Case 2:20-cv-00337-JRG Document 181 Filed 10/26/21 Page 1 of 6 PageID #: 7983
`
`
`
`
`
`SEAGEN INC.,
`
`
`
`
`v.
`
`Plaintiff,
`
`
`
`
`CASE NO. 2:20-cv-00337-JRG
`
`
`
`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`DAIICHI SANKYO CO., LTD.,
`
`
`Defendant, and
`
`
`ASTRAZENECA PHARMACEUTICALS
`LP and ASTRAZENECA UK LTD.,
`
`
`
`
`Intervenor-Defendants.
`
`
`MOTION TO COMPEL
`SEAGEN INC.’S DISCOVERY PRODUCTION
`
`

`

`Case 2:20-cv-00337-JRG Document 181 Filed 10/26/21 Page 2 of 6 PageID #: 7984
`
`
`
`
`
`INTRODUCTION
`
`This is a patent infringement case instigated by Plaintiff Seagen Inc. (“Seagen”) in its latest
`
`attempt to lay claim to Defendant Daiichi Sankyo Company, Limited’s (“Daiichi Sankyo Japan”)
`
`breakthrough cancer therapy Enhertu®. Seagen alleges infringement of U.S. Patent No.
`
`10,808,039 (the “’039 patent”), for which the patent application was filed years after Seagen
`
`learned of Daiichi Sankyo Japan’s antibody-drug conjugate technology and later sought multiple
`
`partnerships, and three months after Daiichi Sankyo Japan announced its collaboration with
`
`Defendant AstraZeneca UK Ltd. for the development and marketing of Enhertu®. The ’039 patent
`
`claims subject matter unsupported by the specification and extending far beyond the disclosures
`
`of the ten applications to which it asserts priority in an effort to cover Daiichi Sankyo Japan’s
`
`Enhertu®.
`
`This present motion to compel relates to discovery relevant to Daiichi Sankyo Japan’s
`
`invalidity defenses. Specifically, more than six months ago, Daiichi Sankyo Japan sought
`
`discovery as to Seagen’s research efforts that pertain directly to Daiichi Sankyo Japan’s lack of
`
`enablement defense. Although Seagen has produced some documents responsive to this Request,
`
`Daiichi Sankyo Japan has identified a number of documents that should have been included in the
`
`production, but were not. To date, Seagen refuses to represent that its production in response to
`
`this Request is complete. This continued delay causes Daiichi Sankyo Japan significant prejudice.
`
`Depositions are already underway, with a close of fact discovery currently just over three weeks
`
`away. Seagen should be required to produce all responsive documents immediately.
`
`SEAGEN HAS NOT PRODUCED ITS OWN RESEARCH DOCUMENTS
`
`To facilitate meaningful discovery, on April 9, 2021, Daiichi Sankyo Japan identified
`
`certain categories of documents that Seagen should produce. Among these, Daiichi Sankyo Japan
`
`propounded Request for Production No. 15 (“RFP No. 15”), requesting “[d]ocuments generated
`
`1
`
`

`

`Case 2:20-cv-00337-JRG Document 181 Filed 10/26/21 Page 3 of 6 PageID #: 7985
`
`
`after the earliest effective filing date to which [Seagen] contends the ’039 patent is entitled
`
`
`
`reflecting any efforts to attach an antibody-drug conjugate linker to any drug moiety lacking a
`
`primary or secondary amine.” Seagen originally objected to the relevance of this discovery, but
`
`the Federal Circuit has made clear that this type of evidence is relevant to the invalidity defenses
`
`raised by Daiichi Sankyo Japan, including the lack of enablement of the full scope of the claimed
`
`antibody-drug conjugates. Cf. ALZA Corp. v. Andrx Pharms, LLC, 603 F.3d 935, 942 (Fed. Cir.
`
`2010) (finding a patentee’s own inability to practice its patented invention relevant evidence of
`
`non-enablement.).
`
`Seagen ultimately agreed to produce documents responsive to RFP No. 15. Yet, despite
`
`agreeing to produce responsive documents nearly six months earlier, Seagen’s production remains
`
`deficient. Daiichi Sankyo Japan raised concerns regarding Seagen’s compliance several times in
`
`the hopes of coming to a resolution without burdening the Court. The Parties had a lead and local
`
`meet and confer on September 8, 2021, during which Seagen reiterated its promise to search for,
`
`and produce, documents responsive to RFP No. 15. On October 1, 2021, the Parties again
`
`conferred regarding, inter alia, Seagen’s deficient production. Seagen suggested that it already
`
`had produced all documents responsive to RFP No. 15, identifying only 13 documents responsive
`
`to that Request, some of which were merely duplicates or near-duplicates of documents already
`
`produced. As of today, Seagen has refused to represent that its production is complete.
`
`It is apparent that there are additional responsive documents that have not yet been
`
`produced. For example, Seagen has published efforts to create antibody-drug conjugates using
`
`drugs containing tertiary amines, (see SGIEDTX00086165 (Ex. A)). But Seagen has not produced
`
`any of its internal documents regarding this research. Likewise, Intervenor AstraZeneca is aware
`
`that Seagen conducted research with a company called Spirogen—a company that Intervenor
`
`2
`
`

