Case 1:22-cv-00252-MSG Document 193-14 Filed 01/16/24 Page 1 of 6 PageID #: 12750
`Case 1:22-cv-00252-MSG Document 193-14 Filed 01/16/24 Page 1 of 6 PagelD #: 12750
`
`EXHIBIT 14
`EXHIBIT 14
`
`

`

`Case 1:22-cv-00252-MSG Document 193-14 Filed 01/16/24 Page 2 of 6 PageID #: 12751
`
`Haunschild, Philip
`
`Li, Yan-Xin <yanxin.li@kirkland.com>
`Wednesday, January 3, 2024 9:32 PM
`Haunschild, Philip; Genevant Team; Arbutus_MoFo; *jshaw@shawkeller.com;
`'kkeller@shawkeller.com'; 'nhoeschen@shawkeller.com'
`#KEModernaSpikevaxService; 'jblumenfeld@morrisnichols.com'; 'began@mnat.com';
`'tmurray@morrisnichols.com'
`RE: Arbutus v. Moderna (22-cv-252) // OUS Discovery
`
`From:
`Sent:
`To:
`
`Cc:
`
`Subject:
`
`Philip:
`
`That Moderna has not allegedly produced “a single document Plaintiffs have requested” is a direct result of Plaintiffs’ ever changing
`demands over the last 10 months—a fact you do not (and cannot) dispute. Plaintiffs’ conduct has unnecessarily and
`disproportionately enlarged the scope of this case against Moderna while continuing to stonewall relevant discovery sought by
`Moderna. Moreover, we wholly disagree that Moderna has not produced documents responsive to Plaintiffs’ requests. In fact,
`Moderna has produced more than 1.35 million pages of information; Plaintiffs on the other hand have produced less than 500
`thousand pages. And contrary to your reference to Plaintiffs’ May 11, 2023 letter, which misrepresented the parties’ discussions,
`Moderna did not agree that it is broadly required to “produce information regarding [] foreign activity” as Plaintiffs claim. See
`August 1, 2023 letter (M. McLennan to A. Sheh, S. Dawson) at 7. We further asked you to provide authority supporting how batches
`made outside the U.S. and never imported into the U.S. can constitute infringement of a U.S. patent. Id. To date, Plaintiffs have
`identified none.
`
`We have also responded to your “extensive caselaw,” and as we noted in our prior correspondence, your repeated selective
`recitation of certain language and the exclusion of others does not change the holding of those cases or the facts at issue here. We
`will not waste time repeating ourselves or highlighting Plaintiffs’ convenient omissions from your cited cases.
`
`Your listing of RFP Nos. 51, 53, 60, 64, 69, 74, 75, 81, 83, 97, and 174 as requests for which Plaintiffs continue to see production only
`further clouds Moderna’s understanding of what exactly Plaintiffs want as to OUS discovery. We flagged in our last email that it
`appears Plaintiffs were now pivoting to seek foreign sales (after asking for all OUS batch COAs, followed by all OUS contracts), but it
`is unclear under which RFP you seek this information. Plaintiffs’ shifting position makes it impossible for Moderna to negotiate in
`good faith. We will note as such should Plaintiffs declare impasse and move to compel for OUS discovery.
`
`Yan-Xin Li
`------------------------------------------------------------
`KIRKLAND & ELLIS LLP
`555 California Street, San Francisco, CA 94104
`T +1 415 439 1618
`------------------------------------------------------------
`yanxin.li@kirkland.com
`
`From: Haunschild, Philip <phaunschild@wc.com>
`Sent: Tuesday, January 2, 2024 6:31 PM
`To: Li, Yan Xin <yanxin.li@kirkland.com>; Genevant Team <GenevantTeam@wc.com>; Arbutus_MoFo
`<Arbutus MoFo@mofo.com>; *jshaw@shawkeller.com <jshaw@shawkeller.com>; 'kkeller@shawkeller.com'
`<kkeller@shawkeller.com>; 'nhoeschen@shawkeller.com' <nhoeschen@shawkeller.com>
`Cc: #KEModernaSpikevaxService <KEModernaSpikevaxService@kirkland.com>; 'jblumenfeld@morrisnichols.com'
`<jblumenfeld@morrisnichols.com>; 'began@mnat.com' <began@mnat.com>; 'tmurray@morrisnichols.com'
`<tmurray@morrisnichols.com>
`Subject: RE: Arbutus v. Moderna (22 cv 252) // OUS Discovery
`
`Yan Xin,
`
`1
`
`

