Monnts, NECHOLS, Ansrrr & TUNNELL
l20l Noarru 3/[.¢».st
WILMINGTON, DELAWARE
302 658 9200
302 658 3989 Fax
MAuva1.LsN Nonituca
302 575 7278 March 15, 2005
302 é25 3011 Fax
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BY E—l\/IAIL
The Honorable Kent A. Jordan
United States District Court
844 King Street
Wilmington, DE. l9801
Re: Pharmacia & Upjohn Company v. Sicor, Inc. and
Sicor Pharmaceuticals, lnc., C.A. No. 04~833 5KAJ l
Bear Judge J ordant
We write on behalf of Pharmacia & Upjohn ("P&U") in advance of the March 17, 2005
telephone conference regarding a dispute over the sufficiency of Sicor's responses to Pharmacia &
Upjol1n's First Set of interrogatories. Sicor has insufficiently responded to Interrogatory Nos. l
(invalidity contentions), 2 (non-infringement contentions), 3 (willfulness contentions), and 4
(affirmative defenses). l’&U has diligently but unsuccessfully sought to obtain the information
responsive to these interrogatories since serving P&U‘s First Set of Interrogatories on November 9,
2004. Accordingly, P&U respectfully requests this Court to compel Sicor to provide complete
responses to P&U‘s lnterrogatory Nos. l, 2, 3, and 4.
Instead of providing its invalidity contentions in a straightforward manner, Sicor instead tries
to force P&U to muddle through a thicket of alleged art (not all of it prior art) to guess what Sicor is
arguing in relation to any particular reference. P&U's Interrogatory No. 1 tracked the language of
Sicor’s Answer, requesting Sicor to describe in detail each factual and legal basis for its contention
that "the *285 patent is invalid under the patent laws ofthe United States including without limitation
35 U.S.C. §§ 10l, 102, 103 and ll2." Instead of providing substantive responses for §§ 10l, 102,
and 103,l Sicor merely summarized the language of the statutory provisions and referred to a list of
references incorporated as an attachment to Sicor’s Responses:
[Slubject to the Courts ruling on claim construction, claims l—3, 9, and 11-l3 ofthe
’285 patent are invalid as not being new and useful and/or as anticipated, based in
1 Sicor makes only one argument under § 112, namely that the asserted claims are invalid "for
lack of written description because the claims are not limited to solutions not reconstituted from a
lyophilizatef In providing its non—infringement contentions, however, Sicor asserts only that the
asserted claims inherently "exclude those solutions that are reconstituted from a lyophilizate." Those
two positions cannot be reconciled as current contentions.
Case 1 :04-cv—00833-KAJ Document 43 Filed 03/15/2005 Page 2 of 4
The lrlonorable Kent A. iordan
March l5, 2005
Page 2
admissions made by the applicants during prosecution of the patent application that
matured into the *285 patent, the file history of the *285 patent, and/or any of the
[502] references listed in Attachment I hereto. The subject matter claimed in claims
l~3, 9, and ll-13 of the '285 patent is not new and useful and/or novel over the prior
art.
=l¢ =§= =i¢
[Slubject to the Court‘s ruling on claim construction, claims l-3, 9, and ll-I3 of the
*235 patent are invalid for obviousness based in admissions made by the applicants
during prosecution of the patent application that matured into the *285 patent, the tile
history of the '285 patent, and/or any of the {502} references listed in Attachment l
hereto. The combined teachings of the pertinent prior art references render the
subject matter claimed in claims l-3, 9, and ll-l3 of the '285 patent obvious to a
person of ordinary skill in the art.
Sicor does not identify the "admissions made by the applicants during prosecution of the patent
application that matured into the ‘285 patent [and] the file history of the ‘285 patent" that it contends
render the asserted claims invalid. Nor does Sicor explain how those alleged admissions render the
asserted claims invalid. Furthermore, Sicor's Attachment I is nothing more than a list of 502
references, most of which could not invalidate the claims of the '285 patent and some of which were
not even published before the filing of the application that issued as the *285 patent. In short, instead
of identifying the basis for its invalidity contentions, Sicor seeks to force P&U to guess what it will
later argue based on a morass of largely irrelevant materials. This is exactly the approach that
discovery is intended to prevent.
Sicor should be required to identify, to the best of its present ability, the specific statements
and references it contends render the asserted claims invalid and to explain why those statements and
references render the asserted claims invalid. To the extent Sicor obtains further discovery from
P&U that impacts the invalidity contentions, Sicor has the ability to later supplement or modify its
interrogatory response in order to incorporate that later discovered information.
