Case 2:20-cv-00337-JRG Document 233 Filed 12/06/21 Page 1 of 8 PageID #: 8558
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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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`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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`Civil Action No. 2:20-CV-00337-JRG
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`PLAINTIFF SEAGEN’S
`MOTION FOR LEAVE TO FILE
`RENEWED MOTION TO COMPEL AND FOR EXPEDITED BRIEFING
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`Seagen moves for leave to file this motion—its third on this issue—to compel DSC to
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`produce development documents for the linker technology in DSC’s accused product after the
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`close of fact discovery. The requested documents were the subject of two earlier motions to
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`compel. Seagen withdrew those motions after DSC represented in Court filings that it had
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`searched for the requested documents, and they did not exist. The recent deposition testimony of
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`DSC Scientist Dr. Morita, however, proves those representations wrong: the requested
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`documents do exist and, despite Seagen’s direct requests last week, remain unproduced. Seagen
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`has now requested these document countless times and been forced to file multiple motions.
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`DSC’s stonewalling has resulted in an unnecessary expenditure of resources by Seagen and the
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`Court and disruption of the pretrial schedule. Accordingly, Seagen also requests sanctions
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`1
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`Case 2:20-cv-00337-JRG Document 233 Filed 12/06/21 Page 2 of 8 PageID #: 8559
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`against DSC under Federal Rule of Civil Procedure 37 and this Court’s inherent authority.
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`Seagen will file its motion to compel production and for other relief under Rule 37 immediately
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`after this motion per Local Rule CV-7(k).
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`In a lead and local meet and confer on Monday, December 6, Seagen again requested that
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`DSC produce the notebooks Dr. Morita described in his deposition. Despite nearly a week
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`passing since Dr. Morita identified the notebooks, DSC would not confirm it had located them.
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`Instead, DSC said that “if” they are located, they would be produced on a rolling basis,
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`suggesting only “it is possible” this production would occur within the next two weeks.
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`Accordingly, the meet and confer did not resolve the issue on which Seagen seeks leave to file a
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`motion to compel. DSC should not be permitted to continue with its stonewalling. These
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`documents should have been produced long ago.
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`A. Seagen Made Prior Attempts to Obtain the Files of DSC Scientists
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`Seagen has filed two prior motions to compel linker development documents from DSC.
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`Seagen filed and then withdrew its first such motion (Dkt. 79) after DSC agreed to produce
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`linker development documents, including documents detailing how DSC arrived at its process
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`for conjugating the linker to an antibody. Notwithstanding that commitment, DSC continued to
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`withhold relevant documents. Seagen therefore renewed its motion to compel. (Dkt. 187.)
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`Seagen withdrew this motion after DSC produced documents Seagen had specifically identified
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`and, importantly, in a Court-mandated, in-person meet-and-confer, certified that it had “searched
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`the files of Drs. Masuda, Morita, Miyazaki, and Kasuya, and produced all responsive documents
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`to Seagen’s revised requests, including to the extent any such documents exist: (1) documents
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`that show how DSC developed its protocols for conjugating the DS-8201 linker to cysteine
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`amino acids and (2) how it selected the components in the DS-8201 linker from December 2009
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`2
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`until January 2012.” (Dkt. 225.) DSC’s lead counsel drafted this certification and provided it to
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`Seagen for use in its unopposed motion to withdraw. (See Ex. A (11.10.21 Ratliff email to
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`Chivvis re draft of withdrawal).)
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`B. Dr. Morita’s Subsequent Deposition Revealed Additional, Unproduced
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`Documents
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`DSC’s certification has proven incorrect. On November 30 and December 1, Seagen
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`took Dr. Koji Morita’s deposition. That deposition itself followed a Seagen motion to compel
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`and a Court order requiring DSC to produce him after DSC had originally refused to do so. (Dkt.
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`230). Dr. Morita testified that he was the first to perform the conjugation necessary to create the
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`ADC with the structure of the accused product, DS-8201 (which at that time had the codename
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`RDD-0126). He further testified that, to perform this conjugation, he referred to “work that Drs.
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`Miyazaki and Kasuya had conducted up until then using specific drug linkers for conjugation . . .
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`recorded in an experiment notebook.” (See Ex. B (Morita Dep. Tr. at 20:5-9 (emphasis added)).)
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`He said he “was shown that and asked to use the same experiment conditions.” (See id. at 20:10-
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`12.) When asked how to locate this information, Dr. Morita suggested it could be found in “the
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`experiment notebook that was used by Dr. Kasuya and Dr. Miyazaki around November 2011.”
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`(See id. at 22:9-12 (emphasis added).) He also testified that his own work conjugating RDD-
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`0126 “would be recorded in an experiment notebook.” (See id. at 36:4-14 (emphasis added).)
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`He said this notebook would be from sometime in 2011 or January 2012. (See id. at 35:9-13;
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`36:11-37:8; 57:2-58:14; 62:14-25.)
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`These notebooks are precisely the sort of documents that Seagen had requested and DSC
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`certified did not exist. They are “documents that show how DSC developed its protocols for
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`conjugating the DS-8201 linker to cysteine amino acids.” And they are custodial records of three
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`of the very individuals DSC claimed it had searched for all responsive documents. There is no
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`question that they should have been produced, and that production should have occurred well in
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`advance of the depositions of DSC’s fact witnesses, especially of Dr. Morita. Fact discovery
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`closed weeks ago, and Seagen has already served its opening expert report on infringement.1
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`Seagen gave DSC an opportunity to lessen the prejudice it created by its failure to
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`produce these notebooks. Dr. Morita testified to the notebooks in the first day of his deposition.
