Free Letter - District Court of Delaware - Delaware

Case 1:04-cv-00901-JJF Document 445 Filed 09/13/2007 Pagei of2
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OITISJHHIGS LLP
Richard K. Hemnamr
$02.8886816
rherrmann@mon·isjames.com
September 13, 2007
VIA ELECTRONIC FILING
AND HAND DELIVERY
The Honorable Joseph J. Faman, Jr.
USDC for the District of Delaware
844 King Street
Wilmington, DE 19801
Re: Ajjnnetrbc, Inc. v. Illumina, Inc., D. Del., C.A. N0. 04-901-JJ F
Your Honor:
I write to apprise the Court that we are filing today Illumina’s Motion to Vacate as a
Matter of Law the Jury’s Verdict of Infringement of the ‘7l6 Patent under the Doctrine of
Equivalents on the Basis of Prosecution History Estoppel (“ ‘7l6 Prosecution History Estoppel
Motion"). The Court will recall that the jury’s verdict of infringement with respect to the ‘7l6
patent, in contrast to the other patents-in—suit, was only pursuant to the Doctrine of Equivalents.
As set forth in Illumina’s motion, the file history for the ‘7l6 patent reveals a clear—cut case of
prosecution history estoppel that precludes the jury’s finding of equivalents in the phase one
trial. In short, Affymetrix’s amendments and arguments during prosecution necessitate a finding
of estoppel, and thus vacating of the equivalents verdict, under the altemative theories of
amendment—based or argument-based estoppel.
Illumina proposes that the Court consider Illumina’s ‘7l6 Prosecution History Estoppel
Motion as soon as practicable, and in any event before the next phase(s) of the trial.
Consideration of this motion at this time is likely to result in substantial efficiencies in seeking to
bring this case to a conclusion. First, if this motion is granted, elimination of the ‘7l6 patent
from the next phase(s) of the trial will help significantly streamline these phase(s), as the
separate software and assay issues implicated by the ‘7l6 patent involve separate experts and
evidence than the other patents—in—suit. Moreover, there is another pending (although not fully
briefed) motion —— Affymetrix’s Motion for Summary Adjudication on Illumina’s Third and
Seventh Affirmative Defenses and Second Counterclaim ("Affymetrix’s Assignor Estoppel
Motion") -- that has been previously stayed by the Court, and this other motion can be rendered
moot if the Court grants Illumina’s ‘7l6 Prosecution History Estoppel Motion. Accordingly,
Illumina believes that it is sensible to consider the ‘7l6 Prosecution History Estoppel Motion
now}
l This motion with respect to the ‘7l6 patent should not be mistaken as an intention to file
all motions for judgment as a matter of law (“JMOL") at this time; the parties and the Court have
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Case 1:04-cv-00901-JJF Document 445 Filed 09/13/2007 Page 2 of 2
Monislamesrrp
The Honorable Joseph J. Faman, Jr.
September 13, 2007
Page 2
If convenient, Illumina would propose that the Court entertain oral argument on
Illumina’s Prosecution History Estoppel Motion at the previously-scheduled status conference on
October 10, 2007. Illumina is, of course, further available at the Court’s convenience should the
Court wish to discuss any of these issues in more detail.
Respectfully,
Richar; K. Hemninn, I.D. No. 405
rhemna1m(@,monis]`ames.co1n
cc: MaryEllen Noreika, Esq. (via email and hand delivery)
Daniel Reed, Esq. (via email)

agreed that these motions for all of the patents would be filed after final judgment is entered by
the Court following all phases of the trial.