Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv—OO833-KAJ Document 90 Filed O9/O1/2005 Page 1 of 4
LAORRIS, NICHOLS, Aizsr-1T 8; TUNNELL
1201 N oxrrr MARKET STREET
P.O. Box 1347
WILMINGTON, Dm..AwAx1z 19899-1347
302 658 9200
302 658 3989 FAX
MAxYm..u:N Noxmxm ·
202 575 7278 September 1, 2005
302 425 3011 Fax
[email protected]
BY ELECTRONIC FILING
The Honorable Kent A. Jordan
United States District Court
844 King Street
Wilmington, DE 19801
Re: Pharmacia & Upjohn Company v. Sicor, et al.
C.A. No. 04-833 QKAJ)
Dear Judge J ordan:
We write on behalf of Pharmacia & Upjohn ("Pharinacia") regarding two pressing
discovery issues: (i) Sicor’s failure to provide full responses to Pharmacia’s Interrogatories Nos.
1-6 and 8-9, and (ii) Sicor’s failure to produce key documents.
The interrogatories that have not been properly answered (Nos. 1-6 and 8-9) seek some of
the most basic discovery in a patent infiingement case, including:
• Sicor’s contentions on validity, non-infringement, willfulness, and affirmative
defenses;
• Sicor’s research, development, manufacturing, and sales of accused products; and
· • Sicor’s first knowledge of the patent-in-suit.
By failing to provide full interrogatory responses in a timely manner, Sicor holds back its
positions on basic issues, instead producing dribs and drabs of information only after Pharmacia
threatens Court intervention.
The unproduced documents include laboratory notebooks, memos, and other docrnnents
generated during the research and development of Sicor’s product. By failing to provide full
document discovery, Sicor hinders Pharmacia’s ability to effectively depose Sicor personnel.
Responses to Interrogatories Nos. 1-6 and 8-91
In early March 2005, Pharmacia raised concems about Sicor’s insufficient responses to
Pharmacia’s contention interrogatories. In a hearing on March 17, 2005, Sicor argued that it
could not respond fully because it had not received all the documents that it sought from
1 Copies of Sicor’s numerous interrogatory responses to Pharmacia’s First Set of Interrogatories are
attached as Exhibits A through E. Although Sicor has served four supplementations of its original
interrogatory responses, those responses remain inadequate and incomplete.

Case 1 :04-cv—OO833-KAJ Document 90 Filed 09/01/2005 Page 2 of 4
The Honorable Kent A. Jordan
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September 1, 2005
Pharmacia. The Court expressed concern about the overall pace of progress in discovery in the
case, and denied Pharmacia’s relief, but gave Sicor a warning:
So I’ve got a bit of a pox on both your houses feeling about this because I do feel
like if you had moved a little sooner on something as basic as your document
exchange stuff, then the other side wouldn’t, the defense wouldn’t be in a position
of being able to argue to me that we have some things that could fairly inform our
contentions that we haven’t had yet. So whether you buy that or not, Mr.
Boehnen, it has enough credibility on me to say on this call I’m not doing
anything for you except this. I’m giving you the benefit of this warning to the
defense: Get your documents exchanged promptly. And then Sicor, you better
come forward with better discovery responses than the plaintiff is telling me you
are giving them or there is going to be another conference call, maybe a hearing,
and I don’t want to get moving down the road toward anything heavier in the way
of making you pay for their efforts to get you to respond.
Ex. I, p. 20. Despite that clear, unequivocal warning, Sicor has failed on both fronts — it has not
provided full responses to the interrogatories, and it has not provided all relevant documents.
Following the Court’s direction, Pharmacia pressed forward, providing its own discovery
and requesting better responses from Sicor. See Ex. F and G, letters from Pharmacia to Sicor
dated March 30 and July 18, 2005. Time passed, but Sicor failed to amend. Finally on July 29,
2005, more than four months after the Court’s admonition, Sicor served its second supplemental
response to interrogatories, addressing only Interrogatory No. 1 (validity) and finally identifying
its allegedly invalidating prior art references. See Exhibit C.
Pharmacia wrote again, presenting a deadline for Sicor to supplement responses to the
other interrogatories. See Ex. H, letter from Pharmacia to Sicor dated August 16, 2005.
However Sicor’s next supplement, served August 26, 2005 (see Ex. D), still addressed only
Interrogatory No. 1 and merely incorporated by reference its expert witness invalidity report.
That expert report was already served on August 15th pursuant to this Court’s Scheduling Order.
Although Sicor’s August 26th document failed to supplement about other interrogatory
topics, Sicor promised to provide further supplementation by August 30, 2005. That deadline
passed, but on August 31, 2005, Sicor served a fourth supplemental response that addressed
Interrogatories 2, 4, 5, and 6. See Ex. E. Nevertheless Sicor’s interrogatory responses remain
fragmentary and incomplete even after Sicor’s fourth supplementation. Even more disturbing,
the supplemental responses provide only information that Sicor had in its possession for many
months and should have provided long ago. The bottom line is that, notwithstanding the Court’s
March 17, 2005 admonition, Sicor has not properly supplemented its responses to Interrogatory
Nos. 1-6 and 8-9, 2 and those interrogatory responses remain grossly deficient.
Sicor’s refusal to provide full responses to Interrogatory Nos. 1-6 and 8-9 stands in clear
violation of Sicor’s duties under Rules 26 and 33. T mnsclean Corp. v. Bridgewood Serv., Inc.,
77 F. Supp.2d 1045, 1063 (D. Minn. 1999), a]j”’d 290 F.3d 1364, 1374 (Fed. Cir. 2002) ("the
2 Interrogatory No. 7 relates to damages, and both parties are in the midst of taking discovery on
damages. It is too early to say whether discovery on damages will reach an impasse.

