Case 1:22-cv-00252-MSG Document 361-7 Filed 06/21/24 Page 1 of 27 PageID #: 21825
`Case 1:22-cv-00252-MSG Document 361-7 Filed 06/21/24 Page 1 of 27 PagelD #: 21825
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`EXHIBIT 5
`EXHIBIT 5
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`

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`Case 1:22-cv-00252-MSG Document 361-7 Filed 06/21/24 Page 2 of 27 PageID #: 21826
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`ARBUTUS BIOPHARMA CORPORATION
`and GENEVANT SCIENCES GmbH,
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`Plaintiffs,
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`C.A. No. 22-252-MSG
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`CONTAINS INFORMATION
`DESIGNATED BY MODERNA AS
`HIGHLY CONFIDENTIAL –
`OUTSIDE COUNSEL’S EYES ONLY
`
`
`v.
`
`
`v.
`
`
`MODERNA, INC. and MODERNATX, INC.,
`
`Defendants.
`MODERNA, INC. and MODERNATX, INC.,
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`
`Counterclaim-Plaintiffs,
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`ARBUTUS BIOPHARMA CORPORATION
`and GENEVANT SCIENCES GmbH,
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`Counterclaim-Defendants.
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`
`
`DEFENDANTS’ FIRST SUPPLEMENTAL OBJECTIONS AND RESPONSES TO
`PLAINTIFFS’ FOURTH SET OF INTERROGATORIES (NO. 18)
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`Pursuant to Fed. R. Civ. P. 33, Defendants Moderna, Inc. and ModernaTX Inc.
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`(collectively, “Moderna” or “Defendants”) provide their First Supplement Objections and
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`Responses to Plaintiffs Arbutus Biopharma Corporation (“Arbutus”) and Genevant Sciences
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`GmbH’s (“Genevant,” collectively “Plaintiffs”) Fourth Set of Interrogatories (No. 18).
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`1
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`

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`Case 1:22-cv-00252-MSG Document 361-7 Filed 06/21/24 Page 3 of 27 PageID #: 21827
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`CONTAINS INFORMATION MODERNA HAS DESIGNATED HIGHLY
`CONFIDENTIAL – OUTSIDE COUNSEL’S EYES ONLY
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`GENERAL OBJECTIONS
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`Moderna incorporates by reference the General Objections provided in Defendants’
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`Objections and Responses to Plaintiffs’ First Set of Interrogatories, served March 20, 2023. These
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`general responses and objections apply to the response to Plaintiffs’ Interrogatory, as if fully set
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`forth therein. The failure to repeat any of the General Objections in the specific responses below
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`shall not be deemed a waiver of such objection or limitation.
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`Moderna incorporates by reference the Definitions provided in Defendants’ Objections and
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`Responses to Plaintiffs’ First Set of Requests for Production, served February 2, 2023, and in
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`Defendants’ Objections and Responses to Plaintiffs’ First Set of Interrogatories, served March 20,
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`2023. These definitions form a part of, and are hereby incorporated into, the response to the
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`Interrogatory set forth below.
