Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv—00833-KAJ Document 130 Filed 10/07/2005 Page 1 of 4
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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. at al.,
C.A. No. 04-833 @5}; .
Dear Judge Jordan: l
Sicor’s letter to the Court, served four hours late and two hours alter the close of business,
addresses many issues that have been resolved to the fullest extent possible. Although Pharmacia asked
Sicor to identify the issues it intended to raise with the Court, Sicor would only respond saying
essentially "everything set forth in any of our prior letters to you." Had Sicor been willing to discuss
with Phamiacia the specific issues, it would have learned that:
(i) Even though most of the foreign prosecution history documents that Sicor seeks were not
covered by Sicor’s previous requests Pharmacia has already begun collecting them and will
be producing them as soon as possible;
(ii) Pharmacia has already produced more than 200 pages of its privilege log, expects to produce
several hundred more pages log by the close of business on October 10, and is working hard
to complete the entire log as quickly as possible.
(iii) Pharmacia’s two European expert witnesses can be deposed during the same trip to Europe
that Sicor will be making to depose the Italian witnesses;
(iv) This Court has a long-standing practice that prohibits contention depositions, but Pharmacia
will be providing a witness to testify on non-contention issues; and
(v) No evidence has been “destroyed."
Sicor seems intent on rushing to Court instead of working out issues between counsel.
Moreover, Sicor’s letter distorts events that have occurred in this case. As detailed in Exs. A and B, any
delays in document production and or taking of testimony from the Italian inventors are due to Sic0r’s
lack of diligence. Sicor also misstates what information Pharmacia has already produced in this case as
well as Pharrnacia’s statements about document production.
I&II. Pnsntvrncts Is Pnonucusc PATENT DOCUMENTS AND Puovtmnc Tar: Pnrvrmcs Loc
Sioor argues that Pharmacia has not produced certain "foreign patent prosecution tiles," but the
fact is that Sicor’s prior document requests did not encompass the files in question. Pharmacia produced

Case 1:04-cv—00833-KAJ Document 130 Filed 10/07/2005 Page 2 of 4
The Honorable Kent A. lordan
October 7, 2005
Page 2
what Sicor requested, but not the additional documents that were not covered by Sicor’s requests. Now
that Sicor has specified what additional files it wants, Pharmacia is in the process of collecting and
providing those additional documents.
Sicor originally requested all prosecution files "re1ated to the ‘285 patent," but apparently failed
to recognize that some patents issued to the same inventors and dealing with the same class of
pharmaceuticals are not related to the ‘285 patent. Pharmacia long ago produced the prosecution files
related to the ‘285 patent, but did not produce the other prosecution files which are not related to the
‘285 patent. Nonetheless, Pharmacia stated in a September 29, 2005 letter that it is collecting those files
for production to Sicor. Ex. C. Given that (i) Sicor’s first request for the additional files was made on
September 13, 2005, (ii) the documents are overseas, and (iii) the tiles must be screened for privilege,
Pharmacia was not able to produce the documents immediately.
Sicor similarly demands production of lab notebooks that contain data related to declarations by
Carlo Confalonieri. To the extent such notebooks are in Pharmacia’s possession, custody, or control,
Pharmacia has produced them. For example, Pharmacia has produced and identified all of the data on
which it will rely in relation to Dr. Confalonieri’s declarations. See Ex. D, pp. l2-18. As Pharmacia has
told Sicor, Pharmacia has conducted multiple, diligent, thorough, worldwide searches for additional
notebook materials of the inventors, but can find nothing more than what has already been produced.
The majority of the foreign materials (and foreign litigation documents)1 that Sicor seeks are
public documents that Sicor could obtain on its own. Those that are not public record are mostly
privileged. lndeed, Sicor’s overbroad requests have forced Pharmacia to prepare a privilege log with
almost ten thousand entries, which Pharmacia is working to complete. Because ofthe number of entries
and the different languages involved, that process is cumbersome and laborious. Nevertheless,
Pharmacia has already produced over 200 pages of its privilege log, and expects to produce more by the
close of business on Monday October 10*. Notably, despite complaining to the Court that it has not yet
received Pharmacia’s privilege log, Sicor has not served Pharmacia with Sicor’s own privilege log.
III. Darosrrrous or PHARMACIA’S Exrnnrs AND Mu. Baan Wurrsn
The Italian Commissioner offered two sets of dates for the inventors’ testimony in Milan:
October 24-27 (before the close of discovery) or November 7-l0 (after the close of discovery). Sicor’s
counsel indicated a strong preference for November 7-l0 (see Ex. E), and Pharmacia agreed to those
dates notwithstanding its own preference for the other dates.
Pharmacia’s counsel has offered to provide its European experts (Dr. Arcamone and Dr.
Beijnen) for depositions in Europe the following week, when no other depositions in the case are
scheduled. Dr. Arcamone is an elderly man, and Dr. Eeijnen, an employee of a Dutch government
agency, is not being personally compensated for his time. Rather than put the experts to the difficulty of
transatlantic travel, counsel can depose them during the trip when counsel will already be in Europe for
depositions scheduled by Sicor. Indeed, in a September 30, 2005 telephone conference, Sicor’s counsel
indicated a willingness to adopt this approach.
* Sicor indicates its request as being for "all documents relating to Australian and Canadian
litigation related to the 2285 patent." That is not an accurate recitation ofthe request, or the nature ofthe
litigation.

