Free Redacted Document - District Court of Delaware - Delaware

Case 1 :04-cv-00901-JJF Document 346 Filed 10/19/2006 Page 1 of 3
MORRIS, JAMES, HITCHENS & WILLIAMS LLP
222 Delaware Avenue, 10th Floor
Wilmington, Delaware 19801-1621
(302) 888-6800
Facsimile (302) 571-1750
www.morrisjames.com
Richard K. Herrmann Mailing Address
(302) 888-6816 P.0. Box 2306
[email protected] Wilmington, DE 19899-2306
October 5, 2006
VIA ELECTRONIC FILING
The Honorable Joseph J. Farnan, Jr. PUBLIC VERSION
USDC for the District of Delaware Filed October 19, 2006
844 King Street
Wilmington, DE 19801
Re: Ajjrmetrix, Inc. v. Illuminu, Inc., D. Del., C.A. No. 04-901-JJF
Your Honor:
I write in response to the September 29, 2006 letter from Affymetrix's counsel pertaining
to a document that Affymetrix claims was inadvertently produced and that it is now attempting
to withhold as privileged.
As an initial matter, it should be noted that counsel for Illumina has complied with the
Court’s July 28, 2005 Protective Order in all respects. During a deposition on September 15,
2006, after Affymetrix's counsel claimed that the document in question was privileged,
lllumina’s counsel immediately ceased questioning with respect to the document and undertook
efforts to destroy all copies of the document in its possession. Affymetrix does not contend, nor
could it, that Illumina has in any way violated the Protective Order. However, having been in
possession of the document for over a year, lllumina’s counsel is of course aware of the
document's contents and believes Affymetrix's claim of privilege is unfounded}
Affymetrix apparently claims that the document relates to patent prosecution and tries to
protect it under both the work product doctrine and attomey-client privilege. First, Affymetrix
provides absolutely no support for its work product claim. There is nothing in its letter or its
supplemental privilege log to establish that the document was prepared in anticipation of
litigation. Arid Affymetrix's claim of work product is undercut by its description of the e-mail
1 It should be noted that Affymetrix's Chief IP Counsel Phil McGarrigle is a key witness and has
submitted an important declaration in this case relating to his actions in prosecuting the '243
patent. Affymetiix is not in a position to contend that everything that Mr. McGarrigle has sent or
received is somehow privileged, and the document in question in fact might indirectly relate to
the prosecution of the '243 patent.
Dover (302) 678-8815 Broom Street (302) 655-2599 Newark (302) 368-4200

Case 1:04-cv-00901-JJF Document 346 Filed 10/19/2006 Page 2 of 3
MORRIS, ]AMEs, HITCHENS & WILLIAMS LLP
The Hon. Joseph J. Faman, Jr.
October 5, 2006
Page 2
REDACTED
REDACTED
See Zenith Radio Corp. v. Radio
Corp. of Amer., 121 F. Supp. 792, 794 (D. Del. 1952) (explaining that no privilege attaches to
lawyers' communications when they are "largely concerned with technical aspects of a business
or engineering character" or "even the general application of patent law to developments of their
companies and competitors")
While Illumina has previously abided without objection to Affymetrix's claims of
inadvertent production3, this situation is different -- it is a case of Affymetrix attempting to bury
a "bad document" with an improper claim of privilege. The document is highly relevant to, inter
alia, Illumina's laches, invalidity, and inequitable conduct defenses, and also to its unfair
2 Even if the document is related to patent prosecution, absent evidence that the document in
question was prepared in anticipation of litigation, courts have repeatedly rejected blanket claims
of work product protection over patent prosecution documents. See e.g., In re Gabapentin
Patent Litigation 214 F.R.D. 178, 184 (D.N.J. 2003) ("Generally, work performed by an attorney
to prepare and prosecute a patent does not fall within the parameters of the work product
protection . . . since the prosecution of [a] patent is a non—adversarial, ex—parte proceeding?).
3 Affymetrix has not even attempted to establish the inadvertence of the document's production,
providing yet another reason why it should now be produced.

0 Case 1:04-cv-00901-JJF Document 346 Filed 10/19/2006 Page 3 of 3
Momus, JAMES, H1rcHENS & WILLIAMS LLP
The Hon. Joseph J. Faman, Jr. .
October 5, 2006
Page 3
competition counterclaims. For the foregoing reasons, Illumina respectfully requests that the
Court order Affymetrix to produce (again) the doctunent in question, or to conduct an in camera
inspection to assess the non—privileged nature of the document for itself
Respectfully,
Richard Herrmann¥I.D. No. 405
rhe1rrnan1i@n1o1r·is]'a1nes.com
cc: Dr. Peter T. Dalleo, Clerk of the Court (via electronic tiling)
MaryEllen Noreika, Esq. (via email and hand delivery)
Michael J. Malecek, Esq. (via email and Federal Express)