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`ILLUMINA, INC.,
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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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`Civil Action No. 22-334-GBW-CJB
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`Case 1:22-cv-00334-GBW-CJB Document 90 Filed 01/31/23 Page 1 of 37 PageID #: 2874
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` IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`REPORT AND RECOMMENDATION
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`In this case, Plaintiff Illumina, Inc. (“Plaintiff” or “Illumina”) brings correction of
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`inventorship, trade secret misappropriation and breach of contract claims against Defendants
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`Guardant Health, Inc. (“Guardant”), Helmy Eltoukhy (“Eltoukhy”) and AmirAli Talasaz
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`(“Talasaz” and collectively with Guardant and Eltoukhy, “Defendants”). 1 Pending before the
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`Court is Defendants’ motion to dismiss Illumina’s Complaint pursuant to Federal Rules of Civil
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`Procedure 12(b)(1), 12(b)(2) and 12(b)(6) (the “Motion”). (D.I. 29) For the reasons set forth
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`below, the Court recommends that the motion to dismiss be GRANTED-IN-PART and
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`DENIED-IN-PART.
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`I.
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`BACKGROUND
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`A.
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`Factual Background
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`Plaintiff Illumina is a Delaware corporation with its principal place of business in San
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`Diego, California. (D.I. 1 at ¶ 4) The company was founded in 1998 by scientists studying the
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`Eltoukhy and Talasaz will at times be referred to herein as the “Individual
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`1
`Defendants.”
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`

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`Case 1:22-cv-00334-GBW-CJB Document 90 Filed 01/31/23 Page 2 of 37 PageID #: 2875
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`mapping of the human genome, and it develops and manufactures tools and integrated systems
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`for genetic analysis. (Id. at ¶¶ 5-6)
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`Defendant Guardant is a Delaware corporation with its principal place of business in
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`Redwood City, California. (Id. at ¶ 10) Guardant develops and markets blood-based cancer
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`detection tests. (Id.; see also D.I. 30 at 1, 4)
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`Guardant was founded by Defendants Eltoukhy and Talasaz, two former Illumina
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`employees who are both residents of California. (D.I. 1 at ¶¶ 3, 11-13) On December 9, 2011,
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`while still employed by Illumina, Eltoukhy and Talasaz anonymously incorporated Guardant in
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`Delaware. (Id. at ¶¶ 15, 26) Talasaz worked at Illumina from 2009 until June 2012 and
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`Eltoukhy worked there from 2008 until January 2013. (Id. at ¶¶ 17, 28, 31) Upon leaving their
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`employment at Illumina, both men immediately became employed by Guardant—Talasaz in June
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`2012 and Eltoukhy in January 2013. (Id. at ¶¶ 28-30, 63-64) However, while Eltoukhy was still
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`employed at Illumina, he worked with Talasaz on Guardant projects and technologies, and acted
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`as a corporate agent and fiduciary of Guardant. (Id. at ¶¶ 32-38) Eltoukhy is now the Chief
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`Executive Officer of Guardant, and Talasaz is the Chief Operating Officer of Guardant. (Id. at
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`¶¶ 12-13)
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`While at Illumina, Eltoukhy and Talasaz agreed to and were bound by employment
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`agreements and company policies, which required them to:
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`devote their efforts to Illumina’s business, to not compete with
`Illumina, to avoid conflicts of interest that could compromise their
`loyalty to Illumina, to assign to Illumina their inventions made
`while employed by Illumina that are related to Illumina’s business,
`to protect Illumina’s confidential and proprietary information, to
`not take or use Illumina’s resources and property for their personal
`benefit, and to return Illumina materials to the company upon
`termination of their employment.
