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`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
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`MONIB ZIRVI,
`
` Plaintiff,
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`Case No. 2:23-cv-01997-MCA-JSA
`
`Honorable Madeline Cox Arleo
`United States District Court Judge
`
`v.
`
`
`ILLUMINA, INC., THERMO FISHER
`SCIENTIFIC, AKIN GUMP STRAUSS
`HAUER & FELD LLP, LATHAM &
`WATKINS, RIP FINST, SEAN BOYLE,
`MATTHEW A. PEARSON, ANGELA
`VERRECCHIO, ROGER CHIN, and
`DOUGLAS LUMISH,
`
` Defendants.
`
`
`
`
`
`
`
`
`REPLY IN SUPPORT OF ILLUMINA INC.’S
`MOTION TO DISMISS PLAINTIFF’S COMPLAINT,
`AND ILLUMINA INC.’S MOTION TO STRIKE
`
`
`
`
`Case 2:23-cv-01997-MCA-JSA Document 80 Filed 09/11/23 Page 2 of 22 PageID: 1861
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`
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`TABLE OF CONTENTS
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`INTRODUCTION ..................................................................................................... 1
`
`ARGUMENT ............................................................................................................. 2
`
`I.
`
`II.
`
`THE CLAIMS AGAINST ILLUMINA ARE BARRED BY RES
`JUDICATA ...................................................................................................... 2
`
`THE CLAIMS AGAINST ILLUMINA ARE TIME-BARRED .................... 7
`
`A.
`
`The Statute of Limitations Bars the Conspiracy Claim (Count
`IV) .......................................................................................................... 7
`
`B.
`
`The Doctrine of Laches Bars the Section 256 Claim (Count I) ............ 8
`
`III. THE COMPLAINT FAILS TO STATE A CLAIM AGAINST
`ILLUMINA .................................................................................................... 11
`
`A.
`
`The Complaint Fails to State a Section 256 Inventorship Claim ........ 11
`
`
`
`
`
`Plaintiff Lacks Standing to Bring a Section 256 Claim ............ 11
`
`Plaintiff Has Not Alleged A Viable Inventorship Claim .......... 12
`
`B.
`
`The Complaint Fails to State a Civil Conspiracy Claim ..................... 13
`
`IV. ABSENT FULL DISMISSAL, THE COURT SHOULD STRIKE
`CERTAIN ALLEGATIONS. ........................................................................ 15
`
`CONCLUSION ........................................................................................................ 15
`
`
`
`i
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`
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`
`
`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
`
`Beco Dairy Automation, Inc. v. Global Tech. Sys., Inc.,
`No. 12-cv-01310, 2015 WL 925588 (E.D. Cal. Mar. 3, 2015) .......................... 12
`
`Ohio ex rel. Boggs v. City of Cleveland,
`655 F.3d 516 (6th Cir. 2011) ............................................................................ 6, 7
`
`Chou v. Univ. of Chi.,
`254 F.3d 1347 (Fed. Cir. 2001) .......................................................................... 12
`
`Cornell Univ. v. Illumina, Inc.,
`No. 10-433, 2018 WL 1605142 (D. Del. Mar. 29, 2018) ................................... 15
`
`Eastman v. Apple, Inc.,
`No. 18-cv-05929, 2019 WL 1559015 (N.D. Cal. Apr. 10, 2019) ...................... 13
`
`Elbert v. Carter,
`903 F.3d 779 (8th Cir. 2018) ................................................................................ 4
`
`Elkadrawy v. Vanguard Grp., Inc.,
`584 F.3d 169 (3d Cir. 2009) ......................................................................... 2, 3, 6
`
`Esso Standard Oil Co. v. Lopez-Freytes,
`522 F.3d 136 (1st Cir. 2008) ............................................................................... 14
`
`Fed. Nat’l Mortg. Ass’n v. DuBois,
`No. 15-3787, 2018 WL 5617566 (D.N.J. Oct. 30, 2018) ..................................... 4
`
`Feuss v. Enica Eng’g, PLLC,
`No. 20-02034, 2021 WL 1153146 (D.N.J. Mar. 26, 2021) ................................ 11
`
`Gambocz v. Yelencsics,
`468 F.2d 837 (3d Cir. 1972) ................................................................................. 4
`
`Giercyk v. Nat’l Union Fire Ins. Co. of Pittsburgh,
`No. 13-6272, 2015 WL 7871165 (D.N.J. Dec. 4, 2015) .................................... 14
`
`James v. j2 Cloud Servs. Inc.,
