Case 1:22-cv-00252-MSG Document 134 Filed 10/03/23 Page 1 of 4 PageID #: 1823
`M O R R I S , N I C H O L S , A R S H T & T U N N E L L L L P
`1201 NORTH MARKET STREET
`P.O. BOX 1347
`WILMINGTON, DELAWARE 19899-1347
`(302) 658-9200
`(302) 658-3989 FAX
`
`TRAVIS MURRAY
`302 351 9176
`tmurray@morrisnichols.com
`
`
`October 3, 2023
`
`The Honorable Mitchell S. Goldberg
`United States District Court
`for the Eastern District of Pennsylvania
`601 Market Street
`Philadelphia, PA 19106-1797
`
`
`VIA ELECTRONIC FILING
`
`Re: Arbutus Biopharma Corp., et al. v. Moderna, Inc., et al., C.A. 22-252 (MSG) (D. Del.)
`
`Dear Judge Goldberg:
`
`Defendants Moderna, Inc. and ModernaTX, Inc. respectfully submit this opposition to
`Plaintiffs Arbutus and Genevant’s Motion to Compel (D.I. 133). Plaintiffs’ Motion attempts an
`end-run around the Delaware Default Standard limit of 10 ESI custodians, seeking ESI from
`Moderna’s CEO and all custodians in an unrelated litigation irrespective of whether each has ESI
`relevant to this case. Plaintiffs’ motion attempts to convey the wholly inaccurate impression that
`Moderna has refused to produce documents relevant to the issues in this case. In response to
`Plaintiffs’ 173 RFPs, Moderna has already produced over 400,000 pages of technical documents
`and agreed to collect and review 10 custodians’ ESI comprising well over 160,000 additional files
`that hit on the parties’ negotiated search terms. Ex. H. Plaintiffs’ Motion fails to articulate good
`cause for production of either set of documents. Indeed, during the meet-and-confer process,
`Moderna asked Plaintiffs to identify specific deficiencies for consideration and without doing so
`Plaintiffs filed their Motion. Moderna respectfully asks this Court to deny Plaintiffs’ Motion.
`
`I.
`
`RFP No. 99 (ESI from Moderna’s CEO, Mr. Stéphane Bancel)
`
`Plaintiffs failed to meet their burden of articulating “particularized information which
`demonstrates the need for an expanded search” beyond the 10 ESI custodians permitted under the
`Default Standard. Frontier Commc’ns Corp. v. Google Inc., No. CV 10-545-GMS, 2014 WL
`12606321, at *3-4 (D. Del. Feb. 3, 2014). Here, no good cause exists in view of the voluminous
`ESI Moderna already agreed to provide from more knowledgeable custodians.
`
`Plaintiffs initially argued Mr. Bancel’s ESI was relevant to patent licensing. Ex. I at 2. But
`when Moderna explained that its custodians included the two most knowledgeable about patent
`licensing—Stephen Hoge (President), Said Francis (SVP for Business Development and Corporate
`Strategy)—Plaintiffs pivoted. Ex. G at 3. Now, Plaintiffs broadly assert Mr. Bancel’s ESI relates
`to “infringement to validity to damages to the government contractor defense.” Mot. at 2. This is
`insufficient to establish good cause especially where, as here, Moderna is already producing ESI
`related to its § 1498 (government contractor) defense from custodians most knowledgeable—Ms.
`Bennett (Sr. Dir., Vaccine Access & Partnerships), Mr. Thomas (Exec. Dir., US Commercial
`Strategy). See Sprint Commc’ns Co. v. Cequel Commc’ns, LLC, No. 18-1752-RGA, D.I. 100, Exs.
`
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`

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`Case 1:22-cv-00252-MSG Document 134 Filed 10/03/23 Page 2 of 4 PageID #: 1824
`The Honorable Mitchell S. Goldberg
`October 3, 2023
`
`N, O, (D. Del. Jan. 2, 2020) (overruling objections to Special Master order (D.I. 85) denying
`motion to compel production of executive’s ESI where opposing party already produced ESI from
`two relevant custodians). Further, Mr. Bancel’s statements about mRNA sequences and clinical
`trials are not relevant to the asserted claims, which do not recite sequences or clinical uses, let
`alone uses of mRNA vaccines. Mot. at 1-2; Compl. ¶¶ 73, 157. Plaintiffs’ shifting rationales bely
`any deficiency in Moderna’s production and illuminate their goal—a fishing expedition.
