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Case 1 :04-cv—00833-KAJ Document 243 Filed 06/19/2006 Page 1 of 3
Ast-1BY & GEDDES "
ATTORNEYS AND COUNSELLORS AT LAW TELEPHQNE
zzz DELAWARE AVENUE °°z`°°°`°°°°
P. <>. Box M50 30;§;iT;—(§67
WILMINGTON, DELAWARE 19899
June 12, 2006
i VIA ELECTRONIC FILH\IG
The Honorable Kent A. Jordan REDACTED PUBLIC
United States District Court VERSION
844 King Street
Wilmington, DE 19801
Re: Pharmacia & Upjolm Co. LLC v. Sicor, Inc., etal.,
C.A. 04-833-KAJ
Dear Judge J ordan:
For the reasons set forth below, Sicor respectfully submits that it has a compelling
evidentiary need and legal right to take the depositions of patent prosecuting attorneys Daniel
Boehnen and Emily Maio.
Sicor has now deposed, in Italy, five of the six inventors of the patent-in-suit (the '285
patent). However, Sicor has been unable to depose one of the two principal inventors, Dr. Carlo
Confalonieri, who provided the vast majority of the declarations submitted by Pharmacia to the
PTO during its eight—year prosecution of the ‘285 patent, and numerous sworn declarations to
foreign patent offices to try to obtain patents related to the '285 patent. In fact, the other inventors
have now testified that they delegated all responsibility for the worldwide prosecution of this family
of injectable, RTU anthracycline glycoside anti-cancer dmgs to Dr. Confalonieri. Dr. Confalonieri
worked with Pharmacia's various patent attorneys (including Daniel Boehnen) in different countries
and with two individuals in Pharmacia's Milan "patent off1ce" whose identities were not disclosed
in Pharmacia’s Initial Disclosures to Sicor in this case. However, the Italian Referee appointed at
this Court's behest was advised, only a few weeks ago, that Dr. Confalonieii was too ill to sit for
any deposition in this case.
Through discovery and its own efforts over the past year, Sicor now has documentary and
testimonial evidence showing that: (1) several of the Confalonieri declarations submitted by
prosecuting attorney Daniel Boehnen and others to the PTO contained false information; (2) Dr.
Confalonieri submitted swom declarations to the Danish and Norwegian patent offices for related
patent applications which (i) materially contradicted contemporaneous statements made by
prosecuting attorney Daniel Boelmen to the PTO, and (ii) were not themselves submitted to the
PTO; (3) prosecuting attomey Daniel Boehnen made misleading statements about the prior art (e. g.,
the Janssen reference, for one) related to the '285 patent; and (4) prosecuting attorney Daniel
Boehnen apparently supervised the dumping of hundreds of references on the PTO, years late and
only after the Examiner indicated an intention to grant the patent, while continuing to withhold from

Case 1 :04-cv—00833-KAJ Document 243 Filed 06/19/2006 Page 2 of 3
The Honorable Kent A. Jordan
June 12, 2006
Page 2
the PTO unfavorable Australian expert reports in Pharmacia's possession that explained the
relevance of these belatedly filed references.
Mr. Boehnen, who took over the prosecution of the '285 patent years before it issued, has
unique and significant knowledge bearing on Sicor’s inequitable conduct and invalidity defenses --
particularly given Dr. Confalonieri's unavailability to testify. Moreover, his colleague at
McDonnell Boehnen Hulbert & Berghoff LLP ("MBHB"), attorney Emily Miao, also submitted
documents to and had at least one personal interview with the PTO relating to the '285 patent. Ms.
Miao appears to have been responsible for the belated submission to the PTO of the prior art from
the Australian patent litigation between Pharmacia and Upjohn’s Australian subsidiary, Delta West.
(Exh. A; see also {Hi 24-41, 54-59 of Sicor’s Second Amended Counterclaim). Thus, Ms. Miao also
has unique evidence to offer of her knowledge, her actions, and intentions as well.
Significantly, Pharmacia, in its Second Amended Initial Disclosures in this case, identified
Ms Miao as a "person [that] may have information regarding the prosecution of the '285 patent," but
failed to so identify Mr. Boehnen, its chosen trial counsel, even though Mr. Boel1nen's dealings with
the PTO in this patent prosecution appear to have been even more extensive and significant. (Exh.
B at 3). In fact, Pharmacia now relies on Mr. Boehnen's own direct statements to the PTO, which
statements Sicor believes it can show were contradicted by Pharmacia's own data and other
references, at various points in its Claim Construction arguments (see Exhs. 22 and 27 to
Pharmacia's Claim Construction Brief DI no. 232 at Exh. 22: p. 10; Exh. 27: p.4)
Legal Analysis: The general rule is that an attorney involved in the prosecution of a patent can be
deposed. Resqnetcom, Inc. v. Lansa, Inc., No. 01 Civ. 3578 (RWS), 2004 WL 1627170, at *1
(S.D.N.Y. July 21, 2004) (Exh. C); Amicus Communications L.P. v. Hewlett—Packara' Co., No. 99-
0284 HHK/DAR, 1999 WL 33117227, at *2 (D.D.C. Dec. 3, 1999) (Exh. D). Moreover, "[a] patent
prosecution attomey cannot avoid being deposed simply because he is later selected to act as trial
counsel in an infringement action concerning the very patent he helped to prosecute." Alcon Labs,
Inc. v. Pharmacia Corp., 225 F. Supp. 2d 340, 344 (S.D.N.Y. 2002).
