`
`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
`
`Civil Action No.
`2:23-cv-01997-MCA-JSA
`
`Filed Electronically
`
`Oral Argument Requested
`
`MONIB ZIRVI, M.D., Ph. D.
`
`Plaintiff,
`
`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.
`
`PLAINTIFF’S RESPONSE BRIEF IN OPPOSITION OF
`DEFENDANTS’ MOTIONS TO DISMISS
`[ECF NO. 82-1] and [ECF NO. 84-1]
`
`1
`
`
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`Case 2:23-cv-01997-MCA-JSA Document 92 Filed 10/02/23 Page 2 of 44 PageID: 2216
`
`Contents
`PRELIMINARY STATEMENT ................................................................................ 5
`
`ALLEGATIONS FROM THE COMPLAINT .......................................................... 7
`
`ALLEGATIONS FROM THE DECLARATION OF DR. ZIRVI ..........................12
`
`DR. ZIRVI IS NOT SUING FOR TRADE SECRET THEFT ............................13
`
`ARGUMENT ...........................................................................................................27
`
`I. THE COMPLAINT STATES A CLAIM ......................................................27
`
`A. Legal Standard For A Motion To Dismiss ..............................................27
`
`B. No Claim Preclusions Bar Zirvi’s Claims ...............................................28
`
`C. No Issue Preclusions Bars Dr. Zirvi’s Claims. ...........................................30
`
`D. Dr. Zirvi Has A Protectable Interest Under 35 U.S.C. § 256 ..................33
`
`E. Zirvi Has Pleaded The Existence Of An Attorney-Client Relationship ..34
`
`II. FRAUD IS PLEAD WITH ENOUGH SPECIFICITY ...................................39
`
`III. THIS MATTER SHOULD NOT BE TRANSFERRED. ...............................42
`
`IV. CONCLUSION ..............................................................................................44
`
`CERTIFICATE OF SERVICE ................................................................................44
`
`2
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`
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`
`Cases
`
`Ashcroft v. Iqbal, 556 U.S. 662 (2009) ....................................................................40
`Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) ............................................................27
`Beasley v. Howard, 14 F.4th 226, 232 (3d Cir. 2021) .............................................28
`Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) ....................................................40
`Bensel v. Allied Pilots Ass'n, 387 F.3d 298, 310 (3d Cir. 2004)..............................32
`Blonder-Tongue Labs., 402 U.S. at 331, 333, 91 S.Ct. 1434 ..................................32
`Burger King Corp. v. Rudzewicz, 471 U.S. 462 (1985) ...........................................36
`Burlington Northern Railroad Co. v. Hyundai Merck Marine Co., 63 F.3d 1227,
`1231-32 (3d Cir.1995) ..........................................................................................30
`CoreStates Bank, N.A. v. Huls Am., Inc., 176 F.3d 187, 194 (3d Cir. 1999) ..........29
`CoreStates Bank, N.A. v. Huls America, Inc., 176 F.3d 187, 194 (3d Cir. 1999) ...29
`Foman v. Davis, 371 U.S. 178, 182, 83 S.Ct. 227, 9 L.Ed.2d 222 (1962) ..............33
`Greater Area Inc. v. Bookman, 657 P.2d 828, 829 (Alaska 1982) ..........................38
`Grunwald v. Bronkesh, 131 N.J. 483, 494-95, 621 A.2d 459, 464 (1993) ..............39
`Hennekens v. Hoerl, 160 Wis.2d 144, 465 N.W.2d 812, 816 (1991) ......................38
`Hood, 93 N.M. 433, 601 P.2d 66, 67 (1979 .............................................................38
`In re Burlington Coat Factory, 114 F.3d 1410, 1418 (3d Cir. 1997) ......................40
`In re Graham, 973 F.2d 1089, 1097 (3d Cir.1992) .................................................30
`In re Healthcare Real Est. Partners, LLC, 941 F.3d 64, 72 (3d Cir. 2019) (quoting
`Mullarkey, 536 F.3d at 225) .................................................................................28
`In re Loring, 73 N.J. 282, 289-90, 374 A.2d 466 (1977) ........................................37
`In re Palmieri, 76 N.J. 51, 58-59 (1978) .................................................................35
