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EXHIBIT 1
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EXHIBIT 2
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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE
............................................................... X
O -iginal :._
)
PHARMACIA & UP JOHN COMPANY LLC, Plaintiff, v. SICOR INC. and SICOR PHARMACEUTICALS, Defendants.
...............................................................
) )
)
)
)
) Civil Action No. 04-833 (KAJ)
)
INC., ) )
)
)
X
PHARMACIA
& UP JOHN'S FIRST SET OF INTERROGATORIES LLC propounds the following Interrogatories to
Plaintiff Pharmacia & Upjohn Company Defendants Sicor Inc. and Sicor Pharmaceuticals, The written responses to these Interrogatories (30) days of the receipt hereof. Interrogatories
Inc. pursuant to Rules 26 and 33, Fed. R. Civ. P. counsel within thirty
shall be served upon Plaintiff's
Further, any documents and things produced in response to these Boehnen
shall be produced for inspection and copying at the offices of McDonnell
Hulbert & Berghoff LLP, 300 S. Wacker Dr., Chicago, Illinois 60606, within thirty (30) days of the receipt of these Interrogatories. DEFINITIONS For purposes definitions shall apply: 1. The terms "Plaintiff" and "Pharmacia" shall mean Plaintiff Pharmacia & Upjohn of responding to these requests for production of documents, the following
Company LLC, and other company doing and has done business;
namesunderwhichPharmacJa UpjohnCompanyLLC is &
parents, subsidiaries, divisions, directors,
their predecessors,
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officers, employees,
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and
agents, distributors, jobbers, salespersons,
interns, sales representatives,
attorneys; and each person acting or purporting control. 2. to, Defendants (whichever The ten,as "Defendants," "Sicor,"
to act on its or their behalf or under its or their
and "you" shall mean, and "your" shatl relate Inc., both collectively and independently
Sicor Inc. and Sicor Pharmaceuticals,
calls for broader production of documents and things), and any other company name Sicor is doing or has done business; franchisees, assigns or other their predecessors, related business parents, subsidiaries,
under which divisions,
licensees,
entities;
their directors, interns, and
officers, employees, attorneys; control. 3.
agents, distributors, jobbers,
salespersons,
sales representatives,
and each person acting or purporting
to act on its or their behalf or under its or their
The terms "person"
and "persons"
shall mean natural persons
(including
those
employed by Defendants) governmental entity; and entities,
and all other legally cognizable officers, departments, corporations,
entities, including (without limitation) or affiliates of any other governmental proprietorships,
agencies,
commercial
entities,
foundations,
partnerships,
associations, 4.
and other non-governmental
organizations. or, if
The term "date" shall means the exact day, month and year, if ascertainable, closest approximation (including by description
not, Defendants' events). 5.
of the date in relation to other
The terms "documents"
and "things"
shall have the broadest
scope permissible the originals
under the Federal Rules of Civil Procedure (or, absent any original, reproduced, including
and shall include (without
limitation)
a copy) of any writings or other tangible things, however produced or books, accounting and financial records of any nature whatsoever,
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agreements, transmission summaries conversations engineering
communications, messages, or records
correspondence,
e-mail, telegrams, cables, telexes, telecopy or fax recordings, records of studies, personal
memoranda, of
video, audio or other electromagnetic conversations, summaries or
telephone
or interviews, reports
diaries, letters, forecasts, statistical statements, notebooks, charts, plans, sketches,
graphs, laboratory or drawings, microfilms, information minutes or
and records,
bearing photographic records attending summaries of meetings meetings
products of any nature whatsoever, or conferences, or conferences, expressions reports and/or
photo-records,
or statements summaries
of policy, of interviews, patent
lists of persons reports and/or patent
of investigations,
opinions
or reports
of consultants,
appraisals,
searches, opinions of counsel, records, any nature whatsoever, brochures,
reports or summaries catalogues, catalogue
of negotiations, sheets,
sales literature of periodicals,
pamphlets,
advertisements, reprints, computer translated, drafts
circulars or trade letters, press releases, publicity releases, new product releases, of any documents, working papers, indices, original or preliminary notes, or
printouts
and other data compilations by Defendants
from which information devices
can be obtained
if necessary,
through detection above
into reasonably or attached
usable form. thereto any
Any copy of a "document" alteration, notes, comments
as described
containing
thereon
or other mark, indicia, or material not included sentence shall be deemed a separate
in the original or within the
copy referred
to in the preceding
"document"
foregoing definition. than "documents"
The terms "documents"
and "things" shall also mean tangibles object other
as described above, and shall include objects of every kind and nature such as, models and specimens. The terms "document" form, including and "things" shall electrical versions
but not limited to, prototypes,
refer to any of the above-identified maintained
objects in any tangible
in a magnetic or optical storage medium.
