Case 1:22-cv-00252-MSG Document 134-2 Filed 10/03/23 Page 1 of 4 PageID #: 1836
`Case 1:22-cv-00252-MSG Document 134-2 Filed 10/03/23 Page 1 of 4 PagelD #: 1836
`
`EXHIBIT I
`EXHIBIT I
`
`

`

`Case 1:22-cv-00252-MSG Document 134-2 Filed 10/03/23 Page 2 of 4 PageID #: 1837
`
`SHAUN P. MAHAFFY
`(202) 434-5554
`smahaffy@wc.com
`
`July 11, 2023
`
`HIGHLY CONFIDENTIAL – OUTSIDE COUNSEL’S EYES ONLY
`
`CONTAINS INFORMATION MODERNA DESIGNATED HIGHLY CONFIDENTIAL –
`OUTSIDE COUNSEL’S EYES ONLY
`
`Via Email
`
`Mark C. McLennan
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, NY 10022
`(212) 909-3451
`mark.mclennan@kirkland.com
`
`Re:
`
`Arbutus Biopharma Corporation and Genevant Sciences GmbH v. Moderna, Inc.
`and ModernaTX, Inc., Case 1:22-cv-00252-MSG (D. Del.)
`
`Dear Mark:
`
`I write regarding Moderna’s Responses and Objections to Plaintiffs’ Second Set of
`Requests for Production, dated June 26, 2023, as well as Moderna’s letter dated June 30, 2023,
`concerning Plaintiffs’ RFP No. 111.
`
`RFP Nos. 99-100. These RFPs request documents and communications by, with, or from
`Stéphane Bancel and/or Moncef Slaoui related to, inter alia, the Accused Product, Plaintiffs, and
`the Patents-in-Suit. Moderna has inappropriately refused to produce documents in response to
`these requests. Mr. Bancel has made public statements about the importance of mRNA delivery
`technology generally1 and Arbutus’s technology specifically.2 His significant role in Moderna’s
`
`1 See Antonio Regalado, “‘None of us were ready’ to manufacture genetic vaccines for a billion
`people,” MIT Technology Review (Dec. 17, 2020), available at https://www.technologyreview.com/
`2020/12/17/1014989/moderna-vaccine-availability-stephane-bancel-ceo/.
`2 See Nathan Vardi, “Moderna’s Mysterious Medicines,” Forbes, (Dec. 14, 2016), available at
`https://www.forbes.com/sites/nathanvardi/2016/12/14/modernas-mysterious-edicines/?sh=640b
`38ec6ef6.
`
`

