Case 2:20-cv-00337-JRG Document 461 Filed 09/12/22 Page 1 of 40 PageID #: 19642
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`IN THE UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`CASE 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, and
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`ASTRAZENECA
`PHARMACEUTICALS LP and
`ASTRAZENECA UK LTD.,
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` Intervenor-Defendants.
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`DEFENDANTS’ OPPOSITION TO SEAGEN’S MOTION FOR AN EXCEPTIONAL
`CASE FINDING AND ATTORNEY’S FEES UNDER 35 U.S.C. § 285
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`Case 2:20-cv-00337-JRG Document 461 Filed 09/12/22 Page 2 of 40 PageID #: 19643
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION .......................................................................................................... - 1 - 
`UNDISPUTED BACKGROUND FACTS ..................................................................... - 2 - 
`LEGAL STANDARD ..................................................................................................... - 3 - 
`ARGUMENT .................................................................................................................. - 4 - 
`Defendants’ Litigation Positions Are Proper and Reasonable Based on the
`A. 
`Law and Evidence ............................................................................................... - 4 - 
`Daiichi Sankyo Japan’s Litigation Conduct Was Appropriate ........................... - 7 - 
`1. 
`30(b)(6) Deposition Testimony............................................................... - 8 - 
`2. 
`Deposition Objections ........................................................................... - 11 - 
`3. 
`Document Production ........................................................................... - 12 - 
`The Jury’s Finding of Willful Infringement is Legally Incorrect and in
`Any Event Does Not Support an Exceptional Case .......................................... - 14 - 
`CONCLUSION ............................................................................................................. - 15 - 
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`B. 
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`C. 
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`I. 
`II. 
`III. 
`IV. 
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`V. 
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`Case 2:20-cv-00337-JRG Document 461 Filed 09/12/22 Page 3 of 40 PageID #: 19644
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Acorn Semi, LLC v. Samsung Elecs. Co., Ltd.,
`No. 2:19-cv-347-JRG, 2022 WL 489947 (E.D. Tex. Feb. 17, 2022) .................................8, 12
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`Becirevic v. Navient Sols., LLC,
`No. 4:18-CV-00363, 2019 WL 4054990 (E.D. Tex. May 30, 2019) .......................................10
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`Clanton v. U.S.,
`488 F.2d 1069 (5th Cir. 1974) .................................................................................................11
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`Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc.,
`No. 2:14-CV-00912-JRG, 2020 WL 1478396 (E.D. Tex. Mar. 26, 2020) ...................... passim
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`Eidos Display, LLC v. Chi Mei Innolux Corp.,
`No. 6:11-CV-00201-JRG, 2018 WL 1156284 (E.D. Tex. Mar. 5, 2018) ................................15
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`Get-A-Grip, II, Inc. v. Hornell Brewing Co.,
`Nos. 99-1332, 00-3937, 2002 U.S. Dist. LEXIS 2589 (E.D. Pa. Feb. 14, 2002) ....................13
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`Gigamon Inc v. Apcon, Inc.,
`No. 2:19-CV-300*JRG, 2022 WL 949962 (E.D. Tex. Mar. 29, 2022) .....................................6
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`Nguyen v. Excel Corp.,
`197 F.3d 200 (5th Cir. 1999) ...................................................................................................11
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`Octane Fitness, LLC v. ICON Health & Fitness, Inc.,
`134 S.Ct. 1749 (2014) ...............................................................................................................3
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`Orion IP, LLC v. Mercedes-Benz USA, LLC,
`No. 6:05-CV-322, 2008 WL 8856865 (E.D. Tex. Mar. 28, 2008) ..........................................13
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`Plastronics Socket Partners, Ltd. v. Dong Weon Hwang,
`No. 2:18-CV-00014-JRG, 2020 WL 1324733 (E.D. Tex. Mar. 20, 2020) ............................6, 7
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`Plastronics Socket Partners, Ltd. v. Hwang,
`No. 2020-1739, 2022 WL 108948 (Fed. Cir. Jan. 12, 2022) .................................................6, 7
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`ReedHycalog UK, Ltd. v. Diamond Innovations Inc.,
`No. 6:08-CV-325, 2010 WL 3238312 (E.D. Tex. Aug. 12, 2010) ..........................................14
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`Resol. Tr. Corp. v. S. Union Co.,
`985 F.2d 196 (5th Cir. 1993) .....................................................................................................9
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`ii
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`Case 2:20-cv-00337-JRG Document 461 Filed 09/12/22 Page 4 of 40 PageID #: 19645
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`SFA Sys., LLC v. Newegg Inc.,