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`Thereafter, Seagen requested that the lab notebooks be produced immediately so that they could
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`be used in the second day of the deposition. DSC refused. Seagen’s inability to depose Dr.
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`Morita regarding these documents has compounded the prejudice to Seagen.
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`C. The Court Should Grant Leave for Seagen’s Renewed Motion to Compel
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`Seagen’s motion for leave to file after the close of fact discovery meets the four factors
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`the Fifth Circuit has outlined for such a motion: diligence, importance, prejudice to DSC, and
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`availability of a continuance.2 Seagen diligently raised DSC’s failure to produce the sought-after
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`documents early and often. It filed two previous motions on the subject well within the fact
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`discovery period. It withdrew those motions only after DSC represented it would comply or had
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`complied with Seagen’s requests. (See Dkt. 92; Dkt. 93; Dkt. 187; Dkt. 225.) Had DSC’s
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`representations about its production been accurate, or had DSC made Dr. Morita available during
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`the fact discovery period, Seagen would have been able to timely move to compel DSC to
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`produce the lab notebooks.
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`1 After the November 10 hearing on various discovery issues, the Court ordered the deposition of Dr. Koji Morita to
`be taken after the close of fact discovery, agreeing with Seagen that DSC should have made him available to be
`deposed during the fact discovery period. (Dkt. 230.)
`2 These factors include, “(1) [T]he explanation for the party's failure to meet the deadline, (2) the importance of what
`the Court is excluding, (3) the potential prejudice if the Court allows that thing that would be excluded, and (4) the
`availability of a continuance to cure such prejudice.” Keranos, LLC v. Silicon Storage Tech., Inc., 797 F.3d 1025,
`1035 (Fed. Cir. 2015) (internal citations omitted); see also S & W Enters., L.L.C. v. Southtrust Bank of Ala., NA, 315
`F.3d 533, 535 (5th Cir. 2003) (setting forth the four-factor test binding within the circuit).
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`Case 2:20-cv-00337-JRG Document 233 Filed 12/06/21 Page 5 of 8 PageID #: 8562
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`The documents are important because they are highly relevant. They explain how DSC
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`developed features of the accused product that meet key claim limitations, including the selection
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`of the “MC” group in the linker, and how the linker is attached to a sulfur atom on a cysteine
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`amino acid of the antibody. (See Dkt. 187 at 4-5.)
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`DSC cannot claim prejudice from the Court permitting Seagen’s motion to compel after
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`the deadline. DSC’s conduct is the reason Seagen was not able to file its motion to compel
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`earlier—including its two separate representations that prompted Seagen’s withdrawal of its
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`earlier motions to compel and DSC’s refusal to produce Dr. Morita. On the other hand, the
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`prejudice to Seagen is significant. Seagen filed its earlier motions to compel because there was a
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`gap in DSC’s record of the development of these features from December 2009 to January 2012.
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`DSC certified it had produced all responsive documents that existed from this time frame from
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`Drs. Morita, Kasuya, Miyazaki, and Masuda. But clearly it had not. There is no good reason it
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`failed to produce these witnesses’ lab notebooks. In fact, DSC previously produced lab
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`notebooks from its hand-picked witness, Dr. Naito. Seagen does not seek a continuance of the
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`trial date. A continuance would only countenance DSC’s failure to produce these clearly
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`relevant documents, despite two motions to compel, and DSC’s refusal to produce Dr. Morita—a
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`clearly relevant witness—absent a court order.
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`Despite its diligence Seagen was not able to seek this relief sooner, so the Court should
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`allow for Seagen to file its Motion to Compel. Seagen also requests expedited briefing on its
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`renewed Motion to Compel in light of the quickly approaching pretrial deadlines, including the
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`January 6 deadline for expert and summary judgment motions, and the January 25 deadline for
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`pretrial disclosures. The Court should therefore require DSC to respond to Seagen’s Renewed
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`Motion to Compel within four days of the Court’s order on this Motion for Leave. There is good
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`cause for an expedited resolution of this motion in light of these upcoming pretrial deadlines.
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`Case 2:20-cv-00337-JRG Document 233 Filed 12/06/21 Page 7 of 8 PageID #: 8564
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`Dated: December 6, 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
`Of Counsel:
`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 233 Filed 12/06/21 Page 8 of 8 PageID #: 8565
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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
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`consented to electronic service are being served with a copy of the foregoing document via the
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`Court’s CM/ECF system per Local Rule CV-5(a)(3) this December 6, 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 Travis
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`Underwood as local counsel, met and conferred via telephone with counsel for Daiichi Sankyo
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`Co., Ltd., with Preston Ratliff as lead counsel and Mark Mann as local counsel. On October 1,
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`2021, counsel for Seagen, with Michael Jacobs as lead counsel and Travis Underwood as local
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`counsel, again met and conferred via telephone with counsel for Daiichi Sankyo Co., Ltd., with
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`Preston Ratliff as lead counsel and Mark Mann as local counsel. On December 6, 2021, counsel
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`for Seagen, with Michael Jacobs as lead counsel and Travis Underwood and Andrea Fair as local
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`counsel, again met and conferred via telephone with counsel for Daiichi Sankyo Co., Ltd., with
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`Preston Ratliff as lead counsel and Blake Thompson as local counsel. AstraZeneca was also
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`present on December 6 with David Berl as lead counsel and Jennifer Ainsworth as local counsel.
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`The parties were unable to reach agreement at these meet and confers and have reached an impasse,
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`leaving an open issue for the Court to resolve. This motion is opposed by Defendants.
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`/s/ Michael A. Jacobs
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`/s/ Melissa R. Smith
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