Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv—00833-KAJ Document 102 Filed 09/ 1 6/2005 Page 1 of 3
MoRR1s , Nrcrtors, ARSHT 8; TUNNELL
1201 NORTH MARKET STREET
P.O. Box 1347
WrLM1NcTON, DELAWARE 19899-1347
302 658 9200
302 658 3989 FAX
MARYEUIN Nourru
302 575 7278
302 425 3011 FAX
[email protected] September 16,
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 {KA] [
Dear Judge J ordan:
We write on behalf of plaintiff Pharmacia & Upjohn Company LLC ("Pharmacia") in
response to the September 15th letter submitted by the Sicor defendants regarding their intent to file a
motion to bifurcate both discovery and trial- an issue that Sicor apparently intends to raise during
the Monday teleconference.
The timing of Sicor’s letter highlights the deficiency of Sicor’s request. After months of
discovery and extensive analysis of Sicor’s financial documents, Pharmacia finalized and served its
expert witness damages report on September 15, 2005. The deadline for that report had already been
extended because Sicor had failed to produce the pertinent discovery prior to the original August 15th
deadline.
Indeed, Pharmacia took Sicor’s deposition on damages on September 8th, and this deposition
confirmed that the documents Sicor had produced theretofore (i.e., prior to September lst) were not
the proper documents for calculating damages. As a result, the enormous effort that Pharmacia’s
damages expert had undertaken up to that time was largely wasted because Pharmacia’s expert was
trying to make sense of financial documents that Sicor’s own witness admitted were not useful to
calculating damages. As a result, Pharmacia’s damages expert had to scramble to digest all of the
new financial documents that Sicor produced after September lst. However Pharmacia and its expert
did this, and were able to finalize and serve its expert witness damages report on September 15th.
Throughout all of that activity, Sicor never moved to bifurcate any issue, including but not limited to
damages.
On the day that Pharmacia finalized and served its expert report on the damages issues, Sicor
indicated in its September 15th letter to this Court that Sicor would (at some undisclosed future date)
seek bifurcation of trial on damages and willfulness. Suffice to say, Pharmacia feels strongly that it
is too late for bifurcation. Bifirrcating discovery or trial at this point — particularly on damages —
would greatly prejudice Pharmacia.

Case 1 :04-cv—00833-KAJ Document 102 Filed 09/16/2005 Page 2 of 3
The Honorable Kent A. Jordan
September 16, 2005
Page 2
For similar reasons, it is too late to seek bifurcation of the willfulness issue. Pharmacia filed
this action on July 8, 2004. Until this week, Sicor never indicated that it wanted to bifurcate the
willfulness issue.1 Pharmacia served its First Sets of Interrogatories and Document Requests on
November 9, 2004. Sicor served its first substantive responses to the Interrogatories on February 4,
2005. Although Sicor included blanket objections to the interrogatories, Sicor responded to the two
willfulness-related interrogatories (Interrogatory Nos. 3 and 9) by saying that it "did not deliberately
copy any protectible [sic] invention set forth in the ‘285 patent" and that "the standards of 35 U.S.C.
§ 285 have not been met, including a detennination of which party is ‘the prevailing party."’ Sicor
has never amended its responses to Interrogatory Nos. 3 and 9, and has never identified whether it
even possesses any pre-litigation opinion of counsel relating to infringement, validity, or willfulness.
On July 15, 2005, Pharmacia served a Rule 30(b)(6) notice of deposition that included certain
factual categories related to damages and willfulness. After extensive negotiation between counsel,
Sicor agreed to produce a Rule 30(b)(6) witness on September 8th. On September 6, 2005 (two days
before the deposition), Sicor indicated that its witness would not be presented in relation to the
willfulness categories because those issues "call for information related to opinions of counsel that
are protected by the attorney-client privilege." Pharmacia rejected this basis for refusal, noting that
there are many areas for questioning in relation to willfulness aside from privileged communications,
and, in any event, Sicor could preserve privilege by instructing the witness not to disclose privileged
communications. At the deposition, Sicor did in fact instruct the witness not to answer various
questions on the ground that any answer would disclose privileged communications.2 (See e. g., pp.
328-332 of the deposition transcript, attached as Exhibit A). It is too late now to suggest that Sicor
needs more time to consider whether to waive privilege on opinions of counsel. Sicor has already
strongly asserted that privilege. Accordingly, the willfulness issue should not be bifurcated.
Sicor cites the Chimie and Quantum cases in support of its arguments regarding bifurcation,
but it has taken itself outside the "Quantum dilemma" by refusing to provide gy willfulness
discovery. See Sicor letter, p. 1-2 (citing Chimie v. PPG Indus., Inc., 218 F .R.D. 416 (D. Del. 2003);
Quantum Corp. v. T andon Corp., 940 F.2d 642 (Fed. Cir. 1991)). The dilemma arises when a party
has established that it has an attomey-client privileged communication on which it may rely, but
which may prejudice it on liability issues. In Quantum, the Federal Circuit suggested a trial court
should then inspect the communication in camera and determine whether the party is actually facing
the dilemma. Quantum, 940 F.2d at 643-44. But Sicor, through its own discovery misconduct, has
prevented its argument regarding the dilemma from having any factual basis. Under Quantum, a
court should consider bifurcation only g a party has established that it has an attorney-client
communication on which to rely. Id. Sicor has refused to provide any information about opinions of
counsel, including whether it received one. Thus, there is no factual predicate for a motion for
bifurcation.
1 In responding to the willfulness-related interrogatories, Sicor did state, "Defendants further reserve
the right to move, if necessary, at any time for a protective order concerning attorney—client
communications or work product information or material that concems the advise-of—counsel [sic]
defense or a bifurcation order to separate liability, damages, and willfulness issues for trial."
2 Sicor also objected to questions in the area of willfulness arguing that its witness was not being
produced in relation to those categories of the deposition notice.

