Free Letter - District Court of Delaware - Delaware

Case 1:04-cv-00901-JJF Document 375 Filed 02/19/2007 Paget of2
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OI`I`1Sj3HI€S LLP
Richard K. Herrmann
$02888.6816
rherrmann@morrisjamescom
February 19, 2007
VIA ELECTRONIC FILING
AND HAND DELIVERY
The Honorable Joseph J. Farnan, Jr.
USDC for the District of Delaware
844 King Street
Wilmington, DE 19801
Re: Ajjjrmetrbc, Inc. v. Illumina, Inc., D. Del., C.A. N0. 04-901-JJF
Your Honor:
This letter addresses the continuing dispute between the parties regarding the
number of patents and claims in the case. Your Honor provided the following guidance during
the February 8, 2007 pretrial conference:
Now, I don't think you ought to be limited, as the defendant
suggests, to one claim per each of the five patents, but there's
going to have to be some reduction from the 22. I'll give you the
first chance at doing that, and then if it can't be pared down by the
plaintiff, then I'll listen to both sides and I'll reduce it to a number
per patent. Not all patents will be equal if I have to do it, because
my view is that there is a difference. An assertion of multiple
claims under one or two of the patents is more appropriate than
maybe under another patent. But I'll reserve my judgment on it
unless I have to exercise it.
One full week after the pretrial conference, Affymetrix finally responded to the COUITIS direction,
persisting in keeping all 5 patents and now 13 claims in the case. Among the 13 remaining
claims, 9 of them are based on different independent claims (i.e. they are themselves independent
claims, or they depend from independent claims that are not asserted). Moreover, and most
concerning to Illumina, is that Affymetrix persists in asseiting a claim (claim 53 of the '243
patent) that it only identified as being asserted a month ajier the close of fact discovery such that
no fact discovery was taken with respect to this claim, and full expert discovery was not
conducted as well. No matter what else is decided, it goes without saying that Illumina will be
severely prejudiced if Affymetrix is permitted to assert claim 53 at trial. (See D.I. 237]).
l While Illumina initially raised the issue of Affymetrix’s new claims back when they were
first asserted after the close of fact discovery, and again raised this issue in the joint pretrial order
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Case 1:04-cv-00901-JJF Document 375 Filed 02/19/2007 Page 2 of 2
Morrisjamesrrp
The Honorable Joseph J. Faman, Jr.
February 19, 2007
Page 2
ln response to Affyrnetrix's proposal, lllumina offered on February 15 what it
believed to be a reasonable counterproposal. lllumina suggested that Affymetrix choose as many
as 9 representative claims with the following two restrictions: (1) newly—asserted claim 53 could
not be included, and (2) no more than one independent claim could be chosen for each patent.
After taking the weekend to consider it, Affymetrix refused this compromise proposal. Thus,
lllumina would ask the Court to adopt this reasonable proposal and order Affyrnetrix to limit
their claims accordingly. While a five—patent, nine—claim case will still pose great challenges to
the jury to understand, it will alleviate some of the risk of confusion and prejudice posed by
Affymetrix's current proposal.
Respectfully,
Richari K. Herrmgfr, I.D. No. 405
rlrernnarrngagrnorrisjames.com
cc: MaryEllen Noreika, Esq. (via email and hand delivery)
Daniel Reed, Esq. (via email)
materials, Affymetrix’s continuing refusal to simply pick a reasonable number of representative
claims from the 50-odd claims it asserted during the fact discovery period has necessitated
lllumina to raise this issue (and point out the extreme prejudice lllumina would suffer if forced to
defend against a claim on which it had no discovery) once again.