Free Letter - District Court of Delaware - Delaware

Case 1:O4—cv-00901-JJF Document 119 Filed 12/O2/2005 Page 1 of 4
MORRIS, JAMES, HITCHENS & WILLIAMS LLP
222 Delaware Avenue, 10th Floor
Wilmington, Delaware 19801-1621
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www.morrisjames.com
Richard K. Herrmann Mailing Address
(302) 888-6816 P.O. Box 2306
[email protected] Wilmington, DE 19899-2306
December 2, 2005
VIA ELECTRONIC FILING
o The Honorable Joseph J. Faman, Jr.
United States District Court
District of Delaware
844 King Street
Wilmington, DE 19801
Re: Ajfvmetrbc, Inc. v. Illumina, Inc., D. Del., C.A. N0. 04-901-JJF
Your Honor:
Pursuant to the Court’s direction, Illumina submits the following update as to the
discovery issues that it would like to raise to the Court’s attention at the upcoming hearing on
December 7, 2005.
Outstanding Issues Raised In Advance of October Hearing
Although the parties have been able to resolve some of the issues that were presented for
the Court’s consideration at the October hearing, several of these issues remain unresolved. The
following is a list of the unresolved issues.
A. Motion To Compel Documents From Other Related Litigations glncyte and OG] [
Illumina has set forth its position on this issue in its previously-filed motion to compel.
Illumina has identified the specific relevance of the documents from the Incyte and OGT cases in
this motion, and Affymetrix has all but conceded that these documents are relevant.
Unfortunately, Affymetrix continues to refuse to produce these documents. This is despite the
fact that its own witnesses in this case have volunteered that their testimony in these prior cases
relates to the "same questions" as raised in this case. (See Dermis Solas Dep. at 21).
As discussed in its letter of October 19, 2005 to the Court, Affymetrix is attempting to
hold documents from the Incyte and OGT cases hostage until Illumina produces documents from
an employment discrimination lawsuit filed by Anthony Czarnik. Illumina believes Affymetrix’
request for documents from this employment litigation, which centered on the reason for
termination of Dr. Czarnik’s employment, is merely an effort to embark on a fishing expedition
to burden Illumina. Illumina requests an order requiring Affymetrix to immediately produce all
Dover (302) 678-8815 Broom Street (302) 655-2599 Newark (302) 368-4200

Case 1:O4—cv-00901-JJF Document 119 Filed 12/O2/2005 Page 2 of 4
MORRIS, JAMES, H1TcHENs & WILLIAMS LLP
The Hon. Joseph J. Farnan, Jr.
December 2, 2005
Page 2
documents from the Incyte and OGT cases, and denying Affymetrix’ request to condition such
production on Illumina’s production of documents from the Czarnik employment case.
B. Motion to Compel Documents Relating to Non—Enablement and Reduction to Practice
As set forth in Illumina’s motion to compel on this issue, Affymetrix is withholding
information from over 15 employees or former employees that were directly involved with the
development of the technology underlying the patents-in—suit. And this is not just Illumina’s
contention -— Affyrnetrix is already on record in prior cases that the work of these individuals is
relevant to the development of the teclmology underlying the patents asserted in this case.
· Moreover, Illumina has obtained publicly-available documentation underscoring the extreme
relevance of at least one of these persons -- Ann Pease —- who is reported as having
acknowledged the non—enablement of Affymetrix’ teclmology after the patent applications to
which Affyrnetrix is claiming priority in this case. Documents relating to the development of
Affymetrix’ technology underlying the patents-in—suit are highly relevant and must be produced.
C. Confidentiality Desigpations
Illumina would like the Court to require Affyrnetrix to comply with both the spirit and
letter of the Court’s Protective Order. This Protective Order allows four in—house Affyrnetrix
lawyers access to all of lllumina’s most confidential information, while permitting Illumina no
in—house access whatsoever to any Affymetrix confidential information. While Illumina will
abide by the Court’s decision on this issue, Affymetrix has sought to take advantage of it by
marking nearly every document and discovery response in the case as containing confidential
information. Ajfvmetrix has even gone so far as t0 claim that its infringement contentions
against Illumina’s products -- clearly implicating only Illumina confidential irformation --
could not be reviewed by Illumina personnel. Affyrnetrix is abusing its advantage created by
the Protective Order in this case, and preventing Illumina from fully defending itself against
Affymetrix’ infiingement contentions. Illumina requests the Court to admonish Affyrnetrix to
comply with its obligations to designate materials pursuant to this Order in good faith, and to
require Affymetrix to immediately remove any confidentiality designations relating to its
infringement contentions.
Additional Discovegy Issues That Have Arisen Since The October Hearing
The following issues have arisen since the October 20 Hearing, and Illumina would like
to raise them for the Court’s consideration at the hearing next week.
l. Privilege Waiver With Respect To Conception Of ‘432 Patent
ln order to establish a conception date for the asserted ‘432 patent prior to the earliest
filing date to which Affyrnetrix can claim priority for this patent, Affymetrix has sought to
selectively waive privilege with- respect to several documents containing attomey-client
communications that it contends help establish that conception. Affyrnetrix has produced to

