Case 2:20-cv-00337-JRG Document 194 Filed 11/02/21 Page 1 of 10 PageID #: 8139
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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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`MOTION TO COMPEL
`DEPOSITIONS OF TOSHINORI AGATSUMA, YUKI ABE, YUJI KASUYA, AND
`KOJI MORITA
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`Case 2:20-cv-00337-JRG Document 194 Filed 11/02/21 Page 2 of 10 PageID #: 8140
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`I.
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`INTRODUCTION
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`Seagen moves to compel the deposition of Daiichi Sankyo Company, Ltd.’s (“DSC”)
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`scientists involved in the development of the accused product, DS-8201 (ENHERTU®): Drs.
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`Toshinori Agatsuma, Yuki Abe, Yuji Kasuya, and Koji Morita. These scientists have unique
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`personal knowledge relevant to this litigation. Not only were they involved in the development
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`of the accused product; they also had access to Seagen’s proprietary information during the
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`product’s development, and either directly used that information in developing the product or
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`permitted others in DSC to use the information by failing to segregate it.
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`II.
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`BACKGROUND
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`A.
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`DSC’s collaboration with Seagen and its parallel ADC project
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`Seagen has been a pioneer in the field of antibody-drug conjugation and remains at the
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`forefront to this day.
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` Dr. Agatsuma requested Seagen’s help. 1 Having made the decision to pursue
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`this area of cancer therapeutics, but with nothing more than a nascent human antibody program,
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`his team was
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` (Id.) As an established leader in ADCs, Seagen was a natural choice. Thus, at
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`DSC’s request, the parties entered into research collaboration agreements in 2006 and again in
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`2008, which lasted for many years.
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`During this collaboration, DSC scientists sought and received extensive information
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`regarding Seagen’s proprietary antibody-drug conjugate (ADC) technology, attended meetings
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`with Seagen’s scientists, and received hands-on training on how to prepare ADCs where the
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`drug-linker is conjugated to a sulfur atom on a cysteine residue of the antibody (one of the
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`1 Ex. A, SGIEDTX00006109 at -6110. Exhibit A is a compilation of excerpts from documents
`cited in this motion.
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`Case 2:20-cv-00337-JRG Document 194 Filed 11/02/21 Page 3 of 10 PageID #: 8141
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`requirements of the asserted claims). The produced documents show that—unbeknownst to
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`Seagen—DSC’s Drs. Agatsuma and Abe established a secret parallel research team within DSC
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`during the collaboration that included Drs. Kasuya and Morita. Together, these scientists began
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`developing ADCs for DSC using Seagen’s technology. This work ultimately led to the
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`development of DS-8201. All the while, DSC continued to request information from Seagen
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`under the guise that it was for the collaboration ADC project (rather than for DSC’s parallel
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`work). It was not until 2015 that DSC terminated the collaboration, just months before it began
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`clinical trials of DS-8201.
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`B.
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`Seagen’s attempts to obtain testimony from DSC scientists
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`Seagen has been diligent about seeking the testimony of Drs. Agatsuma, Abe, Kasuya,
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`and Morita. Using its own files and public information, Seagen identified them in its initial
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`disclosures last February. Seagen first requested their deposition in July 2021. The parties
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`exchanged correspondence throughout August and met and conferred in early September. In that
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`meet and confer, DSC refused to confirm it would be producing these witnesses for deposition.
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`The parties continued to meet and confer about ESI productions relating to these witnesses in
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`September, and DSC finally began producing their emails. It has continued to do so through
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`October 2021. These documents show the witnesses’ direct involvement in developing the
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`accused product, and suggest or outright state that they used Seagen’s proprietary information in
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`developing the infringing features. In light of the recently produced documents, it is clear that
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`Seagen will face substantial prejudice unless it can depose DSC’s scientist witnesses.