`793 F.3d 1344 (Fed. Cir. 2015)..................................................................................................4
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`SRI Int’l, Inc. v. Cisco Sys., Inc.,
`14 F.4th 1323 (Fed. Cir. 2021) ..................................................................................................6
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`Stone Basket Innovations v. Cook Med. LLC,
`892 F.3d 1175 (Fed. Cir. 2018)..........................................................................................11, 12
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`Tinnus Enters., LLC v. Telebrands Corp.,
`369 F. Supp. 3d 704 (E.D. Tex. 2019) .......................................................................................7
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`Whirlpool Corp. v. TST Water, LLC,
`No. 2:15-CV-01528-JRG, 2018 WL 1536874 (E.D. Tex. Mar. 29, 2018) .............................15
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`Zenith Labs., Inc. v. Bristol-Myers Squibb Co.,
`19 F.3d 1418 (Fed. Cir. 1994)....................................................................................................5
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`Statutes
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`35 U.S.C. § 285 ......................................................................................................................3, 7, 15
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`Case 2:20-cv-00337-JRG Document 461 Filed 09/12/22 Page 5 of 40 PageID #: 19646
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`I.
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`INTRODUCTION
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`This was a hard-fought and contentious trial where the patent-in-suit (the “’039 patent”)
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`was logically met with many challenges, including lack of written description, lack of enablement,
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`non-infringement, and prosecution laches. This is because the undisputed record demonstrates
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`that Daiichi Sankyo Japan independently invented and developed the accused product Enhertu®
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`before the ’039 patent issued.1 The ’039 patent was created years after Seagen learned about
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`Enhertu® and sought to collaborate with Daiichi Sankyo Japan regarding it, and on the heels of
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`Seagen learning that Daiichi Sankyo Japan chose to collaborate instead with AstraZeneca.2 At
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`trial, Seagen admitted that—in an attempt to capture Daiichi Sankyo Japan’s Enhertu®—it reached
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`back to a 2003 patent family that, on its face, professes to only concern new auristatin drugs.3
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`Seagen wants to tack an additional $9-12 million in attorney’s fees on to its $41.8 million
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`jury award, arguing that this is an exceptional case based on (i) Seagen’s characterization of
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`Defendants’ litigation positions; (ii) Seagen’s characterization of how discovery progressed in this
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`case; and (iii) because the jury made a finding of willfulness. Seagen’s arguments lack merit.
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`First, Seagen’s belated complaints about the strength of Defendants’ litigation positions
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`should not be credited, particularly when Seagen never even challenged those positions on
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`summary judgment. Second, Seagen’s complaints about discovery conduct are misplaced. Daiichi
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`Sankyo Japan produced over 331,000 pages on Enhertu®’s research and development (as well as
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`Drs. Miyazaki and Morita’s laboratory notebooks when their existence was first revealed during
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`Dr. Morita’s deposition) without Court intervention. Seagen’s belated complaints about an alleged
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`failure to prepare 30(b)(6) witnesses should not be credited when Seagen raised no such complaints
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`1 (See, e.g., Dkt. 445 at 13-17.)
`2 (See infra Section II.)
`3 (See infra Section II; e.g., Trial Tr. (Day 1) at 245:16-19; Bench Trial Tr. at 35:17-18.)
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`Case 2:20-cv-00337-JRG Document 461 Filed 09/12/22 Page 6 of 40 PageID #: 19647
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`during discovery. It is all the more incredible that Seagen complains about deposition conduct
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`when it is the party that improperly spoke to its witnesses during breaks, including instructing them
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`to “remember more.”4 Third, Seagen’s effort to equate a finding of willfulness with the standard
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`necessary for an exceptional case is legally incorrect. Seagen’s motion should be denied.
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`II.