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`2
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`Case 1:22-cv-00334-GBW-CJB Document 90 Filed 01/31/23 Page 3 of 37 PageID #: 2876
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`(Id. at ¶ 19) These employment agreements and company policies included: (1) a Proprietary
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`Information and Invention Agreement (“PIIA”); (2) Confidentiality—Disclosure on Need-To-
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`Know Basis Only Acknowledgement (“Confidentiality Acknowledgment”); (3) Code of Ethics;
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`and (4) a Termination Certificate at the end of their employment. (Id. at ¶ 18)
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`The Complaint alleges that while still employed at Illumina, Eltoukhy and Talasaz
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`accessed Illumina’s confidential information and resources relating to “Illumina’s proprietary
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`error correction methods, cell-free DNA, copy number variations, next-generation sequencing,
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`and communication theory.” (Id. at ¶ 22; see also id. at ¶¶ 2, 24-25) For example, it is alleged
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`that during the second half of 2012, Eltoukhy, while still employed at Illumina, forwarded
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`Illumina’s confidential information to his personal e-mail account and to Talasaz; Eltoukhy and
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`Talasaz then allegedly used this confidential information to develop Guardant’s patent portfolio,
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`including 35 patents that are assigned to Guardant. 2 (Id. at ¶¶ 40-50, 53) The confidential
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`2
`The 35 patents at issue consist of three patent families. (See D.I. 30 at 8 n.2; Tr.
`at 178) The first patent family (the “'127 patent family”) includes 19 of the 35 patents: U.S.
`Patent Nos. 10,041,127 (“the '127 patent”); 9,598,731 (“the '731 patent”); 9,834,822 (“the '822
`patent”); 9,840,743 (“the '743 patent”); 10,837,063 (“the '7063 patent”); 10,457,995 (“the '995
`patent”); 10,494,678 (“the '678 patent”); 10,501,808 (“the '808 patent”); 10,501,810 (“the '810
`patent”); 10,683,556 (“the '556 patent”); 10,738,364 (“the '364 patent”); 10,793,916 (“the '916
`patent”); 10,822,663 (“the '663 patent”); 10,961,592 (“the '592 patent”); 10,876,171 (“the '171
`patent”); 10,876,172 (“the '172 patent”); 10,947,600 (“the '600 patent”); 10,995,376 (“the '376
`patent”) and 11,001,899 (“the '899 patent”).
`The second patent family (the “'992 patent family”) includes nine of the 35 patents: U.S.
`Patent Nos. 9,902,992 (“the '992 patent”); 10,894,974 (“the '974 patent”); 10,876,152 (“the '152
`patent”); 10,704,086 (“the '086 patent”); 10,704,085 (“the '085 patent”); 11,091,797 (“the '797
`patent”); 10,870,880 (“the '880 patent”); 10,982,265 (“the '265 patent”) and 11,091,796 (“the
`'796 patent”).
`The third patent family (the “'366 patent family”) includes seven of the 35 patents: U.S.
`Patent Nos. 9,920,366 (“the '366 patent”); 10,883,139 (“the '139 patent”); 10,801,063 (“the '1063
`patent”); 10,889,858 (“the '858 patent”); 11,118,221 (“the '221 patent”); 11,149,306 (“the '306
`patent”) and 11,149,307 (“the '307 patent”). (D.I. 1 at ¶ 50; D.I. 30 at 8 n.2)
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`3
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`

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`Case 1:22-cv-00334-GBW-CJB Document 90 Filed 01/31/23 Page 4 of 37 PageID #: 2877
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`Illumina information included a slide presentation relating to “error rate improvements and
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`communication theory ideas” on how to decode barcodes more effectively (the “communication
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`theory slides”); Eltoukhy requested and obtained these slides on June 27, 2012 from another
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`Illumina employee, Frank Steemers, who at the time was a senior director and researcher
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`working on sequencing technology for Illumina. (Id. at ¶¶ 40-48)
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`The Complaint also alleges that while still employed by Illumina, Eltoukhy drafted and
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`revised patent claims for Guardant using Illumina’s computers. (Id. at ¶ 54) On December 15,
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`2012, Eltoukhy e-mailed draft patent claims dated August 10, 2012 to his personal Gmail
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`account from his Illumina work e-mail account. (Id. at ¶ 55)
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`And the Complaint asserts that when Eltoukhy left his employment at Illumina, he took
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`various Illumina documents with him. More specifically, it states that Eltoukhy appropriated
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`more than 51,000 emails from Illumina, including more than 1,400 documents that were labeled
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`“‘COMPANY CONFIDENTIAL—INTERNAL USE ONLY.’” (Id. at ¶¶ 65-66)
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`Eltoukhy is alleged to have taken various steps to conceal the fact that he was transferring
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`Illumina’s confidential information outside of the company. One such example referenced in the
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`Complaint is Eltoukhy’s use (referenced above) of his personal, non-Illumina e-mail address to
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`transfer Illumina confidential information to Guardant. (Id. at ¶ 69) Another relates to the
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`application that later issued as the '743 patent; that application, filed on March 23, 2017, listed
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`both Eltoukhy and Talasaz as inventors. (Id. at ¶¶ 72-73) However, Eltoukhy’s name as an
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`inventor was removed from the application on October 27, 2017. (Id. at ¶ 74)
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`Illumina alleges that it did not learn of any of Defendants’ wrongful conduct until at least
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`in or around June 2019. In that month, Illumina became aware of some of the above-referenced
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`misconduct in the course of responding to third-party discovery requests that were served on it in
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`4
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`Case 1:22-cv-00334-GBW-CJB Document 90 Filed 01/31/23 Page 5 of 37 PageID #: 2878
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`a patent litigation that Guardant had filed in this District against Foundation Medicine, Inc.
