Case 2:20-cv-00337-JRG Document 203 Filed 11/08/21 Page 1 of 10 PageID #: 8271
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`IN THE UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`SEAGEN INC.,
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`Plaintiff,
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`v.
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`DAIICHI SANKYO CO., LTD.,
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`Defendant, and
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`ASTRAZENECA PHARMACEUTICALS
`LP and ASTRAZENECA UK LTD.,
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`Intervenor-Defendants.
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`CASE NO. 2:20-cv-00337-JRG
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`OPPOSITION TO SEAGEN’S 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 203 Filed 11/08/21 Page 2 of 10 PageID #: 8272
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`Nearly 10 years ago, Daiichi Sankyo Company, Limited’s (“DSC Japan”) scientist Dr.
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`Hiroyuki Naito invented DS-8201, the accused product. Despite the ongoing pandemic, Dr.
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`Naito voluntarily traveled from Japan to the United States to sit for two full days of deposition
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`(November 1 and 2) to explain his discovery of DS-8201, as both a 30(b)(1) and DSC Japan’s
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`30(b)(6) corporate witness.
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`of the deposition, DSC Japan made a complete production of documents reflecting Dr. Naito’s
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`discovery of DS-8201, including his laboratory notebooks and other contemporaneous
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`documents, which he studied in preparation for his deposition.
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`Although Seagen Inc. (“Seagen”) deposed Dr. Naito for more than 14 hours on the
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`record, it now seeks to have this Court to compel DSC Japan to force four of its Japanese
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`employees to submit to a deposition. These employees – who did not discover the accused
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`product – necessarily do not have the information that Dr. Naito – DSC Japan’s corporate
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`witness – has regarding the discovery of DS-8201.
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`Seagen is aware that DSC Japan cannot force its Japanese employees to travel to the
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`United States for a deposition. This fact further highlights the significance of Dr. Naito’s
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`willingness to voluntarily travel to the United States and actually having voluntarily undergo a
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`14-hour deposition.
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`Seagen has already had ample opportunity to elicit evidence on this
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`issue. Any failure on Seagen’s part to do so is of its own doing, (1) having failed to move for
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`and secure – via formal diplomatic protocols – the depositions of the four named DSC Japan
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`Case 2:20-cv-00337-JRG Document 203 Filed 11/08/21 Page 3 of 10 PageID #: 8273
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`employees (Drs. Agatsuma, Abe, Kasuya, and Morita; collectively, “Named Japanese
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`Employees”) and (2) having used, however it pleased, the 14-plus hours with Dr. Naito on
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`November 1 and 2, 2021.
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`Instead, Seagen seeks extraordinary and unwarranted relief, including an adverse
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`inference that the Named Japanese Employees would testify in a way that suits Seagen’s
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`litigation theme. These are improper tactics, pure and simple, through which Seagen is
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`attempting to minimize or, even worse, improperly strike out the sworn testimony of Dr. Naito,
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`the sole inventor of the accused product.
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`The Court, therefore, should deny Seagen’s motion in its entirety.
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`I.
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`STATEMENT OF FACTS
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`In 2011, Dr. Naito invented the accused product, DS-8201, a revolutionary antibody drug
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`conjugate (“ADC”) that is being used to treat cancer and is now providing hope to cancer
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`patients who otherwise would have none. For his work in discovering DS-8201, Dr. Naito is a
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`named inventor in several patents, patents that issued years before the asserted’039 Patent
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`(“Asserted Patent”) came into existence. See, e.g., U.S. Pat. Nos. 9,808,537 and 10,195,288.
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`The facts are clear that Dr. Naito invented and discovered DS-8201. For example, during
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`the more than 14 hours of deposition that he voluntarily underwent,
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`Case 2:20-cv-00337-JRG Document 203 Filed 11/08/21 Page 4 of 10 PageID #: 8274
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`Despite having been given more than two full days of deposition time, Seagen – by its
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`own choice and design – failed to ask Dr. Naito about how he (Dr. Naito) designed and
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`synthesized DS-8201. Instead, Seagen ran the clock attempting to insinuate and elicit testimony
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`that others were, in fact, responsible for designing the structure of DS-8201 and were, therefore,
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`the accused product’s true inventors. Dr. Naito repeatedly rejected this insinuation, making clear
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`that he, alone, invented and discovered DS-8201.
