Free Letter - District Court of Delaware - Delaware

Case 1:04-cv—00833-KAJ Document 148 Filed 10/31/2005 Page 1 of 3
Monxrs, N1oHo1.s, Aizsr-rr & TUNNELL
1201 Nomru Mnnxzr STREET
P.O. Box 1347
Wrunxerou, Dsmwnnx 19899-1347
302 658 9200
Mnumn Noam 302 658 3989 Fx;
302 351 sm
302 425 3011 rn October 31, 2005
[email protected]
BY ELECTRONIC FILING
The Honorable Kent A. Jordan
United States District Court
844 King Street
Wilmington, DE 19801
Re: Pharmacia & Upjohn Company LLC v. Sicor, Inc. et al.,
C.A. No. 04-833 QKAJ)
Dear Judge Jordan:
We write in response to Sicor’s October 24, 2005 letter to the Court regarding
Sicor’s decision to waive the attomey-client privilege and the scope of the waiver. We believe
that Sicor has construed the scope of its waiver in an unreasonably narrow marmer — Sicor has
essentially refused to turn over anything other than the opinion letter per se on which it seeks to
rely - and has withheld numerous documents that rightfully fall within the scope of the waiver.
Basically, Sicor has withheld as "work product" every attomey communication to Sicor
management except the exculpatory opinion on which it relies.
During the October 11, 2005 telephone conference with the Court, Sicor sought to
ensure that current and on-going discussions about litigation strategy would not be included in
any waiver of privilege. In that context, the Court ensured Sicor that they would not and
explained its views on the scope of a waiver of privilege:
I do not typically view post-litigation decision making as within
the scope of waiver, so things that are being done now, decisions
that are being done now are not within that scope of waiver. And I
also typically do not view attomey work product as being within
that scope of waiver. If it hasn't been communicated between the
attomey and the client, I typically do not view that as within the
scope of waiver.
* * *

Case 1:04-cv—00833-KAJ Document 148 Filed 10/31/2005 Page 2 of 3
The Honorable Kent A. Jordan
October 31, 2005
Page 2
What I'm telling you is you need to make an election about
whether you want to invoke the privilege. It 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.
Transcript, p. 14-15 (emphasis added).
Pharmacia understood the Court's comments to reflect the views announced in
Rhodia Chimie v. PPG Indus., Inc., 218 F.R.D. 416 (D. Del. 2003), adopting the approach of
Thorn EMI N Am. v. Micron Tech., 837 F. Supp. 616 (D. Del. 1993). Under that approach,
which focuses on the accused infiinger's mindset, opining counsel's work product is protected
from disclosure "if that work product was never commimicated to the client." Rhodia Chimie,
218 F.R.D. at 419 (citing Thorn EMI, 837 F. Supp. at 622). Pharmacia thus expected to receive
all information known to Sicor on the subject matter of the waiver, but not anything in opinion
counsel's files that was not communicated to Sicor.
ln contrast, Sicor took the Court's statement as an invitation to withhold
evegything relating to the validity on the grounds of "attomey work product," even though most
of the withheld information does not reveal outside counsel’s uncommtmicated mental
impressions. Sicor served its initial privilege log on October 14, 2005, three days after the
Cotut's comments. Ex. A. Evey single entgy on Sicork grivilege log was designated as
"attorney work product. " Id
• Some of the documents on the log were part of the flow of
communications between counsel and involve information given to the
client related to the subject matter of the opinion letter (Id., p. 1-7, 13-14,
19, 23, 26, 28-29, 31, 45-60, 71-74);
_ • Some of the documents were attorney bills to the client stemming from
the time ofthe opinion letter (Id, p. 11-12, 61, 73), and
• Some of the documents were items prepared by non-attomeys (Id, p. 1-
10, 15-26, 28, 30-46, 49, 50, 53, 54, 56, 59-60, 62-72).
None of the documents are justifiably withheld in view of Sicor’s decision to assert the opinion
of counsel defense and its obligation to waive subject matter privilege for other docmnents
related to the advice of counsel on which it seeks to rely. The first category is the type of
documents that this Court expressly told Sicor it would have to turn over; the second and third
are categories that do not constitute "attomey work product" under Rule 26(b)(3). Sicor thus
cannot withhold any of the three categories as "attomey work product."
Sicor also attempts to avoid tmning over the "information that was communicated
to the client associated with the opinion" - namely, trying to change the identity of the client.
The February 2001 opinion letter Sicor produced was signed by Jessica Wolff} an attomey then

Case 1:04-cv—00833-KAJ Document 148 Filed 10/31/2005 Page 3 of 3
The Honorable Kent A. Jordan
October 31, 2005
Page 3
with Brobeck, Phleger & Harrison, LLP; her letter was addressed to Wesley Fach, Sicor's Senior
Vice President, Secretary, and General Counsel. See Ex. B, p. ll-l2 (identifying Mr. Fach as
Sicor’s Vice President, Senior Legal Counsel, and Secretary). As shown by numerous entries on
Sicor’s privilege log, the letter was part of an ongoing exchange between Brobeck and Sicor,
primarily between Ms. Wolff and Mr. Fach. Unquestionably in this situation, Mr. Fach should
be included within the client representatives and his personal mindset is an important component
of the accused infringer's mindset. Sicor seeks to avoid discovery of (apparently) harmful
evidence that contradicts Ms. Wolffs opinion by denying that Mr. Fach was Sicor's
representative and, instead, claiming that Marvin Samson was the sole "client."
Sicor's approach - allowing one officer to collect for the company all infomation,
good and bad, and to communicate only favorable information to another, willfully ignorant,
officer solely for pruposes of creating a "reliance" witness — is exactly what is prohibited in a
subject matter waiver of attomey-client privilege. Sicor chose to have Mr. Fach collect and
communicate infonnation regarding its potential infringement of the '285 patent; it carmot allow
him to filter information to act on complete knowledge with regard to that potential infringement
but use another executive as the subsequent witness for purposes of willfulness. Mr. Fach is the
primary communicant representing Sicor. Having chosen to waive protection on the information
communicated to him, Sicor must allow complete discovery of what he knew at the time of
purported reliance, including everything communicated to him by outside cotmsel. Anything
less would allow Sicor to use privilege as both a sword and a shield — a result that has been
universally rejected.
We sought to resolve these issues with Sicor, but Sicor’s counsel has not
responded to our inquiries. Because discovery is quickly drawing to a close and depositions on
willfulness topics must be taken soon, Pharmacia requests the Court to compel Sicor to produce
all information communicated to or known by Sicor (including Wesley Fach) as of September
2002 on issues of invalidity of the '285 patent. Pharmacia is not seeking information from
outside counsel's files that was not communicated to Sicor - the attomey work product to which
this Court referred. Pharmacia is only seeking the information to which it is entitled under
Rhodia Chimie and Thorn EMI.
Respectfully,
/s/ Maryellen Noreika (#3208)
Maryellen Noreika
MN/bls
cc: Peter T. Dalleo, Clerk (By Hand)
John G. Day, Esquire (By Hand)
Reid L. Ashinoff, Esquire (By Fax)
Jordan Sigale, Esquire (By Fax)

Case 1:04-cv-00833-KAJ

Document 148

Filed 10/31/2005

Page 1 of 3

Case 1:04-cv-00833-KAJ

Document 148

Filed 10/31/2005

Page 2 of 3

Case 1:04-cv-00833-KAJ

Document 148

Filed 10/31/2005

Page 3 of 3