Free Motion for Judgment as a Matter of Law - District Court of Delaware - Delaware

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE ) ) ) ) ) ) ) ) ) ) )

AFFYMETRIX, INC., a Delaware corporation, Plaintiff/Counter-Defendant, v. ILLUMINA, INC., a Delaware corporation, Defendant/Counter-Plaintiff.

Civil Action No.: 04-901 JJF

ILLUMINA'S MOTION FOR JUDGMENT AS A MATTER OF LAW PURSUANT TO RULE 50(a)

Richard K. Herrmann (#405) MORRIS JAMES LLP 500 Delaware Avenue, Suite 1500 Wilmington, Delaware 19801 (302) 888-6800 [email protected] Robert G. Krupka, P.C. KIRKLAND & ELLIS LLP 777 South Figueroa Street Los Angeles, California 90017 (213) 680-8400 Mark A. Pals, P.C. Marcus E. Sernel KIRKLAND & ELLIS LLP 200 East Randolph Drive Chicago, Illinois 60601 (312) 861-2000

Dated: March 12, 2007

Attorneys for Illumina, Inc.

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INTRODUCTION In this case, Affymetrix alleges Illumina directly and indirectly infringes the patents-in-suit, and seeks damages for lost profits and/or a reasonable royalty. Now, at the close of the evidence, and before submission of the case to the jury, as at the conclusion of Affymetrix's case in chief, no reasonable jury could find that Illumina or its customers infringed any of the claims of the patents-in-suit1, or that if they did, Affymetrix is entitled to any lost profits or the 12% royalty it seeks. Affymetrix failed to present sufficient evidence to show that Illumina directly infringes any of the asserted claims of the patents-in-suit, or that Illumina's customers use Illumina products in an infringing manner. Additionally, Affymetrix did not meet its burden to prove that Illumina induced infringement by others because Affymetrix failed to prove that Illumina acted with the required specific intent to induce infringement. Affymetrix also did not prove that Illumina contributorily infringed any of the asserted claims because it did not present any evidence that Illumina's products do not have a substantial noninfringing use. 2 Even if this Court were to conclude that Affymetrix had made a prima facie case sufficient to proceed to the jury, Affymetrix has failed to prove its entitlement to any lost profits. In particular, it has failed to prove with the required degree of specificity or certainty any sales it would have made but for infringement by Illumina, that it had sufficient capacity to make any such sales, or that an award of lost profits would not be speculative. Accordingly, Affymetrix has failed to make a prima facie case for lost profits, as a matter of law, and that issue should not
1

Affymetrix asserts claims 1, 5, and 9 of U.S. Patent No. 5,795,716 ("the '716 patent"), claims 2 and 9 of U.S. Patent No. 6,35,432 ("the '432 patent"), claims 14, 15, and 35 of U.S. Patent No. 6,646,243 ("the '243 patent"), claims 36 and 41 of U.S. Patent No. 6,399,365 ("the '365 patent"), and claims 1 and 2 of U.S. Patent No. 5,545,531 ("the '531 patent"). Affymetrix apparently recognizes its lack of evidence of contributory infringement as its revised proposed jury verdict form does not include a request for a jury finding on the issue of contributory infringement.

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be submitted to the jury. Furthermore, Affymetrix, to the extent it established a prima facie showing of entitlement to an award of a reasonable royalty, has failed to establish that it is entitled to its proposed 12% royalty rate under controlling law. ARGUMENT A. Legal Standard For Judgment As A Matter of Law

Judgment as a matter of law should be granted when "there is no legally sufficient evidentiary basis for a reasonable jury to find for that party on that issue." FED. R. CIV. P. 50(a). The sufficiency of the evidence is determined by "the record as presented to the jury." Advanced Medical Optics, Inc. v. Alcon Laboratories, Inc., No. Civ. A. 03-1095-KAJ, 2005 WL 3454283, at *2 (D. Del. Dec. 16, 2005) (citing Lightning Lube, Inc. v. Witco Corp., 4 F.3d 1153, 1199 (3d Cir. 1993)). The proper analysis is "'whether the record contains the minimum quantum of evidence from which a jury might reasonably afford relief.'" Espeed, Inc. v. Brokertec USA, L.L.C., 404 F.Supp.2d 575, 578 (D. Del 2005) (quoting Keoth v. Truck Stops Corp. of America, 909 F.2d 743, 745 (3d Cir. 1990)). B. Affymetrix Did Not Produce Evidence To Prove That Illumina Directly Infringes The Patents-In-Suit.

At the close of evidence in this case, there is no legally sufficient evidence by which a reasonable jury could conclude that Illumina and/or its customers directly infringe the patents-in-suit. First, Affymetrix has not presented evidence sufficient to meet its burden to show that Illumina directly infringes the apparatus claims of the patents-in-suit.3 For Illumina's products to literally infringe the patents-in-suit, Affymetrix must show that Illumina's products include each

3

For example, Affymetrix asserts apparatus claims 2 and 9 of the '432 patent, claims 14 and 15 of the '243 patent, and claim 36 of the '365 patent.

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and every element of each asserted claim. To show that Illumina's products infringe under the doctrine of equivalents, Affymetrix must show that the difference between each claim element and a corresponding aspect of Illumina's accused product is insubstantial. This can be accomplished by showing that the accused product performs substantially the same function, in substantially the same way, to achieve substantially the same result as the element in the claimed invention. Affymetrix failed to meet its burden under either standard. For example, there is insufficient evidence to establish that Illumina's accused products contain each element of each asserted claim. Further, Affymetrix failed to prove that the accused "products" under the '716 patent--the only patent for which the doctrine of equivalents is still relevant--perform substantially the same function, in substantially the same way, to achieve substantially the same result as the elements in the claimed invention.4 Therefore, Illumina is entitled to judgment as a matter of law because its accused products do not directly infringe the patents-in-suit. Second, Affymetrix has not presented sufficient evidence to show that Illumina (or its customers) directly infringe any of the method claims of the patents-in-suit.5 Method claims can only be infringed by those who practice the patented method. Harris Corp. v. Ericsson Inc., 417
4

Though not at issue in this jury trial, to the extent the jury finds infringement of the '716 patent under the doctrine of equivalents, Illumina believes that it will be able to prove (at a later time when the Court takes up this issue) that prosecution history estoppel bars such a finding as a matter of law.

5

Affymetrix asserts the following method claims: claim 35 of the '243 patent, claim 41 of the '365 patent and claims 1 and 2 of the '531 patent. Additionally, claims 1, 5, and 9 of the '716 patent, and claims 14 and 15 of the '243 patent require use to be infringed. For example, claim 1of the '716 patent requires "[a] computer program product that identifies an unknown base in a sample nucleic acid sequence, comprising: computer code that receives a plurality of signals corresponding to probe intensities," and that "performs a comparison of said plurality of probe intensities to each other." Similarly, claim 2 of the '716 patent, on which claim 9 depends, requires "[a] computer program product that identifies an unknown base in a sample nucleic acid sequence, comprising: computer code that receives a plurality of signals corresponding to probe intensities," and that "calculates a ratio of a higher probe intensity to a lower probe intensity." Additionally, claims 14 and 15 of the '243 patent require use of the apparatus after an assay has been performed on a sample.

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F.3d 1241, 1256 (Fed. Cir. 2005) (reversing lower court's denial of motion for judgment as a matter of law of noninfringement of method of using claim when there was no evidence of direct infringement "by one who uses the system," rather than by "one who makes or sells the components of the system."). To establish liability for the asserted method and use claims, Affymetrix was required to prove that Illumina or its customers use Illumina products in an infringing manner. Affymetrix, however, did not present any evidence that shows how Illumina or its customers actually use Illumina products. Therefore, Illumina is entitled to judgment as a matter of law that it does not infringe the method or use claims asserted in this case. C. Affymetrix Did Not Produce Evidence To Prove That Illumina Indirectly Infringes The Patents-In-Suit.

