Case 1:22-cv-00334-GBW-CJB Document 45 Filed 07/20/22 Page 1 of 15 PageID #: 2389
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`ILLUMINA, INC.,
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`Defendants.
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`Plaintiff,
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`v.
`
`GUARDANT HEALTH, INC.; HELMY
`ELTOUKHY; and AMIRALI TALASAZ,
`
`
`
`
`
`C.A. No. 22-334-VAC
`
`DEFENDANTS’ REPLY IN SUPPORT OF MOTION TO DISMISS
`UNDER FEDERAL RULES OF CIVIL PROCEDURE 12(B)(1), 12(B)(2), AND 12(B)(6)
`
`OF COUNSEL:
`
`Orin Snyder*
`Jane M. Love*
`Brian A. Rosenthal*
`Justine M. Goeke*
`Grace E. Hart*
`GIBSON, DUNN & CRUTCHER LLP
`200 Park Avenue
`New York, NY 10166
`(212) 351-4000
`
`Greta B. Williams*
`Sophia A. Vandergrift*
`Trenton J. Van Oss**
`GIBSON, DUNN & CRUTCHER LLP
`1050 Connecticut Avenue, N.W.
`Washington, D.C. 20036
`(202) 955-8500
`
`Dated: July 20, 2022
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`ME1 41573236v.1
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`Daniel M. Silver (#4758)
`Alexandra M. Joyce (#6423)
`MCCARTER & ENGLISH, LLP
`Renaissance Centre
`405 N. King Street, 8th Floor
`Wilmington, DE 19801
`(302) 984-6300
`dsilver@mccarter.com
`ajoyce@mccarter.com
`
`Attorneys for Defendants Guardant Health,
`Inc., Helmy Eltoukhy, and AmirAli Talasaz
`
`OF COUNSEL:
`
`Trey Cox*
`GIBSON, DUNN & CRUTCHER LLP
`2001 Ross Avenue, Suite 2100
`Dallas, TX 75201
`(214) 698-3100
`
`*admitted pro hac vice
`**pro hac vice pending
`
`

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`Case 1:22-cv-00334-GBW-CJB Document 45 Filed 07/20/22 Page 2 of 15 PageID #: 2390
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`TABLE OF CONTENTS
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`Page
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`I.
`
`II.
`
`INTRODUCTION ...............................................................................................................1
`
`ARGUMENT .......................................................................................................................1
`
`A.
`
`Illumina Fails to State an Inventorship and Ownership Claim ................................1
`
`Illumina Fails to Plausibly Allege Inventorship ..........................................2
`
`Illumina Fails to Plausibly Allege an Ownership Interest ...........................4
`
`B.
`
`C.
`
`D.
`
`Illumina’s Misappropriation Claims Are Insufficiently Alleged and
`Untimely ..................................................................................................................5
`
`Illumina’s Contract Claims Are Insufficiently Alleged and Untimely ....................8
`
`The Court Lacks Personal Jurisdiction over Dr. Eltoukhy and Dr. Talasaz ............9
`
`III.
