Case 2:23-cv-01997-MCA-JSA Document 112 Filed 11/22/23 Page 1 of 3 PageID: 3635
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`Joseph D. Garrity, Esq.
`101 N.E. THIRD AVENUE, SUITE 1800
`FORT LAUDERDALE, FLORIDA 33301
` (954) 462-8000
`www.loriumlaw.com
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`November 22, 2023
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`VIA E-FILING
`Honorable Madeline Cox Arleo, U.S.D.J.
`Honorable Jessica S. Allen, U.S.M.J.
`U.S. District Court for the District of New Jersey
`Martin Luther King Jr. Building & U.S. Courthouse
`50 Walnut Street
`Newark, New Jersey 07102
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`Re: Monib Zirvi, M.D., Ph.D. v. Illumina, Inc. et al.
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`Civil Action No.: 23-1997-MCA/JSA
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`Your Honor Judge Allen,
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`This letter is regarding the filing of Illumina’s and Thermo Fisher’s Replies
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`filed on November 20, 2023, ECF No. 110 and ECF No. 111 respectively. Pursuant
`to Local Rule Local Rule 7.1(d)(6), Plaintiff Dr. Zirvi and the Undersigned Counsel
`files this Letter with the Court and requests Leave to file a Sur-Reply. The decision
`to grant leave to file a sur-reply is within the court's discretion. In Derieux v. FedEx
`Ground Package Sys., Civil 21-13645 (NLH)(EAP) (D.N.J. Jan. 20, 2023), the court
`specifically noted that “permission for leave to file a sur-reply is a matter ‘committed
`to the District Court's sound discretion.’” In Derieux, the court noted that courts in
`the district have granted leave “to address new issues in the interest of completeness,
`for complicated and novel legal questions, or for unusual circumstances.” Id. fn. 1.
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`The Plaintiff and Undersigned Counsel believe the issues contained in Present
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`Litigation meet the requirements of Derieux in that the issues are complicated and
`unusual circumstances exist where there are claims related to non-moving Defendant
`Attorneys and both Illumina and Thermo Fisher failed to address the alternative
`relief sought by Dr. Zirvi, leave to amend, which will be addressed in the requested
`Sur-Reply.
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`There is a myriad of issues raised in the Motions and Replies that need further
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`clarification, including but not limited to res judicata. Plaintiff and the Undersigned
`Counsel seek to clarify issues, including res judicata in a Sur-Reply. The application
`of res judicata was previously argued against as: (a) the nucleus of operative facts
`being different; (b) the discovery of prior unknown facts; (c) facts that did not occur
`prior; (d) identification of new parties; and (d) damages that accrued after prior
`litigation and that were of a continuing nature. However, the Replies indicate that
`there was no response to the same. This issue along with the other issues raised in
`the Replies deserve fulsome briefing prior to a decision of great magnitude on all
`parties.
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`Plaintiff and the Undersigned Counsel believe that the issue has been
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`addressed several times and seek to clarify the same in this Sur-Reply. However,
`given the pronouncements by both Illumina and Thermo Fisher to the opposite, more
`briefing on the subject should be allowed to overcome said arguments.
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`The Present Case, while containing overlapping facts, clearly shifted the
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`center of the operative facts to different events than any prior litigation to which Dr.
`Zirvi was a party. The Present Case operative facts stem from the acts in the Cornell
`Litigation and not the theft of trade secrets decades prior. The resolution of the
`Cornell Litigation is at the heart of the Present Case. The resolution of the Cornell
`Litigation did not occur until the SDNY Litigation was well underway. In addition,
`all the Defendants in the Present Case withheld the terms of the resolution of the
`Cornell Litigation. Terms which included monetary payment in an amount far less
`than Dr. Zirvi was entitled to receive. Resolution of the Cornell Case included an
`unknown transfer of rights and restrictions between the parties, including upon
`information and belief, a right for Illumina to continue to have Dr. Zirvi’s inventive
`ZipCode technology within its patents and products without challenge. However,
`royalties to Dr. Zirvi, and other co-inventors, would have continued beyond any
`previously filed litigation.
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`The withholding of the terms of the settlement agreements and redaction of
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`other documents in this case, which Plaintiff and the Undersigned believe needs
`further briefing are a prime example of the unusual circumstances as identified in
`Derieux.
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`While Illumina and Thermo Fisher have stated in their Replies that everything
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`was done in the public’s view, including collaboration on “Ampliseq for Illumina”
`announced in January & Feb. 2018, the extent and origin of the secret deals was not
`publicly known. Only in 2020, did it become clearer by Marc Casper’s statement
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`Case 2:23-cv-01997-MCA-JSA Document 112 Filed 11/22/23 Page 3 of 3 PageID: 3637
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`that the collaboration was more extensive and began earlier than then public
`announcements around 2018, insinuating that they went back to only 2017. There
`is now new evidence the secret collaboration started in 2015, or even earlier, prior
`to the Markman hearings in the Cornell v. Illumina case. This continued throughout
`the settlement of the Cornell Litigation and moved the needle regarding the claims
`in the Present Case.
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`WHEREFORE, given the complexity of the issues and the seriousness of
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`Illumina’s and Thermo Fisher’s request, and their very recently filed Replies ECF
`No. 110 and 111 filed on November 20, 2023, Dr. Zirvi's and the Undersigned
`Counsel request until Tuesday November 28th (given the Thanksgiving Day
`weekend) to file a Sur-Reply pursuant to Local Rule Local Rule 7.1(d)(6).
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`Sincerely,
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`Joseph D. Garrity, Esq.
`For The Firm
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