Case 1:22-cv-00334-GBW-CJB Document 1 Filed 03/17/22 Page 1 of 31 PageID #: 1
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`ILLUMINA, INC.,
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Plaintiff,
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`v.
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`GUARDANT HEALTH, INC.; HELMY
`ELTOUKHY; and AMIRALI TALASAZ,
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`Defendants.
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`C.A. No. __________________
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`DEMAND FOR JURY TRIAL
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`COMPLAINT
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`Plaintiff Illumina, Inc. (“Illumina”) files this Complaint for correction of inventorship,
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`trade secret misappropriation, and breach of contract against Guardant Health, Inc. (“Guardant”),
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`Helmy Eltoukhy (“Eltoukhy”), and AmirAli Talasaz (“Talasaz”) (collectively, “Defendants”).
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`All allegations herein are made on information and belief except where otherwise indicated.
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`OVERVIEW
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`1.
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`This is a civil action for correction of inventorship under the patent laws of the
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`United States, 35 U.S.C. § 256; for Defendants’ misappropriation of Illumina’s trade secrets in
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`violation of California’s Uniform Trade Secrets Act, Cal. Civ. Code § 3426 et. seq. (“CUTSA”);
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`and for breaches of contract by Eltoukhy and Talasaz.
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`2.
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`Eltoukhy and Talasaz were Illumina employees. Through their employment at
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`Illumina, they had access to Illumina’s confidential information. Eltoukhy and Talasaz had
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`contractual and other obligations to Illumina, including to protect Illumina’s confidential
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`information and to assign to Illumina rights in any inventions related to Illumina’s business that
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`they made while employed by Illumina.
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`3.
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`While employed by Illumina, Eltoukhy and Talasaz founded Guardant. Eltoukhy
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`and Talasaz misappropriated Illumina’s confidential information to Guardant and filed patent
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`applications for Guardant based on Illumina’s intellectual property. Eltoukhy even helped to
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`prepare patent claims while an Illumina employee, using Illumina information and equipment to
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`do so. Yet the applications reflecting those claims and the resulting patents were improperly
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`assigned to Guardant rather than Illumina.
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`PARTIES
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`4.
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`Plaintiff Illumina is a corporation organized and existing under Delaware law
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`with its principal place of business at 5200 Illumina Way, San Diego, California 92122. Illumina
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`employs over 8,500 people worldwide.
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`5.
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`Illumina was founded in 1998 by scientists at the forefront of the genetic
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`revolution leading up to the mapping of the human genome.1 Since its founding, Illumina’s
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`ground-breaking innovations have fueled advances in this field. For example, in the 1990s
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`through early 2000s, the “Human Genome Project” produced the first single complete human
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`genome sequence, which took 13 years and $3 billion. Illumina’s cutting-edge DNA sequencing
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`devices and methods now permit the sequencing of a genome in a matter of hours for
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`approximately $600.
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`6.
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`Illumina researches, develops, and manufactures life science tools and integrated
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`systems for genetic analysis.2 Illumina’s mission is to improve human health by unlocking the
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`1 Alice Park, Time 100 Most Influential Companies: Illumina, TIME (Apr. 26, 2021), available at
`https://time.com/collection/time100-companies/5953584/illumina/ (“Park”).
`2 Illumina Fact Sheet, ILLUMINA, available at https://www.illumina.com/company/about-us/fact-
`sheet.html (last visited on Mar. 16, 2022) (“Illumina Fact Sheet”); Who We Are, ILLUMINA,
`available at https://www.illumina.com/content/dam/illumina-
`marketing/documents/company/illumina-at-a-glance.pdf (last visited on Mar. 16, 2022).
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`power of the genome. Illumina sequencers are used in academic, commercial, and
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`pharmaceutical labs focused on genomics work.3 Its sequencing and microarray technologies are
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`fueling groundbreaking innovations in life science research, genomics, and molecular
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`diagnostics.4 For its work, Illumina was recently named one of the “10 most innovative health
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`companies of 2022.”5
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`7.
