Case 2:23-cv-01997-MCA-JSA Document 64 Filed 08/07/23 Page 1 of 5 PageID: 1645
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`Ironside Newark
` 110 Edison Place, Suite 302
`Newark, New Jersey 07102
` Tel: 973.690.5400 Fax: 973.466.2761
`www.rwmlegal.com
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`August 7, 2023
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`
`VIA ECF
`Hon. Jessica S. Allen, U.S.M.J.
`United States District Court
`MLK Jr. Federal Bldg. and U.S. Courthouse
`50 Walnut Street
`Newark, NJ 07102
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`Zirvi v. Illumina, Inc., et al.
`Re:
`2:23-cv-1997-MCA-JSA
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`Dear Judge Allen:
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`My firm, along with Sidley Austin LLP, represents Defendant Illumina, Inc. (“Illumina”)
`in the above-referenced matter. Illumina respectfully submits this letter in support of a stay of
`discovery with respect to Illumina pending a decision on Illumina’s recently-filed motion to
`dismiss (ECF No. 63). As set forth in more detail below, good cause exists for a stay, and
`expending the Court’s and the parties’ resources on discovery now would be wasteful. Indeed,
`any minor inconvenience from a short pause would pale in comparison to the inefficiencies and
`prejudice that would inure to Illumina if discovery were to proceed.
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`Illumina has requested Plaintiff to consent to the requested stay, but Plaintiff has not
`responded to Illumina’s request.
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`I.
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`GOOD CAUSE EXISTS TO STAY DISCOVERY PENDING RESOLUTION OF
`ILLUMINA’S MOTION TO DISMISS
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`Under Fed. R. Civ. P. 26(c), the Court has discretion to stay discovery for good cause.
`See e.g., Burress v. Freedom Mortg. Corp., No. 20-15242 (NLH/AMD), 2021 WL 2661254, at
`*3 (D.N.J. March 26, 2021). To decide whether there is good cause, the Court should consider
`whether: “(1) a stay would unduly prejudice or present a clear tactical disadvantage to the non-
`moving party; (2) denial of the stay would create a clear case of hardship or inequity [for the
`moving party]; (3) a stay would simplify the issues and the trial of the case; and (4) discovery is
`complete or a trial date has been set.” Eye Care Ctr. of N.J., P.A. v. Twin City Fire Ins. Co., No.
`20-cv-05743-KM-ESK, 2020 WL 7227186, at *2 (D.N.J. Nov. 20, 2020); see also Actelion
`Pharms. Ltd. v. Apotex Inc., Civ. No. 12-5743 (NLH/AMD), 2013 WL 5524078, at *3 (D.N.J.
`Sept. 6, 2013).
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`The Third Circuit has stated that Rule 12(b)(6) motions “should typically be resolved
`before discovery begins.” Ghaffari v. Wells Fargo Bank NA, 621 F. App’x 121, 124 (3d Cir.
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`2015). Courts therefore regularly stay discovery pending resolution of a motion to dismiss. See,
`e.g., Eye Care Ctr., 2020 WL 7227186, at *2 (staying discovery pending a motion to dismiss);
`Actelion, 2013 WL 5524078, at *3–7 (same). All of the factors demonstrate that good cause
`exists to do so here.
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`A.
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`Factor 3: Illumina’s Motion to Dismiss Will Narrow or Outright Eliminate
`The Claims Directed to Illumina.
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`When a “dispositive motion is pending,” courts considering a stay ask whether the
`motion “‘appear[s] to have substantial grounds or, stated another way, do[es] not appear to be
`without foundation in law.’” High 5 Games, LLC v. Marks, No. 2:13-CV-07161-JMV-MF, 2018
`WL 4462477 at *3 (D.N.J. Sep. 18, 2018). Even more to the point, a stay of discovery while
`evaluating a motion to dismiss is appropriate where “discovery would be futile” if the motion is
`granted. Mann v. Brenner, 375 F. App’x 232, 239 (3d Cir. 2010). “That is precisely the case
`here.” Id.