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6. person
The term "communication" including
shall mean any transmission (without limitation)
of information meeting,
from one telephone,
or entity to another,
by personal
facsimile, radio, telegraph, 7.
electronic mail, teleconference, and "concerning"
writing, or other means. as broadly as possible
The terms "relating"
shall be interpreted
so as to encompass 8.
the liberal scope of discovery set forth in Rule 26(b) of Fed. R. Civ. P. "identification," "describe," and "description" shall mean to
The terms "identify,"
provide a complete identification ascertainable by Defendants,
of the document,
thing, or person to the fullest extent known or is in the possession, is alleged custody, or by any
whether or not the information
control of Defendants
and whether or not the information
to be protected
privilege or work product protection, information: (a)
and includes without limitation
a request for the following
with respect to a natural person, his or her name, home and work addresses, numbers, present place of employment and termination (or if unknown, job
home the last
and work telephone known), date(s)
of commencement
of employment,
title, and
description of his or her duties and responsibilities; (b) with respect to a person other than a natural person, the full name, state of number
incorporation
or registration,
address of its principal place of business, telephone
of its principal place of business,
and the identity of each natural person who acted on
behalf of such entity with respect to the subject matter of the Request; (c) with respect to a document, pad, report); the type of document (e.g., letter, e-mail, facsimile, consists, a person who
contract, calendar description prepared
the number of pages of which the document contents; an identification of each natural of each natural person
of the document's the document;
an identification
for whom
it was
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prepared;
each natural person who signed it; an identification mailed, or otherwise received;
of each natural person to of each natural
whom it was delivered,
an identification
person to whom a copy was sent or who otherwise creation, and publication; the significance present identified documents of which possession, (d) location identifying number(s),
received a copy; the date of writing, thereof, if any; thereof; and to be
letter(s) or combination letter(s) or combination
or meaning and identity
of such number(s), of the custodian currently
of that document. in your possession,
Documents custody
shall include
documents
or control;
you know to have once existed but that no longer exist; and other documents you have knowledge or information but that are not currently in your
custody, or control; the manner in which the communications of each natural person who
with respect to oral communications, conversation,
were made (telephone, participated
etc.); the identity
in or witnessed
the communication;
the subject matter and content of the
communication; (e)
and the date of the communication; the country or jurisdiction in which
with respect to a patent or patent application,
it was filed, number, named inventor(s), or foreign counterpart (f) with respect applications
filing date, issue date (ifa patent), and all related
and patents; and tapes, computer media, and other things all identifying
to films, photographs,
susceptible
to chemical,
biological, mechanical,
or electrical reproduction,
information including their character, subject matters, authors, and dates. 9. conjunctively The terms "and," "or," and "and/or" shall be construed disjunctively all responses or
as necessary
to bring within the scope of these Interrogatories
which
otherwise might be construed to be outside its scope.
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10.
The terms "describe" to the subject
and "state" shall mean to set forth fully and unambiguously of the Interrogatory of which you have knowledge or
every fact relevant information. 11. as necessary
Any word written in the singular herein shall be construed to bring within the scope of these Interrogatories
as plural or vice versa which otherwise
all responses
might be construed to be outside its scope. 12. 13. "The '285 patent" shall mean U.S. Patent No. 6,107,285. The term "prior art" includes by way of example and without limitation, any
subject matter that you assert may be encompassed 14. Interrogatory 15. No Interrogatory or subpart hereof. The term "Idarubicin Hydrochloride
by 35 U.S.C. § 102 and/or 35 U.S.C. § 103. as a limitation on any other
or subpart hereof shall be construed
Injection Product"
shall mean any ready-toand sold by Sicor.