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`2
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`Case 1:22-cv-00252-MSG Document 361-7 Filed 06/21/24 Page 4 of 27 PageID #: 21828
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`CONTAINS INFORMATION MODERNA HAS DESIGNATED HIGHLY
`CONFIDENTIAL – OUTSIDE COUNSEL’S EYES ONLY
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`SPECIFIC OBJECTIONS AND RESPONSES
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`INTERROGATORY NO. 18
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`For each contract for sale of the Accused Product that Moderna contends is not an
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`infringing sale because the product was not imported into or manufactured in the United States
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`(whether or not Moderna also has other bases for contending such sale was not an infringing sale),
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`identify:
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`(1) the parties to the contract, the date of the contract, the number of doses sold under the
`contact [sic], and the price per dose;
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`(2) each location at which the Accused Product sold pursuant to the contract was
`manufactured, warehoused, or delivered, and the quantity of doses manufactured,
`warehoused, or delivered at each such location;
`
`(3) the name of each Moderna employee, officer, or director who participated in pricing or
`contract negotiations (including any post-sale negotiations) or who signed the contract; for
`each such Moderna employee, officer, or director, also identify his or her office location,
`role in the negotiations and, if he or she signed the contract, the location from which he or
`she signed (see Halo Elecs., Inc. v. Pulse Elecs., Inc., 831 F.3d 1369, 1378 (Fed. Cir. 2016)
`(identifying the location of “pricing and contracting negotiations” and “the final formation
`of a contract for sale” as relevant factors));
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`(4) 4. [sic] The date(s), location(s), and all attendees with their office locations of all in-person
`meetings during which negotiations of the contract occurred (see Halo Elecs., 831 F.3d at
`1378 (identifying the location of “pricing and contracting negotiations” as a relevant
`factor));
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`(5) any and all locations from which purchase orders pursuant to the contract were issued or
`received and the location of the Moderna person(s) responsible for reviewing and
`confirming such purchase orders (see Halo Elecs., 831 F.3d at 1378 (identifying the
`location where the defendant received “the actual purchase orders for those products” as a
`relevant factor);
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`(6) any and all locations of Moderna personnel responsible for manufacturing planning and
`order fulfilment for the Accused Products sold pursuant to the contract (see Carnegie
`Mellon Univ. v. Marvell Tech. Grp., Ltd., 807 F.3d 1283, 1309 (Fed. Cir. 2015) (identifying
`the location of “specific contractual commitments for specific volumes” as a relevant
`factor));
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`(7) any and all entities that received payments pursuant to the contract and the location of each
`such entity, including the identity of each bank that received payments and the location of
`such bank (see Halo Elecs., 831 F.3d at 1378 (identifying the location where the defendant
`“was paid” as a relevant factor));
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`3
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`Case 1:22-cv-00252-MSG Document 361-7 Filed 06/21/24 Page 5 of 27 PageID #: 21829
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`CONTAINS INFORMATION MODERNA HAS DESIGNATED HIGHLY
`CONFIDENTIAL – OUTSIDE COUNSEL’S EYES ONLY
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`(8) the name of each Moderna employee, officer, or director who participated in marketing
`campaigns related to the contract, the role such person played in the marketing campaign,
`and their respective office locations (see Halo Elecs., 831 F.3d at 1378 (identifying the
`location where “marketing activities took place” as a relevant factor)); and
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`(9) each location of product research and development activities, or clinical testing (including
`decisions on the design of clinical tests) regarding the Accused Product that was cited or
`relied upon as part of obtaining or maintaining regulatory approval for the Accused Product
`sold pursuant to the contract, and a description of the work done at each location; (see
`Marvell Tech., 807 F.3d at 1309 (identifying the location where “activities related to
`designing, simulating, testing, evaluating, [and] qualifying” the accused product occurred
`as relevant factors)).
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`RESPONSE TO INTERROGATORY NO. 18:
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`Moderna objects to this Interrogatory as overbroad, unduly burdensome, and calling for
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`information not relevant to any of the claims or defenses in this litigation and/or not proportional
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`to the needs of this case. Moderna will not provide or produce information that is not relevant to
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`the Asserted Claims or the Accused Product. To the extent this Interrogatory improperly extends
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`beyond the permitted scope as set forth by the Court’s February 27, 2024 Order (D.I. 229, ¶ 5),
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`Moderna will not provide information relating to doses that were not made, used, offered for sale,
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`or sold within the United States or imported into the United States, which are not accused of
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`infringement. Moderna objects to this Interrogatory as vague and ambiguous as to the terms
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`“contract for sale” and “the product,” which are not defined. Moderna objects to this Interrogatory
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`to the extent it seeks information or the identification of documents and things subject to
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`confidentiality obligations owed to third parties (by agreement or by law), including foreign
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`governments, that prohibit or restrict their disclosure by Moderna. Moderna objects to this
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`Interrogatory for being unlimited in time or not limited to a time frame relevant to this litigation,
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`and therefore unduly burdensome, overly broad, and not proportional to the needs of the case.