`No. 1:16-cv-05769, 2019 WL 2304157 (C.D. Cal. May 29, 2019) ..................... 9
`
`ii
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`
`
`TABLE OF AUTHORITIES
`
`Larson v. Correct Craft, Inc.,
`569 F.3d 1319 (Fed. Cir. 2009) .......................................................................... 12
`
`Page(s)
`
`Lubrizol Corp. v. Exxon Corp.,
`929 F.2d 960 (3d Cir. 1991) ................................................................................. 4
`
`Lucky Brand Dungarees, Inc. v. Marcel Fashions, Grp., Inc.,
`140 S. Ct. 1589 (2020) .......................................................................................... 5
`
`Nevada v. United States,
`463 U.S. 110 (1983) .............................................................................................. 6
`
`O’Neal v. Middletown Twp.,
`No. 3:18-cv-5269, 2019 WL 77066 (D.N.J. Jan. 2, 2019) ............................... 2, 9
`
`Pro Mktg. Sales, Inc. v. Secturion Sys., Inc.,
`No. 1:19-cv-00113, 2020 WL 5912351 (D. Utah Oct. 6, 2020) ........................ 13
`
`Red Carpet Studios v. Midwest Trading Grp., Inc.,
`No. 1:12-cv-501, 2016 WL 5661681 (S.D. Ohio Sept. 30, 2016) ..................... 10
`
`SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC,
`580 U.S. 328 (2017) .............................................................................................. 9
`
`Serdarevic v. Advanced Med. Optics, Inc.,
`532 F.3d 1352 (Fed. Cir. 2008) ........................................................................ 8, 9
`
`Serdarevic v. Advanced Med. Optics, Inc.,
`No. 06-cv-7107, 2007 WL 2774177 (S.D.N.Y. Sept. 25, 2007) ........................ 10
`
`Vaupel Textilmaschinen KG v. Meccanica Euro Italia S.P.A.,
`944 F.2d 870 (Fed. Cir. 1991) ............................................................................ 10
`
`Williams v. Lendkey Techs., Inc.,
`No. 16-3101, 2017 WL 11608532 (D.N.J. Mar. 23, 2017) ................................ 12
`
`Zenith Radio Corp. v. Hazeltine Research, Inc.,
`395 U.S. 100 (1969) .............................................................................................. 9
`
`Zirvi v. Flatley,
`433 F. Supp. 3d 448 (S.D.N.Y. 2020) .................................................................. 7
`
`iii
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`
`
`TABLE OF AUTHORITIES
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`Page(s)
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`Rules
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`L. Civ. R. 7.2(d) ......................................................................................................... 1
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`
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`iv
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`
`
`INTRODUCTION
`
`Plaintiff’s Opposition, which exceeds the page limit,1 only confirms that the
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`claims against Illumina should be dismissed. Res judicata is dispositive. Plaintiff
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`concedes that the doctrine “prevents litigation of all issues that were, or could have
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`been, raised in a prior action.” Opp. 20 (ECF No. 78) (emphasis added). Plaintiff
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`also concedes that his allegations in this case “involve misappropriation of ZipCode
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`technology,” “intellectual property misappropriation,” and a supposed “conspiracy
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`to coverup the misappropriation.” Opp. 15, 17. That is exactly (and literally) what
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`he alleged in the SDNY litigation. Plaintiff does not dispute the overlapping
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`allegations in this case and the SDNY litigation, and does not even address the pages-
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`long table detailing that overlap through side-by-side comparisons and citations.
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`MTD 7–9 (ECF No. 63-1). Because the claims here were or “could have been
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`brought” in the SDNY litigation, the Complaint should be dismissed with prejudice.
