Free Letter - District Court of Delaware - Delaware

Case 1:04—cv—00901-JJF Document 303 Filed 07/28/2006 Paget of2
MORRIS, JAMES, HITCHENS & WILLIAMS LLP
222 Delaware Avenue, 10th Floor
Wilmington, Delaware 19801-1621
(302) 888-6800
Facsimile (302) 571-1750
wvvw.morrisjames.com
Richard K. Herrmann Mailing Address
(302) 888-6816 P.O. Box 2306
[email protected] Wilmington, DE 19899-2306
July 28, 2006
VIA ELECTRONIC FILING
The Honorable Joseph J. Faman, Jr.
USDC for the District of Delaware
844 King Street
Wilmington, DE 19801
Re: Affymetrix, Inc. v. Illumina, Inc., D. Del., C.A. N0. 04-901-JJF
Your Honor:
This letter responds to Affymetrix's alternative request to bifurcate two of Illumina's
counterclaims in Affymetrix, Inc.'s Motion for (1) Summary Judgment of Illumina's
Counterclaims of Intentional Interference with Actual and Prospective Economic Advantage, and
(2) Summary Adjudication of Portions of Illtur1ina's Counterclaim for Unfair Business Practices; A
or, in the Alternative, for Bifurcation of these Counterclaims (D.I. 277).
As an initial matter, Affymetrix's motion does not seek summary judgment as to the
entirety of Illtunina's counterclaims for unfair business practices. Illtunina believes that genuine
issues of material fact preclude a grant of summary judgment on any aspect of these two
counterclaims, and it has filed concurrently with this letter its Counter-Statement of Contested
Facts in opposition to Affymet1ix's motion. In any event, by so narrowly defining the scope of
its motion, even Affymetrix concedes that Illumina is entitled to a trial on the balance of its
claims against Affyrnetrix's unfair business practices. Since Illumina also anticipates that the
existence of factual issues will obviate the need for full briefing on Affymetrix's motion, it thus
provides the following brief response to Affymetrix's alternative request for bifurcation in this
letter.
Illumina’s counterclaims for tortious interference and unfair competition have been
present in this case from the outset. (D.I. 10) They address substantial wrongs committed by
Affymetrix through its long-standing, carefully-designed and implemented scheme to unfairly
compete with Illumina} Affyrnetrix's attempt now to delay resolution of Illu1nina's claims
1 Affyrnet1ix's suggestion that these claims should be stayed along with Illumina's Sherman
Act counterclaim is an argument that should have been made long ago, and is an improper
attempt to modify this Court's prior decision to stay the Sherman Act counterclaim while
allowing the others to proceed.
Dover (302) 678-8815 Broom Street (302) 655-2599 Newark (302) 368-4200

Case 1:04—cv—00901-JJF Document 303 Filed 07/28/2006 Page 2 of 2
Moruus, JAMES, HITCHENS & WILLIAMS LLP
The Hon. Joseph J. Farnan, Jr.
July 28, 2006
Page 2
through a request for bifurcation should be denied. It would simply be unfair for this Court to
allow Affymetrix's claims to proceed to trial without affording Illumina and its claims the same
opportunity.
Illumina is fully aware of this Cou1t's practice to sometimes sequence issues for trial, and
is prepared to discuss a logical trial structure at the Court's convenience. This case will be
extremely complex no matter how it is tried -- there are currently tive patents involving different
areas of technology that the parties have generally treated in three separate groups (see, e.g.,
Markman briefing), and very important counterclaims ranging from Affymetrix's unfair business
practices to its inequitable conduct in prosecuting the patents. Indeed, Illumina's counterclaims
focusing on Affymetrix's improper conduct in many ways share a greater common nucleus of
facts with the patent issues than the various patents share with each other. VVhile it may be
prudent to conduct more than one trial to address the issues in the case, Illumina vigorously
disagrees with Affymetrix's suggestion that the Court should set Illumina's counterclaims aside
now as being unworthy of being considered in the same way as all of the other issues in the case.
Illumina thus respectfully requests that the Court deny Affymetrix's premature request to
bifurcate Illumina's tortious interference and unfair competition counterclaims.
Respectfully, I
Richard K. Herrmann, I.D. No. 405
rherrma1111(@,mor·r·is]`ames.com
cc: Dr. Peter T. Dalleo, Clerk ofthe Court (via electronic filing)
MaryEllen Noreika, Esq. (via email and hand delivery)
Michael J. Malecek, Esq. (via email and Federal Express)