal that results from passage of the DNA through the
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`nanopore arises not just from a single DNA base, but from a contiguous group of DNA bases that
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`interacts with the nanopore at a given time. Therefore, to determine the DNA sequence, the
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`software made available by Oxford for use with the Accused Products uses calibration
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`information produced by measuring the signals from the different combinations of bases that
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`may interact with the nanopore at a given time.
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`19.
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`To increase accuracy, Oxford’s products utilize at least two additional features.
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`First, Oxford utilizes a motor protein consisting of modified enzyme that modulates the rate of
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`7
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`PACBIO Ex. 2003 p.7
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`Case 1:17-cv-01353-RGA Document 1 Filed 09/25/17 Page 8 of 19 PageID #: 8
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`translocation, allowing one to better capture the signals that arise from the nanopore. Second,
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`Oxford uses techniques based on redundant sequencing in which one sequences complementary
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`strands of DNA to generate a consensus sequence.
`
`COUNT I
`(Infringement of U.S. Patent No. 9,678,056)
`Plaintiff repeats and re-alleges each and every allegation contained in the
`
`20.
`
`preceding paragraphs of this Complaint as if stated in their entirety herein, and incorporates them
`
`herein by reference.
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`21.
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`The ’056 patent, entitled “Control of Enzyme Translocation in Nanopore
`
`Sequencing,” issued on June 13, 2017, to inventors Steven Turner and Benjamin Flusberg. The
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`’056 patent is assigned on its face to Plaintiff PacBio. PacBio is the owner of all rights, title to
`
`and interest in the ’056 patent.
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`22.
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`Oxford infringes, literally or under the doctrine of equivalents, both directly and
`
`indirectly (by inducement and by contribution), PacBio’s ’056 patent through its activities
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`connected to at least the Accused Products.
`
`23.
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`On information and belief, Oxford has directly infringed and continues to directly
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`infringe at least claim 1 of the ’056 patent pursuant to 35 U.S.C. § 271(a), literally or under the
`
`doctrine of equivalents, by using within the United States without authority the Accused
`
`Products. As an example, attached as Exhibit 3 is a preliminary and exemplary claim chart
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`detailing Oxford’s infringement of this claim of the ’056 patent. This chart is not intended to
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`limit PacBio’s right to modify the chart or allege that other products and/or activities of Oxford
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`infringe the identified claim or any other claims of the ’056 patent or any other patents. Exhibit
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`3 is hereby incorporated by reference in its entirety. Each claim element in Exhibit 3 that is
`
`8
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`PACBIO Ex. 2003 p.8
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`mapped to Oxford’s Accused Products shall be considered an allegation within the meaning of
`
`the Federal Rules of Civil Procedure and therefore a response to each allegation is required.
`
`24.
`
`For instance, claim 1 of the ’056 patent is listed below:
`
`A method for sequencing a nucleic acid template comprising:
`
`[a] providing a substrate having an upper solution above the
`substrate, a lower solution below the substrate, the substrate
`comprising a nanopore connecting the upper solution and lower
`solution, the nanopore sized to pass a single strand of nucleic acid;
`
`[b] providing a voltage across the nanopore to produce a
`measurable current flow through the nanopore;
`
`[c] controlling the rate of translocation of a single stranded portion
`of the nucleic acid template through the nanopore with a
`translocating enzyme that is associated with the nucleic acid
`template under reaction conditions whereby the translocating
`enzyme and the reaction conditions are selected such that the
`translocating enzyme exhibits two kinetic steps wherein each of
`the kinetic steps has a rate constant, and the ratio of the rate
`constants of the kinetic steps is from 10:1 to 1:10;
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`[d] measuring the current through the nanopore over time as the
`nucleic acid template is translated through the nanopore; and
`
`[e] determining the sequence of a portion of the nucleic acid
`template as it translates through the nanopore using the measured
`current over time.
`
`25.
`
`Use of Oxford’s products leads to direct infringement of this claim in at least the
`
`following way: Oxford’s products include a nucleic acid sequencing instrument having a
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`substrate, which is a nanopore in a membrane, and an upper solution above the membrane and a
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`lower solution below the membrane (step a). Nucleic acid molecules are sequenced by passing a
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`nucleic acid molecule strand through the nanopore, which connects the upper and lower solutions
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`and is sized to pass a single strand of nucleic acid through. A voltage is then applied across the
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`membrane to drive a current across the membrane (step b). The rate of translocation of a single
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`9
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`PACBIO Ex. 2003 p.9
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`stranded portion of the nucleic acid template through the nanopore is controlled via a
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`translocating enzyme that is associated with the nucleic acid template under reaction conditions.
