Case 1:22-cv-00252-MSG Document 72 Filed 03/21/23 Page 1 of 9 PageID #: 1380
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`CIVIL ACTION
`
`NO. 22-252
`
`:
`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. :
`
`
`SCHEDULING ORDER
`
`AND NOW, this 21st day of March, 2023, the Court having conducted a Rule 16(b)
`
`
`
`scheduling conference and received the parties’ Joint Status Report Pursuant to Rule 26(f), it is
`
`hereby ORDERED that:
`
`
`
`1.
`
`Rule 26(a)(1) Initial Disclosures and E-Discovery Default Standard. Unless
`
`otherwise agreed to by the parties, initial disclosures shall be made pursuant to Federal Rule of
`
`Civil Procedure 26(a)(1) within ten (10) days of the date the Court enters this Order. If they have
`
`not already done so, the parties are to review the Court’s Default Standard for Discovery, Including
`
`Discovery
`
`of Electronically Stored
`
`Information
`
`(“ESI”), which
`
`is
`
`posted
`
`at
`
`http://www.ded.uscourts.gov (see Other Resources, Default Standard for Discovery) and is
`
`

`

`Case 1:22-cv-00252-MSG Document 72 Filed 03/21/23 Page 2 of 9 PageID #: 1381
`
`incorporated herein by reference. The parties shall make their initial disclosures pursuant to
`
`Paragraph 3 of the Default Standard within thirty (30) days of the date the Court enters this Order.
`
`The parties shall meet and confer about a proposed ESI Order and submit it to the court within
`
`forty-five (45) days from the date the Court enters this Order. Until the parties have agreed on an
`
`appropriate ESI Order or the Court has resolved a dispute concerning a proposed ESI Order and
`
`such order is entered, the Court’s Default Standard shall control. The lack of agreement between
`
`the parties on an ESI Order shall not be used as a basis to refuse to respond to discovery requests
`
`while such order is pending.
`
`
`
`2.
`
`Joinder of Other Parties and Amendment of Pleadings. All motions to join other
`
`parties, and to amend or supplement the pleadings, shall be filed on or before October 16, 2023.
`
`Unless otherwise ordered by the Court, any motion to join a party or motion to amend the pleadings
`
`shall be made pursuant to the procedures set forth in Paragraphs 8(g) and 9.
`
`
`
`3.
`
`Application to Court for Protective Order. Should counsel find it necessary to apply
`
`to the Court for a protective order specifying terms and conditions for the disclosure of confidential
`
`information, counsel should confer and attempt to reach an agreement on a proposed form of order
`
`and submit it to the Court within twenty-one (21) days from the date of this Order. Any proposed
`
`protective order should comply with the factors set forth in Pansy v. Borough of Stroudsburg, 23
`
`F.3d 772 (3d Cir. 1994). Should counsel be unable to reach an agreement on a proposed form of
`
`order, counsel must follow the Provisions of Paragraph 8(g) below.
`
`Any proposed protective order must include the following paragraph:
`
`Other Proceedings. By entering this order and limiting the
`disclosure of information in this case, the Court does not intend to
`preclude another court from finding that information may be
`relevant and subject to disclosure in another case. Any person or
`party subject to this order who becomes subject to a motion to
`disclose another party’s information designated “confidential” [the
`
`2
`
`
`
`
`
`

