Free Letter - District Court of Delaware - Delaware

Case 1:04-cv-00901-JJF Document 447 Filed 09/24/2007 Page 1 of 1
Mornslames
Richard K. Hemnann
$02888.6816
[email protected]
September 24, 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: Ajj¤n1etrix, Inc. v. Illumina, Inc., D. Del., C.A. N0. 04-901-JJF
Your Honor:
I write to briefly respond to Affymetrix’s September 21, 2007 letter that seeks to delay
the briefing schedule of Illumina’s Motion to Vacate as a Matter of Law the Jury’s Verdict of
Infringement of the ‘716 Patent Under the Doctrine of Equivalents on the Basis of Prosecution
History Estoppel. Affymetrix suggests that this motion should be addressed with the post—trial
motions, i.e., after judgment has been entered on all phases. Illumina disagrees. Illumina
respectfully submits that there are important reasons to deal with the instant motion now.
Specifically, unlike a motion for a new phase one trial, Illumina’s instant motion presents
a legal issue that is considered by a court based on its own review of the record evidence.
Indeed, the Court specifically excluded the prosecution history estoppel issue from the phase one
trial, with the understanding that this issue would be dealt with at a later time. See, e. g. Trial Tr.
at 1209. This motion is thus not subject to the parties’ stipulation regarding the post-trial
motions, and Illumina respectfully suggests that the Court address Illumina’s motion and the
prosecution history estoppel issue now, and most certainly before the second phase of the trial.
As for the brief mention in Affymetrix’s letter of its assignor estoppel motion (requesting
the Court to rule in Affymetrix’s favor), Illumina would like to point out that Affymetrix’s
assignor estoppel motion has not yet been briefed. Accordingly, it is not presently ready to be
considered by the Court. In any event, as previously noted by Illumina, the Court’s prior rulings
on the related issue of Affymetrix’s ownership of the ‘716 patent now precludes any finding of
assignor estoppel in Affymetrix’s favor.
Respectfully,
Richar§[;. Herrmla%, I.D. No. 405
1'lICI`I`II1&I].1'1(@,l'I'1OI`1'lS]· mes.com
cc: MaryEllen Noreika, Esq. (via email & hand delivery)
Daniel Reed, Esq. (via email)
500 Delaware Avenue, Suite 1500 | Wilmington, DE 19801-1494 T302.888.6800 F302.571.1750
Mailing Address P.O. Box 2306 l Wilmington, DE 19899-2306 www.m0rrisjames.c0m