Free Redacted Document - District Court of Delaware - Delaware

Case 1:04-cv—00833-KAJ Document 124-6 Filed 10/05/2005 Page 1 013
EXHIBIT 9

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A .» Case 1 :04-cv-00833-KAJ Document 124-6 Filed 10/05/2005 y Page 2 of 3
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H g? ` ‘ SON$SCHE|N@/1fg-§gSEN$ 1221 Avenue ofthe Americas
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Daniel A. Boehnen, Esq. I West Pa'”’ Beach
McDonr1ell Boehnen Hulbert & Berghoff LLP
300 South Wacker Drive r
Chicago, Illinois 60606-6709 _
Re: Pharmacia & U `ohn Co. v. Sicor 04 Civ 833 KAJ
Dear Dan: "-
r ` n Enclosed please find a draft deposition notices for the named inventors for the '285
patent. Our local counsel will file and serve the original notice on Monday.
We understand from our prior conversations with your partner Joshua Rich that your firm
currently represents each of the inventors and that each inventor currently resides in Italy. It is
A not clear to us what their current relationship is to the plaintiff
In order to prepare our expert reports and to prepare for trial we will need to depose the
inventors. As you know, we specifically told Judge Jordan during the scheduling conference that
we would need to depose the inventors. We also note that in Pharrnacia's response to Sicor's
interrogatories, Pharmacia stated that it was relying upon evidence of secondary considerations
that is detailed in the file history of the '285 patent. From our review of the file history and
Pharmacia’s documents, it is clear that the experimental work related to the alleged evidence of
secondary considerations was prepared, supervised, or presented to the Patent Office by some or
all of the inventors.
We are entitled to depose the inventors to leam, inter @, the basis of their alleged
inventive work, their knowledge of prior art, whether they discharged their duty of candor to the
Patent Office, the nature of experiments they each did in discovering supposed secondary
consideration evidence (e. g., unexpected properties).
Please contact me to discuss whether the dates and locations in the notice will work for
your inventor clients, or to discuss suitable alternative dates and locations.
9928924\V~l

~_` ' ” ' ° Case 1 :04-cv—00833-KAJ Document 124-6 Filed 10/05/2005 Page 3 of 3
L at or eee, Sonnenschem
_ SONNENSCHEIN NATH Q ROSENTHAL LLP
Daniel A. Boehnen, Esq.
t McDonnell Boehnen Hulbert & Berghoff LLP `
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Page 2
We would like to come to a resolution of this matter promptly. Accordingly, we request
a conference call on May 2 or 3rd to "meet and confer" regarding this matter.
Brian T. Moriarty
cc: John Day, Esq.
Maryellen Noreika, esq.
992B924\V-I ` A

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