`
`Thus, 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 [CEO’s] e-mails will produce responsive discovery” where there was no
`indication his “involvement in the alleged incorporation of the patented device into [accused
`products] 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 “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 CEO’s ESI, finding insufficient showing of necessity).
`In the Gilead case Plaintiffs cite, the court held it was the movant’s burden to “show good cause
`as to why more [custodians were] required,” and denied an additional custodian where, as here,
`plaintiffs failed to show he likely had “a significant amount of non-privileged responsive material.”
`
`Plaintiffs raise the apex doctrine and argue that the first prong is satisfied: “unique first-
`hand, non-repetitive knowledge of the facts at issue.” Mot. at 2 citing Ever.Ag, LLC v. Milk
`Moovement, Inc., 2023 WL 3794312, at *1 (E.D. Cal. June 2, 2023). Although that prong is not
`satisfied, Plaintiffs omit the second prong entirely and fail to show they “exhausted other less
`intrusive discovery methods.” Id.; see also In re Facebook, Inc., No. 3:18-MD-02843-VC-JSC,
`2021 WL 10282213, at *2 (N.D. Cal. Nov. 14, 2021) (ordered production from additional
`custodians of “categories of relevant information not available through other data sources.”).
`Moderna is producing ESI from custodians most knowledgeable about U.S. government contracts,
`licensing, and relevant aspects of the accused product. The parties are negotiating dozens of ESI
`search terms, including terms targeting the issues Plaintiffs identify, many hitting on hundreds to
`thousands of documents. Ex. J at 1–3. If those terms hit on ESI custodians’ emails to or from Mr.
`Bancel, Moderna will produce them. Plaintiffs complain that Moderna cannot guarantee that Mr.
`Bancel has no “non-duplicative documents,” but that would require Moderna to collect and review
`his ESI, defeating the Default Standard’s goal: proportionality. Moderna is sure Plaintiffs will have
`the discovery they need, but if after reviewing these productions Plaintiffs have particularized
`reasons to believe an additional custodian is necessary, Moderna is willing to confer with them.
`
`Finally, as to Plaintiffs’ offer to “substitute” Mr. Bancel for Mr. Thomas, review of Mr.
`Thomas’ ESI is underway so “substitution” would not reduce Moderna’s burden. Moreover,
`Plaintiffs’ motion is inconsistent with their own conduct: initially Plaintiffs refused to identify 10
`custodians, and improperly put the onus on Moderna to identify more custodians. Ex. G at 3-4.
`Moderna named Plaintiffs’ former executives involved in licensing discussions with Moderna.
`Contrary to Plaintiffs’ position here, Plaintiffs refused to add them or respond to questions on
`whether Plaintiffs determined if they possessed relevant non-cumulative documents. Id.
`
`II.
`
`RFP No. 118 (All Documents from unrelated Moderna v. Pfizer Litigation)
`
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`Case 1:22-cv-00252-MSG Document 134 Filed 10/03/23 Page 3 of 4 PageID #: 1825
`The Honorable Mitchell S. Goldberg
`October 3, 2023
`
`
`Plaintiffs also failed to establish the relevance of all ESI produced by Moderna in the
`unrelated Pfizer litigation, concerning different patents-in-suit, different technology, and a
`different accused product. Plaintiffs fail to specify any relevant ESI that Moderna has not already
`agreed to produce in response to Plaintiffs’ 173 RFPs. First, Plaintiffs identify ESI related to
`technology at issue in the Pfizer litigation, namely, “chemically modified mRNA,” but Plaintiffs
`have conceded that different technology is at issue here (Ex. G at 2). See ClearPlay, Inc. v. Dish
`Network LLC, No. 14-cv-00191-DN-BCW, 2018 WL 2386057 (D. Utah Apr. 30, 2018) (affirming
`denial of motion to compel documents from collateral litigations, finding technology was not
`sufficiently close to patented technology). By contrast, Moderna did agreed to produce documents
`from the Alnylam v. Pfizer litigation, which also relates to lipid compositions. Second, Plaintiffs
`claim to need ESI regarding the accused product’s market, but Moderna already agreed to produce
`that. Ex. K at 3. Third, Plaintiffs claim to need ESI related to the lipid formulation of the accused
`product. But Plaintiffs ignore that Moderna (1) produced 400,000 pages of technical documents
`on the accused product, (2) agreed to produce ESI relating to, inter alia, “LNP formulation research
`and development efforts for Moderna’s COVID-19 Vaccine” and “lipids and lipid molar ratio . . .