use idarubicin hydrochloride
solution for intravenous
injection manufactured
INSTRUCTIONS 1. 33(d), If you produce responsive documents pursuant to Federal Rule of Civil Procedure copy of each document custody or control or other tangible all copies thing in the
the original
and each non-identical
requested possession, company,
herein which is in your possession,
(including
custody, or control of any entity defined as being "you") is to be produced, department, and personal files.
including
If the original or copy is not in your possession,
custody or control, a full, clear, legible copy thereof is to be produced. 2. Defendants If any portion of any Interrogatory refers or relates to information knowledge, of which are
were once aware but is no longer within Defendants'
Defendants
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requested Defendants 3.
to identify the name, telephone
number,
and address of the person
last known by
to have kalowledge of such information. Each Interrogatory shall be responded to fully unless it is in good faith objected shall be stated in detail. If an objection within it, of
to, in which event every reason for your objection pertains to only a portion of an Interrogatory,
or a word, phrase, or clause contained
you are required to state your objection to that portion only and to respond to the remainder the Interrogatory, 4. using your best efforts to do so.
If you produce responsive documents pursuant to Federal Rule of Civil Procedure and thing produced is to be (i) identified in your written response hereto to of the Request in response of business, to which it is being produced or (ii) including all file folders, binders,
33(d), each document correspond produced
with the categories
as it is kept in the usual course
notebooks and other devices by which each such document or thing is organized 5. Interrogatory immunity), If you or your counsel assert that any information is privileged or otherwise protected identified
or separated. in response to an product
from discovery
(e.g., by work
set forth in your response hereto with respect to all information
for which a claim of
privilege is made such that the document or thing is not produced in full: a. The place, approximate date, and manner of recording, creating or
otherwise preparing any document or thing; b. The name and organizational position, if any, of each sender of any
document or thing; c. The name and organizational position, if any, of each recipient and/or
custodian of any document or thing;
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d.
The name and organizational
position, if any, of each person (other than in the preparation or creation of
stenographic
or clerical assistants) participating
any document or thing; e. contents The name and organizational of the information position, if any, of each person to whom the portion thereof have heretofore been
or any
communicated f.
by copy, exhibition, reading or summarization;
A statement of the basis on which privilege is claimed with respect to the and including a statement of sufficient relevant facts and
information circumstances
that will explain the basis of the claim of privilege of the propriety of the claim of privilege; other than Defendants'
and will permit
the adjudication g.
The name of each person,
attorneys
of record,
having knowledge h.
of the f_actualbasis asserted for the privilege claim; of the Interrogatory to which the document or thing is
The number
responsive; i. The identity and organization position, if any, of each person supplying requested in subsections
the author of your response (a) through (g) above; j. etc.); k. The subject matter
hereto with the information
The type of any document
or thing withheld
(e.g., letter, memorandum,
of
any
document,
communication,
or
other
information; t. The location(s) where, if at all, information has been redacted on any
document or thing thus produced;
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m.
The location of any document,
communication,
thing or other information
withheld; and n. 7. In the case of a document, The Interrogatories the length of the document in number of pages. you know as of the date of service hereof, Pursuant to Federal Rule of Civil Procedure
seek all information
unless otherwise stated in a particular interrogatory. 26(e), these Interrogatories or part thereof, knowledge supplemental
are deemed to be continuing so that with respect to any Interrogatory, acquire additional documents responses or things or
as to which you, after answering, you shall seasonably of documents
or information, production
serve supplemental
and/or make a
and things, in no case later than thirty (30) days after or information.
