Free Order - District Court of Delaware - Delaware

Case 1:04-cv-00901-JJF Document 265 Filed 06/22/2006 Page 1 of 2
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
AFFYMETRIX, INC., ;
Plaintiff, E
v. i Civil Action No. 04-901 JJF
ILLUMINA, INC., E
Defendant. E
O R D E R
WHEREAS, Defendant filed a Motion To Dismiss
Affymetrix' Count 2 For Lack Of Standing And Subject Matter
Jurisdiction (D.I. 234);
WHEREAS, Defendant contends that Plaintiff owns no
rights in the ‘716 patent and, therefore, Count 2 of Plaintiff’s
Complaint, which alleges infringement of the ‘716 patent, must be
dismissed;
WHEREAS, the question of ownership of the ‘716 patent 1
hinges on the operation of the 1991 Consultant Services Agreement U
(the “1991 Agreement") (D.I. 246, Ex. 2) between Daniel H. Wagner d
Associates (“Wagner") and Affymax Research Institute (“ARI”); 5
WHEREAS, the Court concludes that Section 2 of the 1991 §
Agreement, “Ownership of Work Product" was in effect at the time Y
of conception of the invention claimed in the *716 patent because t
Section 10 of the 1991 Agreement provides that Section 2 survives 5
termination of the agreement; E

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Case 1:04-cv-00901-JJF Document 265 Filed 06/22/2006 Page20f2
WHEREAS, the Court finds that additional briefing on
the remaining issues is necessary;
NOW THEREFORE IT IS HEREBY ORDERED that:
1. No later than Thursday, June 29, 2006, Defendant
shall file a brief addressing the following two issues:
a. Whether the conception of the invention
claimed in the ‘716 patent was “work product" under the
definition given in Section 2 of the 1991 Agreement;
b. Whether the first sentence of Section 2 of the
1991 Agreement is a present assignment of future inventions or an
agreement to assign in the future;
2. No later than Friday, July 7, 2006, Plaintiff shall
file an answer to Defendant's brief;
3. No reply brief shall be filed.
.. 2000 T
DATE s ‘ 9*1*12 F JUDGE
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