`In re Silverman, 113 N.J. 193, 207 (1998) ..............................................................34
`Kaye v. Rosefielde, 432 N.J. Super. 421, 477 (App. Div. 2013) .............................34
`Knight v. Furlow, 553 A.2d 1232, 1234 (D.C.App.1989) .......................................38
`Laird v. Blacker, 235 Cal.App.3d 1795, 279 Cal.Rptr. 700, 701, aff'd, 2 Cal.4th
`606, 7 Cal.Rptr.2d 550, 552, 828 P.2d 691, 693 (1992) .......................................38
`Lawlor v. Nat'l Screen Serv., 349 U.S. 322 (1955)..................................................29
`Luick v. Rademacher, 129 Mich.App. 803, 342 N.W.2d 617, 619 (1983) ..............38
`Magic World, Inc. v. Icardi, 483 So.2d 815, 817 (Fla.App.1986) ..........................38
`Massachusetts Elec. Co. v. Fletcher, Tilton & Whipple, 394 Mass. 265, 475 N.E.2d
`390, 391 (1985) .....................................................................................................38
`Papera v. Pa. Quarried Bluestone Co., 948 F.3d 607, 611 (3d Cir. 2020) .............28
`Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 n. 5, 99 S.Ct. 645, 58 L.Ed.2d
`552 (1979) .............................................................................................................30
`
`3
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`
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`Parklane Hosiery, 439 U.S. at 328, 332, 99 S.Ct. 645 ............................................32
`Peloro v. U.S., 488 F.3d 163, 174-75 (3d Cir. 2007) ..............................................31
`Peloro v. U.S., 488 F.3d 163, 175 (3d Cir. 2007) ....................................................32
`Peters v. Simmons, 87 Wash.2d 400, 552 P.2d 1053, 1056 (1976) .........................38
`SCE Group, Inc. v. Garson, No. 21-CV-19944 (D.N.J. July 26, 2022) ..................35
`Seidman v. Clifton Sav. Bank, 205 N.J. 150, 169 (2009).........................................34
`Shapiro, 964 F.2d at 284 (citing Christidis v. First Pa. Mortgage Trust, 717 F.2d
`96, 99 (3d Cir. 1983) .............................................................................................39
`Skidmore & Hall v. Rottman, 5 Ohio St.3d 210, 450 N.E.2d 684, 685 (1983) .......38
`Trecartin v. Mahoney-Troast Constr. Co., 21 N.J. Super. 69, 90 A.2d 273 (App.
`Div. 1952) .............................................................................................................27
`United States v. Athlone Indus., 746 F.2d 977, 984 (3d Cir. 1984) .........................29
`Vance v. Scerbo, No. A-2019-17T4 (N.J. Super. Ct. App. Div. Feb. 26, 2019) .....35
`Wall v. Lewis, 393 N.W.2d 758, 761 (N.D.1986) ....................................................38
`Watson v. Dorsey, 265 Md. 509, 290 A.2d 530, 533 (1972) ...................................38
`Zahl v. Eastland, 465 N.J. Super. 79 (App. Div. 2020) ...........................................36
`
`Statutes
`
`28 U.S.C. § 1404(a) .................................................................................................42
`35 U.S.C. § 256 ........................................................................................................33
`Canon Fin. Servs., Inc. v. JL Barrett Corp., No. 10-cv-4117, 2010 WL 4746242,
`*3 (D.N.J. Nov. 16, 2010).....................................................................................42
`CIBC World Markets, Inc. v. Deutsche Bank Sec., Inc., 309 F. Supp. 2d 637, 651
`(D.N.J. 2004).........................................................................................................43
`
`Rules
`
`Fed.R.Civ.P. 15(a) ....................................................................................................32
`
`4
`
`
`
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`Plaintiff, Dr. Monib Zirvi, respectfully submits this memorandum of law in
`
`response to Defendants Thermo Fisher Scientific (“Thermo Fisher”), Akin Gump
`
`Strauss Hauer & Feld LLP (“Akin”), Latham & Watkins LLP (“Latham”), Rip Finst,
`
`Sean Boyle, Matthew A. Pearson, Angela Verrecchio, Roger Chin, and Douglas
`
`Lumish (collectively, the “Moving Defendants”) memorandum of law in support of
`
`their motion to dismiss and Defendant Douglas Lumish separate memorandum of
`
`law in support of their motion to dismiss.
