Free Letter - District Court of Delaware - Delaware

Case 1:04-cv—OO833-KAJ Document 285 Filed O9/15/2006 Page 1 of 3
MORRIS, NICHOLS, ARSHT Sr TUNNELL LLP
1201 Nonrrr Manner Srnnnr
l:°.O. Box 1347
WILMINGTON, DELAWARE l9899—l?>4·7
302 B58 9200
302 658 3989 Fax
NIARYELLZEN 'Nonmne.
M September rs, 2006
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BY E—FILING
The Honorable Kent A. Jordan
United States District Court
844 King Street
Wilmington, DE l980l
Re: Pharmacia & Upjohn Company LLC v. Sicor inc. et al.,
CA. No. 04-833 {KA}!
Dear Judge Jordan:
I write on behalf of Pharmacia & Upjohn Company LLC ("Pharniacia”) in
response to the September l4, 2006 letter from Sicor Inc. and SlCOR Pharmaceuticals inc.
("Sicor") regarding infomation to be exchanged in exhibit lists and witness lists for the proposed
pretrial order.
Si.cor’s September 14m letter is inaccurate in several important respects. First,
there has never been any agreement with respect to exchanging exhibit and witness lists for
different "phases" of trial. Indeed, none of the exhibits attached to Sicor’s letter suggest such an
agreement. Nevertheless, prior to Sicor’s September 14 letter to the Court, Pharmacia had
already offered (and acted) to address questions regarding the relevance of certain documents to
different issues in the case. To the extent Sicor has additional questions, Pharmacia remains
willing to try to respond.
Moreover, contrary to Sicor’s letter, at no point during the August 28, 2006 phone
call between counsel did Sicor’s counsel suggest that exhibit lists and/or witness lists should
include an identification as to which “phase" of the trial they might relate. Rather, Sicor’s
counsel explained a general position that certain documents related only to the willfulness phase,
and asked for agreement that such documents would not be used during the liability phase ofthe
trial. In response, Pharrnacia’s counsel, Mr. Boehnen, noted that he did not disagree that some
documents may be relevant only to willfulness, but that he would not agree to an open»ended
proposal; he added that he would need Sicor to send a specific list of the documents it had in
mind that related only to the willfulness part of the case, and that, once received, Pharmacia
would get back to Sicor as soon as possible. Nothing further was expressed during that phone
call about limiting the use of documents or exhibits during different phases of the case, and that
was never followed up.

Case 1:04-cv—00833-KAJ Document 285 Filed 09/15/2006 Page 2 of 3
The Honorable Kent A. Jordan
September 15, 2006
Page 2
The August 28, 2006 phone call focused primarily on setting dates for exchanging
the infomation leading up to the .l`oin.t Pretrial Statement, and the parties reached agreement on
these dates amicably and professionally. By e—mails dated September 6, 2006, the parties’
respective counsel later confirmed agreements reached during the August 28th phone call. Ex. A.
There was no mention about identifying the "phase" of information in the exhibit lists and/or
witness lists.
The first time that Sicor suggested that exhibit lists and witness lists might include
an identification of relevant "phases of trial" occurred during a phone call between Messrs.
Sigale and Rich shortly after the September 6m e—1nails. Then, in a telephone conversation just
days before the exchange of lists, Sicor’s counsel stated that Sicor would be providing lists that
included such information. We explained that Pharmacia was not in a position with its
preparation to do so on such short notice, and indicated that Pharmacia would not be providing
such inforrnation. Sicor’s counsel did not suggest that any agreement had been reached on such
matter, and instead requested a list of specific documents that Pharmacia believed would be
appropriate for each phase of the trial.
Thereafter, on September l2, as agreed, the parties exchanged exhibit lists.
Sicor’s lists included information about the phases in which information would be used, and
Pharmacia’s lists did not. The next afternoon, Sicor’s counsel called to complain that Sicor was
unsure of what motions in limiue it should prepare because l%’harmacia’s lists did not include
information about the relevant "trial phase." We explained that Pharmacia told Sicor that it
would not be providing "phase” information when the question first arose during the earlier
telephone discussion, and we asked Sicor which specific exhibits it was concerned about. Sicor
responded that it was concerned, for example, about all the information to and from Sicor’s in-
house counsel regarding Sicor’s opinion of counsel, the depositions of Sicor’s in—house and
opinion counsel, and Sicor’s opinion. Within about % hour of this phone call, we reviewed all of
those exhibits, and called back to Sicor’s counsel with Pharmacia’s position as to which
materials would be used in which phases of the trial. Ex. B.
During that second phone conversation on September 13m, we noted that the vast
majority of exhibits have multiple purposes, and Pharmacia could not provide a detailed
identification of "phase usage” for each and every exhibit bythe end of that day (in less than four
hours) W as Sicor demanded. Instead, we observed that Sicor had Pharmaciafs entire list, and
offered to review any other specific exhibits that Sicor identified, and to get back to Sicor as to
such exhibits very quickly.
That offer was rejected, and Sicor informed us that it would take the issue to the
Court unless Pharmacia provided a revised list of exhibits and witnesses, indicating the phase of
usage of such materials. We were also informed that Sicor was not going to exchange its
motions in limine until some period og time after receiving such information despite Sicor
having proposed a delayed schedule already. Under the agreed schedule, the parties were to
exchange their motions in limine at 7 p.m. on September 13th, the day after the exchange of
exhibit lists. Although Pharmacia tried to resolve the issue with Sicor’s counsel, he refused to
listen and hung up.