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`UNDISPUTED BACKGROUND FACTS
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` Almost eight years before Seagen filed the ’839 application, Daiichi Sankyo Japan invented
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`and began developing Enhertu®. (E.g., Trial Tr. (Day 2) at 247:18-248:8.)
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` Seagen’s scientists, including Dr. Senter, have been aware of Daiichi Sankyo Japan’s Enhertu®
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`since at least 2015. (E.g., Trial Tr. (Day 1) at 240:20-23, 253:13-16.)
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` Seagen sought to partner with Daiichi Sankyo Japan concerning Enhertu® at least twice, in
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`2016 and 2018. (E.g., Trial Tr. (Day 1) at 267:17-270:12; Trial Tr. (Day 2) at 204:7-205:24.)
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` During the time Seagen attempted to partner with Daiichi Sankyo Japan, Daiichi Sankyo Japan
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`developed Enhertu®, received at least three patents covering Enhertu®, and invested heavily to
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`bring Enhertu® to market. (E.g., Trial Tr. (Day 2) at 197:19-199:6; 202:9-203:11; DX-0691;
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`DX-0692; DX-0693; DX-0210; DX-0293; DX-1055.)
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`
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`It was not until after the March 2019 announcement of Daiichi Sankyo Japan’s $6.9 billion
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`collaboration with AstraZeneca concerning Enhertu® that Seagen filed the ’839 application in
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`July 2019, claiming priority to applications filed in 2003. (E.g., Trial Tr. (Day 1) at 253:21-
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`24; see generally DX-0001.)
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` Seagen expanded the ’839 application’s claim scope to include, for the first time in the ’039
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`patent family, ADCs having a drug moiety other than a dolastatin/auristatin; Dr. Senter (named
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`inventor) was unaware of it until after the fact. (E.g., Trial Tr. (Day 1) at 259:9-261:25.)
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`4 (See Ex. 1 (Kline Dep. Tr. at 285:18-23; Senter Dep. Tr. at 63:11-64:8, 553:20-554:1).)
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`Case 2:20-cv-00337-JRG Document 461 Filed 09/12/22 Page 7 of 40 PageID #: 19648
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` The ’039 patent named inventors had never made or seen any ADCs that are even alleged to
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`be within the scope of the Asserted Claims before Daiichi Sankyo Japan’s Enhertu®.5 (E.g.,
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`Trial Tr. (Day 1) at 261:19-25; Trial Tr. (Day 4) at 64:4-8, 74:5-75:19, 82:13-21.)
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` The European Patent Office (“EPO”) independently and without provocation found “[i]t is
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`quite manifest that Applicants are trying to lay claim on Daiichi [Sankyo Japan’s DS-8201],
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`a very promising chemotherapeutic drug, by mixing and matching features not disclosed in
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`combination in the original application,” regarding counterpart claims to the ’839 application
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`filed at the EPO with similarly broadened claim scope. (DX-0006 at 842.)
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` Seagen did not disclose Daiichi Sankyo Japan’s three U.S. patents covering Enhertu® to the
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`PTO during the prosecution of the ’839 application. (See generally DX-0001; DX-0006.)
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` Seagen never contacted Daiichi Sankyo Japan regarding the issuance of the ’039 patent.
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` Seagen filed this action at 12:02 am Eastern Time on the day the ’039 patent issued. (Dkt. 1.)
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` Defendants’ invalidity defenses were appropriately maintained and pursued.
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` Seagen did not withdraw its claim for pre-issuance damages until after Daiichi Sankyo Japan
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`had to file a motion for summary judgment to dispose of this baseless claim. (Dkts. 254, 268.)
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`III. LEGAL STANDARD
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`Under § 285, “an ‘exceptional’ case is simply one that stands out from others with respect
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`to the substantive strength of a party’s litigating position . . . or the unreasonable manner in which
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`the case was litigated.” Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S.Ct. 1749, 1756
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`(2014). What constitutes an exceptional case should not become part and parcel of losing a
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`hard-fought trial. Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., No. 2:14-CV-00912-JRG,
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`2020 WL 1478396, at *3-4 (E.D. Tex. Mar. 26, 2020).
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`5 Seagen contends (Defendants dispute) that Enhertu® meets each Asserted Claim limitation.
