Free Redacted Document - District Court of Delaware - Delaware

Case 1 :04-cv—OO833-KAJ Document 83 Filed 08/O9/2005 Page 1 of 3
Asn-1BY 8. GEDDES
ATTORNEYS AND c0uusELL0Rs AT LAW TELIZPHGNE
302-G54—I858
222 DELAWARE AVENUE
FACSIMILE
P. O. BOX |I5O aoz-ess4-zoev
WILMINGTGN. DELAWARE I9899
July 27, 2005
HAND DELIVERY
The Honorable Kent A. Jordan REDACTED PUBLIC VERSION
United States District Court
844 King Street
Wilmington, DE 19801
Re: Pharmacia & Upjchn C0. v. Sicor Inc.,
C.A. No. 04-833-KAJ
Dear Judge Jordan:
We write in response to the letter submitted by plaintiff P&U dated July 22, 2005 (D.I. 67)
seeking a protective order to postpone the depositions of the attomeys who prosecuted the patent-in-suit,
U.S. patent 6,107,285 (the "‘285 patent"): Daniel Boehnen, Emily Miao, and Jeremy Noe, all lawyers at
McDonnell Boehnen Hulbert and Berghoff LLP ("MBHB"). Mr. Boelmen, but not Ms. Miao or Mr. Noe,
is litigation counsel for P&U in this action.
P&U premises its motion on the erroneous assumption that the depositions sought relate solely to
Sicor’s inequitable conduct claim which is the subject of P&U’s motion to dismiss, and because that
motion is sub judice, P&U contends that the depositions should not go forward now. As set forth below,
the depositions are not limited to the current inequitable conduct claim. Moreover, contrary to P&U’s
arguments, deposing prosecuting counsel is perfectly appropriate under the circumstances of this case.
See aaiPharma, Inc. v. Kremers Urban Development C0., 361 F. Supp. 2d 770, 776 (N .D. Ill. 2005)
(emphasis added) ("Defendants have produced significant evidence indicating that MBHB [defendants’
law firm] was involved, at least at some level, with aai’s patent prosecution strategy for the technology at
issue in the underlying case. Accordingly, the discovery sought by aai is likely to lead to the discovery of
admissible evidence regarding the extent of MBHB’s involvement in the prosecution of the applications
resulting in the patents in suit, and whether MBHB may have violated any dugg of candor that applied to
any of aai’s attomeys or agents.")
Background: Briefly, each of the three attorneys seeking protection from deposition were personally and
directly involved in the prosecution of the ‘285 patent before the United States Patent and Trademark
Office (“PTO”), and each has relevant and unique knowledge that cannot be obtained from any other
source. Mr. Boehnen submitted and signed lengthy statements to the PTO on June 28, 1996 (Ex. A) and
May 6, 1997 (Ex. B), and he submitted several declarations from one of the foreign inventors, Dr.
Confalonieri and others, in order to persuade the PTO to issue the ‘285 patent. P&U will not agree to
voluntarily produce Dr. Confalonieri or three other inventors for depositions in this case. In August 1996,
Ms. Miao, following up on Mr. Boehnen’s June 1996 statements to the PTO, conducted a personal
interview with the PTO to attempt to persuade the examiner to allow some of the claims of the patent to
issue. (Ex. C.) These attomeys also submitted several hundred pieces of prior art to the PTO, but only
after they knew the PTO was going to permit some of the claims ofthe ‘285 patent to issue. Moreover,