In a leading case, Shelton v. Am. Motors Corp., the court ruled that an attorney involved in
litigation may be deposed if the party requesting the deposition "has shown that (1) no other means
exist to obtain the information than to depose opposing counsel; (2) the information sought is
relevant and non-privileged; and (3) the information is crucial to the preparation of the case." 805
F .2d 1323, 1327 (Sth Cir. 1987) (internal citation omitted); see Allergan Inc. v. Pharmacia Corp.,
C.A. No. 01-141-SLR, 2002 WL 1268047, at *1 (D. Del. May 17, 2002) (following Shelton) (Exh.
E).
The Shelton standards are met easily here. First, all of the available inventors have made it
clear that they had no involvement with the prosecution of the ‘285 patent before the P'l`O.l
Correspondence produced by Phannacia just prior to last week’s depositions in Italy, ftnrther
solidified Sicor’s belief that Mr. Boehnen has significant knowledge about the prosecution.
(Exh.G). Further, Ms. Miao is the only person Sicor can depose who has knowledge ofthe August
I Dr. Gaetano Gatti testified in Milan, Italy last week that he had delegated all responsibility for the
prosecution of the doxorubicin RTU patents worldwide to Dr. Confalonieri and two individuals in
Pharmacia’s Milan "patent office," neither of whom appear on Phannacia’s Initial Disclosures. (Exh. F)

Case 1 :04-cv—00833-KAJ Document 243 Filed 06/19/2006 Page 3 of 3
The Honorable Kent A. Jordan
June 12, 2006
Page 3
1996 interview she conducted with the PTO. See Hay & Forage Indus. v. Ford New Holland, Inc.,
132 F.R.D. 687, 690 (D. Kan. 1990) ("meetings with the patent examiner are relevant to the defense
of inequitable conduct"). Similarly, Mr. Boehnen’s knowledge when he submitted false statements
to the PTO is personal to him and cannot be readily obtained from other sources. In addition, Mr.
Boelmen and Ms. Miao (and perhaps Jeremy Noe, another MBHB lawyer), are the only persons
who know why Pharmacia and its attorneys waited until alter they felt Pharmacia’s patent rights
were secure before they dumped hundreds of references on the PTO, and even then held back the
expert witness reports from the Australian litigation that explained the relevance of those belatedly
tiled references. See Environ Prods. Inc. v. Total Containment Inc., 41 U.S.P.Q.2d 1302 (E.D. Pa.
1995) ("the lawyer must be allowed to be deposed because he or she is the only one with knowledge
of the prosecution of the patent"). Thus, Mr. Boehnen and Ms. Miao are the only persons with
certain knowledge about what transpired with the PTO.
Second, there is no question that the information, and the admissions made by Mr. Boehnen,
are relevant not only to the issue of patent invalidity, but also to the current inequitable conduct
charge. See Environ Prods. Inc., 41 U.S.P.Q.2d at 1302 (“affim1ative defense of inequitable
conduct makes [the prosecuting attomey’s] mental impressions during the reexamination
proceedings an issue in this litigation"). Moreover, the infomation Sicor seeks relates to the
proceedings before the PTO, which is not privileged. See aaiPharma, Inc. v. Kremers Urban
Development Co., 361 F. Supp. 2d 770, 776 (N.D. Ill. 2005) ("the discovery sought by aai is likely
to lead to the discovery of admissible evidence regarding . . . whether MBHB may have violated
any duty of candor that applied to any of aai’s attomeys or agents.").
Third, the information sought is crucial to Sicor’s defenses. Among other things, if any of
the attomeys knowingly submitted false information to the PTO or otherwise acted with a lack of
candor to the PTO, then the ‘285 patent would be unenforceable. Likewise, Mr. Boelmen’s
statements to the PTO mischaracterizing the prior art may prove to be important admissions for
Sicor’s obviousness defense.
In conclusion, Sicor respectfully submits that it should be allowed to depose Mr. Boehnen
and Ms. Miao.
Respectfully,
/s/ John G. Day
1 John G. Day
JGD: nml
Attachments
cc: Clerk of the Court (via electronic mail; w/attachments)
Maryellen Noreika, Esquire (via electronic mail; w/attachments)
Reid L. Ashinoff, Esquire (via electronic mail; w/attachments)
Daniel A. Boehnen, Esquire (via electronic mail; w/attachments)