Case 1:22-cv-00252-MSG Document 133 Filed 09/27/23 Page 1 of 4 PageID #: 1761
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`
`Nathan R. Hoeschen
`I.M. Pei Building
`1105 North Market Street, 12th Floor
`Wilmington, DE 19801
`(302) 298-0700
`(302) 298-0709 – Direct
`nhoeschen@shawkeller.com
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`
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`September 27, 2023
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`BY CM/ECF & FED EX
`The Honorable Mitchell S. Goldberg
`United States District Court - Eastern District of Pennsylvania
`James A. Byrne U.S. Courthouse, Room 17614
`601 Market Street
`Philadelphia, PA 19106-1797
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`Re:
` Arbutus Biopharma Corporation, et. al. v. Moderna, Inc., et. al. C.A. No. 22-252-MSG
`
`Dear Judge Goldberg:
`
`Plaintiffs Arbutus Biopharma Corporation and Genevant Sciences GmbH hereby move to
`compel Defendants Moderna, Inc. and ModernaTX, Inc. to produce two limited categories of
`documents that are highly relevant to infringement, validity, and damages—documents and
`communications involving a key witness in the case, Moderna’s CEO Stéphane Bancel, and
`documents it produces in its co-pending action against Pfizer relating to COVID-19 vaccines.
`
`I.
`
`RFP No. 99 (Bancel Documents)
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`Plaintiffs’ RFP No. 99 seeks documents to or from Moderna’s CEO, Stéphane Bancel,
`related to the Accused Product, Plaintiffs, or the Patents-in-Suit. Ex. A at 2. The accused
`Spikevax COVID-19 vaccines single-handedly transformed Moderna from a product-less
`company into a forty-billion-dollar behemoth, and Bancel was central that transformation—
`deeply involved in areas relevant to this case and becoming a billionaire himself in the process.
`
`Bancel “convinced his board and his company to proceed with the project” that resulted
`in the Accused Product and “pushed hard on the team” to “test mRNA encased in lipid
`nanoparticles.”1 In fact, it was Bancel himself who first “reached out to the U.S. government
`because [he] believed [Moderna’s] mRNA technology could make a positive impact.”2 Bancel
`personally corresponded with key government players, including the deputy director of the
`Vaccine Research Center, to get the necessary “knowledge [that] would allow the design of the
`right sequence of messenger RNA” and “fund the Phase 1 and Phase 2 material” for the project.3
`Bancel was part of the “core team” that was “dreaming up experiments” related to the Accused
`
`
`1 Peter Loftus, THE MESSENGER: MODERNA, THE VACCINE, AND THE BUSINESS GAMBLE THAT
`CHANGED THE WORLD 5, 64-68, 97 (2022).
`2 Hearing before the Senate Health, Education, Labor and Pensions Committee, 118th Cong.
`(Mar. 22, 2023) (testimony of Stéphane Bancel, Moderna, CEO) available at
`https://tinyurl.com/5emj77vc.
`3 Loftus, supra note 1, at 2-5; see also Barney Graham (@BarneyGrahamMD), TWITTER (Jan.
`12, 2021), available at https://tinyurl.com/ypbv8ehd.
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`Case 1:22-cv-00252-MSG Document 133 Filed 09/27/23 Page 2 of 4 PageID #: 1762
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`Product and “is listed on hundreds of Moderna’s patent applications.”4 He was the first person
`called when there was “positive” data or when “the science [was] working” related to lipid
`nanoparticles, and personally executed key contracts that would “scientifically and financially”
`support the project, including securing the manufacturing technology to make the Accused
`Product.5 Bancel has spoken publicly about this case and the Asserted Patents; and he has been
`involved in patent-licensing discussions and decisions, including with respect to the Patents-in-
`Suit.6 Despite the overwhelming public record of Bancel’s pivotal involvement, Moderna has
`offered only bare assertions that he was not the ultimate decision maker on certain on relevant
`matters. Ex. G. Even if true, his documents are nonetheless highly relevant to disputed issues,
`from infringement to validity to damages to the government contractor defense.
`
`Moderna’s chief objection has been that Bancel is not one of the 10 custodians that
`Moderna chose to identify in its Paragraph 3 disclosures, which Moderna interprets to arrogate to
`itself the right to dictate the scope of discovery. See Ex. B. Courts in this District repeatedly
`reject efforts to limit discovery to the 10 custodians identified in a party’s initial disclosures
`when there is good cause, such as when an additional custodian “has a significant amount of
`non-privileged responsive material.” Ex. F, Oral Order D.I. 247, United States v. Gilead
`Sciences, Inc., No. 19-CV-2103 (D. Del. December 21, 2021) (granting limited search of 11th
`custodian); Frontier Commc’ns Corp. v. Google Inc., No. CV 10-545-GMS, 2014 WL
`12606321, at *3-4 (D. Del. Feb. 3, 2014) (identification of 10 custodians “does not preclude
`Frontier from seeking … the production of documents from additional record custodians”).
`
`That standard is clearly met here. Moderna has not disputed that Bancel possesses
`relevant, non-duplicative documents. Nor has Moderna represented that it has met its burden of
`undertaking to determine the extent to which a collection of ESI from Bancel would return
`duplicative documents. See Oral Order, Gilead Sciences, No. 19-CV-2103, Ex. F. Courts have
`regularly concluded that high-ranking officials who have “unique firsthand, non-repetitive
`knowledge”—like Bancel—are appropriate custodians in the discovery process. See, e.g.,
`Ever.Ag, LLC v. Milk Moovement, Inc., 2023 WL 3794312, at *1 (E.D. Cal. June 2, 2023); In re
`Facebook, Inc. Consumer Priv. User Profile Litig., 2021 WL 10282213, at *1-2 (N.D. Cal.