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`Moderna further objects to this Interrogatory to the extent it seeks information protected from
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`discovery by the attorney-client privilege, attorney work product doctrine, or any other applicable
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`4
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`Case 1:22-cv-00252-MSG Document 361-7 Filed 06/21/24 Page 6 of 27 PageID #: 21830
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`CONTAINS INFORMATION MODERNA HAS DESIGNATED HIGHLY
`CONFIDENTIAL – OUTSIDE COUNSEL’S EYES ONLY
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`privilege or immunity. Moderna objects to this Interrogatory as premature to the extent that it calls
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`for the rendering of an expert opinion.
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`Pursuant to correspondence between the parties, Plaintiffs agreed to withdraw subparts (6)
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`and (9) as not being directed to any “factors” or discussion in Halo Elecs., Inc. v. Pulse Electronics,
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`Inc., 831 F.3d 1369 (Fed. Cir. 2016). See 3/6/2024 M. Lachman Email (“As a compromise to avoid
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`the time and burden of raising this with the Court, we would agree to withdraw subparts 6 and 9,
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`thus limiting the inquiry to just factors drawn directly from Halo.”). Even so, Moderna additionally
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`objects that the remaining subparts (1), (2), (3), (4), (5), (7), and (8) are nevertheless not narrowly-
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`tailored to Halo and overbroad, unduly burdensome, and seeking information not relevant to any
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`obiter dicta expressed by the Federal Circuit. Moderna further objects to this Interrogatory as
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`consisting of four discrete subparts––subparts (1) and (7) concerning contracts and payments under
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`contracts; subparts (2) and (5) concerning supply chain, distribution, and purchase orders; subparts
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`(3) and (4) concerning negotiations; and subpart (8) concerning marketing activities––that
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`separately count towards Plaintiffs’ total permissible number of interrogatories under Fed. R. Civ.
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`P. 33. The Court’s February 27, 2024 Order (D.I. 229, ¶ 5) explicitly instructed Plaintiffs to
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`“propound to Defendant[s] specific interrogatories about such sales that are narrowly-tailored”
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`to Halo. Accordingly, Moderna interprets this Interrogatory as actually being Interrogatory Nos.
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`18, 19, 20, and 21.
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`Subject to the General and Specific Objections, Moderna responds as follows:
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`(1)
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`the parties to the contract, the date of the contract, the number of doses sold under
`the contact [sic], and the price per dose.
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`Moderna objects to subpart (1) as overbroad, unduly burdensome, and calling for
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`information not relevant to any of the claims or defenses in this litigation and/or not proportional
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`to the needs of this case, specifically because it seeks information about “the date of the contract,
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`5
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`Case 1:22-cv-00252-MSG Document 361-7 Filed 06/21/24 Page 7 of 27 PageID #: 21831
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`CONTAINS INFORMATION MODERNA HAS DESIGNATED HIGHLY
`CONFIDENTIAL – OUTSIDE COUNSEL’S EYES ONLY
`
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`the number of doses sold under the contact [sic], and the price per dose.” Plaintiffs allege that such
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`information and this subpart is “contextual information . . . to allow Plaintiffs (and the Court) to
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`properly evaluate the factors.” See 3/6/2024 M. Lachman Email. Plaintiffs therefore concede that
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`subpart (1) and the information sought herein are not supported by Halo or the Court’s February
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`27, 2024 Order (D.I. 229, ¶ 5). In addition, as detailed in Moderna’s response to Plaintiffs’
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`Interrogatory Nos. 10 and 17, Moderna has already provided substantial information regarding the
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`number of doses and the means to determine price per dose. See, e.g., MRNA-GEN-00467748;
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`MRNA-GEN-00467749; MRNA-GEN-00467750; MRNA-GEN-01352336; MRNA-GEN-
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`01352338; MRNA-GEN-01352341; MRNA-GEN-00456087; MRNA-GEN-00456088; MRNA-
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`GEN-00459217; MRNA-GEN-00459218; MRNA-GEN-01352334; MRNA-GEN-00939821.
