Case 2:20-cv-00337-JRG Document 192 Filed 11/02/21 Page 1 of 8 PageID #: 8107
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`IN THE UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Civil Action No. 2:20-CV-00337-JRG
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`SEAGEN INC.,
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`v.
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`Plaintiff,
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`DAIICHI SANKYO CO., LTD.,
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`Defendant,
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`ASTRAZENECA PHARMACEUTICALS LP, and
`ASTRAZENECA UK LTD,
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` Intervenor-Defendants.
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`SEAGEN INC.’S MOTION TO COMPEL
`THE DEPOSITION OF SUNAO MANABE
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`Case 2:20-cv-00337-JRG Document 192 Filed 11/02/21 Page 2 of 8 PageID #: 8108
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`I.
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`INTRODUCTION
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`Plaintiff Seagen Inc. (“Seagen”) moves to compel Defendant Daiichi Sankyo Co., Ltd.
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`(“DSC”) to make DSC’s Chief Executive Officer, Sunao Manabe, available for a deposition in
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`this action.1
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`Mr. Manabe’s own statements reveal his direct personal knowledge of Seagen’s
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`allegations of infringement and willfulness and of DSC’s purported invalidity defenses. (See Exs.
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`1-3 (excerpts of Sunao Manabe’s public statements).)
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`DSC cannot rely on the apex witness doctrine to shield this witness from deposition,
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`especially given the position it is taking in its co-pending motion to compel the deposition of
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`Seagen’s CEO. (Dkt. 178.) But this motion has a much stronger foundation than DSC’s motion.
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`While DSC requests the deposition of a Seagen apex witness based only on “information and
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`belief” that he has unique knowledge, Mr. Manabe has publicly revealed that he does have unique
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`first-hand knowledge that Seagen has not been able to obtain through other means.
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`Nor should the location of Mr. Manabe bar his deposition. Mr. Manabe regularly travels
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`for business, and DSC has demonstrated that it can bring its witnesses to the United States for
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`testimony, as needed.
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`II.
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`ARGUMENT
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`Seagen seeks an order compelling the deposition testimony of Sunao Manabe because it is
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`relevant and proportional to the needs of the case, the apex witness doctrine does not apply, and Mr.
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`Manabe’s location in Japan is not a bar to Seagen taking his deposition.
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`1 Seagen provided notice to DSC that it sought Mr. Manabe’s deposition on September 29, 2021 and
`followed up with a formal letter on September 30, 2021. The parties held a meet and confer on
`October 1, 2021 where Seagen explained the relevance of the knowledge of Mr. Manabe to the
`issues in dispute. Despite this, DSC continues to refuse to make Mr. Manabe available for
`deposition.
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`1
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`Case 2:20-cv-00337-JRG Document 192 Filed 11/02/21 Page 3 of 8 PageID #: 8109
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`A. Mr. Manabe’s testimony is relevant to the parties’ claims and defenses
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`Mr. Manabe should be compelled to give testimony via deposition because he has direct and
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`unique knowledge regarding Seagen’s claims of infringement, DSC’s willful decision to continue to
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`infringe, the development of the accused product, and DSC’s claims of invalidity.
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`In general, “parties may obtain discovery regarding any matter, not privileged, that is
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`relevant to the claim or defense of any party.” Pers. Audio, LLC v. Apple, Inc., No. 9:09-CV-111,
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`2010 WL 9499679, at *1 (E.D. Tex. June 1, 2010) (citing Fed. R. Civ. P. 26). Local Rule CV–
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`26(d) provides “guidelines for counsel and the court to follow when determining whether a
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`particular piece of information is ‘relevant to the claim or defense of any party.’” Id. Discovery
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`pursuant to the Federal Rules is a “‘broad . . . regime. . . .’” Id. (citing O2 Micro Int'l v. Monolithic
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`Power Sys., 467 F.3d 1355, 1366 (5th Cir.2006)).