`
`PRELIMINARY STATEMENT
`
`This Complaint is about the incorporation of ZipCode technology in
`
`numerous Illumina patents without naming Dr. Zirvi as an inventor and the
`
`Defendant Attorneys who did nothing to protect Dr. Zirvi related to the same while
`
`claiming they would represent him.
`
`This Complaint is not a rehashing of claims made by Plaintiff Monib Zirvi in
`
`the prior lawsuit brought in New York in 2018 (the “SDNY Litigation”) where his
`
`claims were dismissed with prejudice. Zirvi v. Flatley, 433 F. Supp. 3d 448, 467
`
`(S.D.N.Y. 2020) (“Zirvi I”), aff ’d, 838 F. App’x 582 (2d Cir. 2020). The Order of
`
`Dismissal in the SDNY Litigation was based on the Court’s examination of
`
`allegations that:
`
`…under both federal and New York State law, arise out of
`two alleged instances of misappropriation of trade secrets,
`one occurring in 1994 when certain trade secrets were
`
`5
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`allegedly stolen from a confidential grant proposal, and
`one occurring in 1999 when alleged trade secrets were
`allegedly
`misappropriated
`during
`confidential
`communications. The plaintiffs allege that these two acts
`of misappropriation resulted in the theft of both positive
`and negative trade secrets.” Id. at 454-455.
`
`The claims made in the current case are not for the theft of trade secrets. Rather the
`
`claims under federal law stem from Illumina’s failure to name Plaintiff as an
`
`inventor on multiple Illumina patents, the legal malpractice that occurred in the
`
`Cornell v. Illumina Litigation that allowed Illumina to do the same, and the
`
`conspiracy between the Defendants to let Illumina get away with the scheme. The
`
`legal malpractice claims would not ripen until the conclusion of the SDNY
`
`Litigation. Nothing in the Order of Dismissal in the SDNY Litigation addressed
`
`these claims.
`
`
`
`The Order of Dismissal in the SDNY Litigation found that the statute of
`
`limitations, as applied to the trade secret claims raised in that case, had passed. The
`
`Order of Dismissal in the SDNY Litigation held that the statute of limitations of
`
`those claims “…began to run no later than the dates of the patent interference
`
`proceedings before the USPTO and the litigation in the federal district court in
`
`Delaware. In 2006, two plaintiffs in this action, Zirvi and Kempe, were named as
`
`junior parties in the interference before the USPTO. Gorman Decl., Ex. 25. In
`
`2010, Cornell University, the assignee of many of the patents relevant in this
`
`case, sued Illumina, Inc. regarding many of the same patents, which, at the very
`
`6
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`least, put the plaintiffs in this case on inquiry, if not actual, notice.” Id. at 460.1
`
`Contrary to the Defendants’ assertions, this holding is a basis, and not a bar, for the
`
`present case. In the current case it was the purposeful lack of pursuing claims in the
`
`Cornell v. Illumina Litigation and then advising Dr. Zirvi at the twelfth hour to seek
`
`a separate trade secret claim in the SDNY Litigation that lead to the malpractice
`
`claims in the instant case. As alleged in this Complaint, it was an undisclosed
`
`conflict of interest that led to the Defendant Attorneys to commit the malpractice.