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` Pursuant to Fed. R. Civ. P. 33(d), Moderna further identifies the following
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`documents from which information responsive to the non-objectionable scope of this Interrogatory
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`can be derived or ascertained: MRNA-GEN-01706579. The OUS Contracts identified in MRNA-
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`GEN-01706579 is overinclusive, and to the extent the contracts list a foreign country that is also
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`listed as receiving U.S.-manufactured drug product of the COVID-19 Vaccine in the genealogy
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`spreadsheets identified in Moderna’s response to Interrogatory No. 11, Moderna does not contend
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`that sale of the batch is OUS and outside the territorial scope of § 271(a), but maintains that all
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`such batches do not infringe under § 271(a).
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`6
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`

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`Case 1:22-cv-00252-MSG Document 361-7 Filed 06/21/24 Page 8 of 27 PageID #: 21832
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`(2)
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`CONTAINS INFORMATION MODERNA HAS DESIGNATED HIGHLY
`CONFIDENTIAL – OUTSIDE COUNSEL’S EYES ONLY
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`each location at which the Accused Product sold pursuant to the contract was
`manufactured, warehoused, or delivered, and the quantity of doses manufactured,
`warehoused, or delivered at each such location.
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`Moderna objects to subpart (2) as overbroad, unduly burdensome, and calling for
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`information not relevant to any of the claims or defenses in this litigation and/or not proportional
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`to the needs of this case, specifically because it seeks information about “each location at which
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`the Accused Product sold pursuant to the contract was manufactured, warehoused, or delivered,
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`and the quantity of doses manufactured, warehoused, or delivered at each such location.” Moderna
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`objects to this subpart referring to “warehoused” as vague and ambiguous. Moderna also objects
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`to this subpart as unreasonably broad and unduly burdensome because it would require
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`investigation into more than a hundred contracts, the doses sold under each contract, and each
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`location of manufacture, “warehousing,” and delivery for each contract over a period of four years,
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`which is impossible to do within a reasonable amount of time under any schedule; accordingly this
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`subpart is not proportional to the needs of the case. Moderna further objects to this subpart to the
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`extent it seeks information that Moderna may not keep in the ordinary course of business. Plaintiffs
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`again allege that such information and this subpart is “contextual information . . . to allow Plaintiffs
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`(and the Court) to properly evaluate the factors.” See M. Lachman email 3/6/2024. Plaintiffs
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`therefore concede that subpart (2) and the information sought herein are not supported by Halo or
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`the Court’s February 27, 2024 Order (D.I. 229, ¶ 5). In addition, as detailed in Moderna’s response
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`to Plaintiffs’ Interrogatory Nos. 10 and 17, Moderna has already provided substantial information
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`regarding the number of doses. See, e.g., MRNA-GEN-00467748; MRNA-GEN-00467749;
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`MRNA-GEN-00467750; MRNA-GEN-01352336; MRNA-GEN-01352338; MRNA-GEN-
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`01352341;MRNA-GEN-00456087; MRNA-GEN-00456088; MRNA-GEN-00459217; MRNA-
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`GEN-00459218; MRNA-GEN-01352334; MRNA-GEN-00939821.
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`7
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`

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`Case 1:22-cv-00252-MSG Document 361-7 Filed 06/21/24 Page 9 of 27 PageID #: 21833
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`CONTAINS INFORMATION MODERNA HAS DESIGNATED HIGHLY
`CONFIDENTIAL – OUTSIDE COUNSEL’S EYES ONLY
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`Moderna identifies the following manufacturing sites located abroad for which foreign
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`batches are made pursuant to OUS Contracts:
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`. Further, for
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`doses of the Accused Product manufactured abroad and sold abroad pursuant to OUS Contracts,
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`(3)
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`the name of each Moderna employee, officer, or director who participated in pricing
`or contract negotiations (including any post-sale negotiations) or who signed the
`contract; for each such Moderna employee, officer, or director, also identify his or
`her office location, role in the negotiations and, if he or she signed the contract, the
`location from which he or she signed (see Halo Elecs., Inc. v. Pulse Elecs., Inc., 831
`F.3d 1369, 1378 (Fed. Cir. 2016) (identifying the location of “pricing and contracting
`negotiations” and “the final formation of a contract for sale” as relevant factors)).
