Case 1:22-cv-00252-MSG Document 133-7 Filed 09/27/23 Page 1 of 6 PageID #: 1817
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`Exhibit G
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`Case 1:22-cv-00252-MSG Document 133-7 Filed 09/27/23 Page 2 of 6 PageID #: 1818
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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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`Facsimile:
`+1 212 446 4900
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`September 19, 2023
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`HIGHLY CONFIDENTIAL - OUTSIDE
`COUNSEL EYES ONLY
`
`Nate Tan
`Morrison & Foerster LLP
`2100 L Street, NW
`Washington, DC 20037
`ntan@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
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`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.) – Plaintiffs’ Second Set of RFPs
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`Dear Shaun:
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`I write in response to your August 29, 2023 letter regarding Plaintiffs’ Second Set of
`Requests for Production and the parties’ August 23, 2023 meet and confer.
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`At the outset, we disagree with your statement that “[w]ith respect to most of Plaintiffs’
`other RFPs, Moderna does not dispute their relevance.” As discussed further below, there are
`several requests with respect to which Plaintiffs have failed to articulate a cogent explanation of
`relevance. Moreover, Plaintiffs have ignored the proportionality limit on discovery, and have been
`unwilling to meaningfully engage in narrowing the over-broad RFPs to what is relevant.
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`You also state that “Plaintiffs served these RFPs approximately three months ago, and [ ]
`are concerned that Moderna still apparently does not have a plan as to how it intends to collect and
`produce responsive documents.” However, Moderna served its responses to Plaintiffs’ Second Set
`of RFPs on June 26, 2023, stating for a number of the Requests that Plaintiffs now take issue with
`that Moderna was willing to meet and confer. Yet, it was not until August 17, nearly two months
`later, that Plaintiffs actually requested a meet and confer. Plaintiffs have known of Moderna’s
`positions and cannot now complain or feign concern because of their own delay. Moreover,
`Moderna has produced more than 400,000 pages of technical documents months before the
`deadline for substantial completion of fact discovery. Plaintiffs also ignore that they have burdened
`Moderna with 173 RFPs which has taken enormous resources to investigate and respond to.
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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 133-7 Filed 09/27/23 Page 3 of 6 PageID #: 1819
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`Shaun P. Mahaffy; Nate Tan
`September 19, 2023
`Page 2
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`(a)
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`Productions from Other Litigations
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`Thank you for confirming that Plaintiffs will 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 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.), wherein
`the Asserted Patents are at issue as asserted patents or the subject of declaratory judgment actions.
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`We reiterate that Moderna will not produce “all” documents it has 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.) just because they are produced in that
`matter. Moderna will produce, in accordance with among other things, the ESI Order in this case,
`documents that are relevant to the asserted claims and defense of this case. As to other documents, as
`we explained in earlier correspondence and during the meet-and-confer, Plaintiffs’ request is at best
`speculative, and the sole relevance argument you could offer during the meet-and-confer was that
`Moderna may take certain positions with respect to damages in the Pfizer/BioNTech litigation.
`Although Plaintiffs have improperly refused to identify the date of hypothetical negotiation in this case,
`there is no basis to assume that the date is the same as in the other proceeding, where there are different
`facts and different products are accused of infringement. Plaintiffs are already getting a substantial
`volume of discovery in this case that they have sought related to their claim for damages, including
`from multiple ESI custodians relevant to damages and licensing. Nothing more is required or
`proportional to the needs of the case. ClearPlay, Inc. v. Dish Network LLC, No. 14-191, 2018 WL
`2386057 (D. Utah Apr. 30, 2018) (affirming magistrate’s order denying patentee’s motion to compel
`accused infringer to produce documents from collateral litigations, and finding that while the collateral
`litigations involved related technology, that technology was not sufficiently close to the patented
`technology, or proportional to the needs of the case, to justify production of the materials) Tellingly,
`Plaintiffs have not come forward with a single case supporting their request that Moderna needs to
`produce materials from an unrelated litigation simply because it relates to the same accused product,
`particularly where there is no overlap in asserted patents or accused products.