acquiring such additional documents
or things or knowledge INTERROGATORIES
INTERROGATORY
NO. 1
Describe in detail each factual and legal basis for Sicor's contention that "the '285 patent is invalid under the patent laws of the United States, including without limitation 35 U.S.C. §§ 101,102, 103 and 112," and, as part of your response, identify each claim of the '285 patent that for each such claim, idemify each statutory provision that Sicor
Sicor contends is invalid;
contends renders it invalid; identify in detail all facts that constitute the basis for each of Sicor's assertions of invalidity; identify all documents that support, refute or are inconsistent with each of Sicor's assertions of invalidity; and identify all corroborating witnesses or others having
knowledge of any facts that relate to such assertion of invalidity. INTERROGATORY Describe NO. 2 each factual and legal basis for Sicor's contention that "the
in detail
manufacture, sale and offer for sale of Sicor's
Idarubicin HC1 does not infringe any valid and
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enforceable construction construction specification,
claim of the '285 patent," and, as part of your response,
identify Sicor's
proposed
of each claim term of each claim of the '285 patent; identify all bases for Sicor's of each claim term (including and prosecution history by identifying specific portions of the claims, of meaning history
of the '285 patent and any other sources
asserted to be relevant to the construction estoppel detail
of each claim term); identify any prosecution
that Sicor asserts applies to construction and/or legal contentions
of the claims of the '285 patent; identify in the basis for Sicor's assertion of
all facts
that constitute
noninfringement; Sicor's
identify all documents
that support, refute or are inconsistent witnesses
with each of
assertion of noninfringement;
and identify all corroborating
or others having
knowledge
of any facts that relate to such assertion ofnoninfringement. NO. 3 and legal basis for Sicor's denial that its "actions
INTERROGATORY Describe constitute
in detail each factual
willful infringement
of the '285 patent under 35 U.S.C. § 284,'" and, as part of your infringement, validity or
response, identify each opinion sought or received by Sicor concerning enforceability made
of the '285 patent, whether written or oral; identify all actions taken and efforts to ensure that it would not infringe the '285 patent through the
by Sicor intended
manufacture, Product;
sale, offer for sale, or importation all other circumstances
of Sicor's
Idarubicin renders
Hydrochloride its actions
Injection not willful case; of
identify
that Sicor contends
infringement;
identify
all other circumstances
that render this case not an exceptional with each of Sicor's
identify all documents
that support, refute or are inconsistent and identify all corroborating
assertion
lack of willful infringement;
witnesses or others having knowledge
of any facts that relate to such assertion of lack of willful infringement.
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INTERROGATORY
NO. 4 defenses, including
Describe in detail each factual and legal basis for Sicor's affirmative without limitation, maintaining Sicor's assertions that: (i) "Pharmacia
is barred in whole or in part from relief thereunder" under
this action and from recovering
any damages or equitable
the doctrine of laches, including citation to any case law that Sicor asserts supports (ii) "Pharmacia is barred in whole or in part from maintaining relief thereunder"
its assertion;
this action and from recovering estoppel, including
any damages or equitable
under the doctrine of equitable
citation to any case law that Sicor asserts supports its assertion;
(iii) "[t]his action is barred in
whole or in part by the doctrine of unclean hands," including citation to any case law that Sicor asserts supports each of Sicor's knowledge its assertion; identify all documents affmnative defenses; that support, refute or are inconsistent witnesses with
and identify all corroborating defenses.
or others having
of any facts that relate to such affirmative NO. 5
INTERROGATORY
Identify and describe in detail all natural persons having responsibility and development, Hydrochloride structure importation manufacture, Product, offer for sale, sale, and importation without limitation,
for the research Idarubicin corporate
of Sicor's Sicor's
Injection
including
by identifying offer
relating
to the research Idarubicin
and development, Hydrochloride
manufacture,
for sale, sale, and but not limited to owned, groups,
of Sicor's
Injection Product (including entities
all subsidiaries; controlled,
predecessors;
and/or other related business by Sicor; and
owned, partially
and/or partially controlled
the function
of all departments,
units, and/or divisions within each such entity pertaining to such production Hydrochloride research Injection Product); identifying
of Sicor's Idarubicin had in the of Sicor's
the role that each such individual for sale, sale, and importation
and development,
manufacture,
offer
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Idarubicin corporate
Hydrochlofide structure
Injection
Product;
identifying
all documents
that relate to Sicor's and development, Injection
or the role that each such individual
had in the research
manufacture,
offer for sale, sale, and importation all corroborating
of Sicor's idarubicin
Hydrochloride
Product; and identifying relate to Sicor's corporate development, Hydrochloride
witnesses or others having knowledge
of any facts that
structure or the role that each such individual offer for sale, sale, and importation
had in the research and of Sicor's Idarubicin
manufacture,
Injection Product. NO. 6 for or with
INTERROGATORY
Identify each and every entity within Sicor that has or has had responsibility which Sicor has or has had a business arrangement, or otherwise) relationship (whether by agreement,
license, informal offer for sale, without
relating to research and development, Idarubicin Hydrochloride
manufacture,
sale, or importation
of Sicor's
Injection Product,
including
limitation, by describing responsibilities identifying
the nature and terms of the responsibility within
or relationship; under
identifying the
of each entity
Sicor and every other entity began (and, if applicable, maintaining,
the relationship; identifying if applicable,
the date on which the relationship
terminated);
the person(s) involved in commencing, to terminate the relationship; relationship; identifying
negotiating,
and/or deciding,
identifying, if applicable, the reason(s) for deciding to terminate the relates, or or others
all documents that relate to what led up to, defines, describes, or relationship; and identifying all corroborating witnesses
refers to that responsibility having knowledge to that responsibility
of any facts that relate to what led up to, defines, describes, or relationship.