Case 1:04-cv—00833-KAJ Document 285 Filed 09/15/2006 Page 3 of 3
The Honorable Kent A. Jordan
September 15, 2006
Page 3
lt appears that Sicor’s motivation in the present situation may be to postpone
service of its motions in fimme. Although Sicor claimed that its failure not to exchange all
motions in lznznze is based. on not having the identification of "phase relationship," it is difficult
to see how getting such information at the end of September l2" would enable the preparation of
a motion in limine bythe end of September i3ih. Moreover, if Sicor’s concern is that Pharmacia
may use an exhibit during a phase to which the exhibit does not relate, that evidentiary problem
can be handled more effectively by Sicor raising an objection if/when it happens, which it may
not.
Proposed Resolution
Counsel for both sides are currently working hard to get the pre—trial materials
prepared for the Joint Pretrial Statement, currently due l\/[onday, September lll, 2006. Nerves are
to some extent strai.ned, and patience is at a premium. The situation is further strained by
preparation for the Court ordered mediation taking place in this case next Wednesday, September
20, 2006.
As a practical matter, the current situation relates to Sicor”s concern that
Pharmacia may try to use prejudicial materials relating to willfulness during the trial of the
validity issues. Putting the past conflict aside, Pharmacia proposes that the best and most
efficient resolution of this situation is for Sicor to identify those specific Pharmacia exhibits for
which it has legitimate basis of asserting that:
(i) a specified exhibit should not be used during the validity phase, and
(ii) Pharmacia may try to use the exhibit during the validity phase.
Pharmacia will respond within 24 hours, identifying whether it reserves the right to use the
specified exhibit during the validity phase of the trial.
Furthermore, to the extent that Pharmacia’s reservation of right to use an exhibit
causes any continuing concern for Sicor, Pharmacia proposes that Sicor may thereafter tile a
motion in ltmine seeking to block Pharmacia’s use of the exhibit (not to exceed the Court’s total
limit on such motions). The scheduling for such a motion should follow the same time frame
that the parties agreed for the Joint Pretrial Statement, i.e., namely, that Sicor would file its
motion within 24 hours of receiving the information about exhibits and Pharmacia shall then
have five (5) days thereafter in which to respond.
Respectfully,
l /s/ Maryellen Noreikn (#3208)
Maryellen Noreika
cc: Dr. Peter T. Dalleo, Clerk (By Hand)
Steven J. Balick, Esquire (By Hand)
Reid L. Ashinoff, Esquire (By Fax)
Jordan Sigale, Esquire (By Fax)
Daniel A. Boehnen, Esquire (By Fax)