`

`Case 1:22-cv-00252-MSG Document 193-14 Filed 01/16/24 Page 3 of 6 PageID #: 12752
`
`Your email simultaneously asserts that the parties are not at an impasse while declaring unequivocally that “Moderna
`does not agree with Plaintiffs’ position that ‘discovery about batches manufactured [abroad] and used abroad’ is
`relevant” and refusing to provide a single document Plaintiffs have requested. We have repeatedly explained, including
`in our correspondence below, that Plaintiffs are seeking this discovery to assess whether Moderna’s sales in fact
`occurred in the U.S., and whether these sales infringed the Patents in Suit, a point that Moderna acknowledged was
`relevant on the parties’ meet and confers in March and April 2023. See May 11, 2023 Letter from L. Cash at 4. Your
`response to the extensive caselaw we have cited—including binding Federal Circuit caselaw—ignores the uniform
`conclusion of these cases that information regarding whether a sale occurred in the U.S. is relevant to determining
`whether there is an infringing sale, regardless of where a product is made or used. And your attempt to distinguish the
`caselaw on the basis that these cases involve exports and imports to the United States ignores multiple cases cited
`below and in separate correspondence in which discovery was not limited solely to products that were imported or
`exported into or from the United States. See, e.g., Carnegie Mellon Univ. v. Marvell Tech. Grp., Ltd., 807 F.3d 1283, 1310
`(Fed. Cir. 2015); Cal. Inst. of Tech. v. Broadcom Ltd., 25 F.4th 976, 992 (Fed. Cir. 2022); MLC Intell. Prop., LLC v. Micron
`Tech., Inc., No. 14 CV 03657 SI, 2018 WL 6175982, at *2 (N.D. Cal. Nov. 26, 2018); McGinley v. Luv N' Care, Ltd., No. CV
`17 0821, 2018 WL 9814589, at *4 (W.D. La. Sept. 10, 2018) (“to the extent that a sale occurs within the United States,
`products not made or imported into the United States may be included in determining royalties”); Polaris Innovations
`Ltd. v. Kingston Tech. Co., No. cv 00300 CJC RAOX, 2017 WL 3275615, at *5 (C.D. Cal. Feb. 14, 2017). Moderna may
`disagree on the ultimate merits of whether its sales occurred in the United States, but as the authority we have cited
`notes, there is no requirement that a plaintiff “essentially has to win before it can have discovery of that which is
`relevant to the question of whether [the defendant] is an infringer.” Murata Mfg. Co. v. Bel Fuse, Inc., 422 F. Supp. 2d
`934, 946 (N.D. Ill. 2006). While your most recent email states without support that Moderna’s products were “sold to
`customers abroad,” Plaintiffs are entitled to the discovery to assess that fact.
`
`We have been meeting and conferring about these requests for ten months. If Moderna has a good faith offer to make
`about documents it will produce in response to RFP Nos. 51, 53, 60, 64, 69, 74, 75, 81, 83, 97, and 174, as well as
`Interrogatories 6 and 11, by COB tomorrow, we will consider your position. Otherwise, the parties are in fact at an
`impasse, and we will seek the Court’s assistance in obtaining this discovery.
`
`Thank you,
`
`Philip N. Haunschild
`Associate | Williams and Connolly LLP
`680 Maine Avenue SW, Washington, DC 20024
`202 434 5979 | phaunschild@wc.com | www.wc.com
`
`From: Li, Yan Xin <yanxin.li@kirkland.com>
`Sent: Friday, December 22, 2023 4:26 PM
`To: Haunschild, Philip <phaunschild@wc.com>; Genevant Team <GenevantTeam@wc.com>; Arbutus_MoFo
`<Arbutus MoFo@mofo.com>; *jshaw@shawkeller.com <jshaw@shawkeller.com>; 'kkeller@shawkeller.com'
`<kkeller@shawkeller.com>; 'nhoeschen@shawkeller.com' <nhoeschen@shawkeller.com>
`Cc: #KEModernaSpikevaxService <KEModernaSpikevaxService@kirkland.com>; 'jblumenfeld@morrisnichols.com'
`<jblumenfeld@morrisnichols.com>; 'began@mnat.com' <began@mnat.com>; 'tmurray@morrisnichols.com'
`<tmurray@morrisnichols.com>
`Subject: RE: Arbutus v. Moderna (22 cv 252) // OUS Discovery
`
`Philip:
`
`2
`
`

