Case 1:22-cv-00252-MSG Document 210-4 Filed 02/02/24 Page 1 of 4 PageID #: 14271
`Case 1:22-cv-00252-MSG Document 210-4 Filed 02/02/24 Page 1 of 4 PagelD #: 14271
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`EXHIBIT D
`EXHIBIT D
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`Case 1:22-cv-00252-MSG Document 210-4 Filed 02/02/24 Page 2 of 4 PageID #: 14272
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`Mark C. McLennan
`To Call Writer Directly:
`+1 212 909 3451
`mark.mclennan@kirkland.com
`
`By Email
`
`Anthony Sheh
`Williams & Connolly LLP
`680 Maine Ave SW
`Washington, DC 20024
`asheh@wc.com
`
`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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`November 6, 2023
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`Shaelyn K. Dawson
`Morrison & Foerster LLP
`425 Market Street
`San Francisco, CA, 94105
`shaelyndawson@mofo.com
`
`Facsimile:
`+1 212 446 4900
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`Re: Arbutus Biopharma Corporation et al. v. Moderna, Inc. et al., C.A. No. 22-
`252-MSG (D. Del.) – Moderna’s R&D Documents
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`Dear Tony:
`
` We write in response to your October 6, 2023 letter, as well as Plaintiffs’ October 9, 2023
`letters, to the extent they cover the same topic of Moderna’s research and development documents.
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`Plaintiffs’ Attempt to Dramatically Expand the Scope of Discovery to
`(a)
`Unaccused Products is Improper and Wholly Inconsistent with its Prior Positions
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`Regarding Plaintiffs’ allegations concerning purported “copying” of “Plaintiffs’ lipid molar
`ratios” and its alleged relevance to willfulness, we note that Plaintiffs continue to fail to
`acknowledge that: (1) Plaintiffs have not confirmed whether the molar ratio they point to actually
`originated with Plaintiffs, (2) the lipid molar ratio you point to does not appear in the asserted
`patents, (3) many of the unaccused pipeline products you have pointed to are protected by safe
`harbor, and could not constitute acts of infringement even if they were relevant in this case, (4)
`Plaintiffs allege that Moderna had a license for several of those unaccused and irrelevant
`pipeline products, which you did not dispute during recent meet-and-confers; thus according to
`Plaintiffs, those unaccused and licensed products are “obviously irrelevant.” LKQ Corp. v. Gen.
`Motors Co., No. 20 C 2753, 2021 WL 4127326, at *1 (N.D. Ill. Sept. 9, 2021) (denying motion
`to compel, noting that “documents showing the sale of parts that are not under patent – or
`are perhaps licensed – is obviously irrelevant”
`to arguments of willfulness based on
`purported copying), (5) Plaintiffs have no “copying” or “objective indicia” contentions,
`because Plaintiffs have improperly refused to respond to Moderna’s interrogatory.
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`You do not explain how these unaccused products could be “directly and materially relevant
`to infringement” and “potentially other [unspecified] issues.” Plaintiffs’ “suspicion and speculation”
`“is not enough to render the requested discovery relevant.” Ethicon LLC v. Intuitive Surgical, Inc.,
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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 210-4 Filed 02/02/24 Page 3 of 4 PageID #: 14273
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`Anthony Sheh; Shaelyn K. Dawson
`November 6, 2023
`Page 2
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`No. CV 17-871-LPS-CJB, 2018 WL 1392341, at *2–3 (D. Del. Feb. 12, 2018) (citing Micro
`Motion, Inc. v. Kane Steel Co., Inc., 894 F.2d 1318, 1326, 1327 (Fed. Cir. 1990) (“The discovery
`rules are designed to assist a party to prove a claim it reasonably believes to be viable without
`discovery, not to find out if it has any basis for a claim.”) (emphasis in original)). Plaintiffs’ latest
`demands are also inconsistent with Arbutus’s positions during the IPR appeals, where Plaintiffs
`argued that Moderna’s other pipeline products were irrelevant to its COVID-19 Vaccine. Arbutus
`May 11, 2023 Response Brief in CAFC No. 2020-2329 at 5 (referring to the parties’ licensing
`history as “stale” and arguing that “None of these statements [about licensing] relates in any way to
`Moderna’s mRNA-1273 COVID vaccine, which did not even exist at the time they were made.”).
