Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv—00833-KAJ Document 342 Filed 11/17/2006 Page 1 of 2
Monnrs, NICHOLS, ARSHT & TUNNELL LLP
1201 N011T1-1 MARKET STREET
P.O. Box 1347
W11.M1NcToN, DELAWARE 19899-1347
302 658 9200
302 658 3989 FAX
JACK B. BLUMENEEL1:
302 351 9291
302 425 3012 FAX November 17, 2006
[email protected]
BY E-FILING
The Honorable Kent A. Jordan
United States District Court
844 King Street
Wilmington, DE 19801
Re: Pharmacia & Upjohn Company LLC v. Sicor, Inc. and
Sicor Pharmaceuticals, Inc., C.A. No. 04—833 (KA] [
Dear Judge Jordan:
We have received Sicor’s proposed additional jury instruction relating to obviousness.
As an initial matter, notwithstanding the Court’s repeated admonitions that the parties actually discuss
issues prior to bringing them to the Court, Pharmacia was unaware of Sicor’s proposed new instruction
prior to receipt of the e—filing notice.
Pharmacia objects to Sicor’s proposed instruction on several grounds. First, the
proposed instruction is incorrect as a matter of law, and attempts to apply anticipation principles to an
obviousness defense.] For example, Sicor’s instruction refers to inherency ("fully taught by prior art
explicitly or inherently"), even though Sicor has cited to no cases applying inherency in the context of
obviousness.2 Moreover, even as to anticipation, the Atofina case makes clear that a genus (including a
range of temperatures or, here, a range of concentrations) does not necessarily anticipate another
genus, even where those genuses are overlapping, or even where the claimed genus falls entirely
within the prior art genus. Atofina v. Great Lakes Chemical Corp., 441 F.3d 991, 999 (Fed. Cir.
2006). In Atofina, the Federal Circuit reversed the district court's finding of anticipation on the
‘ Indeed, the Beckson and Brown cases cited by Sicor to support its instruction address the issue
in connection with an anticipation analysis — not obviousness. The opinion in the Eli Lilly cited by
Sicor case was vacated by the Federal Circuit.
2 To the extent that Sicor is now raising a new (and unfounded) legal theory extending
anticipation by inherency to an obviousness defense, Pharmacia objects to such a defense as untimely.
Moreover, Sicor, which bears the burden to show inherency (i.e., that "the missing descriptive matter is
necessarily present in the thing described in the reference, and that it would be so recognized by
persons of ordinary skill" EMI Group North America, Inc. v. Cypress Semiconductor Corp., 268 F .3d.
1342, 1351 (Fed. Cir 2001)) has offered no evidence or expert opinions to meet its burden.

Case 1:04-cv—00833-KAJ Document 342 Filed 11/17/2006 Page 2 of 2
The Honorable Kent A. Jordan
November 17, 2006
Page 2
grounds that "[t]here may be many species within a genus that are not disclosed by the mere disclosure
of a genus." Id
Finally, Pharmacia objects to Sicor’s instruction as untimely. Pursuant to this Court’s
orders and the Local Rules, proposed jury instructions were due more than a month ago. Sicor could
have and should have raised this issue in connection with its earlier proposed instructions. To add in
additional instructions — and additional issues — at this late date is unfair and prejudicial to Pharmacia
as it attempts to prepare for trial.3
Respectfully,
/s/ Maryellen Noreika (#3208)
Maryellen Noreika
cc: Dr. Peter T. Dalleo, Clerk (By E-Filing)
Steven J. Balick, Esquire (By E-Filing and Hand Delivery)
Reid Ashinoff, Esquire (By Email)
3 To the extent that the Court entertains Sicor’s belated proposal, Pharmacia asks that the Court
treat the parties evenly and entertain a request from Pharmacia in connection with an instruction
relating to lost profits.