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`What is clear is this:
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` Seagen ignores these facts and now seeks to compel the depositions of the Named
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`Japanese Employees.
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`In
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` This document, the contents of which were written around the time Dr. Naito
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`invented and discovered DS-8201, was never used or questioned by Seagen during the 14-plus
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`hours of Dr. Naito’s deposition.
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`Dr. Naito’s deposition testimony and documents further show that the Named Japanese
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`Employees did not invent or discover DS-8201. As such, they necessarily lack the best
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`information regarding the invention and discovery of the accused product. And importantly,
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`DSC Japan has been unable to secure the voluntary consent of the Named Japanese Employees,
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`consent that is necessary for their deposition to occur in the United States specifically for this
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`patent-infringement action.
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`The procedural posture of Seagen’s motion is significant here as well. First, Seagen has
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`failed to move through the established protocols of seeking the deposition of a Japanese person
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`residing in Japan, including failing to seek a Letter Rogatory from this Court. Second, Seagen
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`delayed filing its motion until October 29 and, therefore, there is less than two weeks left before
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`the close of fact discovery. This delay is strictly and solely Seagen’s own fault. Third, the
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`depositions of the Named Japanese Employees are being sought after Seagen was given more
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`than 14 hours of deposition time with Dr. Naito, who voluntarily traveled to United States and
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`submitted to an in-person deposition despite the ongoing pandemic.
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`II.
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`ARGUMENT
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`A.
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`Seagen Has Already Taken More Than 14 Hours of Voluntary
`Deposition Time With Dr. Naito, the Inventor and the Discoverer
`of the Accused Product, Who is the Only Person Uniquely Situated
`to Speak About the Full Scope of the Accused Product’s Discovery
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`Seagen seeks to take the depositions of the Named Japanese Employees after having
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`taken over 14 hours of voluntary deposition time with Dr. Naito, the inventor and discoverer of
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`the accused product. How Seagen used that time was strictly driven by its choice; rather than
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`asking Dr. Naito the details of his discovery of DS-8201 – which he was prepared to testify
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`about, both in his own capacity and as a 30(b)(6) corporate witness – Seagen attempted to elicit
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`testimony that others (including the Named Japanese Employees) were involved in DS-8201’s
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`Case 2:20-cv-00337-JRG Document 203 Filed 11/08/21 Page 6 of 10 PageID #: 8276
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`discovery.
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`As such, Seagen was provided ample opportunity to seek deposition testimony regarding
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`the discovery of the accused products. And having had this ample opportunity, Seagen cannot
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`now argue and seek the deposition testimony of the Named Japanese Employees in an attempt to
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`minimize and/or improperly strikeout the sworn testimony of Dr. Naito – the sole inventor of the
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`accused product. Wade v. Westinghouse Lighting Corp, No. 1:11-CV-483, 2013 WL 12136608,
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`at *3–4 (E.D. Tex. June 4, 2013) (denying plaintiffs’ motion to compel depositions of foreign
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`employees because plaintiffs had “ample opportunity” to depose corporate representative).
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`Seagen’s motion should be denied on this basis alone.
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`B.
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`Seagen Fails to Establish the Basis for this Court’s Granting Extraordinary
`Relief, Including Adverse Inferences, and So Such Requests Must Be Denied
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`Seagen asks this Court to grant several forms of extraordinary relief, including (1) an
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`adverse inference against DSC Japan regarding the Named Japanese Employees’ testimony, (2)
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`the production of the Named Japanese Employees’ arbitration testimony, and (3) a right to use
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`any emails or documents relating to the Named Japanese Employees without a sponsoring
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`witness. Motion at 7. This request must be denied.
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`Case 2:20-cv-00337-JRG Document 203 Filed 11/08/21 Page 7 of 10 PageID #: 8277
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`First, an adverse inference is a severe sanction that requires a showing of bad faith and
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`prejudice. See Accresa Health LLC v. Hint Health, Inc., No. 4:18-cv-00536, 2020 WL 6325733,
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`at *9 (E.D. Tex. Feb. 28, 2020). Seagen has shown neither. Indeed, it cites to no legal support
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`for its requested relief. And, most importantly, DSC Japan has not acted in bad faith: DSC
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`Japan is not preventing the Named Japanese Employees from appearing in deposition; it simply
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`does not have the voluntary consent nor the authority to force employees who are Japanese
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`nationals residing in Japan to submit to a deposition in the United States against their will. And,
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`despite what Seagen suggests, DSC Japan has never forced its employees to testify in a
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`proceeding in the United States,
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`DSC Japan ever represented to Seagen that its employees, other than Dr. Naito, would
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`voluntarily submit to undergoing a deposition in the United States. The simple fact is, the
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`Named Japanese Employees are not submitting to a deposition because they cannot be forced to
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`undergo a deposition against their will, a choice that is beyond DSC Japan’s authority.