`
`CONCLUSION ..................................................................................................................10
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`
`Acrisure of Cal., LLC v. SoCal Commercial Ins. Servs., Inc.,
`2019 WL 4137618 (C.D. Cal. Mar. 27, 2019) ...........................................................................6
`
`Allergan, Inc. v. Apotex Inc.,
`754 F.3d 952 (Fed. Cir. 2014)....................................................................................................4
`
`Altavion, Inc. v. Konica Minolta Sys. Lab.,
`226 Cal. App. 4th 26 (Cal. Ct. App. 2014) ................................................................................7
`
`BAM Int’l, LLC v. MSBA Grp. Inc.,
`2021 WL 5905878 (Del. Ch. Dec. 14, 2021) ...........................................................................10
`
`Bernson v. Browning-Ferris Indus.,
`873 P.2d 613 (Cal. 1994) ...........................................................................................................8
`
`Burroughs Wellcome Co. v. Barr Labs., Inc.,
`40 F.3d 1223 (Fed. Cir. 1994)................................................................................................2, 3
`
`Czarnik v. Illumina, Inc.,
`437 F. Supp. 2d 252 (D. Del. 2006) ...........................................................................................2
`
`DeRubeis v. Witten Techs., Inc.,
`244 F.R.D. 676 (N.D. Ga. 2007) ................................................................................................8
`
`Display Research Labs., Inc. v. Telegen Corp.,
`133 F. Supp. 2d 1170 (N.D. Cal. 2001) .....................................................................................2
`
`Ethicon, Inc. v. U.S. Surgical Corp.,
`135 F.3d 1456 (Fed. Cir. 1998)..............................................................................................2, 3
`
`Eurofins Pharma v. BioAlliance Pharma,
`623 F.3d 147 (3d Cir. 2010).....................................................................................................10
`
`GAF Bldg. Materials Corp. v. Elk Corp. of Dallas,
`90 F.3d 479 (Fed. Cir. 1996)......................................................................................................2
`
`Gross v. Symantec Corp.,
`2012 WL 3116158 (N.D. Cal. July 31, 2012) ............................................................................8
`
`Guardant Health, Inc. v. Found. Med., Inc.,
`C.A. No. 17-1616-LPS-CJB, D.I. 431 .......................................................................................5
`
`Hazout v. Tsang Mun Ting,
`134 A.3d 274 (Del. 2016) ........................................................................................................10
`ii
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`Human Longevity, Inc. v. J. Craig Venter Inst.,
`2018 WL 6617633 (S.D. Cal. Dec. 18, 2018)............................................................................6
`
`inno360, Inc. v. Zakta, LLC,
`50 F. Supp. 3d 587 (D. Del. 2014) .............................................................................................9
`
`Jolly v. Eli Lilly & Co.,
`751 P.2d 923 (Cal. 1988) ...........................................................................................................9
`
`Klang v. Pflueger,
`2014 WL 4922401 (C.D. Cal. July 10, 2014) ............................................................................8
`
`Larson v. Correct Craft, Inc.,
`569 F.3d 1319 (Fed. Cir. 2009)..................................................................................................4
`
`McAfee v. Francis,
`2011 WL 3293759 (N.D. Cal. Aug. 1, 2011) ............................................................................8
`
`Orkin v. Taylor,
`487 F.3d 734 (9th Cir. 2007) .....................................................................................................9
`
`Pellerin v. Honeywell Int’l, Inc.,
`877 F. Supp. 2d 983 (S.D. Cal. 2012) ........................................................................................6
`
`Swanson v. Alza Corp.,
`2015 WL 1304436 (N.D. Cal. Mar. 20, 2015) ...........................................................................3
`
`Synopsys v. ATopTech,
`2013 WL 5770542 (N.D. Cal. Oct. 24, 2013)............................................................................6
`
`Tech. Licensing Corp. v. Videotek, Inc.,
`545 F.3d 1316 (Fed. Cir. 2008)..................................................................................................4
`
`Thibodeaux v. Teamsters Loc. 853,
`263 F. Supp. 3d 772 (N.D. Cal. 2017) .......................................................................................8
`
`Trovan, Ltd. v. Sokymat SA, Irori,
`299 F.3d 1292 (Fed. Cir. 2002)..................................................................................................2
`
`Vint v. Universal Studios Co.,
`2021 WL 6618535 (C.D. Cal. Apr. 29, 2021) ...........................................................................9
`
`STATUTES
`
`Cal. Civ. Code § 3426.1 ...................................................................................................................7
`
`Cal. Civ. Code § 3426.1(d) ..............................................................................................................7
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`I.