relates, or refers
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INTERROGATORY NO. 7
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For each month and year in which Sicor has offered for sale or sold Sicor's Hydrochloride hydrochloride Injection Product, identify, independently for each unit of
ldarubicin idarubiein
injection product, Sicor's unit sales volume, unit sales price(s), cost of goods sold,
revenues, and gross and net profits associated with such sales; identify each and every document and thing that refers or relates to such unit sales, prices, costs, revenues, each and every customer knowledgeable and profits; identify
or dealer to whom Sicor made such sales; and identify all persons
about such offers for sale and sales by Sicor. NO. 8 in which Sicor first became aware of the '285 patent, the date on which Sicor first became aware of the
INTERROGATORY
Describe in detail the circumstances including without limitation, by identifying
'285 patent; identifying patent; identifying
the individual affiliated with Sicor who first became aware of the '285 from whom or
how Sicor first became aware of the '285 patent; identifying
where Sicor first became aware of the '285 patent; identifying that refers or relates to Sicor's knowledgeable
each and every document or thing identifying all persons
first awareness of the '285 patent; and
about the circumstances NO. 9
of Sicor's first awareness of the '285 patent.
INTERROGATORY
Identify each opinion, written and/or oral and formal or informal, or received regarding validity, infringement, enforceability,
that Sicor has requested to the '285
or liability in relation
patent, including
without limitation, by identifying
whether the opinion was written or oral and begun, completed,
formal or informal; identifying and delivered; (including identifying
the dates on which the opinion was requested, in the formulation
each person involved
and delivery of the opinion of the opinion);
the role each such person
had in the formulation
and delivery
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identifying
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each person who has received, reviewed, or otherwise been informed of the substance identifying each and every document or thing that refers or relates to each
of the opinion;
opinion; and identifying which opinion or opinions, if any, you will rely upon in this case.
MORRIS NICHOLS ARSHT & TUNNELL
z Jack B. Blumenfel4'0¢ 1014) Maryetlen Noreika (#3208) 1201 N. Market Street P.O. Box 1347 Wilmington, DE 19899-1347 (302) 658-9200 Attorneys for Plaintiff OF COUNSEL: Daniel A. Boehnen Joshua R. Rich Lara V. Fleishman MCDONNELL BOEHNEN HULBERT 300 S. Wacker Drive Chicago, IL 60606 (312) 913-0001 November 9, 2004
i
_ ....... "__
& BERGHOFF LLP
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CERTIFICATE
OF SERVICE
I, Maryellen
Noreika, hereby certify that copies of the foregoing
were caused to
be served this 9t_ day of November,
2004 upon the following in the manner indicated:
BY HAND DELIVERY
Steven J. Balick John G. Day Ashby & Geddes 222 Delaware Avenue P.O. Box 1150 Wilmington, DE 19899 BY FEDERAL EXPRESS
Reid L. Ashinoff Brian T. Moriarty William J. Sipio David R. Baum Sonnenschein Nath & Rosenthal LLP 1221 Avenue of the Americas New York, NY 10020
.... Maryellen,._Ioreika