At the close of the evidence in this case, no legally sufficient evidence has been introduced by which a reasonable jury could conclude Illumina indirectly infringes the patents-in-suit. As discussed above, Affymetrix offered no evidence regarding how Illumina's customers use its products, if at all.6 On this basis alone, Affymetrix failed to meet its burden to show Illumina indirectly infringes the patents-in-suit. DSU Medical Corp. v. JMS Co. LTD., 471 F.3d 1293, 1303 (Fed. Cir. 2006) ("The patentee always has the burden to show direct infringement for each instance of indirect infringement."). As a further basis to find as a matter of law that Illumina does not indirectly infringe, Affymetrix has not shown that Illumina had the required specific intent to induce infringement, or that its products are not capable of substantial infringing uses. Id. at 1306.

6

To the extent that such evidence of customer use was presented by Affymetrix's experts, Dr. Struhl and Dr. Guerra, these opinions and evidence were not disclosed in the expert reports of these experts, and thus a new trial is warranted due to the violation of Federal Rule of Civil Procedure 26(a)(2).

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1.

Affymetrix did not introduce evidence to prove that Illumina specifically intended to induce infringement of the patents-in-suit.

There is no legally sufficient evidence to prove that Illumina induced infringement of the patents-in-suit. Induced infringement, inter alia, requires evidence that the alleged infringer "knowingly induced infringement and possessed specific intent to encourage another's infringement." DSU Medical Corp., 471 F.3d at 1306. To prove liability for inducing

infringement, Affymetrix must produce evidence of Illumina's "culpable conduct, directed to encouraging another's infringement, not merely that the inducer had knowledge of the direct infringer's activities." Id. A mere description in an instruction manual of how the product is to be used is insufficient as a matter of law to support a finding of induced infringement. E-Pass Tech., Inc. v. 3COM Corp., 473 F.3d 1213, 1222-23 (Fed. Cir. 2007) (affirming summary judgment of noninfringement when plaintiff failed to introduce testimony from a single customer as to if and how they followed instructions in a manual). Affymetrix, however, has not introduced any legally sufficient evidence that Illumina acted with a specific intent to induce infringement. Indeed, Affymetrix offered no evidence that Illumina believed its products were infringing. See DSU Medical Corp., 471 F.3d at 1307 (finding no specific intent to induce infringement when there was evidence defendant did not believe it was infringing). Accordingly, Affymetrix's claim that Illumina induced infringement must fail as a matter of law. 2. Affymetrix did not introduce evidence that Illumina contributed to the infringement of the patents-in-suit.

To prove an underlying act of direct infringement Affymetrix must show, inter alia, that Illumina, offers to sell or sells within the United States . . .a component of a patented machine, manufacture, combination or composition . . . constituting a material part of the invention, knowing the same to 5

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be especially made or adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use. 35 U.S.C. § 271(c) (emphasis added). Affymetrix has not offered any evidence to meet its burden that Illumina's products are not capable of a substantial noninfringing use. Therefore, Affymetrix's claim--to the extent Affymetrix even maintains this argument at this point--that Illumina contributed to the infringement of Illumina's products must fail as a matter of law. D. Affymetrix Is Judicially Estopped From Asserting Infringement of U.S. Patent No. 6,355,432.

Affymetrix is judicially estopped from asserting infringement of the '432 patent. Specifically, Affymetrix is misapplying the Court's claim construction of "beads being coded with an encoding system" to cover Illumina's accused products and services, which runs contrary to its own admission and stipulation. Affymetrix admitted that the earliest filed patent application assigned to Affymetrix that describes "a collection of beads with an encoding system" was filed on December 6, 1990. (Ex. A (Affymetrix, Inc.'s Responses to Illumina, Inc.'s Second Set of Requests for Admission No. 63). During trial, Affymetrix stipulated that "the first disclosure in this series [of patent applications] of beads with any kind of encoding system occurred in the December 6, 1990 application." (Ex. B (3/6/07 Trial Tr.), at 356:6-8). Affymetrix's expert, Dr. Struhl, however, testified that under his application of the Court's claim construction of "beads being coded with an encoding system," U.S. Patent No. 6,646,243 ("the '243 patent") also describes "a collection of beads with an encoding system."7 The '243 patent

Dr. Struhl admitted that the '243 patent includes "beads in fixed locations that don't move." (Ex. C (3/7/07 Trial Tr.), at 721:22-722:6). Dr. Struhl further admitted that "if the beads don't move and the positions are definable positions," such beads would be "a collection of beads with an encoding system." (Id. at 720:14-17). Therefore, Dr. Struhl admits that the '243 patent describes "a collection of beads with an encoding system."

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claims priority to March 7, 1990,8 almost 9 months earlier than when Affymetrix admitted it filed the first application disclosing beads with an encoding system. Therefore, Affymetrix is rearguing the Court's claim construction in a way that is contrary to its own binding judicial admission and stipulation, and should be precluded from asserting infringement of the '432 patent. E. Affymetrix Cannot Recover Damages Prior To The Filing Of The Lawsuit Because It Failed To Comply With 35 U.S.C § 287(a).

Under 35 U.S.C. § 287(a), once a patentee sells patented articles, it is not entitled to recover damages until it marks its patented products with the relevant patent numbers or gives the alleged infringer actual notice of the alleged infringement. 35 U.S.C. § 287(a). The burden of proving compliance with § 287(a) lies with the patent owner. Maxwell v. J. Baker Inc., 86 F.3d 1098, 1111-12 ( Fed. Cir. 1996). To properly mark its products such that the patentee can recover damages prior to providing actual notice, the patentee must "consistently mark[ ] substantially all of its patented products, and . . . no longer distribut[e] unmarked products." American Med. Sys., Inc. v. Medical Eng'g Corp., 6 F.3d 1523, 1538 (Fed. Cir. 1993). To meet its marking requirements, the patent holder must place the word "patent" (or the abbreviation "pat.") and the patent number on the patented article. 35 U.S.C. § 287(a). This is especially true if the patentee includes other markings or printings on the patented article. See, e.g., Rutherford v. Trim-Tex, Inc., 803 F.Supp. 158, 163-64 (N.D. Ill 1992) (citing John L. Rie, Inc. v. Shelly Bros., Inc., 366 F.Supp. 84, 90-91 (E.D. Pa. 1973); Creative Pioneer Products Corp. v. K-Mart Corp., 1987 WL 54482, at *4 (S.D. Tex. July 10, 1987) (patentee should have marked patented article instead of packaging with patent numbers when the article was marked

8

Affymetrix alleges a conception date of the '243 patent invention as early as March 7, 1990. (Ex. D (3/5/07 Trial Tr.), at 241:6-242:12).

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with millimeter and quarter inch calibrations). When a patent contains both method and apparatus claims, the patentee is required to mark the apparatus "to the extent that there is a tangible item to mark by which notice of the asserted claims can be given. . . ." American Med. Sys., Inc., 6 F.3d at 1538-39. It is thus not sufficient to place the patent numbers on package inserts, as opposed to the packaging itself where it is feasible to mark the product itself. See e.g., Stryker Corp. v. Intermedics Orthopedics, Inc., 891 F. Supp. 751, 829-30, aff'd 96 F.3d 1409 (Fed. Cir. 1996) (insufficient marking when patentee placed patent number on product literature that was distributed to the trade, but did not mark product or packaging); Metrologic Instruments, Inc. v. PSC, Inc., 2004 WL 2851955, at * 20 (D. N.J. Dec. 13, 2004) (insufficient marking when patentee labeled packages with "See User's Guide for Patent Coverage" but only included patent numbers on package insert). In this case, Affymetrix has not established that it consistently marked any of its products, let all alone "substantially all of its patented products." Additionally, Affymetrix failed to provide sufficient evidence demonstrating that it marked the product itself, as required under applicable law. Accordingly, Affymetrix is precluded as a matter of law from recovering any damages prior to the point at which it provided Illumina with actual notice of which Illumina products allegedly infringe the patents-in-suit, which is when Affymetrix filed suit in this case.9 F. Affymetrix Failed To Prove It Is Entitled To Recover Lost Profits Damages.

