Free Redacted Document - District Court of Delaware - Delaware

Case 1:O4—cv—OO901-JJF Document 374 Filed O2/19/2007 Page 1 of 1
Monnxs, Ntonors, Ansnrr & TUNNELL LLP
l20l Norsrn Manner Srnaicr
P.O. Box 1347
Wrnmrnoron, Dnrawane 19899-1847
302 658 9200
302 658 8989 Fax
MARYELLEN NOREIKA
FH Original Filing Date: February 13, 2007
mmmh@mmat_cOm Redacted Filing Date: February 19, 2007
BY E-FILING (cover letter only)
& BY HAND (cover letter and enclosure)
The llonorable Joseph J. Farnan, Jr. PUBLIC VERSION
United States District Court
844 King Street
Wilmington, DE 1980l
Re: Affyinetrix, lnc. v. llluniina Inc., C.A. No. 04-CV—90l UF
Dear Judge Farnan:
For the Court’s in camera review, enclosed is a copy of the inadvertently produced
Affynietrix document that was the subject of discussion at the pretrial conference last week. The
document is an email chain between Phil l\/lcGarrigle (At`fymetrix’s chief patent counsel) and
other Affymetrix employees regarding patent prosecution strategy and is thus privileged.; In re
Spalding Sports Worldwide, Inc., 203 l*`.3d 800, 806 (Fed. Cir. 2000) ("lt is enough that the
overall tenor ofthe document indicates that it is a request for legal advice or services. Moreover,
it is not necessary to expressly request confidential legal assistance when that request is
implied?).
Respectfully,
/s/ Maryellen Noreika
Maryellen Noreika (#3208)
Enclosure (document for in camera review)
cc: Dr. Peter T. Dalleo, Clerk (By Hand w/o enclosure)
Richard K. Hernnarm, Esquire (By Hand w/o enclosure)
Marcus E. Sernel, Esquire (By Fax w/o enclosure)
l The document is also irrelevant to the infringement and damages issues to be tried in phase i of
this case. As this Court has previously held, “[i]t is not improper for a patent applicant to broaden his
claims during prosecution based on information that the applicants attorney has learned about during the
prosecution of a patent application, as long as the disclosure supports the broadened claims? Lucent
EXTFEME Techs., Inc. v. Extreme Networks, [rec., 367 F. Supp. 2d 649, 655 (D. Del. 2005). "Any such
amendment or insertion must comply with all statutes and regulations, ofcourse, but, if it does, its genesis
in the marketplace is simply irrelevant . . .." Kingsclowrz Medical Consultants, Ltd. v. Hollister Inc., 863
F.2d 867, 874 (Fed.Cir.l988).