`

`Case 1:22-cv-00252-MSG Document 72 Filed 03/21/23 Page 3 of 9 PageID #: 1382
`
`parties should list any other level of designation, such as “highly
`confidential,” which may be provided for in the protective order]
`pursuant to this order shall promptly notify that party of the motion
`so that the party may have an opportunity to appear and be heard on
`whether that information should be disclosed.
`
`Papers Filed Under Seal. In accordance with section G of the Revised
`
`
`
`4.
`
`Administrative Procedures Governing Filing and Service by Electronic Means, a redacted version
`
`of any sealed document shall be filed electronically within seven (7) days of the filing of the sealed
`
`document. Any request to seal should comply with the principles set forth in In re Avandia Mktg.
`
`Sales Pracs. & Prods. Liab. Litig., 924 F.3d 662, 671 (3d Cir. 2019).
`
`
`
`5.
`
`Courtesy Copies. The parties shall provide to the Court one (1) courtesy copy of
`
`all briefs and other document filed in support of any briefs (i.e., appendices, exhibits, declarations,
`
`affidavits etc.). This provision also applies to papers filed under seal. All courtesy copies shall be
`
`double-sided.
`
`
`
`
`
`6.
`
`
`
`Disclosures. Absent agreement among the parties, and approval of the Court:
`
`(a)
`
`By March 23, 2023, Defendants shall produce core technical documents
`
`related to the accused product(s), sufficient to show how the accused product(s) work(s), including
`
`but not limited to non-publicly available operation manuals, product literature, schematics, and
`
`specifications. Defendants shall also produce sales figures for the accused product(s).
`
`
`
`
`
`(b)
`
`By April 23, 2023, Plaintiffs shall produce an initial claim chart relating
`
`each known accused product to the asserted claims each such product allegedly infringes.
`
`
`
`
`
`(c)
`
`By May 19, 2023, Defendants shall produce their initial invalidity
`
`contentions for each asserted claim, as well as the known related invalidating references.
`
`
`
`
`
`(d)
`
`(e)
`
`By March 15, 2024, Plaintiffs shall provide final infringement contentions.
`
`By March 15, 2024, Defendants shall provide final invalidity contentions.
`
`3
`
`
`
`
`
`
`
`

`

`Case 1:22-cv-00252-MSG Document 72 Filed 03/21/23 Page 4 of 9 PageID #: 1383
`
`
`
`7.
`
`Discovery. Unless otherwise ordered by the Court or agreed to by parties, the
`
`limitations on discovery set forth in the Federal Rules shall be strictly observed.
`
`
`
`
`
`(a)
`
`Fact Discovery Cut Off. All fact discovery in this case shall be initiated so
`
`that it will be completed on or before March 1, 2024.
`
`
`
`
`
`(b)
`
`Document Production. Document production shall be substantially
`
`complete by October 13, 2023.
`
`
`
`
`
`(c)
`
`Requests for Admission. A maximum of 45 requests for admission are
`
`permitted for each side. Requests to admit the authenticity of a document shall not count toward
`
`this limit.
`
`
`
`
`
`
`
`
`
`(d)
`
`Interrogatories.
`
`
`
`i.
`
`A maximum of 25
`
`interrogatories,
`
`including contention
`
`interrogatories, are permitted for each side.
`
`
`
`
`
`
`
`ii.
`
`The Court encourages the parties to serve and respond to contention
`
`interrogatories early in the case. In the absence of agreement among the parties, contention
`
`interrogatories, if filed, shall first be addressed by the party with the burden of proof. The adequacy
`
`of all interrogatory answers shall be judged by the level of detail each party provides (i.e., the more
`
`detail a party provides, the more detail a party shall receive).
`
`
`
`
`
`
`
`
`
`(e)
`
`Depositions.
`
`
`
`i.
`
`Limitations on Hours for Deposition Discovery. Each side is limited
`
`to a total of 85 hours of taking testimony by deposition upon oral examination, including
`
`depositions of third parties. Any deposition lasting less than 4 hours will count as 4 hours against
`
`the total time of the side taking the deposition. Each deposition will be limited to seven (7) hours
`
`in length of on-the-record time except as specifically extended, by order of the Court, or otherwise
`
`
`
`4
`
`

`

`Case 1:22-cv-00252-MSG Document 72 Filed 03/21/23 Page 5 of 9 PageID #: 1384
`
`agreed to by the parties. For clarity, the hour limitations described in this paragraph do not apply
`
`to depositions of expert witnesses.
`
`
`
`
`
`
`
`ii.
`
`Location of Depositions. The parties shall meet and confer
`
`regarding locations of depositions, taking into account convenience for the deponent.
`
`
`
`
`
`
`
`
`
`(f)
`
`Disclosure of Expert Testimony.
`
`
`
`i.
`
`Expert Reports. For the party who has the initial burden of proof on
`
`the subject matter, the initial Federal Rule of Civil Procedure 26(a)(2) disclosure of expert
`
`testimony is due on or before April 5, 2024. The supplemental disclosure to contradict or rebut
`
`evidence on the same matter identified by another party is due on or before May 6, 2024. Reply
`
`expert reports from the party with the initial burden of proof are due on or before June 7, 2024.
`
`No other expert reports will be permitted without either consent of all parties or leave of the Court.
`
`On or before June 10, 2024, the parties shall advise of the dates and times of their experts’
`
`availability for deposition.
`
`
`
`
`
`
`
`ii.
`
`Expert Discovery Cut-Off. All expert discovery in this case shall be
`
`initiated so that it will be completed on or before July 10, 2024.
`
`
`
`
`
`(g)
`
`Discovery Matters and Disputes Relating to Protective Orders. Should
`
`counsel find, after a reasonable effort pursuant to Local Rule 7.1.1, that they are unable to resolve
`
`a discovery matter or a dispute relating to a protective order, a party may file correspondence on
`
`ECF that shall not exceed three (3) pages outlining the issues in dispute and its position on those
`
`issues. Within seven (7) days thereafter, any responsive correspondence shall also be filed on ECF
`
`and shall not exceed three (3) pages. Upon review, the Court may schedule a telephone conference.
`
`Prior to the above submissions, counsel shall meet and confer to make every effort to come to an
`
`amicable resolution.
`
`
`
`5
`
`