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`The translocating enzyme exhibits two steps where the rate constant for portions of the template
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`molecule translocation would fall within the claimed range of 10:1 to 1:10 (step c). The current
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`through the nanopore is measured over time as the nucleic acid template is translated through the
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`nanopore (step d). As a nucleic acid molecule to be sequenced is drawn through the nanopore,
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`the current is disrupted and measured using an ASIC chip which is part of the sequencing
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`instrument. The sequence of the nucleic acid template is then determined using Oxford’s
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`basecalling software, based on the current measurements as the nucleic acid template is
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`translated through the nanopore (step d).
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`26.
`
`On information and belief, Oxford has monitored PacBio’s patent filings and has
`
`been aware of the ’056 patent since its issuance on June 13, 2017. At a minimum, Oxford has
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`had knowledge of and notice of the ’056 patent and its infringement since at least, and through,
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`the filing and service of PacBio’s complaint in this action and despite this knowledge continues
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`to commit the aforementioned infringing acts.
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`27.
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`Oxford actively, knowingly, and intentionally has induced, or has threatened to
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`induce, infringement of at least claim 1 of the ’056 patent through a range of activities. First, on
`
`information and belief, Oxford has induced infringement by controlling the design and
`
`manufacture of, offering for sale, and selling the Accused Products with the knowledge and
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`specific intent that its customers will use the Accused Products to infringe, literally or under the
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`doctrine of equivalents, by performing the claimed method for sequencing a nucleic acid
`
`template. For instance, Oxford has admitted in an ongoing International Trade Commission
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`10
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`PACBIO Ex. 2003 p.10
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`Case 1:17-cv-01353-RGA Document 1 Filed 09/25/17 Page 11 of 19 PageID #: 11
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`investigation that it imports, sold for importation, and or/sells its MinION product and
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`PromethION product within the United States. See Exhibit 10 ¶ 53.
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`28.
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`Second, on information and belief, Oxford has induced infringement by its
`
`customers through the dissemination of promotional and marketing materials relating to the
`
`Accused Products with the knowledge and specific intent that its customers will use these
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`instruments to infringe, literally or under the doctrine of equivalents, by performing the claimed
`
`method for sequencing a nucleic acid template. For instance, Oxford promotes the Accused
`
`Products on its website, stating that its products offer numerous benefits such as real-time
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`DNA/RNA sequencing, no capital cost, long reads, scalability, high-fidelity, and rapid library
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`preparation time. See Exhibit 11.
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`29.
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`Third, on information and belief, Oxford has induced infringement by its
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`customers through the creation of distribution channels for the MinION and/or PromethION
`
`instruments in the United States with the knowledge and specific intent that its customers will
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`use these instruments to infringe, literally or under the doctrine of equivalents, by performing the
`
`claimed method for sequencing a nucleic acid template. For instance, Oxford’s website allows
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`customers in the United States to purchase starter packs of Oxford’s MinION and GridION X5
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`instruments that, when used, will lead to infringement of the ’056 patent. As Oxford’s website
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`states, “[b]uy a Starter Pack to join the growing numbers in the Nanopore Community.” See
`
`Exhibit 12. As another example, Oxford has created an early access program for its PromethION
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`instrument that provides access to a PromethION device, site installation support, flow cells and
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`reagents, and further information and support. See Exhibit 13. As another example, Oxford’s
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`website allows potential customers in the United States to register their interest in Oxford’s
`
`11
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`PACBIO Ex. 2003 p.11
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`SmidgION instrument, so that they can “be one of the first to start using SmidgION.” Exhibit
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`14.
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`30.
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`Fourth, on information and belief, Oxford has induced infringement through the
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`distribution of other instructional materials, product manuals, and technical materials with the
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`knowledge and the specific intent to encourage and facilitate its customer’s infringing (either
`
`literally or under the doctrine of equivalents) use of the Accused Products. Oxford is liable for
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`its induced infringement of the ’056 patent pursuant to 35 U.S.C. § 271 (b).
`
`31.
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`Oxford has contributed to, or has threatened to contribute to, the infringement by
`
`its customers of the ’056 patent by, without authority, selling and offering to sell within the
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`United States materials and apparatuses for practicing the claimed invention of the ’056 patent,
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`including, at least, the Accused Products. When, for example, any of the Accused Products is
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`used by Oxford’s customers for nucleic acid sequencing, the claimed method of the ’056 patent
`
`for sequencing a nucleic acid template is performed, thereby infringing, literally or under the
`
`doctrine of equivalents, at least claim 1 of the ’056 patent.