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`Mr. Manabe has been CEO of DSC since June 2019, but he has been an employee of DSC
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`intimately involved in developing DSC’s cancer drug pipeline since long before that. During the
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`time period when DSC developed the accused product, DS-8201 (ENHERTU®), Mr. Manabe was
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`Head of the Business Intelligence Division and a Member of the Board. He became Chief
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`Operating Officer in 2017, and was involved in the decision to launch DS-8201 for sale in the
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`United States. In his executive capacity, he authorized the filing of multiple declaratory judgment
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`actions against Seagen in Delaware. Unlike DSC’s motion as to Dr. Siegall, Seagen’s motion is not
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`based on mere “information and belief” conjecture. Rather, Mr. Manabe has repeatedly and
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`publicly espoused to shareholders that DSC faces no risk from Seagen’s patent portfolio, asserting
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`that Seagen’s patent is invalid. Whether Mr. Manabe has any reasonable basis for that belief (or as
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`is more likely the case, whether he has been willfully blind to the risk DSC faces) goes directly to
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`whether DSC willfully infringed and has continued to infringe Seagen’s asserted patent. Mr.
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`Manabe’s testimony is also relevant to invalidity, which he identifies as DSC’s core defense.
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`Mr. Manabe’s public statements include the following assertions that Seagen’s patent is not
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`Case 2:20-cv-00337-JRG Document 192 Filed 11/02/21 Page 4 of 8 PageID #: 8110
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`valid:
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`• “. . . [Seagen] obtained a patent on October 20th. And they claim that Daiichi Sankyo
`infringes that patent. In fact, we even doubt the establishment of this patent itself.
`And we believe that it's not established. Even if it is established, we don't believe we
`infringed their patent . . . .” (See Ex. 1 (Q2 2021 Earning Call (Oct 30, 2020)).)
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`• “[Interpreted]. . . Seagen is saying that based on their patent they have acquired
`recently, they are saying that we are infringing their patent. And Daiichi Sankyo
`believes that Seagen’s newly acquired patent itself is invalid. So we don't think we
`are infringing their patent . . . And if there is any progress in this case, I’d like to
`report this to you.” (See Ex. 2 (Daiichi Sankyo Co. Ltd. R&D Day (Dec. 15, 2020)).)
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` “. . .Seagen, is creating certain intellectual properties related to Daiichi Sankyo's
`ADC projects. However, Daiichi Sankyo is very confident that their claim is not
`valid.” (See Ex. 3 (Daiichi Sankyo Co. Ltd. at JPMorgan Healthcare Conference
`(Jan. 13, 2021)).)
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`•
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`• “. . . [L]ast year, Seagen obtained a new patent. Based on the new patent, Seagen
`instituted the legal action of patent infringement against Daiichi Sankyo, I mean,
`October last year, I think. However, DS filed DJ action again in the District Court of
`Delaware in response to the Seagen's legal action. In addition, as we believe their
`patent itself is not valid, their new patent is not valid. This is our evaluation, and
`we're confident. Thus, DS initiated an action of post-granted review in December last
`year. Now very complicated, there are several disputes ongoing.” (See id.)
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`B.
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`The Apex witness doctrine does not apply here
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`The apex witness doctrine does not bar the deposition of Mr. Manabe because Mr. Manabe
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`has relevant and unique knowledge relevant to this case, and Seagen already exhausted alternative
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`discovery methods to obtain this information.
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`Federal Rule of Civil Procedure 30 permits a party to “depose any person, including a party,
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`without leave of court . . . .” Fed. R. Civ. P. 30(a)(1). Federal courts permit the depositions of high
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`level executives of a party, or “apex executives,” when “conduct and knowledge at the highest
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`levels of the corporation are relevant to the case.” See, e.g., Robinson v. Nexion Health At Terrell,
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`Inc., 312 F.R.D. 438, 443 (N.D. Tex. 2014).
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`As explained above, Mr. Manabe’s testimony is highly relevant to Seagen’s claims and
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`DSC’s defenses. His public statements make it clear that he has personal knowledge of DSC’s
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`Case 2:20-cv-00337-JRG Document 192 Filed 11/02/21 Page 5 of 8 PageID #: 8111
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`invalidity defenses and its basis for asserting that it will prevail in this case. If he in fact had no
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`basis for making these statements, that confirmation would support a finding of willfulness.
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`Moreover, DSC has presented Seagen with no alternative deponent from DSC’s management in
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`Japan. Instead, DSC seeks to bar Seagen from obtaining testimony from any witnesses in Japan,
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`save one—the individual DSC holds out as the inventor of the accused product, Hiroyuki Naito.
