Case 1:22-cv-00252-MSG Document 325-8 Filed 05/20/24 Page 1 of 54 PageID #: 20140
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`ARBUTUS BIOPHARMA CORPORATION
`and GENEVANT SCIENCES GmbH,
`
`Plaintiffs,
`
`
`
`v.
`
`MODERNA, INC. and MODERNATX, INC.
`
`Defendants.
`
`MODERNA, INC. and MODERNATX, INC.,
`
`Counterclaim-Plaintiffs,
`
`v.
`
`ARBUTUS BIOPHARMA CORPORATION
`and GENEVANT SCIENCES GmbH,
`
`Counterclaim-Defendants.
`
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`
`C.A. No. 22-252 (MSG)
`
`HIGHLY CONFIDENTIAL –
`OUTSIDE COUNSEL’S EYES ONLY -
`FILED UNDER SEAL
`
`LETTER TO THE HONORABLE MITCHELL S. GOLDBERG IN OPPOSITION
`TO PLAINTIFFS’ MOTION TO COMPEL
`SEARCH OF STÉPHANE BANCEL’S DOCUMENTS
`
`OF COUNSEL:
`
`Patricia A. Carson, Ph.D.
`Jeanna M. Wacker, P.C.
`Mark C. McLennan
`Caitlin Dean
`N. Kaye Horstman
`Shaoyao Yu
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, NY 10022
`(212) 446-4800
`
`Alina Afinogenova
`KIRKLAND & ELLIS LLP
`
`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`Jack B. Blumenfeld (#1014)
`Brian P. Egan (#6227)
`Travis J. Murray (#6882)
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899
`(302) 658-9200
`jblumenfeld@morrisnichols.com
`began@morrisnichols.com
`tmurray@morrisnichols.com
`
`Attorneys for Defendants
`
`

`

`Case 1:22-cv-00252-MSG Document 325-8 Filed 05/20/24 Page 2 of 54 PageID #: 20141
`
`
`
`200 Clarendon Street
`Boston, MA 02116
`(617) 385-7500
`
`Yan-Xin Li
`KIRKLAND & ELLIS LLP
`555 California Street, 27th Floor
`San Francisco, CA 94104
`(415) 439-1400
`
`April 26, 2024
`
`
`
`
`
`2
`
`

`

`Case 1:22-cv-00252-MSG Document 325-8 Filed 05/20/24 Page 3 of 54 PageID #: 20142
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`
`
`Dear Judge Goldberg:
`
`Plaintiffs’ motion to compel discovery from Moderna’s CEO, Stéphane Bancel, is
`unwarranted. D.I. 285. The scope of discovery includes material “relevant to any party’s claim or
`defense and proportional to the needs of the case” considering “whether the burden or expense of
`the proposed discovery outweighs its likely benefit.” Fed. R. Civ. P. 26(b)(1). Although Plaintiffs’
`renewed motion does not reference their original discovery requests, Moderna objected to
`production of documents from Mr. Bancel as overbroad, unduly burdensome, calling for
`information not relevant to claims or defenses, not proportional to the needs of the case, and
`duplicative of other requests. D.I. 133, Ex. A at 2. Moderna stands by its objections. Further,
`Plaintiffs have failed to provide “particularized information which demonstrates the need for an
`expanded search” to include an additional ESI custodian. Frontier Commc’ns Corp. v. Google Inc.,
`No. CV 10-545-GMS, 2014 WL 12606321, at *4 (D. Del. Feb. 3, 2014). Plaintiffs filed this motion
`claiming to be missing discovery, but they either already have that information or have not
`demonstrated Mr. Bancel’s documents would yield unique, relevant substantive information. As
`CEO, Mr. Bancel oversees company operations, but, as with any leader, delegates responsibility.
`Moderna has collected, searched for, and produced documents from his delegates. That Mr. Bancel
`appears in a fraction of produced emails—emails that hit on Plaintiffs’ search terms—confirms
`Moderna’s identified custodians were the most involved in relevant issues, rather than Mr. Bancel.
`
`To date, Plaintiffs have filed five motions to compel. D.I. 133, 161, 184, 285, 287.
`Moderna’s efforts to compromise only lead to increasing discovery demands from Plaintiffs. By
`the end of next week, Moderna will have produced over 2.4 million pages of documents. This
`includes ESI from 10 custodians in this litigation, numerous non-custodial files, and documents
`produced in other litigations.1 In contrast, Plaintiffs have only produced just over 960,000 pages
`of documents.2 Plaintiffs’ newly proposed searches include entirely new terms, not found in the
`search strings agreed upon after five months of ESI search term negotiations. See Ex. S (Apr. 10,
`2024 Dean E-mail) at 1. Plaintiffs’ motion should be denied, and in the alternative if it is granted,
`it should be at Plaintiffs’ expense, given the disproportionate burden Moderna will incur over the
`process Moderna has already undergone in producing three times as many documents as Plaintiffs.
`
`Government Negotiations Concerning the Sale of the Accused Product
`
`As CEO, Mr. Bancel’s involvement in occasional high-level talks with the U.S.
`Government is unsurprising. This is not sufficient to show that Mr. Bancel has unique knowledge
`that is relevant to specific claims or defenses such that his documents should be searched,
`reviewed, and produced. See D.I. 134, Exs. N, O, Sprint Commc’ns Co. v. Cequel Commc’ns, LLC,
`No. 18-1752-RGA, D.I. 100, (D. Del. Jan. 2, 2020) (overruling objections to Special Master order
`(D.I. 85) denying motion to compel production of executive’s ESI, finding her attendance at an
`important meeting was not sufficient to show she should be an ESI custodian and have her email
`searched). Documents Plaintiffs cite demonstrate that Mr. Bancel passed initial communications
`
`1 Moderna’s production of documents from the Moderna v. Pfizer litigation provides Plaintiffs
`documents searched from custodians above the 10 set out in the Delaware Default Standard.
`2 Notably, Plaintiffs have withheld over 18,000 documents or document families as privileged,
`while producing fewer than 100,000 documents.
`
`
`
`