Case 1:O4—cv-00901-JJF Document 119 Filed 12/O2/2005 Page 3 of 4
‘ Moruus, ]AMEs, HrrcHENs & W1LL1AMs LLP
The Hon. Joseph J. Farnan, Jr. .
December 2, 2005
Page 3
Illumina an invention disclosure form relating to the communication of the alleged patent
invention to Affymetrix’ patent attomeys, and the notes from a meeting with Affymetrix’
counsel that Affymetrix asserts relate to the invention that led to the ‘432 patent. While Illumina
disputes whether these documents do in fact prove conception, what should not be in dispute is
that Illumina is now entitled to all privileged communications between the ‘432 patent inventors
and their lawyers from the time of the alleged conception through (at least) the filing of the
patent application. Illumina is entitled to these documents to show that the alleged conception
does not meet the legal test of conception and, in any case, that there was a lack of diligence to
reduce that particular "invention" to practice. It is well settled that Affymetrix camiot simply
waive privilege with respect to the documents it perceives to help its case while continuing to
claim privilege as to the rest. Illumina thus seeks an order requiring Affymetrix to produce all
documents relating to the prosecution of the ‘432 patent, including all communications with its
patent counsel.
2. Affymetrix’ Failure To Schedule Depositions
Affymetrix has been less than cooperative in seeking to schedule dates for depositions
that have been noticed by Illumina. To date, Affymetrix has taken 10 depositions, while
Illumina has taken only 4. This disparity is due to the fact that Affymetrix has refused to provide
deposition dates to Illumina in a timely fashion.
While it is premature to seek an extension of the discovery schedule at this time, Illumina
does believe that it will not be possible to complete fact discovery by the deadline of February 3,
2006 if the current pace is maintained. There are currently 12 of lllumina’s deposition notices
outstanding, of which Affymetrix has provided possible dates for only 4 (which extend out past
the New Year). Given that Illumina anticipates that it will be taking many more depositions than
those currently noticed —— including many third party depositions that will be taken after
completing the initial discovery of the inventors of the patents—in-suit -- it is imperative that
Affymetrix be compelled to provide deposition dates in a more expedited fashion to give the
parties any chance to complete discovery by the current deadline. Illumina is also amenable to
extending the discovery schedule to accommodate the significant amount of discovery that
remains.
3. Affygetrix’ Failure To Supplement Its Validity Contentions
Illumina requests an order from the Court immediately requiring Affymetrix to
supplement its response to lllumina’s Interrogatory No. 16, which seeks Affymetrix’ contentions
as to why each of the prior art references cited by Illumina (and discussed in detail in lllumina’s
claim charts provided in response to Affymetrix’ Interrogatory No. 10) do not invalidate the
asserted claims of each patent. Illumina provided Affymetrix a supplemented response with
additional prior art claim charts over a month and a half ago. Affymetrix has refused to date to
supplement its response to Interrogatory No. 16 to explain why these prior art references do not
invalidate the claims. Illumina believes that Affymetrix should either be required to supplement

Case 1:O4—cv-00901-JJF Document 119 Filed 12/O2/2005 Page 4 of 4
MORRIS, ]AMEs, HITCHENS & WILLIAMS LLP
The Hon. Joseph J. Faman, Jr.
December 2, 2005
Page 4
its interrogatory responses immediately or be precluded from offering evidence in response to
Illumina’s invalidity contentions.
4. The Date By 'Which Illumina Must Decide On The Advice-Of—Counsel Defense
At the October 20 Hearing, the Court indicated to the parties that it agreed with
Illumina’s position that it should not be required to make a decision about its advice-of-counsel
defense until later in the discovery period, and at that time adopted December 30, 2005 as the
date by which Illumina had to decide whether to rely on this defense. The Court indicated at this
time that the fact discovery deadline of February 3, 2006 would not necessarily apply to
discovery on the issue of willful infringement, and that it "may put it off well after February 5th."
(Dkt. #107, 10/20/05 Hrg. at 13). Given the slow pace of discovery to date, Illumina is now
facing the prospect of having to make its decision regarding the advice-of-counsel defense
without having obtained much of the infringement- and validity-related discovery prior to the
December 30 date, including depositions of many of the inventors of the patents-in—suit. This
would put Illumina in exactly the same dilemma that the Court sought to avoid in setting the
December 30 date in the first place, and require Illumina to prematurely make a decision that has
broad ramifications on the overall litigation.
Illumina respectfully requests that the Court postpone the date by which Illumina must
decide on the advice-of-counsel defense to January 30, 2006. Since the Court has already
indicated that it will allow willfulness-related discovery to continue past the fact discovery
deadline, this later date will allow Illumina to take case—critical discovery prior to making this
important decision, yet still allow Affymetrix ample time to take willfulness discovery at an
appropriate time.
Respectfully,
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Richard K. Herrmami, I.D. No. 405
rherrmar1n(Q1'),morris]`ames.com
cc: Dr. Peter T. Dalleo, Clerk of the Court (via electronic filing)
MaryEllen Noreika, Esq. (via electronic filing)
Michael J. Malecek, Esq. (via facsimile)