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`Scientists and physicians use Illumina technology in patient care and research
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`applications ranging from cancer research and prenatal screening to food safety and vaccine
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`development.6 For example, an Illumina sequencer was used to sequence for the first time the
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`entire genome of the virus behind COVID-19, which was posted on a public database so
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`researchers could use it to develop new drugs and vaccines.7 This enabled Moderna scientists to
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`develop and test a vaccine to fight the virus in record time.8
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`8.
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`Illumina spearheads cutting-edge genetic sequencing and applied genomics
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`efforts.9 In 2020, for example, Illumina donated machines to ten African countries so health
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`departments could begin sequencing, some for the first time, microbes collected from patient
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`samples to detect and identify dangerous pathogens in circulation.10
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`3 Park, supra note 1.
`4 Illumina Fact Sheet, supra note 2.
`5 Ruth Reader, “The 10 most innovative health companies of 2022,” FAST COMPANY (Mar. 8,
`2022), available at https://www.fastcompany.com/90724416/most-innovative-companies-health-
`2022.
`6 Driven from the start to transform human health, ILLUMINA, available at
`https://www.illumina.com/company.html (last visited on Mar. 16, 2022).
`7 Park, supra note 1.
`8 Id.
`9 Id.
`10 Id.
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`9.
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`Illumina technology is also at the forefront of the development of cancer
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`diagnostics. Illumina’s genomics product offerings support multiple cancer research
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`applications, including studies of DNA, RNA, epigenetics, immunotherapy, and more.11 For
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`example, Illumina’s next-generation sequencing methods enable cancer researchers to perform
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`whole-genome studies, targeted gene profiling, and tumor-normal comparisons, while offering
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`the sensitivity to detect rare somatic variants, tumor subclones, and circulating DNA fragments.12
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`10.
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`Defendant Guardant is a corporation organized and existing under Delaware law
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`with its principal place of business at 505 Penobscot Drive, Redwood City, California 94063.
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`Guardant operates in the field of cancer diagnostics.
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`11.
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`12.
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`Guardant was founded by Defendants Eltoukhy and Talasaz.
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`Defendant Eltoukhy is an individual residing in Atherton, California, and is the
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`Chief Executive Officer of Guardant.
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`13.
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`Defendant Talasaz is an individual residing in Atherton, California, and is the
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`Chief Operating Officer of Guardant.
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`JURISDICTION AND VENUE
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`14.
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`This Court has subject-matter jurisdiction over this case under 28 U.S.C. § 1331
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`and 28 U.S.C. § 1338, and supplemental jurisdiction pursuant to 28 U.S.C. § 1367(a).
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`15.
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`This Court has personal jurisdiction over Defendants. Guardant is a Delaware
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`corporation. Eltoukhy and Talasaz incorporated Guardant in Delaware, and did so while
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`employed by Illumina. Eltoukhy and Talasaz founded Guardant based on misappropriated
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`confidential information from Illumina and assigned the patents at issue in this action to
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`11 This Partnership Is Personal, ILLUMINA, available at https://www.illumina.com/areas-of-
`interest/cancer/research.html (last visited on Mar. 16, 2022).
`12 Id.
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`Guardant, a Delaware corporation. Defendants have filed and participated in patent litigation in
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`Delaware, including Guardant Health, Inc. v. Foundation Medicine, Inc., No. 1:20-cv-01580-
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`LPS (D. Del.), and Guardant Health, Inc. v. Foundation Medicine, Inc., No. 1:17-cv-01616-LPS-
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`CJB (D. Del.). Those cases involved patents at issue in this action. Defendants Eltoukhy and
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`Talasaz are directors and officers of Guardant who are additionally subject to jurisdiction for the
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`causes of action herein pursuant to 10 Del. C. § 3104(c) and 10 Del. C. § 3114.
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`16.
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`Venue is proper in this Court under 28 U.S.C. § 1391(b). A substantial portion of
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`the events giving rise to this lawsuit occurred in Delaware. Eltoukhy and Talasaz founded and
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`incorporated Guardant in Delaware based on confidential information misappropriated from
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`Illumina and as a vehicle for holding and using the intellectual property at issue. The patents at
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`issue in this action are assigned to Guardant, a Delaware corporation.