`
`The malpractice damage only ripened upon the SDNY Litigation finding that Dr.
`
`Zirvi could not be compensated through a trade secret claim.
`
`The Plaintiff asserts that the following allegations in the Complaint and in the
`
`accompanying Declaration of Plaintiff, Dr. Zirvi, (See Exhibit 4 attached hereto)
`
`should be taken as true for the purpose of ruling on the Motion to Dismiss.
`
`ALLEGATIONS FROM THE COMPLAINT
`15. Illumina’s illicit taking became the subject matter of
`multiple litigations between Cornell University, Cornell
`Research
`Foundation,
`Inc., Life Technologies
`Corporation, and Applied Biosystems, LLC1 versus
`Illumina.
`
`16. Throughout the litigation the Plaintiff was in
`communication with, and advised extensively by
`Attorneys for Cornell University, Cornell Research
`Foundation,
`Inc., PE Applied Biosystems, LLC,
`
`1 Notably, the Court could not dismiss based on standing because “…these issues
`on a motion to dismiss because there are factual disputes about the circumstances
`under which the intellectual property was developed.” Id. at fn5.
`
`7
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`LifeTechnologies Corporation, and Thermo Fisher
`Scientific Inc., who represented to the Plaintiff that they
`were his counsel as well.
`
`17. At various points throughout the Cornell litigation, the
`Attorneys representing the Plaintiff included, Rip Finst
`and Sean Boyle of THERMO FISHER SCIENTIFIC
`INC., Matthew A. Pearson and Angela Verrecchio, of
`AKIN GUMP STRAUSS HAUER & FELD LLP, Roger
`Chin and Douglas Lumish of LATHAM & WATKINS….
`
`18. Plaintiff’s Attorneys advised him that his interests
`were aligned with Cornell University, Cornell Research
`Foundation, Inc., PE Applied Biosystems, LLC, Life
`Technologies Corporation, and Thermo Fisher Scientific
`Inc., and that these attorneys represented his interests.
`
`19. The Attorneys advised Plaintiff to not prepare for his
`deposition, to not review any documents, including his
`own patent filings, and not research facts related to
`Illumina, its founders, employees, and patent filings.
`
`20. Instead, the Attorneys instructed and advised Plaintiff
`to answer questions with “I don’t know”, and “I don’t
`remember”, all explained to him as the best way to benefit
`Cornell and his rights against Illumina’s illicit taking.
`
`21. Attorneys for the Plaintiff withheld from Plaintiff that
`ThermoFisher was secretly collaborating with Illumina to
`develop “Ampliseq for Illumina” during the entire time
`they were representing Plaintiff – a knowingly deliberate
`conflict of interest. The secret collaboration, which upon
`information and belief started at least three years prior,
`was publicly admitted to having occurred at least a year
`prior to January 30th, 2018, while the Cornell v. Illumina
`(1:10-cv-00433-LPS) case was still active.…
`
`23. Attorneys for the Plaintiff repeatedly requested via
`phone calls, video teleconferences, and emails for Plaintiff
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`8
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`to submit his expert analysis and findings that would
`strengthen the Cornell v Illumina (1:10-cv-00433-LPS)
`case, and Plaintiff spent hundreds of hours preparing such
`confidential analysis over a two-year period.
`
`25. Between January 2017 and April 2017, Plaintiff sent
`Attorneys at ThermoFisher, Latham & Watkins and Akin
`Gump numerous emails containing bullet-proof evidence
`of fraud by Illumina which would have proven the claims
`by Cornell, yet such evidence was kept from the court in
`the Cornell v Illumina case (1:10-cv-00433-LPS). Plaintiff
`requested to file a declaration to introduce this evidence to
`the court, yet inexplicably, Attorneys denied this request.
`(See Exhibit 12 for Draft of Declaration written by
`Plaintiff and emailed about to Defendants including Rip
`Finst, Matthew Pearson, Roger Chin and Douglas Lumish
`shortly prior to the signing of the settlement agreement in
`Cornell v Illumina. Plaintiff specifically requested for their
`help to edit and submit this to the US District Court in
`Delaware as a Third Party with an interest.)
