Case 1:22-cv-00252-MSG Document 46 Filed 02/13/23 Page 1 of 4 PageID #: 863
`Nathan R. Hoeschen
`I.M. Pei Building
`1105 North Market St., 12th Floor
`Wilmington, DE 19801
`(302) 298-0709
`nhoeschen@shawkeller.com
`
`
`
`
`
`February 13, 2023
`
`
`
`
`
`
`
`BY CM/ECF
`The Honorable Mitchell S. Goldberg
`United States District Court
`Eastern District of Pennsylvania
`James A. Byrne U.S. Courthouse, Room 17614
`601 Market Street
`Philadelphia, PA 19106-1797
`
`
`Arbutus Biopharma Corporation, et. al. v. Moderna, Inc., et. al.
`C.A. No. 22-252-MSG
`
`Re:
`
`
`Dear Judge Goldberg:
`
`The parties respectfully submit the attached Proposed Scheduling Order.
`
`The parties met and conferred and reached agreement on a substantial number of provisions.
`However, the parties have not been able to agree on a number of outstanding issues. The parties
`have included their respective positions below.
`
`1. Final Contentions (¶ 6(d) and (e))
`
`[PLAINTIFFS’ PROPOSAL: Plaintiffs shall provide final infringement contentions. The
`addition or substitution of asserted claims may be made only by order of the Court upon a timely
`showing of good cause or with Defendants’ consent.] [DEFENDANTS’ PROPOSAL: Plaintiffs
`shall provide final infringement contentions that differ from their initial infringement contentions
`only for good cause, and with consent of the Defendants or leave of the Court.]
`
`[PLAINTIFFS’ PROPOSAL: Defendants shall provide final invalidity contentions. The
`addition or substitution of prior art references and/or invalidity defenses may be made only by
`order of the Court upon a timely showing of good cause or with Plaintiffs’ consent.]
`[DEFENDANTS’ PROPOSAL: Defendants shall provide final invalidity contentions that differ
`from their initial invalidity contentions only for good cause, and with consent of the Plaintiffs or
`leave of the Court.]
`
`Plaintiffs’ Position: Defendants’ proposal—requiring consent or a Court order for each and
`every modification to the parties’ contentions—is needlessly burdensome and likely to cause
`unnecessary disputes. This would be especially prejudicial to Plaintiffs, since fact discovery
`will inevitably uncover evidence relevant to infringement. Plaintiffs’ proposal would allow
`the addition of new evidence as a matter of right, but would require a showing of good cause
`for material changes to the parties’ claims and defenses (i.e., new claims, prior art, and
`invalidity defenses).
`
`
`
`
`
`

`

`Case 1:22-cv-00252-MSG Document 46 Filed 02/13/23 Page 2 of 4 PageID #: 864
`SHAW KELLER LLP
`The Honorable Mitchell S. Goldberg
`Page 2
`
`Defendants’ Position: The “good cause” requirement should apply to any substantive changes to
`the parties’ invalidity and non-infringement contentions (including changes to infringement
`theories), not just to the addition or substitution of asserted claims or prior art/invalidity
`defenses as Plaintiffs’ propose. The parties should be on notice of infringement and invalidity
`theories throughout fact discovery, rather than allowing new theories to be injected into the
`case after close of fact discovery without adequate justification. If discovery reveals new
`evidence relevant to infringement or invalidity as Plaintiffs suggest, that would provide the
`requisite good cause to promptly amend.
`
`2. Expert Supplementation (¶ 7(f)(ii))
`
`[PLAINTIFFS’ PROPOSAL: Expert declarations may be filed in connection with motions
`briefing.]
`
` [DEFENDANTS’ PROPOSAL: The parties may submit expert reports in connection with
`motions briefing provided they were disclosed in accordance with the expert discovery schedule
`in paragraph 7(f)(i). No expert declarations are to be filed in connection with motions briefing
`without leave of the Court.]
`
`Plaintiffs’ Position: Expert declarations are commonly allowed in conjunction with motions
`briefing in this District. E.g., Abbvie Inc. v. Dr. Reddy’s Labs., Ltd., No. 20-cv-968-MSG,
`D.I. 31 at 9 (D. Del.). Such expert testimony could be necessary, for example, to address
`new arguments raised by a party moving for summary judgment. If a party submits arguably
`improper expert testimony during motions briefing, that can be addressed either in a reply or
`a motion to strike—there is no need to preemptively ban all such testimony.
`
`Defendants’ Position: Expert discovery sets out the schedule by which expert opinions that the
`parties plan to rely on are exchanged in reports, considered, responded to, and vetted through
`depositions. Allowing for a new expert and/or opinion to be injected into the case after close
`of expert discovery where an opportunity to respond may not exist undermines the goals of
`expert discovery and allows for circumvention of the expert discovery cut-off. Plaintiffs
`justify their proposal as a way to respond to “improper expert testimony” during motions
`briefing, but that is precisely what Moderna’s proposal is designed to prevent by limiting
`expert testimony submitted in motions briefing to reports that have been vetted through
`expert discovery.
`
`3. Trial length: (¶ 19)
`
`[PLAINTIFFS’ POSITION: 10] [DEFENDANTS’ POSITION: 6]
`
`Plaintiffs’ Position: A ten-day trial is appropriate in view of the range of issues that are likely
`to arise in this case. The parties can discuss shortening the trial if those issues are narrowed,
`but it would be challenging to request more time should such narrowing not occur.
`
`Defendants’ Position: Six days is sufficient and will incentivize the parties to narrow the case
`for trial.
`
`
`
`
`
`