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`(Guardant Health, Inc. v. Foundation Medicine, Inc., Civil Action No. 17-1616-LPS-CJB (D.
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`Del.)) and Personal Genome Diagnostics (Guardant Health, Inc. v. Personal Genome
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`Diagnostics, Inc., Civil Action No. 17-1623-LPS-CJB (D. Del.)) (collectively, the “FMI
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`litigation”). (Id. at ¶¶ 75-78)
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`Thereafter, between August and November 2019, Eltoukhy’s name as an inventor was
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`removed from more Guardant patent applications on which he was originally named as an
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`inventor (these applications issued as the '995 patent, the '808 patent, the '152 patent and the
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`'7063 patent). (Id. at ¶ 79) And after being deposed in the FMI litigation on April 8, 2019,
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`Eltoukhy is alleged to have deleted or attempted to delete confidential Illumina documents from
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`his personal files. (Id. at ¶ 80)
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`Additional relevant factual allegations will be discussed below in the appropriate portions
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`of Section II.
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`B.
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`Procedural Background
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`On March 17, 2022, Illumina filed its Complaint in this case. (D.I. 1) The Complaint
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`contains four Counts:
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`Count I: Declaratory Judgment to Correct Inventorship and
`Ownership under 35 U.S.C. § 256. (Id. at ¶¶ 84-102)
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`Count II: Misappropriation of Illumina Trade Secrets
`Under California’s Uniform Trade Secrets Act [“CUTSA”],
`Cal. Civ. Code § 3426 et seq. against all Defendants. (Id.
`at ¶¶ 103-20);
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`Count III: Breach of Contract against Eltoukhy. (Id. at ¶¶
`121-31); and
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`Count IV: Breach of Contract against Talasaz. (Id. at ¶¶
`132-42)
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`•
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` •
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`•
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`•
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`5
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`Case 1:22-cv-00334-GBW-CJB Document 90 Filed 01/31/23 Page 6 of 37 PageID #: 2879
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`On May 25, 2022, Defendants filed the Motion. (D.I. 29) Briefing on the Motion was
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`completed on July 20, 2022. (D.I. 45) On September 12, 2022, United States District Judge
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`Gregory B. Williams referred this case to the Court to hear and resolve all pre-trial matters up to
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`and including expert discovery matters (but not including summary judgment motions, Daubert
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`motions, pre-trial motions in limine or the pre-trial conference). (D.I. 62) The Court heard oral
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`argument on the Motion on December 9, 2022. (D.I. 83 (hereinafter, “Tr.”))
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`II.
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`DISCUSSION
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`In the portions of its Motion filed pursuant to Rule 12(b)(6), Defendants argue, for
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`various reasons, that each of Counts I-IV should be dismissed. The Court will address those
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`Rule 12(b)(6) arguments first. Thereafter, the Court will take up the portion of Defendants’
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`Motion in which they argue, pursuant to Rule 12(b)(2), that Counts II, III and IV should be
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`dismissed against the Individual Defendants for lack of personal jurisdiction.
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`A. Defendants’ Arguments for Dismissal Pursuant to Rule 12(b)(6)
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`1.
