Free Motion to Compel - District Court of Delaware - Delaware

Case 1:05-cv-00029-JJF Document 31-7 Filed 05/17/2005 Page1 0f4
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Case 1:05-cv-00029-JJF Document 31-7 Filed 05/17/2005 Page 2 of 4
WINSTON & STRAWN LLP
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WFIITEFVS DIRECT DIAL NUMBER
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[email protected]
May 10, 2005
VIA FACSIMILE AND U.S. MAIL
Peter J. Kolovos, Esq.
_ Wiqrrvrsn Curran Picnsmnc HALE Ann Dona LLP
60 State Street
Boston, MA 02109
Re: Ceghalan Inc. et al. v. Barr Laboratories, Inc., Case N0. 05-29-JJF
Dear Peter:
We received Plaintiff`s’ Responses to Barr’s FirstASet of Rule 33 Interrogatories
and Rule 34 Requests, and find them deficient in a number of respects. We write to you to
request a Rule 37 conference in the hopes of resolving our concerns without having to burden the
Court.
At the outset, we note that the only documents produced to date by your clients
are the Hle history of the patent—in-suit, the license agreement between Cephalon and Barr,
Cephalon’s Risk Management Program, and a srnattering of correspondence. Moreover, these
documents were ostensibly produced as part of Plaintiffs’ Rule 26(a)(1) disclosures. Since then,
Barr served its Rule 34 Requests on March 24, 2005. However, despite your assurances that
your clients would produce responsive documents on a "rolling basis,” we have yet to receive
any additional documents. As we have indicated on a ntunber of` occasions, any delay in this
case severely prejudices Barr. Moreover, the Scheduling Order allows for the taking of
depositions as early as May 2nd. The absence of` responsive documents fiom your clients is
further delaying the scheduling of depositions. Accordingly, please advise when Barr should
expect to receive the requested documents.
With respect to Plaintiffs’ Responses to Barr’s first set of interrogatories, we
believe the Responses are deficient for the following reasons.

Case 1:05-cv-00029-JJF Document 31-7 Filed 05/17/2005 Page 3 of 4
WINSTON &2 STRAWN LLP
Peter J. Kolovos, Esq.
May 10, 2005
Page 2
First, Plaintiffs have refused to provide claim construction and infringement
charts in response to lnterrogatory Nos. 1 and 2 on the grounds that the interrogatories are
premature. This objection is wholly improper. While the Scheduling Order does allow for the
parties to propose a claim construction briefing schedule by June 1, 2005, this in no way makes
Barr’s Request for Cepha1on’s and the Foundation’s proposed claim constructions premature, nor
does the Scheduling Order somehow shield the Plaintiffs from answering Barr’s Requests.
Indeed, quite the opposite is true. The Scheduling Order specifically states that "at the present
time the parties lack sufficient information to determine whether a Markman hearing will be
necessary, or to present a proposed claim construction briefing schedule to the Court.
Accordingly, on or before June 1, 2005, the parties will advise the court whether a Mar/cman
hearing will be necessary .... " How is Barr to know if there is a dispute regarding claim
construction, and whether a Markman hearing will be necessary, if Plaintiffs refuse to provide
the requested discovery regarding their proposed claim constructions? Similarly, these
interrogatories are not premature, as discovery has not "only recently commenced," as Plaintiffs’
Responses suggest. The discovery period in this case began nearly 2 months ago. Indeed, Barr
provided you with copies of its ANDA and related documents on April 6, 2005. Cephalon and
the Foundation have sufficient information upon which to rely and adequately respond. For
these reasons, we ask that Plaintiffs immediately provide proper responses to Interrogatory Nos.
1 and 2.
Second, with respect to lnterrogatory Nos. 3-7, 9, and 10, P1aintiff`s’ responses are
decient to the extent that they rely upon Rule 33(d), and further indicate that non-privileged
documents from which information responsive to the interrogatory may be derived will be
produced ajier a Protective Order has been entered by the Court. Although Rule 33(d) allows a
party to answer an interrogatory by speciging the records from which the answer may be
ascertained or derived, the Rule clearly states that such a specification "shal1 be in sufficient
detail to permit the interrogating party to locate and to identify, as readily as can the party
served, the records from which the answer may be ascertained? Plaintiffs’ responses do not
satisfy this criteria. Rather, Cephalon and the Foundation fail to identify any documents, let
alone provide specific details, such as Bates designators, that would permit Barr to locate and
identify the documents that contain responsive information. In fact, it is impossible for Barr to
locate and identify these documents because, as described above, Plaintiffs have yet to produce
such documents. Accordingly, Plaintiffs’ responses to these interrogatories are non—responsive
and improper. Please immediately produce the requested information and, to the extent that
Plaintiffs wish to rely upon Rule 33(d), please amend the Responses to indicate by production
number the documents from which responsive information may be obtained.
Turning to Plaintiffs’ Responses to Barr’s Rule 34 Requests, specifically Request
No. 65, H Cephalon and the Foundation have improperly limited their responses to
"communications or contacts with the FDA relating to the Patent-in—Suit or NDA 20-747,
Actiq®." Request No. 65, however, is not so limited. Please advise whether Plaintiffs will also
provide documents and things concerning any communications or contacts with the FDA
concerning the application from which the Patent-in-Suit issued, any application from which the

Case 1:05-cv-00029-JJF Document 31-7 Filed 05/17/2005 Page 4 of 4
WINSTON & STRAWN LLP
Peter J. Kolovos, Esq. _
May 10, 2005
Page 3
Patent-in—Suit claims priority, the invention allegedly described in the Patent·in-Suit, Barr’s
ANDA, and/or Barr’s ANDA Products.
Similarly, in response to Request Nos. 33-45, Plaintiffs have only agreed to
produce any “published" manuscripts; however, the Requests ask for “all . . . publications and
manuscripts submitted for publication" and, thus, are not limited to published works.
Accordingly, please confirm that Cephalon and the Foundation will also provide manuscripts
that have been submitted for publication, but have not been published, that are responsive to
Request Nos. 33-45. Please further advise when Bair can expect to receive such documents.
In closing, Barr is entitled to the relevant discovery it seeks, and further delay on
the part of Cephalon and the Foundation cannot and will not be tolerated. While we do not wish
to seek assistance from the Court, if Plaintiffs do not immediately provide the requested
discovery, we will be left with no viable alternative. Accordingly, please advise when you
would be available for a meet and confer on or before Friday, May 13m.
Regards,
Micgae g. Nutter
cc: George C. Lombardi
Bradley C. Graveline
Frederick L. Cottrell