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`Moderna objects to subpart (3) as overbroad, unduly burdensome, and calling for
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`information not relevant to any of the claims or defenses in this litigation and/or not proportional
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`to the needs of this case, specifically because it seeks information about “the name of each
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`Moderna employee, officer, or director who participated in pricing or contract negotiations
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`(including any post-sale negotiations) or who signed the contract;” the office location and role in
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`the negotiations of such employees, officers, or directors, if he or she signed the contract, and the
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`location from which such an employee, officer, or director signed. Moderna further objects to this
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`subpart to the extent that the phrases “participated in pricing or contract negotiations,” “post-sale
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`negotiations,” and “role in the negotiations” are vague and ambiguous. Moderna also objects to
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`this subpart as unreasonably broad and unduly burdensome because it would require investigation
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`into more than a hundred contracts; each Moderna employee, officer, or director who
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`“participated” in pricing or contract negotiations and signed the contract; his or her office location
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`and “role” in the negotiations; and the location of signature over a period of four years, which is
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`impossible to do within a reasonable amount of time under any schedule; accordingly this subpart
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`8
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`

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`Case 1:22-cv-00252-MSG Document 361-7 Filed 06/21/24 Page 10 of 27 PageID #: 21834
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`CONTAINS INFORMATION MODERNA HAS DESIGNATED HIGHLY
`CONFIDENTIAL – OUTSIDE COUNSEL’S EYES ONLY
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`is not proportional to the needs of the case. Moderna further objects to this subpart to the extent it
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`seeks information that Moderna may not keep in the ordinary course of business.
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`In Halo, the Federal Circuit articulated that pricing and contracting negotiations alone are
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`insufficient to constitute an infringing sale under 35 U.S.C. § 271(a). Halo, 831 F.3d at 1378
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`(“[W]hen substantial activities of a sales transaction, including the final formation of a contract
`
`for sale encompassing all essential terms as well as the delivery and performance under that sales
`
`contract, occur entirely outside the United States, pricing and contracting negotiations in the
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`United States alone do not constitute or transform those extraterritorial activities into a sale within
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`the United States for purposes of § 271(a).”). In addition, Halo clarified that even where some
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`pricing negotiations take place in the United States, this is one aspect considered in assessing what
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`constitutes substantial activity relevant to the determination of whether infringing activity
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`occurred. See id. at 1374; 1377 (“we have not deemed a sale to have occurred within the United
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`States for purposes of liability under § 271(a) based solely on negotiation and contracting activities
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`in the United States when the vast majority of activities underlying the sales transaction occurred
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`wholly outside the United States. For such a sale, one must examine whether the activities in the
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`United States are sufficient to constitute a ‘sale’ under § 271(a), recognizing that a strong policy
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`against extraterritorial liability exists in the patent law.”); 1378 (noting that while Pulse engaged
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`in pricing negotiations in the United States, foreign contract manufacturers finalized the purchase
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`orders and received components to manufacture products abroad).
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`9
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`Case 1:22-cv-00252-MSG Document 361-7 Filed 06/21/24 Page 11 of 27 PageID #: 21835
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`CONTAINS INFORMATION MODERNA HAS DESIGNATED HIGHLY
`CONFIDENTIAL – OUTSIDE COUNSEL’S EYES ONLY
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`(4)
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`4. [sic] The date(s), location(s), and all attendees with their office locations of all in-
`person meetings during which negotiations of the contract occurred (see Halo Elecs.,
`831 F.3d at 1378 (identifying the location of “pricing and contracting negotiations” as
`a relevant factor)).