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`Legal Standard
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`The sufficiency of pleadings for non-fraud claims is governed by Rule 8, which requires
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`“a short and plain statement of the claim showing that the pleader is entitled to relief[.]” Fed. R.
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`Civ. P. 8(a)(2). If a Rule 12(b)(6) movant asserts that the plaintiff’s complaint fails to plead
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`sufficient facts necessary to set out a plausible claim, then the reviewing court conducts a two-
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`part analysis. Fowler v. UPMC Shadyside, 578 F.3d 203, 210 (3d Cir. 2009). First, the court
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`separates the factual and legal elements of a claim, accepting “all of the complaint’s well-
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`pleaded facts as true, but [disregarding] any legal conclusions.” Id. at 210-11. Second, the court
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`determines “whether the facts alleged in the complaint are sufficient to show that the plaintiff has
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`6
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`

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`Case 1:22-cv-00334-GBW-CJB Document 90 Filed 01/31/23 Page 7 of 37 PageID #: 2880
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`a ‘plausible claim for relief.’” Id. at 211 (quoting Ashcroft v. Iqbal, 556 U.S. 662, 679 (2009)). 3
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`In assessing the plausibility of a claim, the court must “construe the complaint in the light most
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`favorable to the plaintiff, and determine whether, under any reasonable reading of the complaint,
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`the plaintiff may be entitled to relief.” Id. at 210 (quoting Phillips v. Cnty. of Allegheny, 515
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`F.3d 224, 233 (3d Cir. 2008)).
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`2.
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`Discussion
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`Having set out the relevant legal standard, the Court will now address Defendants’ Rule
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`12(b)(6) arguments as to Illumina’s inventorship, trade secret misappropriation and breach of
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`contract claims in turn.
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`a.
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`Has Illumina Sufficiently Pleaded its Inventorship Claim
`Under 35 U.S.C. § 256?
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`In Count I of the Complaint, Illumina alleges that the inventorship of the 35 patents
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`should be corrected under 35 U.S.C. § 256 (“Section 256”), such that Eltoukhy and/or Steemers
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`should be added as co-inventors on the 35 patents, 4 and that Illumina should be recognized as at
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`least a co-owner of those patents (in light of the fact that Eltoukhy and Steemers would have then
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`3
`In resolving a motion to dismiss, a court typically only considers the allegations in
`the complaint, the exhibits attached thereto, documents or facts that are incorporated by
`reference into the complaint or that are otherwise integral to the complaint’s allegations, matters
`of public record and items for which the court can take judicial notice. See Siwulec v. J.M.
`Adjustment Servs., LLC, 465 F. App’x 200, 202 (3d Cir. 2012); ING Bank, fsb v. PNC Fin. Servs.
`Grp., Inc., 629 F. Supp. 2d 351, 354 (D. Del. 2009).
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`More specifically, Illumina alleges that: (1) Eltoukhy should be named as a joint
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`inventor of all patents in the '127 patent family; of eight of the nine patents in the '992 patent
`family (all but the '992 patent); and of one patent from the '366 patent family (the '858 patent);
`and (2) Steemers should be named as a joint inventor of the patents making up all three patent
`families. (D.I. 1 at ¶ 143(A)-(C))
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` 4
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`7
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`Case 1:22-cv-00334-GBW-CJB Document 90 Filed 01/31/23 Page 8 of 37 PageID #: 2881
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`been obligated to assign their patent rights to Illumina) (the “inventorship claim”). 5 (D.I. 1 at ¶¶
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`98-102) Defendants argue that Illumina’s inventorship claim fails because: (1) Illumina’s
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`allegations relating to Eltoukhy and Steemers’ contributions to the 35 patents are too vague and
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`conclusory to plausibly plead an inventorship claim; and (2) Illumina has failed to sufficiently
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`plead that it has an ownership interest in the patents, and thus it lacks Article III standing to
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`challenge inventorship of the 35 patents. 6 (D.I. 30 at 8-16; D.I. 45 at 1-5)
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`5
`Illumina’s Complaint also seeks an order requesting the correction of inventorship
`with respect to nine patent applications “if issued as patents[.]” (Id.) Defendants argue that any
`part of Count I that relates to a request to correct inventorship on these patent applications should