Affymetrix has failed to offer evidence to establish its entitlement to lost profits. As an initial matter, Affymetrix is not entitled to lost profits because it failed to prove to any degree of

9

To provide actual notice prior to filing suit, the patent owner must provide "affirmative communication [to the alleged infringer] of a specific charge of infringement by a specific accused product or device. . . ." Gart v. Logitech, Inc., 254 F.3d 1334, 45 (Fed. Cir. 2001) (citing Amsted Ind. Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 187 (Fed. Cir. 1994)). Here Affymetrix has not introduced any evidence that it has met this standard of actual notice prior to filing suit.

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certainty the amount it would have actually netted from substitute sales. See Paper Converting Mach. Co. v. Magna Graphics, 745 F.2d 11, 23 (Fed. Cir. 1984); see also Panduit Corp. v. Stahlin Bros. Fibre Works Inc., 575 F.2d 1152, 1156 (6th Cir. 1978). Instead, its analysis hinges on the assumption that Affymetrix would have sold something in place of each accused Illumina sale, while at the same time failing to offer evidence of what Affymetrix's products are, or can be used for. Evidence regarding product substitutability is particularly important in this case, when both Affymetrix and Illumina acknowledge there is intense competition in the relevant markets. (Ex. B (3/6/2007 Trial Tr.), at 362:8-17; Ex. E (3/8/2007 Trial Tr.), at 1020:5-20; 1022:3-11). In place of legally sufficient evidence regarding product substitutability, Affymetrix relies on speculation and unsupported assumptions. In fact, Affymetrix's damages expert, Dr. Lynde, testified that he did not--and could not--determine what Affymetrix product would substitute for any Illumina product. (Ex. E (3/8/07 Trial Tr.), at 972:6-21). Without evidence of what Affymetrix's products are or can be used for, it is impossible to determine (even if Dr. Lynde had talked to customers, which he did not) the Affymetrix products, if any, that customers would consider as substitutes for the Illumina products that they purchased. Without this evidence, Affymetrix's lost profits analysis is speculative and should not be presented to the jury.10 Additionally, Affymetrix was required to prove it had capacity to exploit demand for the patented products. Panduit Corp., 575 F.2d at 1156. Dr. Fodor, Affymetrix's CEO, testified that

10 Because it does not know what Affymetrix products would substitute for each Illumina product, Affymetrix does not know at what price it would have sold its unknown product, at what volume it would have sold such unknown product, and at what profit it would have sold such product. Instead, Affymetrix just assumes that it would make exactly the same revenue as Illumina made on the sale of its accused product. Affymetrix made this assumption despite agreeing that there is substantial disparity in pricing and characteristics between Affymetrix's and Illumina's products.

9

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Affymetrix has experienced capacity constraints that have precluded it from meeting demand. Specifically, Dr. Fodor testified [w]ell, so over the years, you know, in any manufacturing process, obviously, you have fluctuations in yields. That's one thing that bears into it. Another is your overall capacity. And the years you spoke about, 2004, 2005, 2006 various issues hit the manufacturing capacities, including demands, including yields. And then as you mentioned when we initially launched the 500K product, it was a very poor product launch. And we had a lot of replacements to do, and we had a lot of issues to deal with. And there the manufacturing capacity, given the lower yields, was a major issue. (See Ex. B (3/6/07 Trial Tr.), at 370:21-371:12). This provides an additional reason that Affymetrix is not entitled to lost profits as a matter of law. G. Affymetrix Has Not Introduced Evidence To Support Its Reasonable Royalty Analysis.

Affymetrix's reasonable royalty analysis--whereby it claims it is entitled to a 12% royalty rate--is not supported by legally sufficient evidence. Affymetrix did not establish that the royalty rates in other licenses are relevant to determine the reasonable royalty in this case. For example, many of the licenses on which Affymetrix relies do not provide a benchmark for evaluating a reasonable royalty for the patents-in-suit. Moreover, many of the licenses explicitly grant rights to dozens of patents, or do not identify any patents at all, but merely provide a license to the licensee for freedom to operate. Further, in arriving at its over inflated 12% royalty rate, Affymetrix ignores the royalty rates Illumina actually pays in licenses that are more closely related to this case, such as its license with Tufts University that is at the core of the accused products. Additionally, Affymetrix offers no legitimate evidence that Illumina could sustain its profitability of the accused products while paying a 12% royalty rate under the hypothetical negotiations. Therefore, Affymetrix's claimed 12% royalty rate must be denied as a matter of law. 10

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CONCLUSION For the foregoing reasons, Illumina respectfully requests that this Court grant its Motion for Judgment of Matter of Law pursuant to Federal Rule of Civil Procedure 50(a) that Illumina and/or its customers have not directly or indirectly infringed the patents-in-suit, and that Affymetrix is not entitled to lost profits or a reasonable royalty.

Dated: March 12, 2007 /s/ Richard K. Herrmann _ Richard K. Herrmann (#405) MORRIS JAMES LLP 500 Delaware Avenue, Suite 1500 Wilmington, Delaware 19801 (302) 888 6800 [email protected] Robert G. Krupka, P.C. KIRKLAND & ELLIS LLP 777 South Figueroa Street Los Angeles, California 90017 (213) 680-8400 Mark A. Pals, P.C. Marcus E. Sernel KIRKLAND & ELLIS LLP 200 East Randolph Drive Chicago, Illinois 60601 (312) 861 2000 Attorneys for Illumina, Inc.

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EXHIBIT A

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e
AFFY~c~f~ETRIX, INC., Plaintiff, v.

IN THE UNITED STATES'DISTRICTCOURT
FOR THE DISTRICT OF DELAWARE

· ) c. A. No. 04-901 (JJF)

). ·
FLL~I~MNA, ING.,

Defendant. AF'FYMETIIIX, INC.'S RESPONSES TO ILLUMWA, ZNC.'S

SECQM): SET OF-REOETES~S ·FC)RADR;IISSXOM ~Pilffymetrix, ~'Affjrmetrix~ hereby objects and respondsto Illumi~a,;Inc.'s~ Jnc, ("Ulumina")S~sond Set ofRe~ests for Admission.
GENERAL OBJECTIONS

Affymetrix hereby incorporatesby refeieni~e applidablt:;eneral Obje~tionsset forth all

iC

in AffjrI~etrix's Responses to:'lllumina's. Interrogatories, Requests Production Documents for of
anclThings, and First·Set of Requests For Admission.
rl~:"·: ::::~
·-: i -:·

SPECIFIC

OBJEIC3TIONS

AND ~SPONSES

REOUEST

FOR ADRIISSION
r

NO; 25:

Affymetrix soldDNAarray has products prices at below variable its cost.

RESPONSE REOUEST ADMISSION 25: TO FOR NO.
Affymetrix objectsto thisrequestas overlybroadto the extentthat it is directed to

matters 5~e reasdnably that not calculated tothediscoveryadn~~ssib~i=kvidence. t~lead of
~ Affymetrjx furtherobject~ this requestasPagueand ambiguous. to Affymetrix f~irther objects to
lii· ·:

thisrequest thegrounds theterms"DNA on that array products!; "sold" "vanabldc6ot'' and are

I(I
Affymetrix v. Illumina
C.A. No 04-901 JFF

Trial

Exhibit

DX

203 ~

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vague ambiguous. and Subject these to objections thegeneral and objections outlined above,
Affymetrix denies this request.