`
`26. Unbeknownst to Plaintiff or Cornell at the time,
`Cornell v Illumina (1:10-cv-00433-LPS) was fraudulently
`settled by Illumina and ThermoFisher, simultaneously
`with several other lawsuits involving Illumina and
`ThermoFisher, in April 2017. Tellingly, Attorneys Roger
`Chin and Doug Lumish were working on the other cases
`involving Illumina and ThermoFisher but failed to
`disclose their obvious conflict of interest to either Plaintiff
`or Cornell. The settlements, while benefiting Illumina and
`ThermoFisher, completely undermined the rights of the
`Plaintiff.
`
`27. Plaintiff discovered through a review of public SEC
`filings that Illumina had filed a First Amendment
`Agreement to raise funds for many years. In this
`document, the definition of “Tag Sequences” was
`redacted. When asked, Matthew Pearson said he knew
`about the First Amendment Agreement, and stated it had
`nothing to do with the inventors, including Plaintiff, as
`
`9
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`well as their rights as inventors under the Cornell v.
`Illumina suit. Matthew Pearson refused to share any
`details of the First Amendment Agreement, requiring
`Plaintiff to obtain a copy of the unredacted First
`Amendment Agreement through a FOIA request to the
`SEC, which was received by Plaintiff on May 17, 2017
`(Exhibit 3).
`
`28. In the redacted document, everything passed the words
`“‘Tag Sequence’ means” was redacted. In the unredacted
`document, it continues as follows: “Tag Sequence” means
`a set of oligonucleotide probes, developed pursuant to the
`Original Agreement or this First Amendment, which act
`independently of any target-sequence-specific analytical
`chemical reactions to allow the physical addressing of the
`products of a chemical reaction to locations on a solid
`support, such as the "addressable array-specific portion”
`of the oligonucleotide probes and their complements
`described
`in
`International Patent Application No.
`W097/31256 and that are designed for use in the
`Collaboration Product. The Parties will agree on the
`selection of Tag Sequences to be used in the Collaboration
`Product, subject to the approval of the Joint Steering
`Committee.
`
`29. International Patent Application No. W097/31256 is
`an invention that was submitted before Illumina even
`existed, with Dr. Zirvi as a coinventor. In the First
`Amendment Agreement, it states: “The Parties will share
`responsibility for defining and developing Tag Sequences
`for the Collaboration Product which will attempt to avoid
`third party
`intellectual property
`rights or other
`encumbrances.” In other words, this was collusion by
`Illumina and ThermoFisher to apparently defraud third
`parties, such as Cornell and the Plaintiff. Dr. Zirvi
`informed Cornell of the findings in the unredacted First
`Amendment Agreement.
`
`38. The Plaintiff has not been recognized as an inventor on
`any of Illumina’s patents using the Zip Code Operating
`
`10
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`System; has not received royalties from Illumina’s use of
`Plaintiff’s Zip Code Operating System in their software
`and products….
`
`39. Illumina and its founders and employees have
`incorporated the ZipCode Operating System and utilized
`Plaintiffs’ ZipCode sequences and designs to manufacture
`and
`commercialize numerous products.
`Illumina
`knowingly applied for these patents without including
`Plaintiff as an inventor and the patent claims would not
`have been issued had it not been for Illumina’s commercial
`success using ZipCode sequences and the ZipCode
`Operating System to determine the location of DNA
`sequences in the Sentrix arrays, GoldenGate assays and
`Infinium arrays as demonstrated by the software used to
`analyze .dmap files associated with these products. This
`software specifically calls the DNA sequences, used by
`Illumina in its products, ZipCode (and not by any other
`name or pseudonym).
`
`46. But for the intentional acts and negligence of the
`attorneys representing Plaintiff in the Cornell case the
`Plaintiff would have been able to enforce his intellectual
`property rights against Illumina.
