Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv—00833-KAJ Document 333 Filed 11/16/2006 Page 1 of 3
Moknrs, NICHOLS, ARSHT & TUNNELL LLP
1201 Noxzsrn MARKLT STREET
P.O. Box 1347
WILMINGTON, DELAWARE l9899—l34:7
302 658 9200
302 658 3989 FAX
MARYELLEN Noxmrm
302 351 9278
302 425 3011 Fxx
[email protected] November 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. and
Sicor Pharmaceuticals, Inc., C.A. No. 04—833 gKAJ1
Dear Judge Jordan:
We write on behalf of Plaintiff Pharmacia & Upjohn Company LLC ("Pharmacia”) in
response to Sicor’s November 14, 2006 letter to the Court forwarding a proposed edited
transcript of the Federal Judicial Center video, "An Introduction to the Patent System." Contrary
to the Court’s express instruction, Sicor made no attempt "to talk with the other side . . . and see
if there are things you can agree that could usefully be used." D.l. 314, p. 95. Thus, the
document sent to the Court neither considered nor included Pharmacia’s views.
Pharmacia continues to believe that the video (and its transcript) is inappropriate to
provide to the jury in any form. Particularly in transcript form, if read or handed down from the
bench, the video could have the force of law in the eyes of the jurors. This is problematic where,
among other issues, the transcript states that "anyone who . . . is interested" in a patent "can read
it and understand exactly what the inventor claimed." In pharmaceutical and other cutting-edge
technologies, this is not only untrue, it is an impossible standard that does not reflect the law on
validity.
Even if the Court were to decide that it wanted to use the Federal Judicial Center video
transcript as a starting point, the edited version provided by Sicor is more prejudicial than the
video itself. Numerous passages either inaccurately identify the law or misleadingly discuss the
facts. As a result, Pharmacia is providing with this letter a redlined version of the videotranscript
indicating Pharmacia’s proposed revisions to Sicor’s proposed edited version of the transcript.
Relative to the original transcript, Sicor has attempted to use its edited version as a means
for advocacy. Sicor has excised examples and descriptions of what an "invention" is, while
needlessly emphasizing irrelevant limitations of the Patent Office. For example, Sicor proposes

Case 1:04-cv—00833-KAJ Document 333 Filed 11/16/2006 Page 2 of 3
The Honorable Kent A. Jordan
November I6, 2006
Page 2
adding the statement that the "examiner does not have a laboratory to conduct his or her own
experiments to test the assertions" of the inventors. Despite what this statement implies, Sicor
has made no argtunent that the inventor’s experiments somehow gave inaccurate results. Indeed,
Pharmacia believes that this is another attempt by Sicor to bring inequitable conduct into the
validity phase of this litigation through the back door.
There are several other areas where the video transcript is inaccurate. For example, the
transcript refers to the available databases having "limited additional infonnation." Although
perhaps correct in mechanical and electrical fields, that is not true in the chemical and
pharmaceutical fields, where extensive databases of pertinent references are available to
examiners.
The transcript also refers to the best mode requirement, which is not at issue in this case.
In addition, the transcript provides excessive emphasis on the secrecy of applications,
referring to "secrecy" or "privacy" four separate times in the text in various paragraphs. While it
is true that the initial examination process is performed ex parte, it is also true that there is
substantial ability for third parties to participate, including in re-examination proceedings.
Furthermore, the stated reason for confidentiality of pending applications is equally inaccurate,
as few if any applications are reviewed by examiners within the eighteen months before they are
typically published.
The video transcript also overemphasizes the burden on examiners in a way that appears
to undermine the deference to be accorded Patent and Trademark Office decisions, as required
by § 284’s presumption of validity. This includes references to the volume of applications filed
and patents issued, the “stacks" into which they are put; the examiner’s "very challenging"
burden of "examining of so many applications;” the "possibility that mistakes were made;" and
the statement that "Examiners have a lot of work to do."
t
On the other hand, the video transcript fails to address the substantial legal and technical
education that Examiners are given, as well as the on-the-job training they receive as they rise
from Assistant Examiner to Primary Examiner to Supervisory Primary Examiner. Similarly, it
does not identify the fact that examiners’ work is supervised and reviewed, often by numerous
other examiners (and always by a very experienced Supervisory Primary Examiner), to ensure
consistency and quality control.
For all of these reasons, Pharmacia respectfully requests that no transcript of the Federal
Judicial Center video be used or, if the Court decides to uses an edited version of the transcript,
Pharrnacia’s proposed edits be incorporated.
Respectfully,
/s/ Maryellen Noreika (#3208)
Maryellen Noreika
Enclosure

Case 1:04-cv—00833-KAJ Document 333 Filed 11/16/2006 Page 3 of 3
The Honorable Kent A. Jordan
November 16, 2006
Page 3
cc: Dr. Peter T. Dalleo, Clerk (By Hand)
Steven J. Balick, Esquire (By Hand)
Reid L. Ashinoff, Esquire (By Email)
Jordan Sigale, Esquire (By Email)
Daniel A. Boehnen, Esquire (By Email)