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`DSC’s document production shows that a whole host of individuals with intimate knowledge of
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`Seagen’s technology—gained under conditions of confidentiality from a then-ongoing collaboration
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`between Seagen and DSC—developed the accused product by relying on Seagen’s intellectual
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`property. It is no coincidence that the accused product meets each element of Seagen’s asserted
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`patent claims and that DSC’s core defense is invalidity, as opposed to non-infringement. DSC has
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`thus far refused to produce any fact witness with personal knowledge about how far up DSC’s
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`chain of management there was knowledge of this misappropriation, and in particular, whether Mr.
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`Manabe knew of the misappropriation when he made his public statements about the lawsuit.
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`C.
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`There is no undue burden
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`Given the stakes in this litigation, compelling Mr. Manabe’s testimony is appropriate and
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`COVID restrictions should be no bar. As an executive, Mr. Manabe travels frequently, and even if
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`he cannot give his testimony from Japan, there are numerous locations not far from Japan where he
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`could provide it. To ease any alleged burden on DSC and Mr. Manabe, Seagen would be willing to
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`conduct Mr. Manabe’s deposition remotely from a location of DSC’s choice.
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`Further, DSC has shown that it can cause its witnesses to travel to give testimony when
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`needed. It is producing Dr. Naito for deposition in New York, and,
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`.2
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`2 Compounding the prejudice to Seagen, DSC not only refuses to produce these witnesses or Mr.
`Manabe here, but also refuses even to agree that witnesses not produced for deposition should be
`precluded from testifying at trial.
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`4
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`Case 2:20-cv-00337-JRG Document 192 Filed 11/02/21 Page 6 of 8 PageID #: 8112
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`DSC should not be permitted to provide the testimony of only one Japanese witness, Dr. Naito, to
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`promote its story contrary to the documents of record, while shielding the testimony of others who
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`might undermine that story.
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`III.
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`CONCLUSION
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`Seagen requests that this Court grant its request to compel DSC to produce Sunao Manabe
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`for deposition because his testimony is highly relevant to Seagen’s claims and DSC’s defenses.
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`5
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`Case 2:20-cv-00337-JRG Document 192 Filed 11/02/21 Page 7 of 8 PageID #: 8113
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`Dated: October 29, 2021
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`By: /s/ Michael A. Jacobs
`Michael A. Jacobs
`MJacobs@mofo.com
`Matthew A. Chivvis
`MChivvis@mofo.com
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, CA 94105
`Telephone: 415.268.7000
`Facsimile: 415.268.7522
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`Bryan Wilson
`BWilson@mofo.com
`Pieter S. de Ganon
`PdeGanon@mofo.com
`MORRISON & FOERSTER LLP
`755 Page Mill Road
`Palo Alto, California 94304-1018
`Telephone: 650.813.5600
`Facsimile: 650.494.0792
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`Melissa R. Smith
`Texas State Bar No. 24001351
`melissa@gillamsmithlaw.com
`GILLAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: 903.934.8450
`Facsimile: 903.934.9257
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`Of Counsel:
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`T. John Ward, Jr.
`Texas State Bar No. 00794818
`jw@wsfirm.com
`Charles Everingham IV
`Texas State Bar No. 00787447
`ce@wsfirm.com
`Andrea L. Fair
`Texas State Bar No. 24078488
`andrea@wsfirm.com
`WARD, SMITH & HILL, PLLC
`1507 Bill Owens Parkway
`Longview, Texas 75604
`Telephone: 903.757.6400
`Facsimile: 903.757.2323
`Attorneys for Plaintiff Seagen Inc.
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`Case 2:20-cv-00337-JRG Document 192 Filed 11/02/21 Page 8 of 8 PageID #: 8114
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who are deemed to have consented
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`to electronic service are being served with a copy of the foregoing document via the Court’s CM/ECF
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`system per Local Rule CV-5(a)(3) this October 29, 2021.
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`/s/ Melissa R. Smith
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`CERTIFICATE OF CONFERENCE
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`On October 1, 2021, counsel for Seagen, with Michael Jacobs as lead counsel and Travis
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`Underwood as local counsel, met and conferred via telephone with counsel for DSC and AZ, with
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`Preston Ratliff and Mark Mann participating for DSC, and Kevin Hogan-Hanson, David Berl, and
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`Jennifer Ainsworth participating for AZ. The parties were unable to reach agreement and have
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`reached an impasse, leaving an open issue for the Court to resolve. This motion is opposed by
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`Defendants.
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`/s/ Michael A. Jacobs
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`/s/ Melissa R. Smith
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