Case 1:22-cv-00252-MSG Document 133-3 Filed 09/27/23 Page 1 of 4 PageID #: 1777
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`Exhibit C
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`Case 1:22-cv-00252-MSG Document 133-3 Filed 09/27/23 Page 2 of 4 PageID #: 1778
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`SHAUN P. MAHAFFY
`(202) 434-5554
`smahaffy@wc.com
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`August 29, 2023
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`HIGHLY CONFIDENTIAL – OUTSIDE COUNSEL’S EYES ONLY
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`Via Email
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`Mark C. McLennan
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, NY 10022
`(212) 909-3451
`mark.mclennan@kirkland.com
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`Re:
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`Arbutus Biopharma Corporation and Genevant Sciences GmbH v. Moderna, Inc.
`and ModernaTX, Inc., Case 1:22-cv-00252-MSG (D. Del.)
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`Dear Mark:
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`I write to memorialize the parties’ meet and confer on August 23, 2023. As explained in
`more detail below, the parties are at an impasse with respect to several disputes, including related
`to productions from other litigations, RFP Nos. 99-100, and RFP Nos. 113-114.
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`With respect to most of Plaintiffs’ other RFPs, Moderna does not dispute their relevance,
`but rather is investigating how to collect and produce the documents (or, in a few cases, whether
`responsive documents exist). Plaintiffs served these RFPs approximately three months ago, and
`we are concerned that Moderna still apparently does not have a plan as to how it intends to collect
`and produce responsive documents, many of which—such as COAs and data related to lipid molar
`ratios—are incontrovertibly relevant. Please provide a response to this letter no later than
`September 5 that sets forth Moderna’s plan for producing responsive documents and a timeline for
`that production.
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`I.
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`Productions from Other Litigations
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`The parties discussed the production of documents from other litigations. We appreciate
`that Moderna has agreed to produce the documents Moderna produced or will produce in Alnylam
`Pharmaceuticals, Inc. v. Moderna, Inc., ModernaTX, Inc., and Moderna US, Inc., No. 22-cv-335-
`CFC (D. Del.). We will likewise produce the documents Plaintiffs produced or will produce in
`Acuitas Therapeutics Inc. v. Genevant Sciences GmbH et al., No. 1-22-cv-02229 (S.D.N.Y.); Acuitas
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`Case 1:22-cv-00252-MSG Document 133-3 Filed 09/27/23 Page 3 of 4 PageID #: 1779
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`August 29, 2023
`Page 2 of 7
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`Therapeutics Inc. v. Genevant Sciences GmbH et al., No. 3-23-cv-04200 (D.N.J.); and Arbutus Pharma
`Corp. et al. v. Pfizer Inc. et al., No. 3-23-cv-01876 (D.N.J.).
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`On the call, we repeated our request that Moderna produce documents that it has produced
`or will produce in ModernaTX, Inc. and Moderna US, Inc. v. Pfizer Inc., BioNTech SE, BioNTech
`Manufacturing GmbH, and BioNTech US Inc., No. 1:22-cv-11378-RGS (D. Mass.), which are
`relevant to, for example, damages to the extent that Moderna intends to assert in this case that the
`value of the Accused Products derives from the patented subject matter at issue in the Pfizer case.
`You did not deny that Moderna intends to make such arguments, and you did not dispute the
`relevance of these documents. You instead argued that producing these already-produced
`documents would be unduly burdensome, including due to the cost of FTPing the documents to
`counsel in this case. We disagree that any such burden justifies Moderna’s refusal to produce these
`plainly relevant documents. The parties are at an impasse on this issue.
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`You also confirmed that you were still investigating whether or not you represented
`Moncef Slaoui and would notify us when that is resolved.
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`II.
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`Plaintiffs’ Second Requests for Productions
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`The parties discussed Moderna’s responses to Plaintiffs’ Second Requests for Production,
`including Moderna’s correspondence on this issue from August 1, 2023.
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`A.
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`RFP Nos. 99-100
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`We repeated our request that Moderna produce documents from Stéphane Bancel, which
`are plainly relevant in view of his role in Moderna’s product-development and patent-licensing
`decisions (including of the Patents-in-Suit), as well as his public statements about Arbutus’s
`technology. You did not dispute that Mr. Bancel possesses relevant documents that would be non-
`cumulative of the documents from the other custodians that Moderna has identified. However,
`you were unable to explain why Moderna selected those other individuals as custodians, rather
`than Mr. Bancel, and you were unable to represent that those other individuals were more involved
`in licensing decisions than Mr. Bancel. You refused to comment on whether or not Mr. Bancel
`was the ultimate decisionmaker with respect to Moderna’s licensing decisions, including of the
`Patents-in-Suit. Given that Moderna has refused to produce plainly relevant documents in Mr.
`Bancel’s possession, the parties are at an impasse.
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`In order to arrive at a potential compromise on this issue, Plaintiffs would be willing to
`consider substituting Mr. Bancel for Al Thomas, whom Moderna has included as one of its
`document custodians but not in its Rule 26(a) initial disclosures. Please confirm that Moderna is
`amenable to this change. In the event that Moderna does not accept this compromise, Plaintiffs
`intend to seek relief from the Court.
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`Case 1:22-cv-00252-MSG Document 133-3 Filed 09/27/23 Page 4 of 4 PageID #: 1780
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`August 29, 2023
`Page 7 of 7
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`taking discovery relevant to estoppel. We cannot—as you suggested on the call—hold this issue
`in abeyance until Moderna actually identifies such art, as fact discovery may be over by that point.
`We could only consider forgoing this discovery if Moderna will agree that it will not rely on art
`that it contends is exempt from estoppel and that it will stipulate that all art and grounds it raises
`in this case could have been found by a skilled searcher. Please let us know if Moderna is willing
`to so agree. Otherwise, please confirm that Moderna will produce the full scope of documents
`responsive to these RFPs.
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`Please provide Moderna’s responses to the above issues no later than September 5.
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`*
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`*
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`*
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`cc: Counsel of Record
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`Sincerely,
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`Shaun P. Mahaffy
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