`

`Case 1:22-cv-00252-MSG Document 325-8 Filed 05/20/24 Page 4 of 54 PageID #: 20143
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`
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`to others at Moderna to provide substantive responses (Ex. C) or reached out to others to get
`necessary information (Ex. D). See also Ex. T (Apr. 5, 2024 McLennan Letter) at 4–8.
`
`Plaintiffs claim to be missing negotiations with the Government on price and timing, citing
`Mr. Bancel’s prior testimony about a letter he wrote to the Government. D.I. 285 at 2. Contrary to
`Plaintiffs’ assertion, in December 2023, Moderna produced a copy of Mr. Bancel’s letter written
`to individuals at the Government proposing pricing strategy. Notably, Mr. Bancel’s letter directs
`recipients to contact Hamilton Bennett to discuss the details of Moderna’s offer. Moderna also
`previously pointed Plaintiffs to other exemplary documents about pricing. Ex. T at 3–4.3 Plaintiffs
`also subpoenaed the U.S. Government, filling any gap that might exist in Moderna’s production.
`D.I. 70, 73. Further, Plaintiffs have failed to explain how pricing proposals are specifically relevant
`to any claims or defenses, especially where a contract includes the agreed-upon price.
`
`Moderna produced over 4,000 communications with the Government, including many
`from ESI custodian Ms. Bennett, the COVID-19 Global Product Development Lead for mRNA-
`1273 in 2020. Plaintiffs dismissively refer to her as a “lower-level custodian,” but, as Moderna’s
`document production shows, Ms. Bennett negotiated directly with the Government over the C-
`0100 Contract, on which she was named as representing Moderna, and executed versions of
`Moderna’s Government contracts are addressed to Ms. Bennett—not to Mr. Bancel. Ex. T at 7.
`
`Negotiations with Plaintiffs and Their Predecessors
`
`Moderna produced documents involving communications with Plaintiffs and predecessors,
`including documents involving Plaintiffs’ employees whom Plaintiffs did not select as ESI
`custodians. Ex. T at 15–18. Further, Plaintiffs acknowledge that they do not lack communications
`between Moderna and Plaintiffs because such information should already be in Plaintiffs’
`possession, custody, or control. D.I. 285 at 2. Instead, Plaintiffs appear to be seeking Moderna’s
`internal communications about discussions with Plaintiffs. Id. However, during the parties’ meet-
`and-confer, when asked why Plaintiffs had not produced certain emails about negotiations with
`Moderna, Plaintiffs claimed that internal communications about the other would be privileged. Ex.
`T at 17. It should come as no surprise that Moderna’s documents likewise implicate privilege.
`
`Negotiations with Licensing Counterparties
`
`Plaintiffs claim to be missing emails concerning patent licensing negotiations. Yet,
`Moderna produced ESI from two custodians most knowledgeable about patent licensing—Said
`Francis, Moderna’s Chief Business Officer, and Stephen Hoge, Moderna’s President. Plaintiffs
`point to an email exchange between two CEOs to argue that Mr. Bancel must have relevant, unique
`knowledge. D.I. 285 at 3; Ex. K. On the contrary, this email exchange, which did not lead to a
`patent license agreement or collaboration, shows that other individuals were involved in
`discussions, including Mr. Hoge. Ex. K; Ex. T at 10–15. Plaintiffs’ other support—that Mr. Bancel
`signed agreements—does not indicate that he was “personally engaged in discussions with
`licensing partners.” Instead, it confirms the unsurprising fact that, as CEO, Mr. Bancel has
`authority to sign contracts as a Moderna officer. Plaintiffs have failed to articulate what discovery
`
`3 Plaintiffs also point to an email about Moderna’s contract for their Zika virus program, which
`would have limited relevance to issues in this case. Ex. F.
`
`2
`
`