`

`Case 1:22-cv-00252-MSG Document 46 Filed 02/13/23 Page 3 of 4 PageID #: 865
`SHAW KELLER LLP
`The Honorable Mitchell S. Goldberg
`Page 3
`
`4. Case schedule (Exhibit A)
`
`Plaintiffs’ Position: Plaintiffs have proposed a trial date approximately 2.5 years after the filing
`of the Complaint, which is not unusual for this District and is longer than the 23-month
`period that Moderna recently proposed in another COVID-19 vaccine case. See ModernaTX,
`Inc. v. Pfizer Inc., No. 22-cv-11378-RGS, D.I. 61-1 (D. Mass Jan. 13, 2023); see also, e.g.,
`Shure Inc. v. ClearOne, Inc., No. 19-cv-1343, D.I. 646 (D. Del. Nov. 4, 2021) (under 2.5
`years from complaint to jury verdict); Amgen Inc. v. Hospira, Inc., No. 15-cv-839, D.I. 326
`(D. Del. Sept. 25, 2017) (2 years and 7 days). While Moderna’s motion to dismiss in this
`case was pending, Plaintiffs repeatedly requested that the parties begin the discovery process,
`but Moderna refused. Moderna should not now be heard to complain about having
`insufficient time to complete discovery, when they could have begun that process months
`ago. Moderna’s delay tactics appear designed to obstruct Plaintiffs from obtaining the
`remedies they are owed based on Moderna’s patent infringement.
`
`Plaintiffs offered various compromise trial dates to avoid this dispute, which Moderna
`rejected based on schedules in other litigations that began after this case. Absent a direct
`conflict, Plaintiffs disagree that those other litigations should dictate the schedule in this case,
`particularly given that Moderna is represented by different outside counsel in those matters.
`
`Defendants’ Position: Plaintiffs seek an unnecessarily expedited schedule (that would get the
`parties to trial within 18 months of the Rule 16 conference), which is significantly shorter
`than average for patent cases in the District of Delaware. The 18-month timeframe proposed
`by Plaintiffs is insufficient given the complex fact and expert discovery for six asserted
`patents across two patent families, and the voluminous document discovery expected
`considering the parties have each already served approximately 100 RFPs.
`
`Plaintiffs base their proposal on when the complaint was filed, but ignore the Court’s earlier
`decision that discovery need not proceed until Defendants’ partial Motion to Dismiss was
`decided. D.I. 30 (Nov. 2, 2022 Memorandum Opinion). Shure and Amgen are inapplicable
`for this reason. Shure Inc. v. ClearOne, Inc., No. 19-cv-1343, D.I. 54 (D. Del.) (denying
`motion to stay discovery pending motion to dismiss); Amgen Inc. v. Hospira, Inc., No. 15-cv-
`839, D.I. 23 (D. Del.) (order for Rule 16 conference issued while motion to dismiss was
`pending, with discovery proceeding thereafter). Once Moderna’s Motion was decided, the
`parties promptly held a 26(f) conference and began the discovery process. Far from engaging
`in “delay tactics,” Moderna voluntarily produced its Core Technical Documents on February
`10, 2023, more than two months earlier than required under Delaware’s Default Standard for
`Discovery.
`
`The parties had discussed meeting in the middle on the schedule and trial date, however,
`Moderna is involved in two other parallel litigations with conflicting trial dates: Alnylam
`Pharms., Inc. v. Moderna, Inc., et al., C.A. No. 22-cv-335-CFC (Cons.) set for a 4-day trial
`starting November 12, 2024 (the mid-point between the parties’ proposals here) and
`ModernaTX, Inc. et al v. Pfizer Inc. et al., C.A. No.22-cv-11378-RGS likely to be set for trial
`around October 2024. Moderna respectfully submits that another trial held back-to-back in
`
`
`
`
`
`

`

`Case 1:22-cv-00252-MSG Document 46 Filed 02/13/23 Page 4 of 4 PageID #: 866
`SHAW KELLER LLP
`The Honorable Mitchell S. Goldberg
`Page 4
`
`
`October to December is not feasible given the substantial overlap in Moderna fact witnesses
`and in-house counsel who will need to attend all three trials.
`
`Plaintiffs’ request for a near-term trial is also unnecessary as Plaintiffs have conceded they
`will not be seeking an injunction, only damages. D.I. 1 at 7.
`
`Respectfully submitted,
`/s/ Nathan R. Hoeschen
`Nathan R. Hoeschen (No. 6232)
`
`
`Clerk of the Court (by CM/ECF)
`All counsel of record (by CM/ECF and e-mail)
`
`cc:
`
`
`
`
`
`
`
`