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`Case 2:20-cv-00337-JRG Document 461 Filed 09/12/22 Page 8 of 40 PageID #: 19649
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`IV. ARGUMENT
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`While giving lip service to the “totality of the circumstances” standard, Seagen eschews it
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`in favor of focusing on and elevating a small number of discrete items. As detailed below, none
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`of them constitutes misconduct by Daiichi Sankyo Japan, but even if they did, they fail to establish
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`that the totality of the circumstances warrant granting attorneys’ fees.
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`A.
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`Defendants’ Litigation Positions Are
`Proper and Reasonable Based on the Law and Evidence
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`“[I]t is the ‘substantive strength of the party’s litigating position’ that is relevant to an
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`exceptional case determination, not the correctness . . . of that position.” SFA Sys., LLC v. Newegg
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`Inc., 793 F.3d 1344, 1348 (Fed. Cir. 2015); see also Core Wireless, 2020 WL 1478396, at *4
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`(“Attorneys’ fees should not be awarded because a party made unsuccessful arguments”).6
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`Seagen only alleges that Daiichi Sankyo Japan’s infringement and prosecution laches
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`arguments were improper, yet seeks all of its attorney’s fees (covering additional work relating to,
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`e.g., invalidity). There can be no suggestion that all of Defendants’ arguments were subjectively
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`weak. See, e.g., Daiichi Sankyo, Inc. et al. v. Seagen Inc., PGR2021-00030, Paper 17 at 25
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`(P.T.A.B. Apr. 7, 2022) (“[W]e determine that Petitioner has established that it is more likely than
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`not that claims 1-5, 9, and 10 of the ’039 patent lack enablement.”).
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`Further, Seagen effectively conceded that Daiichi Sankyo Japan had a reasonable
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`non-infringement position prior to the Court’s claim construction order. (Dkt. 435 (“Mot.”) at 13.)
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`This is unsurprising. Seagen previously admitted that Defendants’ claim construction of “D is a
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`drug moiety” is a “non-infringement home run.” (Dkt. 135 at 1.) While the Court disagreed with
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`Defendants’ position, it was not unreasonable, especially in light of the ’039 patent’s focus on
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`6 Both sides pursued positions on which they did not ultimately prevail. For example, Seagen
`withdrew its request for (1) lost profits on the eve of trial, (2) pre-issuance damages following
`Defendants’ motion for summary judgment, and (3) discovery on pipeline drugs.
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`Case 2:20-cv-00337-JRG Document 461 Filed 09/12/22 Page 9 of 40 PageID #: 19650
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`ADCs having auristatin drug moieties. (See Dkts. 130, 140; e.g., Trial Tr. (Day 3) at 67:19-68:14,
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`70:13-71:25, 108:3-10.) The specification even includes a statement that the “drug moiety (D) of
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`the antibody drug conjugates (ADC) are of the dolastatin/auristatin type.” (DX-0001 at 71:19-22.)
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`Even after the Court’s claim construction order, however, Daiichi Sankyo Japan’s
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`non-infringement position remained strong. (See Dkt. 445.) Indeed, Seagen did not even try to
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`move for summary judgment on the issue. Nor could it have successfully done so. As
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`Defendants’ technical expert Dr. Lambert and fact expert Dr. Naito explained, the “drug moiety”
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`in Enhertu®—in the specific context of the disclosures and claims of the ’039 patent—is DX-8951,
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`because it was the compound Dr. Naito and Daiichi Sankyo Japan scientists linked to the GGFG
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`tetrapeptide through a variety of different spacers to make an ADC, and which is attached to the
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`antibody and linker/spacer when Enhertu® is designed and made. (See, e.g., Trial Tr. (Day 2)
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`245:23-247:24; Trial Tr. (Day 3) at 76:13-81:4.) Because the asserted claims of the ’039 patent
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`require that “free drug disassociate from the antibody inside the cell,” and it is undisputed that
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`Enhertu® does not release DX-8951 as its payload, Defendants’ position that Enhertu® does not
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`infringe the ’039 patent is strongly grounded in the evidence. (See Dkt. 445 at 4, 6-7.)