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`Plaintiff’s Opposition has no good response. It makes no legal difference that
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`Plaintiff has attached a new theory of recovery to the same allegations asserted years
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`ago, or that he has added new defendants to the conspiracy claim in this case. Nor
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`does Plaintiff have “new evidence” (Opp. 17, 38) that would preclude res judicata:
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`the same allegations that he calls “new” are actually recycled from his previous
`
`
`1 Plaintiff’s brief is in 12-point font. The local rules provide that, in “12-point
`proportional font,” the page limit is 30 pages. L. Civ. R. 7.2(d). Plaintiff’s brief is
`thus out of compliance, and Plaintiff did not seek leave for more pages.
`
`1
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`
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`
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`cases. And Plaintiff flat-out misrepresents numerous cases, including the controlling
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`decision in Elkadrawy v. Vanguard Grp., Inc., 584 F.3d 169 (3d Cir. 2009), in which
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`he quotes from the Third Circuit’s description of a district court holding—passing
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`it off as though it is the court of appeals’ holding—when, in truth, the Third Circuit
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`explicitly “disagree[d]” with the district court. Id. at 174.
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`Plaintiff’s responses to Illumina’s other arguments for dismissal are no better.
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`Plaintiff simply attempts to defend the conclusory allegations from the Complaint
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`by making equally conclusory arguments in the Opposition. That is insufficient.
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`Illumina requests that the Court grant its motion and dismiss the case with prejudice
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`based on res judicata (both claims); statute of limitations (conspiracy); laches (§ 256
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`inventorship); and failure to state a clam (both claims).
`
`ARGUMENT
`
`I.
`
`THE CLAIMS AGAINST ILLUMINA ARE BARRED BY RES
`JUDICATA
`
`Illumina’s opening brief explained why this case should be dismissed on a
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`straightforward application of res judicata—laying out the blatant duplication
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`between this Complaint and the SDNY litigation and citing well-settled legal
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`principles. MTD 7–9, 14–19. Plaintiff’s Opposition does not even address, much
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`less dispute, the duplication between the cases. Thus, Plaintiff has conceded the
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`factual overlap. See O’Neal v. Middletown Twp., No. 3:18-cv-5269, 2019 WL
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`77066, at *3 (D.N.J. Jan. 2, 2019) (plaintiffs “conceded the point” by failing “to
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`2
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`
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`
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`present any substantive argument in opposition to Defendants’ argument”)
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`(collecting cases). This case and the SDNY litigation undisputedly involve a
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`common nucleus of operative facts, so res judicata applies. MTD 7–9, 14–19.
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`Despite that fatal omission, in scattered places, the Opposition purports to
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`contest all three elements of res judicata and to offer additional excuses for the
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`doctrine’s inapplicability. All of those arguments fail.
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`On the first element, Plaintiff declares that “[t]here has never been a judgment
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`on the merits” of his claims. Opp. 9. But Plaintiff concedes that the Second Circuit
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`“upheld a statute of limitations defense” in the SDNY litigation, id., and binding
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`precedent holds that “a dismissal on statute-of-limitations grounds” is “a judgment
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`on the merits,” Elkadrawy, 584 F.3d at 173. Unable to avoid that clear holding,
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`Plaintiff flagrantly misstates it. Quoting from Elkadrawy, Plaintiff says “res judicata
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`did not apply” where a statute of “limitation that required dismissal of the first
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`complaint was inapplicable to” a second claim. Opp. 11–12. But that quotation is
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`the Third Circuit’s description of the district court’s decision, with which the Third
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`Circuit expressly “disagree[d].” 584 F.3d at 174 (emphasis added). Plaintiff’s
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`misrepresentation is egregious.
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`On the second element, Plaintiff claims that “the Defendants are not identical
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`in the two cases.” Opp. 13. But the only “Defendant” that matters in this motion is
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`Illumina. And Illumina is “a named party” in both suits—meaning that “there is no
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`3
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`
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`question that the claims” asserted against Illumina are “subject to res judicata”
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`despite “[n]ew parties” being “added.” Fed. Nat’l Mortg. Ass’n v. DuBois, No. 15-
`
`3787, 2018 WL 5617566, at *7–8 (D.N.J. Oct. 30, 2018). In any event, Plaintiff is
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`wrong on the law. He cannot “avoid … res judicata by the simple expedient of not
`
`naming all possible defendants in his first action.” Elbert v. Carter, 903 F.3d 779,
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`784 (8th Cir. 2018) (cleaned up); see also Gambocz v. Yelencsics, 468 F.2d 837,
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`839–42 (3d Cir. 1972) (precluding second suit against same defendants where “the
`
`sole material change” was “the addition of [new] defendants”).
