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Case 1 :04-cv—00833-KAJ Document 44 Filed 03/16/2005 Page 1 of 3
ASHBY 8. GEI:>I:>Es
ATTORNEYS AND COUNSELLORS AT LAW TELEPHONIEE
222 DELAWARE AVENUE 3°z`°°°-`°"`°
I=>. 0. Box uso ;,O;2;§:i;`§B,
WILMINGTON, DELAWARE I9899
March 16, 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.
_CJA. No. 04-833-KAJ
Dear Judge Jordan:
We represent Defendants SICOR, Inc. and Sicor Pharmaceuticals, In·c. (collectively
"Sicor") in this action. We write in response to the letter submitted by Plaintiff Pharmacia &
Upjohn Company ("P&U") dated March 15, 2005 (D.I. 43).
P&U's motion to compel additional responses to its contention interrogatories puts the
proverbial cart before the horse. Discovery in this case is in its early stages; the parties have
exchanged written document demands and responses, but have not yet exchanged documents.
As a result, Sicor has had no opportunity yet to take the discovery necessary to more fully
develop its legal contentions. On several occasions, Sicor attempted to engage P&U to discuss
an appropriate schedule to finalize the parties' protective order, exchange documents and
privilege logs and commence depositions. It was only this Monday, on the eve of appearing
before the Court, that P&U finally agreed to set a date (March 28) to begin exchanging
documents and finally forwarded a proposed protective order. Rather than fbcusing on
meaningfully advancing this case through the production of documents and the scheduling of
depositions, P&U rushed to this Court with this motion, which is nothing more than an attempt to
harass Sicor by advocating a standard that P&U does not apply to itself.
Although contention interrogatories are permitted, Fed. R. Civ. P. 33(d) provides a court
wide discretion to order "that such an interrogatory need not be answered until after designated
discovery has been completed or until a pre-trial conference or other later time." This Court and
other federal courts in this circuit are mindful that complete responses to contention
interrogatories are appropriate only after the parties have had an opportunity to participate in
substantive fact discovery. See, e. g., Diamond Crystal Salt Co. v. Package Masters, Inc., 319 F.
Supp. 911, 913 (D. Del. 1970) (sustaining objection to patent infringement contention
interrogatory until completion of relevant document discovery), Everett vs. US Air Group, 165
P.R.D. 1, 3 (D. Col. 1995) ("obligation to respond to [contention interrogatories] is often
postponed until near end of discovery period"); B. Braun Medical Inc. v. Abbott Laboratories,

Case 1 :04-cv—00833-KAJ Document 44 Filed 03/16/2005 Page 2 of 3
The Honorable Kent A. Jordan
March 16, 2005
Page 2
155 F.R.D. 525, 527 (E.D. Pa. 1994), afd in part, vacated in part and remanded on other
grounds, 124 F.3d 1419 (Fed. Cir. 1997) ("there is considerable support for deferring contention
interrogatories until the end of the discovery period"); Fisher & Porter Co. v. T olson, 143 F.R.D.
93, 96 (E.D. Pa. 1992) (contention interrogatories "are more appropriate after a substantial
amount of discovery has been conducted").
Thus, there is no legal basis for P&U's argument that contention interrogatories must be
exhaustively answered before document, deposition and expert discovery has even begun. P&U
is also contradicted by its own responses to Sicor's interrogatories. For example, in response to
Sicor's interrogatory seeking an identification of the "secondary considerations" (e.g., long-felt
need, commercial success, etc) that P&U intends to rely upon to rebut Sicor's obviousness
defense, P&U did not provide an exhaustive response, but rather objected on the grounds that the
request is "premature, as Pharmacia has not yet had an opportunity to conduct meaningful
discovery" (emphasis added). P&U went on to respond, in conclusory terms, that "any claim of
obviousness was rebutted in the prosecution of the ‘285 patent." P&U did not identify a single
secondary consideration, much less provide any details. Thus, P&U, just like Sicor,
acknowledged that its responses to contention interrogatories at this early stage are preliminary,
and that the parties will supplement the response during discovery as appropriate.
ln any event, in a good faith effort to cooperate with P&U, Sicor already provided
substantive responses to the best of its current ability. The responses are more than adequate to
guide P&U as discovery commences. In addition, in a further effort to resolve this dispute and
obviate burdening the Court with urmecessary motion practice, Sicor already informed P&U that
it will supplement its interrogatory response to provide additional citation to the file history.
P&U's Interrogatory No. 1 broadly seeks "each factual and legal basis for its contention
that 'the '285 patent is invalid under 35 U.S.C. §§ 101, 102, 103 and 112.'” This request is
clearly premature, as Sicor cannot provide a complete response without, at the very least,
obtaining the complete file history of the '285 patent from P&U and deposing various witnesses,
including the inventors residing in Italy. Nevertheless, Sicor specified that the claims of the '285
patent, which, according to P&U, pruport to cover both lyophilized (freeze dried) and non-
lyophilized drug products is invalid tmder the written description prong of § 112 because "the
claims are not limited to solutions not reconstituted from a lyophi1izate." Sicor also listed
witnesses with relevant knowledge. Similarly, with respect to its §§ 102 and 103 defenses, Sicor
also cited the prior art. P&U's complaint about the number of references on Sicor's list is wholly
disingenuous, as more than 300 references from the list were cited by P&U to the patent office.
P&U's Interrogatory No. 2 broadly requests Sicor to "describe in detail each factual and
legal basis for its contention" of non-infringement. Yet again, P&U's request is premature. ln
the interest of cooperation, however, Sicor provided an appropriate preliminary response to the
best of its current ability by stating that its non-infringement claim is based on, inter alia, the fact
that Sicor's product is "reconstituted from a lyophilizate," and its response provides that “a
proper claim construction would require, inter alia, that the claimed solutions exclude those
solutions that are reconstituted from a lyophi1izate." Unwilling to proceed with the fact
discovery on that issue in an orderly fashion, P&U makes the unsupported claim that, at this

Case 1 :04-cv—00833-KAJ Document 44 Filed 03/16/2005 Page 3 of 3
The Honorable Kent A. Jordan
March 16, 2005
Page 3
early juncture, it is entitled to Sicor's "complete proposed claim construction" concerning its
products, even though this Court’s Scheduling Order (D.I. 24, fl 10) set October 17, 2005 as the
date for the parties to exchange proposed claim constructions.
Sicor's lnterrogatory No. 3 broadly requests "the complete legal and factual basis for
[Sicor’s] denial" of willful infringement, including all legal opinions sought or received by Sicor.
P&U concedes, as it must, that Sicor is not required at this early date to choose whether it will
rely upon advice of counsel as a defense to willful infringement. With respect to P&U's request
that Sicor identify any and all privileged communications, Sicor has offered to provide P&U
with a privilege log that lists such written communications. P&U does not, and camiot, offer any
basis to reject that compromise.
Sicor's lnterrogatory No. 4 fares no better. lt broadly seeks "the legal and factual bases
for its affirmative defenses," including citation to any case law that Sicor asserts supports those
defenses. Yet again, P&U's request is premature. As set forth above, Sicor requires document
discovery and depositions to develop fully its legal theories in this case. At this juncture, it is
inappropriate to compel a detailed legal brief conceming Sicor's defenses. Sicor is confident that
discovery will demonstrate the merit of those defenses. In the interim, Sicor has provided a
response that identifies the good faith basis for its defense.
Respectfully,
/s/ John G. Day
John G. Day (l.D. #2403)
J GD: nml
cc: Clerk of the Court (by hand)
Maryellen Noreika, Esquire (by hand)
Brian T. Moriarty (via e-mail)