RIEOUEST FOR ADMISSION 26: NO.

Affymetrix offered array has DNA products saleatprices for below variable its cost.
RESPONSETO REOUESTFOR ADMISSION NO. 26:

Affymetrix objects thisrequest overly to as broad theextent it is directed to that to
mattersthat are notreasonably calculated leadto the discovery admissible to of evidence.

Affymetrix fUrther objects thisrequest vagueandambiguous. to as Af~Fymetrix objects further to thisrequest thegrounds theterms"DNA on that array products" "sale"and"variable cost"are vague ambiguous. and Subject theseobjections thegeneral to and objections outlined above,
Affymetrix denies this request.

REOUEST FOR ADMISSION lalO.27:

Affymetrix offered customer or morefleeAffymetrix has a one products a saleof with
Affymetrix products.

RESPONSE TO REOI~ST FOWADMISSION NO. 27:

Affymetrix objectsto thisrequestas overlybroadto the extentthat it is directedto
matters that are not reasonablycalculatedto lead to the discoveryof admissible evidence.

PLffymetrix objects thisrequest vague ambiguous. further to as and Affymetrix fUrther objects to thisrequest thegrounds theterms"sale"and"product" vagueandambiguous. on that are Subject theseobjections thegeneral to and objections outlined above, Affymetrix denies this
request.

REOUEST FOR ADMISSION NO. 28:

Affymetrix made has saleswhere customer provided or morefreeAffymetrix a was one
products.

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aesPONSE FORAD~IIISSIDN TOREO~ST NO. 28;
A·ffymetrix objects to this request as overly broad to the extent that it is direct~c~ to
matters that are not reasonably calculated to lead to thediscovery of admissible evidence.

Affymetrix further objects thisrequest vague dmbiguous. to as and Affyinetrix~ objects ~tiut~er to
'thisrequeston the grounds the terms"Bal~and"jproduct" vagueand ambiguous. that are
Subject-tothese objectionsand the general objei;tionsoutlined above, A·ffyI~Tetri~i~ this i:-: denies
request.

REOUEST FOR-ADMI;SSIONNO. i9=

Affjne~ix ~Bsoffereda custoii~e~8 free.100K virith saleofAffymetrix ~hip· a product~. RESPONSE~ REOUESTPO~iADNL~SSION 29:.-r'O NO.

Affypletrix tothisrequest overly tothe-extent it is directed objects as b~gd that to
matters that are not reasonably calculatedto lead to the discovejofadmissibleevidence.

e

Affymetrixfurther objects to tjii8requ~stas vagt~e ambiguous. Affymetriii'further objectsto and this request on the grounds that the terms "sale" and "prod~t~l are vague and-:ambiguous~
Subject to these~objectidns and thegeneral 6bjections outlined ·at~ove;lAffynietrixdenies tl~s .
request. . .:I··

REOUEST.FOR ADMISSION NO. 30:.. .

Affymet;ix has·lost ·salesof D~i~A anay·produ~tsti~:nIuinina;

RESPONSETO I~6UEST.FOR ALDMl[s~X~o~li:;i\io. 30,-;-;

; Aff~imetn~r to thisreq-Liest object~. as-overly to theextent·that is directed b~ioad it to
matters that are not reasoi~ably calculatedto lead to the discoveryof admissible evider;ce. ' i · . Affymetrixfirrtherobjects to this request as vague and Inbiguous: AffylnetIrix ~t~urther objectsto

this request thegrounds~that "lost" ~ "lirsducr' vagueland on theterms "sald' are ambiguous.

3

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Affymetrixobjectsthis also to requestthe to extent itcalls information the that for not in

possession ofAffymetrix. tothese Subject objections general and the objections above, outlined
Affymetrix admitsthis request.

REQUESTFOR ADMISSION NO· 31: Illumina lost salesof DNAarrayproducts Affymetrix. has to

RESPONSE REOU]EST ADMXSSION 31: TO II'OR NO·

Affymetrix tothis objects request overly totheextent it isdirected as broad that to
matters arenotreasonably that calculated leadto thediscovery admissible to of evidence.

Affymetrix objectsthis further to requestvague ambiguous. as and Affymetrix objects further to this request the on grounds the "lost" and that terms "sale" "product"vague ambiguous. are and
Affymetrix objectsthis also to request theextent itcalls informationinthe to that for not

possession ofAffymetrix. tothese Subject objectionsthe and general objections above, outlined
Affymetrix responds it lacks information that the necessary toadmit deny request. or this
REQUESTFOR ADMISSION 32: lurO. Affymetrix employed has formerIlluminaemployees.

RES3PONSE REQUEST ADMISSION 32: TO FOR NO.

AEfymetrix tothisrequest overly to theextent it isdirected objects as broad that to
matters arenotreasonably that calculated leadtothediscovery admissible to of evidence.

Affymetrix objectsthis further to request the on grounds the "employees" and that term isvague
ambiguous. tothese Subject objections thegeneral and objections above, outlined Affymetrix
denies this request.

REQUEST FOR ADMISSION NO. 33:

Affymetrix a businesspartnerskip Perlegen. has with

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RESPONSE TOReOUESTFORADiWSSIONNO. 33:
Affymetrix objects· to this request as overly broad to.the exteilt that it is directed to matters that ~irenot reasonablj· calculated to lead to the discovery of admissible evidence.

Affym~tn'ir further6biectsto thisreq~iest on~the grounds the term"busirie~ss·p~ers~ip" that is vagueazidambiguous.· ·Sub~ject theseobjections the general toand o~ectiorisoutlinedabove,
Affymetrix admits this request.

REOUEST AI)MISSioN·NO. FOR 34:
Affymetrixhas anownership inte;restinPerleg~:n: ~
]RIESPONSE TO REOU]EST FOR'ADMISSION NO. 34:

·: ·

,,,

-:·· :Affymetrix objects td this request as ovei-lybroad to the exti4lt that it is directed to matters that are not reasonably calculated to·lead td:the discovery of admissible evid~e, Affymetrix: furtkie'robjects td.this r~q~est on the ground~ that the terpl·''oiynership interest" is

~I

vague and ambigubus: Subjectto thesi~obie~tiqns th~ generalobjections outlined above, and A_ffymetrix admits this request. REOUEST FOR~ AbMI[SSION.~O. 3Si

Affymet;ix collaborated has with·'Perleg~ bn-~al8slDNA of array products cuStomers, to
'RESPONSE TO REOUEST ~IF~OR ADMISSXON ·N0;1·~5:':.;.

-PI~Efy~n~trix objectsito request-as this 10verly broadto ~he;ejrtent it is.lcji~ that
·.:

to

matters that are not reasonablycalculated:to: to~t~ discovery~ admissible evidence. lead

Affymetrix ~firrthei· objectsto thisreques~ bnthe's

thL thefenns."collab~d,",''sa~i~j':'

and"D~i~A:~ prod~icfs~ vague·andambiguous.are Subi~ct:to theseobjections. the general and
objectionsouflinedabove, ~iftjrmet~-i~ admits this request. ·

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REOUEST FORADMXSSION 3~: NO. Affymetrix anownership has interest ParAllele. in

RESPONSE REOUEST ADIMSSION 36: TO FOR NO.

ABymetrix tothis objects requestoverly tothe as broad extent itisdirected that to
matters arenotreasonably that calculatedlead thediscovery admissible to to of evidence.

Affymetrix objects requestthe further tothis on grounds the "ownershiF, is that term interest"
vague ambiguous. tothese and Subject objectionsthegeneral and objections above, outlined
Affymetrix admits this request.

REOUESTFOIR ADMISSION 37: NO.