`be dismissed, because a claim for correction of inventorship pursuant to Section 256 does not
`accrue until the patent issues (and thus any claims pertaining to patent applications are not yet
`ripe). (D.I. 30 at 16-17; Tr. at 202); see also Hor v. Chu, 699 F.3d 1331, 1335 (Fed. Cir. 2012)
`(“A [Section] 256 claim for correction of inventorship does not accrue until the patent issues.”);
`Display Rsch. Labs., Inc. v. Telegen Corp., 133 F. Supp. 2d 1170, 1173 (N.D. Cal. 2001)
`(explaining that Section 256 is inapplicable to patent applications and that “any claims made
`thereunder based on patents that may issue are speculative and not ripe for review”). Illumina
`retorts that it does not intend to currently press a claim in Count I relating to these patent
`applications, and that it referenced the applications in the Complaint only to note that it would
`seek relief on them if they later issue as patents. (D.I. 41 at 21; Tr. at 196-97) The Court agrees
`with Defendants that it is not appropriate to keep any such claims pending “such that they would
`spring to life if and when Guardant’s patents are issued[.]” (D.I. 45 at 2 n.2) The Court
`therefore recommends that the portions of paragraph 143(A)-(C) of the Complaint referring to
`the patent applications be STRICKEN. See, e.g., Kirchner v. Wyndham Vacation Resorts, Inc.,
`580 F. Supp. 3d 57, 65-66 (D. Del. 2022) (striking portion of an improper allegation in resolving
`a motion to dismiss).
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` 6
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`Defendants’ standing argument implicates Rule 12(b)(1), which authorizes
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`dismissal of a complaint for lack of jurisdiction over the subject matter, or if the plaintiff
`lacks standing to bring its claim. Motions brought under Rule 12(b)(1) may present either a
`facial or factual challenge to the court’s subject matter jurisdiction. See Lincoln Benefit Life Co.
`v. AEI Life, LLC, 800 F.3d 99, 105 (3d Cir. 2015) (citing Common Cause of Pa. v. Pennsylvania,
`558 F.3d 249, 257 (3d Cir. 2009)). In reviewing a facial challenge under Rule 12(b)(1), which is
`at issue here, the same standards relevant to Rule 12(b)(6) apply. In this regard, the court must
`accept all factual allegations in the complaint as true, and the court may only consider the
`complaint and documents referenced in or attached thereto. Id.; see also Church of Univ.
`Brotherhood. v. Farmington Twp. Supervisors, 296 F. App’x 285, 288 (3d Cir. 2008).
`8
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`

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`Case 1:22-cv-00334-GBW-CJB Document 90 Filed 01/31/23 Page 9 of 37 PageID #: 2882
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`
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`Section 256 “provides a cause of action to interested parties to have the inventorship of a
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`patent changed to reflect the true inventors of the subject matter claimed in the patent.” Fina Oil
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`& Chem. Co. v. Ewen, 123 F.3d 1466, 1471 (Fed. Cir. 1997). A complaint alleging a Section
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`256 correction of inventorship claim under a joint inventorship theory must allege that each
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`“joint inventor . . . contribute[d] to the invention’s conception.” CODA Dev. S.R.O. v. Goodyear
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`Tire & Rubber Co., 916 F.3d 1350, 1358 (Fed. Cir. 2019); Fina Oil, 123 F.3d at 1473 (“[T]o be
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`a joint inventor, an individual must make a contribution to the conception of the claimed
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`invention that is not insignificant in quality, when that contribution is measured against the
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`dimension of the full invention.”). However, a joint inventor need not “make the same type or
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`amount of contribution” to the invention nor contribute to every claim; a contribution to one
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`claim is enough. CODA, 916 F.3d at 1358 (internal quotation marks and citations omitted); see
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`also Vanderbilt Univ. v. ICOS Corp., 601 F.3d 1297, 1303 (Fed. Cir. 2010) (“[E]ach contributor
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`need not have their own contemporaneous picture of the final claimed invention in order to
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`qualify as joint inventors.”). There is no “explicit lower limit on the quantum or quality of
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`inventive contribution required for a person to qualify as a joint inventor.” Fina Oil, 123 F.3d at
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`1473. Rather, a joint invention is the product “of a collaboration between two or more persons
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`working together to solve the problem addressed.” Id.; see also Eli Lilly & Co. v. Aradigm
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`Corp., 376 F.3d 1352, 1359 (Fed. Cir. 2004) (“Joint inventorship . . . can only arise when
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`collaboration or concerted effort occurs—that is, when the inventors have some open line of
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`communication during or in temporal proximity to their inventive efforts[.]”). A joint inventor
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`must “do more than merely explain to the real inventors well-known concepts and/or the current
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`state of the art.” In re VerHoef, 888 F.3d 1362, 1366 (Fed. Cir. 2018) (citation omitted).