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The Honorable Kent A. Jordan
July 28, 2005
Page 2 _
P&U even identified Ms. Miao in its Initial Disclosure Statement (dated November 9, 2004) as a person
with relevant knowledge about the prosecution of the ‘285 patent.
Mr. Boehnen also made admissions about the content of prior art that are relevant to the merits of
this case, not solely to the inequitable conduct claim. For example, in his June 28, 1996 statement Mr.
Boehnen stated: "Baurain [prior art reference] discloses a doxorubicin salt solution at pH 4.0, and
Arcamone [prior art reference] discloses a doxorubicin salt solution at pH of 3-6." (Ex. A at 6.) These
admissions are directly relevant to showing that the pH range (2.5 to 5.0) of the solutions of doxorubicin
claimed in the patent were known in the art and/or obvious.
Legal Analysis: Contrary to P&U’s assertion, the general rule is that an attorney involved in the
prosecution of a patent can be deposed. Resqnetcom, Inc. v. Lansa, Inc., No. 01 Civ. 3578 (RWS), 2004
. WL 1627,170, at *1, *3 (S.D.N.Y. July 21, 2004) ("It is not anomalous for a party to seek to depose the
attomey who prosecuted the patent at issue in a litigation .... The fact that the attorney who prosecuted
the patent has been selected to serve as litigation counsel does not, in and of itself, protect that attorney
from being deposed.") (Ex. D); Amicus Communications. L.P. v. Hewlett-Packard Co., No. 99-0284
HHKfDAR, 1999 WL 33117227, at *2 (D. D.C. Dec. 3, 1999) (noting "several courts have allowed the
depositions of patent prosecution counsel") (Ex. E).
"A patent prosecution attorney cannot avoid being deposed simply because he is later selected to
act as trial counsel in an infringement action concerning the very patent he helped to prosecute." Alcon
Labs., Inc. v. Pharmacia Corp., 225 F. Supp. 2d 340, 344 (S.D.N.Y. 2002). In a leading case, Shelton v.
Am. Motors Corp., the court ruled that an attortiey involved in litigation may be deposed if the party
"seeking to take deposition has [1] shown that no other means exist to obtain information than to depose
opposing counsel, [2] information sought is relevant and nonprivileged, and [3] information is crucial to `

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The Honorable Kent A. Jordan
July 28, 2005
Page 3
preparation of case." 805 F.2d 1323, 1327 (8th Cir. 1987) (internal citation omitted); see Allergan Inc. v.
Pharmacia Corp., No. Civ.A.0l—l41-SLR, 2002 WL 1268047, at *1 (D. Del. May 17, 2002) (following
Shelton) (Ex. F).
Here, the Shelton standards are easily met. First, two inventors recently testified that they had no
involvement with the prosecution of the ‘285 patent before the PTO. Thus, the persons with certain
knowledge about what transpired before the PTO are the attorneys who prosecuted the patent. For
example, Ms. Miao is the only person Sicor can depose who has knowledge of the August 1996 interview
with the PTO. See Hay & Forage Indus. v. Ford New Holland, Inc., 132 F.R.D. 687, 690 (D. Kan. 1990)
(“meetings with the patent examiner are relevant to the defense of inequitable conduct"). Similarly, Mr.
Boehnen’s knowledge when he submitted false statements to the PTO is particular to him and cannot be
readily obtained from other sources. Mr. Noe, along with Mr. Boehnen and Ms. Miao, are the only
persons who know why P&U and its attomeys waited until only aiier they felt P&U’s patent rights were
secure before they dumped hundreds of references on the PTO. See Environ Prods. Inc. v. Total
Containment Inc., 41 U.S.P.Q.2d 1302, 1306 (E.D. Pa. 1996) ("The affirmative defense of inequitable
conduct makes [prosecuting attomey’s] mental impressions during the reexamination proceedings an
I I ` issue in this litigation.") (Ex. G).
Second, there is no question that the information, and the admissions made by Mr. Boehnen, are
relevant not only to the current inequitable conduct charge, but also to the `issue of patent invalidity,
_ REDACTE 9 atn · I
Environ Prods. [nc., 41 U.S.P.Q.2d at 1306 ("a deposition of [the prosecuting attorney’s] is the only way
to conduct discovery into [Plaintiff’ s] alleged inequitable conduct during the reexamination of the []
patent, the motion for a protective order must be denied"). Moreover, the information Sicor seeks relates
to the proceedings before the PTO, which is not privileged.
Third, the information sought is critical to Sicor’s defense, both as to invalidity and inequitable
conduct. If it is proven that any of the attorneys knowingly submitted false information to the PTO, or
otherwise acted with a lack of candor to the PTO, then the ‘285 patent would be unenforceable.
Likewise, Mr. Boehnen’s statements to the PTO characterizing the prior art may prove to be important
admissions for Sicor’s obviousness defense.
In conclusion, while Sicor has no objection to a short adjournment of the attorney depositions
(with a commensurate adjournment of the date for Sicor’s submission of an expert report on the topic),
Sicor respectfully submits that plaintiffs request for a protective order should be denied.
. _ Respectfully,
J GD: nml
Attachments
159882.1
cc: Clerk of the Court (by hand; with attachments)
Maryellen Noreika, Esquire (by hand;.;w/attachments)
Joshua R. Rich, Esquire (via electronic mail; w/attachments)
Reid L. Ashinoff, Esquire (via electronic mail; w/attachrnents)