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`Plaintiff asserts two claims against Illumina—one for correction of inventorship and one
`for civil conspiracy. As set out in Illumina’s motion to dismiss (ECF No. 63), Illumina’s
`arguments have ample “foundation in law,” High 5 Games, 2018 WL 4462477 at *3, and both of
`Plaintiff’s claims fail for multiple reasons.
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`First, all claims asserted against Illumina are barred by res judicata. Five years ago,
`Plaintiff sued Illumina in the SDNY for misappropriation of trade secrets and civil conspiracy,
`and Plaintiff lost on the merits. See Zirvi v. Flatley, 433 F. Supp. 3d 448 (S.D.N.Y), aff’d, 838 F.
`App’x (2d Cir. 2020). Because Plaintiff’s allegations here are “based on the exact same facts,” it
`is “immaterial that [he] is presenting a different legal theory” in this case. Bidlingmeyer v.
`Broadspire, Civ. No. 11-6144, 2012 WL 2344862, at *5 (D.N.J. June 19, 2019) (granting
`judgment on the pleadings). Res judicata therefore applies and precludes any need for discovery.
`See ECF No. 63-1, at 14–19. Moreover, the SDNY dismissed the prior case in its entirety, and
`the Second Circuit affirmed, based on the same core allegations as here. Illumina’s motion to
`dismiss (ECF No. 63) thus has substantial grounds.
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`Second, Plaintiff’s claims are time-barred. A six-year statute of limitations precludes
`Count IV (civil conspiracy) because as Judge Koelte of SDNY concluded, Plaintiff should have
`known about the alleged misconduct by “no later than 2010.” Zirvi, 433 F. Supp. 3d at 462; see
`ECF No. 63-1, at 19–21. And the doctrine of laches bars Count I (correction of inventorship)
`because each of the patents for which Plaintiff seeks co-inventorship issued more than six years
`ago. ECF No. 63-1, at 21–23.
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`Third, both claims should be dismissed because Plaintiff does not adequately plead
`several required elements of the causes of action. Id. at 23–30 (detailing pleading failures).
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`Courts in this District have repeatedly acknowledged that, when “a pending motion to
`dismiss” “may result in a narrowing or outright elimination of discovery,” “the balance [of
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`competing interests] generally favors granting a motion to stay.” Actelion, 2013 WL 5524078, at
`*5; Gibly v. Best Buy Co., No. 21-14531, 2022 WL 2413906, at *3 (D.N.J. Mar. 7, 2022) (same);
`Baquero v. Mendoza, No. 18-15081, 2019 WL 13250988, at *2 (D.N.J. Mar. 13, 2019) (same).
`Illumina respectfully submits that the pending motion will result in at least a narrowing, if not an
`“outright elimination of discovery,” warranting a stay.
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`B.
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`Factor 2: Starting Discovery Now Will Cause Significant Hardship to
`Illumina.
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`If a stay is not granted, Illumina will suffer the “burden, expense, and distraction to
`business that discovery ordinarily generates (and which is commonly recognized)” in connection
`with Plaintiff’s meritless claims. Actelion, 2013 WL 5524078, at *4.
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`On their face, Plaintiff’s allegations indicate that discovery could be extensive and costly.
`With respect to the correction of inventorship claim, Plaintiff seeks to be added to 52 different
`Illumina patents. Compl. ¶ 45. Those patents have 29 different named inventors and were filed
`across a span of 15 years. Particularly because inventorship claims are analyzed on a “claim-by-
`claim” basis, the scope of potential discovery for these allegations could be vast. And Plaintiff’s
`wide-ranging—but unspecific—civil conspiracy claim would only add to the already-
`burdensome discovery.
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`Proceeding with discovery while the motion to dismiss is pending would waste judicial
`and party resources and impose an undue burden on Illumina.
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`C.