`

`Case 2:20-cv-00337-JRG Document 181 Filed 10/26/21 Page 4 of 6 PageID #: 7986
`
`
`AstraZeneca later acquired. Yet Seagen has not produced its internal documents concerning the
`
`
`
`research with Spirogen1—again confirming the facial inadequacy of Seagen’s production and
`
`Seagen’s search for responsive documents.
`
`Seagen has already agreed to produce these materials. There can be no justification for its
`
`continued delay and inadequate response. Accordingly, Seagen should be compelled to produce
`
`documents responsive to Daiichi Sankyo Japan’s RFP No. 15.
`
`CONCLUSION
`
`Daiichi Sankyo Japan respectfully requests that the Court order Seagen to produce all
`
`documents falling within the scope of RFP No. 15.
`
`
`1
`
`
`
`
`
`3
`
`

`

`Case 2:20-cv-00337-JRG Document 181 Filed 10/26/21 Page 5 of 6 PageID #: 7987
`
`
`Dated: October 22, 2021
`
`
`
`
`Respectfully submitted,
`
`/s/ Preston K. Ratliff II
`
`Deron R. Dacus
`State Bar No. 00790553
`The Dacus Firm, P.C.
`821 ESE Loop 323, Suite 430
`Tyler, Texas, 75701
`+1 (903) 705-1117
`+1 (903) 581-2543 facsimile
`ddacus@dacusfirm.com
`
`J. Mark Mann
`State Bar No. 12926150
`mark@themannfirm.com
`MANN | TINDEL | THOMPSON
`300 West Main Street
`Henderson, Texas 75652
`(903) 657-8540
`(903) 657-6003 (fax)
`
`Attorneys for Defendant Daiichi Sankyo Company,
`Limited
`
`OF COUNSEL:
`
`Preston K. Ratliff II
`Joseph M. O’Malley, Jr.
`Ashley N. Mays-Williams
`Paul Hastings LLP
`200 Park Avenue
`New York, NY 10166
`(212) 318-6000
`
`Jeffrey A. Pade
`Paul Hastings LLP
`2050 M Street NW
`Washington, DC 20036
`(202) 551-1700
`
`Attorneys for Defendant Daiichi Sankyo Company,
`Limited
`
`
`
`
`
`4
`
`

`

`Case 2:20-cv-00337-JRG Document 181 Filed 10/26/21 Page 6 of 6 PageID #: 7988
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that all counsel of record who have consented to
`
`
`
`
`
`electronic service are being served with a copy of this document via electronic mail on October
`
`22, 2021.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` /s/ Preston K. Ratliff II
`
`
`
`
`
`
`
`CERTIFICATE OF CONFERENCE
`
`
`
`Pursuant to L.R. CV-7(i), the undersigned certifies that on September 8, 2021, counsel for
`
`Daiichi Sankyo Co., Ltd., with Preston Ratliff as lead counsel and Deron Dacus as local counsel,
`
`met and conferred via telephone with counsel for Seagen, with Michael Jacobs as lead counsel and
`
`Travis Underwood as local counsel for Seagen. On October 1, 2021, counsel for Daiichi Sankyo
`
`Co., Ltd., with Preston Ratliff as lead counsel and Mark Mann as local counsel, met and conferred
`
`again via telephone with counsel for Seagen, with Michael Jacobs as lead counsel and Travis
`
`Underwood as local counsel for Seagen. The Parties were unable to reach agreement and have
`
`reached an impasse, leaving an open issue for the Court to resolve. Seagen opposes this motion.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` /s/ Preston K. Ratliff II
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
`
`I hereby certify that the foregoing document and all supporting exhibits are being filed
`
`
`
`
`
`
`
`under seal pursuant to the Protective Order (Dkt. No. 55) approved and entered in this action.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` /s/ Preston K. Ratliff II
`
`
`
`
`
`
`
`
`
`
`