Case 2:20-cv-00337-JRG Document 196 Filed 11/02/21 Page 1 of 8 PageID #: 8168
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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 OPPOSITION TO DEFENDANT’S MOTION TO COMPEL
`THE DEPOSITION OF CLAY SIEGALL, PH.D.
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`Case 2:20-cv-00337-JRG Document 196 Filed 11/02/21 Page 2 of 8 PageID #: 8169
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`I.
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`INTRODUCTION
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`DSC has no plausible argument that Dr. Siegall’s deposition is relevant or necessary. To
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`justify its motion to compel his deposition, DSC asserts “upon information and belief” that Dr.
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`Siegall directed a plan to lay claim to DSC’s drug and that he authorized the preparation and
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`filing of patent applications. DSC offers no evidence for these assertions, relying instead on an
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`unsupported description of an arbitration hearing. The arbitration record is, in reality, the
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`opposite of what DSC claims. DSC’s motion misrepresents the record and is legally
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`unsupportable.
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`II.
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`BACKGROUND
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`Dr. Clay Siegall is an apex witness. He is the CEO of Plaintiff Seagen Inc., a
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`biotechnology company focused on the development and commercialization of drugs to treat
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`cancer. Seagen is a public company with about 2,000 employees. It has four FDA-approved
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`anticancer drugs and has numerous novel drug candidates in its pipeline.
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`Dr. Siegall testified in the arbitration proceeding between DSC and Seagen. His direct
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`testimony consisted of a brief written statement and a fifteen minute summary statement. DSC
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`cross-examined him for two hours.
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`DSC’s critical assertion is that “Defendants have reason to believe that it was Dr. Siegall
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`who specifically directed Seagen’s changed approach to DS-8201 and the filing of the ’839
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`application.” (Mot. at 3.) But DSC knows from Dr. Siegall’s arbitration testimony that the
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`opposite is true. DSC tells the Court that it has “information and belief” that Dr. Siegall
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`“authorized the preparation and filing of a new patent application that resulted in the patent-in-
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`suit.” (Id. at 1.) DSC omits that DSC asked Dr. Siegall this precise question in the arbitration
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`Case 2:20-cv-00337-JRG Document 196 Filed 11/02/21 Page 3 of 8 PageID #: 8170
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`and he explained that he did not do so:1
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`This testimony directly contradicts DSC’s representations. DSC also knows from
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`Seagen’s discovery responses in this case, discussed below, that Dr. Siegall had no involvement
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`in the filing or prosecution of the patent.
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`III. ARGUMENT
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`A.
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`Apex depositions require a specific showing of need
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`Courts “permit the depositions of high-level executives, sometimes referred to as apex
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`executives, when conduct and knowledge at the highest levels of the corporation are relevant to
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`the case.” Langley v. Int’l Bus. Machines Corp., No. A-18-CV-443-LY, 2019 WL 4577115, at
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`*4 (W.D. Tex. Sept. 20, 2019) (internal citations omitted). “One long-established factor
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`Case 2:20-cv-00337-JRG Document 196 Filed 11/02/21 Page 4 of 8 PageID #: 8171
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`considered by courts in determining whether an apex deposition should be taken is whether the
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`individual has unique personal knowledge of the matter in the case.” Id. (internal citations
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`omitted). The deposition “of a high level corporate executive should not be freely granted when
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`the subject of the deposition will be only remotely relevant to the issues of the case . . . . This is
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`especially so where the information sought in the deposition can be obtained through less
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`intrusive discovery methods (such as interrogatories) or from depositions of lower-level
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`employees with more direct knowledge of the facts at issue.” See Comput. Acceleration Corp. v.
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`Microsoft Corp., No. 9:06-CV-140, 2007 WL 7684605, at *1 (E.D. Tex. June 15, 2007). As the
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`party “seeking discovery,” DSC must “establish the threshold burden of relevancy under the
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`Rules.” Gauthier v. Union Pac. R.R. Co., C.A. No. 1:07-CV-12 (TH/KFG), 2008 WL 2467016,
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`at *3 (E.D. Tex. June 18, 2008).
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`B.
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`DSC has made no showing of relevance or unique knowledge
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`DSC has not made any showing of relevance. As shown by his arbitration testimony and
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`Seagen’s discovery responses, DSC’s purported information and belief about Dr. Siegall’s role is
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`not correct; he had no role in the preparation of the patent at issue in this lawsuit.
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`DSC also claims more generally that Dr. Siegall’s “uniquely personalized knowledge” is
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`“directly relevant to the claims for damages here, as well as the patent invalidity and
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`unenforceability defenses at issue, including the affirmative defense of prosecution laches.” But
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`simply asserting that Dr. Siegall’s “personalized” knowledge is relevant to the claims at issue,
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`without explanation, is not sufficient. See Sanchez v. Swift Transp. Co. of Ariz., L.L.C., No. PE:
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`15-CV-15, 2016 WL 10589438, at *2 (W.D. Tex. Apr. 22, 2016) (denying plaintiffs’ motion to
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`compel apex depositions where plaintiffs merely “claim[ed]” that certain senior employees had
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`relevant information by virtue of their supervisory roles).