Affymetrix collaborated ParAllele sales DNA products customers. has with on of array to
NNO RESPONSE REOUEST ADMISSIO TO FOXI 37

Affymetrix tothis objects request overly totheextent itisdirected as broad that to
matters arenotreasonably that calculated leadtothediscovery admissible to of evidence.

Affymetrix objectsthis further to request the on grounds the ''collaborated," that terms "sales,"
and "DNA products" vague ambiguous. tothese array are and Subject objections thegeneral and
objections outlined above, Affymetrix denies request. this
REOUESTFOR ADMISSION 38: NO.

to obtain license certain a to Axon Patents Axon and obtained license theAffymetrix a to
ScannerPatentRightsas definedin the PatentI~icense Agreement.

Affymetrix into Patent entered a T~icense Agreement about 8,2004 Axon onor Apnl with

RESPONSE REOUEST ADMISSION 38: TO FOR NO.

AffLmetrix tothis objects request overly totheextent it isdirected as broad that to
matters arenotreasonably that calculated leadto thediscovery admissible to of evidence.

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e::

Subjectto theseobjections the generalobjections and outlinedabove,Affymetrix admitsthis
request.

REOUEST FOR ADMISSION NO,:39.:

Affymetrix's Contract·~ith·Axori Axon'sab~to limits RESSC)NSE TOREOITESrjr FORADMISSI~NMO.391

do·business with·nIumina;

Affym;:trixobj~ects this` to reque~t~s~overly b;ioadto the extent that it is directedto matters that are not reasonably calculatedto lead to the discovery:ofadmissibleevidence.·,. ~ :

Affymetri?r furtherobjctsto thisrequeston the gr'o~nds;thathe terms"ability"and"business!'· · are vagueand ambiguous.Si~bject theseobjections the general·objections to and outlinedabove,
Affymetrix responds that it lacks the infoimation nei;essary·to admit or deny this request.

REOUEST ADMISSION 40:. FOR NO.

A~coteredinta anAgreemenf DnoraboutJune29.2~02 wimGenelogicto

~I

obtairi a ~,~n;ex~cl~·ls~ve·liFense to certain t~lhnologyrelating to invariantgene expressionas
defined in that Agreement,

RESPONSE TO REOUEST ]FOR ADMISSION NO, 40: Affjrme~ix objects to.this request as overly broad to the extent that it is directed to

matters arenotreasonably that calculatedlead thediscovery adnii~sible to to of kvidence.
··

Affymetrix further objects thi$ to request on'the grounds theterm that "relating"vague : is and
ambiguous.Subject.to theseobjections the genal-bbjections,o~it!ined and _above, PFffym'etrlx'·
admits' this, reque~e~ti i

REOZiESTFOR'ADMISSioNNO.:41: ~btrix(s
Illumina.

contractwithGeneLogiclimitsGeneLogic's abilityto:·do business with

I

:

,

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RESPONSETO REOV]EST FOR ADMISSION 41: NO.

Affymetrix objects thisrequest overly to as broad theextent it is directed to that to
mattersthat arenot reasonably calculated leadto the discovery admissible to of eviderice.

Affymetrix further objects thisrequest thegrounds theterms to on that "ability" "business" and arevagueandambiguous. Subject theseobjections thegeneral to and objections outlined above, Affymetrix responds it lacks information that the necessary admit denythisrequest. to or
- REOUEST FOR ADMISSION NO. 42:

An Affymehrix employee attempled accessIllumina's has to confidential ecommerce
website without divulgingthat he/she was an Affymetrixemployee. R3ESPONSE ]REOUESTFOR ADMISSION NO. 42: TO

Affymetrix objectS thisrequestas overlybroadto the extentthat it is directed to to
matters that are not reasonablycalculatedto lead to the discoveryof admissible evidence.

Affymetrix further objectsto thisrequeston the grounds the terms"attempted," that "access," and "divulging" vagueand ambiguous.Subject theseobjections the general are to and
objections outlinedabove,Affymetrix denies this request.
REQUEST FOR ADMISSION NO. 43:

Non-lawyers Affymetrix at havepossessed and/orpossessconfidential Illumina
information.

RESPONSE TO REOUEST FOR ADMISSION NO. 43:

Affymetrix objectsto thisrequestas overlybroadto the extentthat it is directed to
matters that are not reasonablycalculatedto lead to the discoveryof admissible evidence.

Affymetrix furtherobjectsto thisrequeston the grounds the terms"information" that and "possess,"arevagueandambiguous.Subjectto theseobjections the generalobjections and
outlined above, Affymetrix denies this request.

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e

REOUEST FOR ADMISSION NO. 44:
Affymetrixhas maintainedan "Illumina·gf~Lt·roomi'l

R~ESPONSE REOUESTFOR ADMISSION 44: TO NO.

Affyazetrix objects thisrequest overlybroad theextent ~ is dire~-ted~to to as to that
matters that are not reasonably calculatedto lead to the'discoveryof admissibleeiide~e.

Affymetrix fUrther objectsto this·request the grounds ~the' "maintained'! vagueand on tha~ term. is

ambiguous. Subject theseob3'ectionsana general to the obj~
denies thisrequest.

ohtlined above, A_ffymetrix

REO`I~ST FOR ADMISSION NO. 45:

Affymetrix informed or morecustomers ILlumina~:I~roducts has one that willbe
technicglly obsolete.

IiESPONSE REOUEST ADMISSION 45: TO FOR NO.

·;

--i·. -A~Fyi~etrix objects to this.i-equest as:overly·broadtothe extent that it is ~directed to
matters that are not reasonably calculated to lead to the discovery of admissible evidence,

Affymetdx objects request ~ further tothis on the

~~.~~edl"

"custo~ji'

'Iproducts"and "obsolete" are vague and ambiguous. Subjectto these objectionsandthe general

objections outlined above, ~Affymetrix deni~s-this request.
:·· ·_·-i.: --

]REOUEST FOR ADMISSION NO. 46:

Af~fy~etriir informed ormorecustomers Illuminalwill going has one that bk qut.ofbusiness.: :·.sj·i

li~saolVs~t~ REOUESTFOR ADMISSION TO N0..146:i· _::]·:- 1-:· -:··~ · ·
Affymetrix obj~~o this ~uest as ove~ly·broad tS,,theextent'hat it.iS:dii~ectea to

matters are reasonably that not calculated tothe toleah discovery ofadmissible evidence:
Affymetrix fUrther objects to this request onthe grounds that the terms "informed," "customers,"

9

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"products""going ofbusiness"vague ambiguous. tothese and out are and Subject objections
andthegeneral objections outlined above, Affymetrix denies request. this
REQUESTFOR ADMISSION NO. 47:

Affymetrix sought has patent claims theintent covering with of Illumina's products.
RESPONSE REOUEST TO FOR ADMISSION 47: NO.

Affymetrix tothisrequest overly totheextent it is directed objects as broad that to
mattersthat ate notreasonably calculated leadto the discovery admissible to of evidence.

Affymetrix objects thisrequest thegrounds theterms further to on that "intent," "products" and arevague ambiguous. and Subject these to objections thegeneral and objections outlined above,
Affymetrix denies this request.

REOUEST FOR ADMISSION NO. 48:

Stephen was that Fodor aware researchersEngelhardt ofMolecular atthe Institute
Biology useda computer compare had to hybridization intensities makebasecallsno later and
than January 1992.

~RESPONSE REOUESTFOR ADMISSION 48: TO NO.

Affymetrix objects~to request overly this as broad theextent it is directed to that to
mattersthat arenot reasonably calculated leadto the discovery admissible to of evidence.