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`Moderna objects to subpart (4) as overbroad, unduly burdensome, and calling for
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`information not relevant to any of the claims or defenses in this litigation and/or not proportional
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`to the needs of this case, specifically because it seeks information about “[t]he date(s), location(s),
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`and all attendees with their office locations of all in-person meetings during which negotiations
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`of the contract occurred.” Moderna further objects to this subpart to the extent that the phrases
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`“during which negotiations of the contract occurred” is vague and ambiguous. Moderna also
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`10
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`Case 1:22-cv-00252-MSG Document 361-7 Filed 06/21/24 Page 12 of 27 PageID #: 21836
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`CONTAINS INFORMATION MODERNA HAS DESIGNATED HIGHLY
`CONFIDENTIAL – OUTSIDE COUNSEL’S EYES ONLY
`
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`objects to this subpart as unreasonably broad and unduly burdensome because it would require
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`investigation into more than a hundred contracts, the date (which is not relevant), location, and
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`all attendees for all in-person meetings over a period of four years, which is impossible to do
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`within a reasonable amount of time under any schedule; accordingly this subpart is not
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`proportional to the needs of the case. Moderna further objects to this subpart to the extent it seeks
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`information that Moderna may not keep in the ordinary course of business.
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`In Halo, the Federal Circuit articulated that pricing and contracting negotiations alone are
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`insufficient to constitute an infringing sale under 35 U.S.C. § 271(a). Halo, 831 F.3d at 1378
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`(“[W]hen substantial activities of a sales transaction, including the final formation of a contract
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`for sale encompassing all essential terms as well as the delivery and performance under that sales
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`contract, occur entirely outside the United States, pricing and contracting negotiations in the
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`United States alone do not constitute or transform those extraterritorial activities into a sale within
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`the United States for purposes of § 271(a).”). In addition, Halo clarified that even where some
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`pricing negotiations take place in the United States, this is one aspect considered in assessing what
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`constitutes substantial activity relevant to the determination of whether infringing activity
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`occurred. See id. at 1374; 1377 (“we have not deemed a sale to have occurred within the United
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`States for purposes of liability under § 271(a) based solely on negotiation and contracting activities
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`in the United States when the vast majority of activities underlying the sales transaction occurred
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`wholly outside the United States. For such a sale, one must examine whether the activities in the
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`United States are sufficient to constitute a ‘sale’ under § 271(a), recognizing that a strong policy
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`against extraterritorial liability exists in the patent law.”); 1378 (noting that while Pulse engaged
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`in pricing negotiations in the United States, foreign contract manufacturers finalized the purchase
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`11
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`Case 1:22-cv-00252-MSG Document 361-7 Filed 06/21/24 Page 13 of 27 PageID #: 21837
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`CONTAINS INFORMATION MODERNA HAS DESIGNATED HIGHLY
`CONFIDENTIAL – OUTSIDE COUNSEL’S EYES ONLY
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`orders and received components to manufacture products abroad). Moderna further objects to this
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`subpart to the extent it is duplicative of subpart (3).
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`Moderna incorporates by reference its response to subpart (3) herein.
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`(5)
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`any and all locations from which purchase orders pursuant to the contract were
`issued or received and the location of the Moderna person(s) responsible for
`reviewing and confirming such purchase orders (see Halo Elecs., 831 F.3d at 1378
`(identifying the location where the defendant received “the actual purchase orders
`for those products” as a relevant factor).
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`Moderna objects to subpart (5) as overbroad, unduly burdensome, and calling for
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`information not relevant to any of the claims or defenses in this litigation and/or not proportional
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`to the needs of this case, specifically because it seeks information about “any and all locations
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`from which purchase orders pursuant to the contract were issued or received and the location of
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`the Moderna person(s) responsible for reviewing and confirming such purchase orders.” Moderna
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`further objects to this subpart to the extent that the phrases “responsible for reviewing and
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`confirming” and “were issued or received” are vague and ambiguous. Moderna also objects to this
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`subpart as unreasonably broad and unduly burdensome because it would require investigation into
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`more than a hundred contracts and determination of Moderna person(s) “responsible for
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`reviewing and confirming” “purchase orders” that are “issued or received” over a period of four
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`years, which is impossible to do within a reasonable amount of time under any schedule;
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`accordingly this subpart is not proportional to the needs of the case. Moderna further objects to
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`this subpart to the extent it seeks information that Moderna may not keep in the ordinary course of
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`business.