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`STATEMENT OF FACTS
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`Illumina hired Eltoukhy in 2008 and hired Talasaz in 2009.
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`As part of their employment with Illumina, Eltoukhy and Talasaz entered into and
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`17.
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`18.
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`agreed to employment contracts and company policies, including a Proprietary Information and
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`Invention Agreement (“PIIA”), Confidentiality – Disclosure on Need-To-Know Basis Only
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`Acknowledgement (“Confidentiality Acknowledgement”), Code of Ethics, and, at the end of
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`their employment, a Termination Certificate.
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`19.
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`The employment agreements and company policies to which Eltoukhy and
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`Talasaz agreed required them to devote their efforts to Illumina’s business, to not compete with
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`Illumina, to avoid conflicts of interest that could compromise their loyalty to Illumina, to assign
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`to Illumina their inventions made while employed by Illumina that are related to Illumina’s
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`business, to protect Illumina’s confidential and proprietary information, to not take or use
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`Illumina’s resources and property for their personal benefit, and to return Illumina materials to
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`the company upon termination of their employment.
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`20. While employed by Illumina, and supposedly dedicating their efforts to the
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`interests of Illumina, Eltoukhy and Talasaz laid the groundwork for their formation of Guardant.
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`21. While employed by Illumina, Eltoukhy and Talasaz worked on and discussed
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`technology they would use to start Guardant, including applications of communication theory in
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`methods and systems for quantifying single nucleotide variant tumor markers and for detecting
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`genetic aberrations and copy number variations in cell-free DNA from a bodily sample of a
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`subject using molecular barcodes.
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`22.
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`During their employment at Illumina, Eltoukhy and Talasaz accessed confidential
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`Illumina information and resources pertaining to Illumina’s proprietary error correction methods,
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`cell-free DNA, copy number variations, next-generation sequencing, and communication theory.
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`23.
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`24.
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`Eltoukhy and Talasaz used this information in Guardant’s technology.
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`For example, Eltoukhy and Talasaz requested and reviewed internal Illumina
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`presentations, solicited know-how from colleagues, and conducted research using Illumina’s
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`proprietary sequencing methods and instrumentation.
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`25. While employed by Illumina, Eltoukhy and Talasaz worked on a project to create
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`a sequencing device for processing minimally invasive blood draws, including analyzing DNA,
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`with molecular barcodes, for cancer diagnostics and other applications.
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`26.
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`On December 9, 2011, while still employed by Illumina, Eltoukhy and Talasaz
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`anonymously incorporated Guardant as a Delaware corporation.
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`27. While employed by Illumina, Eltoukhy and Talasaz participated in activities
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`related to the establishment and operation of their new company, Guardant.
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`28.
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`In June 2012, Talasaz submitted his resignation to Illumina. His final day as an
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`Illumina employee was June 25, 2012.
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`29.
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`30.
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`Talasaz began working at Guardant immediately after leaving Illumina.
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`Talasaz also became a founding member of the Board of Directors for Guardant
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`immediately after leaving Illumina.
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`31.
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`Eltoukhy remained employed by Illumina until January 2013.
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`32. While Eltoukhy was still employed by Illumina, Eltoukhy worked closely with
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`Talasaz on projects and technologies for Guardant.
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`33. While Eltoukhy was still employed by Illumina, Eltoukhy and Talasaz created
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`business plans and PowerPoint presentations, secured licenses to intellectual property, attracted
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`investors, and developed Guardant technologies.
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`34. While Eltoukhy was still employed by Illumina, Guardant assigned Eltoukhy a
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`“GuardantHealth.com” email account.
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`35. While Eltoukhy was still employed by Illumina, Guardant assigned Eltoukhy an
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`email signature designating him as a co-founder of Guardant.
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`36. While Eltoukhy was still employed by Illumina, Guardant identified Eltoukhy as
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`part of the Guardant “Team.”
