Free Letter - District Court of Delaware - Delaware

V Case 1 :04-cv—00833-KAJ Document 284 Filed 09/ 1 4/2006 Page 1 of 3
ASHEY 8. GEDDES
ATTORNEYS AND COUNSELLORS AT LAW ·rz|.|;P|-1oNE
302-654-IBBB
222 DELAWARE AVENUE
P. 0. Box uso 3c,;2;;i:;`§67
W|LM|NGTON. DELAWARE 19899
September 14, 2006
The Honorable Kent A. Jordan VIA ELECTRONIC FILING
United States District Court
844 King Street
Wilmington, DE 19801
Re: Pharmacia & Upjohrz C0., LLC v. Sicor Inc., et al.,
C.A. No. 04-833-KAJ
Dear Judge Jordan:
Sicor Inc. and SICOR Pharmaceuticals, Inc. (collectively, "Sicor") respectfully request a
telephonic conference at the Court’s earliest convenience on Friday, September 15 regarding
issues that have arisen in connection with preparation of the pre-trial order, currently due to be
filed this Monday, September 18, 2006.
As Your Honor will recall, after full motion practice, the Court bifurcated the liability
phase of this jury case from the willfulness and damages phase. The Court did so based upon
Sicor’s showing of jury prejudice to its liability defense if its attomey-client privileged materials
were shown to the jury during the liability phase. At the SEIIIIC time, the Court admonished the
parties to work together to effectuate the Court’s bifurcation Order (Ex. A; Ex. B at 28) and plan
for an eficient trial of the action.
To this end, Sicor’s lead counsel, Reid Ashinoff, phoned Pharmacia’s lead counsel,
Daniel Boehnen, to discuss pretrial order logistics and preparation. During their August 28 call,
which also included Messrs. Sigale and Rich, Mr. Ashinoff proposed, among other things, filing
phased exhibit and witness lists in the pretrial order, thus making clear which evidence each
party proposed to use in each phase of the trial. (The parties both are aware that, in addition to a
liability phase and a willfulness/damages phase before the jury, there would also be a separate
bench trial regarding Sicor’s inequitable conduct/unclean hands defenses.)
Mr. Ashinoff made this proposal to Mr. Boehnen both to comport with the Court’s
directive, as well as to facilitate the ability of each party to respond to the other party’s proffers
with either stipulations as to admissibility, or stated objections to the use of the proffered
evidence in the particular phase of the case (e. g., relevance, undue prejudice, hearsay, etc.). Mr.
Ashinoff also told Mr. Boelmen that he was making this proposal in an attempt to curtail
unnecessary motion in limine practice. Acknowledging the reasonableness of this proposal, Mr.

Case 1 :04-cv—00833-KAJ Document 284 Filed 09/14/2006 Page 2 of 3
The Honorable Kent A. Jordan
September 14, 2006
Page 2
Boehnen took Mr. Ashinoff s suggestion under advisement — and never objected or otherwise
responded to it.
On Tuesday evening, September 12, the date agreed upon by Messrs. Boehnen and
Ashinoff, Sicor served upon Pharmacia witness and exhibit lists phased to indicate which
witnesses and which exhibits would be proffered in each separate phase of the bifurcated trial
(i.e., liability, or willfulness/damages, or inequitable conduct/unclean hands). However, the
witness and exhibit lists served upon Sicor by Pharmacia on September l2 did not so identify the
witnesses and exhibits that Pharmacia proposed to use in each phase of the trial. (Ex. C:
Excerpts from Sicor’s Exhibit List; Ex. D: Sicor’s Witness List; Ex. E: Excerpts from
Pharmacia’s Exhibit List; Ex. F: Pharmacia’s Witness List). Instead of doing so, Pharmacia
provided a non—responsive statement next to numerous exhibit entries that those exhibits would
be used "for limited purposes only.” However, despite Sicor's request, Pharmacia has not
informed Sicor what that phrase means, nor which exhibits and which witnesses will be
proffered in which phase(s) of the trial.
Pharmacia’s submission makes it impossible for Sicor to determine which evidence
Pharmacia plans to proffer in which phase of the case, and thus makes it extremely difficult for
Sicor to respond with appropriate, accurate and meaningful objections to the use of such
evidence in each phase of the case (as this Court’s pretrial order instructions require). It also
makes it impossible for Sicor to confidently decide which motions in limine it needs to make
addressed to the use of particular pieces of evidence.
On Wednesday, September 13, consistent with Sicor’s September 12 submission to
Pharmacia and their August 28 discussion, Mr. Ashinoff phoned Mr. Boelmen and asked him to
provide phased lists of exhibits and witnesses by today, September 14, which lists Sicor would
promptly analyze in order to make informed decisions regarding admissibility and objections, as
well as a decision regarding the selection of motions in limine that it would need to prepare and
serve. Pharmacia refused that request. Instead, Pharmacia proposed that Sicor go through
Pharmacia’s 816 exhibits and witness list and tell Pharmacia which exhibits and which witnesses
Sicor might object to in each of the phases of the case. Pharmacia’s demand ignores this Court’s
bifurcation Order and direction to the parties to work cooperatively, and works manifest
prejudice and would impose undue burdens on Sicor. This would be particularly unreasonable
given that Sicor did exactly what this Court contemplated by serving its own witness and exhibit
lists in accordance with this Court’s bifurcation Order.1
I Notwithstanding Pharmacia’s failure to cooperate, on September 13, Sicor selected and
served three motions in limine that it believes would have to be filed regardless of the phasing of
evidence. Sicor reserved the right to serve up to two additional motions as permitted under the
Court’s rules, once it has received phasing information from Pharmacia. (Ex. G: September 13,
2006 E-Mail Transmitting Sicor’s Motions in Limine).

Case 1:04-cv—OO833-KAJ Document 284 Filed O9/14/2006 Page 3 of 3
The Honorable Kent A. Jordan
September 14, 2006
Page 3
Accordingly and regretfully, Sicor asks for this Court’s assistance to direct Pharmacia to
honor this Court’s bifurcation Order in the preparation of the pretrial order, and to enable Sicor
to have meaningful time to complete its obligations under the Cou1t’s directives regarding
pretrial orders (e. g., stipulating to admissibility or indicating objections to evidence in each phase
of the case and finalizing its choice of motions in limine), once Pharmacia has served proper lists
of its evidence.
Respectfully,
/s/ John G. Day
Jolm G. Day
J GD/drnf
Attachments
cc: Maryellen Noreika, Esquire (via electronic mail; w/ attachments)
Daniel A. Boehnen, Esquire (via electronic mail; vv/attachments)
Reid L. Ashinofi Esquire (via electronic mail; w/attachments)