Case 1 :04-cv—00833-KAJ Document 102 Filed 09/16/2005 Page 3 of 3
The Honorable Kent A. Jordan
September 16, 2005
Page 3
Moreover, all of the cases cited by Sicor in support of its position are irrelevant because they
were issued before the Federal Circuit’s recent decision in Kn0rr—Bremse. See Kn0rr—Brenzse
Systeme FeurNut;/izhrzeuge GMBH v. Dana Corp., et cz]., 383 F .3d 1337 (Fed. Cir. 2004). It used to
be true that the defendant in a patent case was put to a "Hobson’s choice" of whether to waive
privilege in defending a charge of willful infringement. That situation occurred because if the
defendant possessed an opinion of counsel but failed to disclose it, the patentee would be allowed to
request a jury instruction of "negative inference." That situation, however, no longer exists
following the Federal Circuit’s recent decision in Knorr—Bremse. Moreover, in the present case,
Sicor has not even indicated whether it has possession of a pre-litigation opinion of counsel
pertaining to the issues in suit and on which it may rely. To the contrary, Sicor has steadfastly
refused to admit whether such an opinion even exists.
Sicor also asserts that "[t]he liability, willfulness and damages issues are wholly distinct and
thus ideal candidates for bifurcation, and the potential prejudice to Sicor if bifurcation is not granted
will be manifest." But Sicor provides no basis for this assertion. Actually, the opposite is true — the
liability, damages, and willfulness issues are strongly intertwined and Pharmacia will suffer prejudice
if bifurcation were granted. To the extent that any invalidity argument survives summary judgment,
Pharmacia expects to introduce evidence of copying as proof of both validity and willfulness.
Similarly, evidence of Sicor’s sales of idarubicin hydrochloride support both a finding of non-
obviousness due to commercial success and underlie Pharmacia’s damages claim. Again, to the
extent that invalidity remains part of the case at trial, Pharmacia intends to introduce that evidence as
proof of validity and damages.
Still further, the patent-in-suit expires in August 2006. In fairness to plaintiff, Pharmacia
needs to be in position to obtain an injunction promptly upon entry of the jury’s verdict in
Pharmacia’s favor. Any delay in final adjudication of this case would harm Pharmacia by allowing
Sicor to avoid an injunction. Thus, the evidence in this case makes it clear that the general
presumption should apply and neither discovery nor trial should be bifurcated.
Last but not least, this dispute is simply not an appropriate case for bifurcation of the
damages and/or willfulness issues. This dispute is a run—of—the-mill case insofar as patent lawsuits
are concerned. The suit involves only l patent, and, by the time of trial, the issues will be boiled
down to only 2 or 3 patent claims, each of which is fairly short. The subject matter of those claims is
not particularly complex, and the evidence should be fairly straightforward. Because Sicor sells a
generic version of Pharmacia’s product, and the description is set forth in an application to the FDA,
Sicor will not be able to create any issues about how its product is made and used. Most of such
issues that Sicor may try to raise will be resolved pre-trial by the Court’s Markman ruling. There is
simply no judicial economy, or efficiency, or other good reason to bifurcate issues in this case.
Respectfully,
cc: John G. Day, Esquire (By Hand)
Brian Moriarty (By Fax)

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