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`37. While Eltoukhy was still employed by Illumina, Eltoukhy acted as a member of
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`the Board of Directors of Guardant and an advisor to Guardant. At the time, Talasaz was the
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`only other member of the Board of Directors of Guardant.
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`38.
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`Eltoukhy has subsequently described his role at Guardant during the second half
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`of 2012, while he was still employed by Illumina, as that of a corporate agent and fiduciary of
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`Guardant.
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`39.
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`At the time, Eltoukhy did not inform Illumina that he was acting as a corporate
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`agent and fiduciary of Guardant.
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`40.
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`On June 27, 2012, two days after Talasaz left Illumina, Eltoukhy sent an email to
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`another Illumina employee, Frank Steemers, who was a senior Illumina director and researcher
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`working on sequencing technology.
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`41.
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`In that June 27, 2012 email, Eltoukhy requested a copy of a specific presentation
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`containing confidential Illumina information concerning random coding improvement in error
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`rate for use in genetic sequencing to obtain better accuracy from fewer sequence reads.
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`42.
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`In the email, Eltoukhy said he was thinking about creating some Matlab models
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`for some communication theory ideas he had on how to decode barcodes more effectively.
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`43.
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`Although Eltoukhy used his Illumina email address, his question did not relate to
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`work he was carrying out for Illumina.
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`44.
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`Eltoukhy later admitted in deposition that he was not working on how to decode
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`bar codes more effectively as part of his work for Illumina.
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`45.
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`Eltoukhy failed to indicate to Steemers that the Matlab models and
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`communication theory ideas that Eltoukhy referenced in his June 27, 2012 email were being
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`worked on by Eltoukhy for a company other than Illumina.
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`46.
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`In response to Eltoukhy’s June 27, 2012 email, Steemers provided Eltoukhy with
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`slides relating to the error rate improvements and communication theory ideas Eltoukhy asked
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`about.
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`47.
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`The slides sent to Eltoukhy were specifically marked “COMPANY
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`CONFIDENTIAL—INTERNAL USE ONLY.”
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`48.
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`The information that Eltoukhy received reflected years of novel work by Illumina
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`personnel, including valuable methods and data that Illumina personnel had created, that were
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`not publicly known, and that were subject to reasonable efforts by Illumina to maintain as
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`confidential.
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`49.
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`Illumina has since learned that, without authorization or permission from
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`Illumina, Eltoukhy promptly forwarded this information from his Illumina email account to his
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`personal Gmail account, and then forwarded it from his personal Gmail account to Talasaz, who
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`had by that time left Illumina and was working for Guardant.
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`50. Without authorization or permission from Illumina, Eltoukhy and Talasaz used
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`the Illumina information that Eltoukhy sent to Talasaz to develop Guardant’s technology,
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`including in patent applications that issued as U.S. patents including but not limited to U.S.
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`Patent Nos. 9,598,731 (“the ’731 patent”) (Exhibit A); 9,834,822 (“the ’822 patent”) (Exhibit B);
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`9,840,743 (“the ’743 patent”) (Exhibit C); 9,902,992 (“the ’992 patent”) (Exhibit D); 9,920,366
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`(“the ’366 patent”) (Exhibit E); 10,041,127 (“the ’127 patent”) (Exhibit F); 10,457,995 (“the
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`’995 patent”) (Exhibit G); 10,494,678 (“the ’678 patent”) (Exhibit H); 10,501,808 (“the ’808
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`patent”) (Exhibit I); 10,501,810 (“the ’810 patent”) (Exhibit J); 10,683,556 (“the ’556 patent”)
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`(Exhibit K); 10,704,085 (“the ’085 patent”) (Exhibit L); 10,704,086 (“the ’086 patent”) (Exhibit
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`M), 10,738,364 (“the ’364 patent”) (Exhibit N); 10,793,916 (“the ’916 patent”) (Exhibit O);
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`10,801,063 (“the ’1063 patent”) (Exhibit P); 10,822,663 (“the ’663 patent”) (Exhibit Q);
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`10,837,063 (“the ’7063 patent”) (Exhibit R); 10,870,880 (“the ’880 patent”) (Exhibit S);
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`10,876,152 (“the ’152 patent”) (Exhibit T); 10,876,171 (“the ’171 patent”) (Exhibit U);
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`10,876,172 (“the ’172 patent”) (Exhibit V); 10,883,139 (“the ’139 patent”) (Exhibit W);
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`10,889,858 (“the ’858 patent”) (Exhibit X); 10,894,974 (“the ’974 patent”) (Exhibit Y);
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`10,947,600 (“the ’600 patent”) (Exhibit Z); 10,961,592 (“the ’592 patent”) (Exhibit AA);
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`10,982,265 (“the ’265 patent”) (Exhibit BB); 10,995,376 (“the ’376 patent”) (Exhibit CC);
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`11,001,899 (“the ’899 patent”) (Exhibit DD); 11,091,796 (“the ’796 patent”) (Exhibit EE);
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`11,091,797 (“the ’797 patent”) (Exhibit FF); 11,118,221 (“the ’221 patent”) (Exhibit GG);
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`11,149,306 (“the ’306 patent”) (Exhibit HH); and 11,149,307 (“the ’307 patent”) (Exhibit II).