`

`Case 1:22-cv-00252-MSG Document 325-8 Filed 05/20/24 Page 5 of 54 PageID #: 20144
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`
`
`they actually seek and have failed to show that a search of Mr. Bancel’s documents would include
`any relevant information that go to disputed issues in this case.
`
`Plaintiffs Trivialize the Burden Additional Discovery Places on Moderna
`
`Plaintiffs discredit the burden of collecting, searching, reviewing, and producing ESI from
`an additional custodian, particularly when the parties are beginning depositions of almost 30
`individuals in the five weeks before close of fact discovery. Parties in cases cited by Plaintiffs
`ordering production from additional custodians sought significantly more particularized
`information than Plaintiffs have articulated or demonstrated specific individuals had unique,
`relevant information months prior to the deadline for substantial document production. Ex. R, Oral
`Order D.I. 247, United States v. Gilead Scis., Inc., No. 19-CV-2103 (D. Del. Dec. 21, 2021)
`(granting limited search of additional custodian, an assistant to another custodian (but not a
`requested C-suite executive), as to one RFP); In re Facebook, Inc. Consumer Priv. User Profile
`Litig., No. 3:18-MD-02843-VC-JSC, 2021 WL 10282213, at *3 (N.D. Cal. Nov. 14, 2021) (finding
`the benefit of discovery from additional custodians outweighed a burden on defendant where there
`“remain[ed] ample time . . . to complete this targeted collection and review with an appropriate
`protocol”). Plaintiffs’ letter does not point to any specific document requests or responses, and
`until running to the Court, Plaintiffs pressed Moderna for materials that neither party agreed to
`produce. Ex. T at 10–15. Additionally, as noted, fact discovery closes in less than five weeks.
`
`Plaintiffs have already received a disproportionately high volume of document discovery.
`In addition to custodial files from 10 custodians for this case (including the President of Moderna),
`Moderna has produced or will produce numerous non-custodial files, regulatory documents from
`unaccused products, thousands of product samples, documents produced in other litigations, and
`Moderna board materials. The Federal Rules do not provide for unlimited discovery. Hickman v.
`Taylor, 329 U.S. 495, 507 (1947) (“[D]iscovery, like all matters of procedure, has ultimate and
`necessary boundaries.”); see also Fed. R. Civ. P. 26(b)(1). Any relevance of Mr. Bancel’s
`documents at this point is not proportional, where the burden and expense of his documents
`outweighs their likely benefit. Plaintiffs argue that their inflated damages ask supports their endless
`discovery demands. D.I. 285 at 3. But Plaintiffs refused to produce the discovery they demand
`from Moderna, including material from former CEOs involved in licensing. Ex. T at 10–15.
`
`Should the Court nonetheless order search of Mr. Bancel’s documents, Moderna
`respectfully requests that costs and fees be shifted to Plaintiffs, as contemplated by the Court for
`Plaintiffs’ other requests. Ex. U (Feb. 22, 2024 Hr’g Tr.) at 84:19–85:1; Ex. V (Feb. 22, 2024
`Sealed Hr’g Tr.) at 17:9–20. For efficiency, any searches should be limited to a targeted subset of
`the search terms the parties originally negotiated. The attorney time to supervise collection, review
`for responsiveness and privilege, and analyze for third-party confidentiality is considerable. Given
`the burdensome discovery that Moderna has already undertaken to produce 2.4 million pages,
`Plaintiffs should bear expenses associated with discovery sought from an additional custodian.
`
`*
`
`*
`
`*
`
`For the foregoing reasons, Moderna respectfully requests the Court deny Plaintiffs’ motion
`to compel discovery from Mr. Bancel, or in the alternative shift costs of any ordered discovery to
`Plaintiffs.
`
`3
`
`