`
`47. But for the conspiring of all Defendants, Plaintiff Zirvi
`would have received the recognition and royalties on a
`series of patents (See: Czarnik v. Illumina, Case 1:05-cv-
`00400- JJF).2
`
`2 In Czarnik v. Illumina, Case 1:05-cv-00400- JJF, Czarnik successfully plead:
`104. As a direct and foreseeable consequence of Defendant Illumina's actions,
`including Illumina not giving Dr. Czarnik the credit and recognition as a co-
`inventor that he was entitled to for his contributions to the patented microarray
`technology, Dr. Czarnik has suffered damage to his reputation and standing
`within the scientific community, has not received the reputational benefits
`associated with being named as an inventor, and has suffered a loss of prestige
`within the scientific community resulting from his inventions being recognized
`as another's.
`
`11
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`48. Plaintiff asserts that the failure to name Plaintiff as an
`inventor on the patents filed by the assignee has caused
`significant reputational harm. Plaintiff’s contributions to
`the development of the technology are significant and
`cannot be denied. The claimant has been acknowledged as
`a key contributor to the development of the technology.
`(See Exhibit 9 Affidavit of Dr. Francis Barany) However,
`the failure to name the claimant as an inventor on the
`patents has undermined the claimant's reputation and
`standing in the scientific community.
`
`49. The Plaintiff’s claim is based on 35 U.S.C. § 256,
`which provides for correction of inventorship in patents.
`Plaintiff believes that the assignee erred in failing to name
`Plaintiff as an inventor on the patents and that this error
`should be corrected.
`
`ALLEGATIONS FROM THE DECLARATION OF DR. ZIRVI
`Dr. Zirvi confirms the extent of the contact Plaintiff had with the
`
`Defendant Attorneys. Plaintiff and Matthew Pearson were on over 300 emails,
`
`106. As a direct and foreseeable consequence of Defendant Illumina's actions,
`including Illumina not giving Dr. Czarik the credit and recognition as a co-
`inventor that he was entitled to for his contributions to the patented microarray
`technology, Dr. Czarnik has not been able to "join another start-up and get
`another few hundred thousand shares of stock" which, as set forth above,
`amounted to an annual salary of approximately $1 million. As a direct and
`foreseeable consequence of these actions by Defendant Illumina, Dr. Czarnik has
`been damaged in an amount to be proven at trial.
`The same is true regarding Dr. Zirvi has not received the reputational benefits
`associated with being named as an inventor and has suffered a loss of prestige
`within the scientific community resulting from his inventions being recognized
`as another's.
`
`12
`
`
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`containing 1600 pages from February 2015 - April 17, 2017.3 Plaintiff and Roger
`
`Chin were on 80 emails, containing 260 pages from January 2017 – April 2017.4
`
`Plaintiff and Douglas Lumish were on 80 emails, containing 260 pages from
`
`January 2017 – April 2017.5 In addition, during the Cornell v. Illumina
`
`Litigation there were in person meetings, Webex meetings, PowerPoint
`
`presentations, deposition preparations, a defending of Plaintiffs deposition, and
`
`interaction with counsel at the Markman hearing in Delaware. All under the
`
`guise that Dr. Zirvi was being represented by the Defendant Attorneys.
`
`DR. ZIRVI IS NOT SUING FOR TRADE SECRET THEFT
`
`The claims made in this case are not for theft of a trade secret. The
`
`Defendant Attorneys correctly point out the Second Circuit, affirmed the district
`
`court’s finding that Dr. Zirvi’s claims regarding trade secret theft were time-
`
`barred by no later than May 2014. The Defendant Attorneys knew, or should
`
`have known, that claims could have been made in the Cornell v. Illumina
`
`Litigation that would relate back to its original filing in 2010. The Defendant
`
`Attorneys should have known that a conflict of interest was present from the
`
`very beginning of the Cornell v. Illumina Litigation and remained throughout.