Case 1 :04-cv—OO833-KAJ Document 90 Filed O9/O1/2005 Page 3 of 4
The Honorable Kent A. Jordan
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failure to disclose in a timely manner is equivalent to a failure to disclose.") Sicor’s failure to
provide meaningful information has no excuse — even during the March 17, 2005 hearing, the
Court noted that Sicor was able to provide far more information regarding its laches defense than
it provided through discovery. Ex. I, pp. 13-14. Sicor has failed to disclose fully its contentions
and information on validity, non-infringement, willfulness, and its affirmative defenses;
information regarding Sicor’s research, development, manufacturing, and sales of accused
products; and Sicor’s first knowledge of the patent-in-suit. For all these reasons, Sicor should be
precluded from presenting witnesses, documents, or evidence that has not already been presented
in its previous disclosure statements, expert witness statements, and discovery responses.
Production of Documents
Sicor has also denied Pharmacia a fair opportunity to shape its case by withholding — and
apparently not even searching for — key documents relating to Sicor’s research and development
of the product in suit. In the midst of a deposition of Sicor under Rule 30(b)(6) on August 5,
2005, Sicor produced portions of two laboratory notebooks. No other laboratory notebooks or
other important research and development documents have been produced. As established at the
deposition, Sicor had failed to produce the docrunents in a timely manner because Sicor did not
discharge its duty to search for documents responsive to Pharmacia’s requests:
Q: Did anyone at Sicor check into the location and nature of laboratory
notebooks relating to the development of Idarubicin hydrochloride
injection products prior to yesterday?
A: No, not to my knowledge.
Q: Well, would anyone at Sicor know that was beyond your knowledge?
A: I don't think so.
Ex. J, p. 166 (objection omitted). Sicor has never responded to Pharrnacia’s ntunerous requests
to perform a full search and produce all research and development documents.
The impact of Sicor’s failure to produce the relevant docrunents is compounded by the
woeful preparation of Sicor’s 30(b)(6) witness on research and manufacturing issues. When
asked, for example, about basic substantive information, Sicor’s 30(b)(6) witness answered "I
don’t know" more than 100 times, even to questions phrased using the basic language of the
deposition notice. See Ex. J. Sicor should be compelled to produce Q research and
development documents irnrnediately.
Respectfully,
/klm
cc: Steven J. Balick, Esquire (By Hand)
Brian Moriarty, Esquire (By Fax)

Case 1 :04-cv—OO833-KAJ Document 90 Filed O9/O1/2005 Page 4 of 4
INDEX OF EXHIBITS
A. Defendants’ Responses To First Set of Interrogatories By Plaintiff
served January 7, 2005;
B. Defen·dants’ Supplemental Responses To First Set Of Interrogatories By Plaintiff
Served February 4, 2005;
C. Defen·dants’ Second Supplemental Responses To First Set of Interrogatories By
Plaintiff, served July 29, 2005;
D. Defendants’ Second (sic) Supplemental Response To lnterrogatory No. 1 By
Plaintiff Pharmacia & Upjohn LLC, served August 26, 2005;
E. Defen·dants’ Supplemental Responses To interrogatories No. 2, 4, 5, and 6 of the
First Set of Interrogatories By Plaintiff, served August 31, 2005;
F. Letter from Pharmacia counsel to Sicor counsel dated March 30, 2005;
G. Letter from Pharmacia counsel to Sicor counsel dated July 18, 2005;
H. Letter from Pharmacia counsel to Sicor counsel dated August 16, 2005;
I. Transcript of hearing on March 17, 2005;
J. Portions of Sicor’s deposition, taken August 5, 2005 under Rule 30(b)(6)