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`Moreover, you conceded during the meet-and-confer that different patented technology is at
`issue in the Pfizer/BioNTech litigation—namely, chemically-modified mRNAs and betacoronavirus
`vaccines. Plaintiffs’ request that Moderna produce every single document it produces when those
`patents involve different technology, different R&D personnel and different time periods is completely
`unreasonable and not proportional to the needs of the case. Given that Plaintiffs have now served 173
`RFPs, it is hard to believe that there remains something relevant to any claim or defense in this litigation
`that has not already been requested by Plaintiffs in this lawsuit.
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`If Plaintiffs can identify specific categories of documents that they believe they are not already
`receiving that may be produced in the Moderna v. Pfizer litigation, please identify it for our
`consideration. Otherwise, if Plaintiffs persist in their unreasonable request for “all” documents from
`that litigation, we confirm we are at an impasse.
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`Case 1:22-cv-00252-MSG Document 133-7 Filed 09/27/23 Page 4 of 6 PageID #: 1820
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`Shaun P. Mahaffy; Nate Tan
`September 19, 2023
`Page 3
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`(b)
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`RFP Nos. 99-100
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`Your letter does not contain an accurate characterization of the discussion of these RFPs
`during the meet-and-confer.
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`During the meet and confer, you asked if Mr. Bancel is “most knowledgeable” regarding
`patent licensing. As stated on the meet and confer, Moderna has no obligation to identify the
`person(s) “most knowledgeable” on each separate issue in the litigation to comply with the
`Delaware Default Standard. Contrary to your statement that we “were unable to explain why
`Moderna selected those other individuals as custodians,” we explained that we followed the
`Default Standard and based on our investigations, we identified “[t]he 10 custodians most likely
`to have discoverable information in their possession, custody or control,” across the issues in this
`case, including patent licensing and product development. Moderna met its obligations under the
`Delaware Default Standard by doing so. Although Moderna has already satisfied its obligations,
`in order to avoid a needless discovery dispute, Moderna confirms that Stephen Hoge and Said
`Francis, not Mr. Bancel, are the two most knowledgeable individuals at Moderna with respect to
`patent licensing—both of whom are listed as ESI custodians. Under these circumstances where
`Moderna is already producing ESI from the two most knowledgeable on this issue, collection and
`review of Mr. Bancel’s ESI is overly burdensome, unwarranted, and not proportional to the needs
`of the case. See Tulip Computs. Int’l BV v. Dell Comput Corp., No. CIV.A. 00-981-RRM, 2002
`WL 818061, at *7 (D. Del. Apr. 30, 2002) (finding it “unclear to the court that a search of Dell
`CEO Michael Dell’s e-mails will produce responsive discovery in this case” where there was no
`indication that his “involvement in the alleged incorporation of the patented device into the
`[accused product] was at a detailed level, such that discovery of his e-mail records would uncover
`in relevant documents”); Lutzeier v. Citigroup Inc., No. 4:14-cv-00183-RLW, 2015 WL 430196,
`at *7 (E.D. Miss., Feb. 2, 2015) (finding “[a]t this stage of the litigation, Plaintiff has not satisfied
`his burden to show that these high level executives have unique or personal knowledge of the
`subject matter that warrants their information); Harris v. Union Pac. R.R. Co., No. 8:16CV381,
`2018 WL 2729131, at *1 (D. Neb. June 6, 2018) (denying motion to compel production of CEO’s
`ESI, finding there was not a sufficient showing of necessity).
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`Next, you state that we “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.”
`However, as stated during the meet-and-confer, an RFP (as opposed to, e.g., a interrogatory) is not
`the proper written discovery mechanism for such questions, and we have no obligation to provide
`such information during a meet-and-confer about Plaintiffs’ RFPs, particularly where you had not
`raised this vague question in advance. Although Moderna is under no obligation to provide this
`information, in order to avoid a needless discovery dispute, we confirm that Mr. Bancel was not
`the ultimate decisionmaker with respect to decisions to license the patent-in-suit.