Case 1:04-cv—00833-KAJ Document 130 Filed 10/07/2005 Page 3 of 4
The Honorable Kent A. Jordan
October "i', 2005
Page 3
Bradley Winter is situated differently. Prior to Pharmacia’s submission of its expert report,
Sicor expressed no interest in deposing Mr. Winter (employed by Pfizer (Perth) Pty Limited). Mr.
Winter was one of eight Pfizer employees whom Pharmacia’s damages expert interviewed in developing
his opinion. To the extent that Pharmacia’s expert relied upon Mr. Winter’s infomation, that
information is set forth fully in the Expert Report and documents produced to Sicor. Only @ .
Pharmacia submitted its damages experfs report — indeed, only @ Pharmacia offered to facilitate Mr.
Winter’s deposition -- did Sicor identify documents and claim that “Mr. Winters [sic] also authored
(contradicting) correspondence to Sicor that reflects Pharmacia’s manufacturing problems .... " These
documents were in Sicor’s files, but had been withheld from discovery up to that point in time. That is,
Sicor’s entire argument about deposing Mr. Winter is based on documents that Sicor improperly
withheld from discovery until Sicor found it convenient to produce.
Pharmacia has no objection to Sicor interrogating Mr. Winter, and has offered to arrange a
telephone deposition of Mr. Winter. But if Sicor wishes to depose Mr. Winter in person, it should pay
for Mr. Winter’s travel to the United States.2 In addition, Sicor should be required immediately to
produce all documents that pertain to Mr. Winter’s testimony andfor Sicor’s communications with
Pharmacia (all of which are undeniably covered by Pharmacia’s prior document requests).
IV. CONTENTLON BEPGSITEGNS ARE KMPROPER `
1 ‘ Categories l—7, 9 and li of Sicor’s September 12 Notice of Deposition ask for "all facts
concerning Pharmacia’s allegation[s]" on various subjects in the Complaint. Notwithstanding Sicor’s
protestations that these topics seek "facts,” these topics clearly are asking for contentions. Indeed, they
read like typical contention interrogatories.
Contention depositions of the sort sought by Sicor have been prohibited by this Court and
others. Seagate Tech. LLC v. Cornice, Inc., C.A. No. 04-418 at 37-38 (SLR) (lurne 28, 2005) (“I don’t
do contention depositions?) (Ex. F); Elf Atochem v. Libbey—Owens-Ford Co., C.A. No. 94-670 (RRM)
(Feb. 24, 1995 and March 16, l995) (Ex. G); Tiegel Mfg. Co. v. Globe-Union, Inc., C.A. No. 84-483-
WKS (D. Del. Oct. 5, 1984) ("it has been the consistent practice to require that contention discovery
. .. [be] confine[d] to interrogatories to a party, period.") (Ex. H).
V. Punmvtacm Has Nor Dssrnovnn Evrnaiscs
In a charge never before raised, Sicor claims that Pharmacia "probably destroyed" a "complete
and final copy" of Pharmacia’s "Global Oncology Strat Plan 2003·2005." These allegations are
baseless; sworn testimony proves them to be untrue. Pharmacia’s finance manager testified that it is
unlikely that document was ever created (30(b)(6) Dep. (Howard Meyer), p. 119). There is no contrary
testimony regarding that document; everything else is the result of Sicor’s active imagination.
Similarly, the "Idamycin PFS Zavedos Lifecycle Management Plan," dating from the same period as the
strategic plan, likely never existed in more than draft form. Pharmacia has searched for and been unable
to locate any newer or final version. Sicor’s allegation that Pharmacia “informally advised Sicor" that
these documents "were probably destroyed” is inaccurate —— Pharrnacia’s own investigation and sworn
testimony indicates that such “tinal” documents most likely never existed.
i Sicor’ s demand that witness be produced here is even more remarkable when viewed in contrast
to its own actions. Sicor previously refused to produce its 30(b)(6) witnesses in Delaware, despite this
Court’s scheduling order requiring it. Instead, Sicor demanded that Pharmacia take a depositions of its
corporate witness in California.

Case 1:04-cv—00833-KAJ Document 130 Filed 10/07/2005 Page 4 of 4
The Honorable Kent A. Jordan
October 7, 2005
Page 4
Respectfully, _
aryel Noreika
if all A
MNflals
cc: Peter T. Dalleo, Clerk (By Hand)
Steven J. Balick, Esquire (By Hand)
Reid L. Ashinofi Esquire (By Email)
J orclan A. Sigale, Esquire (By Email)
David R. Baum, Esquire (By Email)
Daniel A. Boehnen, Esquire (By Email)

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