`
`3 Exhibit 1 hereto contains an important sample of the many emails with Dr. Zirvi
`and Matthew Pearson. All of the emails are available.
`4 Exhibit 2 contains an important sample of the emails with Roger Chin and Dr.
`Zirvi.
`
`5 Exhibit 3 contains key the emails with Douglas Lumish and Dr. Zirvi.
`
`13
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`Rip Finst was counsel from the start of the Cornell v. Illumina Litigation and he,
`
`along with every other attorney who joined in later failed to advise Dr. Zirvi of
`
`his rights or the conflict. Consequently, The ruling in the Cornell v. Illumina
`
`Litigation and the SDNY Litigation are not fatal to Dr. Zirvi’s claims but are the
`
`basis of his claims against the Defendant Attorneys.
`
`First, the doctrine of claim preclusion does not bar Dr. Zirvi from
`
`advancing because the claims are not the same in this case nor are the parties.
`
`Defendant Attorneys cannot hide behind a claim of privity with Thermo
`
`Fisher. Zirvi claims his own privity with the Defendant Attorneys.
`
`Defendant Attorneys’ privity with both is at the root of the conflict-of-
`
`interest allegations against Defendant Attorneys. The SDNY Litigation
`
`was a case regarding theft of trade secrets based on the advice of Roger Chin.
`
`Had the SDNY Litigation resulted in Dr. Zirvi recovering his damages under
`
`a theory of trade secret violation then a claim for malpractice would not be
`
`viable because the damages would have been paid. Consequently, the result
`
`of the SDNY Litigation was not preclusive but necessary for the claims against
`
`the Defendant Attorneys.
`
`Second, there is no “fatal flaw” in Dr. Zirvi’s claims because the SDNY
`
`Litigation established that the clock had already run out on his claims well before
`
`his alleged interactions with Thermo Fisher and its lawyers. This interaction with
`
`14
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`Thermo Fisher and his lawyers was during the Cornell v. Illumina Litigation that
`
`started in 2010. The Defendants Attorneys knew Dr. Zirvi had claims that could
`
`relate back to the filing of the Complaint. Moreover, the Defendant Attorneys
`
`knew their conflict of interest caused by the new Thermo Fisher and Illumina
`
`alliance, known as “Ampliseq for Illumina” caused them to ignore the legal issues
`
`raised by Dr. Zirvi in early 2017 and would lead them to exclude Dr. Zirvi’s in
`
`the settlement of the Cornell v. Illumina Litigation.6 The Defendant Attorneys
`
`actively chose not to inform Dr. Zirvi of either and instead feigned to protect his
`
`interest throughout out. The damage for such acts would only be realized upon the
`
`conclusion of the SDNY Litigation.
`
`Third, Dr. Zirvi’s claims do not hinge on the notion that he had a valid and
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`enforceable trade secret to begin with. Because of the malpractice Dr. Zirvi has
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`been precluded from seeking a claim based on a theory of trade secret theft for
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`which the clock has run out. Moreover, the failure to disclose a conflict by the
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`Defendant Attorneys undermined Dr. Zirvi’s claims and his position regarding
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`6 See Exhibit 5 attached hereto, Docket sheet from Cornell v. Illumina Litigation.
`In February 2017, Life Tech informed Cornell that it was pursuing settlement
`discussions with Illumina. Life Tech and Cornell subsequently exchanged several
`communications, including e-mails, related to those discussions. Upon information
`and belief, these emails include responses to Dr. Zirvi’s and Dr. Barany’s
`numerous emails from February 2017 to April 2017 in which were against the
`interest of Dr. Zirvi as a co-inventor and party whose interest were supposed to be
`protected.
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`15
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`Case 2:23-cv-01997-MCA-JSA Document 92 Filed 10/02/23 Page 16 of 44 PageID: 2230
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`settlements reached in the Cornell v. Illumina Litigation. Settlements he has
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`never seen.7
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`However, Dr. Zirvi’s right to bring a malpractice claim based on the
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`Defendant Attorneys letting the clock expire is not out of time. The right to sue
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`for malpractice for
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`the Defendant Attorneys engaging
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`in conflicting
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`representation that resulted in damages to Dr. Zirvi has not run out. Neither has
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`his right to be named as an inventor on the Illumina patents as argued in Dr.