`

`Case 1:22-cv-00252-MSG Document 325-8 Filed 05/20/24 Page 6 of 54 PageID #: 20145
`
`Respectfully,
`
`/s/ Brian P. Egan
`
`Brian P. Egan (#6227)
`
`cc:
`
`All Counsel of Record (via CM/ECF and electronic mail)
`
`4
`
`

`

`Case 1:22-cv-00252-MSG Document 325-8 Filed 05/20/24 Page 7 of 54 PageID #: 20146
`Case 1:22-cv-00252-MSG Document 325-8 Filed 05/20/24 Page 7 of 54 PagelD #: 20146
`
`EXHIBIT (cid:54)
`EXHIBITS
`
`

`

`Case 1:22-cv-00252-MSG Document 325-8 Filed 05/20/24 Page 8 of 54 PageID #: 20147
`
`Dean, Caitlin
`Lachman, Matthew; Horstman, N. Kaye; Li, Yan-Xin; "Arbutus MoFo"; Genevant Team; Nate R. Hoeschen
`(nhoeschen@shawkeller.com); Karen E. Keller (kkeller@shawkeller.com)
`#KEModernaSpikevaxService; Travis J. Murray (tmurray@morrisnichols.com); Jack Blumenfeld
`(jblumenfeld@morrisnichols.com); Egan, Brian P.
`RE: Genevant v. Moderna - Bancel Documents
`Wednesday, April 10, 2024 6:54:41 PM
`
`From:
`To:
`
`Cc:
`
`Subject:
`Date:
`
`Matt,
`
`In your latest email, Plaintiffs still have not disputed that neither party agreed to produce most of
`the categories of documents you claim to be missing, including emails concerning “potential
`collaboration agreements” and “potential licensing arrangements that did not result in executed
`license agreements.” See Plaintiffs’ letter dated March 20, 2024 and e-mails dated March 25, 2024
`and April 2, 2024. In our April 5, 2024 letter, we pointed out for other RFPs in Plaintiffs letter,
`Plaintiffs’ abandoned them entirely much earlier in discovery (e.g. RFPs 132–136, 170). For the small
`number of RFPs where Moderna actually agreed to produce documents, Plaintiffs ignore tens of
`thousands of emails Moderna has produced on those topics by cherry picking emails that include
`Mr. Bancel, all of which fail to show he has any unique involvement in those matters.
`
`The search terms proposed by Plaintiffs confirm Plaintiffs are improperly seek ng a o-o r f th
`The search terms proposed by Plaintiffs confirm Plaintiffs are improperly seeking a do-over of the
`entire ESI search term negotiation process Many of th
`
`
`
`
`
`
`entire ESI search term negotiation process. Many of the terms Plaintiffs proposed do not appear in
`any of the search strings agreed-upon during the parties’ five-months long ESI search term
`any of the search strings agreed-u on d ring the parties
`
`
`
`
`negotiation, including:
`negotiation, including:
`
`
`appropriation
`appropriation
`congress
`congress
`discount
`discount
`negotiate*
`negotiate*
`proposal
`proposal
`pric*
`pric*
`cost*
`cost*
`sale*
`sale*
`collaborat*
`collaborat*
`
`Axolabs
`Axolabs
`Merck
`Merck
`Alexion
`Alexion
`V rtex
`Vertex
`Chiesi
`Chiesi
`CytomX
`CytomX
`Cellscript
`Cellscript
`NIA D
`NIAID
`“Allergy and Infectious Disease ”
`“Allergy and Infectious Diseases”
`
`partner
`partner
`scale
`scale
`manufact*
`manufact*
`distrib*
`distrib*
`AstraZeneca
`AstraZeneca
`Roivant
`Roivant
`“Br ce Cousins”
`“Bruce Cousins”
`“Paul rennan”
`“Paul Brennan”
`LifeEd
`LifeEdit
`
`