`
`INTRODUCTION
`
`Illumina’s opposition brief confirms this case should be dismissed. Illumina seeks
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`ownership over 35 Guardant patents and nine pending applications, but it discusses just seven of
`
`them. For those, Illumina pleads no inventorship facts or even an ownership interest. Across the
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`board, Illumina fails to identify any trade secrets, and asserts breach of contract without the
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`contracts or their essential terms. Illumina’s complaint is an empty vessel it hopes to fill through
`
`discovery. But that is no surprise. This lawsuit—based on events allegedly occurring a decade
`
`ago—was not brought to pursue legitimate legal claims, but rather in retaliation for Guardant’s
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`cooperation with antitrust enforcers in connection with their investigation of Illumina’s acquisition
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`of Guardant’s main competitor.1 Illumina has no timely or actionable claims, and its “discovery
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`first, plead facts later” tactic cannot succeed. This Court should dismiss the complaint.
`
`II.
`
`ARGUMENT
`
`A.
`
`Illumina Fails to State an Inventorship and Ownership Claim
`
`Illumina seeks ownership over 35 Guardant patents and nine pending patent applications—
`
`178 claims in total—but fails to even attempt to justify most of its request. See D.I. 30 at 10 & nn.
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`4-6. Illumina does not argue it can obtain relief under 35 U.S.C. § 256 for the yet-to-issue patents,
`
`and affirmatively represents it “seeks no such relief.” D.I. 41 at 21. The Court should summarily
`
`dismiss those claims.2 For the 35 issued patents, Illumina does not address 28 of them. Those
`
`1 Illumina coyly notes that it raised its claims in pre-suit discussions with Guardant before
`Guardant’s executives publicly testified against Illumina’s proposed acquisition. D.I. 41 at 2. But
`Illumina was almost certainly aware of Guardant’s cooperation with the FTC before the public
`testimony, and Illumina never once raised these claims over the course of a near-decade-long
`business relationship until after Guardant began cooperating with the FTC. Illumina closed its
`acquisition over regulatory objections and now faces charges from the European Commission that
`it breached the EU Merger Regulation.
`2 Illumina tacks on a disclaimer, stating it “seeks such relief on those applications only if issued
`as patents.” D.I. 41 at 21 (emphasis added; citation omitted). To the extent Illumina is asking to
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`claims must also be summarily dismissed. For the remaining seven, Illumina’s complaint wholly
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`fails to plausibly allege either inventorship or ownership, and each failure compels dismissal.
`
`Illumina Fails to Plausibly Allege Inventorship
`
`Illumina fails to address or overcome the fundamental defects in its inventorship claims.
`
`Illumina simply ignores most of the patents and claims it lists. Without factual allegations
`
`plausibly showing each alleged joint inventor “contribute[d] to the joint arrival at a definite and
`
`permanent idea of the invention” and “collaboration” among inventors, Illumina’s undeveloped
`
`and skeletal claims about the patents it fails to discuss cannot survive. Burroughs Wellcome Co.
`
`v. Barr Labs., Inc., 40 F.3d 1223, 1227, 1229 (Fed. Cir. 1994); see also Trovan, Ltd. v. Sokymat
`
`SA, Irori, 299 F.3d 1292, 1302 (Fed. Cir. 2002) (“inventorship is determined on a claim-by-claim
`
`basis”). At a minimum, the 28 Guardant patents Illumina fails to address at all should be dismissed.
`
`For the seven patents it does address, Illumina fails to identify any non-conclusory
`
`allegations showing inventive contributions by Dr. Eltoukhy or Mr. Steemers (or any other
`
`Illumina employees). Cf. Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir.
`
`1998). Like its complaint, Illumina’s opposition says Dr. Eltoukhy “contributed to the conception
`
`and reduction to practice” of certain claim elements, but Illumina never alleges facts to support
`
`that bare conclusion. D.I. 41 at 17. Illumina also says Dr. Eltoukhy “drafted patent claims for
`
`Guardant while an Illumina employee.” Id. But the legal standard for inventorship does not ask
`
`who drafted patent claims; it asks who conceived of them, and Illumina must plausibly allege a
`
`keep these claims pending such that they would spring to life if and when Guardant’s patents are
`issued, “any claims . . . based on patents that may issue are speculative and not ripe for review.”
