Free Letter - District Court of Delaware - Delaware

Case 1:04-cv-00901-JJF Document 449 Filed 10/08/2007 Pagei of2
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OITIS JHHIGS LLP
Richard K. Herrmann
$02.8886816
[email protected]
October 8, 2007
VIA EFILING AND HAND DELIVERY
The Honorable Joseph J. Farnan, Jr.
USDC for the District of Delaware
844 King Street
Wilmington, DE 19801
Re: Ajfymetrix, Inc. v. Illumina, Inc., D. Del., C.A. No. 04-901-JJF
Your Honor:
On behalf of lllumina, this letter sets forth Illumina’s views relating to the scheduling and
structuring of the next phase of the trial, in advance of the status conference scheduled for
October 10, 2007.
As previously indicated in Maryellen Noreika’s letter to the Court dated August 9, 2007,
the parties are currently available for the next phase of the trial on any one of the weeks of
January 14, or February 4, ll or 18, 2008. The parties also have agreed that a trial that includes
the invalidity issues for the five patents-in-suit should commence on one of these dates. The
parties have not agreed on whether other issues can or should be included in that trial, or whether
other issues should be tried during this timeframe.
One key issue of dispute between the parties is whether and when to try the issue of
willful infringement. As the Court is undoubtedly aware, the recent en banc Seagate decision
has essentially re-written the law on willfulness. No longer is the defendant’s subjective state of
mind relevant. Instead, the lower court must now look at the objective facts, including the
plaintiffs pre- and post-filing conduct, and make a threshold determination whether the record
demonstrates "objective recklessness? Seagate teaches that a plaintiff patentee cannot sit back
and hope for enhanced damages. If the plaintiff does not seek an injunction or otherwise
demonstrate that the case is not a close one with respect to infringement and validity, there can
be no "objective recklessness" as a matter of law. lllumina believes that the objective facts,
including the fact that Affymetrix never moved for a preliminary injunction or even for summary
judgment on the validity or intiingement of any of the patents-in-suit, reveal that this is a classic
case of no objective recklessness as a matter of law. As a result, lllumina intends to ask the
Court’s permission at the status conference to file a motion to strike the willfulness allegations
from the case.
Even if there remains some triable issue of willfulness (which there does not after
Seagate), lllumina believes that the issue of willfulness cannot be tried in the same trial with the
invalidity issues, without presenting severe and undue prejudice to lllumina. Illumina believes
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Case 1:04-cv-00901-JJF Document 449 Filed 10/08/2007 Page 2 of 2
Momsjamesrrp
The Honorable Joseph J. Faman, Jr.
October 8, 2007
Page 2
that the claim of willful infringement would prevent the jury from fully considering the invalidity
arguments that Illumina will present on the five patents-in-suit. As the party that bears the
burden of proof in the invalidity trial, Illumina should be permitted to present its case first,
without being burdened with having to respond to claims from Affymetrix. Indeed, just as
Affymetrix had the ability to present its infringement case without claims from Illumina in the
first phase of the trial, Illumina should be permitted to present its invalidity case without the
distraction of a claim from Affymetrix. Furthermore, it is impossible to conceive of a way to try
the willful infringement issue, most certainly under the new "objective recklessness" standard set
forth by Seagate, without tainting the second phase trial with the issues and result from the phase
one trial. At bottom, it would be fundamentally unfair and prejudicial to Illumina if Affymetrix
is permitted to taint the invalidity trial with presentation of a willful infringement case.
The decision remains as to when the equitable defenses and Illumina’s business-tort
counterclaims should be tried. Illumina believes that there is a high likelihood this case could
settle, after the invalidity verdict, since the parties will have more insight into the likely ultimate
outcome. Therefore, Illumina proposes court—sponsored mediation following the verdict on the
invalidity issues. If the case does not settle after this mediation, the remaining issues can be tried
in the summer of 2008, after a brief period to conclude discovery with respect to the antitrust
issues.
Illumina looks forward to discussing these issues in more detail with the Court at the
status conference on October l0, 2007.
Respectfully,
Richard enmann,z.D. No. 405
[email protected]
cc: MaryEllen Noreika, Esq. (via email & hand delivery)
Daniel Reed, Esq. (via email)