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`III. ARGUMENT
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`From the beginning of this case, the parties anticipated that discovery would involve
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`depositions from DSC witnesses testifying in Japanese because the accused product was
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`developed by DSC scientists in Japan. With this in mind, the parties negotiated a discovery
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`Case 2:20-cv-00337-JRG Document 194 Filed 11/02/21 Page 4 of 10 PageID #: 8142
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`order that counts translated depositions at two-thirds time and accords each side 100 hours of
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`deposition time. Despite this, DSC has refused to make any of the Japanese scientists that
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`Seagen requested available for deposition, relying on relevance and Covid restrictions as its
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`primary excuses. Instead, it volunteered one scientist of its own choosing. He was involved in
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`developing only one component of the ADC linker that DSC employs in the accused product—a
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`self-immolative spacer that meets the limitation of claim 2 of the asserted patent but is not
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`required by the independent claim. Even though Seagen first requested their depositions in
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`August, DSC has refused to produce any of the scientists who developed components of the
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`accused product that are relevant to infringement of independent claim 1.
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`The testimony of these scientists will be highly relevant to infringement in this case. As
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`part of email discovery, DSC has now produced many documents revealing these scientists’
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`extensive involvement in the development of the accused product. What is more, these
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`documents reveal that the scientists developed the specific components of the accused product
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`that meet the limitations of the asserted patent by relying on Seagen’s proprietary ADC
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`technology, and that this use occurred without Seagen’s knowledge during the parties’
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`collaboration.
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`Drs. Abe and Agatsuma both led DSC’s parallel efforts to develop the accused product
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`during the collaboration. They did not segregate from this effort employees working with
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`Seagen. Rather, they encouraged DSC scientists to leverage their experience with Seagen on
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`ADCs:
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` These efforts to
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`leverage access to Seagen’s proprietary technology help explain “why” the accused product
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`2 Ex. A, DSC_ENHERTU_00372746_MT.
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`4
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`Case 2:20-cv-00337-JRG Document 194 Filed 11/02/21 Page 5 of 10 PageID #: 8143
`Case 2:20-cv-00337-JRG Document 194 Filed 11/02/21 Page 5of10PagelD#: 8143
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`eS
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`meets all the limitations of the asserted claims. For example, an exchange including Drs. Abe
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`and Morita establishes that theyJl
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`EE This admission
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`is directly relevant to DSC’s infringementin this case because the mc component appearsas the
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`highlighted component(in the red box) below in claim 1 of the asserted ’039 patent.
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`Whatis claimed is:
`1. An antibody-drug conjugate having the formula:
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`W,-Y,—D
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`The Court should not countenance DSC’s refusal to makethese scientists available for
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`3 Ex. A, DSC_ENHERTU_00387182_CERT.
`4 Td. at DSC_ENHERTU_00365076CERT.
`5 See e.g. id., DSC_ENHERTU00376881CERT.
`6 See e.g.id., SGIEDTX00006204; SGIEDTX00006030; DSC_ENHERTU_00365081_CERT:
`DSC_ENHERTU_00372206MT.
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`Case 2:20-cv-00337-JRG Document 194 Filed 11/02/21 Page 6 of 10 PageID #: 8144
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`deposition. That would be inconsistent with the discovery order in this case, which was designed
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`to allow Seagen to take these depositions. And it would hamper Seagen’s ability to present its
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`case, prejudicing Seagen.7 Given these scientists’ direct involvement in the development of the
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`accused product and use of Seagen’s proprietary information in that development, their
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`testimony will be relevant to disputed issues regarding infringement and willfulness. Without
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`these depositions, Seagen would have no witness with personal knowledge through which to
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`introduce many of the most important documents on the development of the infringing features
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`of DS-8201. This may in fact be the real reason DSC is refusing to produce these witnesses—
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`not that the witnesses cannot travel from Japan, but to hamstring Seagen’s presentation of this
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`evidence at trial.8
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`Nor should the Court give credit to any assertion that DSC cannot produce these
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`witnesses due to the ongoing pandemic concerns. Seagen is not suggesting that these depositions
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`need to occur in the continental United States. These witnesses could submit to deposition
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`remotely from a location near Japan, minimizing the burden on DSC. Moreover, DSC is already
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`producing its own self-serving witness from Japan, Dr. Naito.