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`Despite the Lack of Relevance, Moderna Has Already Agreed to Far
`(b)
`More Than Proportionate Discovery
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`As we have previously stated, we disagree with your accusations that Moderna is improperly
`limiting the scope of its production as to this issue. Your statement referencing “Moderna’s refusal
`to produce highly relevant documents regarding the research and development that led to the
`Accused Product,” Sheh Oct. 6 letter at 1, is plainly inaccurate given the broad scope of documents
`Moderna has already agreed to produce, totaling more than 50 separate search strings hitting on
`200,000 plus documents, on top of the more than 400,000 pages of technical documentation that
`Moderna has already produced. However, it seems that the parties continue to talk past each other
`as to the scope of Moderna’s production with respect to its research and development efforts, so in
`an effort to ease Plaintiffs’ alleged concerns about the issue and avoid unnecessary disputes,
`Moderna provides the following information as to its approach to collection and review of the
`documents at issue. If Plaintiffs persist in their endless demands, please explain in detail how
`Plaintiffs are searching through their non-custodial repositories for R&D Documents, mRNA-LNP
`Formulation Development, and Licensing documents.
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`With respect to email ESI, Moderna is not limiting its production solely to documents
`referring to the COVID-19 vaccine, nor can reviewers reasonably be expected to determine what
`R&D efforts would have led to the COVID-19 vaccine. Rather, Moderna will be producing non-
`privileged documents, that hit upon the agreed search terms relating to, for example, the use of
`LNPs for delivery of mRNA, comparisons of Moderna’s SM-family lipids against MC3, and the
`research and development of the specific lipid ratio or mole percentages for Moderna’s LNP
`technology. Moderna will likewise produce non-privileged documents that hit upon its search terms
`that discuss modifications of the lipid molar ratios in the context of Moderna’s LNP formulations,
`even where such discussion is in the context of an indication other than Moderna’s COVID-19
`vaccine.
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`With respect to non-custodial documents, Moderna also collected from SharePoint sites and
`will apply the agreed-upon search terms to these documents. Because collection of the entirety of
`the company’s SharePoint data created over more than a decade is impractical, overly burdensome
`and not proportional to the needs of the case, SharePoint sites were identified for collection
`including sites related to the COVID-19 vaccine, as well as sites related to the broader LNP
`development and formulation efforts for the platform utilized in the COVID-19 vaccine. This
`addresses Plaintiffs’ purported concern relating to Moderna’s agreement to produce non-privileged
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`Case 1:22-cv-00252-MSG Document 210-4 Filed 02/02/24 Page 4 of 4 PageID #: 14274
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`Anthony Sheh; Shaelyn K. Dawson
`November 6, 2023
`Page 3
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`“documents regarding the research and development that led to the Accused Product.” Oct. 6, 2023
`Letter. We will not continue to engage with Plaintiffs’ complaints that Moderna is not producing
`enough discovery, before the parties have even reached substantial completion of document
`production. We are sure once Moderna has completed its production that Plaintiffs will have
`voluminous relevant discovery that is far more than proportional to the needs of the case.
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`With respect to your commentary on the date ranges for certain search terms, given that the
`parties concluded their search term discussions today, including date ranges and sources to which
`those terms will be applied, we trust Plaintiffs have addressed their concerns through their revisions
`of the date ranges in the context of those discussions.
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`Finally, with respect to your query regarding “formulation development reports,” Mahaffy
`Oct. 9 letter at 5, we confirm that Moderna has or will collect and produce any reports that are
`responsive to what Moderna has agreed to produce, subject to Moderna’s responses and objections.
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`Sincerely,
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`/s/ Mark C. McLennan
`Mark C. McLennan
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