`

`Case 1:22-cv-00252-MSG Document 193-14 Filed 01/16/24 Page 4 of 6 PageID #: 12753
`
`If Plaintiffs actually explained the relevance of the OUS related materials that you seek, the parties would not be in this present
`situation. Indeed, Plaintiffs’ demand for information concerning Moderna’s OUS batches morphed from all testing, analyses, and
`collection of COAs to an “initial” request for all OUS related contracts, which Plaintiffs only raised for the first time in the parties’
`November 17 meet and confer. This is hardly “precise[]” as you allege. Moreover, as Moderna has explained since the onset,
`collecting all testing, analysis, and COAs for every one of the OUS batches is incredibly burdensome and not
`proportionate. Collection and production of all OUS related contracts would similarly require enormous burden, including
`addressing third party confidentiality issues, which is not proportionate to the needs of the case.
`
`Moderna further responded to the “extensive caselaw” that Plaintiffs cited in their November 15 and 20 emails in our December 7
`email. Your recitation yet again does not change the fact that Moderna’s “substantial activities” of these OUS batches for which
`Plaintiffs seek discovery are manufactured abroad, sold to customers abroad, and not imported into the United States—a point
`Plaintiffs continue to ignore because it does not serve their burdensome fishing expedition into information that is not relevant to
`the parties’ claims and defenses. Your newly identified cases overlook the distinguishable facts of this case. Apeldyn Corp. v. AU
`Optronics Corp., No. 08 568, 2010 WL 11470585, at *1 (D. Del. Apr. 12, 2010) (Court noted defendant’s excuse that “it does not
`know where its products go is not good enough to avoid the production of documents”); Abiomed, Inc. v. Maquet Cardiovascular
`LLC, No. 16 10914, 2019 WL 13089050, at *1 (D. Mass. June 21, 2019) (foreign sales sought were for products whose components
`were exported from the United States); Murata Mfg. Co. v. Bel Fuse, Inc., 422 F. Supp. 2d 934, 945 (N.D. Ill. 2006) (based on
`plaintiff’s claim that defendant was inducing non party component manufacturers to incorporate infringing component into their
`products to import and sell in the United States); MLC Intell. Prop., LLC v. Micron Tech., Inc., No. 14 3657, 2018 WL 6175982, at *2
`(N.D. Cal. Nov. 26, 2018) (Court noting defendant’s declarant stated information sought was “readily available”).
`
`Moreover, the cases you cite now suggest that Plaintiffs are seeking Moderna’s foreign sales—which is different than your
`November 17 request for Moderna’s OUS contracts and different from your prior broad request of all testing, analyses, and
`collection of COAs for each OUS batch. Even your email below pivots to seeking “executed contracts” and “documents evidencing
`their negotiation, execution, individual purchases, or marketing documents.” This only emphasizes Plaintiffs’ ever shifting position
`as to what exactly Plaintiffs seek concerning Moderna’s OUS batches. Moderna does not agree with Plaintiffs’ position that
`“discovery about batches manufactured [abroad] and used abroad” is relevant.
`
`For the reasons that Plaintiffs argue Moderna cannot “unilaterally declare a dispute premature,” Plaintiffs similarly cannot
`unilaterally declare impasse where Moderna has attempted in good faith to understand and respond to Plaintiffs’ unreasonable and
`changing demands. Moderna reserves all rights if Plaintiffs move prematurely.
`
`Yan-Xin Li
`------------------------------------------------------------
`KIRKLAND & ELLIS LLP
`555 California Street, San Francisco, CA 94104
`T +1 415 439 1618
`------------------------------------------------------------
`yanxin.li@kirkland.com
`
`From: Haunschild, Philip <phaunschild@wc.com>
`Sent: Thursday, December 21, 2023 3:58 PM
`To: Li, Yan Xin <yanxin.li@kirkland.com>; Genevant Team <GenevantTeam@wc.com>; Arbutus_MoFo
`<Arbutus MoFo@mofo.com>; *jshaw@shawkeller.com <jshaw@shawkeller.com>; 'kkeller@shawkeller.com'
`<kkeller@shawkeller.com>; 'nhoeschen@shawkeller.com' <nhoeschen@shawkeller.com>
`Cc: #KEModernaSpikevaxService <KEModernaSpikevaxService@kirkland.com>; 'jblumenfeld@morrisnichols.com'
`<jblumenfeld@morrisnichols.com>; 'began@mnat.com' <began@mnat.com>; 'tmurray@morrisnichols.com'
`<tmurray@morrisnichols.com>
`Subject: RE: Arbutus v. Moderna (22 cv 252) // OUS Discovery
`
`Yan Xin,
`
`We disagree that any motion would be premature. Plaintiffs have repeatedly explained the relevance of the materials
`we have requested and have cited extensive caselaw, including most recently during the parties’ meet and confer on
`November 17, and in our emails on November 15 and November 20. As we have now explained a number of times,
`
`3
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`