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`51.
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`These Guardant patents disclose and claim the application of communication
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`theory ideas to cancer diagnostics to lower error rates, including by calculating error probabilities
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`and confidence scores in sequence reads using various methodologies based on communication
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`theory, such as hidden markov, dynamic programming, support vector machine, Bayesian
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`network, trellis decoding, Viterbi decoding, expectation maximization, Kalman filtering, and
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`neural network methodologies.
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`52.
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`At least the ’731 patent, the ’822 patent, the ’743 patent, the ’127 patent, the ’995
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`patent, the ’678 patent, the ’808 patent, the ’810 patent, the ’556 patent, the ’364 patent, the ’916
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`patent, the ’663 patent, the ’7063 patent, the ’171 patent, the ’172 patent, the ’600 patent, the
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`’592 patent, and the ’376 patent claim a priority date as early as September 4, 2012, by virtue of
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`related patent applications.
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`53.
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`In September 2012, without Illumina’s permission, Eltoukhy also sent Talasaz
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`additional Illumina material that was marked as Illumina “Company Confidential.”
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`54. While still employed by Illumina, Eltoukhy also used Illumina computers to draft
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`and revise patent claims for Guardant.
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`55.
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`On December 15, 2012, Eltoukhy emailed draft patent claims dated August 10,
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`2012, from his Illumina work email to his personal Gmail account.
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`56.
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`The draft claims included, among other elements, “sequencing extracellular
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`polynucleotides from a bodily sample from a subject, wherein each of the extracellular
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`polynucleotide are optionally attached to multiple barcodes,” “comparing the resulting number
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`for each of the regions with potential rare mutation(s) to similarly derived numbers from a
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`control sample,” “optionally filtering out reads that fail to meet a set threshold,” “filtering reads
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`with a quality score lower than a set threshold,” and “the normalizing and detection is performed
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`using one or more of hidden markov, dynamic programming, support vector machine, [and]
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`Bayesian network.”
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`57. Materials that Eltoukhy obtained from Illumina employees included, by way of
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`example, Illumina’s confidential and proprietary error correction methods and communication
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`theory ideas, including methods for grouping sequence reads into families and then collapsing
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`those reads into a single consensus sequence from the sequence reads in the families. Eltoukhy
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`and Talasaz used this information in Guardant patent applications and claims, including in
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`systems and methods to detect rare mutations and copy number variations.
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`58.
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`For example, the ’731 patent obtained by Guardant discloses embodiments for
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`“detecting [a] tumor marker in the set of consensus sequence,” “detecting [a] copy number
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`variation of consensus sequence,” or “detecting the presence of sequence variations,” in which
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`“collapsing comprises: i. grouping sequences [sic] reads sequenced from amplified progeny
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`polynucleotides into families, each family amplified from the same tagged parent polynucleotide;
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`and ii. determining a consensus sequence based on sequence reads in a family,” and claim 1 of
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`the ’731 patent recites as an element of the claimed invention grouping sequence reads into
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`families, and then collapsing those reads into a single consensus sequence from the sequence
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`reads in the families. See Exhibit A, 7:48–8:4.