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`Similarly, Defendants’ position that Seagen failed to meet its burden of proof to
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`demonstrate Enhertu® intracellularly cleaves in a patient is well supported. See Zenith Labs., Inc.
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`v. Bristol-Myers Squibb Co., 19 F.3d 1418, 1423-24 (Fed. Cir. 1994) (finding plaintiff did not
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`prove that an in vivo functional claim limitation was met where its technical expert’s theory was
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`not supported by proper experimental data). Seagen’s reliance on conclusory expert testimony
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`and inapposite documents is not sufficient to demonstrate infringement. (See Dkt. 445 at 4-7.)
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`As Dr. Lambert explained, the statements made by Daiichi Sankyo Japan about “free drug”
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`and “intracellular cleavage” were taken out of context by Seagen and not evaluated within the
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`Case 2:20-cv-00337-JRG Document 461 Filed 09/12/22 Page 10 of 40 PageID #: 19651
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`meaning of those terms in the ’039 patent.7 (E.g., Trial Tr. (Day 3) at 82:22-84:3, 224:3-11.)
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`Seagen’s cited SRI (Mot. at 12) is thus inapplicable. See SRI Int’l, Inc. v. Cisco Sys., Inc., 14 F.4th
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`1323, 1329 (Fed. Cir. 2021) (noting defendant’s “own technical witness” acknowledged an internal
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`document showed an accused product met the only disputed limitation of the asserted claims).
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`By not moving for summary judgment, Seagen implicitly recognized Defendants’
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`arguments concerned heavily contested issues of fact in which both side’s experts expressed
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`conflicting views. See Gigamon Inc v. Apcon, Inc., No. 2:19-CV-300*JRG, 2022 WL 949962, at
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`*3 (E.D. Tex. Mar. 29, 2022) (finding neither side’s position to be “so unreasonable to warrant a
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`finding of exceptionality” where the non-infringement dispute presented a “battle of the experts”).
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`The Court agreed during the pre-trial conference that these issues should be decided by the jury,
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`when it rejected Seagen’s argument that Dr. Lambert was allegedly attempting to use claim
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`constructions that are different from those that were arrived at by the Court. The Court explained:
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`the Court adopted the specific lexicography from the specification as to ‘intercellularly
`cleaved.’ The Court gave plain and ordinary meaning to the rest of the challenged claim
`language. I think Seagen goes too far when they take the position that the Court has
`expressly rejected the Defendant’s alleged narrowing.
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`(See Pretrial Conference Tr. (Day 1) at 78:23-79:3.)8
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`Seagen’s belated argument concerning Defendants’ non-infringement arguments should
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`thus not be entertained. See Plastronics Socket Partners, Ltd. v. Dong Weon Hwang, No. 2:18-
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`CV-00014-JRG, 2020 WL 1324733, at *10 (E.D. Tex. Mar. 20, 2020), aff'd in part, rev'd in part
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`7 In other words, that Daiichi Sankyo Japan stated
` does not mean its “drug moiety is intracellularly cleaved in a
`patient” as construed by the Court. Moreover, several of the statements
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`relied upon by Dr. Berotzzi were merely statements of intent. (E.g., PX-1137.)
`8 The facts here are thus distinguishable from Seagen’s cited Innovation Scis. (Mot. at 13). See
`Innovation Scis., LLC v. Amazon.com, Inc., 842 F. App’x 555, 556-58 (Fed. Cir. 2021) (non-
`infringement arguments weak where they were “plainly inconsistent” with claim construction).
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`Case 2:20-cv-00337-JRG Document 461 Filed 09/12/22 Page 11 of 40 PageID #: 19652
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`sub nom. Plastronics Socket Partners, Ltd. v. Hwang, No. 2020-1739, 2022 WL 108948 (Fed. Cir.