`

`Case 1:22-cv-00252-MSG Document 325-8 Filed 05/20/24 Page 9 of 54 PageID #: 20148
`
`For these reasons and the reasons explained in our April 5 letter, Moderna does not agree to
`conduct additional searches from an additional custodian. Moderna has produced over 1.8 million
`pages of discovery and over 43,000 emails which hit on the search terms that Plaintiffs negotiated
`for months, almost double the number of e-mails produced by Plaintiffs. Plaintiffs have failed to
`show that any further email discovery is warranted from Moderna, let alone adding an 11th
`custodian.
`
`Best,
`Caitlin
`
`
`Caitlin Dean
`-----------------------------------------------------
`KIRKLAND & ELLIS LLP
`601 Lexington Ave, New York, NY 10022
`T +1 212 909 3099 M +1 929 262 2212
`F +1 212 446 4900
`-----------------------------------------------------
`caitlin.dean@kirkland.com
`
`
`From: Lachman, Matthew <MLachman@wc.com>
`Sent: Monday, April 8, 2024 8:33 PM
`To: Horstman, N. Kaye <kaye.horstman@kirkland.com>; Li, Yan-Xin <yanxin.li@kirkland.com>;
`'Arbutus_MoFo' <Arbutus_MoFo@mofo.com>; Genevant Team <GenevantTeam@wc.com>; Nate R.
`Hoeschen (nhoeschen@shawkeller.com) <nhoeschen@shawkeller.com>; Karen E. Keller
`(kkeller@shawkeller.com) <kkeller@shawkeller.com>
`Cc: #KEModernaSpikevaxService <KEModernaSpikevaxService@kirkland.com>; Travis J. Murray
`(tmurray@morrisnichols.com) <tmurray@morrisnichols.com>; Jack Blumenfeld
`(jblumenfeld@morrisnichols.com) <jblumenfeld@morrisnichols.com>; Egan, Brian P.
`<began@morrisnichols.com>
`Subject: RE: Genevant v. Moderna - Bancel Documents
`
`
`
`
`This message is from an EXTERNAL SENDER
`Be cautious, particularly with links and attachments.
`
`Mark,
`
`Moderna’s response failed to address many of the issues Plaintiffs have raised, including with
`respect to Mr. Bancel’s sworn testimony concerning his involvement in government negotiations
`and the decision to offer a discount, as well as the lack of documents relating to key licensing
`discussions he was involved in, including with Acuitas and some of the negotiations with Plaintiffs or
`
`

`

`Case 1:22-cv-00252-MSG Document 325-8 Filed 05/20/24 Page 10 of 54 PageID #: 20149
`
`their predecessors. Where Moderna did respond, it could only point to some degree of involvement
`by other Moderna employees, without addressing the unique role Mr. Bancel had in these areas.
`
`Since my prior letter,
`
`
`While we disagree with your portrayal of the facts concerning Mr. Bancel’s involvement, we do
`appreciate your offer to consider search terms for Mr. Bancel’s documents. Plaintiffs are willing to
`negotiate in good faith over search terms in order to avoid burdening the Court with this dispute,
`provided that Moderna will provide us with its positions promptly given the upcoming case
`deadlines. Our proposed search terms are below. Plaintiffs would also agree that Moderna can
`exclude correspondence on which one of Moderna’s other ESI custodians is in the to/from/cc fields.
`If Moderna is correct about the limits of Mr. Bancel’s unique involvement, there should be very little
`burden to these searches.
`
`Please let us know by Wednesday, April 10, 2024, if these search terms are acceptable to Moderna:
`
`
`((Government OR USG OR DOD OR HHS OR BARDA OR 0100 OR 0017 OR appropriation OR
`congress OR Perna OR Disbrow OR “Robert Johnson” OR “moncef.slaoui@hhs.gov” OR
`“gustave.f.perna@hhs.gov” OR “gary.disbrow@hhs.gov” OR “robert.johnson@hhs.gov”)
`W/30 (discount OR contract OR negotiate* OR proposal)) AND (mRNA-1273 OR COV* OR
`NCOV* OR Corona*)
`(Pric* OR Cost* OR Negotiat* OR Sale*) W/30 (mRNA-1273 OR COV* OR NCOV* OR Corona*)
`(mRNA-1273 OR COV* OR NCOV* OR Corona*) AND ((collaborat* OR partner) W/30 (scale OR
`manufact* OR distrib*)) [Date limited from February 15, 2020, to May 31, 2020]
`(Acuitas OR AstraZeneca OR Axolabs OR Merck OR Alexion OR Vertex OR Chiesi OR CytomX OR
`Cellscript OR NIAID OR “Allergy and Infectious Diseases” OR LifeEdit) W/30 (LNP OR license OR
`agreement OR patent* OR IP OR “intellectual property” OR encapsulat* OR ratio OR ratios)
`(Inex OR Protiva OR Tekmira OR Arbutus OR Genevant OR Roivant OR “Mark Murray” OR
`“Bruce Cousins” OR “Paul Brennan” OR Zorn OR “MMurray@tekmirapharm.com” OR
`“BCousins@tekmirapharm.com” OR “PBrennan@tekmirapharm.com”) W/30 (LNP OR license
`OR agreement OR patent* OR IP OR “intellectual property” OR encapsulat* OR ratio OR ratios)
`Agreed-upon patent terms (I-28 to I-32) that are identified in D.I. 206 Ex. CC
`
`
`Best,
`
`Matt
`
`
`