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`On the third element—whether the two cases involve the same claims—
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`Plaintiff’s Opposition is again wrong on the law. He argues that the SDNY litigation
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`“was a trade secret lawsuit” and that there has never been a merits judgment
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`“regarding [Plaintiff] having not been named as an inventor on the patents at issue.”
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`Opp. 9, 13; see also id. at 31 (claiming “new and different causes of action”). But
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`“[a] mere difference in the theory of recovery is not dispositive.” Lubrizol Corp. v.
`
`Exxon Corp., 929 F.2d 960, 964 (3d Cir. 1991). Plaintiff concedes this very principle
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`when he states that res judicata “prevents [re]litigation of all issues that were, or
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`could have been, raised in a prior action.” Opp. 20 (emphasis added). Exactly—
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`and he could have raised (and did raise) the same issues in the SDNY litigation.
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`There was a judgment on the merits of Plaintiff’s trade secret claim, and that claim
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`arises from the same exact underlying alleged facts repeated here.
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`4
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`
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`Plaintiff otherwise misunderstands Illumina’s position. Accusing Illumina of
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`“neglect[ing] the nuanced understanding of res judicata,” Plaintiff says “[i]t is
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`overly simplistic to assert that … all potential claims from [Plaintiff] are precluded.”
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`Opp. 20–21. But Illumina never said “all potential claims” are precluded. Instead,
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`Illumina said—and Plaintiff agrees—that serial claims are precluded “when they
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`arise from the same transaction, or involve a common nucleus of operative facts.”
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`Lucky Brand Dungarees, Inc. v. Marcel Fashions, Grp., Inc., 140 S. Ct. 1589, 1594–
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`95 (2020) (cleaned up). That principle applies for Plaintiff’s claims against Illumina.
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`Plaintiff’s final argument is that he “could not have” brought his current
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`claims in his prior lawsuits because they are based on “new evidence.” Opp. 17, 31.
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`That again is false—nothing here is new. A review of the comparison chart (MTD
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`7–9) makes that abundantly clear. Yet, Plaintiff ignores the chart and points to
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`information allegedly obtained in FOIA requests, citing to paragraphs 21, 40, and 43
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`of the current Complaint. Opp. 12. Those cited paragraphs raise allegations about
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`the “Ampliseq” product, the Joint Development Agreement and allegedly
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`“purloined” “Illumacodes,” and the conduct of the defendant attorneys in the Cornell
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`Delaware case. All of that was alleged in the SDNY litigation, MTD 7–9, 18 (citing
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`SDNY SAC paragraphs), and/or has nothing to do with Illumina.2
`
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`2 Plaintiff’s additional explanations prove the point. To support the notion that he
`“could not have” brought these claims previously, Plaintiff states that it “was after
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`5
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`Plaintiff also points to “unredacted” grant applications from the FOIA case,
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`Opp. 13–15, but those documents discuss the same ZipCode and Universal Array
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`technology that underlies Plaintiff’s prior suits. Plus, the same “NIH grant
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`1U54HG002753” cited in this case appears in the SDNY complaint. SDNY SAC
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`¶ 439 (alleging Plaintiffs “discovered” this grant “through their post April 2017
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`investigation”). Plaintiff also contends that “unredacted” grant materials “revealed
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`the use of 16 ZipCode sequences”—the same allegations he made in SDNY.3 But
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`“[e]ven crediting” this “set of facts as ‘new,’” res judicata still applies when, as here,
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`the claims “involve fundamentally similar issues” and the underlying allegations are
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`“connected.” Elkadrawy, 584 F.3d at 173–174.
