Free Letter - District Court of Delaware - Delaware

Case 1:04-cv-00901-JJF Document 227 Filed 03/06/2006 Pagei 0f3
MORRIS, JAMES, HITCHENS & WILLIAMS LLP
222 Delaware Avenue. 10th Floor
Wilmington, Delaware 19801-1621
(302) 888-6800
Facsimile (302) 571-1751
WWW.lTTOI`I`lSjE1lTl€S.COIl]
Richard K. Herrmann Mailing Address
(302) 888-6816 P.O. Box 2306
[email protected] Wilmington, DE 19899-2306
March 6, 2006
VIA ELECTRONIC FILING
The Honorable Joseph J. Faman, Jr.
USDC for the District of Delaware
844 King Street
Wilmington, DE 19801
Re: Ajjunetrzlv, Inc. v. Illumina, Inc., D. Del., C.A. N0. 04-901-JJF
Your Honor:
The parties have worked together to resolve the matters raised in their respective
February 13, 2006 letters to the Court. Since those letters and the subsequent February 15
hearing, however, one discovery issue has arisen which requires the Court’s attention.
Affymetrix is blocking legitimate discovery of a third party by now "representing" that third
party and refusing to allow the third party to comply with lllumina’s reasonable discovery
requests, citing the close of discovery deadline despite the fact that all interested parties were on
notice ofthe subpoena 10 days before the close of discovery. This improper effort to thwart this
important discovery has forced Illumina to seek the Court’s assistance.
Illumina seeks a limited number of documents from, and a short (2-3 hour) deposition of
third-party witness Dr. Richard Sachleben. Dr. Sachleben worked at the Oak Ridge National
Laboratory in the late 1980s and early 1990s with technology that may be relevant prior art to the
Affyrnetrix patents-in-suit. In addition, Dr. Sachleben attended a conference in Moscow, Russia
in November 1991, and prepared a detailed trip report relating to that conference which is
important to certain of 1llurnina’s invalidity and inequitable conduct defenses in this case. There
can be no question that Dr. Sachleben possesses relevant information to this case, and
Affymetrix has never suggested otherwise.
1l1umina’s counsel has previously spoken to Dr. Sachleben regarding the service of a
subpoena to him, and Dr. Sachleben had always indicated a willingness to respond and provide
whatever information he had available to him. Indeed, Dr. Sachleben agreed with I1lumina’s
counsel as to when and where he could be served with a subpoena, and as to the appropriate
timing for production of documents and scheduling of his deposition. There was never any
suggestion that Dr. Sachleben would not comply with the subpoena, until Affymetrix’ lawyers
recently became involved.
Dover (302) 678-8815 Broom Street (302) 655-2599 Newark (302) 368-4200