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`DSC also alleges that Dr. Siegall has relevant knowledge of its 2008-2015 collaboration
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`Case 2:20-cv-00337-JRG Document 196 Filed 11/02/21 Page 5 of 8 PageID #: 8172
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`with Seagen. DSC does not explain why this alleged knowledge is unique or personalized to
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`Dr. Siegall, or why it cannot be obtained from other witnesses or documents.
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`C.
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`DSC is able to obtain the evidence it seeks through other means
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`DSC also omits that it has propounded interrogatories and Rule 30(b)(6) deposition topics
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`that overlap almost completely with the evidence it insists is available only from Dr. Siegall.
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`This is another ground for denying DSC’s motion. See Motion Games, LLC v. Nintendo Co., No.
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`6:12-CV-878-JDL, 2015 WL 11143486, at *4 (E.D. Tex. Mar. 18, 2015) (denying motion to
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`compel apex deposition because “[d]efendants have shown that any relevant, desired
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`information can be, or has already been, obtained through less-intrusive means”).
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`Exemplary interrogatories include:
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`• Interrogatory No. 3: “Describe all individuals involved in the prosecution of the
`’039 patent and their respective roles.”
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`• Interrogatory No. 4: “Describe all individuals involved in the prosecution of the
`foreign counterparts of the ’039 patent (e.g., the EP ’055 application and EP ’269
`application) and their respective roles.”
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`• Interrogatory No. 5: “Describe the facts and circumstances surrounding the
`decision to file the ’839 application, including without limitation, the subject
`matter claimed, the decision not to pursue the subject matter claimed prior to the
`’839 application, and the individuals involved.”
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`• Interrogatory No. 9: “State the factual bases for SGI’s contention that it ‘has
`suffered, and will continue to suffer damages, including lost profits,’ including
`without limitation, the profits (lost, net, gross), sales, costs of goods,
`manufacturing capabilities, marketing materials, market analyses, forecasts, and
`regulatory Documents underlying its assertion. (See Complaint ¶ 28.)”
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`• Interrogatory No. 10: “Describe in detail SGI’s factual bases underlying its
`alleged reasonable royalty, including the factors set forth in Georgia-Pacific
`Corp. v. United States Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970), mod.
`and aff’d, 446 F.2d 295 (2d Cir. 1971), cert. denied, 404 U.S. 870 (1971).”
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`• Interrogatory No. 16: “Describe the facts and circumstances surrounding Seagen
`President, Chief Executive Officer, and Chairman of the Board Clay Siegall’s first
`knowledge of DS-8201.”
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`• Interrogatory No. 18: “Describe the facts and circumstances surrounding
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`Case 2:20-cv-00337-JRG Document 196 Filed 11/02/21 Page 6 of 8 PageID #: 8173
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`including without limitation, the
`identification of all Seagen employees (i) involved in Seagen’s decision and
`(ii) with knowledge of Seagen’s decision prior to July 10, 2019 and the earliest
`date of their knowledge.”
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`Seagen has provided responses to all but the last two of these interrogatories, which DSC
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`served on October 15 and for which responses are not yet due. Seagen’s responses do not
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`mention Dr. Siegall as having any involvement in issues relating to the decision to file or
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`prosecution of the ’039 patent. They do not mention Dr. Siegall at all.
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`Exemplary 30(b)(6) deposition topics include:
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`• Deposition Topic No. 9: “The drafting, preparation, and prosecution of the ’839
`application, including without limitation, the identity and role of each and every
`individual who participated in the drafting, preparation, and prosecution of the
`’839 application.”
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`• Deposition Topic No. 10: “The facts and circumstances surrounding the decision
`to file the ’839 application.”
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`• Deposition Topic No. 13: “Seagen’s knowledge of DS-8201, including without
`limitation, (i) Seagen’s first knowledge of DS-8201; (ii) each of the ’039 patent
`named inventors’ first knowledge of DS-8201; (iii) Seagen’s knowledge of DS-
`8201 as of March 28, 2019; and (iv) Seagen’s knowledge of DS-8201 as of the
`July 10, 2019 filing date of the ’839 application.”
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`• Deposition Topic No. 28: “This lawsuit, including but not limited to, the nature
`and quantity of damages claimed or sought by Seagen in this lawsuit, the
`distribution of any recovery from this lawsuit, the financing of this lawsuit, and
`the decision, policies, practices, strategies, and plans for bringing or maintaining
`this lawsuit.”
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`• Deposition Topic No. 35: “The facts and circumstances surrounding Seagen’s
`decision in
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`Seagen has designated and is making available for deposition witnesses on all of these
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`topics to the extent that they do not call for privileged information or expert testimony.
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`IV. CONCLUSION
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`For all the reasons articulated above, DSC’s motion to compel should be denied.
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`Case 2:20-cv-00337-JRG Document 196 Filed 11/02/21 Page 7 of 8 PageID #: 8174
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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 196 Filed 11/02/21 Page 8 of 8 PageID #: 8175
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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 29 day of October, 2021.
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`/s/ Melissa R. Smith
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