Free Opening Brief in Support - District Court of Delaware - Delaware

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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