Applied Biosystems, Inc. (AB) had developed and built many of the DNA sequencing machines that were used in sequencing human DNA in the Human Genome project. Illumina claimed that AB’s next generation of DNA sequencing technology, the SOLiD™ system, infringed three of its patents. At trial, the jury was asked to determine whether one of the patents was valid, whether AB infringed the patent, and if so, what reasonable royalties should be paid for its infringement. Both sides agreed that the patent, if valid and infringed, was first infringed by a small research company that AB later purchased.

NERA Senior Vice President Dr. Alan Cox was retained by AB as a damages expert. During the trial, Dr. Cox rebutted a number of claims made by the plaintiff’s damages expert. He presented his own reasonable royalty analysis based on a rigorous construction of the minimum royalty Illumina would have been likely to accept and the maximum royalty the research unit would have been willing to pay. These calculations were supported by other licenses signed by the research unit during the uncertain pre-commercialization stage of its research.

After a seven-day trial in the US District Court for the Northern District of California, the jury unanimously decided that the SOLiD™ system did not infringe the Illumina patent, though it found that the patent was valid.