`[of] Moderna’s COVID-19 Vaccine,” and (3) agreed to dozens of searches related to the accused
`lipid formulation. Ex. J at 1–3, Ex. L at 11–12. Plaintiffs are already receiving copious discovery
`on the accused product. Ex. H. Alloc is inapposite, as the moving party limited its request to
`specific types of documents, rather than seeking “all documents.” Alloc, Inc. v. Unilin Beheer B.V.,
`No. 03-C-1266, 03-C-342, 04-C-121, 2006 WL 757871, at *5 (E.D. Wis. Mar. 24, 2006).
`
`Because Plaintiffs failed to show relevance of “all documents,” the Court need not reach
`burden. Thompson-El v. Greater Dover Boys & Girls Club, No. 18-1426-RGA, 2022 WL 606700,
`at *2 (D. Del. Jan. 28, 2022) (“party moving to compel discovery bears the initial burden of
`establishing the relevance of the requested information” before the burden “shifts”). Even then,
`producing all ESI from Pfizer (nearly 100,000 documents, over one million pages) would be
`burdensome as it would require Moderna to obtain third-party consents. See VLSI Tech. LLC v.
`Kirkland & Ellis LLP, No. MC 18-63-RGK (PLAX), 2018 WL 6930769, at *1, *3 (C.D. Cal. June
`19, 2018) (denying motion to compel all documents from another suit involving same accused
`product, finding it “overly broad,” as the subpoena was “not limited to only those documents that
`relate to the claims at issue in the pending action” and “would require . . . hundreds of hours [to]
`review[]” for confidentiality). Indeed, Plaintiffs said that its own production of documents from
`an earlier ligation concerning the patents-in-suit would be delayed to allow time to review for
`third-party confidentiality. Ex. M at 1. Wholesale production would also circumvent this District’s
`default number of custodians (adding 7 custodians) and inject unnecessary issues into this case.
`
`Accordingly, Plaintiffs’ request is unreasonable and not proportional to the needs of the
`case. See Wyeth v. Impax Lab’ys., Inc., 248 F.R.D. 169 (D. Del. 2006) (denying motion to compel
`“all” documents from another litigation relating to the same patents as “overly broad” because the
`moving party failed to show that the documents were “critical to resolving the issues before the
`Court”). Plaintiffs have not identified any ESI relevant to any claim or defense in this litigation
`that Moderna has not already agreed to produce in response to Plaintiffs’ 173 RFPs. Moderna
`offered to consider any specific categories of ESI that Plaintiffs believe they are not already
`receiving. Ex. G at 2. Plaintiffs ignored Moderna’s offer, refused to identify any such categories,
`instead contending that to do so would be “unworkable.” Mot. at 3.
`
`Moderna respectfully requests that the Court deny Plaintiffs’ Motion to Compel.
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`Case 1:22-cv-00252-MSG Document 134 Filed 10/03/23 Page 4 of 4 PageID #: 1826
`The Honorable Mitchell S. Goldberg
`October 3, 2023
`
`
`
`
`Respectfully,
`
`/s/ Travis Murray
`
`Travis Murray (#6882)
`
`
`TJM/rah
`Attachments
`cc:
`All Counsel of Record (via electronic mail)
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