Case 3:16-cv-00661-JLS-BGS Document 94 Filed 08/12/21 PageID.1449 Page 1 of 5
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`Juanita R. Brooks, SBN 75934
`brooks@fr.com
`Michael A. Amon, SBN 226221
`amon@fr.com
`Fish & Richardson P.C.
`12860 El Camino Real, Suite 400
`San Diego, CA 92130
`Phone: 858-678-5070/Fax: 858-678-5099
`
`Douglas E. McCann (Pro Hac Vice)
`dmccann@fr.com
`Fish & Richardson P.C.
`222 Delaware Avenue
`17th Floor, P.O. Box 1114
`Wilmington, DE 19801
`Phone: 302-652-5070/Fax: 302-652-0607
`
`Attorneys for Defendant
`ILLUMINA, INC.
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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF CALIFORNIA
`Case No. 16-cv-661 JLS (BGS)
`THE SCRIPPS RESEARCH INSTITUTE,
`Plaintiff,
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`v.
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`ILLUMINA, INC.,
`Defendant.
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`ILLUMINA’S RESPONSE TO THE
`COURT’S NOTICE OF
`DISCLOSURE OF CONFLICT
`[DKT. 93]
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`Judge: Honorable Janis L. Sammartino
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`0
`ILLUMINA’S RESPONSE RE NOTICE OF DISCLOSURE
`CASE NO. 16-cv-661 JLS (BGS)
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`Case 3:16-cv-00661-JLS-BGS Document 94 Filed 08/12/21 PageID.1450 Page 2 of 5
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`Defendant Illumina, Inc. (Illumina) submits this response to the Clerk of Court’s
`letter of August 5, 2021 (Dkt. No. 93). In that letter, the Clerk of Court informed the
`parties that Judge Sammartino discovered “after disposition of the case” that a family
`member owned Illumina stock, raising a financial interest that would have required Judge
`Sammartino’s recusal had she discovered it while the case was pending. Dkt. No. 93 at
`1 (emphasis added). That letter confirmed that the “financial interest neither affected
`nor impacted [Judge Sammartino’s] decisions in the case” as she was unaware of that
`interest at the time she presided. Id. Because Judge Sammartino was unaware of the
`financial conflict at the time of her rulings, and her rulings were reviewed de novo and
`affirmed by the United States Court of Appeals for the Federal Circuit, those rulings
`should stand.
`While Judge Sammartino presided over the case, she issued a claim construction
`order regarding certain claims of Plaintiff The Scripps Research Institute’s (Scripps)
`asserted patent. Dkt No. 77. As a result of Judge Sammartino’s claim construction order,
`the parties stipulated to non-infringement by Illumina and jointly requested entry of
`judgment for Illumina, which the Court granted on May 18, 2018. Dkt. No. 81.
`As detailed in the Clerk of Court’s August 5, 2021 letter, Judge Sammartino did
`not know of the conflict at the time she made her claim construction rulings in 2018. In
`such circumstances where recusal is being contemplated retrospectively, the Ninth
`Circuit has stated that “[i]f a reasonable person would conclude from all the
`circumstances that the judge did not have knowledge [of the disqualifying conflict] at the
`time [she] sat, [her] rulings stand.” Davis v. Xerox, 811 F.2d 1293, 1296 (9th Cir. 1987).
`In Davis, the presiding judge held a small pecuniary interest in the defendant, but
`had forgotten about that interest. Id. at 1294. Before the pecuniary interest was brought
`to the judge’s attention and before he recused himself, he made some discovery rulings
`and dismissed one of plaintiff’s claims. Id. The case was then reassigned to another
`judge and proceeded to trial. Id. On appeal, the plaintiff in Davis challenged whether the
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`ILLUMINA’S RESPONSE RE NOTICE OF DISCLOSURE
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`Case 3:16-cv-00661-JLS-BGS Document 94 Filed 08/12/21 PageID.1451 Page 3 of 5
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`first judge’s discovery rulings and dismissal should stand. Id. The Ninth Circuit held
`that where the pecuniary interest was small and the judge “made it clear he had in fact
`forgotten” about that interest, the rulings should stand and need not be vacated. Id. at
`1297 (“A reasonable observer would draw from these circumstances the conclusion that
`the judge during 1980–1983 was unaware of his interests and so did not know of them
`within the meaning of” 28 U.S.C. § 455.).
`Here, not only did Judge Sammartino not know about the conflict at the time of
`her claim construction rulings, Plaintiff Scripps appealed Judge Sammartino’s rulings to
`the United States Court of Appeals for the Federal Circuit. There, a three judge panel
`reviewed Judge Sammartino’s claim construction order de novo, and a majority affirmed
`her decision. See The Scripps Research Institute v. Illumina, Inc., 782 Fed. Appx. 1018, 1019
`(Fed. Cir. Aug. 29, 2019) (“Both parties agree that, if the rulings involving the a terms
`are correct, the district court’s judgment should stand. Because we agree with the district
`court regarding the a terms, we affirm the judgment without reaching the dispute over
`the linker molecule phrase.”); see also Power Integrations, Inc. v. Fairchild Semiconductor Int’l., Inc.,
`904 F.3d 965, 971 (Fed. Cir. 2018) (The Federal Circuit “review[s] claim construction de
`novo, except for subsidiary facts based on extrinsic evidence, which [the Federal Circuit]
`review[s] for clear error.”).
`Accordingly, because Judge Sammartino was unaware of the conflict at the time
`of her rulings, and because her rulings were reviewed de novo and affirmed, her rulings
`should stand and no further action is necessary.
`Respectfully submitted,
`By: s/ Michael A. Amon
`
`Juanita R. Brooks, SBN 75934
`brooks@fr.com
`Michael A. Amon, SBN 226221
`amon@fr.com
`Fish & Richardson P.C.
`12860 El Camino Real, Suite 400
`San Diego, CA 92130
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`Case 3:16-cv-00661-JLS-BGS Document 94 Filed 08/12/21 PageID.1452 Page 4 of 5
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`Phone: 858-678-5070/Fax: 858-678-
`5099
`
`Douglas E. McCann (Pro Hac Vice)
`dmccann@fr.com
`Fish & Richardson P.C.
`222 Delaware Avenue
`17th Floor, P.O. Box 1114
`Wilmington, DE 19801
`Phone: 302-652-5070/Fax: 302-652-
`0607
`
`Attorneys for Defendant
`ILLUMINA, INC.
`
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`CASE NO. 16-cv-661 JLS (BGS)
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`Case 3:16-cv-00661-JLS-BGS Document 94 Filed 08/12/21 PageID.1453 Page 5 of 5
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a true and correct copy of the above and
`foregoing document has been served on August 12, 2021, to all counsel of record who
`are deemed to have consented to electronic service via the Court’s CM/ECF system
`per Civil Local Rule 5.4. Any other counsel of record will be served by electronic mail,
`facsimile and/or overnight delivery.
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`s/ Michael A. Amon
`Michael A. Amon
`amon@fr.com
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