`

`Case 1:22-cv-00252-MSG Document 325-8 Filed 05/20/24 Page 11 of 54 PageID #: 20150
`Case 1:22-cv-00252-MSG Document 325-8 Filed 05/20/24 Page 11 of 54 PagelD #: 20150
`
`EXHIBIT (cid:55)
`EXHIBIT T
`
`

`

`Case 1:22-cv-00252-MSG Document 325-8 Filed 05/20/24 Page 12 of 54 PageID #: 20151
`
`Mark C. McLennan
`To Call Writer Directly:
`+1 212 909 3451
`mark.mclennan@kirkland.com
`
`
`
`
`
`By Email
`
`
`
`Matthew W. Lachman
`WILLIAMS & CONNOLLY LLP
`680 Maine Avenue SW
`Washington, DC 20024
`mlachman@wc.com
`
`
`
`
`
`Facsimile:
`+1 212 446 4900
`
`601 Lexington Avenue
`New York, NY 10022
`United States
`
`+1 212 446 4800
`
`www.kirkland.com
`
`April 5, 2024
`
`HIGHLY CONFIDENTIAL – OUTSIDE
`COUNSEL’S EYES ONLY
`
`Shaelyn K. Dawson
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, CA 94105
`shaelyndawson@mofo.com
`
`
`Re: Arbutus Biopharma Corporation et al. v. Moderna, Inc. et al., C.A. No.
`22-252-MSG (D. Del.) – Mr. Bancel’s Documents
`
`Dear Matt:
`
`I write in response to your letter dated March 20, 2024, and your emails dated March 25,
`2025 and April 2, 2025, regarding Plaintiffs’ baseless demand for the production of documents
`and ESI from Moderna’s CEO, Stéphane Bancel. Based on the meet-and-confer, we understand
`you want Moderna to apply search terms (which you have not yet identified) to his email,
`effectively asking Moderna to designate him as an 11th ESI custodian. Your claim to be
`“missing” relevant emails just days after Moderna produced thousands of additional emails
`demonstrates that Plaintiffs are not interested in assessing the discovery they have already
`received. As explained below, Plaintiffs claim be missing categories of documents that neither
`party agreed to produce, or otherwise overlook vast amounts of relevant discovery Moderna has
`already produced. We’re available to meet and confer early next week to discuss any remaining
`concerns.
`
`For investor communications and collaboration agreements, we would like Plaintiffs to
`be prepared to explain whether it will provide the same discovery it belatedly seeks from
`Moderna.
`
`Plaintiffs fail to show good cause for an 11th Custodian
`
`Plaintiffs still have failed to meet their burden of articulating “particularized information
`which demonstrates the need for an expanded search” beyond the 10 ESI custodians permitted
`
`Austin Bay Area Beijing Boston Brussels Chicago Dallas Hong Kong Houston London Los Angeles Miami Munich Paris Salt Lake City Shanghai Washington, D.C.
`
`
`