`
`32.
`
`On information and belief, Oxford knows that the Accused Products each
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`constitute a material part of the inventions of the ’056 patent and that they are not a staple article
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`or commodity of commerce suitable for substantial noninfringing use. As documented above,
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`the Accused Products consist of specialized substrates containing protein nanopores that are used
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`in conjunction with specialized reagents for the purpose of sequencing nucleic acid templates.
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`See supra ¶¶ 12–19, 22-25. As such, none of the Accused Products nor any of the reagent kits
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`for use with the Accused Products is a staple article of commerce suitable for substantial non-
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`infringing use. Oxford knows that the Accused Products are not staple articles or commodities
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`of commerce suitable for substantial non-infringing use because the Accused Products have no
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`12
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`PACBIO Ex. 2003 p.12
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`use apart from infringing the ’056 patent. Oxford is liable for its contributory infringement of
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`the ’056 patent pursuant to 35 U.S.C. § 271(c).
`
`33.
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`Oxford’s infringement of the ’056 patent has injured PacBio in its business and
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`property rights. PacBio is entitled to recover monetary damages for such injuries pursuant to 35
`
`U.S.C. § 284 in an amount to be determined at trial. Oxford’s infringement of the ’056 patent
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`has caused irreparable harm to PacBio and will continue to cause such harm unless and until
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`Oxford’s infringing activities are enjoined by this Court.
`
`COUNT II
`(Infringement of U.S. Patent No. 9,738,929)
`Plaintiff repeats and re-alleges each and every allegation contained in the
`
`34.
`
`preceding paragraphs of this Complaint as if stated in their entirety herein, and incorporates them
`
`herein by reference.
`
`35.
`
`The ’929 patent, entitled “Nucleic Acid Sequence Analysis,” issued on August 22,
`
`2017, to inventors Stephen Turner, Jon Sorenson, Kenneth Mark Maxham John Eid, Cheryl
`
`Heiner, and Kevin Travers. The ’929 patent is assigned on its face to Plaintiff PacBio. PacBio is
`
`the owner of all rights, title to and interest in the ’929 patent.
`
`36.
`
`Oxford infringes, literally or under the doctrine of equivalents, both directly and
`
`indirectly (by inducement and by contribution), PacBio’s ’929 patent through its activities
`
`connected to at least the Accused Products when used with at least Oxford’s kits and reagents for
`
`generating “2D reads” and “1D squared reads.”
`
`37.
`
`On information and belief, Oxford has directly infringed and continues to directly
`
`infringe at least claim 1 of the ’929 patent pursuant to 35 U.S.C. § 271(a), literally or under the
`
`doctrine of equivalents, by using within the United States without authority the Accused
`
`Products when used with at least Oxford’s kits and reagents for generating “2D reads” and “1D
`
`13
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`PACBIO Ex. 2003 p.13
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`squared reads.” As an example, attached as Exhibit 4 is a preliminary and exemplary claim chart
`
`detailing Oxford’s infringement of this claim of the ’929 patent. This chart is not intended to
`
`limit PacBio’s right to modify the chart or allege that other products and/or activities of Oxford
`
`infringe the identified claim or any other claims of the ’929 patent or any other patents. Exhibit
`
`4 is hereby incorporated by reference in its entirety. Each claim element in Exhibit 4 that is
`
`mapped to Oxford’s Accused Products shall be considered an allegation within the meaning of
`
`the Federal Rules of Civil Procedure and therefore a response to each allegation is required.
`
`38.
`
`For instance, claim 1 of the ’929 patent is listed below:
`
`A method of determining a nucleotide sequence of a region of
`interest in a polynucleotide, the method comprising:
`
`[a] introducing a polynucleotide comprising a region of interest to
`a sequence analysis system comprising a nanopore in a membrane,
`wherein the polynucleotide comprises a double-stranded portion
`comprising complementary strands of the region of interest;
`
`[b] applying a voltage across the membrane;
`
`[c] monitoring variations in ionic current through the nanopore of
`the sequence analysis system during enzyme chaperone-regulated
`passage of the polynucleotide through the nanopore;
`
`[d] analyzing the monitored variations in ionic current to obtain
`nucleotide sequence information for the polynucleotide, wherein
`the nucleotide sequence information comprises redundant sequence
`information for the region of interest, wherein the redundant
`sequence information comprises the nucleotide sequence of the
`complementary strands; and
`
`[e] determining a consensus sequence for the region of interest
`based on the redundant sequence information.
