Case 1:22-cv-00252-MSG Document 366 Filed 06/27/24 Page 1 of 3 PageID #: 22094
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`M O R R I S , N I C H O L S , A R S H T & T U N N E L L L L P
`1201 NORTH MARKET STREET
`P.O. BOX 1347
`WILMINGTON, DELAWARE 19899-1347
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`(302) 658-9200
`(302) 658-3989 FAX
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`BRIAN P. EGAN
`(302) 351-9454
`began@morrisnichols.com
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`June 27, 2024
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`VIA ELECTRONIC FILING
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`The Honorable Mitchell S. Goldberg
`United States District Court
` Eastern District of Pennsylvania
`601 Market Street
`Philadelphia, PA 19106-1797
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`Re:
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`Arbutus Biopharma Corporation., et al. v. Moderna, Inc., et al.
`C.A. No. 22-252 (MSG)
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`Dear Judge Goldberg:
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`We write on behalf of Moderna to respectfully seek clarification of Your Honor’s
`June 20, 2024 Order (D.I. 355). In response to Moderna’s motion to compel lobbying documents
`(D.I. 341), the Court ordered the parties to proceed with their agreed-upon collection and
`production of lobbying materials, and also ordered Moderna to produce “non-lobbying
`documents” that Plaintiffs sought in their opposition (D.I. 348) to Moderna’s motion to compel.
`D.I. 355 at 10 (ordering production of “Defendant’s communications with the Government
`regarding the vaccine, the Government contracts, and the Statement of Interest”). In connection
`with those non-lobbying documents, the Court also made a finding that Moderna’s
`communications with the U.S. Government regarding the application of Section 1498, including
`those relating to the Statement of Interest, are not subject to the common interest privilege
`exception.
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`Since the Order issued, Plaintiffs have taken the position that Moderna must produce all
`communications between Moderna and the U.S. Government concerning this lawsuit more
`generally (i.e., not just communications relating to the application of Section 1498 or on the
`Statement of Interest) and that the Court’s finding of no common interest applies to all
`communications between Moderna and the U.S. Government. Moderna believes this goes beyond
`the Court’s Order, which was premised on what Plaintiffs sought in their opposition letter to
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`Case 1:22-cv-00252-MSG Document 366 Filed 06/27/24 Page 2 of 3 PageID #: 22095
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`The Honorable Mitchell S. Goldberg
`June 27, 2024
`Page 2
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`Moderna’s motion, i.e., “communications with the U.S. Government regarding § 1498 and the
`Government’s Statement of Interest.” D.I. 348 at 1, 3.1
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`Moderna thus respectfully seeks the Court’s clarification of its Order, including
`confirmation of whether the Court’s Order and finding regarding common interest are limited to
`communications discussing the application of Section 1498 and the Statement of Interest. If, as
`Moderna believes, the Court’s Order found that there is no common interest as to “communications
`with the U.S. Government regarding § 1498 and the Government’s Statement of Interest,”
`Moderna will proceed in producing this limited scope of communications.2 If the Court’s Order is
`interpreted more broadly, however, there is a broader common interest agreement in place between
`Moderna and the U.S. Government that would be implicated by any such reading. By way of
`example, as discussed at the hearing, because there remains a possibility in light of Section 1498
`that Moderna and the U.S. Government may be facing parallel lawsuits, Moderna has relied and
`will continue to rely on the common interest exception to coordinate with the U.S. Government in
`the defense of Plaintiffs’ patent infringement allegations concerning the accused product that was
`developed, manufactured, and procured pursuant to contracts between the Moderna and the U.S.
`Government. Notwithstanding Moderna’s disagreement that no common interest can exist with
`respect to Section 1498 and the Government’s Statement of Interest,3 expanding the Court’s Order
`beyond these categories implicates other issues that would be protected by the common interest
`exception and the common interest agreement between Moderna and the U.S. government, which
`Moderna is willing to make available to the Court for in camera review if requested.
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`Ultimately, because Plaintiffs’ arguments regarding common interest were raised primarily
`in their opposition letter to Moderna’s motion to compel, neither Moderna nor the U.S.
`Government had the opportunity to fully brief this issue. Accordingly, should the Court find that
`its Order is not limited to communications with the U.S. Government regarding Section 1498 and
`the Government’s Statement of Interest, Moderna requests to be heard on a more fulsome record
`on the common interest exception and its application to the facts of this case before the Court
`determines whether any further production is appropriate.
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`1 Moderna completed its production months ago of communications between Moderna and the
`U.S. Government regarding the vaccine and the negotiation of the U.S. Government supply
`contracts—including negotiations relating to FAR 52-227 clause that Moderna relies upon—and
`does not claim those documents were privileged and subject to a common interest exception.
`2 To be clear, because the Court found that the common interest exception is not applicable to these
`categories of documents, Moderna understands that production of these documents does not
`constitute a waiver (limited or otherwise) of any privilege.
`3 Moderna disagrees with Plaintiffs’ (admittedly speculative) suggestion that there has been any
`“disagreement” between Moderna and the U.S. government as to the application of § 1498.
`D.I. 354 at 33–35. Moderna also disagrees with Plaintiffs’ inaccurate characterization that there
`was any “shift” in liability with the filing of the Statement of Interest (D.I. 348 at 1)—that
`Statement merely confirmed what the parties agreed in the C-0100 contract years earlier. D.I. 49.
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`Case 1:22-cv-00252-MSG Document 366 Filed 06/27/24 Page 3 of 3 PageID #: 22096
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`The Honorable Mitchell S. Goldberg
`June 27, 2024
`Page 3
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`Respectfully,
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`/s/ Brian P. Egan
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`Brian P. Egan (#6227)
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`BPE/bac
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`cc:
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`All Counsel of Record (via CM/ECF and electronic mail)
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