`2021). Plaintiffs themselves included high-level executives as custodians, including a CEO.
`
`Plaintiffs have offered to substitute Bancel for Al Thomas, whom Moderna included as a
`document custodian but not a Rule 26(a)(1) witness. See Ex. B. Moderna refused this offer. Ex.
`G. Plaintiffs do not seek to “arbitrarily select Moderna’s custodians,” as Moderna’s claims. By
`all public accounts, Bancel is a key witness, and Plaintiffs respectfully ask the Court to prevent
`Moderna from withholding his documents.
`
`
`4 Damian Garde, Ego, ambition, and turmoil: Inside one of biotech’s most secretive startups,
`STAT NEWS (Sept. 13, 2016), available at https://tinyurl.com/3vyp6zvz.
`5 Loftus, supra note 1, at 5, 129, 135-138.
`6 See Nathan Vardi, “Moderna’s Mysterious Medicines,” Forbes, (Dec. 14, 2016), available at
`https://tinyurl.com/48wt2dxk; see also Nathan Vardi, Covid’s Forgotten Hero: The Untold
`Story Of The Scientist Whose Breakthrough Made The Vaccines Possible, (Aug. 12 2021)
`available at https://tinyurl.com/49ct4skp.
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`Case 1:22-cv-00252-MSG Document 133 Filed 09/27/23 Page 3 of 4 PageID #: 1763
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`II.
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`RFP No. 118 (Moderna v. Pfizer Documents)
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`Plaintiffs’ RFP No. 118 requests documents produced by Moderna in the Moderna v.
`Pfizer case related to COVID-19 vaccines. Ex. A at 24. Moderna has refused, agreeing only to
`produce documents it deems relevant. Ex. G. Moderna’s purported compromise is to consider
`requests for “specific categories of documents” from Pfizer it is not already producing here, and
`to impose on Plaintiffs the onus to speculate what those documents might be. Moderna’s
`proposal is unworkable. Plaintiffs have no visibility into what documents Moderna might be
`intending to produce in this case compared to what it produced in Pfizer. Just like several other
`related litigations from which the parties have agreed to re-produce documents, the burden of re-
`producing the Pfizer documents is negligible. Plaintiffs respectfully request an Order for
`Moderna to produce documents responsive to the full scope of this RFP.
`
`Moderna’s documents in Pfizer are plainly relevant. In the Pfizer Complaint, Moderna
`alleged that its Spikevax COVID-19 vaccine—the Accused Product here—practices every patent
`asserted in that case. Ex. D ¶¶ 61, 68, 71. Pfizer and this case therefore focus on the same
`underlying product and technology. Where, as here, the “products at issue in this action were at
`issue in the” other action, Courts have compelled the production of documents in parallel patent
`suits. Alloc, Inc. v. Unilin Beheer B.V., 2006 WL 757871, at *5 (E.D. Wis. Mar. 24, 2006). As
`articulated below, the documents Moderna produces in Pfizer will be relevant to numerous
`contested issues here, including damages and infringement, despite the fact that there may be
`some differences in the ultimate legal theories in each case.
`
`Moderna’s productions in Pfizer will relate to the technology Moderna purportedly
`developed and used in the Spikevax vaccine, such as the chemically modified mRNA. Ex. D ¶¶
`60-61. Moderna does not dispute that it may argue that the value of the Accused Product derives
`from that technology. See Ex. C at 2. And in Pfizer, Moderna is likely to produce documents
`regarding the market for Spikevax, which are relevant to assessing the market- and competition-
`related Georgia Pacific factors for determining a reasonable royalty. With respect to
`infringement, the patents in Pfizer—like the ones asserted here—claim, in part, compositions of
`lipid nanoparticles comprising particular lipids. Compare Ex. D ¶¶ 89, 110, 128, with Ex. E ¶¶
`69, 73, 88, 92, 107, 111, 129, 153, 157, 172, 176. Moderna has asserted that Spikevax practices
`claims of these patents. Ex. D ¶¶ 61, 68, 71. The documents are thus relevant to infringement.
`
`Given the clear relevance, Moderna must identify a burden that would justify refusing the
`discovery. Thompson-El v. Greater Dover Boys & Girls Club, No., 2022 WL 606700, at *2 (D.
`Del. Jan. 28, 2022). It has not done so. Plaintiffs do not seek the collection or review of any
`new documents. Rather, Plaintiffs only request documents that Moderna has already produced
`(or will produce) in another case. Moderna would have to do little more than forward Plaintiffs a
`copy of already-created production files.7 Munoz v. PHH Corp., 2013 WL 684388, at *5 (E.D.
`Cal. Feb. 22, 2013). Plaintiffs respectfully request Moderna be compelled to do so.
`
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`7 Moderna has suggested that producing these documents may require consent from third parties.
`Presumably, however, Moderna already has obtained such consent to produce the documents in
`the Pfizer case. Moreover, the discovery requested by Moderna in this case has required
`Plaintiffs to seek consent from numerous third parties, which Plaintiffs have done.
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`Case 1:22-cv-00252-MSG Document 133 Filed 09/27/23 Page 4 of 4 PageID #: 1764
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`cc:
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`Clerk of the Court (by CM/ECF)
`All counsel of record (by CM/ECF & Email)
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`Respectfully submitted,
`/s/ Nathan R. Hoeschen
`Nathan R. Hoeschen (No. 6232)
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