`

`Case 1:22-cv-00252-MSG Document 325-8 Filed 05/20/24 Page 13 of 54 PageID #: 20152
`
`
`
`
`
`Matthew W. Lachman
`Shaelyn K. Dawson
`April 5, 2024
`Page 2
`
`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); see also Sprint Commc’ns Co. v. Cequel
`Commc’ns, LLC, No. 18-1752-RGA, D.I. 100, (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). No good cause exists in view of the voluminous
`ESI Moderna produced from custodians more knowledgeable than Mr. Bancel on the categories
`Plaintiffs identified. The documents Moderna produced, including those you identify, confirm
`Moderna’s ESI custodians were appropriately identified. In addition, as explained below, the
`documents and public information called out in your letter do not support Plaintiffs’ arguments
`or establish that Mr. Bancel has unique knowledge. Moreover, on the parties’ April 3, 2024
`meet-and-confer, Plaintiffs refused to hold off until after the depositions of Moderna’s witnesses
`including Al Thomas, Hamilton Bennett, and Moderna’s President Stephen Hoge.
`
`Plaintiffs’ letter claims that “Moderna’s production contains only 56 emails from Mr.
`Bancel, and very few, if any, concern the key areas of his involvement that are relevant to this
`case,” which confirms Moderna’s identification of custodians was correct. Plaintiffs negotiated
`the search terms they were most interested in a five-month long process, resulting in production
`of over 1.8 million pages of discovery and over 43,000 emails which hit on those search terms.
`This is almost double the number of e-mails produced by Plaintiffs. That Mr. Bancel was not
`among the individuals involved in the subject matter of those documents confirms he did not
`have a unique and driving role in those issues.
`
`As Moderna explained, 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). Plaintiffs failed to identify a “unique firsthand, non-repetitive
`knowledge of the facts at issue” and have not “exhausted other less intrusive discovery
`methods.” Ever.Ag, LLC v. Milk Moovement, Inc., 2023 WL 3794312, at *1 (E.D. Cal. June 2,
`2023).
`
`
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`

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`Case 1:22-cv-00252-MSG Document 325-8 Filed 05/20/24 Page 14 of 54 PageID #: 20153
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`Matthew W. Lachman
`Shaelyn K. Dawson
`April 5, 2024
`Page 3
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`Government Negotiations Concerning the Sale of the Accused Products
`
`
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`As an initial matter, Plaintiffs’ arguments as to relevance fail. The hypothetical
`negotiation under the reasonable royalty analysis for Plaintiffs’ claim for damages is between
`Moderna and Plaintiffs for a license to the patents-in-suit—not a hypothetical negotiation
`between Moderna and customers for the sale of the accused product.
`
`Far from denying Plaintiffs discovery into Moderna’s negotiations with the U.S.
`Government, Moderna’s document production—which totals 4,000+ emails with the U.S.
`government—shows that Moderna has identified the most knowledgeable and most involved ESI
`custodians, specifically Hamilton Bennett, Stephen Hoge, and Al Thomas.
`
`For the first time on the parties’ April 3, 2024 meet-and-confer, Plaintiffs narrowed their
`request to internal communications concerning pricing negotiations in late summer 2020.
`Plaintiffs argued that they believed there should be internal Moderna e-mails discussing these
`negotiations based on a review of documents produced by the U.S. government, including e-
`mails from Mr. Bancel. But despite their agreement to promptly produce third-party productions,
`Plaintiffs had not done so before the meet-and-confer despite obviously having had time to
`review the production. Moreover, Moderna has produced internal documents regarding pricing
`negotiations with the government. For example, Moderna produced a June 27, 2020 e-mail chain
`attaching a presentation regarding Moderna’s initial proposal to the government regarding
`pricing. MRNA-GEN-01641524, MRNA-GEN-01641526.
`
`
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`

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`Case 1:22-cv-00252-MSG Document 325-8 Filed 05/20/24 Page 15 of 54 PageID #: 20154
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`Matthew W. Lachman
`Shaelyn K. Dawson
`April 5, 2024
`Page 4
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`
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`This e-mail chain includes custodians identified by Moderna including Stephen Hoge, Hamilton
`Bennett, and Christoph Brackmann. These are just examples, and a cursory review of Moderna’s
`production would confirm that many such emails exist.
`
`Ultimately, the documents produced by the U.S. government support Moderna’s position
`that shows that Moderna has identified the most knowledgeable and most involved ESI
`custodians.
`• HHS-0000464 – This calendar invitation from the U.S. government regarding a “Senior
`Leader Meeting w/ Moderna” includes Moderna’s President Stephen Hoge (an ESI
`custodian) as a representative for Moderna—not Mr. Bancel.
`
`
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`

