Case 2:20-cv-00337-JRG Document 205 Filed 11/08/21 Page 1 of 10 PageID #: 8307
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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 PLAINTIFF’S
`MOTION TO COMPEL THE DEPOSITION OF
`DAIICHI SANKYO JAPAN’S CHIEF EXECUTIVE OFFICER
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`Dr. Sunao Manabe is the President and Chief Executive Officer (“CEO”) of Daiichi
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`Sankyo Company, Limited (“Daiichi Sankyo Japan’’), a Japanese company with over 15,000
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`employees. Dr. Manabe, a Japanese national who resides in Japan, is precisely the type of
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`individual that the Apex-deposition doctrine is intended to protect. Dr. Manabe has no unique
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`personalized knowledge that warrants his being deposed, muchless requiring him to travel
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`outside of Japan to do so.
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`And Seagen is acutely aware that Dr. Manabe does not have unique knowledge. Instead,
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`it moves to compel Dr. Manabe’s deposition as a retaliatory measure after Daiichi Sankyo Japan
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`sought to take the deposition of Seagen’s CEO, Dr. Clay Siegall. Indeed, during Seagen and
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`Danichi Sankyo Japan’s meet and confer regarding the deposition of Dr. Siegall, Seagen’s
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`counsel explicitly stated that if Daiichi Sankyo Japan sought to depose Dr. Siegall, Seagen would
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`target Dr. Manabein turn. It has now made goodonthat threat, despite the fact that Dr. Manabe
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`is a Japanese national residing in Japan and cannot be compelled to testify absent proper
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`diplomatic protocols, which Seagen has refused to take. This Court should not countenance such
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`litigation tactics and, therefore, should deny Seagen’s motion to compel.
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`Facts that Seagen conveniently ignores also make plain that Seagen does not genuinely
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`require discovery from Dr. Manabe. For example, in its motion, Seagen points to certain public
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`comments that Dr. Manabe maderegarding Daiichi Sankyo Japan’slitigation positions. Dr.
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`Manabe’s comments reflect nothing more than the simple facts that: (1) Dr. Manabe is aware
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`that Daiichi Sankyo Japan has been sued, (2) Dr. Manabe’s employees have madeplain that
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`Daiichi Sankyo Japan believes DS-8201 (the accused product that Daiichi Sankyo Japan scientist
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`Dr. Hiroyuki Naito invented nearly 10 years ago and to which he was awardedpatents) does not
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`fall within the asserted claims of the patent-in-suit (“Asserted Patent’), and (3) the Asserted
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`Patent is invalid. These comments are not unique to Dr. Manabeand certainly do notjustify
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`Seagen’s demand that this Court compel him to sit for a deposition.
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`Notably, the inventor of the accused product, Dr. Naito, has already voluntarily traveled
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`from Japan to the United States andtestified in both his personal capacity and as Daiichi Sankyo
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`Japan’s corporate representative for over 14 hours regarding his invention and discovery of DS-
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`8201. Further, Dr. Glenn Gormley, who was the Global Head of Research & Development
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`through most of the relevant time period will also appear in both his personal capacity and as a
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`corporate representative to testify regarding Daiichi Sankyo Japan’s development of DS-8201
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`and as to the factual bases regarding why Daiichi Sankyo Japan has not infringed Seagen’s
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`patent and why Seagen’s patent is invalid. Accordingly, through the personal as well as 30(b)(6)
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`depositions that Daiichi Sankyo Japan has offered, Seagen has had, and will have, the
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`opportunity to explore from witnesses all it needs regarding the accused product.
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`I.
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`STATEMENT OF FACTS
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`On February 10, 2021, Daiichi Sankyo Japan servedits initial disclosures on Seagen.
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`Danichi Sankyo Japan did not list Dr. Manabe as a person with relevant information, nor did
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`Seagen list Dr. Manabe in its initial disclosures. In discussing potential deponents, Daiichi
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`Sankyo Japan repeatedly requested that Seagen produce its CEO Dr. Siegall becauseofhis
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`unique knowledge of DS-8201 prior to Seagen’s patent filing, which goesto the heart of
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`Seagen’s willful infringement claims, and because of the claims he made in an arbitration, which
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`Seagen has attempted to make a focusofthis action. Although Seagen had never previously
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`expressedinterest in taking the deposition of Dr. Manabe, on September 29, 2021, it indicated
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`that if Daiichi Sankyo Japan soughtto take Dr. Siegall’s deposition, Seagen would retaliate by
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`demanding to take Dr. Manabe’s deposition. On October 22, 2021, Daiichi Sankyo Japan moved
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`to compel Dr. Siegall’s deposition. Just one week later, Seagen responded byfiling its Motion to
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`Compel the Deposition of Sunao Manabe (“Motion’’) under seal. (ECF No. 186).
