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Case 1 :04-cv—OO833-KAJ Document 94 Filed O9/O2/2005 Page 1 of 2
ASHEY & GEDDES
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September 2, 2005
The Honorable Kent A. Jordan VIA ELECTRONIC FILING
United States District Court
844 King Street
Wilmington, DE 19801
Re: Pharmacia & Upjohn Company v. Sicor Inc. and Sicor Pharmaceuticals Inc.
C.A. No. 04-833-KAJ
Dear Judge J ordan:
We represent the defendants, Sicor, Inc. and Sicor Pharmaceuticals, Inc. ("Sicor"), in the
above-referenced case.
We write to inform the Court that Sicor today filed a motion to amend its counterclaim
alleging that the patent-in-suit is invalid because of inequitable conduct by Pharmacia’s agents. .
The amended pleading will supersede the prior pleading alleging inequitable conduct.
The new pleading repeats the allegations of the first pleading regarding hiding, or
burying, material references that contradict statements the inventors and others made to the U.S.
Patent and Trademark Office ("U.S. Patent Office"), but also adds new allegations based on
documents recently produced to Sicor after the deadline for amending the pleadings passed.
Specifically, the new pleading alleges that the inventors and others committed inequitable
conduct by failing to disclose highly material statements from foreign litigations (e. g.,
statements and expert reports by Upj ohn in 1992 to the effect that a foreign patent corresponding
to the patent-in-suit was invalid based on prior art) and allegations, also based on recently
produced documents, that the inventors swore to a false declaration before the U.S. Patent
Office. All of this evidence when viewed as a whole reflects a pattern of conduct by the
applicants, which includes the burying of material references, the failure to disclose other
material references, and affrmative misstatements about yet more material references during the
course of prosecution of the patent-in-suit before the U.S. Patent Office, and collectively raises
troubling questions about the manner in which the applicants conducted themselves before the
U.S. Patent Office. The evidence when viewed as a whole is clearly sufficient to state a
counterclaim for inequitable conduct against Pharmacia and, Sicor respectfully submits,
underscores both Sicor’s need and right to seek further discovery of the applicants regarding
these matters.

Case 1 :04-cv—OO833-KAJ Document 94 Filed O9/O2/2005 Page 2 of 2
The Honorable Kent A. Jordan
September 2, 2005
Page 2
If the new pleading is accepted by the Court, it will supersede the current pleading and
thus will effectively moot plaintiffs sub judice motion to dismiss (D.I. 55) the current
counterclaim for inequitable conduct. We wanted to bring this information to the Court’s
attention promptly upon the filing of our motion to amend, so that Your Honor does not
needlessly spend time working on a motion to dismiss the current counterclaim that may be
about to become moot.
Respectfully,
/s/ Steven J Balick
Steven J. Balick
SJB/dmf
Attachment
161054.1
cz Jack B. Blumenfeld, Esquire (by hand)
Joshua R. Rich, Esquire (via facsimile)
Brian T. Moriarty, Esquire (via facsimile)