`

`Case 1:22-cv-00252-MSG Document 134-2 Filed 10/03/23 Page 3 of 4 PageID #: 1838
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`July 11, 2023
`Page 2 of 6
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`product development decisions and commercial activity are at a matter of public record.3
`Moreover, it is our understanding that Mr. Bancel has been involved in patent-licensing
`discussions and decisions, including with respect to licensing of the Patents-in-Suit. As such, Mr.
`Bancel’s documents are relevant at least to willfulness, validity (e.g., secondary considerations of
`nonobviousness), and damages. To the extent Moderna continues to refuse to produce Mr.
`Bancel’s documents, please be prepared to explain the search that Moderna has undertaken to
`determine whether Mr. Bancel possesses non-cumulative, relevant documents.
`
`Mr. Slaoui is a former member of Moderna’s Board of Directors, who was subsequently
`appointed to lead Operation Warp Speed. The potential conflict of interest posed by this
`relationship was widely reported.4 Moderna’s relationship and communications with the
`government, and Mr. Slaoui in particular, are relevant at least to damages and Moderna’s § 1498
`defense.5 To the extent that Moderna refuses to search for communications with Mr. Slaoui, please
`be prepared to the provide details concerning the burden associated with such a search.
`Additionally, please let us know promptly whether you represent Mr. Slaoui with respect to this
`litigation.
`
`3 See, e.g., Catherine Elton, “The Untold Story of Moderna’s Race for a COVID-19 Vaccine,”
`Boston Magazine (June 4, 2020), available at https://www.bostonmagazine.com/
`health/2020/06/04/moderna-coronavirus-vaccine/; Donna Young, “CDC reports 1st US case of
`coronavirus; NIH working with Moderna on vaccine,” S&P Global Market Intelligence (Jan. 21
`2020), available at https://www.spglobal.com/marketintelligence/en/news-insights/trending/
`4urhd31MJzBeDot3X1frXw2; Stéphane Bancel, “The Other Side” speaker series, Harvard
`Innovation Labs (Apr. 19, 2016), https://www.youtube.com/watch?v=-P53wVGfvjw; Damian
`Garde, “Ego, ambition, and turmoil: Inside one of biotech’s most secretive startups,” STAT
`News (Sept. 13, 2016), available at https://www.statnews.com/2016/09/13/moderna-
`therapeutics-biotech-mrna/; https://www.c-span.org/video/?469926-1/president-trump-meeting-
`pharmaceutical-executives-coronavirus; “'The Never Again Plan': Moderna CEO Stéphane
`Bancel wants to stop the next Covid-19—before it happens,” https://www.advisory.com/blog/
`2020/12/moderna-ceo-covid-vaccine-bancel; https://twitter.com/BarneyGrahamMD/
`status/1349512209370648578 (“1/13/20 was the day we shared our modified sequence
`recommendations with Moderna as requested by CEO Stephane Bancel on January 7th, ‘Let us
`know in real time. I will get the team aware of it and (be) ready to run when you give us a
`sequence.’); Peter Loftus, The Messenger: Moderna, the Vaccine, and the Business Gamble That
`Changed the World (2022).
`4 E.g., “Trump’s Vaccine Chief Has Vast Ties to Drug Industry, Posing Possible Conflicts,”
`(May 20, 2020), available at https://www.nytimes.com/2020/05/20/health/coronavirus-vaccine-
`czar.html.
`5 See, e.g, “Remarks by President Trump on Vaccine Development,” https://trumpwhitehouse.
`archives.gov/briefings-statements/remarks-president-trump-vaccine-development/ (“In fact, Mr.
`President, I have very recently seen early data from a clinical trial with a coronavirus vaccine.
`And this data made me feel even more confident that we will be able to deliver a few hundred
`million doses of vaccine by the end of 2020.”).
`
`

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`Case 1:22-cv-00252-MSG Document 134-2 Filed 10/03/23 Page 4 of 4 PageID #: 1839
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`July 11, 2023
`Page 6 of 6
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`RFP No. 121. This request relates to Moderna’s asserted prior art in Moderna’s witnesses’
`custodial files, which is relevant at least to willfulness. Moderna states that it has already produced
`its asserted prior art. Such a production, however, does not disclose whether or not that prior art
`was in the possession of Moderna’s custodians. Please confirm that Moderna will produce the
`requested documents.
`
`RFP Nos. 122-123. These requests relate to communications concerning prior-art searches
`conducted with respect to the ’069 patent and the ’435 patent. Moderna has only committed to
`produce prior art asserted in its invalidity contentions. These RFPs, however, are relevant to the
`scope of Moderna’s IPR estoppel. Please confirm that Moderna will produce documents in
`response to the full scope of these RFPs. If you intend to claim privilege over the results of
`Moderna’s prior-art searches, please let us know and provide your legal basis for such an assertion.
`Please also confirm that Moderna will not rely on prior art not cited in its invalidity contentions.
`
`RFP Nos. 124-127. These requests relate to prior-art searches concerning IPR2018-00739
`and IPR2019-00554, as well as prior art and grounds that Moderna considered raising in those
`IPRs. Moderna states that it “is willing to meet and confer” regarding these requests. As noted
`above, these requests are relevant to the scope of Moderna’s IPR estoppel. Please provide
`Moderna’s position on these requests for us to consider in advance of our next meet-and-confer.
`
`Sincerely,
`
`Shaun P. Mahaffy
`
`cc: Counsel of Record
`
`