Free Letter - District Court of Delaware - Delaware

Case 1:04-cv—OO833-KAJ Document 199 Filed O3/08/2006 Page 1 of 3
Mounts, N1o12roLs, Aizsrrr & TUNNELL LLP
l20l Nomar: MARKET Srrmrnr
P.O. Box 134:7
Wirmrnoron, DELAWARE 19399-l3¢§7
302 658 9200
302 653 3989 Fax
MARYELLEN NOREIKA
302 251 szrs March 8, 2006
sc}2 425 3011F.-ur
1'!11'1OI`€i]sT.R(@,)3'.\'1I3.£·l€.(1OI¥}
BY ELECTRONIC FILING
The Honorabie Kent A. Jordan
United States District Court
844 King Street
Wilmington, DE l980l
Re: Pharmacia & Upjohn Company LLC v. Sicor, inc. et nl.,
C.A. No. 04-833 gKAJ)
Dear Judge fordanz
Sicor has moved to compel Pharmacia "to produce documents concerning oncology drug
licenses entered into by Pharmacia? Pharmacia has already produced the documents within the
scope of Sicor’s prior document requests, as welt as other arguably relevant documents. Searching
for additional documents requested by Sicor’s current motion would by unduly burdensome and
lead only to the production of unrequested, irrelevant documents. Sicor’s motion should be denied.
FACTUAL BACKGROUND
Pharmacia is accusing Sicor of infringing U.S. Patent No. 6,107,285 ("the ‘285 patent")
through its marketing of a ready—to—use solutions of idarubicin hydrochloride. tdarubicin is a
member of the anthracycline glycoside family of pharmaceuticals. The ‘285 patent covers the
storage·~stabl.e solution of idarubicin hydrochloride as well as two other members of the
anthracycline glycoside family, epirubicin hydrochioride and doxorubicin hydrochloride. For that
reason, discovery has been focused on anthracycline glycosides.
Sicor’s Rule 34 document request for the production of licenses specified that the request
was limited to those covering anthracycline giycosides:
E3. All documents that constitute, mention or refer to any consideration,
negotiation, license, execution, covenant not to sue, settlement of litigation or legal claim
or other agreement concerning any invention or subject matter disclosed, described or
claimed in the ‘285 Patent or any of the Related Patents, including all licenses to
manufacture, distribute or resell Idarubicin or any of the other Anthracycline Glycosides
to any third party including Bedford Laboratories, lnc., Abbott Laboratories, American
Pharmaceutical Partners, lnc. or any of their corporate affiliates, and including any
royaities received or due under any such license or other agreement.

Case 1 :04-cv—OO833-KAJ Document 199 Filed O3/08/2006 Page 2 of 3
The Honorable Kent A. Jordan
March 8, 2006
Page 2
Ex. A, p. ll. To the extent that requests for production were not phrased in terms of anthracyciine
glycosides, many (such as Request Nos. 26 and 29, identitled in Sicor’s letter to the Court) were
phrased in terms ofthe ‘285 patent:
26. All documents that mention, refer or evidence to or evidence the royalty rate or
rates that would constitute a "reasonable royalty" under 35 U.S.C. § 284, assuming that
an infringement of the ‘285 Patent is found in this case.
29. All documents that evidence, discuss, analyze or refer to the amount `PNU
would have been willing to accept at any time for a license to practice the ‘285 Patent.
Io'., p. l9—2l. No document request specifically asked for the production of licenses beyond those
for anthracycline glycosidesl Accordingly, Pharmacia produced all such license agreements,
including licenses related to doxorubicin hydrochloride, as well as other agreements relating to
Sicor and those identified by John McBride during his testimony.
Subsequent to Pharmacia’s document production, Sicor sought to expand the scope of
Request No. 26 to cover other oncology products; however, that expansion did not relate to license
agreements. Compare Sicor Ex. 2 to Exs. B, C attached. Instead, as detailed in letters from Sicor’s
counsel and Pharmacia’s counsel in September 2005, the expanded scope related ggly to oncology
sales documents such as monthly reports, sales representative materials, and strategic plans. Exs. B,
C. At no time prior to February 2006 did Sicor suggest that it had requested, or desired, licenses
relating to any products other than anthracycline glycosides.
On February 16, 2006, Sicor took the deposition of a torincr Pharmacia employee, John
McBride. Mr. McBride identified two license agreements that Pharmacia entered into during his
tenure of glohal head of oncology licensing between 1999 and 2003: one relating to doxorubicin
(which had been produced long before) and a second involved a "very unusual deal" regarding to an
unrelated oncology drug. Ex. lf), p. 114-15. That testimony, taken months after Sicor’s document
requests and the submission of expert reports, led Sicor’s counsel to demand, for the first time,
production of all oncology licenses. Ex. E.
Sicor contends that it took Mr. McBride’s deposition when it was “[u]nable to obtain
testimony from any Pharmacia witness concerning its licensing practices? Not so. Sicor served a
subpoena upon Mr. McBride on October 25, 2005, before it deposed Peter Laivins; Sicor had
identified Mr. McBride as a potential witness (re: laches and estoppel) in its Rule 26 initial
disclosures. Exs. F, G. ln short, Mr. l\/lcBride’s testimony regarding an additional license -- which
Pharmacia produced in an attempt to avoid Sicor’s rush to Court ~— was merely fortuitous; he was
gg__o,g sought or presented as a witness in relation to reasonable royalty issues.
I In its Third Set of Requests for Production, Sicor requested documents "c-one-erning any and all patents or oncology
products sold, licensed, or offered for sale or license at any time by Pharmacia to Sicor . . ." Ex. li, p. 2. Assuming that
request extended to licenses, it would not be relevant to Sicor’s motion, which seeks licenses with other companies.