`Display Research Labs., Inc. v. Telegen Corp., 133 F. Supp. 2d 1170, 1174 (N.D. Cal. 2001); see
`also GAF Bldg. Materials Corp. v. Elk Corp. of Dallas, 90 F.3d 479, 482 (Fed. Cir. 1996)
`(“Justiciability must be judged as of the time of filing, not as of some indeterminate future date
`when the court might reach the merits and the patent has issued.”); Czarnik v. Illumina, Inc., 437
`F. Supp. 2d 252, 259 (D. Del. 2006) (dismissing inventorship claims against Illumina on these
`grounds).
`
`2
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`contribution to conception. Burroughs Wellcome, 40 F.3d at 1227-29.
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`Illumina says even less about how Mr. Steemers allegedly contributed, simply reciting
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`vague and broad categories—“applications of error correction methods and communication theory
`
`ideas”—and asserting, without elaboration, “[t]he Complaint’[s] allegations allow the reasonable
`
`inference that [Mr. Steemers and others] made a more-than-insignificant contribution to the
`
`conception of at least one claim” of each patent. D.I. 41 at 17 (citation omitted). The only possible
`
`contribution from Mr. Steemers Illumina actually identifies is a PowerPoint presentation allegedly
`
`sent from him to Dr. Eltoukhy and then from Dr. Eltoukhy to Dr. Talasaz, but there are no
`
`allegations about whose ideas were reflected in the presentation—so there is no basis to infer Mr.
`
`Steemers or Dr. Eltoukhy made inventive contributions merely by forwarding information
`
`prepared by someone else. Even if Illumina tied Mr. Steemers or Dr. Eltoukhy to the presentation,
`
`Illumina fails to plead facts explaining what inventive contributions it contained (as opposed to
`
`information already generally known in the art) or to tie any such contributions to any particular
`
`invention. Illumina says it need not “specify in a complaint who created the Steemers slides and
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`other misappropriated materials,” D.I. 41 at 19, but it cannot establish contribution or collaboration
`
`without that information because “one does not qualify as a joint inventor by merely assisting the
`
`actual inventor after conception of the claimed invention.” Ethicon, 135 F.3d at 1460. Illumina
`
`also cannot excuse the deficiencies in its complaint by pointing to other litigation concerning only
`
`a small subset of the patents at issue here. See infra note 3.
`
`Illumina’s hazy account of inventorship, including its vague allusions to possible
`
`“contributions of other Illumina employees” besides Mr. Steemers and Dr. Eltoukhy, D.I. 41 at 18,
`
`reflects its obvious plan to reverse-engineer its claims based on whatever it can dig up in discovery.
`
`Cf. Swanson v. Alza Corp., 2015 WL 1304436, at *10 (N.D. Cal. Mar. 20, 2015) (inventorship
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`contentions “prevent the parties from shuffling or re-framing their theories”) (citation omitted).
`3
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`That gets things backwards: Illumina is not entitled to dig through its competitor’s files unless
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`and until it can plausibly allege an actionable set of facts. It has not done so.
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`Illumina Fails to Plausibly Allege an Ownership Interest
`
`Even if Illumina plausibly alleged inventorship, it must also demonstrate an ownership
`
`interest to have standing to sue. See Larson v. Correct Craft, Inc., 569 F.3d 1319, 1326-27 (Fed.
`
`Cir. 2009). To do so, Illumina must allege the co-inventor assigned their ownership interest to
`
`Illumina. There are no allegations plausibly supporting that conclusion.
`
`For Dr. Eltoukhy, Illumina alleged only that his employment agreements required him to
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`“assign to Illumina inventions made while employed by Illumina that are related to Illumina’s
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`business.” Compl. ¶ 19 (emphasis added). The problem is that the complaint does not plausibly
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`allege conception (much less reduction to practice) occurred during Dr. Eltoukhy’s employment,
`
`and an invention is only “made” (at the earliest) when it is conceived. Allergan, Inc. v. Apotex
`
`Inc., 754 F.3d 952, 967 (Fed. Cir. 2014); see D.I. 30 at 14-15. Without allegations showing
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`conception or reduction to practice “while” Dr. Eltoukhy was employed by Illumina, Illumina fails
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`to show any assignment. Illumina offers two responses, but neither of them saves the complaint.