`

`Case 1:22-cv-00252-MSG Document 72 Filed 03/21/23 Page 6 of 9 PageID #: 1385
`
`
`
`
`
`8.
`
`
`
`Motions to Amend/Motions to Strike
`
`(a)
`
`Any motion to amend (including a motion for leave to amend) a pleading
`
`or any motion to strike any pleading or other document shall be made pursuant to the discovery
`
`dispute procedure set forth in Paragraph 8(g) above.
`
`
`
`
`
`(b) Any such motion shall attach the proposed amended pleading as well as a
`
`“redline” comparison to the prior pleading or attach the document to be stricken.
`
`
`
`9.
`
`Advice of Counsel. On or before October 27, 2023, the parties shall advise each
`
`other if they intend to assert an advice of counsel defense and, if so, produce and identify all
`
`document they intend to rely on to support that defense.
`
`
`
`10.
`
`Technology Tutorials. If any party chooses to file a technology tutorial, it shall be
`
`submitted on or before the date that the Joint Claim Construction Brief is filed.
`
`
`
`11.
`
`Claim Construction Issue Identification. On June 9, 2023, the parties shall
`
`exchange a list of those claim term(s)/phrase(s) that they believe need construction and their
`
`proposed claim construction of those term(s)/phrase(s). On June 16, 2023, the parties shall
`
`exchange counter proposed constructions for any terms identified only by the opposing party in
`
`the initial exchange of claim terms. These documents will not be filed with the Court. Subsequent
`
`to exchanging that list, the parties will meet and confer to prepare a Joint Claim Construction Chart
`
`to be submitted on June 29, 2023. The parties’ Joint Claim Construction Chart should identify
`
`for the Court no more than ten (10) term(s)/phrase(s) of the claim(s) in issue for construction,
`
`and should include each party’s proposed construction of the disputed claim language with
`
`citation(s) only to the intrinsic evidence in support of their respective proposed constructions.
`
`Intrinsic evidence (including copies of the patent(s) at issue) shall NOT be attached to the joint
`
`claim construction chart and, instead, the parties shall include a joint appendix with the joint claim
`
`
`
`6
`
`

`

`Case 1:22-cv-00252-MSG Document 72 Filed 03/21/23 Page 7 of 9 PageID #: 1386
`
`construction brief, and the joint appendix shall include a copy of the patent(s) at issue and portions
`
`of all relevant intrinsic evidence that would have otherwise been included with the joint claim
`
`construction chart, as well as any additional evidence cited in the parties’ briefing.
`
`
`
`12.
`
`Claim Construction Briefing. Plaintiffs shall serve, but not file, their opening brief,
`
`not to exceed twenty (20) pages, on July 28, 2023 Defendants shall serve, but not file, their
`
`answering brief, not to exceed thirty (30) pages, on August 28, 2023. Plaintiffs shall serve, but
`
`not file, their reply brief, not to exceed twenty (20) pages, on September 18, 2023. Defendants
`
`shall serve, but not file, their sur-reply brief, not to exceed ten (10) pages, on October 9, 2023.
`
`No later than October 11, 2023, the parties shall file a Joint Claim Construction Brief. The parties
`
`shall copy and paste their unfiled briefs into one brief, with their positions on each claim term in
`
`sequential order, in substantially the form below. If the joint brief as submitted is more than eighty
`
`(80) pages, the parties must certify that the page limits (or equivalent word counts) in the
`
`Scheduling Order have been complied with and provide a brief explanation (e.g., formatting issues,
`
`listing of agreed-upon terms) as to why the brief is longer than 80 pages.
`
`JOINT CLAIM CONSTRUCTION BRIEF
`
`I.
`
`II.
`
`Agreed-Upon Constructions
`
`Disputed Constructions
`
`[TERM 1]
`
`1. Plaintiffs’ Opening Position
`
`2. Defendants’ Answering Position
`
`3. Plaintiffs’ Reply Position
`
`4. Defendants’ Sur-reply Position
`
`[TERM 2]
`
`
`
`7
`
`