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`59.
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`As another example, the ’992 patent obtained by Guardant discloses embodiments
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`for “detecting [a] tumor marker in the set of consensus sequence,” “detecting [a] copy number
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`variation of consensus sequence,” or “detecting the presence of sequence variations,” in which
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`“collapsing comprises: i. grouping sequences [sic] reads sequenced from amplified progeny
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`polynucleotides into families, each family amplified from the same tagged parent polynucleotide;
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`and ii. determining a consensus sequence based on sequence reads in a family,” and claim 1 of
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`the ’992 patent recites as an element of the claimed invention grouping sequence reads into
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`families, and then collapsing those reads into a single consensus sequence from the sequence
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`reads in the families. See Exhibit D, 7:60–8:16.
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`60.
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`Guardant has represented that the ’992 patent “claims priority to several
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`previously filed applications, the earliest of which was filed September 4, 2012.”
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`61.
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`As another example, the ’127 patent obtained by Guardant discloses embodiments
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`for “detecting [a] tumor marker in the set of consensus sequence,” “detecting [a] copy number
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`variation of consensus sequence,” or “detecting the presence of sequence variations,” in which
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`“collapsing comprises: (i) grouping sequences [sic] reads sequenced from amplified progeny
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`polynucleotides into families, each family amplified from the same tagged parent polynucleotide;
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`and (ii) determining a consensus sequence based on sequence reads in a family.” See Exhibit F,
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`7:46–8:2.
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`62.
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`Eltoukhy made inventive contributions to the development of Guardant’s
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`technology, including the technology claimed in Guardant’s patents and patent applications,
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`while employed by Illumina.
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`63.
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`Eltoukhy resigned from Illumina in December 2012. His final day at Illumina
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`was January 2, 2013.
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`64.
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`Eltoukhy took the position of Guardant’s Chief Executive Officer immediately
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`after leaving Illumina.
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`65. When Eltoukhy left Illumina, he took with him, without authority or permission,
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`more than 51,000 Illumina-owned emails.
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`66.
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`The emails that Eltoukhy took from Illumina included more than 1,400 documents
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`specifically labeled “COMPANY CONFIDENTIAL—INTERNAL USE ONLY.”
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`67.
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`By taking those documents from Illumina, Eltoukhy violated his obligations under
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`the employment contracts and company policies to which he agreed as part of his employment
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`with Illumina.
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`68.
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`Eltoukhy also took steps to conceal his unauthorized transfer of Illumina’s
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`confidential information.
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`69.
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`For example, Eltoukhy used a non-Illumina email address to transmit Illumina
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`confidential information to Guardant.
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`70.
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`As another example, according to Illumina’s usual practice at the time Eltoukhy
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`ended his employment at Illumina, employees leaving the company signed certificates
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`representing that they did not have in their possession, nor fail to return, any documents or
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`property belonging to Illumina.
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`71.
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`Eltoukhy did not disclose that he kept in his possession, and failed to return,
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`documents belonging to Illumina.
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`72.
`
`As another example, on March 23, 2017, Guardant filed U.S. Patent Application
`
`No. 15/467,570, which later issued as the ’743 patent (Exhibit C).
`
`73.
`
`Both Eltoukhy and Talasaz were named as inventors of the claimed inventions of
`
`U.S. Patent Application No. 15/467,570.
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`Case 1:22-cv-00334-GBW-CJB Document 1 Filed 03/17/22 Page 14 of 31 PageID #: 14
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`
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`74.
`
`On October 27, 2017, however, Eltoukhy’s name as an inventor was removed
`
`from U.S. Patent Application No. 15/467,570.
`
`75.
`
`Illumina did not learn of Eltoukhy’s and Talasaz’s removal of Illumina
`
`confidential information and breaches of contract until in or around June 2019, during the course
`
`of responding to third-party discovery requests served on Illumina in connection with patent
`
`litigation Guardant had filed in this District against Foundation Medicine, Inc. (“FMI”)
`
`(Guardant Health, Inc. v. Foundation Medicine, Inc., No. 1:17-cv-01616-LPS-CJB (D. Del.))
