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Case 1 :04-cv—00833-KAJ Document 345 Filed 1 1/19/2006 Page 1 of 2
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ATTORNEYS AND COUNSELLORS AT LAW TELEPHONE
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WILMINGTON, DELAWARE 19899
November 19, 2006
The Honorable Kent A. Jordan BY ELECTRONIC FILING
United States District Comt
844 King Street
Wilmington, DE 19801
Re: Pharmacia & Upjohn C0., LLC v. Sicor Inc., et al.,
C.A. No. 04-833-KAJ
Dear Judge J ordan:
We write on behalf of Sicor Inc. and SICOR Pharmaceuticals, Inc. (collectively, "Sicor")
in response to the November 17, 2006 submission (D.I. 342) of Pharmacia & Upjohn Co, LLC
("Pharmacia") in connection with Sicor’s proposed supplemental jury instruction on
obviousness.
Pharmacia’s objections fail on the merits. Pharmacia makes the superficial argument that
Sicor’s obviousness instruction should be rejected merely because the reported decisions cited by
Sicor address the concept in the context of anticipation. Pharmacia does not, and cannot, offer
any substantive argument as to why the teaching of value ranges addressed inthe instruction
does not also apply to obviousness. The holdings in Becksorz and Brown are no less persuasive
because they address anticipation arguments. Moreover, although the Federal Circuit did vacate
its previous opinion in Eli Lilly, the panel on rehearing reached the same legal conclusion and
cited the exact law quoted by Sicor in its proposed instruction. See Eli Lilbz & C0. v. Barr
Indust., 251 F.3d 955, 971 (Fed. Cir. 2001) ("a later genus claim limitation is anticipated by, and
therefore not patentably distinct from, an earlier species claim").
Notably, the case law cited by Pharmacia completely supports Sicor’s position. In
Atojina, the Federal Circuit held that a “disclosure of a genus in the prior art is not necessarily a
disclosure of every species that is a member of that genus," but also implicitly confirmed its
prior holding that "an earlier species reference anticipates a later genus claim." Atofina v. Great
Lakes Chemical Corp., 441 F.3d 991, 999 (Fed. Cir. 2006) (citing Titanium Metals Corp. 0f
America v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985) ("It is an elementary principle of
patent law that when, as by a recitation of ranges or otherwise, a claim covers several
compositions, the claim is ‘anticipated’ if one of them is in the prior art.") (emphasis in original).

Case 1 :04-cv—00833-KAJ Document 345 Filed 1 1/19/2006 Page 2 of 2
Pharmacia also is wrong in arguing that Sicor has never "cited to cases applying
inherency in the context of obviousness." The jury instruction that Sicor previously submitted
on obviousness expressly raises the concept of inherency. See Sicor’s Proposed Section 2.6.B
("In examining the prior art you should take into account not only what the prior art expressly
discloses, but also anything that a person of ordinary skill in the art would inherentbr understand
as a result of practicing what was expressly disclosed in that prior art.") (emphasis added).
Although Sicor did inadvertently fail to include the proposed jury instruction as part of its
full set of previously proposed instructions, the new proposed instruction amounts to no more
than a single additional sentence. It is simply not credible for Pharmacia to argue that this one
additional sentence significantly alters its preparations for trial, or causes any other undue
prejudice. With respect to Pharmacia’s own belated request for an additional instruction relating
to lost profits, Sicor has already contacted Pharmacia in an effort to meet and confer on the
‘ additional language in an attempt to reach an agreement that will obviate the need for further
judicial intervention.
Respectfully,
/s/ John G. Day
John G. Day
J GD
175323.1
cc: Maryellen Noreika, Esquire (via electronic mail)
Daniel A. Boehnen, Esquire (via electronic mail)
Reid L. Ashinofi, Esquire (via electronic mail)
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