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`First, Illumina says the complaint does “allege[] specific dates showing conception
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`occurred while Eltoukhy was employed by Illumina.” D.I. 41 at 20 (citing Compl. ¶¶ 52, 60); see
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`also id. at 17. But the complaint does not say that (and says nothing about reduction to practice).
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`The allegations Illumina cites allege the patents at issue claim a priority date during Dr. Eltoukhy’s
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`employment, but that priority date is “by virtue of related patent applications.” Compl. ¶ 52; id.
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`¶ 60 (alleging patent “claims priority to several previously filed applications”). It does not follow,
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`and Illumina does not plausibly allege, the priority date is the date of conception of the claims at
`
`issue here. See Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326 (Fed. Cir. 2008)
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`(priority date assessed claim-by-claim in chains of related applications).
`4
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`Second, Illumina says Guardant’s argument is “a non-sequitur” because Illumina “alleges
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`Eltoukhy is a joint inventor, not the sole inventor,” and a joint inventor need only “contribute to
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`the invention’s conception.” D.I. 41 at 20 (citation omitted). The suggestion seems to be Dr.
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`Eltoukhy may have contributed while employed by Illumina to an invention that was conceived
`
`later. That argument presents doctrinal difficulties (because contribution must be to conception or
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`later reduction to practice), but even assuming the point, Illumina’s allegations about assignment
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`refer only to “inventions made while employed by Illumina.” Compl. ¶ 19 (emphasis added).
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`Whether or not Dr. Eltoukhy later became a joint inventor through his contributions, Illumina fails
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`to allege an invention was made during his employment (and so fails to plead any assignment).3
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`The allegations for Mr. Steemers fare even worse, because the complaint does not allege
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`Mr. Steemers executed any assignment agreement. Illumina stitches together allegations about
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`Dr. Eltoukhy’s and Dr. Talasaz’s agreements with allegations that Mr. Steemers was also an
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`employee, see D.I. 41 at 21 (citing Compl. ¶¶ 19, 90, 96), but those allegations reveal nothing
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`about whether Mr. Steemers signed any assignment agreement—much less its essential terms.
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`These are basic and fatal gaps going to the heart of Illumina’s claims. Illumina’s refusal
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`to provide any detail about its claims reflects its intent to keep its complaint an empty vessel so
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`that it can reverse-engineer a case after fishing through a sea of discovery.
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`B.
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`Illumina’s Misappropriation Claims Are Insufficiently Alleged and Untimely
`
`Illumina’s trade secrets misappropriation claims follow the same pattern, and here the lack
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`of detail works double-duty: Illumina refuses to adequately describe its alleged trade secrets, and
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`3 Without providing any details or specifying how it connects to any allegations in its complaint,
`Illumina asserts that “a prior suit Guardant filed in this District over patents at issue here” supports
`its claims. D.I. 41 at 16 (citing Guardant Health, Inc. v. Found. Med., Inc., C.A. No. 17-1616-
`LPS-CJB, D.I. 431 (“FMI”)). That reliance is misplaced. The FMI litigation involved just four of
`the 35 patents at issue here, and of those four, the summary judgment report and recommendation
`Illumina cites addressed inventorship for just three (and not at all for Mr. Steemers).
`5
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`then uses the lack of detail to escape a clear statute-of-limitations bar.
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`Failure to Adequately Allege Trade Secrets. California law requires “sufficient
`
`particularity” when alleging trade secrets. Acrisure of Cal., LLC v. SoCal Commercial Ins. Servs.,
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`Inc., 2019 WL 4137618, at *3 (C.D. Cal. Mar. 27, 2019). Illumina fails to clear that threshold,
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`instead relying on insufficient “catchall language” that “does not clearly refer to tangible trade
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`secret material.” Id. (internal quotations and emphasis omitted).
