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A` Case 1:04-cv—00833-KAJW Document 190-7 Filed 01/16/2006 Page 1 014 .

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Asn-IBY 8. GEDDES
ATTORNEYS AND COUNSELLORS AT LAW TEL-EPH¤NE
302-654-IBB!
222 DELAWARE AVENUE
FACSIMILE
P. O. BOX ||5O acz-e¤4-zoev
WILMINGTQN, DELAWARE 19899
October 24, 2005
The Honorable Kent A. Jordan VIA ELECTRONIC FILING
United States District Court
844 King Street
Wilmington, DE 19801
Re: Pharmacia & Upjohn Company v. Sicor Inc. and Sicor Pharmaceuticals Inc.
C.A. No. 04-833-KAJ
Dear Judge Jordan:
We, along with Sormenschein Nath & Rosenthal LLP, represent defendants Sicor Inc.
and Sicor Pharmaceuticals, Inc. (collectively, "Sicor") in the above-referenced patent dispute. In
accordance with Your Honor’s instruction during the October 11, 2005 telephonic hearing (the
"October 11 Hearing"), we write to advise the Court that Sicor has decided to assert an advice of
counsel defense to Pharmacia & Upj olm LLC’s willful infringement allegation. Having made
that decision, Sicor recognizes that it must waive the attomey-client privilege with respect to the
legal opinion upon which it relied in deciding to launch its idambicin hydrochloride injection in
the Summer of 2002. Thus, Sicor will produce to Pharmacia today the February 28, 2001
opinion of the Brobeck Phleger & Harrison firm and the supporting declaration of Dr. Waldemar
Priebe, which was obtained by the Brobeck firm during its opinion work, and the other exhibits
attached thereto (collectively, the "Brobeck Opinion"). The Brobeck Opinion states that “we
have reached the firm conclusion that all of the claims of the ‘285 patent are invalid."
Sicor understands the scope of its privilege waiver to be limited to the actual advice
provided to its CEO at the time, Mr. Marvin Samson, and considered by Mr. Samson in making
the product launch decision in the Stunmer of 2002. Mr. Samson became the CEO of Sicor in
September 2001. Mr. Samson is prepared to testify at deposition and at trial that in deciding to
launch the idarubicin hydrochloride injection in 2002, the only information he recalls receiving
or reviewing with respect to patent issues were: (1) conversations with Sicor’s general counsel,
Mr. Wesley N. Fach, sometime in 2002 prior to the September 2002 product launch, to the effect
that the company had received an invalidity opinion from outside counsel; and (2) portions of the
Brobeck Opinion itself.
During the October 11 Hearing, the Court stated that the privilege waiver would extend
only to commtmications with the decision maker with respect to the patent at issue:
I also typically do not view attorney work product as being within
that scope of waiver.

Case 1 :04-cv—00833-KAJ Document 190-7 Filed 01/16/2006 Page 3 of 4
Honorable Kent A. Jordan
October 24, 2005
Page 2
* >l= >l=
1’m not telling you that everything you sent over to me is going to
the other side. What I’m telling you is you need to make an
election about whether you want to invoke the [advice of counsel
defense]. If you do, you are going to have to give up information
that was communicated to the client associated with the opinion
that you want to rely on.
(Ex. A: October 11 Hearing Transcript at 14:7 — 15:2) (emphasis added).
Both Mr. Samson and Mr. Fach, Sicor’s general counsel, are prepared to testify that no
privileged documents other than the Brobeck Opinion itself were presented to or reviewed by
Mr. Samson in connection with the 2002 launch decision. The three documents that were
attached as Exhibits A through C to Sicor’s in camera submission (Bates Nos. SICOR-PNU
026342-43, 026347 and 029305-07) — which were dated between August 2000 and March 2001
— were created well before Mr. Samson became Sicor’s CEO, and well over a year before Mr.
Samson made the product launch decision. They are thus irrelevant- the decision maker did not
read or rely on them in making his launch decision. For that reason alone, they should not have
to be produced by Sicor. In addition, this Court has recognized that those documents "raise[]
some significant issues in terms of potential prejudice .... " (Ex. A at 8:16-18). This too
militates against their disclosure.
Moreover, the documents constitute attorney work product- they set forth the mental
impressions of Mr. Fach with respect to anticipated litigation. Indeed, by the time Mr. F ach
prepared these documents, Pharmacia had already threatened to commence litigation if Sicor
launched its idarubicin hydrochloride injection. This is classic work product that, as this Court
observed during the October ll Hearing, is not within the scope of Sicor’s waiver of the
attorney-client privilege based upon its assertion of an advice of counsel defense. The
documents thus should not be produced for this reason as well.
The potential prejudice resulting from the waiver of privilege and the presentation to both
plaintiffs counsel and the jury of the documents attached as Exhibits A through C to Sicor’s in
camera submission formed the primary basis for Sicor’s bifurcation motion. For the reasons set
forth in Sicor’s in camera submission and herein, Sicor believes that these documents should not
be produced to plaintiff s counsel, as their prejudicial effect far outweighs their probative value.
To the extent this Court believes it appropriate for Sicor to make a formal record of the matters
set forth in this letter, Sicor is prepared to do so. Mr. Samson and Mr. F ach are prepared to sit
for deposition, and Mr. Sarnson’s deposition has already been scheduled with plaintiffs counsel.

Case 1 :04-cv—00833-KAJ Document 190-7 Filed 01/16/2006 Page 4 of 4
Honorable Kent A. Jordan
October 24, 2005
Page 3
We appreciate the time and attention that the Court has devoted to this issue.
Respectfully,
/s/ Steven J Balick
Steven J. Balick
SJ B/dmf
cc: Maryellen Noreika, Esquire (by hand)
Daniel A. Boehnen, Esquire (via electror1ic mail)
Reid L. Ashinofii Esquire (via electronic mail)

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