`

`Case 1:22-cv-00252-MSG Document 193-14 Filed 01/16/24 Page 5 of 6 PageID #: 12754
`
`regardless of whether batches were manufactured and used outside of the United States, Plaintiffs are entitled to
`discovery about whether sufficient activities surrounding the sale occurred within the United States (for example, from
`Moderna’s headquarters in Massachusetts) to constitute an act of infringement in the United States. See, e.g., 28 U.S.C.
`271(a); Carnegie Mellon Univ. v. Marvell Tech. Grp., Ltd., 807 F.3d 1283, 1310 (Fed. Cir. 2015) (products “not made or
`used in, or imported into, the United States” may infringe if there is a “domestic location of sale”). In your December 7
`email, you acknowledged that to determine whether a sale occurred in the United States, “’the key question’ is ‘whether
`there were such substantial activities in the United States.’” December 7, 2023 Email from Y. Li (quoting Cal. Inst. of
`Tech. v. Broadcom Ltd., 25 F.4th 976, 992 (Fed. Cir. 2022). That is precisely the question that Plaintiffs are trying to
`assess, and it is entirely improper for Moderna to insist that its ipse dixit should control, rather than providing discovery
`on this issue. See, e.g., Apeldyn Corp. v. AU Optronics Corp., 2010 WL 11470585, at *1 (D. Del. Apr. 12, 2010); Abiomed,
`Inc. v. Maquet Cardiovascular LLC, No. CV 16 10914 FDS, 2019 WL 13089050, at *1, n.1 (D. Mass. June 21, 2019)
`(granting discovery into foreign sales where Plaintiff had not even pleaded a theory of infringement under § 271(f));
`Murata Mfg. Co. v. Bel Fuse, Inc., 422 F.Supp.2d 934, 946 (N.D. Ill. 2006) (§ 271(f) case emphasizing there is no
`requirement that a plaintiff “essentially has to win before it can have discovery of that which is relevant to the question
`of whether [the defendant] is an infringer”); MLC Intell. Prop., LLC v. Micron Tech., Inc., No. 14 CV 03657 SI, 2018 WL
`6175982, at *2 (N.D. Cal. Nov. 26, 2018) (compelling discovery of worldwide sales information).
`
`Moderna may disagree with the precedent compelling the discovery that Plaintiffs have sought, but Moderna cannot
`unilaterally declare a dispute premature by simply asking us to re explain what we have said multiple times before. Nor
`can Moderna point to its production of its regulatory files and other documents as resolving the scope of what Plaintiffs
`have requested concerning Moderna’s OUS batches. Moderna has refused to provide its executed contracts for the sale
`of the Accused Product with entities outside the United States, let alone documents evidencing their negotiation,
`execution, individual purchases, or marketing documents.
`
`If Moderna agrees that discovery about batches manufactured and used abroad is relevant, and that it will negotiate in
`good faith over the documents it will provide, we will consider your position. Please confirm that clearly in writing by
`4:00 PM tomorrow or we will continue to understand that the parties are at an impasse over this issue and seek the
`Court’s assistance in compelling discovery.
`
`Thank you,
`
`Philip N. Haunschild
`Associate | Williams and Connolly LLP
`680 Maine Avenue SW, Washington, DC 20024
`202 434 5979 | phaunschild@wc.com | www.wc.com
`
`From: Li, Yan Xin <yanxin.li@kirkland.com>
`Sent: Wednesday, December 20, 2023 12:11 PM
`To: Genevant Team <GenevantTeam@wc.com>; Arbutus_MoFo <Arbutus MoFo@mofo.com>; *jshaw@shawkeller.com
`<jshaw@shawkeller.com>; 'kkeller@shawkeller.com' <kkeller@shawkeller.com>; 'nhoeschen@shawkeller.com'
`<nhoeschen@shawkeller.com>
`Cc: #KEModernaSpikevaxService <KEModernaSpikevaxService@kirkland.com>; 'jblumenfeld@morrisnichols.com'
`<jblumenfeld@morrisnichols.com>; 'began@mnat.com' <began@mnat.com>; 'tmurray@morrisnichols.com'
`<tmurray@morrisnichols.com>
`Subject: Arbutus v. Moderna (22 cv 252) // OUS Discovery
`
`Dear Counsel:
`
`4
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`