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`Plaintiff’s putative case support for this “new facts” exemption to res judicata
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`only confirms his overreach. His first case is Nevada v. United States, 463 U.S. 110
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`(1983). That case held that res judicata applied to bar an attempt to assert the “same
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`… right[s]” against defendants who “were parties to [an] earlier” case. Id. at 134–
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`38. The same is true here. Plaintiff’s second case is Ohio ex rel. Boggs v. City of
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`Cleveland, 655 F.3d 516, 518–19, 522–24 (6th Cir. 2011). But that case simply held
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`that claims resulting from future actions in 2004 and 2007 were not precluded by a
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`[the SDNY litigation] claim was dismissed that the legal malpractice cause of action
`was ripe for adjudication.” Opp. 31 (emphasis added). There is no “legal
`malpractice cause of action” asserted against Illumina, nor could there be.
`
`3 Compare Opp. 15–16, with SDNY SAC ¶¶ 34, 213, 215, 322, 325–26, 332, 369,
`373, 378, 424, 503, 516.
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`6
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`
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`litigation in 2002. Id. at 523. All of Plaintiff’s allegations here, by contrast, were or
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`could have been asserted in the earlier SDNY litigation, which arose out of the same
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`underlying alleged facts as this case.
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`II.
`
`THE CLAIMS AGAINST ILLUMINA ARE TIME-BARRED
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`A. The Statute of Limitations Bars the Conspiracy Claim (Count IV)
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`Plaintiff agrees that “a six-year statute of limitations applies,” Opp. 17, but
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`lodges two objections to its application here. Both are wrong.
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`First, Plaintiff disagrees that the clock began to run by 2010. Id. But the
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`SDNY court already decided this issue against Plaintiff, Zirvi v. Flatley, 433 F. Supp.
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`3d 448, 462 (S.D.N.Y. 2020), and that decision controls. MTD 20. Plaintiff also
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`ignores Illumina’s argument that this claim is too late even if Plaintiff learned about
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`the underlying conduct in 2015. MTD 20–21. In fact, Plaintiff admits that this claim
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`“is based on the actions of the parties during and after the Cornell v. Illumina
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`litigation.” Opp. 18.4 That is exactly what he said in SDNY in 2019, when he
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`claimed to have “learned about the conduct underlying the Complaint … during the
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`Cornell v. Illumina, Inc. litigation in 2015.” Zirvi, 433 F. Supp. 3d at 458; SDNY
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`SAC ¶¶ 502–04. Whether the clock started in 2010 or 2015, this claim was filed
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`more than six years later and is barred.
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`Second, Plaintiff argues that his delay should be excused for two reasons.
`
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`4 This assertion from the Opposition also reaffirms the overlap with the SDNY
`litigation and why res judicata applies.
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`7
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`Case 2:23-cv-01997-MCA-JSA Document 80 Filed 09/11/23 Page 13 of 22 PageID: 1872
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`
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`Opp. 18. Plaintiff’s first excuse is that he could not have been “aware that” Thermo
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`Fisher and Illumina were allegedly “working in concert with the Defendant
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`Attorneys” in the Cornell Delaware case. Id. But again, the SDNY complaint makes
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`identical allegations about that case and about the “the lawyers for ThermoFisher”—
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`i.e., the “Defendant Attorneys” here. MTD 9; SDNY SAC ¶¶ 7–9. Plaintiff’s
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`second excuse tries to blame the “group of defendants” for a delay by arguing that
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`the final judgment in SDNY “cemented the goal of conspiracy to bar Dr. Zirvi from
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`bringing an action.” Opp. 18. Plaintiff seems to contend that the final judgment
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`entered against him is part of the conspiracy, such that the limitations period should
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`be tolled until that prior litigation concluded. This theory is not in the Complaint,
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`comes with zero case authority in support, and is upside down: the final judgment in
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`SDNY actually demonstrates that this case is both precluded and time-barred.
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`B.
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`The Doctrine of Laches Bars the Section 256 Claim (Count I)
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`Illumina showed the presumption of laches applies and Plaintiff does not and
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`could not plead any basis to overcome it. MTD 21–23. In the Opposition, Plaintiff
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`does not dispute that each patent issued more than six years ago, triggering the
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`presumption of laches. And Plaintiff says nothing to rebut the clear prejudice to
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`Illumina, apart from the conclusory statement that laches “is inapplicable where the
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`delay does not prejudice the defendant.” Opp. 20. Because a defendant can
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`“remain[] utterly mute on the issue of prejudice,” Serdarevic v. Advanced Med.
