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Case 1 :04-cv—00833-KAJ Document 222 Filed 05/05/2006 Page 1 of 3
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ATTORNEYS AND COUNSELLORS AT LAW ·rEr,.Ep|-1oN;
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May 5, 2006
The Honorable Kent A. Jordan VIA ELECTRONIC FILING
United States District Court
844 King Street
Wilmington, DE 19801
Re: Pharmacia & Upjohn Co., LLC v. Sicor Inc., et al.,
C.A. No. 04-833-KAJ
Dear Judge J ordan:
We write on behalf of defendants Sicor, Inc. and Sicor Pharmaceuticals, Inc.
(collectively, "Sicor") concerning the schedule for summary judgment briefing and argument.
Opening summary judgment and Markman papers are presently due on May 30, 2006. There is
no obstacle to filing the Markrnan papers on May 30, and both parties are available on the July
20 date offered by the Court for oral argument. However, May 30 presents significant
difficulties with respect to filing Sicor’s summary judgment motion. As explained in detail
below, the depositions of the Italian inventors cannot go forward before the May 30 summary
judgment date despite the availability of both sides’ counsel for most of May. In addition, the
Court has stated that it will decide whether Sicor may depose the attomeys who prosecuted the
‘285 Patent (one of whom is Pharmacia’s trial counsel here) only after the Italian depositions are
concluded. We respectfully request that an extension in the summary judgment briefing
schedule be granted so that Sicor may take the depositions necessary to properly support (and
potentially defend) a motion for summary judgment on its inequitable conduct counterclaim.
After the Court’s March 30, 2006 privilege rulings, the parties discussed the outstanding
privilege issues and began scheduling depositions that had been held in abeyance to that point.
The depositions of Sicor’s outside and in-house attorneys were completed this week in
California. With respect to the Italian depositions, Jordan Sigale, who will take the inventors’
depositions for Sicor, initially offered the weeks of May 8th and May 15th to do so. Pharmacia’s
counsel’s availability was more limited, as was that of the Italian Cormnissioner, Ms. Racca.
Ms. Racca initially informed us that she could not oversee the Italian depositions until the week
of May 22. However, Ms. Racca informed us within the past two days that the primary inventor,
Carlo Confalonieri, is seriously ill and cannot appear for deposition at all, and that two other
inventors, Gaetano Gatti and Diego Oldani, are not available until the first week of June. Ms.
Racca stated that she is available during the week of June 5 to oversee the depositions. Based on
Ms. Racca’s statements, it does not appear that the Italian depositions can be completed before
the May 30 due date for summary judgment papers.

Case 1:04-cv—00833-KAJ Document 222 Filed 05/05/2006 Page 2 of 3
The Honorable Kent A. Jordan
May 5, 2006
Page 2
Moreover, as the Court may recall, Sicor previously noticed the depositions of the
attorneys who prosecuted the ‘285 Patent on Pharmacia’s behalf Daniel Boehnen and Emily
Miao. (Mr. Boehnen is Pharmacia’s trial counsel in this action). The Court reserved decision on
Sicor’s application and Pharmacia’s motion for a protective order, pending a determination as to
whether Sicor needed those depositions after the Italian inventors’ depositions were completed.
In an attempt to move the schedule along, and to keep as close to the present surmnary judgment
schedule as possible, we asked Pharmacia if it would produce Mr. Boehnen and Ms. Miao for
deposition before the inventors’ depositions. Pharmacia would not do so. Sicor continues to
believe that there is a significant likelihood that it will need to depose Mr. Boehnen and Ms.
Miao in connection its inequitable conduct counterclaims, particularly now in light of Dr.
Confalonieri’s inability to appear for deposition.
The misrepresentations in Dr. Confalonieri’s declarations, which were resubmitted and
mischaracterized by Mr. Boehnen and/ or Ms. Miao to the U.S. Patent and Trademark Office
("USPTO") are at the center of Sicor’s inequitable conduct defense. For example, one of Dr.
Confalonieri’s declarations used to overcome the USPTO Examiner’s citation of the
Wassermann citation argued that "a doxorubicin hydrochloride solution which has its pH
adjusted to 2.5 with hydrochloric acid has superior storage stability to doxorubicin
hydrochloride solutions whose pH has been adjusted to 2.0 with hydrochloric acid." However,
this statement was supported by experiments comparing the stability of doxorubicin in aqueous
solution adjusted to pH 2.0 and pH 2.5 with glycine-HCl, a physiologically acceptable bujfer,
not an acid. This false comparison is highly material in light of the distinctions Pharmacia drew
during prosecution between using buffers to adjust pH and the allegedly unexpected properties
provided by using only acids to adj ust pH.
Sicor is entitled to probe prosecuting counsel about this misrepresentation to the USPTO,
and many other acts related to the prosecution of the ‘285 patent -- particularly absent the ability
to question Dr. Confalonieri on these issues. Pharmacia has indicated that it would oppose
Sicor’s attempt to depose Mr. Boelmen and Ms. Miao, and that the question would be left to the
Court for resolution.
Without ascribing blame, circumstances have placed Sicor between the proverbial rock
and hard-place. Under the current schedule, Sicor would have to file opening summary
judgment papers, including a motion directed to the inequitable conduct counterclaims, without
having taken the depositions necessary to prove such counterclaims. We respectfully submit that
such a result would be unf`air, and for that reason, request an extension of the summary judgment
briefing schedule -- specific due dates could be calculated as soon as we receive confirmation
from Ms. Racca as to when the Italian depositions will proceed, and a ruling from the Court on
Pharmacia’s motion for a protective order regarding the depositions of prosecuting counsel.
Respectfully,
/s/ John G. Day
John G. Day (I.D. #2403)

Case 1:04-cv—00833-KAJ Document 222 Filed 05/05/2006 Page 3 of 3
The Honorable Kent A. Jordan
May 5, 2006
Page 3
J GD: nml
169222.1
cc: Clerk of the Court (via electronic tiling)
Maryellen Noreika, Esquire (by hand)
Daniel A. Boehnen, Esquire (by electronic mail)
Reid L. Ashinofi Esquire (by electronic mail)

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