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

- J Case 1:04-cv-00901-JJF Document 411 Filed 03/08/2007 Page 1 of 4
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
)
AFFYMETRIX, INC., a Delaware corporation, )
)
Plaintiff/Counter-Defendant, )
)
v. ) Civil Action No.: 04-901 JJF
)
ILLUMINA, INC., a Delaware corporation, )
)
Defendant/Counter-Plaintiff. )
)
ILLUMINA'S MOTION FOR
JUDGMENT AS A MATTER OF LAW PURSUANT TO RULE 50Qa)
Richard K. Herrmann #405
MORRIS JAMES LLP
500 Delaware Avenue, Suite 1500
Wilmington, DE 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 8, 2007 Attorneys for Illumina, Inc.

· ' Case 1 :04-cv-00901-JJF Document 411 Filed 03/08/2007 Page 2 of 4
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.
At the conclusion of Affymetrix's case in chief, no reasonable jury could find that
Illumina infringed any of the asserted claims of the patents-in-suit, or that if it did Affymetrix is
entitled to any lost profits or the 12% royalty it seeks.
Specifically, Affymetrix failed to present sufficient evidence to show that Illumina's
products infringe any of the asserted claims of the patents-in-suit, or that 111umina’s customers
use Illumina products in an infringing manner. Additionally, Affymetrix did not meet its burden
to prove Illumina acted with a specific intent to induce infringement. Further, Affymetrix did
not present any evidence to establish that Illumina's products do not have a substantial
noninfringing use.
Accordingly, there is not a legally sufficient basis for the jury to find Illumina has
infringed, directly or indirectly, any of the patents-in—suit. Therefore, Illumina respectfully
requests that the Court enter judgment as a matter of law on these claims pursuant to Federal
Rule of Civil Procedure 50(a).
In addition, even if this Court were to conclude that Affymetrix had made a prima facie
case sufficient to proceed at this juncture, Affymetrix has failed to prove its entitlement to any
lost profits including, inter alia, because it has failed to identify any sales it would have made
but for infringement by Illumina, or that it had sufficient capacity to make any such sales, or that
an award of lost profits would not be speculative. Accordingly, Affymetrix had failed to make a
prima facie case for lost profits and that issue should not 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, failed to establish that its proposed 12% royalty rate is reasonable under the
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· ` Case 1 :04-cv-00901-JJF Document 411 Filed 03/08/2007 Page 3 of 4
Georgia Pacyic factors and other controlling law, or that the royalty base it proposes is the
correct base against which a reasonable royalty should be assessed. In addition, Affymetrix has
failed to prove compliance with the requirements of 35 U.S.C. § 287(a).
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., N0. 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 Keith v. Truck Stops
Corp. ofAmerica, 909 F.2d 743, 745 (3d Cir. 1990)).
For the foregoing reasons, Illumina respectfully requests that this Court grant its Motion
for Judgment of Matter of Law regarding Affymetrix's claims of infringement and damages
pursuant to Federal Rule of Civil Procedure 50(b).
Dated: March 8, 2007

Richard K. Herrmann #405
MORRIS JAMES LLP
500 Delaware Avenue, Suite 1500
Wilmington, DE 19801
302.888.6800
[email protected]
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· ‘ ' Case 1 :04-cv-00901-JJF Document 411 Filed 03/08/2007 Page 4 of 4
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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