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`Jan. 12, 2022) (“Parties who believe a claim is fatally flawed, legally or factually, should seek an
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`appropriate judgement from the Court under the Federal Rule of Civil Procedure 12 or 56. They
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`may not, in lieu of this, lay behind the log throughout the trial and then expect attorneys’ fees
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`under section 285 for having to defend against such unchallenged claims.”).9
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`Daiichi Sankyo Japan also did not “repackage[]” its invalidity positions into prosecution
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`laches. The June 2022 bench trial was about (in part) delay during the prosecution of the ’039
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`patent—a separate, equitable legal ground not raised during the jury trial. Again, Seagen did not
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`move for summary judgment on prosecution laches and designated an expert to support its position
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`for the many disputed issues of fact. (See supra p.6.) Seagen cites only to Tinnus (Mot. at 13) to
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`support its argument and quotes language regarding wasting “significant resources.” See Tinnus
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`Enters., LLC v. Telebrands Corp., 369 F. Supp. 3d 704, 720, 745 (E.D. Tex. 2019). But Seagen
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`omits the very next sentence which states, “[t]he Magistrate Judge warned that Defendants’
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`positions were preserved for appeal and that they need not continue to re-argue or disagree with
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`the Court.” Id. There can be no argument Daiichi Sankyo Japan wasted the Court’s resources in
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`arguing its prosecution laches defense as it did not—and could not have—presented its arguments
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`and factual support (preserving them for appeal) prior to the bench trial.
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`B.
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`Daiichi Sankyo Japan’s Litigation Conduct Was Appropriate
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`Daiichi Sankyo Japan acted appropriately throughout the litigation, including to prepare its
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`30(b)(6) witnesses for the full scope of designated testimony, prevent disclosure of privileged
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`information, and produce relevant documents.
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`9 Ironically, while Seagen failed to heed the guidance of Plastronics, Daiichi Sankyo Japan did.
`Daiichi Sankyo Japan filed a summary judgment motion when Seagen baselessly persisted in
`seeking pre-issuance damages. Seagen filed no opposition, but instead, stipulated that it would
`not seek pre-issuance damages. (Dkts. 254, 268.)
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`Case 2:20-cv-00337-JRG Document 461 Filed 09/12/22 Page 12 of 40 PageID #: 19653
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`1.
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`30(b)(6) Deposition Testimony
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`Consistent with standard practice, Daiichi Sankyo Japan made clear before Drs. Gormley
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`and Naito’s depositions the scope of the testimony they would provide for Seagen’s 30(b)(6)
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`topics.10 (See Ex. 3; see also Ex. 4 (Seagen doing the same).) Seagen did not raise any issues with
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`the Court and proceeded with the depositions. Nor did it move to compel further testimony.11
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`Seagen’s inaction undermines its Motion, because the portions of the depositions it cites
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`were instances where Seagen went beyond the designated scope. See Acorn Semi, LLC v. Samsung
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`Elecs. Co., Ltd., 2 No. 2:19-cv-347-JRG, 2022 WL 489947, at *6 n.6 (E.D. Tex. Feb. 17, 2022)
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`(“The Court expects litigants to timely serve objections on noticed topics and move to compel a
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`deposition if needed.”). For example, Seagen claims that Dr. Gormley was designated to testify
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`about Daiichi Sanyo Japan’s “collaboration with Seagen” in its entirety. (Mot. at 3.) But that is
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`incorrect; Dr. Gormley was designated to testify on the research and development of Enhertu® and
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`“generally about how ADCs that used Seagen’s technology killed animals, and the resulting
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`termination of Daiichi Sankyo Japan’s collaboration with Seagen.” (Ex. 3 at 9.) Seagen’s
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`questioning about things such as information received during the collaboration or “the subject of
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`the collaboration,” (Mot. at 3-4), were thus beyond the designated scope of his deposition.12 Dr.
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`10 Further, weeks prior to both depositions, Daiichi Sankyo Japan offered Seagen the opportunity
`to provide a “a discrete set of documents Seagen would like [the witnesses] to review in advance
`of their depositions” and provide any “specific questions for these deponents that may be shared
`ahead of the deposition to ensure the witnesses have knowledge of responsive details” to permit
`Drs. Gormley and Naito to “answer Seagen’s questions on details that may not be known or readily
`ascertainable during a deposition.” (Ex. 2.) Seagen never responded to this offer.
`11 Seagen selectively quotes the Court during the pre-trial conference, (Mot. at 2 n.1), ignoring the
`Court’s guidance that to “the extent Plaintiffs thought they didn’t get full discovery relating to
`anyone that would fall within the scope of this proffered MIL [Drs. Naito, Gormley, and Morita],
`they could have come to the Court for a motion to compel or otherwise sought resolution of it
`before motion in limine practice before trial.” (Pretrial Conf. Tr. (Day 1) at 125:21-25.)