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`8
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`
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`Case 2:23-cv-01997-MCA-JSA Document 80 Filed 09/11/23 Page 14 of 22 PageID: 1873
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`
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`Optics, Inc., 532 F.3d 1352, 1359–60 (Fed. Cir. 2008), and Plaintiff’s silence is a
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`failure to rebut the presumption, O’Neal, 2019 WL 77066, at *3, laches applies.
`
`Plaintiff offers two counterarguments, both of which are meritless. First,
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`Plaintiff claims that the defense is not available at all, because “the laches defense
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`has been overturned by the US Supreme Court” and “is no longer an available
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`defense to patent infringement damages.” Opp. 20. But this is not a claim for “patent
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`infringement damages”; it is a claim for correction of inventorship.5 That makes all
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`the difference. As the Supreme Court explained, “[l]aches is a gap-filling doctrine,
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`and where there is a statute of limitations, there is no gap to fill.” SCA Hygiene
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`Prods. Aktiebolag v. First Quality Baby Prods., LLC, 580 U.S. 328, 335 (2017).
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`Congress provided a six-year statute of limitations for patent infringement claims—
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`making laches inapplicable. Id. at 336. But Congress did not do so for correction
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`of inventorship claims, which are “of an equitable cast” and have no statute of
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`limitations. Id. at 335. For such claims, therefore, there remains a gap to fill, and
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`“the ‘principal application’ of laches … remains.” Id.; see James v. j2 Cloud Servs.
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`Inc., No. 1:16-cv-05769, 2019 WL 2304157, at *7 (C.D. Cal. May 29, 2019)
`
`(applying laches post-SCA Hygiene).
`
`
`5 Later, Plaintiff calls this lawsuit a “clear case of patent infringement,” Opp. 37–38,
`even though he has brought no such claim. His citation to Zenith Radio Corp. v.
`Hazeltine Res., Inc., 395 U.S. 100 (1969), Opp. 22, is inapposite for the same reason:
`that was a patent infringement case about a statute of limitations and discusses
`neither inventorship claims nor laches.
`
`9
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`
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`
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`Second, Plaintiff notes that “various excuses” may preclude the application of
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`laches and invokes the particular “excuse” of “other litigation” and “related court
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`action”—specifically, the SDNY litigation “and potentially even the Cornell v.
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`Illumina lawsuit”—as the reason for his delay. Opp. 20–22. Plaintiff gets the law
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`backwards. The “other litigation” justification for delay does not concern long-
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`concluded litigation, but proceedings like those “raising the issue of patent validity”
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`or “PTO proceeding[s] involving patentability.” Vaupel Textilmaschinen KG v.
`
`Meccanica Euro Italia S.P.A., 944 F.2d 870, 876–77 (Fed. Cir. 1991). This excuse
`
`is not available when, as here, a plaintiff is engaged in a “tactical manipulation of
`
`the legal process,” Serdarevic v. Advanced Med. Optics, Inc., No. 06-cv-7107, 2007
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`WL 2774177, at *5–8 & n.7 (S.D.N.Y. Sept. 25, 2007), and the patents have been
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`“discussed at length during [prior] proceedings,” Red Carpet Studios v. Midwest
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`Trading Grp., Inc., No. 1:12-cv-501, 2016 WL 5661681, at *4–5 & n.3 (S.D. Ohio
`
`Sept. 30, 2016).6 Nothing prevented Plaintiff from asserting his inventorship claim
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`in SDNY, and the time to bring this claim has long since passed.
`
`
`6 Plaintiff spends pages discussing Red Carpet, Opp. 22–24, but he misses every
`holding of the case. The court held: (1) a party “lack[ed] standing to bring its claims
`to correct inventorship”; (2) that party failed to adequately plead “collaboration” and
`thus did not state a claim; and (c) “any claim would be barred by the doctrine of
`laches.” Red Carpet, 2016 WL 5661681, at *3–4. The same holdings apply here.