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`9
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`

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`Case 1:22-cv-00334-GBW-CJB Document 90 Filed 01/31/23 Page 10 of 37 PageID #: 2883
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`Inventorship of a patent is a distinct concept from ownership of a patent. Beech Aircraft
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`Corp. v. EDO Corp., 990 F.2d 1237, 1248 (Fed. Cir. 1993). While inventorship concerns who
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`actually invented the subject matter claimed in a patent, ownership is a “question of who owns
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`legal title to the subject matter claimed in a patent, patents having the attributes of personal
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`property.” Id. Even so, “[a]t the heart of any ownership analysis lies the question of who first
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`invented the subject matter at issue, because the patent right initially vests in the inventor who
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`may then, barring any restrictions to the contrary, transfer that right to another[.]” Id. To
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`sufficiently plead a cognizable injury for an inventorship claim pursuant to Section 256, a
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`plaintiff must allege facts establishing that it has expected ownership rights or a “concrete
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`financial interest” in the patent at issue. Larson v. Correct Craft, Inc., 569 F.3d 1319, 1326 (Fed.
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`Cir. 2009); Chou v. Univ. of Chi., 254 F.3d 1347, 1358-59 (Fed. Cir. 2001).
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`The Court will first assess Illumina’s inventorship claim with respect to Steemers, and
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`will then turn to the claim as it relates to Eltoukhy.
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`i.
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`Illumina’s inventorship claim with respect to Steemers
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`
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`The Court agrees with Defendants that Illumina’s assertion that Steemers should be
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`added to the 35 patents as a joint inventor is insufficiently pleaded. (D.I. 30 at 12; D.I. 45 at 3)
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`The Complaint broadly alleges that Steemers contributed “novel concepts and work” to the
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`inventions of all 35 patents that “include, for example, applications of error correction methods
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`and communication theory ideas, including in grouping sequence reads into families and then
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`collapsing those reads into a single consensus sequence from the sequence reads in the families.”
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`(D.I. 1 at ¶ 90) The Complaint’s only factual support for this allegation is that in response to a
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`request from Eltoukhy for a “specific presentation . . . concerning random coding improvement
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`in error rate for use in genetic sequencing to obtain better accuracy from fewer sequence
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`10
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`Case 1:22-cv-00334-GBW-CJB Document 90 Filed 01/31/23 Page 11 of 37 PageID #: 2884
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`reads[,]” Steemers provided Eltoukhy with the communication theory slides—slides that are not
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`attached to the Complaint—“relating to [] error rate improvements and communication theory
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`ideas.” (Id. at ¶¶ 41, 46) 7 But importantly, it is not at all clear from the Complaint that Steemers
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`himself generated whatever ideas may be reflected in the slides. (Tr. at 144) Instead, the
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`Complaint vaguely alleges that the slides reflected “years of novel work by Illumina personnel,
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`including valuable methods and data that Illumina personnel had created[.]” (D.I. 1 at ¶ 48
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`(emphasis added)) These slides were generated at Illumina; presumably Illumina knows whether
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`it was Steemers (or instead some other Illumina employee(s)) who contributed to the concepts
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`discussed in the slides. (Tr. at 190-91) 8 But the Complaint does not clearly assert that it was
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`
`7
`Because the communication theory slides were not attached to the Complaint and
`are not described in great detail in the Complaint, it is difficult for the Court to assess (based on
`the information of record that it can rely on here) what content is actually found in these slides.