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`7 Such a result would not only deprive Seagen of relevant information, but it would also be
`inequitable. At Defendants’ request, Seagen is producing nine scientists for deposition,
`including five who are not even inventors on the asserted patent. Defendants have also
`subpoenaed a tenth Seagen scientist, who is on leave. The disparity between this and DSC’s
`position on whether its own scientists may be deposed is stark.
`8 Months ago, Seagen proposed that the arbitration testimony of Drs. Agatsuma, Abe, and
`Kasuya should be produced for use in this case. DSC refused, instead proposing that only
`arbitration testimony of witnesses actually testifying in this case be available for use here. This,
`again, demonstrates how DSC is seeking to hamper Seagen’s ability to prove its case, while
`amplifying its own defenses.
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`Case 2:20-cv-00337-JRG Document 194 Filed 11/02/21 Page 7 of 10 PageID #: 8145
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` All of these witnesses had managing roles in the development of the accused
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`product. DSC should not be permitted to use pandemic restrictions to its benefit, so that only its
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`chosen witness from Japan testifies.9
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`IV. ALTERNATIVE RELIEF
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`If the Court determines that DSC cannot be compelled to produce its scientists because
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`they are located in Japan, the Court should use its inherent authority to craft appropriate relief to
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`lessen the prejudice to Seagen. At a minimum, this should include an instruction to the jury that
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`(1) Seagen sought the deposition of these witnesses and DSC refused to provide their testimony,
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`and (2) the jury may infer that the testimony would have been favorable to Seagen. In addition,
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`the Court should order DSC to produce the arbitration testimony for the witnesses who testified
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`previously (Drs. Abe, Agatsuma, and Kasuya). The Court should also permit Seagen to use at
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`trial any emails to or from these witnesses, and any document that they helped prepare or for
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`which they are a custodian, without the need for a sponsoring witness. Last, DSC should be
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`barred from calling at trial any DSC witness on the parties’ initial disclosures that it refused to
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`produce for deposition.
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`V.
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`CONCLUSION
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`DSC should be compelled to produce Drs. Agatsuma, Abe, Kasuya, and Morita for
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`deposition. Alternatively, the Court should afford Seagen the alternative relief it has requested.
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`9 DSC has thus far been unwilling even to agree that witnesses it refuses to produce for
`deposition should be barred from testifying at trial.
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`Case 2:20-cv-00337-JRG Document 194 Filed 11/02/21 Page 8 of 10 PageID #: 8146
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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
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`Attorneys for Plaintiff Seagen Inc.
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`Case 2:20-cv-00337-JRG Document 194 Filed 11/02/21 Page 9 of 10 PageID #: 8147
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that counsel of record who are deemed to have
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`consented to electronic services are being served with a copy of this document via the Court’s
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`CM/ECF system per Local Rule CV-5(a)(3) on this the 29 day of October, 2021.
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`/s/ Melissa R. Smith
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`CERTIFICATE OF CONFERENCE
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`On September 8, 2021, counsel for Seagen, with Michael Jacobs as lead counsel and
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`Travis Underwood as local counsel, met and conferred via telephone with counsel for DSC and
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`AZ, with Preston Ratliff and Deron Dacus participating for DSC, and Tom Fletcher, Kevin
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`Hogan-Hanson, and Jennifer Ainsworth participating for AZ. On October 1, 2021, counsel for
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`Seagen, with Michael Jacobs as lead counsel and Travis Underwood as local counsel, met and
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`conferred again via telephone with counsel for DSC and AZ, with Preston Ratliff and Mark
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`Mann participating for DSC, and Kevin Hogan-Hanson, David Berl, and Jennifer Ainsworth
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`participating for AZ. The parties have discussed this issue multiple times but were unable to
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`reach agreement and have reached an impasse, leaving an open issue for the Court to resolve.
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`This motion is opposed by Defendants.
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`/s/ Michael Jacobs
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`/s/ Melissa R. Smith
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`Case 2:20-cv-00337-JRG Document 194 Filed 11/02/21 Page 10 of 10 PageID #: 8148
`Case 2:20-cv-00337-JRG Document 194 Filed 11/02/21 Page 10 of 10 PagelD #: 8148
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