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`Further, contrary to the allegation in your letter, you did not inquire whether we “dispute
`that Mr. Bancel possesses relevant documents that would be non-cumulative of the documents
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`Case 1:22-cv-00252-MSG Document 133-7 Filed 09/27/23 Page 5 of 6 PageID #: 1821
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`Shaun P. Mahaffy; Nate Tan
`September 19, 2023
`Page 4
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`from the other custodians that Moderna has identified.” In fact, as we have explained in prior
`correspondence, we are not withholding documents that include Mr. Bancel as a recipient or sender
`that are collected from other ESI custodians. Regarding the potential for non-cumulative
`documents, to satisfy Plaintiffs’ endless demands, Moderna would have to review far more than
`10 custodians’ ESI to determine whether they were entirely cumulative, which defeats the purpose
`of the proportionality limit in the Default Standard.
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`Your “offer” to substitute Mr. Bancel for Al Thomas is likewise improper. Plaintiffs do not
`get to arbitrarily select Moderna’s custodians. We note that when Plaintiffs improperly suggested
`that Moderna had to identify additional custodians for Plaintiffs to list as their 10 ESI custodians,
`Plaintiffs did not accept all of the individuals identified by Moderna—including CEOs at the time
`patent licensing discussions were taking place. See McLennan June 7, 2023 Letter (identifying Bo
`Rode Hansen, former Genevant CEO 2018 to 2020, and William Collier, Arbutus President and
`CEO, 2019 to Present). Did Plaintiffs investigate whether all applicable “ultimate decisionmakers”
`for patent licensing decisions were listed on their ESI disclosures, in addition to those “most
`knowledgeable”? Plaintiffs continue to hold themselves to a different standard.
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`We confirm we are at an impasse with respect to RFP No. 99.
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`With respect to RFP No. 100, given the representations in our previous letter, we do not
`understand there to be any outstanding dispute.
`(c)
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`RFP Nos. 101-102
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`Case 1:22-cv-00252-MSG Document 133-7 Filed 09/27/23 Page 6 of 6 PageID #: 1822
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`Shaun P. Mahaffy; Nate Tan
`September 19, 2023
`Page 9
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`(m) RFP No. 120-121
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`As stated on the meet-and-confer and in prior correspondence, Moderna is not withholding
`publicly available documents that are identified by the use of Moderna’s search terms through its
`custodial documents, or the communications to which those documents are attached, if they are
`responsive to the agreed-upon scope of Plaintiffs’ RFPs (for example, RFPs concerning specific
`aspects of LNP research and development). However, as explained on the meet-and-confer,
`Moderna cannot instruct the reviewers to identify what is “prior art.” We understand any issues
`with respect to these RFPs are resolved.
`(n)
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`RFP Nos. 122-127
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`We are disappointed to hear that Plaintiffs are not willing to hold their requests in abeyance
`as discussed on the meet-and-confer. However, it is unclear how Plaintiffs propose to proceed with
`these RFPs given that, as we confirmed on the meet-and-confer, Moderna is not presently asserting
`that there are any prior art publications that could not have been found by a skilled searcher. As
`such, there is nothing for Moderna to search for.
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`Plaintiffs, not Moderna, advocated for the parties to be able to supplement contentions
`throughout discovery. Having accepted Plaintiffs’ proposal, we will not now forego the right to
`supplement invalidity contentions, particularly where the claims have not even been construed.
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`We reiterate that Plaintiffs are attempting to generate a discovery dispute over nothing. If
`this issue ever becomes relevant, we are confident that the parties can work together to agree to a
`limited window of discovery that will not prejudice the case schedule.
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`Sincerely,
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`/s/Mark C. McLennan
`Mark C. McLennan
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