Aifymetrix objects thisrequest thegrounds theterms further to on that "used," "computer,"
"aware," "compare hybridization; intensities" "basecalls" vagueanda~nbiguous. and are Subject to theseobjections thegeneral and objections outlined above, Affymetrix denies request. this

REOUEST AUMTSSXON49: FOR NO:
Robert Lipshutz aware researdlers the]Engelhardt was that at Institute Molecular of Biology useda computer compare had to hybridization intensities makebasecallsno later and
than January 1992.

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RESPONSE FOR TO ~EOZ~ST AD~ISSION NO. 49:
Affymetrix objects to this request as overly broad to the extent that it is directed to matters that are not reasonably' calculated to lead to the discovery of admissible evidende.

Affymetrlx furtirer-objects request thegrouhds theterms to this on that "used,'i "computer,"
"aware," "comparehybridiiation intensities" and "base calls" are vague and ambiguous. Subject· .
to these objections and the-general objections outlined above, Affymetri~ denies this request;

REOUEST FOR ADMISSICiNNO. 50:

Stephen Fodorwas thatresearcherstheEngelhardt aware at Institute Molecul~is of
Biology had used a computerto comparehyliridizationintensitie;iand make base'calls no later
than October 1992.

RESPONSE REOUEST ADMISSION 50: TO E`OR NO.
Affymetrix objectsto thisrequestas overlybroadto the extentthat it is directed · to

matters arenotwasonably that calculated leadto thediscovery admissible to of evidence.
Affymetrix further objects to this re~quest the groundsthat the~tenns on "used;" "computer,"
"aware," "compare hybridization~intensities" and "base calls" are vague and ambiguous. Subject

to theseobjections tht:general and objections outlintdabove,Affymetrix deniesthisreque~.

REOUEST ADMISSION 5i: FOR NO.
~obert Lipshutzw~:aware that resedrchersat:the En~;elhardt~llnstitute' ofMoiecular
Biology had used a computer to compare hybn'.dization intensities and make base calls no later
than October 1992.

RES~O·NSE.Tii REOUESTi~OR ADR)IIS8IOP~i NO.51:
AffLmetrix objects t~tl~isi~que'st~as overly brdad to the ~tent: that it is directed to

matters that are not reasonablycalculatedto lead to the discoveryof i~riissible evidence.
Affymetirix fUrther objects to this req~iest~onthe ~oui~ds that theerms "us'ed,"'%omputer,"

i_-

11

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" "compare hybridization intensities""base are and and calls" vague ambiguous. Subject

tothese ections the obj and general objections above, outlined Affymetrix this denies request.
REOUESTFOR ADMISSION NO. 52:

Useof a barcodewitha biological sample known oneof ordinary intheart was by skill
as of 1993.

RESPONSE REOUEST TO FORADMISSION 52: NO.

Affymetrix tothis objects request overly totheextent itisdirected as broad that to
matters arenotreasonably that calculated leadtothediscovery admissible to of evidence.

Affymetrix objects this further to request the~ounds the on that terms "one ordinary "use," of
skillin theart"and"biological sample," vague ambiguous. are and Affymetrix further objects to

thisrequest thegrounds it requestsresponse a conclusionlawandisanattempt on that a to of to

obtain premature discovery. tothese expert Subject objections thegeneral and objections
outlined above, Affymetrix denies this request.

3REQUEST ADMISSION 53: FOR NO.

One ordinary intheartcould of skill construct density high microarraysnucleic of acids
as of 1993.

RESIPONSE REOUIEST TO FOR ADMISSION 54: NO.

Affymetrix tothisrequest overly totheextent it is directed objects as broad that to
matters arenotreasonably that calculated leadto thediscovery admissible to of evidence.

hffymetrix objects this further to request thegrounds the on that terms ofordinary in "one skill
the art"and"construct," "highdensity" vague ambiguous. and are and Affymetrix izurther

objects this to request thegrounds itrequests on that aresponsea conclusion and an to oflaw is attempt obtain to premature discovery. tothese expert Subject objections thegeneral and
objectionsoutlined above,Affymetrix admitsthisrequest.

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REouEsTFoRaDMIssIoNN0.54:
Affymetrixcould constructhighdensity microarra~sof nucleic acids as of 1993.
RESPONSE TO REOETEST FOR ADMISSION NO. 54:

Affymetrixobjects to this ~equestas overly broad td tbleextent that it`is ~direi~ted to

mattersthat arenot reasonably calcuiatled leadto dakdis~overy admissible to of evidence. Affymetn~jr further ·objects thisrequestoh the groutids the teim's to that "constnrct," '~gh and:
density" are vague and ambiguous; Subjectto these objections and the generalobjections
outIiried above, Affyinetrixadmits this request.

REOUEST FOR ADMISSION M0..55:

stephen Fodor knowledge "sequei~cing.chip'' beads·with had oftlie (encodkd nucleic
acids on a surface) idea of DFs.Radomir Crkvenjakovand Radoje Dyamanacprior to December
1990.

'C

RESPONSETO RECjTi~ST FOR ~ADMZSSIO~T 55: NO,

Affymetriir o'ojt~ctst'his to ~i~quest~ire~ly to theexteilt it is directed as broad t~~t to matters thd:~re reasonably not calcul~ted leadto`the' to discovery admissibl~ of evidence. Affj~metrix fUrthei'object~ reqGest' thegrbund$ th~terms to.this on that "knowledge,"
"sequencing· cbiI," 'Senco~eh beads,""on a surfa~'"and "i4~d~ ari:va~gue ~abiguous. and Subjectto th~seobjections the generalobjections and outlinedabove, Affymetrix deniesthis
requeSt.

REOUEST ~ADMISSIONNO. FOR 5~:.

stephen hadImow~dge "seq~ie~i~c~n~chip'' with Fodor dfthe (encodedlie8dsnucleid
acidson a surfaci~ ofDrs,:Radom'ir idea Crkvenja~ov RadjoeDramanac nd priorto March
.1990.

.i

Y

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RESPONSE REOVEST TO FORADMISSION 56: NO.

Affymetrix ectstothisrequest overl~ to theextent it isdirected obj as broad that to
matters arenotreasonably·calculated to thediscovery admissible that to lead of evidence.

Affymetrix obj tothisrequest thegrounds theterms fUrther ects on that "knowledge," "sequencing "encoded chip," beads," a surface," "idea" vague ambiguous. "on and are and Subject these to objections thegeneral and objections outlined above, Af~ymetrix this denies
request.

REOUEST FOR ADMISSION NO. 57: The Rava '531 patent claims an "array of arrays" concept.

RESPONSE REOUESTFOR ADMISSION 57: TO NO.

Affymetrix objects thisrequest overly to as broadto theextent it is directed that to
mattersthat arenot reasonably calculated leadto the discovery admissible to of evidence.

A'ffymetrix fUrther objects thisrequest thegrounds the~erms to on that "arrayorarrays" and "concept" vagueandambiguous. are Affj·metrix fUrfher objects thisrequest the~rounds to on
thatit requestsa response a conclusion lawandis an attemptto obtainpremature to of expert

discovery. Subject theseobjections thegeneral to and objections outlined above, Affymetrix
denies this request.

REOUES~ FOR ADMISSION NO. 58:
The Rava '531 patent describes an "array of arrays" concept.

RESPONSE TO ]REOUESTFOR ADMISSIONNO. 58:

Affymekixobjectsto this requestas overly broadto the extentthat it is directed to
matters that are not reasonablycalculatedto lead to the discovery of admissibleevidence.

Affymelrix ii~ther objects thisrequest thegrounds theterms"array arrays" to on that or and

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''concept" are vague and arhbiguous. Affyrhetrixfurther objects tothis request on the grounds
that it requests a response to a conclusion of law and is an attempt to obtain premature expert

discovery.Subject theseobjections the general to and objections outlinedabdve,Affyliiktrix
denies this request.

