Free Letter - District Court of Delaware - Delaware

Case 1:04-cv—00833-KAJ Document 101 Filed 09/15/2005 Page 1 of 4
Monnrs, N1oHOLs, Ansr-rr St TUNNELL
NORTH MARKET STREET
P.O. Box 1347
Wrrmrncron, DELAWARE l9S99~I34·7
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MARYELLEN Noxrrrm
302 are me September 15, 2005
392 a25 3011 Fax
H`t1'1G1"&1lk3@mB&I.CDm
BY ELECTRONIC FILING
The Honorable Kent A. Jordan
United States District Court
844 King Street
Wilmington, DE 19801
Re: Pharmacia & Upjohn Company v. Sicor etal., CA. No. 04-833 QKAJ 3
Dear Judge iordanz
S This letter updates and replaces our September l, 2005 letter.; We write in advance of the
September 19 teleconference on behalf of Pharmacia & Upjohn ("Pharrnacia") regarding three
discovery issues: (i) Sicor’s failure to provide full responses to Pharmacia’s interrogatories Nos. l-6
and 8-9, and (ii) Sicor’s failure to produce key documents, and (iii) Sicor’s rejection and declination
of Pharmacia’s notice of deposition of Dr. Douglas Clark, Sicor’s expert witness in this case.
Responses to interrogatories Nos. 1-6 and 8-92
The interrogatories that have not been properly answered (Nos. l-6 and 8-9) seek some of the most
basic discovery in a patent infringement case, including:
• Sicor’s contentions on validity, non-infringement, willfulness, and affirmative defenses;
• Sicor’s research, development, manufacturing, and sales of accused products; and
• Sicor’s tirst knowledge ofthe patent—in-suit.
Instead of providing full and timely interrogatory responses, Sicor has held back its positions,
producing dribs and drabs of infomation only after Pharmacia threatens Court intervention.
in early March 2005, Pharmacia raised concerns about Sicor’s insufficient responses to
Pharrnacia’s contention interrogatories. In a hearing on March E7, 2005, Sicor argued that it could
not respond fully because it had not received all the documents that it sought from Pharmacia. The
Court expressed concern about the overall pace of progress in discovery in the case, and denied
Pharmacia’s relief, but gave Sicor a warning:
I We had previously told defendants that we would be filing a letter to substitute for our September
1 letter in light of the postponement of the teleconference and additional issues that have arisen.
Nevertheless, at 4 p.m. today, defendants responded to that September i letter.
‘ Copies of Sicor’s interrogatory responses are attached as Exbs A through E. Sicor has served four
supplementations of its interrogatory responses, but those responses remain inadequate and incomplete.

Case 1 :04-cv—00833-KAJ Document 101 Filed 09/15/2005 Page 2 of 4
The Honorable Kent A. Jordan
September 15, 2005
Page 2
So l’ve got a bit of a pox on both your houses feeling about this because l do feel like
if you had moved a little sooner on something as basic as your document exchange
stuff then the other side wouldn’t, the defense wouldn’t he in a position of being able
to argue to me that we have some things that could fairly inform our contentions that
we haven’t had yet. So whether you buy that or not, Mr. Boehnen, it has enough
credibility on me to say on this call Pm not doing anything for you except this. Fm
giving you the benefit of this warning to the defense: Get your documents exchanged
promptly. And then Sicor, you better come forward with better discovery responses
than the plaintiff is telling me you are giving them or there is going to be another
conference call, maybe a hearing, and l don’t want to get moving down the road
toward anything heavier in the way of making you pay for their efforts to get you to
respond.
Ex. D, p. 20. Despite that clear, unequivocal warning, Sicor has failed on both fronts - it has not
provided full responses to the interrogatories, and it has not provided all relevant documents.
Following the Court’s direction, Pharmacia provided its own discovery and requested better
responses from Sicor. See Ex. F and G. Finally on July 29, 2005, more than four months after the
Court’s admonition, Sicor served its second supplemental response to interrogatories, addressing
only lnterrogatory No. l (validity) and finally identifying its allegedly invalidating prior art
references. See Exhibit C. Pharmacia wrote again, presenting a deadline for Sicor to supplement
responses to the other interrogatories. See Ex. H. However Sicor’s next supplement, served August
26, 2005 (see Ex. D), still addressed only lnterrogatory No. l and merely incorporated by reference
its expert witness report that had already been served on August 15th pursuant to Court Order.
Although Sicor’s August 26lh document was deficient, Sicor promised to provide further
supplementation by August 30, 2005. That deadline passed, but on August 3 l, 2005, Sicor served a
fourth supplemental response that addressed lnterrogatories 2, 4, 5, and 6. See Ex. E. Nevertheless
Sicor’s interrogatory responses remain fragmentary and incomplete even after Sicor’s fourth
supplementation. Even more disturbing, the supplemental responses provide only information that
Sicor had in its possession for many months and should have provided long ago. The bottom line is
that, notwithstanding the Court’s March 17, 2005 admonition, Sicor has not properly supplemented
its responses to lnterrogatory Nos. l—6 and 8-9, 3 and those interrogatory responses remain deficient.
Sicor’s refusal to provide full responses to lnterrogatoiy Nos. l-6 and 8-9 -— to disclose fully
its contentions on validity, nondnfringernent, willfulness, and its affirmative defenses; information
regarding Sicor’s research, development, manufacturing, and sales of accused products, and Sicor’s
first knowledge of the patent—in~suit —» stands in violation of Sicor’s duties under Rules 26 and 33.
Sicor should be precluded from presenting witnesses, documents, or evidence that has not been
presented in its previous disclosure statements, expert witness statements, and discovery responses.
Production of Documents
Sicor has also denied Pharmacia a fair opportunity to shape its case by withholding — and
apparently not even searching for ~»· key documents relating to Sicor’s product in suit. Until
3 lnterrogatory No. 7 relates to damages, and both parties are in the midst of taking discovery on
damages. lt is too early to say whether discovery on damages will reach an impasse.