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`Plaintiffs misrepresent this information as a purportedly relevant factor discussed in Halo.
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`In Halo, defendant Pulse received product purchase orders abroad. See Halo, 831 F.3d at 1378.
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`These purchase orders were received in finalized form from foreign contract manufacturers, and
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`fulfillment and payments relating to the purchase orders all occurred abroad. Id. The Halo court
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`12
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`Case 1:22-cv-00252-MSG Document 361-7 Filed 06/21/24 Page 14 of 27 PageID #: 21838
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`CONTAINS INFORMATION MODERNA HAS DESIGNATED HIGHLY
`CONFIDENTIAL – OUTSIDE COUNSEL’S EYES ONLY
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`noted that while some pricing negotiations, contracting, and marketing activities ultimately leading
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`to the purchase orders occurred in the United States, such activity alone was insufficient to
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`constitute a sale under § 271(a). Id. n.1 (emphasizing that “pricing negotiations and contracting
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`activities in the United States to which Halo points did not constitute the final formation of a
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`definitive, binding contract for sale”). Contrary to Plaintiffs’ suggestion that the “locations from
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`which purchase orders . . . were issued or received” is relevant, the Halo court expressly qualified
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`that it did “not reach [the] argument that the place where a contract for sale is legally formed can
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`itself be determinative as to whether a sale has occurred in the United States.” Id. Plaintiffs’ request
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`for information relating to the “location of the Moderna person(s) responsible for reviewing and
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`confirming . . . purchase orders” is even more burdensome and disproportionate to the needs of
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`the case as such information was not discussed in Halo.
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`Moderna further objects to the term “purchase orders” as vague and ambiguous. Moderna
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`understands this term as used in Halo to describe Moderna’s sales orders.
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`. Moderna incorporates by reference its response to subpart (7)
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`herein.
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`13
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`Case 1:22-cv-00252-MSG Document 361-7 Filed 06/21/24 Page 15 of 27 PageID #: 21839
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`(7)
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`CONTAINS INFORMATION MODERNA HAS DESIGNATED HIGHLY
`CONFIDENTIAL – OUTSIDE COUNSEL’S EYES ONLY
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`any and all entities that received payments pursuant to the contract and the location
`of each such entity, including the identity of each bank that received payments and
`the location of such bank (see Halo Elecs., 831 F.3d at 1378 (identifying the location
`where the defendant “was paid” as a relevant factor)).
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`Moderna objects to subpart (7) as overbroad, unduly burdensome, and calling for
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`information not relevant to any of the claims or defenses in this litigation and/or not proportional
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`to the needs of this case, specifically because it seeks information about “any and all entities that
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`received payments pursuant to the contract and the location of each such entity, including the
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`identity of each bank that received payments and the location of such bank.” Moderna further
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`objects to this subpart to the extent it seeks information that Moderna may not keep in the ordinary
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`course of business.
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`As Plaintiffs note in the cited language to Halo, the location of payment receipt may be
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`relevant to the determination of whether substantial activity occurred sufficient to constitute a sale.
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`Halo, 831 F.3d at 1378. But Halo does not support Plaintiffs’ request for information pertaining
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`to the “identity of each bank that received payments and the location of such bank,” which is
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`neither necessary nor relevant in determining the location of payment receipt for the purposes of
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`determine a sale’s location under § 271(a).
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`Moderna incorporates by reference its response to subpart (1) herein.
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`14
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`Case 1:22-cv-00252-MSG Document 361-7 Filed 06/21/24 Page 16 of 27 PageID #: 21840
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`CONTAINS INFORMATION MODERNA HAS DESIGNATED HIGHLY
`CONFIDENTIAL – OUTSIDE COUNSEL’S EYES ONLY
`
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`(8)
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`the name of each Moderna employee, officer, or director who participated in
`marketing campaigns related to the contract, the role such person played in the
`marketing campaign, and their respective office locations (see Halo Elecs., 831 F.3d
`at 1378 (identifying the location where “marketing activities took place” as a relevant
`factor)).