REOUESTFOR ADMISSION 59: NO.
Aff~ymetrixhas paid Oxford Gene Technology (OGT) over $90 million for rights to use OGT's intelli~ctualproperty.

R1ESPONSE REOUEST ADMTSSION 59: TO FdR NO.
A~ffyme·trix objectsto thisrequest'~i~ ~verlybroad the extent~that·;itdirec~dto to is
matters that are not reasonably calculated to lead to the discovery of admissible evidence.

Affymetrix further objects to this request on the grouridsthat·tE~e term "~isd' i;iirague~ind:

ambiguous,'and AEFymetrix otherrights obtained besides right "useOGT's: the to intellectual
property." Subject to these objectionsand the generalobjectionsoutlined above,AffLmetrix
admits this request.
REOTTEST FOR ADMISSION NO. 60:

Neither Affyme~ijr nor any Affymetrix employee was the first person or entity to invent ~
DNA- arnijrs,

RESPONSETO REOUESTFOR ADMISSION 60: NO.
pffymetrix: obje~ts to this request as overly broad to.tkie extent th~t:it is directed to ·
.::::?: ·

matt~is-t~-iat~l~i~otre~iji~~.blycalcu!ate'd;t~ the·~iseover;l admiss~jle: leadto of evidence;

Affymetrix objects thisrequest thegrounds theterms fUrther to on that "invt~nt" "DNA ai~d
·arrays" vagueandambiguous. are Affymetrix fUrther objects tothisrequest thegrounds on that it requests response a conclusion a to oflaw~andan attempt obtain is to premature:expert

I

:

,5

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discovery. tothese Subject objections thegeneral and objections outlined Affymetrix above,
denies this request.

REQUESTFOR ADMISSION NO, 61:

Stephen attended Human Fodor the GenomeConferenceSanDiego October II in in
1990.

RESPONSE REOUEST TO FORNIMISSION 61: NO.

Affymetrix tothisrequest overly totheextent it is directed objects as broad that to
mattersthat arenot reasonably calculated leadto the discovery admissible to of evidence.

Subj tothis ect objection thegeneral and objections outlined Affymetrix this above, admits
request.

REQUESTFOR ADMISSION NO. 62:

Stephen attendedpresentationRadomir Fodor a by Crkvenlakov RadojDrmanac and/or e
at the Human Genome 1l Conference.

RESPONSETO REQUESTFOR ADMISSION O 62 NO. 62:

Rffymetrix objects thisrequest overly to as broad theextent it is directed to that to

matters arenotreasonably that calculatedlead thediscovery admissible to to of evidence. Subj tothisobjection thegeneral ections ect and obj outlined above, Affymetrix this admits
request.

REOUEST FOR ADMISSION NO. 63:

United States Patent Application 07/624,114, December 1990, theearliest No. filed 6, is
or filedpatentapplication ~assigned Affymetrix Affymaxthat describesa collectionof beads to
with an encoding system.

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RESPDNSEFOR IOREOUEST m: ~U~C(SIONNO:
Affymetrix objects thisrequest overly to as broad theextent it is directed to that to
matters that are not reasonably calculated to lead to the discovery of admissible evidence.

Affymetri~~:-fi~-ther objects ti, this ~eq~iest oi·ltf;egroundsthat the terms "describes"End

"collection" "encoding and system" vagueand are ambiguous. Affymetrix fuicher objects thisto request on.the grounds it requests response a conclusion lawandis anattempt that a to of to
obtainpremature. expertdiscovery:Subjectto theseobjections the generalobjections and
outlined above, A~E~fymetrix admits this request.
REOUEST FOR ADMUSSION NO. 64:

Affymetrix had knowledge oftlhited~ingdom

Patent Application GB 2129551A

("Moctiida")no·later tf~anJanuary i, 2002.

RESPONSE REOUEST ADMISSION ~4: TO FOR NO.

~:

Xffj~mefrix:·obj~~ ti~isjrequ;es~ to -as:·o~i;i~rly b~i~;to the extentthat it is dir~ctedto

mattersthat arenot ~k~isdnatj~:t~le~id
;u

t~ the:discairery admissible evideace. of
;I :
~ ":"

Affymetrix furtherobjects` tS11S to ~4ue~P tlie.i~i;i~i~~:that term"lolowledge" vagueand ~tn the is

ambiguous. Subject theseobj:e'cfibn8~~irid·tS1~ to general 4bSections outlined above, A·ffymetrix
d~ies this request.
.~ . .: ..

'I:i.·

'; - . ·

,··;.··. :.

REOUEST ADMISSION651 : ... FOR NO;. -. ;~l.;-i.~
Affy;netrix Itnowledge Intemational had of PatentApplication 93/171i6.]iijri~ WO· to::':~.l
January 1, 1996, RESPONSE TO REOUEST ]FOR ASMISSION NO. 65:

Affymetrix objects to this request as overly broad to the.extent that it~s:clir~i~ed::~;;:-':· :i::;

mattersthat are not reasonably calculated leadto the discovery admissible to of evidence.

Affymetrix objects thisrequest thegrounds theterm. fUrther to on that "knowledge".isvague and

~1

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ambiguous. tothese Subject objections thegeneral and objections outlined Affymetrix above,
admits this request.

REOUESTFOR ~ADMTSSION 66: NO.

Stephen had Fodor knowledge ofinternational Application 93/17126 to Patent MO prior
January 1, 1996.

RESPONSE REOUEST TO FOli ADMISSXON 66: NO.

Affymetrix tothisrequest overly totheextent it is directed objects as broad that to
mattersthat are not reasonably calculated leadto the discovery admissible to of evidence.

Affymetrix objects this further to request thegrounds theterm on that "knowledge" and isvague
ambiguous. Subject these to objections thegeneral and objections outlined above, Affymetrix
denies this request.

MORRIS, 1IILCHOL~ AR~S~-Tt~W~A;3LLLLP
Jack B.YBluIpBnfel/$/(#lO14) Maryellen rSoreika (#3208)
Melissa Stone Myers (#3985) Derek J. Fahnestock (#4705)
1201 N. Market
P.O. OF COUNSEL: Box 1347

Street

Wilmington, DE 19899
(302) 658-9200

MichaelMalecek J.
Daniel Andrea R. Reed L. Gross

AttorneysPlaintiff for Affymetrix, Inc.

George C. Yu
AFFYMETRU(, INC.

6550 Vallejo Street, Suite 100
Emeryville, CA 94608 (510) 428-8 500 I;ebmary 3, 2006
505076

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CERTIFICATE

OF SERVICE

The undersigneci herebycertifiesthat copies Affymetrix, ~of Inc.'sResponses Illumina, To
Inc.'s Second Set Of Requests For Admission were caused to be served this 3rd day of February, 2006 ui~on the folloiving in the manner indicated:

BY HAND Richard

DEILIVERY

K. Hemnann

Mary B. Matterer

Morris, James, ~E[itc~iens &·Williams LI~P

222 Delaware Avenue, 10" Floor
Wilmin~gton, DE 19801
BY FEDERc~U, EXPRESS

Marcus: E. Se;nel
Kirkland & Ellis LLP

200 East Raridolph Drive Chicago, IL 60601

J. F~t~inesrbck (#4705)

Q.

