Case 2:20-cv-00337-JRG Document 184 Filed 10/27/21 Page 1 of 10 PageID #: 8014
`
`IN THE UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`CASE NO. 2:20-cv-00337-JRG
`
`SEAGEN INC.,
`
`Plaintiff,
`
`v.
`
`DAIICHI SANKYO CO., LTD.,
`
`Defendant, and
`
`ASTRAZENECA PHARMACEUTICALS LP,
`AND ASTRAZENECA UK LTD.,
`
`Intervenor-Defendants.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`MOTION TO COMPEL
`THE DEPOSITION OF CLAY SIEGALL, PH.D.
`
`

`

`Case 2:20-cv-00337-JRG Document 184 Filed 10/27/21 Page 2 of 10 PageID #: 8015
`
`TABLE OF CONTENTS
`
`INTRODUCTION ......................................................................................................................... 1 
`BACKGROUND – DR. SIEGALL AND SEAGEN’S CLAIMS ................................................. 2 
`LEGAL STANDARD .................................................................................................................... 4 
`ARGUMENT ................................................................................................................................. 5 
`CONCLUSION .............................................................................................................................. 6 
`
`

`

`Case 2:20-cv-00337-JRG Document 184 Filed 10/27/21 Page 3 of 10 PageID #: 8016
`
`INTRODUCTION
`
`Plaintiff Seagen Inc.’s (“Seagen”) President and CEO, Clay Siegall, Ph.D., has unique
`
`personal knowledge concerning, at a minimum, Seagen’s allegations of infringement and willful
`
`infringement, Seagen’s claim for damages, and Daiichi Sankyo Company, Limited’s (“Daiichi
`
`Sankyo Japan”) patent invalidity and unenforceability defenses, including its affirmative defense
`
`of prosecution laches. Specifically, for several years prior to the filing of this action,
`
` It was only in 2019, and several months after
`
`Daiichi Sankyo Japan announced a collaboration with AstraZeneca UK Ltd. for the development
`
`and marketing of DS-8201, that Seagen filed U.S. Patent Application No. 16/507,839 (the “’839
`
`application”), which resulted in the patent-in-suit.
`
`Upon information and belief, based on his personalized knowledge of DS-8201, it was Dr.
`
`Siegall that (1) directed and led his Seagen colleagues to develop a plan to lay claim to Daiichi
`
`Sankyo Japan’s DS-8201 and (2) authorized the preparation and filing of a new patent application
`
`that resulted in the patent-in-suit. Dr. Siegall is the only one who can testify as to his personal
`
`knowledge of DS-8201 and the actions he directed Seagen to take with respect to DS-8201,
`
`including how they are consistent or inconsistent with Seagen’s claim of willful infringement.
`
`Daiichi Sankyo Japan should be entitled to explore these topics in deposition directly with Dr.
`
`Siegall because they go to his personalized knowledge and actions.
`
`1
`
`

`

`Case 2:20-cv-00337-JRG Document 184 Filed 10/27/21 Page 4 of 10 PageID #: 8017
`
`Despite Dr. Siegall’s unique personal knowledge concerning the Parties’ claims and
`
`defenses, Seagen refuses to make Dr. Siegall available for deposition, relying on the
`
`apex-deposition doctrine. Just a few months ago, however,
`
` Seagen’s refusal to make Dr. Siegall available for
`
`deposition also ignores Daiichi Sankyo Japan’s offer to minimize any burden to Dr. Siegall by
`
`limiting his deposition to just three hours on the record. For the reasons explained herein, this
`
`Court should compel Seagen to produce Dr. Siegall for deposition.
`
`BACKGROUND – DR. SIEGALL AND SEAGEN’S CLAIMS
`
`2
`
`