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`Days later, on November | and 2, the sole inventor of the accused product, Daiichi
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`Sankyo Japan’s scientist Dr. Naito, voluntarily testified for more than 14 hours. P|
`eee
`ee
`ES :.:
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`November 15, Dr. Gormley will be deposed, both in his personal capacity and as a corporate
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`representative, regarding the development of DS-8201 and as to factual bases for Daiichi Sankyo
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`Japan’s litigation positions.
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`II.
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`ARGUMENT
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`A.
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`Seagen Cannot Justify the Deposition of Daiichi Sankyo Japan’s
`Top Executive Who Has No Unique Knowledge of the Relevant Issues
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`Asthe Fifth Circuit has recognized, an apex deposition, which is exactly what Seagenis
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`seeking from Dr. Manabe, is reserved for extraordinary circumstances where less-intrusive
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`means do not exist. See Motion Games, LLC v. Nintendo Co., Ltd., No. 6:12-cv-878-JDL, 2015
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`WL 11143486, at *1 (E.D. Tex. Mar. 18, 2015). Such is not the case here. Seagen has already
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`had the opportunity, and will have further opportunity through the deposition of corporate
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`designee Dr. Glenn Gormley, to obtain any relevant information it now seeks from Dr. Manabe
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`through less-intrusive means. Dr. Manabe’s apex deposition, therefore, is unwarranted.
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`Seagen also cannot show that Dr. Manabehas unique knowledgethatjustifies its
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`deposing Daiichi Sankyo Japan’s top executive. See Comput. Acceleration Corp. v. Microsoft
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`Corp., No. 9:06-CV-140, 2007 WL 7684605,at *1 (E.D. Tex. June 15, 2007) (noting that unless
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`high-level executive has “unique personal knowledgeabout the controversy, the court should
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`regulate the discovery process to avoid oppression, inconvenience, and burden to the corporation
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`and to the executive.”) The only issue in this case is infrmgement. Because Dr. Naito invented
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`the accused product (more than eight years before Seagenfiled its patent application), he (Dr.
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`Naito) is the relevant and best witness to discuss the specifics ofDS-8201. P|
`ee
`ee
`Se
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`In contrast, Seagen has not asserted any relevant grounds for deposing Dr. Manabe,
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`particularly given his status as CEO. Rather, Seagen has primarily cited Dr. Manabe’s public
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`comments regarding Daiichi Sankyo Japan’s litigation position for a claam—without any legal
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`support—that such statements go to willfulness. This is insufficient to warrant the demand
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`Seagen requests.! Dr. Manabe’s statements reflect nothing more than generalreferences to the
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`publicly available litigation positions of the dispute between Seagan and Daiichi Sankyo Japan.
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`Indeed, while Seagen cites Dr. Manabe’s statements on the invalidity of Seagen’s patent as
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`evidence of willfulness, it ignores key simple facts: Dr. Naito invented DS-8201 in 2011, five
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`years before Dr. Manabe became CEO, morethan seven years before Seagenfiled its patent
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`application, and more than eight years before Dr. Manabe made any statements regarding
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`Seagen’s patent. Any alleged willful infringement is impossible because DS-8201 was invented
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`before Seagen filed its patent, and Dr. Manabe therefore has no unique knowledgeofthis issue.
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`Likewise, Dr. Manabe cannotspeak to any willful infringement because his tenure as CEO and
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`statements regarding Seagen’s patent came long after DS-8201 was invented. Because Seagen
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`! Because Dr. Manabe has no unique knowledgeofthe facts at issue in this case, Daiichi Sankyo
`Japan will not call him for trial, which eliminates any risk ofprejudice from potential subsequent
`testimony.
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`cannot show that Dr. Manabe has any unique knowledge ofthe invention of DS-8201 andits
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`development, its motion should be denied. See Comput. Acceleration Corp., 2007 WL 7684605,
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`at *1.
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`In contrast, Daiichi Sankyo Japan has already shown that Seagan’s CEO,Dr. Siegall, has
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`unique knowledge of Seagan’s claims based on his intimate knowledge of Seagan’s previous
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`collaborations with Daiichi Sankyo Japan, his personal knowledge of DS-8201, and Seagan’s
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`desire to poach the independent, original work that Daiichi Sankyo Japan invested in the
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`invention and developmentof the life-saving drug, DS-8201. That effort to poach DS-8201 was
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`madein part through the filing of the Asserted Patent, the application of which was filed more
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`than seven years after Dr. Naito invented and discovered DS-8201. See Motion to Compelthe
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`Deposition of Clay Siegall, Ph.D. (ECF No. 178). Such knowledge goesto the heart of Seagan’s
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`alleged “willful infringement” claims as well as the invalidity of Seagan’s patent.