`
`39.
`
`Use of Oxford’s products leads to direct infringement of this claim in at least the
`
`following way: Oxford’s products include a sequence analysis system having a nanopore in a
`
`membrane (step a). A double-stranded polynucleotide is sequenced by unzipping the double
`
`14
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`PACBIO Ex. 2003 p.14
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`strand to form a long single strand which is fed through the nanopore. A voltage is then applied
`
`across the membrane to drive a current across the membrane (step b). An enzyme regulates the
`
`passage of the polynucleotide through the nanopore, and variations in the ionic current through
`
`the nanopore of the sequence analysis system is measured and monitored (step c). The sequence
`
`of the polynucleotide is then determined using Oxford’s basecalling software, based on the
`
`variations in the monitored ionic current as the polynucleotide is passed through the nanopore
`
`When Oxford’s sequencing instruments are used with Oxford’s kits and reagents for generating
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`either “2D reads” or “1D squared reads,” redundant sequence information is generated and the
`
`analysis uses redundant sequence information including the sequence information from the sense
`
`and antisense strands of DNA. (step d). Based on the analysis of redundant sequence
`
`information, a consensus sequence is determined (step e).
`
`40.
`
`On information and belief, Oxford has monitored PacBio’s patent filings and has
`
`been aware of the ’929 patent since its issuance on August 22, 2017. At a minimum, Oxford has
`
`had knowledge of and notice of the ’929 patent and its infringement since at least, and through,
`
`the filing and service of PacBio’s complaint in this action and despite this knowledge continues
`
`to commit the aforementioned infringing acts.
`
`41.
`
`Oxford actively, knowingly, and intentionally has induced, or has threatened to
`
`induce, infringement of at least claim 1 of the ’929 patent through a range of activities. First, on
`
`information and belief, Oxford has induced infringement by controlling the design and
`
`manufacture of, offering for sale, and selling the Accused Products with the knowledge and
`
`specific intent that its customers will use the Accused Products to infringe, literally or under the
`
`doctrine of equivalents, by performing the claimed method for sequencing a nucleic acid
`
`template. For instance, Oxford has admitted in an ongoing International Trade Commission
`
`15
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`PACBIO Ex. 2003 p.15
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`Case 1:17-cv-01353-RGA Document 1 Filed 09/25/17 Page 16 of 19 PageID #: 16
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`investigation that it imports, sold for importation, and or/sells its MinION product and
`
`PromethION product within the United States. See Exhibit 10 ¶ 53.
`
`42.
`
`Second, on information and belief, Oxford has induced infringement by its
`
`customers through the dissemination of promotional and marketing materials relating to the
`
`Accused Products with the knowledge and specific intent that its customers will use these
`
`instruments to infringe, literally or under the doctrine of equivalents, by performing the claimed
`
`method for sequencing a nucleic acid template. For instance, Oxford promotes the Accused
`
`Products on its website, stating that its products offer numerous benefits such as real-time
`
`DNA/RNA sequencing, no capital cost, long reads, scalability, high-fidelity, and rapid library
`
`preparation time. See Exhibit 11.
`
`43.
`
`Third, on information and belief, Oxford has induced infringement by its
`
`customers through the creation of distribution channels for the MinION and/or PromethION
`
`instruments in the United States with the knowledge and specific intent that its customers will
`
`use these instruments to infringe, literally or under the doctrine of equivalents, by performing the
`
`claimed method for determining a nucleotide sequence of a region of interest in a polynucleotide.
`
`For instance, Oxford’s website allows customers in the United States to purchase starter packs of
`
`Oxford’s MinION and GridION X5 instruments that, when used, will lead to infringement of the
`
`’929 patent. As Oxford’s website states, “[b]uy a Starter Pack to join the growing numbers in
`
`the Nanopore Community.” See Exhibit 12. As another example, Oxford has created an early
`
`access program for its PromethION instrument that provides access to a PromethION device, site
`
`installation support, flow cells and reagents, and further information and support. See Exhibit
`
`13. As another example, Oxford’s website allows potential customers in the United States to
`
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`

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`Case 1:17-cv-01353-RGA Document 1 Filed 09/25/17 Page 17 of 19 PageID #: 17
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`register their interest in Oxford’s SmidgION instrument, so that they can “be one of the first to
`
`start using SmidgION.” Exhibit 14.