`
`10
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`
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`Case 2:23-cv-01997-MCA-JSA Document 80 Filed 09/11/23 Page 16 of 22 PageID: 1875
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`
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`III. THE COMPLAINT FAILS TO STATE A CLAIM AGAINST
`ILLUMINA
`
`A. The Complaint Fails to State a Section 256 Inventorship Claim
`
`
`
`Plaintiff Lacks Standing to Bring a Section 256 Claim
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`Plaintiff must adequately allege standing, including that he himself suffered
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`an injury “tied to economic consequences.” Feuss v. Enica Eng’g, PLLC, No. 20-
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`02034, 2021 WL 1153146, at *3 (D.N.J. Mar. 26, 2021). The Opposition does not
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`resuscitate the Complaint’s failure to do so.
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`Plaintiff contends that the “Complaint draws a clear connection between
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`Illumina’s alleged patent infringements, the subsequent market dominance they
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`achieved, the overshadowing of his original contributions, and the financial
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`opportunities he was deprived of as a result.” Opp. 27. The first two categories are
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`utterly irrelevant, because Plaintiff’s claim has nothing to do with “patent
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`infringements” or “market dominance”; it is for correction of inventorship.
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`As for the other categories, the Opposition is just as conclusory as the
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`Complaint
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`itself.
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` The alleged “overshadowing of [Plaintiff’s] original
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`contributions” is just another way of alleging that he has suffered a reputational
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`injury, which is not enough. MTD 24–25 (citing cases). Plaintiff also asserts a right
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`to royalties (Opp. 27), but the Complaint alleges no facts to support that conclusory
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`statement and concedes that any such hypothetical royalties are “time-barred.”
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`Compl. ¶ 86 (ECF No. 1). Contrary to Plaintiff’s arguments, this case is analogous
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`to Larson v. Correct Craft, Inc., 569 F.3d 1319, 1326–27 (Fed. Cir. 2009) (plaintiff
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`would reap no financial reward from correction of inventorship), and contrasts with
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`Chou v. Univ. of Chic., 254 F.3d 1347, 1353, 1359 (Fed. Cir. 2001) (per “University
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`policy,” defendant was “obligated to provide” inventors “25% of the gross royalties
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`and … payments from licensing activities”). Finally, Plaintiff alludes to “not being
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`named” on certain “grants,” and unspecified “speaking engagements[] and increased
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`earning potential” as “financial opportunities he was deprived of.” Opp. 27, 30. But
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`none of these vague allegations are in the Complaint, so the Court can disregard
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`them. Williams v. Lendkey Techs., Inc., No. 16-3101, 2017 WL 11608532, at *1 n.1
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`(D.N.J. Mar. 23, 2017) (Arleo, J.).
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`Plaintiff Has Not Alleged A Viable Inventorship Claim
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`Count I also fails to state a claim because, among other things, Plaintiff makes
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`no claim-specific allegations about his alleged contributions. MTD 26–29.
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`For the most part, the Opposition continues to impermissibly lump all
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`52 Illumina patents together, alluding to what the “patents generally relate to.” Opp.
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`25–26, 28 (emphasis added). That is not enough. Plaintiff needed to provide the
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`“details of the patents” and the specific claimed inventions to “make the factual basis
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`for [his] claims apparent.” Beco Dairy Automation, Inc. v. Global Tech. Sys., Inc.,
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`No. 12-cv-01310, 2015 WL 925588, at *5 (E.D. Cal. Mar. 3, 2015). Plaintiff argues
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`that he need not “pinpoint[] specific contributions to each patent claim.” Opp. 25.
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`That is a red herring. Whether or not he needs to contribute to each claim, Plaintiff
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`does need to “identify” at least one claim to which he “made an inventive
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`contribution” for each of the 52 patents on which he seeks to be named an inventor.
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`Pro Mktg. Sales, Inc. v. Secturion Sys., Inc., No. 1:19-cv-00113, 2020 WL 5912351,
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`at *5 (D. Utah Oct. 6, 2020); Eastman v. Apple, Inc., No. 18-cv-05929, 2019 WL
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`1559015, at *3–4 (N.D. Cal. Apr. 10, 2019). The Complaint flunks that standard.