`
`and Personal Genome Diagnostics (“PGDx”) (Guardant Health, Inc. v. Personal Genome
`
`Diagnostics, Inc., No. 1:17-cv-01623-LPS-CJB (D. Del.)) (collectively “the FMI litigation”).
`
`76.
`
`In April 2019, FMI served a third-party subpoena for documents and a deposition
`
`on Illumina. In May 2019, PGDx also served a third-party subpoena for documents and a
`
`deposition on Illumina.
`
`77.
`
`In response to requests for certain communications by Eltoukhy while he was
`
`employed at Illumina, Illumina conducted a search for responsive documents.
`
`78.
`
`Then, in June 2019, Illumina was notified that fact discovery in the FMI litigation
`
`had revealed, based on review of Guardant files and Eltoukhy’s personal files, that Eltoukhy had
`
`taken the more than 51,000 Illumina documents, including more than 1,400 “COMPANY
`
`CONFIDENTIAL” documents, when he left Illumina.
`
`79.
`
`Between August and November 2019, Eltoukhy’s name as an inventor was
`
`removed from numerous additional Guardant patent applications on which Eltoukhy was
`
`originally named as an inventor, including U.S. Patent Application No. 15/872,831 (Eltoukhy
`
`removed on August 1, 2019, application issued as the ’995 patent (Exhibit G)); U.S. Patent
`
`Application No. 15/978,848 (Eltoukhy removed on August 1, 2019, application issued as the
`
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`Case 1:22-cv-00334-GBW-CJB Document 1 Filed 03/17/22 Page 15 of 31 PageID #: 15
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`
`
`’808 patent (Exhibit I)); U.S. Patent Application No. 16/389,680 (Eltoukhy removed on October
`
`17, 2019, application issued as the ’152 patent (Exhibit T)); and U.S. Patent Application No.
`
`15/828,099 (Eltoukhy removed on November 21, 2019, application issued as the ’7063 patent
`
`(Exhibit R)).
`
`80.
`
`On December 10, 2019, the Court in the FMI litigation issued an order finding
`
`that Eltoukhy had improperly deleted or attempted to delete information, including confidential
`
`Illumina documents, from his personal files after being deposed in the FMI litigation on April 8,
`
`2019.
`
`81.
`
`On or about January 10, 2020, Illumina learned from public filings in the FMI
`
`litigation that Eltoukhy had also forwarded information from Illumina employees to Eltoukhy’s
`
`personal Gmail account and then to Talasaz at Guardant.
`
`82.
`
`Guardant continues to apply for intellectual property, including patents, that use
`
`confidential, proprietary, and trade secret information that Eltoukhy and Talasaz misappropriated
`
`from Illumina and that include inventive contributions made by Illumina personnel, including
`
`Eltoukhy while he was an Illumina employee. These include, but are not limited to, U.S. Patent
`
`Application Nos. 17/210,191; 16/711,892; 16/913,965; 17/069,535; 17/410,903; 17/512,581;
`
`17/512,587; 17/563,781; 17/563,816.
`
`83.
`
`Guardant also continues to develop technology and products using the
`
`confidential, proprietary, trade secret information that Eltoukhy and Talasaz misappropriated
`
`from Illumina.
`
`COUNT I:
`DECLARATORY JUDGMENT TO CORRECT INVENTORSHIP AND OWNERSHIP
`UNDER 35 U.S.C. § 256
`
`84.
`
`Illumina incorporates, repeats and re-alleges all of the paragraphs above as if fully
`
`set forth herein.
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`Case 1:22-cv-00334-GBW-CJB Document 1 Filed 03/17/22 Page 16 of 31 PageID #: 16
`
`
`
`85.