`

`Case 2:20-cv-00337-JRG Document 184 Filed 10/27/21 Page 5 of 10 PageID #: 8018
`
`1
`
` Despite this wealth of knowledge as to DS-8201,
`
`neither Dr. Siegall nor Seagen ever once suggested that DS-8021 was covered by any of Seagen’s
`
`intellectual property. Instead, Seagen’s scientists praised Daiichi Sankyo Japan’s ADC
`
`technology, including DS-8201.
`
` In March 2019, Daiichi Sankyo Japan instead collaborated with
`
`AstraZeneca UK Ltd. and they publicly announced their global collaboration. Seagen filed the
`
`’839 application on July 10, 2019—three months later. Seagen then filed this action immediately
`
`upon the issuance of the patent-in-suit. Defendants have reason to believe that it was Dr. Siegall
`
`who specifically directed Seagen’s changed approach to DS-8201 and the filing of the ’839
`
`application.
`
`After Seagen filed the ’839 application, it filed an arbitration demand on November 12,
`
`2019, alleging patent rights to Daiichi Sankyo Japan’s ADC technology and DS-8201 based on a
`
`failed collaboration between the companies from 2008–2015.
`
` This failed 2008–2015 collaboration
`
`between the companies—for which Dr. Siegall signed and executed the underlying governing
`
`agreement (see SGIEDTX00006850 (Ex. A))—forms the basis, in part, of Seagen’s willful
`
`infringement claim (see Compl. ¶¶ 14, 27 (Dkt. No. 1)).
`
`1 Seagen had in-licensed this non-ADC small molecule drug (now marketed as Tukysa®), which it
`now alleges in this action is a product losing profits to DS-8201 (now marketed as Enhertu®).
`Tukysa® was launched after non-party Daiichi Sankyo, Inc. received FDA approval to sell DS-
`8201.
`
`3
`
`

`

`Case 2:20-cv-00337-JRG Document 184 Filed 10/27/21 Page 6 of 10 PageID #: 8019
`
`In view of Dr. Siegall’s unique personal knowledge, Daiichi Sankyo Japan notified Seagen
`
`of its intention to take the deposition of Dr. Siegall. Seagen objected, stating Dr. Siegall is an
`
`“apex executive” whose deposition Seagen does not think is necessary. Daiichi Sankyo Japan
`
`explained Dr. Siegall’s unique personal knowledge is relevant to this action, and that it was aware
`
`of no other individuals who could be appropriate substitutes. Further, in the spirit of compromise,
`
`and to reduce any alleged burden to Dr. Siegall, Daiichi Sankyo Japan offered to limit his
`
`deposition to three hours of time on the record. Seagen did not identify in response other
`
`individuals who could speak to the personal knowledge of Dr. Siegall. Seagen instead demanded,
`
`in retaliation, the deposition of Sunao Manabe, Daiichi Sankyo Japan’s CEO, a Japanese citizen
`
`based in Japan. This was the first time in this action that Dr. Manabe was ever mentioned by
`
`Seagen. Seagen also confirmed that it will seek to depose Dr. Manabe only if Daiichi Sankyo
`
`Japan pursued the deposition of Dr. Siegall. Seagen identified no uniquely relevant information
`
`or personal knowledge that Daiichi Sankyo Japan’s CEO possesses.
`
`LEGAL STANDARD
`
`Federal Rule of Civil Procedure 30 governs the taking of oral depositions and permits a
`
`party to “depose any person, including a party, without leave of court . . . .” Fed. R. Civ. P.
`
`30(a)(1). “[F]ederal courts permit the depositions of high-level executives, sometimes referred to
`
`as apex executives, when conduct and knowledge at the highest levels of the corporation are
`
`relevant to the case.” Gaedeke Holdings VII, Ltd. v. Mills, No. 3:15-mc-36-D-BN, 2015 WL
`
`3539658, at *3 (E.D. Tex. June 5, 2015) (internal citations omitted). “One long-established factor
`
`considered by courts in determining whether an apex deposition should be taken is whether the
`
`individual has unique personal knowledge of the matter in the case.” Schmidt v. Goodyear Tire &
`
`Rubber Co., No. 2:01-cv-272, 2003 WL 27375844, at *1 (E.D. Tex. Jan. 7, 2003) (internal citation
`
`omitted). Once a “threshold burden of relevancy” is established, the “burden shifts” to the party
`
`4
`
`

