Case 1:22-cv-00252-MSG Document 133-2 Filed 09/27/23 Page 1 of 4 PageID #: 1773
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`Exhibit B
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`Exhibit B
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`Case 1:22-cv-00252-MSG Document 133-2 Filed 09/27/23 Page 2 of 4 PageID #: 1774
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`Facsimile:
`+1 212 446 4900
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`601 Lexington Avenue
`New York, NY 10022
`United States
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`+1 212 446 4800
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`www.kirkland.com
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`August 1, 2023
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`CONTAINS INFORMATION MODERNA
`DESIGNATED HIGHLY
`CONFIDENTIAL – OUTSIDE
`COUNSEL’S EYES ONLY
`
`Shaelyn K. Dawson
`Morrison & Foerster LLP
`425 Market Street
`San Francisco, CA, 94105
`shaelyndawson@mofo.com
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`Mark C. McLennan
`To Call Writer Directly:
`+1 212 909 3451
`mark.mclennan@kirkland.com
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`By Email
`
`Shaun P. Mahaffy
`Williams & Connolly LLP
`680 Maine Ave SW
`Washington, DC 20024
`smahaffy@wc.com
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`Re: Arbutus Biopharma Corporation et al. v. Moderna, Inc. et al., C.A. No. 22-
`252-MSG (D. Del.) – Moderna’s Responses & Objections to Plaintiffs’
`Second Set of RFPs
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`Dear Shaun:
`
`I write in response to your July 11, 2023 letter.
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`RFP Nos. 99-100: As explained in our July 6 email, Plaintiffs’ request improperly attempts
`to push Moderna to exceed the default number of custodians and force Moderna to search the files
`of additional custodians beyond the ten custodians Moderna identified as most likely to have
`discoverable information in compliance with the Default Standard. As stated on July 6, Moderna
`has complied with its obligations to identify the 10 custodians whose files it will search and
`Plaintiffs’ attempts to seek discovery from additional custodians is improper. Although we
`disagree with your characterizations of the public statements cited in your letter,1 they change
`nothing, as Moderna has met its discovery obligations by identifying “[t]he 10 custodians most
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`1 Based on your letter it is clear that Plaintiffs wish to embark on a fishing expedition on topics that bear no
`relevance to the litigation, including, for example, an alleged “conflict of interest” of Mr. Slaoui.
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`Austin Bay Area Beijing Boston Brussels Chicago Dallas Hong Kong Houston London Los Angeles Munich Paris Salt Lake City Shanghai Washington, D.C.
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`Case 1:22-cv-00252-MSG Document 133-2 Filed 09/27/23 Page 3 of 4 PageID #: 1775
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`Shaun P. Mahaffy
`Shaelyn K. Dawson
`August 1, 2023
`Page 2
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`likely to have discoverable information in their possession, custody or control,” including on the
`issues you identified (e.g. patent licensing, product development decisions etc.).
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`CONTAINS INFORMATION MODERNA
`DESIGNATED HIGHLY CONFIDENTIAL
`– OUTSIDE COUNSEL’S EYES ONLY
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`To clarify, Moderna’s response to each of these RFPs stated that “[s]ubject to and without
`waiving any of its general or specific objections, Moderna will not produce documents solely in
`response to this Request.” Thus, Moderna will not withhold documents identified through the
`search of the files of one or more of Moderna’s ESI custodians simply because such documents
`are communications by or with Stéphane Bancel and/or Moncef Slaoui, for example. But
`Moderna’s searches will be carried out in compliance with the Default Standard.
`
`With respect to your request that Moderna “be prepared to explain the search that Moderna
`has undertaken to determine whether Mr. Bancel possesses non-cumulative, relevant documents,”
`please provide the authority requiring Moderna to do so for an individual not listed as a custodian
`in Moderna’s Paragraph 3 disclosures. Otherwise, this is an improper attempt to seek discovery on
`discovery. With respect to your request that Moderna “be prepared to the provide details
`concerning the burden associated with” a search of Mr. Slaoui’s communications, as explained
`above, Moderna is under no obligation to perform a holistic search of the communications of an
`individual who has not been identified as a custodian in Moderna’s Paragraph 3 disclosures.
`Regardless, Moderna confirms that it has no custodial ESI for Mr. Slaoui. We consider this issue
`resolved. If Plaintiffs have authority to the contrary, please provide it ahead of any meet-and-
`confer on this topic.
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`We will respond separately as to whether we represent Mr. Slaoui.
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`Case 1:22-cv-00252-MSG Document 133-2 Filed 09/27/23 Page 4 of 4 PageID #: 1776
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`Shaun P. Mahaffy
`Shaelyn K. Dawson
`August 1, 2023
`Page 6
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`CONTAINS INFORMATION MODERNA
`DESIGNATED HIGHLY CONFIDENTIAL
`– OUTSIDE COUNSEL’S EYES ONLY
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`RFP Nos. 122-127. Moderna has already agreed to produce prior art (if not already
`produced) in accordance with the schedule. Your letter states that Plaintiffs seek “communications
`concerning prior-art searches conducted with respect to the ’069 patent and the ’435 patent.” You
`request that Moderna confirm whether it is claiming privilege “over the results of Moderna’s prior-
`art searches.” Please clarify whether you are referring to “communication” or “documents,” and
`provide a basis for your position that such communications are relevant to the scope of Moderna’s
`IPR estoppel.
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`Please explain why Plaintiffs are entitled to any discovery into Moderna’s prior-art
`searches, including providing authority. We note that Moderna has already made its position clear
`that “[t]o the extent Moderna identifies prior art that a skilled searcher could not have found earlier,
`Moderna will supplement these contentions to rely on such art, which is exempt from estoppel.”
`Prelim. Invalidity Contentions at 55–56. Moderna does not currently contend that any of the §§
`102/103 prior art patents/publications in its Invalidity Contentions for the ’069 Patent could not
`have been found by a skilled searcher. Moderna further confirmed that “Moderna is not currently
`asserting that any Asserted Claim of the ’069 Patent that was upheld by the PTAB as patentable is
`anticipated or obvious over printed publications or patents.” Prelim. Invalidity Contentions at 55–
`56.
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`Discovery is ongoing and Moderna reserves the right to supplement its invalidity
`contentions in accordance with the Scheduling Order.
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`Sincerely,
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`/s/ Mark C. McLennan
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`Mark C. McLennan
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`cc: Counsel of Record
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