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`Third, Seagen failed to identify a specific reason why the forced depositions of the
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`Named Japanese Employees are needed for “sponsoring” emails and/or documents. DSC Japan
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`Case 2:20-cv-00337-JRG Document 203 Filed 11/08/21 Page 8 of 10 PageID #: 8278
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`remains willing, of course, to meet-and-confer with Seagen during the pre-trial proceedings as to
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`what evidentiary stipulations concerning authenticity and admissibility may be appropriate.
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`Nothing more is required or appropriate here.
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`For at least the foregoing reasons, Seagen’s request for extraordinary relief – i.e., an
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`adverse inference, the production of the Named Japanese Employees’ testimony from the
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`arbitration proceeding, and the right to use any emails or documents relating to the Named
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`Japanese Employees – must be denied.
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`C.
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`This Motion is an Attempt by Seagen to Skirt Its Fault in Having Failed to
`Secure the Depositions of the Named Japanese Employees Through the
`Established Protocols for Deposing Japanese Nationals Residing in Japan
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`Seagen has outright failed to follow the appropriate international means of obtaining
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`discovery, specifically the use of a “[L]etter [R]ogatory” to request the deposition of the Named
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`Japanese Employees. J.C. Renfroe & Sons, Inc. v. Renfroe Japan Co., 515 F. Supp. 2d 1258,
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`1272 (M.D. Fla. 2007); see also Squires v. Toyota Motor Corp., No. 4:18-CV-00138, 2021 WL
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`1837540, at *3 (E.D. Tex. May 7, 2021). DSC Japan has made clear to Seagen that its Japanese
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`employees have not consented to undergoing a voluntary deposition. Nor has DSC Japan
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`expressly or implicitly made any representations that it could force its Japanese employees to
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`appear in a deposition. As such, the proper course of action was for Seagen to seek the
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`depositions of the Named Japanese Employees through a Letter Rogatory. Seagen has failed to
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`follow that protocol. And Seagen’s belated demand for the Named Japanese Employees’
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`depositions, with less than two weeks left in fact discovery, does not excuse it from following the
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`proper, established diplomatic channels for seeking the depositions of Japanese nationals
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`residing in Japan. As such, its motion must be denied.
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`III.
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`CONCLUSION
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`For all the reasons articulated above, Seagen’s motion to compel should be denied.
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`Case 2:20-cv-00337-JRG Document 203 Filed 11/08/21 Page 9 of 10 PageID #: 8279
`Case 2:20-cv-00337-JRG Document 203 Filed 11/08/21 Page 9 of 10 PagelD #: 8279
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`Dated: November4, 2021
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`Respectfully submitted,
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`/s/ Preston K. Ratliff I
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`Deron R. Dacus
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`State Bar No. 00790553
`The Dacus Firm, P.C.
`821 ESE Loop 323, Suite 430
`Tyler, Texas, 75701
`+] (903) 705-1117
`+] (903) 581-2543 facsimile
`ddacus@dacusfirm.com
`
`J. Mark Mann
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`State Bar No. 12926150
`mark@themannfirm.com
`MANN | TINDEL | THOMPSON
`300 West Main Street
`Henderson, Texas 75652
`(903) 657-8540
`(903) 657-6003 (fax)
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`Attorneysfor Defendant Daiichi Sankyo Company,
`Limited
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`OF COUNSEL:
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`Preston K. Ratliff II
`Joseph M. O’Malley,Jr.
`Ashley N. Mays-Williams
`[Update list of names]
`Paul Hastings LLP
`200 Park Avenue
`New York, NY 10166
`(212) 318-6000
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`Attorneysfor Defendant Daiichi Sankyo Company,
`Limited
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`Case 2:20-cv-00337-JRG Document 203 Filed 11/08/21 Page 10 of 10 PageID #: 8280
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who have consented to
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`electronic service are being served with a copy of this document via electronic mail on November
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`4, 2021.
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`/s/ Preston K. Ratliff II
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