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`Where Illumina provides any description at all, it lacks the particularity required to survive
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`dismissal. Illumina simply lists “broad categories” of technology that “are not adequate to support
`
`a trade secrets claim.” Human Longevity, Inc. v. J. Craig Venter Inst., 2018 WL 6617633, at *4
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`(S.D. Cal. Dec. 18, 2018). It says its PowerPoint slides held information about “random coding
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`improvement in error rate for use in genetic sequencing to obtain better accuracy from fewer
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`sequence reads,” and also cryptically mentions “materials” about “error correction methods and
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`communication theory ideas, including methods for grouping sequence reads into families and
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`then collapsing those reads into a single consensus sequence from the sequence reads in the
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`families.” D.I. 41 at 22-23. But “error correction methods” and “communication theory ideas”
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`are high-level concepts existing outside of Illumina, and Illumina’s vague and impenetrable
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`descriptions lack the requisite “particularity . . . to ascertain at least the boundaries within which
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`the secret lies.” Pellerin v. Honeywell Int’l, Inc., 877 F. Supp. 2d 983, 988 (S.D. Cal. 2012)
`
`(citation omitted); see also Human Longevity, 2018 WL 6617633, at *5 (dismissing “expansive”
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`trade secrets allegations); Synopsys v. ATopTech, 2013 WL 5770542, at *6 (N.D. Cal. Oct. 24,
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`2013) (“sweeping and vague”). Illumina’s catchall “including” language only exacerbates this
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`problem. D.I. 30 at 17-19. And its cursory attempt (at 23-24) to distinguish similar cases as
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`involving “generic” trade secret descriptions proves the point—that is precisely the problem here.
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`Illumina also fails to adequately allege any of its purported trade secrets are “the subject of
`6
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`efforts that are reasonable under the circumstances to maintain [their] secrecy.” Cal. Civ. Code
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`§ 3426.1. Illumina parrots the statute and points to employment agreements supposedly requiring
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`secrecy, but it provides no details about those agreements or their relevant provisions. See infra
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`at 8-9. And Illumina’s own allegations give ample reason to doubt its efforts. Illumina could have
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`discovered any information transfer through basic diligence, but it disclaims learning anything of
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`the sort for years—even after its trade secrets were supposedly used in Guardant’s public patent
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`applications. Compl. ¶¶ 49, 75. And even after Illumina learned of this transfer of company
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`information, it inexplicably waited nearly three years before filing this lawsuit. Id. ¶¶ 75, 78.4
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`Statute of Limitations. Illumina’s misappropriation claim is also time-barred. Guardant
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`cited cases showing that patents issued as early as 2016 and 2017 put Illumina on (at least)
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`constructive notice of any alleged misappropriation. D.I. 30 at 19-21. Illumina’s response to those
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`cases is to say Guardant has “identified no Illumina trade secrets specifically disclosed in
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`Guardant’s patent applications.” D.I. 41 at 8. But first, the complaint identifies the portions of
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`Guardant’s patents that allegedly contain Illumina’s trade secrets; that is enough for constructive
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`notice, even if the secrets were not “specifically disclosed.” Compl. ¶¶ 58-59, 61. And second, to
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`the extent Guardant has “identified no Illumina trade secrets,” that is only because Illumina fails
`
`to describe trade secrets with any particularity in its complaint. Illumina cannot use its own
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`pleading deficiencies to slip out of a clear statute-of-limitations bar.5
`
`4 Illumina has a similar problem alleging any trade secrets “[d]erive[d] independent economic
`value.” Cal. Civ. Code § 3426.1(d). Illumina’s defense is that it “invested substantial resources
`in research and development.” D.I. 41 at 23 (quoting Compl. ¶ 107). But that does not mean any
`resulting “secrets” are valuable, see Altavion, Inc. v. Konica Minolta Sys. Lab., 226 Cal. App. 4th
`26, 62 (Cal. Ct. App. 2014) (information “must be sufficiently valuable to afford an economic
`advantage over others”) (quotations omitted), and Illumina’s only other allegations merely parrot
`the statute without supporting facts. Compare Compl. ¶ 111, with Cal. Civ. Code § 3426.1(d).