`12 Additionally, Seagen further mischaracterizes the record by claiming that Dr. Gormley did not
`recall speaking with any Daiichi Sankyo Japan scientist, (Mot. at 3), but as Dr. Gormley testified,
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`Case 2:20-cv-00337-JRG Document 461 Filed 09/12/22 Page 13 of 40 PageID #: 19654
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`Gormley was fully prepared and testified as to the actual scope for which he was designated. He
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`explained that he reviewed hundreds of pages of documents in preparation for the deposition.
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`(E.g., Ex. 5 (Gormley Dep. Tr. at 64:3-5, 89:21-90:5).) And he proceeded to provide full and
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`complete answers within the scope of his designated topics. (E.g., id. at 87:3-88:13.)
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`Seagen also mischaracterizes the 30(b)(6) topics for which Dr. Naito was designated,
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`claiming he was designated for “DSC’s discovery of DS-8201, including the identity of all persons
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`involved in the discovery, the contribution of each such person to the alleged discovery, and the
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`period in which the discovery occurred.” (Mot. at 4.) That, again, is incorrect; he was designated
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`to testify “generally about the invention of Enhertu®.” (Ex. 3 at 2; see also Ex. 5 (Naito Dep. Tr.
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`at 173:18-174:7).) Seagen’s questioning about particular people’s roles within the broader ADC
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`research and development team, (see Mot. at 4-6), were thus beyond the scope of the designated
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`30(b)(6) topic. In contrast, Dr. Naito was fully prepared and provided full and complete answers
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`within the scope of his designated topics.13 (See, e.g., Ex. 5 (Naito Dep. Tr. at 173:18-174:7,
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`177:3-6, 177:12-21).) Seagen’s examples of purported lack of knowledge are instances where
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`Seagen went beyond the designated scope. Seagen’s cited case law is thus inapposite.14
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`he spoke with Dr. Ogitani, an inventor on Daiichi Sankyo Japan’s patents covering Enhertu®. (Ex.
`5 (Gormley Dep. Tr. at 183:21-22).) Moreover, it is unsurprising that Dr. Gormley did not review
`Drs. Miyazaki and Morita’s laboratory notebooks; Dr. Gormley’s deposition occurred weeks
`before these notebooks were first mentioned during Dr. Morita’s deposition.
`13 Seagen again mischaracterizes to contend that Dr. Naito “‘was not able to understand the
`content’ of the 30(b)(6) topics for which he had been designated.” (Mot. at 5.) Seagen’s argument
`ignores the context that Dr. Naito could not understand Seagen’s Topic No. 1 as originally written
`and ignores Dr. Naito’s explanation that he was “aware Daiichi Sankyo [Japan] has made some
`objections . . . [and] in consideration of all that, what I am designated to speak on is the invention
`of DS-8201 generally.” (Ex. 5 (Naito Dep. Tr. at 173:18-174:7).)
`14 For example, in Resol. Tr. Corp. v. S. Union Co., 985 F.2d 196 (5th Cir. 1993), sanctions were
`awarded where the 30(b)(6) witness had no knowledge of the topic scope for which he had been
`designated and agreed to testify.
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`Case 2:20-cv-00337-JRG Document 461 Filed 09/12/22 Page 14 of 40 PageID #: 19655
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`Separately, neither Dr. Gormley nor Dr. Naito testified falsely. Seagen’s argument that
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`they testified “that Dr. Naito was the sole individual responsible for the development of
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`Enhertu[®],” (Mot. at 6 (emphasis added)), is inaccurate and conflates development with
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`invention.15 What Dr. Gormley and Dr. Naito both testified was that Dr. Naito was the sole
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`inventor of the overall structure of DS-8201, which is supported by contemporaneous documents,
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`and Dr. Gormley noted that many others participated in the development of Enhertu®. (See Ex.
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`5 (Gormley Dep. Tr. at 76:20-21, 97:25-98:4; Naito Dep. Tr. at 221:8-12); DX-0113; DX-0990.)
