Free Letter - District Court of Delaware - Delaware

Case 1:O4—cv—OO901-JJF Document 228 Filed O3/08/2006 Paget of2
MORRIS, NICHOLS, ARSHT & TUNNELL LLP
1201 NORTH MARKET STREET
P.O. Box 1347
W1LM1NGToN, DELAWARE 19899-1347
302 658 9200
302 658 3989 FAX
MARYELLEN NOREIKA March 8
302 351 9278 ’
302 425 3011 Fax
I1’1l'1OI`€il([email protected]!l
BY ELECTRONIC FILING
The Honorable Joseph J. Faman, Jr.
United States District Court
844 King Street
Wilmington, DE 19801
Re: Affjgnetrix, Inc. v. Illumina Inc., CA. N0. 04-901 QJJFJ
Dear Judge Farnan:
I write in response to Illumina’s March 6, 2006 letter asking this Court to enforce
an untimely, invalid subpoena (that was also not properly served) against a third party witness
who resides in Massachusetts. There is no basis or reason to grant such relief.
Dr. Sachleben is a third party who resides in Massachusetts. He is one of many
third parties Illumina has subpoenaed relating to events that occurred in the late 1980s and
1990s. Illumina has been aware of Dr. Sachleben for months, and has deposed his colleagues.
Nevertheless, Illumina waited until the end of discovery to draft a subpoena for Dr. Sachleben.
That subpoena was issued from the District of Delaware, which does not have jurisdiction over
Dr. Sachleben. In addition, Illumina did not properly serve that subpoena on Dr. Sachleben.
Instead, Illumina sent it by Federal Express while Dr. Sachleben was away, and Dr. Sachleben
did not receive the subpoena until the evening of February 24, after the dates for compliance set
forth in the subpoena.
Illumina has blocked third party discovery in this case on the basis that a
subpoena issued from the wrong court is ineffective in procuring discovery sought by
Affymetrix. For example, during the deposition of Dr. Radomir Crkvenjakov, a paid Illumina
consultant, Illumina indeed argued this position:
MR. YU: Counsel, it is your contention that if a subpoena is
served out of the wrong jurisdiction, it is ineffective for all
purposes?
MS. TANG: That's correct.
See Deposition of Dr. Radomir Crkvenjakov at 10, ll. 19-22. Illumina has subsequently refused
to respond to a subpoena requesting original versions of documents represented by Illumina to be
prior art, but which Dr. Crkvenjakov admitted altering during discovery because the subpoena
was issued out of the wrong California district court.

Case 1:O4—cv—OO901-JJF Document 228 Filed O3/08/2006 Page 2 of 2
The Honorable Joseph J. Faman, Jr.
March 8, 2006
Page 2
Perhaps because it previously blocked discovery based on what it now refers to as
a "technical defect," lllumina seeks to blame Affymetrix for ll1umina’s failed subpoena.
Affymetrix, however, was not responsible for lllumina’s delay in issuing a subpoena to
Dr. Sachleben, for the issuance of the subpoena from the wrong Court or for ll1umina’s failure to
serve Dr. Sachleben with the subpoena prior to the end of discovery. Moreover, Affymetrix has
not "block[ed] legitimate discovery of a third party" or acted "improperly." Dr. Sachleben is
being represented by Affymetrix in connection with the lllumina subpoena. He has little interest
in being deposed or surrendering private, proprietary documents — particularly to the extent that
lllumina requests that he do so on its schedule and in response to an invalid subpoena.
lllumina’s argument that Dr. Sachleben waived his objections is also unavailing.
Federal Express packages left without any required signature do not meet the high standard for
service imposed by Rule 45 to protect disinterested third parties from unintended waiver.
Indeed, the majority of courts have held service by Federal Express to be improper for purposes
of Rule 45. See, ag., Application ofJo/inson and Johnson, 59 F.R.D. 174, 177 (D. Del. 1973)
("Under Rule 45(c), personal service of a subpoena is required when an individual is
subpoenaed."); FTC. v. Compagnie De Saint-Gobain—Pont—a—Mousson, 636 F.2d 1300 (D.C.
Cir. 1980)). lllumina’s citation of Hall v. Sullivan, 229 F.R.D. 501 (D. Md. 2005) does not
change that. ln Hall, the court (acknowledging that it was taking a minority view) decided only
that delivery by Federal Express actually received by the subpoenaed party was effective. Hall,
229 F.R.D. at 502, 505. Here, Dr. Sachleben told lllumina’s attomeys that he would be traveling
the week of February 20m and would not be home to receive a subpoena. He did not receive the
subpoena until the evening of Friday, the 24th — after the dates for compliance had passed. He
had no opportunity to object.
Finally, there is no reason to extend discovery yet again and burden another third
party. lllumina has already deposed Dr. Sachleben’s colleague, Dr. Robert S. Foote, about the
same work it intends to address with Dr. Sachleben. lt has also deposed multiple third parties
who attended a November, 1991 conference in Moscow, which is one the subjects listed in
document subpoena to Dr. Sachleben. In short, there has already been extensive discovery on
the issues that Dr. Sachleben could address, discovery is over and it is time for this case to move
forward toward trial. lllumina’s request that this Court enforce its untimely, invalid subpoena
against Dr. Sachleben should be denied.
Respectfully,
/s/ Maryellen Noreika (#3208)
Maryellen Noreika
/klm
cc: Peter T. Dalleo, Clerk (By Hand Delivery)
Richard K. Herrmann, Esquire (By Hand Delivery)
Marcus E. Semel, Esquire (By Fax)
1