Case 1 :04-cv—00833-KAJ Document 101 Filed 09/15/2005 Page 3 of 4
The llonorable Kent A. Jordan
September l5, 2005
Page 3
yesterday, September léilh, Sicor had not produced Fundamental laboratory notebooks, memos, and
other documents generated during the research and development of Sicor’s product. As established
at the deposition, Sicor had failed to produce the documents in a timely manner because Sicor did not
discharge its duty to search for documents responsive to Pharrnacia’s requests.Ex. l, p. 166
(objection omitted).
Sicor never responded to Pharmacia’s numerous requests to perform a full search and
produce for research and development documents until after Pharmacia filed a letter with this Court
on September lst. Only after that letter to the Court did Sicor hnally produce lab notebooks on
September l4‘h, but Sicor has still not produced documents about manufacturing, shipping, and
damages since mid~—2004.
The impact of Sicor’s failure to produce the relevant documents is compounded by the
woeful preparation of Sicor’s 30(b)(6) witness on research and manufacturing issues. When asked,
for example, about basic substantive information, Sicor’s 30(b)(6) witness answered “l don’t know"
more than l00 times, even to questions phrased using the basic language of the deposition notice.
See Ex. J. Sicor should be compelled to produce gg research and development documents
immediately.
Deposition of Douglas Clark
Sicor served an expert witness report of Dr. Douglas Clark on August l5m. Pharmacia served
a notice of deposition for Dr. Clark on August 26m, requesting his deposition on September l2lh, but
including an observation that Pharmacia would be willing to conduct Dr. Clark’s deposition any day
that week of September 12th. Sicor ignored all requests to conlirm the time and location ofthe Clark
deposition until the middle of another deposition being conducted on Thursday September Sth, at
which time Sicor advised Pharmacia that `Dr. Clark would not be produced for deposition at any time
during the week of September 12th. ln later follow-up communication, Sicor confirmed that it would
not produce Dr. Clark for deposition anytime prior to the receipt of Pharmacia’s expert witness report
due September 23, 2005.
Pharmacia served its notice of deposition for Dr. Clark in order to complete Dr. Clark’s
deposition before preparing Pharmacia’s expert witness report. Pharmacia wants Dr. Clark’s
deposition in order to clarify and confirm that Pharmacia understands all of Dr. Clark’s positions,
and, thus, Pharmacia needs to do this before preparing its expert witness report. Pharmacia
recognizes that it will not be allowed to depose Dr. Clark twice, i.e., both before and after serving
Pharmacia’s expert witness report. However, Pharmacia is fully entitled to make its own choice as to
when it wishes to depose Dr. Clark, and Sicor should be sanctioned for interfering with Phannacia’s
choice, and thereby prejudicing the preparation of Pharmacia’s expert witness report.
Respectfully,
. { i
Maiyellenlhloreika (#3208)
cc: Steven J. Balick, Esquire (By Hand)
Brian T. Moriarty, Esquire (By Pax)

Case 1 :04-cv—00833-KAJ Document 101 Filed 09/15/2005 Page 4 of 4
The Honorable Kent A. Jordan
September 15, 2005
Page 4
INDEX OF EXHIBITS
A. Det`endants’ Responses To First Set of interrogatories By Plaintiff
served J anuaiy 7, 2005,
B. l)et`endants’ Supplemental Responses To First Set Of interrogatories By Plaintiff,
Served February 4, 2005;
C. Defendants Second Supplemental Responses To First Set of Interrogatories By
Plaintiff, served July 29, 2005;
D. Defendants Second (sic) Supplemental Response To Interrogatory No. l By Plaintiff
Phannacia & Upjolm LLC, served August 26, 2005;
E. Defendants Supplemental Responses To lnterrogatoiies No. 2, 4, 5, and 6 of the First
Set of lnterrogatories By Plaintifi served August 3 l, 2005,
F. Letter from Pharmacia counsel to Sicor counsel dated March 30, 2005;
G. Letter from Pharmacia counsel to Sicor counsel dated July 18, 2005;
H. Letter from Pharmacia counsel to Sicor counsel dated August l6, 2005;
I. Transcript of hearing on March 17, 2005 ;
J. Portions of Sicor’s deposition, taken August 5, 2005 under Rule 30(b)(6)

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