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`Zirvi’s response to Illumina’s Motion to Dismiss. Dr. Zirvi has alleged in this
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`case that he was the inventor of ZipCode technology that has been incorporated
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`in many of Illumina’s patents and as such he should be named as a co-inventor
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`on these patents. Dr. Zirvi, upon his discovery of his ZipCode technology in
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`Illumina’s products and patents, raised these facts with Defendant Attorneys in
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`late 2016 and throughout early 2017. However, he was advised that his was a
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`claim for trade secret violation and one that could not be brought in Cornell v.
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`Illumina Litigation but separately. That advice was wrong.
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`Defendant Attorneys argue that in the SDNY Litigation, the court held
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`that Zirvi had no protectable trade secret. However, it was Roger Chin who
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`advised of the claim in the first place, long after the Defendant Attorneys should
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`7 New Jersey law requires a Plaintiff file an affidavit of merit regarding claims of
`malpractice which Plaintiff did in this case and incorporates by reference herein
`into this response.
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`16
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`Case 2:23-cv-01997-MCA-JSA Document 92 Filed 10/02/23 Page 17 of 44 PageID: 2231
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`have advised of an obvious conflict of interest. The claims in this case regarding
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`ZipCode technology are not based on trade secret law. Rather, they are based on
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`Dr. Zirvi’s ZipCode technology having been incorporated into Illumina’s patents
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`with the knowledge of Defendant Attorneys who did nothing to protect Dr.
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`Zirvi’s interest in the same and tried to bury any legal claim he made have had
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`regarding the same.
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`Fourth, Dr. Zirvi has pled, and offers in his responsive Declaration
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`evidence of a long line of communications that establish an attorney client
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`relationship as detailed above. Fifth, the complaint pleads acts of malpractice
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`with enough specificity, and an affidavit of merit against all the Defendant
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`Attorneys and their unblemished reputations have no bearing on this Complaint.
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`Sixth, Zirvi’s claims for alleged “correction” of inventorship was laid at the feet
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`of the Defendant Attorneys in January and February of 2017, however as
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`alleged in the Complaint Thermo Fisher and its counsel (allegedly representing
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`the best interest of Dr. Zirvi) were more interested in conducting business with
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`Illumina to form a joint product line that would reap new profit for the two
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`companies, than continuing litigation to “correct” the patents at issue.
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`In January 2018, CEO Francis DeSouza in official SEC filings was asked
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`about the backstory about Ampliseq for Illumina. When asked in an investor
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`information call about
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`the Ampliseq for Illumina collaboration with
`
`17
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`Case 2:23-cv-01997-MCA-JSA Document 92 Filed 10/02/23 Page 18 of 44 PageID: 2232
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`ThermoFisher, Francis DeSouza stated that “...And so we started the
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`conversation clearly well over a year ago.” This put the collaboration start at
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`most at the end of 2016 to January 2017, around the time Rip Finst insisted on
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`new counsel Roger Chin and Douglas Lumish in Cornell v Illumina. During the
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`entire SDNY case, there was no reason to believe that Francis DeSouza was
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`lying in an official SEC filing as that is illegal due to the duty of candor to
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`investors and the SEC. After the SDNY case had been decided, new information
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`came to light during the FTC investigation of the Illumina-GRAIL merger. This
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`led to the discovery that Francis DeSouza had lied in official court documents
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`about bitcoins in a divorce settlement. This “storm warning” of fraud, put
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`plaintiff Zirvi on inquiry notice as to the true start date of the Ampliseq for
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`Illumina collaboration. Diligent searches of public records showed that a
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`LinkedIn profile for an employee of Illumina (see exhibit) s