`However, later in paragraph 57, the Complaint alleges that Eltoukhy obtained confidential
`material from Illumina employees such as “Illumina’s confidential and proprietary error
`correction methods and communication theory ideas, including methods for grouping sequence
`reads into families and then collapsing those reads into a single consensus from the sequence
`reads in the families.” (D.I. 1 at ¶ 57) This allegation (about “confidential material” that
`Eltoukhy “obtained” from Illumina employees) must in part be a reference to Eltoukhy’s efforts
`to obtain the communication theory slides from Steemers. With that in mind, and considering
`the allegations regarding the types of contributions that Steemers allegedly made to the patents,
`the Court can conclude that the information described in paragraph 57 is meant to reference, at
`minimum, at least some of the content of the communication theory slides. (Id. at ¶¶ 41, 90; see
`also id. at ¶¶ 58-59, 61; D.I. 30 at 19 n.9; Tr. at 198) Put differently, in light of the above, the
`Complaint plausibly alleges that the communication theory slides include at least some content
`regarding “methods for grouping sequence reads into families and then collapsing those reads
`into a single consensus sequence from the sequence reads in the families.”
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` 8
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`During oral argument, Illumina’s counsel came close to suggesting that it may not
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`have been Steemers who created/contributed to these slides—or at least that Illumina may not be
`sure whether it was Steemers or some other Illumina employee(s) who did so. (Tr. at 189-90
`(Illumina’s counsel stating “Your Honor, our point was that an Illumina employee created those
`slides. . . . or contributed to them. That Illumina employee would be the contributor to the
`claimed invention through the process that we’ve talked about. We believe and we think the
`reasonable inference is Steemers made contributions to [the slides,] and on that ground is a joint
`inventor. But the reason for that language in the briefing was [that] if it turned out to be the case
`that it was someone else who[ is] an Illumina employee, the analysis would be no different.”))
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`Steemers that did so. The Complaint therefore fails to state a claim that Steemers contributed to
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`the conception and reduction to practice of the 35 patents and that he should in turn be named as
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`a joint inventor on those patents. Cf. Intel Corp. v. Tela Innovations, Inc., Case No. 3:18-cv-
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`02848-WHO, 2019 WL 2476620, at *6 (N.D. Cal. June 13, 2019) (rejecting the defendant’s
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`argument that the plaintiff’s joint inventorship claim should fail because, inter alia, the
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`complaint “does not clarify that the technology shared at the meeting was Pileggi’s invention
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`rather than another Fabbrix employee’s[,]” because an allegation in the complaint “specifically
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`calls it ‘Professor Pileggi’s technology’”). 9
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`The Court further concludes that the inventorship claim with respect to Steemers fails for
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`an additional reason: the Complaint does not plausibly allege facts relating to Steemers that
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`indicates how Illumina owns or co-owns the patents-at-issue. Thus, Illumina has not plausibly
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`articulated how it has Article III standing to challenge the inventorship of the 35 patents in light
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`of Steemers’ alleged contributions thereto. (D.I. 30 at 13-16; D.I. 45 at 5; Tr. at 171-72)
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`In this regard, the Complaint asserts in only conclusory fashion that Illumina should be
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`declared co-owner of the 35 patents based on “Steemers’ assignments to Illumina[.]” (D.I. 1 at
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`¶¶ 100, 102) Yet while the pleading otherwise clearly states that Eltoukhy and Talasaz entered
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`into certain employment contracts that, inter alia, required that they assign to Illumina certain
`
`
`But if some other Illumina employee were responsible for conceiving of the content of these
`slides, then it would be that unidentified Illumina employee who should be named as a co-
`inventor of the patents, not Steemers (as the Complaint alleges).
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` 9
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`In its briefing, Defendants also argue that it is not clear from the Complaint how
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`Steemers can be said to have collaborated with either Eltoukhy (assuming that Eltoukhy was in
`fact a co-inventor) or Talasaz to come up with any contributions to the 35 patents at issue. (D.I.
`30 at 12; D.I. 45 at 3; Tr. at 144-45) But with the Complaint failing to plausibly allege Steemers’
`co-inventorship on other grounds, the Court need not resolve this issue.