Case 1 :04-cv—OO833-KAJ Document 199 Filed O3/08/2006 Page 3 of 3
The Honorable Kent A. Jordan
March 8, 2006
Page 3
ARGUMENT
Sicor’s motion should be denied: first, Sicor never served a request for production of
documents that included licenses unrelated to anthracyciine glycosides; second, even if it had, such
licenses fall outside the scope of relevance established by Rule 26; and, third, the search for
documents responsive to such a request would be inordinately burdensome.
As discussed above, Sicor’s document requests do not encompass licenses for products other
than anthracycline glycosides. The request directed to licenses is limited to anthracycline
glycosides; the other requests Sicor cites are tied to the ‘285 patent (which relates to anthracycline
glycosides). Until mid-February 2006, Sicor did not suggest that it wanted such licenses, and
neither party’s expert suggested that such licenses would be relevant to the determination of a
reasonable royalty. Pharmacia does not intend to rely upon any licenses not produced in this case.
Sicor’s motion should be denied because it is not based on any cognizahle discovery request.
Furthermore, Pharmacia has already produced all licenses that would be relevant to a
determination of a reasonable royalty, the only issue raised by Sicor. The determination of a
“‘reasonable royalty" focuses on the period shortly before the infringement began. See, e. g., Integra
Lrfe Sciences L Ltd. v. Merck KGaA, 33l F.3d 860, 870 (Fed. Cir. 2003), vacated and remanded on
other grounds, l25 S.Ct. 2372, l62 L.Ed.2d 160 (2005). Pharmacia produced the relevant licenses
it entered into between l999 and 2003, around the period when Sicor’s infringement began. No
other time period would he relevant to the determination of a reasonable royalty, meaning that the
additional documents that Sicor’s motion requests are not likely to lead to the discovery of
admissible evidence. They are therefore outside the scope of proper discovery. See Rule 26(b)( l).
Finally, because Sicor has not sought to limit its request in any way, it would be extremely
burdensome for Pharmacia even to determine whether additional documents exist. Sicor does not
limit its request temporally or geographically. That is, Sicor seeks any license agreement, from any
date, in any country, pertaining to any oncology product. “Oncology products" themselves consist
of unrelated drugs with different chemistry, different markets, and different profitability. According
to the definitions set forth in Sicor’s First Request for Production, the motion might even stretch to
licenses entered into by Pfizer (Pharmacia’s parent), rather than Pharmacia itself Pfizer is
composed of more than 700 different companies worldwide, which would make a search for
licenses incredibly onerous. Moreover, most such agreements have confidentiality provisions and
are considered to be confidential by third parties, including Sicor’s competitors, located in various
places in the world. ln short, it would take a monumental effort to search for the licenses within the
scope of Sicor’s motion, all for documents that are completely irrelevant to these proceedings.
Allowing such discovery is inappropriate under the Federal Rules, particularly at this late stage of
proceeding. Fed. R. Civ. P. 26(b)(2)(iii).
Respec/tfully, .
, .»=‘ .{m,€h:;-u,,r,,,;/F --»’l—-c.
»l\/1%/ellen Qllorerka
cc: Peter T. Dalleo, Clerk (By Hand)
John G. Day, Esquire (By Hand)

Case 1:04-cv-00833-KAJ

Document 199

Filed 03/08/2006

Page 1 of 3

Case 1:04-cv-00833-KAJ

Document 199

Filed 03/08/2006

Page 2 of 3

Case 1:04-cv-00833-KAJ

Document 199

Filed 03/08/2006

Page 3 of 3