`

`Case 2:20-cv-00337-JRG Document 184 Filed 10/27/21 Page 7 of 10 PageID #: 8020
`
`opposing the discovery to show “why discovery should not be permitted.” Gauthier v. Union Pac.
`
`R. Co., No. CIVA1:07CV12(TH/KFG), 2008 WL 2467016, at *3 (E.D. Tex. June 18, 2008).
`
`ARGUMENT
`
`First, Dr. Siegall’s personal knowledge and testimony is unquestionably relevant to this
`
`action. Seagen has repeatedly used a failed 2008-2015 collaboration between Daiichi Sankyo
`
`Japan and Seagen as part of the basis for its willfulness claims. (Compl. ¶¶ 14, 27 (Dkt. No. 1);
`
`Pl.’s Mot. to Compel at 5 (Dkt. No. 79)).
`
`2 Moreover, after Seagen and Daiichi Sankyo Japan’s failed collaboration,
`
` Seagen never suggested it had any patent or patent application that
`
`purported to disclose or claim DS-8201. It was only after the announcement of the collaboration
`
`between Daiichi Sankyo Japan and AstraZeneca UK Ltd. that Seagen changed its conduct—a
`
`change that was directed and led by Dr. Siegall. That extensive prior knowledge of DS-8201 and
`
`Seagen’s changed approach to DS-8201—issues about which Dr. Siegall has uniquely
`
`personalized knowledge—are directly relevant to the claims for damages here, as well as the patent
`
`invalidity and unenforceability defenses at issue, including the affirmative defense of prosecution
`
`laches.
`
`2 Of course, Seagen’s reliance on claims it made in the pending arbitration to support its willfulness
`claims in the current action legally makes no sense, because its allegations concern activities
`between the companies more than five years before the patent-in-suit issued on October 20,
`2020. Nonetheless, given that Seagen has relied in part on this failed 2008–2015 collaboration to
`support its positions in this action, a deposition of Dr. Siegall is appropriate because the
`apex-deposition doctrine should not operate as a sword and a shield.
`
`5
`
`

`

`Case 2:20-cv-00337-JRG Document 184 Filed 10/27/21 Page 8 of 10 PageID #: 8021
`
`Second, it is not possible for Daiichi Sankyo Japan to obtain this discovery through means
`
`less burdensome than the three-hour deposition that Daiichi Sankyo Japan is requesting. Because
`
`Dr. Siegall’s “personal knowledge is relevant in its own right,” Daiichi Sankyo Japan should be
`
`able to ask him “directly, under oath” about his actions and Seagen’s strategy with respect to
`
`DS-8201. E.g., Kimberly-Clark Corp. v. Continental Casualty Co., No. 3:05-cv-0475-D, 2006
`
`WL 3436064, at *4 (N.D. Tex. Nov. 29, 2006). Tellingly, Seagen has offered no reasonable
`
`alternative means by which Daiichi Sankyo Japan could obtain this discovery.
`
`The apex-deposition doctrine does, of course, have its appropriate use. Indeed, Seagen’s
`
`transparently retaliatory effort to depose Daiichi Sankyo Japan’s CEO, Dr. Manabe—despite his
`
`lack of any uniquely relevant knowledge—is precisely the type of harassing deposition against
`
`which the apex doctrine is designed to protect. The deposition as to Dr. Siegall, however, is
`
`different and akin to the type of testimony permitted in cases like Kimberly-Clark. Particularly in
`
`light of Daiichi Sankyo Japan’s offer to restrict this deposition to a mere three hours on the record,
`
`Daiichi Sankyo Japan should be permitted to depose Dr. Siegall. Cf. Kimberly-Clark Corp., 2006
`
`WL 3436064, at *4 (recognizing that limitations on the deposition testimony can ameliorate
`
`potential burden). Accordingly, Seagen should be compelled to produce Dr. Siegall for deposition.
`
`CONCLUSION
`
`For the foregoing reasons, Daiichi Sankyo Japan respectfully requests that this Court grant
`
`its request to compel Seagen to produce Dr. Siegall for the requested deposition. Daiichi Sankyo
`
`Japan also requests any other relief this Court believes is appropriate, such as Daiichi Sankyo
`
`Japan’s fees and costs associated with the filing of this motion or other related costs.
`
`6
`
`

`

`Case 2:20-cv-00337-JRG Document 184 Filed 10/27/21 Page 9 of 10 PageID #: 8022
`
`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
`
`7
`
`

`

`Case 2:20-cv-00337-JRG Document 184 Filed 10/27/21 Page 10 of 10 PageID #: 8023
`
`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 October 1, 2021, counsel for
`
`Daiichi Sankyo Co., Ltd., with Preston Ratliff as lead counsel and Mark Mann 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. 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
`
`