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`Plaintiff makes one attempt at greater specificity: he cites Exhibit 11 and
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`argues that it “clearly highlights the sections of the patent and the Claims among 1-
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`11 that involve Dr. Zirvi’s inventive contribution.” Opp. 28. It does not. To show
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`his purported “contribution” to the patent in Exhibit 11, the Complaint relies on a
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`single figure in an Illumina provisional application that supposedly shows the use of
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`Plaintiff’s “invention.” Compl. ¶ 51. But that figure is not part of the claimed
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`inventions because, as the Complaint concedes, it “is missing” from the patent. Id.
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`And again, Plaintiff does not identify the claimed invention, which is needed to even
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`make an assessment of whether the work supposedly reflected in the cited figure
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`contributed to the patent. In all events, any imagined “link” or “relationship”
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`between this one “alleged contribution[] and the ‘claimed invention’” is not remotely
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`specific enough, warranting dismissal. Eastman, 2019 WL 1559015, at *3–4.
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`B.
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`The Complaint Fails to State a Civil Conspiracy Claim
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`Illumina’s motion showed that Count IV fails to state a claim because, among
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`other things, it does not adequately allege any “agreement” between defendants and
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`because it does not adequately allege Illumina’s involvement. MTD 29–30. The
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`Opposition does not refute either point.
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`First, Plaintiff seemingly concedes that the Complaint “fail[s] to name specific
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`acts on specific dates” but argues that it does not matter because Illumina “overlooks
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`the legal principle that” he need not “detail[] every facet of the agreement.” Opp.
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`19.7 But Plaintiff details nothing of the alleged agreement. And the requirements
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`for pleading a conspiracy are well established: a complaint must specify “what the
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`terms were of the agreement, when the alleged conspiracy took place, [and] how the
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`conspirators reached their agreement.” Giercyk v. Nat’l Union Fire Ins. Co. of
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`Pittsburgh, No. 13-6272, 2015 WL 7871165, at *9 n.4 (D.N.J. Dec. 4, 2015) (Arleo,
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`J.). This Complaint does not do that.
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`Second, Plaintiff contends that there is no issue with his failure to make any
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`specific allegations about Illumina. In particular, he says that it “matters not that
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`Illumina claims its part is not mentioned enough in the Complaint” because “[t]here
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`are no small parts in a conspiracy.” Opp. 33. Suffice it to say, that this is not an
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`accurate statement about the pleading standards. Not only that, but the punchline
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`7 To support this “legal principle,” Plaintiff again misrepresents a case. He cites
`Esso Standard Oil Co. v. Lopez-Freytes, 522 F.3d 136 (1st Cir. 2008), an out-of-
`circuit case mainly about an abstention doctrine and a constitutional due process
`claim—a conspiracy claim and its pleading requirements are not mentioned.
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`14
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`from Plaintiff’s own summary of his claim is this: “ThermoFisher, in a conspiracy
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`with attorneys from Akin Gump and Latham Watkins, deliberately excluded [a]
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`seminal patent” and a business agreement “from the court” in the Cornell Delaware
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`case. Opp. 31–32 (emphasis added). That says nothing about any Illumina conduct.
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`Courts dismiss conspiracy counts, which require a heightened pleading standard
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`under Rule 9(b), in exactly these circumstances. MTD 30 (citing cases). And as
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`Judge Stark previously concluded, there is no “actual[ ] evidence” of fraud, just
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`“speculative allegations.” Cornell Univ. v. Illumina, Inc., No. 10-433, 2018 WL
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`1605142, at *4 n.7 (D. Del. Mar. 29, 2018). So too here, despite years of litigation.
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`IV. ABSENT FULL DISMISSAL, THE COURT SHOULD STRIKE
`CERTAIN ALLEGATIONS
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`If the Court does not dismiss both claims against Illumina, it should strike
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`certain irrelevant and prejudicial allegations. MTD 31–32. The Opposition tries to
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`show that these allegations are “relevant,” Opp. 33–36, but its winding exposition
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`only confirms that Plaintiff has no coherent explanation for why the allegations
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`belong in this case. Worse still, Plaintiff tries to add even more irrelevant statements
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`by referring to Illumina’s “former CEO” and his “divorce proceedings.” Opp. 35 &
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`n.17. This is highly improper, and the Court should not allow it.
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`CONCLUSION
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`For the fore