Free Letter - District Court of Delaware - Delaware

Case 1:04-cv-00901-JJF

Document 43

Filed 03/16/2005

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MORRIS, JAMES, HITCHENS & WILLIAMS LLP
222 Delaware Avenue, 10th Floor Wilmington, Delaware 19801-1621 (302) 888-6800 Facsimile (302) 571-1751
www.morrisjames.com Richard K. Herrmann (302) 888-6816 [email protected] Mailing Address P.O. Box 2306 Wilmington, DE 19899-2306

March 16, 2005 VIA ELECTRONIC FILING The Honorable Joseph J. Farnan, Jr. United States District Court District of Delaware 844 King Street Wilmington, DE 19801 Re: Affymetrix, Inc. v. Illumina, Inc. D. Del., C.A. No. 04-901-JJF

Your Honor: I write in response to the letter sent to you on March 11, 2005 by Affymetrix' counsel in the above-referenced action. First and foremost, Affymetrix' letter was filed in contravention of this Court's rules requiring parties to meet and confer to resolve disputes before raising them with the Court. Without any communication to Illumina at all -- not even a phone call -- Affymetrix filed its letter with the Court one day after Illumina served its Responses to Affymetrix' First Set of Interrogatories. This failure to meet and confer is important in this instance. If Affymetrix had first made a phone call to Illumina, it would have realized that it has misunderstood Illumina's designation of its information as "confidential" and actually had no need to contact the Court about this issue in the first place. Affymetrix complains that, based on Illumina's designation of its responses as "confidential," all of Affymetrix' in-house lawyers are prevented from reviewing any of this information. This is incorrect. Illumina specifically marked its responses under the lowest tier of its proposed protective order -- "confidential" as opposed to the "highly confidential" or "outside counsel's eyes only" categories -- because, while it deemed some of the information confidential and sensitive, it did not deem the information so sensitive as to merit the most-restrictive designation. As such, Affymetrix's designated in-house lawyers, including Mr.

Dover (302) 678-8815

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Case 1:04-cv-00901-JJF

Document 43

Filed 03/16/2005

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MORRIS, JAMES, HITCHENS & WILLIAMS LLP The Hon. Joseph J. Farnan, Jr. March 16, 2005 Page 2 Malacek of its so-called Litigation Unit, are free to review the responses. Thus, the issue raised in Affymetrix' letter is in fact moot.1 While Illumina does not necessarily oppose a conference with the Court regarding the schedule and protective order for this case, Affymetrix' suggestion that the case is "stalled" and necessitates the Court's immediate attention is simply not true. Written discovery has now been exchanged and the case is proceeding along the case schedules proposed by the parties. Moreover, any prejudice claimed by Affymetrix is the result of their failure to obtain outside patent litigation counsel in this case, and does not justify any emergency action from the Court at this time.

Respectfully, /s/ Richard K. Herrmann Richard K. Herrmann, I.D. No. 405 [email protected]

cc: Dr. Peter T. Dalleo, Clerk of the Court (via electronic filing) MaryEllen Noreika, Esq. (via electronic filing) Michael J. Malecek, Esq. (via facsimile)

Illumina understands why Affymetrix may have been mistaken regarding the effect of Illumina's designation of its responses as "confidential," but that simply underscores the need to clarify the designation with Illumina before raising the issue with the Court.

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Case 1:04-cv-00901-JJF

Document 43

Filed 03/16/2005

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CERTIFICATE OF SERVICE I hereby certify that on the 16th day of March, 2005, I electronically filed the foregoing document, LETTER TO THE HONORABLE JOSEPH J. FARNAN, JR., with the Clerk of the Court using CM/ECF which will send notification of such filing to the following:

MaryEllen Noreika, Esq. Morris Nichols Arsht & Tunnell 1201 Market Street Wilmington, DE 19801

Additionally, I hereby certify that on the 16th day of March, 2005, the foregoing document was served via facsimile on the following non-registered participants: Daniel R. Reed, Esq. George C. Yu, Esq. Michael J. Malecek, Esq. Affymetrix, Inc. 6550 Vallejo Street, Suite 100 Emeryville, CA 94608 Fax 510.428.8583

/s/ Richard K. Herrmann Richard K. Herrmann (No. 405) MORRIS, JAMES, HITCHENS & WILLIAMS LLP 222 Delaware Avenue, 10th Floor Wilmington, Delaware 19801 302.888.6800 [email protected] Attorneys for Defendant ILLUMINA, INC.

RKH/109379-0001/1097223/1