Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv-00901-JJF Document 197 Filed O1/30/2006 Page 1 of 2
MoRR1s, N1oHoLs, ARSHT & TUNNELL LLP
1201 NORTH MARKET STREET
P.O. Box 1347
WILMINGTON, DELAWARE 19899-1347
302 658 9200
302 658 3989 FAX
MARYELLEN NOREIKA
302 251 9278
302 425 3011 rmx
mn01·[email protected]
January 30 2006
BY EFILING & HAND DELIVERY
The Honorable Joseph J. F arnan, Jr.
United States District Court
844 King Street
Wilmington, DE 19801
Re: Affymetrix, Inc. v. Illumina Inc., C.A. No. 04-CV-901 JJF
Dear Judge Farnan:
I write in response to Illumina’s “emergency" letter filed at the end of the day
Friday, January 27, 2006. There is no "emergency."
Illumina’s representation of the parties’ discussions about the scope of the waiver
is incomplete. The documents that Illumina seeks are not related to the issues listed in Illumina’s
letter. (For instance, the redacted portions of the attorney note are not directed to the date of
conception of the '432 patent.) Accordingly, Affymetrix sought assurances that production of
additional materials would not form the basis for an Illumina claim that the waiver was somehow
broadened to other topics. On January 24, 2006, Illumina agreed for the first time that it would
not contend that Affymetrix’s production of additional documents would constitute broader
waiver of unrelated issues. In response, Affymetrix emailed Illumina on Thursday, January 26,
stating that a formal response would be provided on Friday, January 27, and that documents
would be produced. On Friday, Affymetrix informed Illumina that the documents Illumina is
seeking will be produced by Monday, January 30 — before any of the depositions referenced.
Accordingly, based on the parties’ efforts to resolve this issue before Illtunina’s letter, the issue
is moot.
Likewise, the issue relating to Dr. Foote’s "invention disclosure" is not ripe.
Illumina did not raise the arguments stated in its "emergency" letter with Affymetrix prior to
bringing the issue to the Court and the facts are not as simple as Illtunina suggests. The
University of Tennessee was, pursuant to strict confidentiality agreements, exploring potential
business relationships at the time of the purported disclosure. The possibility that an agreement
would be consummated such that the University of Tennessee and its partner would share a
common legal interest can invoke a common interest privilege. Q Hewlett-Packard Co. v.

Case 1:O4—cv—OO901-JJF Document 197 Filed O1/30/2006 Page 2 of 2
The Honorable Joseph J. Faman
January 30, 2006
Page 2
Bausch & Lomb Inc., 115 F.R.D. 308 (N .D. Cal. 1987) (holding that defendant did not waive
privilege by disclosing to a third party an opinion of counsel regarding possible patent
infringement before a sales agreement was reached, because, when it disclosed the opinion, there
was a possibility that the sale would be consummated and that the third party would share the
common legal interest); Rayman v. American Charter Fed. Sav. & Loan Ass’n, 148 F.R.D. 647,
654-55 (D. Neb. 1993) (disclosure of privileged documents (litigation reports) during merger
negotiations did not waive the common interest privilege). In any event, Affymetrix is currently
working with the University of Temiessee to obtain the specific facts relating to the disclosure
and will continue to work with Illumina to resolve the issue.
Respectfully,
/s/ Maryellen Noreika (#3208)
Maryellen Noreika
MEN/bav
cc: Peter T. Dalleo, Clerk (By Hand Delivery)
Richard K. Herrmarm, Esquire (By Hand Delivery)
Marcus E. Sernel, Esquire (By Fax)