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`Moderna objects to subpart (8) as overbroad, unduly burdensome, and calling for
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`information not relevant to any of the claims or defenses in this litigation and/or not proportional
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`to the needs of this case, specifically because it seeks information about “the name of each
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`Moderna employee, officer, or director who participated in marketing campaigns related to the
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`contract, the role such person played in the marketing campaign, and their respective office
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`locations.” Moderna further objects to this subpart to the extent that the phrases “participated in
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`marketing campaigns relating to the contract” and “role such person played” is vague and
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`ambiguous. Moderna also objects to this subpart as unreasonably broad and unduly burdensome
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`because it would require investigation into more than a hundred contracts, the name of each
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`Moderna employee, officer, or director who “participated in marketing campaigns” and their
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`“role” over a period of four years, which is impossible to do within a reasonable amount of time
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`under any schedule; accordingly this subpart is not proportional to the needs of the case. Moderna
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`further objects to this subpart to the extent it seeks information that Moderna may not keep in the
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`ordinary course of business.
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`15
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`Case 1:22-cv-00252-MSG Document 361-7 Filed 06/21/24 Page 17 of 27 PageID #: 21841
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`CONTAINS INFORMATION MODERNA HAS DESIGNATED HIGHLY
`CONFIDENTIAL – OUTSIDE COUNSEL’S EYES ONLY
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`In Halo, the Federal Circuit articulated that marketing activities alone (and even in
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`combination with pricing and contracting negotiations) are insufficient to constitute an infringing
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`sale under 35 U.S.C. § 271(a). Halo, 831 F.3d at 1378. Indeed, the Federal Circuit noted in Halo
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`that “[a]s the Supreme Court has stated on multiple occasions, ‘[o]ur patent system makes no claim
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`to extraterritorial effect; these acts of Congress do not, and were not intended to, operate beyond
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`the limits of the United States, and we correspondingly reject the claims of others to such control
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`over our markets’” Id. In addition, Halo’s discussion of marketing activity focuses on the location
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`of the marketing activity itself, not the identity, role, or location of individuals involved in such
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`marketing activity. Thus, the thrust of Plaintiffs’ request in this subpart seeks information that is
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`not relevant.
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`Moderna is not aware of any marketing efforts targeting foreign governments or foreign
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`countries (i.e., ex-U.S.).
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`*
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`*
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`*
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`Moderna’s investigation is ongoing and Moderna reserves the right to supplement, revise,
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`or amend Moderna’s Response to this Interrogatory as discovery and Moderna’s investigation in
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`this Action proceed.
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`16
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`

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`Case 1:22-cv-00252-MSG Document 361-7 Filed 06/21/24 Page 18 of 27 PageID #: 21842
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`CONTAINS INFORMATION MODERNA HAS DESIGNATED HIGHLY
`CONFIDENTIAL – OUTSIDE COUNSEL’S EYES ONLY
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`FIRST SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 18 (MAY. 3, 2024):
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`Moderna incorporates its General Objections and Specific Objections to this Interrogatory
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`as if fully set forth herein. Moderna also reiterates that Plaintiffs’ Interrogatory No. 18 (even with
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`subparts (6) and (9) withdrawn by Plaintiffs) comprises four discrete subparts––subparts (1) and
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`(7) concerning contracts and payments under contracts; subparts (2) and (5) concerning supply
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`chain, distribution, and purchase orders; subparts (3) and (4) concerning negotiations; and subpart
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`(8) concerning marketing activities––that separately count towards Plaintiffs’ total permissible
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`number of interrogatories under Fed. R. Civ. P. 33 and the Scheduling Order entered in this case.
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`D.I. 72, ¶ 7(d)(ii) (“A maximum of 25 interrogatories, including contention interrogatories, are
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`permitted