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`
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`inventions they created while employed by Illumina, there are no clear factual allegations that
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`Steemers executed any such assignment agreements. (Id. at ¶ 19; see also Tr. at 172, 197-98) 10
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`Thus, Illumina has not sufficiently alleged that it has an ownership interest in the 35 patents via
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`any act of or any connection with Steemers. Consequently, Illumina has not demonstrated
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`standing to assert ownership over any patents that may include contributions made by Steemers.
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`See Blackhawk Network Inc. v. SL Card Co. Inc., 589 F. Supp. 3d 1115, 1128 (D. Ariz. 2022)
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`(“[T]he Complaint contains no allegation that the employees assigned their putative rights in
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`Defendants’ patents to Blackhawk. Absent such an allegation, Blackhawk is unable to
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`demonstrate that it has a concrete interest in the Patents, even if its employees do.”) (emphasis in
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`original) (citing cases), amended on reconsideration on other grounds, No. CV-21-00813-PHX-
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`MTL, 2022 WL 1136633 (D. Ariz. Apr. 18, 2022).
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`ii.
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`Illumina’s inventorship claim with respect to Eltoukhy
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`Next, the Court assesses Illumina’s inventorship claim as it relates to Eltoukhy.
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`Defendants’ first argument here is that the Complaint (1) “makes only conclusory assertions
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`describing Dr. Eltoukhy’s contributions, and even then, only in reference to seven claims of the
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`178 claims in seven of the patents in the '127 and '992 Patent Families”; but (2) says “nothing at
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`all (conclusory or otherwise) about Dr. Eltoukhy’s contributions as to the other patents in those
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`families.” (D.I. 30 at 10; see also D.I. 45 at 2 (Defendants arguing that the 28 patents that
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`“Illumina fails to address at all should be dismissed” and that, for the seven patents it does
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`address, “Illumina fails to identify any non-conclusory allegations showing inventive
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`contributions by [] Eltoukhy”) (emphasis in original)) This raises the question of what must a
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`
`10
`Again, these are Illumina’s employment agreements. So presumably Illumina
`would be in a position to know which of their employees signs what type of agreement, and
`whether and why it is plausible that any particular employee (here, Steemers) did so in the past.
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`plaintiff plead in a complaint to plausibly establish that a joint inventor contributed to an
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`invention’s conception?
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`As a threshold matter, Defendants’ argument was that in a complaint, a plaintiff must set
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`out the joint inventor’s contributions on a “‘claim-by-claim basis.’” (D.I. 45 at 2 (citation
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`omitted); see also D.I. 30 at 10; Tr. at 157, 159-60) One could read this as an assertion that, in
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`order to plead a claim for joint inventorship under Section 256, the plaintiff has to list out every
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`claim found in every patent-at-issue and inform the reader, on a “claim-by-claim basis,” whether
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`the purported co-inventor contributed something significant to each one of those claims (and if
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`so, how). If that is what Defendants mean by “claim-by-claim basis,” then the Court disagrees
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`that this level of specificity is required. 11
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`On the other hand, the Court does agree with Defendants that in order to sufficiently
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`plead a Section 256 joint inventorship claim, with respect to the nature of the joint inventor’s
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`contribution, a plaintiff must: (1) identify at least one concept that is included in at least one
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`identified claim of a patent-at-issue and then (2) allege some facts rendering it plausible that the
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`purported co-inventor actually contributed (in a non-insignificant way) to at least that portion of
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`the claimed invention. (Tr. at 148-50, 185) After all, in order to be a co-inventor, one has to
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`contribute to the “claimed invention[.]” Fina Oil, 123 F.3d at 1473 (emphasis added); see also
`
`
`11
`It is worth noting that Defendants lift this “claim-by-claim basis” phraseology
`from the United States Court of Appeals for the Federal Circuit’s decision in Trovan, Ltd. v.
`Sokymat SA, Irori, 299 F.3d 1292 (Fed. Cir. 2002). (D.I. 45 at 2) It is true that, in Trovan, the
`Federal Circuit noted that “inventorship is determined on a claim-by-claim basis.” Trovan, 299
`F.3d at 1302. However, the Trovan Court was using this language simply to explain that in order
`to be a co-inventor on a patent, one need not make a contribution to the subject matter of every
`claim of a patent.