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`That Seagen disagrees with Dr. Gormley and Dr. Naito’s belief that Dr. Naito was the sole
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`inventor does not make it a misrepresentation (and the fact that Seagen resorts to misleadingly
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`conflating invention and development is telling as to the baselessness of its accusation). Indeed,
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`if Seagen disagreed with this characterization, it had many avenues to appropriately challenge the
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`testimony. See Becirevic v. Navient Sols., LLC, No. 4:18-CV-00363, 2019 WL 4054990, at *4
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`(E.D. Tex. May 30, 2019) (“If a party disagrees with deposition testimony given by witnesses, he
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`is free to challenge that testimony through his own factual assertions, impeach it through other
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`evidence, and cross-examine the witnesses vigorously at trial.”) (internal citations omitted).
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`As explained, there was no false statement here.16 The standard in Seagen’s cited case,
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`Core Wireless (see Mot. at 7), of “giving patently false testimony to extend valueless cases as long
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`as possible” is thus not met here. See Core Wireless, 2020 WL 1478396, at *2-4 (finding no false
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`testimony given and denying attorney’s fees despite jury finding of willful infringement).
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`15 In the pharmaceutical industry, “development” refers to the process of bringing a promising
`drug to market, while “invention” means bringing ideas or technologies together in a novel way to
`create something new. So while many scientists were involved in Enhertu®’s “development” (e.g.,
`its preclinical and clinical testing), they had no bearing on the inventive step that first resulted in
`the complete structure of Enhertu® as a whole ADC, and could not be considered “inventors.”
`16 But even “a false or inconsistent statement in a deposition does not compel the conclusion of
`bad faith.” See Becirevic, 2019 WL 4054990, at *4 (internal citation omitted).
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`Case 2:20-cv-00337-JRG Document 461 Filed 09/12/22 Page 15 of 40 PageID #: 19656
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`2.
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`Deposition Objections
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`Seagen’s accusation of misconduct during depositions is unfounded and fails to warrant
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`the relief Seagen requests. First, while Seagen takes issue with Daiichi Sankyo Japan’s
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`instructions not to answer during Dr. Morita’s second deposition, (see Mot. at 10-11), those
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`instructions were entirely appropriate. Seagen’s questions regarding when Dr. Morita informed
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`Daiichi Sankyo Japan’s counsel about lab notebooks seek the substance of attorney-client
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`communications and are thus privileged. E.g., Clanton v. U.S., 488 F.2d 1069, 1071 (5th Cir.
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`1974) (attorney-client privilege protects the substance of confidential communications between a
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`client and its counsel). Because of the harsh consequences for inadvertently waiving privilege,
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`counsel for Daiichi Sankyo Japan acted reasonably. See Nguyen v. Excel Corp., 197 F.3d 200, 208
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`(5th Cir. 1999) (“Disclosure of any significant portion of a confidential communication waives the
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`privilege as to the whole.”). Seagen’s counsel could have adjusted his questions during the
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`deposition—e.g., to ask whether Dr. Morita spoke to counsel, how many times he spoke to counsel,
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`for how long he spoke to counsel, and to whom specifically he spoke—without mentioning the
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`substance of the communication (i.e., laboratory notebooks), but chose not to.17
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`If Seagen had a legitimate concern, it could have utilized the Court’s discovery hotline.
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`Seagen was aware it had this recourse available, as it mentioned the hotline expressly during Dr.
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`Morita’s depositions. (See Ex. 1 (Morita Dep. Tr. at 46:11-12; Morita Dep. Tr. at 215:16-19).)
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`Yet it never contacted the hotline. This undermines the veracity of Seagen’s accusation now, long
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`after the fact. Stone Basket Innovations v. Cook Med. LLC, 892 F.3d 1175, 1181 (Fed. Cir. 2018)
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`17 Moreover, Dr. Morita’s second deposition was limited by the Court’s order to the narrow subject
`of the contents of the lab notebooks that Daiichi Sankyo Japan had produced, so it was appropriate
`for counsel to disallow Seagen’s attempts (reflected in Seagen’s excerpts) to go beyond that scope.
`(Dec. 20, 2021 Hrg. Tr. at 14:13-20.) Indeed, even Seagen concedes that instructions to not answer