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EXHIBIT B

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EXHIBIT C

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EXHIBIT D

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EXHIBIT E

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EXHIBIT F

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Not Reported in F.Supp.2d Not Reported in F.Supp.2d, 2005 WL 3454283 (D.Del.) (Cite as: Not Reported in F.Supp.2d)

Briefs and Other Related Documents Advanced Medical Optics, Inc. v. Alcon Laboratories, Inc.D.Del.,2005.Only the Westlaw citation is currently available. United States District Court,D. Delaware. ADVANCED MEDICAL OPTICS, INC., a Delaware corporation, Plaintiff, v. ALCON LABORATORIES, INC., a Delaware corporation, and Alcon Manufacturing, Ltd, a Texas Limited Partnership, Defendants. No. Civ.A. 03-1095-KAJ. Dec. 16, 2005. Richard L. Horwitz, David E. Moore, Potter Anderson & Corroon LLP, Wilmington, Delaware, for Plaintiff, A. James Isbester, Gillian W. Thackray, Isbester & Associates, Berkeley, California, of Counsel. Josy W. Ingersoll, Melanie K. Sharp, Young Conaway Stargatt & Taylor, LLP, Wilmington, Delaware, for Defendants, Robert G. Krupka, Kirkland & Ellis LLP, Los Angeles, California, Linda S. Resh, Kirkland & Ellis LLP, Chicago, Illinois, of Counsel. MEMORANDUM OPINION JORDAN, J. I. INTRODUCTION *1 American Medical Optics, Inc. ("AMO") brought this patent infringement suit against Alcon Laboratories, Inc. and Alcon Manufacturing Ltd. (collectively, "Alcon"). After a two week trial, the jury found that Alcon had willfully infringed two of AMO's patents, U.S. Patent Nos. 5,700,240 (issued Dec. 23, 1997) (the " '240 patent") and 6,059,765 (issued May 9, 2000) (the " '765 patent") and that neither of the patents were invalid. Before me now are several post-trial motions brought by Alcon seeking: (1) Judgment as a Matter of Law of Noninfringement of the Asserted Claims of the '240 Patent or in the Alternative, a New Trial (Docket Item ["D.I."] 337); (2) Judgment

as a Matter of Law of Obviousness of the Asserted Claims of the '240 Patent or in the Alternative, a New Trial (D.I.339); (3) New Trial Based on the Exclusion of a Rebuttal Witness (D.I.343); (4) Judgment as a Matter of Law of Noninfringement of the Asserted Claims of the '765 Patent or in the Alternative, a New Trial (D.I.341); (5) Judgment as a Matter of Law Regarding the Jury's Willfulness Finding or in the Alternative, a New Trial (D.I.335); and (6) Judgment as a Matter of Law on Damages or in the Alternative, a New Trial (D.I.334). Also before me are AMO's Motions for Attorney Fees and Enhanced Damages (D.I.312) and for a Permanent Injunction (D.I.310), and Alcon's Motion for a Stay of Injunction pending appeal (D.I.316). For the reasons set forth herein, I will deny all of Alcon's motions for judgment as a matter of law and a new trial, I will grant AMO's motions for enhanced damages, attorneys' fees, and a permanent injunction, and I will grant Alcon's motion for a stay of injunction pending appeal. II. BACKGROUND *1 The background of this case has been set forth in a prior opinion, and will not be set forth in detail here. See Advanced Med. Optics, Inc. v. Alcon Inc., 361 F.Supp.2d 370, 373-75 (D.Del.2005) (claim construction opinion). *1 Both patents cover apparatuses and methods related to the surgical removal of cataracts using phacoemulsification. "The '240 patent discloses a method and apparatus for varying the ultrasonic power delivered to the surgical handpiece during a phacoemulsification procedure." Id. at 375 (citing the '240 patent). The feature claimed by the '240 patent was referred to at trial as "occlusion mode." (See, e.g., Trial Transcript ["Tr."] at C-205:2-5.) "The '765 patent relates to a fluid management apparatus [and a] ... method for reducing expandable gas in ... a fluid management system." Advanced Med. Optics, 361 F.Supp.2d at 375 (citing the '765 patent). *1 The parties tried the issues of infringement and invalidity to a jury in a two week trial. At the end of the trial, the jury returned a verdict finding that the ac-

© 2007 Thomson/West. No Claim to Orig. U.S. Govt. Works.

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cused Alcon AdvanTec Legacy and Infiniti devices infringed claims 5 and 6 of the '240 patent, that Alcon had induced infringement of claims 1 and 3 of the '240 patent, and that Alcon had contributed to infringement of claims 5 and 6 of the '240 patent by selling consumables used as part of the Infiniti device. (Tr. at J-8:8-18.) The jury also found that the Infiniti infringed claim 13 of the '765 patent, that Alcon induced infringement of claim 19 of the '765 patent, and that Alcon had contributed to infringement of claim 19 by selling the Infiniti and associated consumables. (Tr. at J-8:19-9:2.) The jury found that the infringement of both patents was willful. (Tr. at J9:22-25.) Finally, the jury found that none of the asserted claims were invalid. (Tr. at J-9:3-12.) The jury awarded lost profits and reasonable royalties for the infringement of the '240 patent and reasonable royalties for the infringement of the '765 patent. (Tr. at J9:13-21.) III. STANDARD OF REVIEW *2 Judgment as a matter of law should be granted when "there is no legally sufficient evidentiary basis for a reasonable jury to find for [the prevailing] party." Fed.R.Civ.P. 50(a). The review of the sufficiency of the evidence must take the record as presented to the jury. Lightning Lube, Inc. v. Witco Corp., 4 F.3d 1153, 1199 (3d Cir.1993). The proper question is "whether there is evidence upon which a reasonable jury could properly have found its verdict." Johnson v. Campbell, 332 F.3d 199, 204 (3d Cir.2003) (quoting Gomez v. Allegheny Health Servs., Inc., 71 F.3d 1079, 1083 (3d Cir.1995)). *2 "A new trial may be granted to all or any of the parties and on all or part of the issues in an action in which there has been a trial by jury, for any of the reasons for which new trials have heretofore been granted in actions at law in the courts of the United States." Fed.R.Civ.P. 59(a). The court may order a new trial "where there is insufficient evidence to support the verdict or where the verdict is against the weight of the evidence." Greenleaf v. Garlock, Inc., 174 F.3d 352, 365 (3d Cir.1999). The court may also order a new trial if a party has been prejudiced by the improper exclusion of evidence. Meyers v. Pennypack Woods Home Ownership Ass'n, 559 F.2d

894, 904-05 (3d Cir.1977). IV. DISCUSSION A. '240 Patent Infringement *2 The jury concluded that Alcon's AdvanTec Legacy and Infiniti phacoemulsification devices infringed claims 1, 3, 5, and 6 of the '240 patent. Alcon asks for judgment as a matter of law that these claims were not infringed, or alternatively, for a new trial. Because the weight of the evidence before the jury supported its conclusion that Alcon's devices infringe, I will deny Alcon's motion. *2 Alcon first argues that the verdict cannot stand because it is based on expert testimony that failed to apply the correct legal standard for patent infringement. (D.I. 338 at 11-13.) According to Alcon, the infringement analysis by AMO's expert, Harold Walbrink, ignored my construction of the '240 claims. (Id.) Alcon argues that Walbrink was required to explain the claim construction language and to testify explicitly in terms of that language. But, while that may be the better method, Alcon points to no case requiring that structural formality. Walbrink's testimony shows that he used the claim construction in his analysis of the '240 patent. (Tr. at C-148:11-13, 150:23-25.) Thus, his expert opinion was based on the claims as construed, and that opinion, coupled with the construed claims given to the jury and the facts presented concerning the accused devices, was more than sufficient to support a finding of infringement based on the correct legal standard. *2 Alcon next argues that AMO has presented no evidence that any doctor ever used the accused occlusion mode feature on the Alcon devices. (D.I. 338 at 14-20.) As a result, according to Alcon, the jury's conclusions of indirect infringement of method claims 1 and 3 (id. at 14-17) and direct infringement as well as contributory infringement of apparatus claims 5 and 6 (id. at 17-20) are not supported by any evidence. Alcon's main argument on this point is that AMO's direct evidence (see Plaintiff's Trial Exhibit ["PTX"] 278; Tr. at E-6:3-21, E-7:13-22, E-10:6-9) shows doctors using pu