Similarly, Sicor fails to provide the infomation needed for P&U’s infringement inquiry.
P&U again tracked the language of Sicor's Answer in requesting Sicor to describe in detail each
factual and legal basis for its contention that "the manufacture, sale and offer for sale of Sicor‘s
ldarubicin HCI does not infringe any valid and enforceable claim of the *285 _patent.*’ Other than
arguing that there is an inherent, unexpressed limitation that the asserted claims "exclude those
solutions that are reconstituted from a lyophilizate," Sicor provides gig, information regarding either
its proposed claim construction or the comparison of its proposed claim construction to its accused
products. That failure is important because a proper response will very likely require Sicor to agree
with many of P&U*s claim construction and infringement contentions (previously provided to Sicor),
narrowing the issues to be considered hy the Court in Markmari proceedings and promoting both
judicial efficiency and efficient discovery. Such elhciency is the goal of discovery, and Sicor should
be required to provide its complete proposed claim construction (including the basis for that
construction) and the comparison of its proposed claim construction to its accused products, at least
to the extent that its proposed claim construction and infringement analysis varies from the
information already provided by P&U.
Case 1 :04-cv—00833-KAJ Document 43 Filed 03/15/2005 Page 3 of 4
The Honorable Kent A. Jordan
March i5, 2005
Page 3
lnterrogatory No. 3 requests Sicor to provide the complete legal and factual basis for its
denial that its "actions constitute willful infringement of the '285 patent under 35 U.S.C. § 284." in
response, Sicor does nothing more than object to deciding whether it will rely upon advice of
counsel, state that it "did not deliberately copy and protectible invention set forth in the '285 patent,"
and identify that P&U has not yet been adjudicated a prevailing party. As to the first point, Sicor
refuses to identify whether it has even received advice of counsel — information that Sicor must
provide regardless of whether it decides to rely upon that advice of counsel. As to the second point,
Sicor provides no factual basis for its conclusion that it did not "deliberately copy" the patented
invention, such as a description of the independent development ofthe product.2 Sicor should be
compelled to identify the purported bases for both assertions of willful infringement, including by
providing a complete identification of all advice of counsel,3 both written and oral, received
concerning infringement, validity, or enforceability of the ‘2S5 patent and the complete legal and
factual basis for its claim that it did not "deliberately copy" the patented invention.
Interrogatory No. 4 requests Sicor to provide the legal and factual bases for its affirmative
defenses. ln response, Sicor provides only a sketchy and generic description, failing to provide
underlying facts or identify individuals who have knowledge of the relevant facts. Sicor provides
cryptic one sentence descriptions for each of three defenses. With regard to laches, for example,
Sicor states, "Phannacia was aware that Sicor filed an ANDA well before it was approved and could
have asserted its purported claim for patent infringement at that tirne." With regard to equitable
estoppel, Sicor states, "Pharmacia engaged in commercial negotiations and transactions with Sicor
that conveyed to Sicor that Pharmacia did not intend to enforce its alleged [sic] patent against Sicor."
With regard to unclean hands, Sicor states, "Pharmacia is barred in whole or in part from maintaining
this action by the doctrine of unclean hands due to its wrongful conduct as described above as well as
before the U.S. Patent and Trademark Office" For none of the three defenses does Sicor identify
who was involved, what they did, when they did it, or how their actions support the defense, te.,
infomation that is requested by the interrogatory. The effect of Sicor's insufficient responses is that
P&U knows neither the bases for Sicor’s arguments nor who it can depose to learn more. Sicor
should be required to provide complete information, including an identification of individuals with
relevant knowledge, to allow P&U to investigate.
Respectfully,
/s/ Maiyellen Noreika (#3208
l\/lN:bls
2 As discussed below in relation to Sicor's response to lnterrogatory No. 4, Sicor apparently
filed an Abbreviated New Drug Application ("ANDA") to obtain approval of its ldarubicin HCl
formulation. The filing of an ANDA would be appropriate only if Sicor actually did copy Pharmacia
& Upjohn's product.
3 Pharmacia & Upjohn does not seek to have Sicor compelled to choose immediately whether
it will rely upon advice of counsel as a defense to willful infringement. However, to avoid further
disputes between the parties, it might make sense to set a schedule for Sicor's decision.
Case 1 :04-cv—00833-KAJ Document 43 Filed 03/15/2005 Page 4 of 4
The Honorable Kent A. Jordan
March 15, 2005
Page 4
cc: Peter T. Dalleo, Clerk (By Hand Delivery)
John G. Dey, Esquire (By Hand Delivery)
Reid L. Ashinofi Esquire (By Fax)
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