Free Letter - District Court of Delaware - Delaware

Case 1:O4—cv—OO901-JJF Document 339 Filed O9/29/2006 Paget of2
MORRIS, NICHOLS, ARSHT Sn TUNNELL LLP
120] NORTH MARKET STREET
P.O. Box 1347
Wrmrnorou, Dsmwnus l9B99~lS4e7
302 658 9200
302 658 3989 Fax
MARYELLEN Noesxm
202 sai 9278
202 425 san not
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VIA ELECTRONIC FILING
The Honorable Joseph I. Farnan, Jr.
United States District Court
844 King Street
Wilmington., DE l980l
Re: Affymetnx, Inc. v. llluniina Inc., CA. No. O4-C\/-901 JJF
Dear Judge Farnan:
I write pursuant to section I5.2 of the Protective Order entered in this case (D.I. 57),
regarding a dispute that has arisen with respect to an inadvertently produced document in this
litigation.
In the recent deposition by lllumina of Phil McGarrig.le (Al`t`ymetrix’s chief patent
counsel), counsel for lllumina attempted to question Mr. McGa.rrigle regarding an email chain
that had been produced by Affyrnetrix. As shown on the attached privilege log (see Ex. A
attached hereto), the email chain was between Mr. McGarrigle and other Affymetrix employees
regarding patent prosecution strategy. Counsel for At`l°ym.etrix immediately objected on the basis
that the document was protected by the attorney—client privilege and had been inadvertently
produced. Following the deposition, counsel for Affymetrix wrote to Illuinina pursuant to
section I5.} ofthe Protective Order and requested that Illurnina return or destroy all copies of the
inadvertently—produced, privileged ernail. (Ex. B.) Both parties had made several similar
requests (which were complied with) earlier in the case regarding other inadvertently—prod‘uced
documents.
Illuinina responded by stating, without explanation, that the document was not privileged
and demanding that Affymetrix seek relief from the Court pursuant to section i5.2 of the
Protective Order. (Ex. C.) In an attempt to avoid involving the Court, Affymetrix then sent a
supplemental privilege log to Illumina, explained why the email chain was privileged, and
requested that Illumina articulate some basis for its position that the document was not
privileged. (Exs. A and D.) Illuinina could not do so, stating only that "[t]here is nothing in the
document that provides or seeks legal advice such that the attorney~client privilege would protect
the document from discovery? (Ex. E.) Illuniina continued to insist that Affyinetrix bring the
issue to the Court’s attention and thus, we have written this letter.

Case 1:O4—cv—OO901-JJF Document 339 Filed O9/29/2006 Page 2 of 2
The Honorable Joseph I, Farnan, Jr.
September 29, 2006
Page 2
As noted above, the email chain is between Aft`yrnetrix’s chief patent counsel and other
employees and involves a discussion of patent prosecution strategy. Therefore, it is
unquestionably protected by the attorney—client privilege. The document was inadvertently
produced in discovery and Illumina should return or destroy any copies of the document it may
have. Should the Court deem it necessary, Affymetrix will provide a copy of the document for
in camera inspection (provided that such an inspection would not constitute a waiver of the
privilege).
For the foregoing reasons, Affymetrix requests that the Court find its supplemental
privilege log appropriate and order llluniina to destroy all copies of and not to use or reference _
the inadvertentl.y—produced document.
Respectfully,
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l\/laryellr reika (#3208) it
cc: Dr. Peter T. Dalleo, Clerk (By Hand)
Richard K. Herrmann, Esquire (By Hand)
Marcus E. Sernel, Esquire (By Fax)