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Allegations of Joint Defense Agreement, Funneled Documents Arise in Guardant Health Patent Suits

NEW YORK – Documents related to two patent infringement lawsuits brought by Guardant Health have revealed new information about the litigation strategies being pursued by both the plaintiff and the two defendants, Personal Genome Diagnostics and Foundation Medicine.

Guardant said it believes Foundation and Personal Genome Diagnostics (PGDx) have been coordinating to invalidate patents held by Guardant and have a joint defense agreement to that effect.

And an unredacted version of a PGDx countersuit reveals allegations that Guardant CEO and Cofounder Helmy Eltoukhy used a private email account "to funnel … confidential information" from his previous employer, Illumina, which PGDx alleges were important to developing Guardant's technology.

Guardant has sued both firms for patent infringement of the same four patents covering liquid biopsy technology.

In a June 5 letter to Judge Christopher Burke of the US District Court for the District of Delaware, who is presiding over both cases, attorneys for Guardant asked the court to compel Foundation and Personal Genome Diagnostics (PGDx) to provide the alleged joint defense agreement (JDA), as well as a log of contacts between the two firms regarding their attempts to invalidate Guardant's patents.

"Having an agreement is not surprising at all and it would even be a little surprising if they didn't have one," said Bernard Chao, a legal scholar at the University of Denver and an expert on patent litigation. "They're simply a way to allow the defense counsel to strategize while maintaining work product and [attorney-client] privilege." But even if a JDA exists, the language itself is likely uninteresting. "They're sort of cookie cutter, where you take the form off the last case and change the names," he said. "There's not likely to be anything in there that's surprising."

Nonetheless, Guardant's lawyers said they believe "[t]he agreement itself is necessary for Guardant to fully assess the scope of the common interest as it applies to these communications."

As reported by GenomeWeb, Foundation had petitioned the US Patent and Trademark Office for Inter Partes review of one of the patents-in-suit. On June 5, the Patent Trial and Appeals Board denied that petition.

In its letter, Guardant put forth the argument that a JDA would have relevance to the question of whether PGDx was "a real party in interest with respect to [Foundation's] petitions."

Chao suggested that Guardant was trying to take advantage of laws that prevent a party from making multiple attempts to invalidate the same patents. "You don't get two bites at the apple," he said. "Perhaps that applies not just on the same party, but when two parties are cooperating. I think that's the extension of the law Guardant is trying to establish."

However, he suggested that the wording of the law might mean it doesn't apply to this situation. "I'm puzzled by why they're fighting about it," he said.

The Guardant letter notes that both defendants gave similar responses to subpoenas for the JDA, which "[failed]to deny the existence of the agreement."

GenomeWeb asked both Foundation and PGDx whether they had a JDA with the other. Foundation Medicine did not respond, while PGDx replied that it "is unable to comment on Foundation matters, but, as PGDx has consistently maintained, PGDx has had no participation, coordination, guidance, input, or participation of any kind in the [Inter Partes reviews] filed by Foundation."

In a response letter sent June 11, attorneys for PGDx asked the court to deny Guardant's request for the alleged JDA "because it seeks discovery that is both irrelevant and privileged."

PGDx also told GenomeWeb that it was "pleased that the Court recently granted PGDx's motion requiring Guardant to remove many of Guardant's redactions in PGDx's counterclaims alleging inequitable conduct and antitrust violations."

As reported by GenomeWeb, PGDx has alleged that Guardant Cofounders Helmy Eltoukhy and AmirAli Talasaz defrauded the USPTO by leaving Eltoukhy off as an inventor of three of the four patents. The unredacted document alleges that Eltoukhy took sensitive information from his previous employer, Illumina, that aided Guardant in securing intellectual property.

Specifically, PGDx alleged, "Eltouky exploited his access to Illumina's confidential information to benefit Guardant on multiple occasions," including a 96-page Illumina PowerPoint presentation where "each page was labeled 'Company Confidential.'"

PGDx has further claimed that "Eltoukhy did not deny doing so at his deposition. Eltoukhy and Talasaz used the content of the slides to conceive of the claimed inventions. Eltoukhy forwarded the Illumina slides to his Gmail account on June 27, 2012 — just days before the 'July 2012' conception date for the '731, '822, and '743 Patents."

Guardant said it "believes the counterclaims are baseless and completely without merit."

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