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`Case 1:22-cv-00252-MSG Document 325-8 Filed 05/20/24 Page 16 of 54 PageID #: 20155
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`Matthew W. Lachman
`Shaelyn K. Dawson
`April 5, 2024
`Page 5
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`HHS-0000464 at 467
`
` HHS-0000617 – In this e-mail chain, Hamilton Bennett (an ESI custodian) sends a
`memorandum to the U.S. government regarding pricing.
`
` •
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`
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`

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`Case 1:22-cv-00252-MSG Document 325-8 Filed 05/20/24 Page 17 of 54 PageID #: 20156
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`Matthew W. Lachman
`Shaelyn K. Dawson
`April 5, 2024
`Page 6
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`
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`Moreover, none of the materials cited by Plaintiffs show Mr. Bancel was uniquely
`involved in any relevant aspect of the agreements with the U.S. Government.
`• MRNA-GEN-01086070 – In this email chain, when Mr. Bancel was contacted, he added
`Hamilton Bennett (an ESI custodian) and Juan Andres to the thread, stating that Ms. Bennett
`and Mr. Andres were working on the issues referenced, which was followed by Ms. Bennett
`providing substantive responses. Any initial contact of Mr. Bancel is immaterial and
`misattributed by the original sender as to who was involved in the substance of the
`communications and negotiations with the U.S. Government. This confirms Ms. Bennett was
`substantively involved.
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`Case 1:22-cv-00252-MSG Document 325-8 Filed 05/20/24 Page 18 of 54 PageID #: 20157
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`Matthew W. Lachman
`Shaelyn K. Dawson
`April 5, 2024
`Page 7
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`• MRNA-GEN-00872702 – Plaintiffs cite this meeting invite for the statement Mr. Bancel was
`a “leading participant in meetings with the Defense Department.” Yet, the meeting invite is
`to discuss clinical trials, which has no relevance to the issues in dispute. You did not dispute
`this during the meet-and-confer on April 3, 2024 and offered no relevance basis. As you
`know, Plaintiffs’ patents do not relate to clinical uses of vaccines let alone mRNA vaccines.
`Plaintiffs have not explained how discussions regarding to clinical trials relates to Plaintiffs’
`purported relevance for Mr. Bancel’s documents as to the parties’ positions for hypothetical
`negotiation, the price Moderna was paid for vaccines, or a reasonable royalty. Again, both
`Hamilton Bennett and Stephen Hoge were included in these discussions by email, confirming
`Moderna correctly identified both as custodians.
`• MRNA-GEN-01472164 – In this email, Mr. Bancel is requesting an analysis for the Board
`that he might send to others. To gather the pertinent information, Mr. Bancel reached out to
`others, including Said Francis—one of Moderna’s ESI custodians. Further, the email chain
`shows that Mr. Bancel was requesting information about possible timing for a BLA filing.
`Plaintiffs have not explained how the timing of BLA filing is relevant to disputed issues in
`the case. That the CEO of a company would advise the Board is unsurprising and insufficient
`to render his involvement unique.
`
`Contrary to your assertions, vast numbers of documents show that Hamilton Bennett
`regularly attended meetings with representatives from various government entities. MRNA-
`GEN-01098961 (Bennett in meeting the same evening as above with Robert Johnson and others
`from the Government); MRNA-GEN-00655346 (Bennett organizing meeting the week before
`with a host of individuals from the Government); MRNA-GEN-01106107 (Bennett setting up
`regular occurrence to discuss development plan, involving variety of individuals from Moderna
`and the government; see also, e.g., MRNA-GEN-01098709; MRNA-GEN-01269696; MRNA-
`GEN-01098815; MRNA-GEN-01098978; MRNA-GEN-01098982; MRNA-GEN-01098984;
`MRNA-GEN-01098986; MRNA-GEN-01099328; MRNA-GEN-01099609; MRNA-GEN-
`01102271; MRNA-GEN-01104697; MRNA-GEN-00918341. Th