Free Letter - District Court of Delaware - Delaware

Case 1:04-cv—00833-KAJ Document 239 Filed 06/12/2006 Page 1 of 4
MORRIS, NICHOLS, ARSHT & TUNNELL LLP
1201 N 0RT1—1 MARKET STREET
P.O. Box 1347
WILMINGTON, DELAWARE 19899-1347
302 658 9200
302 658 3989 FAX
June 12, 2006
The Honorable Kent A. Jordan BY ELECTRONIC FILING
United States District Court
844 King Street
Wilmington, DE 19801
Re: Pharmacia & Ugiohn Company LLC v. Sicor, Inc. et al.C.A. No. 04-833 {KA] )
Dear Judge Jordan:
Sicor continues to seek the depositions of Daniel Boehnen and Emily Miao, despite
depositions of the inventors of the subject matter of the ‘285 patent and prior prosecuting
attorney showing that they have no information relevant to Sicor’s affirmative defenses and
counterclaims. Furthermore, Sicor chose to forego means of obtaining more relevant evidence
from other sources. In short, Sicor cannot satisfy any of the three prongs of the Shelton test and
the protective order against the depositions of Mr. Boehnen and Dr. Miao should not be lifted.
See Shelton v. American Motors Corp., 805 F.2d 1323, 1327 (8th Cir. 1987) (depositions of
opposing counsel should be permitted only when the requesting party has shown that: (1) there is
no other means to obtain the information other than by deposition of opposing counsel; (2) the
information sought is relevant and non-privileged; and (3) the information is crucial for the
requesting party’s case).
Sicor has taken the depositions of Richard Kelly, the attomey of record for most of the
prosecution of the ‘285 patent, and inventors Roberto De Ponti and Luciano Gambini. It has also
taken testimony from inventors Giuseppe Bottoni, Gaetano Gatti, and Diego Oldani. It was
unable to take testimony from inventor Carlo Confalonieri, but Dr. Confalonieri’s unavailability
arose out of Sicor’s own delay.]
Mr. Boehnen and Dr. Miao Do Not Have Crucial Information
Sicor seeks to have the Court lift its Protective Order because it accuses Mr. Boehnen and
Dr. Miao of inequitable conduct. There simply is no basis for Sicor’s allegations against
Mr. Boehnen and Dr. Miao, as they were not the individuals involved in the actions purported to
underlie the alleged inequitable conduct:
I It appears that Dr. Confalonieri was fit to testify up until mere weeks before Sicor obtained involuntary
inventor testimony. Had Sicor not delayed seeking that testimony for ten months after the filing of this
action (and six months after telling the Court it needed it), it would have obtained Dr. Confalonieri’s
testimony. Pharmacia was available at all times for Dr. Confalonieri’s testimony to be taken.

Case 1:04-cv—00833-KAJ Document 239 Filed 06/12/2006 Page 2 of 4
The Honorable Kent A. Jordan
June 12, 2006, Page 2
• Sicor alleges that Mr. Boehnen somehow committed inequitable conduct in
relation to declarations by Dr. Carlo Confalonieri, Notably, in its pleadings and interrogatory
answers, Sicor has identified only one declaration — submitted twice — that it has argued forms
the basis of an inequitable conduct charge.2 Ex. 1, 1111 23, 43-44; Ex. 2, p. 10-12. But Mr.
Boehnen was not involved in the grosecution of the ‘285 gatent at the time that the declaration
was drafted and filed, nor did he make any argument based on it. Mr. Kelly was the attorney
who had been involved in prosecution at the time of the submission of the declarations and made
arguments based on them, and was scarcely questioned about them. For the convenience of the
Examiner, Mr. Boehnen merely resubmitted all of the declarations in the case, but did not make
arguments based upon those declarations. Ex. 3. Furthermore, even in Sicor’s "kitchen sir1k"
approach to claims of inequitable conduct, Sicor accused only Dr. Confalonieri and Mr. Kelly of
misconduct related to Dr. Confa1onieri’s declarations. Ex. 2, p. 10-12.
• Sicor alleges that Dr. Confalonieri submitted declarations to the Danish and
Norwegian patent offices that conflict with purported arguments made by Mr. Boehnen. Sicor’s
allegation is remarkable because Sicor has never raised it before, and has never identified any
arguments with which foreign declarations congicted. Sicor accused Dr. Confalonieri of intent
related to inequitable conduct in relation to a Swedish declaration, but has never raised either a
Danish or Norwegian declaration before. Ex. 1, il 45; Ex. 2, p. 10-11. But there is simply no
basis to suggest that Mr. Boehnen had anything to do with foreign declarations, and no allegation
that he made any misstatement related to any such declarations.
• Sicor alleges that Mr. Boelmen "made misleading statements about the prior art."
Again, although Sicor has had the grosecution history of the ‘285 gatent for years, it has
never gled such an inequitable conduct charge. Sicor’s allegation is apparently nothing more
than a stalking horse for the depositions of Mr. Boehnen and Dr. Miao — Sicor has never
identified the allegations with specificity (as required), and only indicated in response to an
interrogatory that "the depositions of the named inventors and U.S. prosecuting attorneys
Mr. Boehnen and Ms. Miao will shed light on its issue." Ex. 2, p. 17.
• Sicor alleges that Mr. Boelmen "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 the PTO unfavorable Australian expert reports in
Pharmacia’s possession that explained the relevance of these belatedly filed references." First,
Pharmacia earlier established that "dumping" is not a basis for a charge of inequitable conduct.
See D.l. 65. Second, it was Jeremy Noe, not Mr. Boehnen or Dr. Miao, who submitted the
information disclosure statement that underlies Sicor’s charge. Ex. 4. Third, Sicor has never
before sought to link its "dumging” charge against Mr. Boehnen and Dr. Miao to Australian
exgert regorts (and never accused Mr. Boehnen of inequitable conduct in relation to any
2 Sicor’s inequitable conduct arguments are based on a 1991 declaration by Dr. Confalonieri, which was
resubmitted in 1992. Ex. 1, {lil 23, 43-44; Ex. 2, p. 10-12. Both times, it was submitted by Mr. Kelly.
Ex. 2, p. 11-12.