`5 Illumina also notes that factual questions “often” prevent statute-of-limitations defenses from
`prevailing at the motion-to-dismiss stage because there are “usually” questions about when a
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`C.
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`Illumina’s Contract Claims Are Insufficiently Alleged and Untimely
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`Failure to Plead Essential Terms. Illumina fails to state a contract claim because it neither
`
`“attach[ed] a copy of the contract[s] to the complaint” nor pleaded the “essential terms” of those
`
`contracts. Gross v. Symantec Corp., 2012 WL 3116158, at *11 (N.D. Cal. July 31, 2012). Illumina
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`easily could have attached the relevant contracts to its complaint, and its refusal to do so suggests
`
`it has something to hide (perhaps relating to venue, choice-of-law, or arbitration). Instead,
`
`Illumina gestures vaguely toward the “terms of those agreements” (referring collectively to
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`“employment agreements” “including” at least four contracts), D.I. 41 at 24, without quoting a
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`single contractual term in its pleading or even saying which alleged terms are in which contracts.
`
`Cf. McAfee v. Francis, 2011 WL 3293759, at *2 (N.D. Cal. Aug. 1, 2011) (dismissing contract
`
`claims where plaintiff failed to “specify the exact terms . . . that were allegedly breached”). Here,
`
`again, Illumina makes amorphous claims in the hope of “mold[ing] its cause of action around the
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`discovery it receives.” DeRubeis v. Witten Techs., Inc., 244 F.R.D. 676, 681 (N.D. Ga. 2007).
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`Statute of Limitations. Illumina does not (and cannot) dispute that every single alleged
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`contract breach occurred a decade ago—well outside the limitations period. Illumina instead says
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`it did not discover the alleged breaches until June 2019. D.I. 41 at 10. But publicly available
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`information made the alleged breaches “reasonably discoverable”—and put Illumina on inquiry
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`plaintiff should have discovered a claim. D.I. 41 at 5-6 (citation omitted). But none of the cases
`Illumina cites concerns publicly issued patents that put a plaintiff on constructive notice, and courts
`have granted motions to dismiss in precisely those circumstances. See, e.g., Klang v. Pflueger,
`2014 WL 4922401, at *6 (C.D. Cal. July 10, 2014).
`Nor does Illumina’s fallback argument—fraudulent concealment—change the analysis. See D.I.
`41 at 8-9. For one thing, fraudulent concealment is subject to Rule 9(b)’s heightened pleading
`standard, and Illumina’s allegations fall far short. Thibodeaux v. Teamsters Loc. 853, 263 F. Supp.
`3d 772, 778 (N.D. Cal. 2017). In any event, fraudulent concealment tolls the limitations period
`only “until such time as plaintiff, by the exercise of reasonable diligence, should have discovered”
`its claim, so any tolling would end when Guardant’s patents issued. Bernson v. Browning-Ferris
`Indus., 873 P.2d 613, 615 (Cal. 1994) (citation omitted).
`8
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`Case 1:22-cv-00334-GBW-CJB Document 45 Filed 07/20/22 Page 13 of 15 PageID #: 2401
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`notice—many years ago. Vint v. Universal Studios Co., 2021 WL 6618535, at *4 (C.D. Cal. Apr.
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`29, 2021). Guardant’s founding, and Dr. Talasaz’s and Dr. Eltoukhy’s roles in founding Guardant,
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`were not “secretive.” D.I. 41 at 9. To the contrary, Guardant’s incorporation in 2011 and Dr.