`

`Case 1:22-cv-00252-MSG Document 72 Filed 03/21/23 Page 8 of 9 PageID #: 1387
`
`1. Plaintiffs’ Opening Position
`
`2. Defendants’ Answering Position
`
`3. Plaintiffs’ Reply Position
`
`4. Defendants’ Sur-reply Position
`
`The parties need not include any general summaries of the law relating to claim construction. If
`
`there are any materials that would be submitted in an index, the parties shall submit them in a Joint
`
`Appendix.
`
`
`
`13.
`
`Hearing on Claim Construction. Beginning at 10:00 a.m. on January 25, 2024, in
`
`a location and courtroom to be determined, the Court will hear argument on claim construction.
`
`The parties need not include any general summaries of the law relating to claim construction in
`
`their presentations to the Court. The parties shall notify the Court, by joint letter submission, no
`
`later than the date on which their joint claim construction brief is filed: (i) whether they request
`
`leave to present testimony at the hearing; and (ii) the amount of time they are requesting be
`
`allocated to them for the hearing.
`
`
`
`Provided that the parties comply with all portions of this Scheduling Order, and any other
`
`orders of the Court, the parties should anticipate that the Court will issue its claim construction
`
`order within sixty (60) days of the conclusion of the claim construction hearing. If the Court is
`
`unable to meet this goal, it will advise the parties no later than sixty (60) days after the conclusion
`
`of the claim construction hearing.
`
`
`
`
`
`14.
`
`Summary Judgment Motions.
`
`No case dispositive motions shall be filed without prior authorization of the Court. Any
`
`party requesting leave to file a dispositive motion shall submit a letter, not exceeding (3) pages,
`
`briefly setting out the basis for such motion. Any such letter shall be submitted no later than
`
`
`
`8
`
`

`

`Case 1:22-cv-00252-MSG Document 72 Filed 03/21/23 Page 9 of 9 PageID #: 1388
`
`August 1, 2024. Within seven (7) days after the submission of a letter in compliance with this
`
`Order, any opposing party shall file a responsive letter, not to exceed three (3) pages. Within three
`
`(3) days thereafter, the party requesting leave may file a reply letter, not to exceed two (2) pages,
`
`and, by this same date, the parties shall file a letter requesting a teleconference to address the
`
`request for leave to file a case dispositive motion. If leave is granted, the Court will thereafter set
`
`a briefing schedule.
`
`
`
`15.
`
`Daubert Motions. Each SIDE is permitted to file a single, comprehensive Daubert
`
`motion. Any Daubert motion and any opening brief in support of the motion shall be served and
`
`filed on or before August 12, 2024. Any opposition brief shall be served and filed on or before
`
`September 12, 2024. Opening and opposition briefs shall be limited to twenty-five (25) pages.
`
`Reply or sur-reply briefs may only be filed with leave of Court. Counsel is reminded that Federal
`
`Rule of Evidence 702 has a “liberal policy of admissibility,” Pineda v. Ford Motor Co., 520 F.3d
`
`237, 243 (3d Cir. 2008) (quotation omitted), and “the rejection of expert testimony is the exception
`
`rather than the rule.” Fed. R. Evid. 702, Advisory Comm. Notes (2000).
`
`
`
`16.
`
`Applications by Motion. Except as otherwise specified herein, any application to
`
`the Court shall be by written motion. Any non-dispositive motion should contain the statement
`
`required by Local Rule 7.1.1.
`
`
`
`17.
`
`All further deadlines, including setting a trial date, shall be set following resolution
`
`of dispositive/Daubert motions, or, if no such motions are filed, after the deadline for filing such
`
`motions has passed.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BY THE COURT:
`
`
`
`/s/ Mitchell S. Goldberg
`MITCHELL S. GOLDBERG, J.
`
`
`
`9
`
`