Case 1:04-cv—00833-KAJ Document 239 Filed 06/12/2006 Page 3 of 4
The Honorable Kent A. Jordan
June 12, 2006, Page 3
Australian groceedings) because there is nothing in the record to suggest that Mr. Boehnen
knew o[ those regorts during the grosecution ot the ‘285 gatent. He has no recollection of even
knowing of their existence.
• Sicor alleges that Dr. 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." Sicor has never betore attemgted to link its
"dumging" charge to the Australian litigation. Furthermore, Dr. Miao has no recollection of
even knowing of the Australian litigation. Thus, Sicor’s backdoor attempt to link the two must
fail, and the same facts that doom its "dumping" allegations against Mr. Boehnen apply to the
allegations against Dr. Miao.
• Finally, Sicor attempts to argue that Mr. Boehnen’s testimony would be relevant
because documents he signed during the prosecution give rise to claim construction arguments.
However, a prosecuting attorney’s deposition testimony is irrelevant to claim construction; it is
only the objective written record of the patent and prosecution history (read by one of skill in the
art), not an attomey’s subjective views, that are relevant to claim construction. Bell & Howell
Document Mgmt. Prods. Co. v. Altek Sys., 132 F.3d 701, 706 (Fed. Cir. 1997) (quoting Markman
v. Westview Instruments, Inc., 52 F.3d 967, 983 (Fed. Cir. 1995) (in banc), aj"d, 517 U.S. 370
(1996)) (“the testimony of an attorney ‘amounts to no more than legal opinion-—it is precisely the
process of construction that the court must undertake."’). Thus, Mr. Boehnen’s testimony
regarding claim construction would have no relevance.
Mr. Boelmen and Dr. Miao’s Information Is Privileged
In addition to the fact that none of the topics of Sicor’s desired inquiry would be proper,
it is clear that Mr. Boehnen and Dr. Miao would be deposed primarily for Sicor to obtain
privileged infonnation. For example, Sicor points out that Mr. Boehnen and Dr. Miao may know
why Pharmacia acted when it did, but that information could only have been developed through
discussions between the attorneys and their clients. Similarly, Mr. Boehnen and Dr. Miao
developed their understanding of references and approach to prosecution through discussions
with the client. There is no question that such discussions are protected by the attorney—client
privilege — and in some cases, work product doctrine — and generally not discoverable.
Sicor Could Have Gotten Information Elsewhere
Although discovery in this case was open for almost two years, Sicor never made most of
the inequitable conduct arguments raised for the first time in its letter. It also did not seek to
depose other prosecuting counsel, served no interrogatories related to the information it seeks
from Mr. Boehnen and Dr. Miao, and never requested Pharmacia’s contentions on inequitable
conduct. That is a far cry from being able to show "no other means exist to obtain the
information." Shelton, 805 F.2d at 1327.
In conclusion, there is no reason for the Court to lift its Protective Order. Sicor has
shown none of the Shelton factors, and has resorted to vague, unpled allegations in a desperate
attempt to abuse opposing counsel. This Court should not condone such conduct.

Case 1:04-cv—00833-KAJ Document 239 Filed 06/12/2006 Page 4 of 4
The Honorable Kent A. Jordan
June 12, 2006, Page 4
Respectfully,
/s/ James W Parrett, Jr.
James W. Panett, Jr.
JWP
Enclosures
cc: Dr. Peter T. Dalleo, Clerk (By Hand - w/encls.)
Steven J. Balick, Esquire (By E-Filing and By Hand - w/encls.)
Reid L. Ashinoff, Esquire (By Fax - w/encls.)
Jordan Sigale, Esquire (By Fax - w/encls.)
Daniel A. Boehnen, Esquire (By Fax - w/encls.)