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`Talasaz’s and Dr. Eltoukhy’s work for Guardant starting in 2012 and 2013—which Illumina now
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`claims are breaches, Compl. ¶¶ 125, 136—were disclosed in SEC filings, press releases, and other
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`public sources in 2013, 2014, 2015, and 2016. See Silver Decl., Exs. 1-6. This publicly available
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`information put Illumina on, at a minimum, inquiry notice of these alleged breaches. See Orkin v.
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`Taylor, 487 F.3d 734, 741-42 (9th Cir. 2007). Further, the allegedly misappropriated information
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`was incorporated in Guardant’s patent applications that have been public since 2015 and 2016—
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`which similarly put Illumina on inquiry notice of that alleged breach. See D.I. 30 at 20, 23.
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`Illumina mischaracterizes Guardant’s arguments as a mere “disagree[ment]” about when
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`Illumina discovered the breaches. D.I. 41 at 9. But regardless of when Illumina actually
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`discovered the alleged breaches, the relevant point is that it could have and should have done so
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`based on publicly available information and minimal diligence. Illumina brushes aside its inaction
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`by claiming there was “no outward indication of wrongdoing.” D.I. 41 at 10. But if Illumina’s
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`allegations are to be believed, then Guardant’s incorporation (which was disclosed in SEC filings)
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`and public patent applications were breaches and indications of wrongdoing. See Compl. ¶¶ 125,
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`136. This was more than enough to raise “suspicion” of “wrongdoing”—triggering Illumina’s
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`duty to “reasonably investigate” and “commenc[ing] the limitations period.” Jolly v. Eli Lilly &
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`Co., 751 P.2d 923, 928 (Cal. 1988).
`
`D.
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`The Court Lacks Personal Jurisdiction over Dr. Eltoukhy and Dr. Talasaz
`
`To meet its “burden of establishing” personal jurisdiction “with reasonable particularity,”
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`a plaintiff must plead both “a statutory basis for jurisdiction” and that “the exercise of jurisdiction
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`comports with the defendant’s right to due process.” inno360, Inc. v. Zakta, LLC, 50 F. Supp. 3d
`9
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`Case 1:22-cv-00334-GBW-CJB Document 45 Filed 07/20/22 Page 14 of 15 PageID #: 2402
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`587, 592 (D. Del. 2014). Illumina treats due process as an afterthought and says it is satisfied
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`simply because Dr. Eltoukhy and Dr. Talasaz “served as directors and officers of a Delaware
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`corporation” and “chose to incorporate in Delaware.” D.I. 41 at 14. Courts have repeatedly held
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`that this is insufficient to establish personal jurisdiction. See D.I. 30 at 25.
`
`Illumina’s leading case, Hazout v. Tsang Mun Ting, 134 A.3d 274 (Del. 2016), is a study
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`in contrasts from the facts here. There, the CEO of a Delaware company diverted money that the
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`company “obtained control over in the course of negotiating . . . four agreements that provided for
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`the application of Delaware law, one of which also stated that ‘[a]ny dispute or cause of action
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`arising hereunder shall be litigated in the State or Federal courts situated in the State of Delaware’
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`and that involved a contract that would have transferred control of a Delaware corporation from
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`its current controllers.” Id. at 279. The “conduct underlying all the claims was in fact Delaware-
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`focused and involved parties using Delaware law as their language of commerce in negotiating the
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`change of control of a Delaware corporation.” Id. at 289. Illumina brings misappropriation claims
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`under California law based on California conduct among California employees of California-based
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`companies, and its hazy contractual allegations do not mention any choice-of-law or forum
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`selection clauses. Cf. BAM Int’l, LLC v. MSBA Grp. Inc., 2021 WL 5905878, at *9-11 (Del. Ch.
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`Dec. 14, 2021) (distinguishing Hazout on similar grounds and dismissing for lack of personal
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`jurisdiction, despite finding § 3114 satisfied). This is not a “Delaware-focused” case.6
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`III.
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`CONCLUSION
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`This Court should dismiss the complaint.
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`6 The Court should also deny Illumina’s cursory request for jurisdictional