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`Factor 1: Zirvi Will Not Be Prejudiced by A Temporary Stay
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`For Plaintiff’s part, a stay of discovery pending resolution of Illumina’s motion to dismiss
`would not result in any unfair prejudice. The only prejudice that Plaintiff could plausibly assert
`is a temporary delay. But Plaintiff caused the much more significant delay here by waiting at
`least eight years to file this case after he knew about the underlying allegations. Even if
`Plaintiff’s conduct reflected some sense of urgency, “delay alone is not a sufficient reason to
`deny a stay.” MonoSol RX, LLC v. BioDelivery Scis. Int’l, Inc., No. 10-5695, 2012 WL 762501,
`at *10 (D.N.J. Mar. 7, 2012); see also Burress, 2021 WL 2661254, at *3 (“Delay inherently
`results from the issuance of a stay, but ‘mere’ delay does not, without more, necessitate a finding
`of undue prejudice and clear tactical disadvantage.”). In addition, no discovery occurred prior to
`dismissal in the previous SDNY case, thus, Plaintiff would not be unfairly prejudiced by a stay
`pending Illumina’s motion to dismiss in this case. Lastly, if Illumina’s motion is ultimately
`denied, “all of Plaintiff’s legal and equitable remedies will be available when the stay is lifted; a
`stay does not foreclose Plaintiff from any remedy.” MonoSol RX, 2012 WL 762501, at *10.
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`There is no colorable basis for Plaintiff to argue that a temporary stay pending resolution
`of Illumina’s motion to dismiss would cause any unfair prejudice or clear tactical disadvantage to
`Plaintiff.
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`D.
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`Factor 4: This Case Is in the Early Stages and No Trial Date Has Been Set
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`The final factor—“one of the most influential [] when deciding a motion to stay,” Onyx
`Enterprises Int’l Corp. v. Volkswagen Grp. of Am., Inc., No. 3:20-cv-09976, 2021 WL 1338731,
`at *6 (D.N.J. Apr. 9, 2021)—also weighs strongly in Illumina’s favor. It asks whether discovery
`is complete or a trial date has been set. The opposite is true here: the parties have conducted no
`discovery, no case schedule has been set, and no trial date is imminent or set. Anfibio v. Optio
`Sols. LLC, No. 20-cv-11146-CCC-ESK, 2020 WL 8483808, at *2 (D.N.J. Dec. 30, 2020); Eye
`Care Ctr., 2020 WL 7227186, at *2. Given “the relative infancy of this matter, the lack of
`discovery yet conducted, and the absence of a scheduled trial,” this factor supports a stay.
`Anfibio, 2020 WL 8483808, at *2; Eye Care Ctr., 2020 WL 7227186, at *2 (granting a stay).
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`II.
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`CONCLUSION
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`For the foregoing reasons, Illumina respectfully submits that discovery with respect to
`Illumina should be stayed pending resolution of Illumina’s motion to dismiss.
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`Respectfully submitted,
`
`/s/Keith J. Miller
`Keith J. Miller
`
`ROBINSON MILLER LLC
`Keith J. Miller
`Ironside Newark
`110 Edison Place, Suite 302
`Newark, NJ 07102
`Telephone: (973) 690-5400
`Fax: (973) 466-2761
`kmiller@rwmlegal.com
`
`SIDLEY AUSTIN LLP
`Bradford J. Badke
`Ching-Lee Fukuda
`787 Seventh Avenue
`New York, NY 10019
`Telephone: (212) 839-5300
`Fax: (212) 839-5599
`jbadke@sidley.com
`clfukuda@sidley.com
`
`SIDLEY AUSTIN LLP
`Joshua J. Fougere
`Adam Kleven
`1501 K Street NW
`Washington, DC 20005
`Telephone: (202) 736-8000
`Fax: (202) 736-8711
`jfougere@sidley.com
`akleven@sidley.com
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`Counsel for Defendant Illumina Inc.
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`CC: All counsel of record (via ECF)
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