`
`The ’731 patent, the ’822 patent, the ’743 patent, the ’127 patent, the ’995 patent,
`
`the ’678 patent, the ’808 patent, the ’810 patent, the ’556 patent, the ’364 patent, the ’916 patent,
`
`the ’663 patent, the ’7063 patent, the ’171 patent, the ’172 patent, the ’600 patent, the ’592
`
`patent, the ’376 patent, the ’899 patent, the ’085 patent, the ’086 patent, the ’880 patent, the ’152
`
`patent, the ’974 patent, the ’265 patent, the ’858 patent, the ’992 patent, the ’366 patent, the
`
`’1063 patent, the ’139 patent, the ’221 patent, the ’306 patent, the ’307 patent, the ’796 patent,
`
`and the ’797 patent are each assigned solely to Guardant.
`
`86.
`
`The ’731 patent, the ’822 patent, the ’743 patent, the ’127 patent, the ’995 patent,
`
`the ’678 patent, the ’808 patent, the ’810 patent, the ’556 patent, the ’364 patent, the ’916 patent,
`
`the ’663 patent, the ’7063 patent, the ’171 patent, the ’172 patent, the ’600 patent, the ’592
`
`patent, the ’376 patent, and the ’899 patent generally relate to the concepts of detecting a
`
`mutation, generic aberrations, copy number variations, or a cancer, etc., using molecular
`
`barcoding in a sample including but not limited to cell-free DNA.
`
`87.
`
`The ’858 patent relates to the concepts of increasing tagging efficiency of
`
`attaching double-stranded cell-free DNA to molecular barcodes for detecting a mutation, generic
`
`aberrations, copy number variations, or a cancer, etc., using molecular barcoding.
`
`88.
`
`The ’085 patent, the ’086 patent, the ’880 patent, the ’152 patent, the ’974 patent,
`
`the ’265 patent, the ’796 patent, and the ’797 patent generally relate to increasing tagging
`
`efficiency of attaching cell-free DNA molecules to molecular barcodes for detecting a mutation,
`
`generic aberrations, copy number variations, or a cancer, etc., using molecular barcoding.
`
`89.
`
`The ’366 patent, the ’1063 patent, the ’139 patent, the ’221 patent, the ’306
`
`patent, and the ’307 patent generally relate to increasing tagging efficiency of attaching double-
`
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`Case 1:22-cv-00334-GBW-CJB Document 1 Filed 03/17/22 Page 17 of 31 PageID #: 17
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`
`
`stranded and/or cell-free DNA molecules to molecular barcodes for detecting a mutation, generic
`
`aberrations, copy number variations, or a cancer, etc., using molecular barcoding.
`
`90.
`
`Illumina employees, including at least Eltoukhy (while employed by Illumina)
`
`and Steemers, contributed novel concepts and work to the inventions claimed in the ’731 patent,
`
`the ’822 patent, the ’743 patent, the ’127 patent, the ’995 patent, the ’678 patent, the ’808 patent,
`
`the ’810 patent, the ’556 patent, the ’364 patent, the ’916 patent, the ’663 patent, the ’7063
`
`patent, the ’171 patent, the ’172 patent, the ’600 patent, the ’592 patent, the ’376 patent, the ’899
`
`patent, the ’085 patent, the ’086 patent, the ’880 patent, the ’152 patent, the ’974 patent, the ’265
`
`patent, the ’858 patent, the ’992 patent, the ’366 patent, the ’1063 patent, the ’139 patent, the
`
`’221 patent, the ’306 patent, the ’307 patent, the ’796 patent, and the ’797 patent. These
`
`contributions include, for example, applications of error correction methods and communication
`
`theory ideas, including in grouping sequence reads into families and then collapsing those reads
`
`into a single consensus sequence from the sequence reads in the families.
`
`91.
`
`Eltoukhy, while employed at Illumina, received and used Illumina confidential
`
`information to collaborate with Talasaz in developing Guardant’s technology, including to
`
`conceive claimed inventions of the ’731 patent, the ’822 patent, the ’743 patent, the ’127 patent,
`
`the ’995 patent, the ’678 patent, the ’808 patent, the ’810 patent, the ’556 patent, the ’364 patent,
`
`the ’916 patent, the ’663 patent, the ’7063 patent, the ’171 patent, the ’172 patent, the ’600