Case 1:04-cv-00901-JJF Document 227 Filed 03/06/2006 Page 2 of 3
MORRIS, ]AMES, HITCHENS & WILLIAMS LLP
The Hon. Joseph J. Farnan. Jr.
March 6, 2006
Page 2
After discussing and agreeing to the logistics with Dr. Sachleben, Illumina prepared a
subpoena to Dr. Sachleben and served notice of the subpoena to Affyrnetrix and the Court on
February 14. The subpoena specifically requested documents to be produced by February 22,
with a deposition scheduled for February 24. Since Dr. Sachleben had informed Illumina’s
counsel that he would be traveling during the work week of February 13, an agreement was
made to send the subpoena via Federal Express to his house on Saturday, February 18.
Unfortunately, due to the massive snowstorm that crossed the country that weekend, the
subpoena was not delivered to Dr. Sachleben’s house until February 20, 2006. lllumina’s
counsel sought to contact Dr. Sachleben during the week of February 20, but he did not respond.
lllumina’s counsel finally was able to reach Dr. Sachleben by phone on February 28, and he
stated that "1 have been instructed not to talk to you" by Affymetrix’ lawyers. Affymetrix only
informed Illumina of its representation of Dr. Sachleben in response to lllumina’s inquiry on
February 28, 2006, several days after the retum date on the subpoena and after fact discovery had
closed. ln this correspondence, Affymetrix stated that it was now "representing" Dr. Sachleben
and that the subpoena was invalid because it was not served properly, issued from the wrong
jurisdiction, and untimely. After this notice, Illumina attempted to discuss new dates for the
production of documents and deposition and served a corrected subpoena with new proposed
dates on Affymetrix as Dr. Sachleben’s counsel. While accepting service, Affymetrix has
rejected Illumina’s attempt to cure any technical defects and maintains it will not comply with
the subpoena served on Dr. Sachleben.
Neither Affymetrix nor Dr. Sachleben responded to the subpoena by the response date of
February 22 as required under Fed. R. Civ. P. 45(c)(2)(B) and 45(c)(3)(A), and thus any
objections to the subpoena have been waived. See In re Corso, 328 B.R. 375, 384-85 (E.D.N.Y.
2005); Schweizer v. Mulvehill, 93 F. Supp. 2d 376, 412 (S.D.N.Y. 2000); see also Krewson v.
City of Quincy, 120 F.R.D. 6, 7 (D. Mass. 1988) (finding that failure to raise timely objections
constitutes waiver of any and all objections a party may have to requests for production of
documents). While service was not formally effected until February 20,1 Dr. Sachleben had
notice that the subpoena was coming (and had indicated to Illumina that the response time was
adequate), and his now-lawyers received a copy of the subpoena on February 14. Affymetrix is
simply wrong when it contends that it did not have to timely respond to the subpoena on behalf
of its client, and that because it responded after the close of discovery it is now too late for this
discovery to proceed. This “stal1 out the clock’” strategy is merely an effort to block Illumina’s
legitimate discovery of a third party. If Illumina had been informed of the technical defect in the
subpoena in a timely manner, it could have corrected the defect before the close of discovery and
all ofthis would be moot.
l Courts have confimred that service by Federal Express is appropriate, and service is effective as
ofthe date of delivery. See Hall v. Sullivan, 229 F.R.D. 501 (D. Md. 2005); Western Resources,
Inc. v. Union Pacg’ic Railroad C0., 2002 WL 1822432 at *2-*3 (D. Kan. 2002) (finding
subpoena delivered using Federal Express provided fair and timely notice).

Case 1:04-cv-00901-JJF Document 227 Filed 03/06/2006 Page 3 of 3
Moruus, ]AMEs, HITCHENS & WILLIAMS LLP
The Hon. Joseph J. Farnan, Jr.
March 6, 2006
Page 3
This Court should reject Affymetrix’ effort to prevent Illumina from gaining legitimate
discovery from a third party witness. While Affymetrix purports to act on behalf of Dr.
Sachleben, its actions are clearly in support of its own interests, and are diametrically opposed to
the interests of Dr. Sachleben expressed just a few weeks ago (before Affymetrix was
representing him). Whatever the explanation for this shift in position, Illumina asks the Court
for leave to conduct this discovery of Dr. Sachleben after the February 24 discovery close.2
Since the only present objection is as to the compliance with the Court’s scheduling order, there
should be no need to get the District of Massachusetts involved with enforcing the subpoena
(although Illumina will ultimately enforce the subpoena there if that is required).
Respectfully,
Richard Herrmanni, I.D. No. 405
[email protected]
cc: Dr. Peter T. Dalleo, Clerk ofthe Court (via electronic filing)
MaryEllen Noreika, Esq. (via electronic filing)
Michael J. Malecek, Esq. (via email)
2 Dr. Sachleben’s is not the only deposition that will be conducted after February 24. There are a
handful of other depositions, including third party depositions, for both parties that have been
scheduled by agreement past the discovery close date of February 24. The subpoena to Dr.
Sachleben can and should be handled just like this other discovery.