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`Even if Seagen could prove Dr. Manabe has unique knowledge, Seagen has already
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`obtained the relevant information that it now seeks from Dr. Manabe. Comput. Accel. Corp.,
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`2007 WL 7684605, at *1 (noting that oral deposition of a high-level corporate executive should
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`especially not be granted when information can be obtained through less intrusive discovery
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`methods or from depositions of other employees). Daiichi Sankyo Japan is producing two
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`separate 30(b)(6) witnesses, Dr. Naito and Dr. Glenn Gormley, on Seagen’s requested topics,
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`including Dr. Naito’s invention of DS-8201, Daiichi Sankyo Japan’s lack of infringement of
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`Seagen’s patent, and Datichi Sankyo Japan’s previous collaboration with Seagen. Seagen has
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`already deposed Dr. Naito for more than 14 hours and is expected to depose Dr. Gormley for up
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`to seven hours. Further, Dr. Naito already repeatedly explained in his deposition that he is the
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`sole inventor of DS-8201 and is best suited to commentas to the accused productandits
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`discovery. Seagen has therefore not only obtained testimony from the sole inventor of DS-8201,
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`but has obtained and will continue to obtain testimony from Daiichi Sankyo Japan’s corporate
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`representatives. Dr. Manabe’s proposed testimony regarding Daiichi Sankyo Japan’s alleged
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`“willful” infrimgement would only be, at most, duplicative of Dr. Naito’s and Dr. Gormley’s
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`personal and 30(b)(6) deposition testimony, and therefore should not be compelled. See Motion
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`Games, 2015 WL 11143486, at *4 (refusing to compel the deposition of a foreign CEO, in part,
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`because the CEO had no unique knowledge and requested information had already been
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`addressed in a previous 30(b)(6) deposition); Comput. Accel, 2007 WL 7684605 at *1 (rejecting
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`motion to compel a CEO when the CEO lacked unique knowledge that was unavailable from a
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`30(b)(6) deposition or deposition of lower-level employees). Seagen has produced no support—
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`factual or legal—to rebutthis.
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`B.
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`Seagen Has Refused to Use the
`Appropriate Meansfor Deposing Foreign Nationals
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`Seagen hasfailed to comply with the international-treaty requirements to depose a
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`foreign national. “When a potential deponentis not a citizen of the United States, the deponent
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`may appear voluntarily or when compelled through the appropriate international means of
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`obtaining discovery.” Squires v. Toyota Motor Corp., No. 4:18-CV-00138, 2021 WL 1837540,
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`at *3 (E.D. Tex. May 7, 2021) (citations omitted); see also Pan Am. Life Ins. Co. v. Louisiana
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`Acquisitions Corp., No. 13-5027, 2015 WL 4168435, at *3 (July 9, 2015) (rejecting attempt to
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`depose foreign CEO without following proper process and noting “[i]t is axiomatic that foreign
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`nationals living abroad are not subject to subpoena service outside of the United States and
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`cannot be compelled to give testimony under Rule 45.”). Dr. Manabe hasnot agreed to appear
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`voluntarily, and despite Seagen’s claims otherwise, Daiichi Sankyo Japan cannot force
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`employees to appear for testimony.” Indeed, since this case began, Daiichi Sankyo Japan made
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`plain to Seagen that its Japanese employees and executives did not voluntarily agree to being
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`deposed and that Daiichi Sankyo Japan could not force them to undergo a deposition.
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`(See, e.g.,
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`Ex. 2, Emails from Ozawa, dated August 4, 2021, August 24, 2021, and August 30, 2021.) Upon
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`learning this, Seagen should have pursued the “appropriate international means of obtaining
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`discovery,” in this case, through a “[L]etter [R]ogatory” requesting a deposition. See generaily
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`JC. Renfroe & Sons, Inc. v. Renfroe Japan Co., 515 F. Supp. 2d 1258, 1272 (M.D. Fla. 2007).
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`Seagen failed to do so, and instead waited until two weeks before fact discovery closes to
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`demand that this Court compel Dr. Manabe’s testimony. But Seagen’s belated demand for Dr.
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`Manabe’s deposition does not change the requirements for deposing foreign nationals, and
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`Seagen hasarticulated no reason for its refusal to comply with these requirements or why these
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`requirements do not apply to it. As such, Seagen’s motion should be denied.
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`Til.
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`CONCLUSION
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`Forall the reasons explained above, Seagen’s motion to compel should be denied.
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`* Seagen likewise misrepresents that Dr. Manabe “regularly travels” and can therefore appear for
`testimony.
`and his ability to
`travel does not change Seagen’s failure to follow proper diplomatic protocols.
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`Dated: November4, 2021
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`Respectfully submitted,
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`/s/Preston K. RatliffIT
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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
`
`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
`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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`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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