`

`Case 1:22-cv-00252-MSG Document 193-14 Filed 01/16/24 Page 6 of 6 PageID #: 12755
`
`Footnote 1 of Plaintiffs’ December 15, 2023 letter to the Court states “[t]he parties also dispute discovery concerning batches
`manufactured overseas, which Plaintiffs allege were sold or offered for sale (and thereby infringed) in the U.S. Plaintiffs are filing a
`separate motion on this dispute, but for clarity, seek samples from all Moderna’s batches, including those manufactured overseas.”
`
`As an initial matter, any motion Plaintiffs intend to file concerning discovery of Moderna’s batches manufactured outside of the
`United States (“OUS”) is premature, as Plaintiffs have not explained the relevance of such information and how it is within the scope
`of Plaintiffs’ claims in this action, i.e., under 35 U.S.C. § 271(a). See 12/7/2023 Y. Li Email. Plaintiffs cannot ignore authority that the
`scope of their infringement claim “appl[ies] only domestically.” Cal. Inst. of Tech. v. Broadcom Ltd., 25 F.4th 976, 992 (Fed. Cir.
`2022). To date, Plaintiffs have not made clear what their theory is for requesting OUS discovery. It appears that Plaintiffs are simply
`dissatisfied with the fact that Moderna’s OUS batches are manufactured OUS, sold to customers OUS, and not imported into the
`United States—a point the parties’ prior correspondence acknowledge and agree—and seek discovery to prove a negative. See also
`Kajeet, Inc. v. Qustodio, LLC, 2019 WL 8060078, at *13 (C.D. Cal. Oct. 22, 2019) (any alleged foreign exploitation of a purported
`patented invention “is not infringement at all,” and noting OUS discovery may be appropriate where a claim for infringement is
`made under § 271(f)).
`
`Any motion Plaintiffs intend to file is additionally premature given Moderna’s rolling productions. Moderna has provided almost a
`million pages of discovery to date and, per the parties’ agreement, will be making another large production this week. Plaintiffs
`should therefore review the information Moderna has and will produce to identify documents that may arguably support their
`theory for the relevance of OUS discovery. Should Plaintiffs actually articulate a basis for OUS discovery, Moderna is willing to
`consider a limited and further targeted collection.
`
`Best regards,
`Yan Xin
`
`Yan-Xin Li
`------------------------------------------------------------
`KIRKLAND & ELLIS LLP
`555 California Street, San Francisco, CA 94104
`T +1 415 439 1618
`F +1 415 439 1500
`------------------------------------------------------------
`yanxin.li@kirkland.com
`
`The information contained in this communication is confidential, may be attorney-client privileged, may constitute inside information, and is intended only
`for the use of the addressee. It is the property of Kirkland & Ellis LLP or Kirkland & Ellis International LLP. Unauthorized use, disclosure or copying of
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`you.
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`The information contained in this communication is confidential, may be attorney-client privileged, may constitute inside information, and is intended only
`for the use of the addressee. It is the property of Kirkland & Ellis LLP or Kirkland & Ellis International LLP. Unauthorized use, disclosure or copying of
`this communication or any part thereof is strictly prohibited and may be unlawful. If you have received this communication in error, please notify us
`immediately by return email or by email to postmaster@kirkland.com, and destroy this communication and all copies thereof, including all attachments.
`
`The information contained in this communication is confidential, may be attorney-client privileged, may constitute inside information, and is intended only
`for the use of the addressee. It is the property of Kirkland & Ellis LLP or Kirkland & Ellis International LLP. Unauthorized use, disclosure or copying of
`this communication or any part thereof is strictly prohibited and may be unlawful. If you have received this communication in error, please notify us
`immediately by return email or by email to postmaster@kirkland.com, and destroy this communication and all copies thereof, including all attachments.
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`5
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`