Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv-00901-JJF Document 450 Filed 10/08/2007 Page 1 of 2
MORRIS , NICHOLS, ARSHT Sn TUNNELL LLP
l 1201 Noam MARKET STREET
P.O. Box 1347
Wrmrneron, Drzrnwrraa 19899-1.347
302 658 9200
302 658 3989 FAX
MARYELLEN N orrmru.
302 351 9278
302 425 3011 FAX
mn0rei.l:[email protected] October 8,
The Honorable Joseph J. Farnan, Jr. VIA ELECTRONIC FILING
United States District Court
For the Eastern District of Delaware
844 North King Street
Wilmington, DE 19801
Re: Ajjjzmerrix, Inc. v. Illumimz Inc.
C.A. No. 04-CV-901 JJF
Dear Judge Farnan:
In advance of the October 10, 2007, status conference, Affymetrix, Inc. ("Affymetrix")
submits this letter setting forth several topics that it would like to address at the hearing.
Issues and timing for Phase II of the trial I
By letter dated August 9, 2007, the parties previously requested a trial date commencing
on any one ofthe following weeks: January 14, February 4, 11, and 18, 2008. (D.I. 439)
Affymetrix remains available for trial during those weeks.
Affymetrix believes that, as discussed at the February 8, 2007 Pretrial Conference, Phase
Il of this case should include the issues of patent validity and willful infringement given the
overlap ofthe two issues (Tr. at 16):
Counsel for Affymetrix: Okay. So We would move willfulness to
the second phase, then?
Court: Yes. Exactly.
A one-week trial should be sufficient for these issues.
Affyrnetrix proposes that the Court hear the issue of alleged inequitable conduct promptly
after the Phase II trial, at a time convenient for the Court. Proceeding in this manner will allow
all of the patent issues to be completed so that they can be finally resolved. Illumina’s antitrust

Case 1 :04-cv-00901-JJF Document 450 Filed 10/08/2007 Page 2 of 2
The Honorable Joseph J . Farnan, Ir.
October 8, 2007
Page 2
and business counterclaims can then be separately addressed, if necessary, after the Court lifts its
stay and reopens discovery and that discovery is concluded.
Affymetrix’s pending assignor estoppel motion
Currently pending is Affymetrix’s Motion for Summary Adjudication on Illumina, Inc’s
Third and Seventh Affirmative Defenses and Second Counterclaim. (D.I. 272.) This motion
seeks to preclude Illumina from challenging the validity of the ‘7l6 patent due to assignor
estoppel. Affymetrix respectfully requests that the Court address this pending motion at the
October l0 status conference.
The Court previously denied each of the parties’ summary judgment motions except for
Affymetrix’s assignor estoppel motion. Resolution of Affymetrix’s motion in Aff`ymetrix’s
favor would streamline the Phase H trial by reducing the patents at issue to four and eliminating
the need for testimony from two experts and one or more fact witnesses. Therefore, Afiymetrix
requests that this issue be addressed at the conference.
IIlumina’s failure to identiy the prior art on which it intends to rely
On February 2, 2007, Illtunina served its § 282 notice identifying alleged prior art on
which it intended to rely. The notice listed 167 patent documents, 219 publications, and 23
individuals. The notice is not specific as to which patents nor which claims these 386 documents
and 23 individuals pertain. Affymetrix has repeatedly requested that Illumina state which of
these publications and individuals Illumina intends to rely on at trial, and to which patent claim
each reference is relevant. Illumina has repeatedly refused to narrow its list of prior art.
To prepare for the validity issues of Phase H, Affymetrix must know upon which of the
hundreds of alleged prior art references Illumina actually intends to rely. Therefore, Affymetrix
respectfully requests that the Court order Illumina to narrow its prior art and identify to which
claims the remaining references will be addressed at trial by October 18 or face preclusion of
entering any such evidence.
Mechanics of Phase II trial
The parties will require some direction from the Court regarding the filing of Phase II
motions in limine, exchange of demonstrative exhibits, and other procedural issues.
Respectfully,
/s/91/lrzryeffzn Woreilég
Maryellen Noreika (#3208)
MN/dlb
cc: Clerk of Court (Via Hand Delivery)
Richard K. Herrmann, Esquire (Via Electronic Mail and Hand Delivery)
Marcus E. Semel, Esquire (Via Electronic Mail)