`
`44.
`
`Fourth, on information and belief, Oxford has induced infringement through the
`
`distribution of other instructional materials, product manuals, and technical materials with the
`
`knowledge and the specific intent to encourage and facilitate its customer’s infringing (either
`
`literally or under the doctrine of equivalents) use of the Accused Products. Oxford is liable for
`
`its induced infringement of the ’929 patent pursuant to 35 U.S.C. § 271 (b).
`
`45.
`
`Oxford has contributed to, or has threatened to contribute to, the infringement by
`
`its customers of the ’929 patent by, without authority, selling and offering to sell within the
`
`United States materials and apparatuses for practicing the claimed invention of the ’929 patent,
`
`including at least Accused Products. When, for example, any of the Accused Products is used by
`
`Oxford’s customers for sequencing a polynucleotide, the claimed method of the ’929 patent for
`
`determining a nucleotide sequence of a region of interest in a polynucleotide is performed,
`
`thereby infringing, literally or under the doctrine of equivalents, at least claim 1 of the ’929
`
`patent.
`
`46.
`
`On information and belief, Oxford knows that the Accused Products each
`
`constitute a material part of the inventions of the ’929 patent and that they are not a staple article
`
`or commodity of commerce suitable for substantial noninfringing use. As documented above,
`
`the Accused Products consist of specialized substrates containing protein nanopores that are used
`
`in conjunction with specialized reagents for the purpose of determining a nucleotide sequence of
`
`a region of interest in a polynucleotide. See supra ¶¶ 12–19, 35-39. As such, none of the
`
`Accused Products nor any of the reagent kits for use with the Accused Products is a staple article
`
`of commerce suitable for substantial non-infringing use. Oxford knows that the Accused
`
`17
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`PACBIO Ex. 2003 p.17
`
`

`

`Case 1:17-cv-01353-RGA Document 1 Filed 09/25/17 Page 18 of 19 PageID #: 18
`
`Products are not staple articles or commodities of commerce suitable for substantial non-
`
`infringing use because the Accused Products have no use apart from infringing the ’929 patent.
`
`Oxford is liable for its contributory infringement of the ’929 patent pursuant to 35 U.S.C.
`
`§ 271(c).
`
`47.
`
`Oxford’s infringement of the ’929 patent has injured PacBio in its business and
`
`property rights. PacBio is entitled to recover monetary damages for such injuries pursuant to 35
`
`U.S.C. § 284 in an amount to be determined at trial. Oxford’s infringement of the ’929 patent
`
`has caused irreparable harm to PacBio and will continue to cause such harm unless and until
`
`Oxford’s infringing activities are enjoined by this Court.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, prays for relief as follows:
`
`A.
`B.
`
`Judgment that Oxford has infringed the ’056 and/or the ’929 patent;
`
`An order permanently enjoining Oxford from further infringement of the ’056
`
`and/or the ’929 patent;
`C.
`
`An award of damages pursuant to 35 U.S.C. § 284 plus pre-judgment and post-
`
`judgment interest;
`D.
`
`An award to PacBio of its costs and reasonable expenses to the fullest extent
`
`permitted by law;
`E.
`
`A declaration that this case is exceptional pursuant to 35 U.S.C. § 285, and an
`
`award of attorneys’ fees and costs; and
`F.
`
`
`An award of such other and further relief as the Court may deem just and proper.
`
`DEMAND FOR JURY TRIAL
`
`Pursuant to Federal Rule of Civil Procedure 38(b), PacBio hereby demands a trial by jury
`
`on all issues so triable.
`
`18
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`PACBIO Ex. 2003 p.18
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`

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`Case 1:17-cv-01353-RGA Document 1 Filed 09/25/17 Page 19 of 19 PageID #: 19
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`
`Dated: September 25, 2017
`
`Of Counsel:
`
`Edward R. Reines
`Derek C. Walter
`WEIL, GOTSHAL & MANGES LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`(650) 802-3000
`
`
`
`
`
`Respectfully submitted,
`
`FARNAN LLP
`
`
`
`/s/ Brian E. Farnan
`Brian E. Farnan (Bar No. 4089)
`Michael J. Farnan (Bar No. 5165)
`919 N. Market St., 12th Floor
`Wilmington, DE 19801
`(302) 777-0300
`(302) 777-0301 (Fax)
`bfarnan@farnanlaw.com
`mfarnan@farnanlaw.com
`
`Attorneys for Plaintiff
`
`19
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`PACBIO Ex. 2003 p.19
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`