Case 2:20-cv-00337-JRG Document 62 Filed 03/02/21 Page 1 of 10 PageID #: 423
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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.
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`CASE NO. 2:20-cv-00337-JRG
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`DEFENDANT DAIICHI SANKYO COMPANY, LIMITED’S OPPOSITION
`TO PLAINTIFF SEAGEN INC.’S FEBRUARY 19, 2021
`MOTION TO COMPEL DOCUMENTS AND DEPOSITION TESTIMONY
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`Case 2:20-cv-00337-JRG Document 62 Filed 03/02/21 Page 2 of 10 PageID #: 424
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`INTRODUCTION
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`Plaintiff Seagen Inc. (“SGI”) seeks to manufacture a conflict where there is none. The
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`Parties have a genuine disagreement as to whether the premises underlying SGI’s discovery
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`requests are false or not. But, that dispute goes to the merits of the pending motions to dismiss
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`and motion to transfer—not the scope of jurisdictional/venue discovery.1 Defendant Daiichi
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`Sankyo Company, Limited (“DS Japan”) maintains its objections to the phrasing of SGI’s
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`requests—as they erroneously presume that DS Japan sells Enhertu® in the United States when,
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`instead, that is done by non-party Daiichi Sankyo, Inc. (“DS US”). Those objections, however, do
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`not prevent DS Japan from producing responsive discovery. Indeed, DS Japan already has
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`produced, or otherwise agreed to produce the pertinent discovery requested. Further, non-party
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`DS US―without waiver of its rights with respect to venue―voluntarily has agreed to produce
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`extensive documents and two deposition witnesses (even after SGI refused to seek discovery from
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`that entity directly). A list of the documents and deposition testimony that SGI will receive
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`regarding jurisdiction/venue is attached as Exhibit 1 hereto.2 That list is comprehensive as to the
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`assertions made in DS Japan’s motions to dismiss and motion to transfer.
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`SGI has not identified any discovery that it needs that is not being produced. SGI’s motion
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`to compel should be denied because it has failed to “identify the discovery needed, the facts
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`expected to be obtained thereby, and how such information would support personal jurisdiction.”
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`Viahart, LLC, v. Arkview LLC, 19-CV-00406, 2020 WL 4905542 at *7 (E.D. Tex. Aug. 20, 2020)
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`(denying plaintiff’s request for jurisdictional discovery after finding plaintiff’s assertions and
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`exhibits failed to show “with reasonable particularity” the possible existence of requisite contacts
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`1 See Dkt. 58, SGI’s Motion to Compel (“SGI Mot.”), at 1.
`2 As agreed, DS Japan and non-party DS US are producing documents today.
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`Case 2:20-cv-00337-JRG Document 62 Filed 03/02/21 Page 3 of 10 PageID #: 425
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`for jurisdiction, which is required in order to obtain such discovery) quoting Mello Hielo Ice, Ltd.
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`v. Ice Cold Vending LLC, No. 4:11-CV-629, 2012 WL 104980, at *7 (N.D. Tex. Jan. 11, 2012).
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`BACKGROUND
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`Non-party DS US is the only company licensed to sell Enhertu® in the United States, and
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`non-party AstraZeneca Pharmaceuticals LP (“AZ US”) is the only company that co-markets
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`Enhertu® in the United States with non-party DS US. SGI did not bring suit against these non-
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`parties for alleged patent infringement. Instead, SGI filed this action against DS Japan, a company
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`domiciled in Tokyo, which manufactures bulk vials of Enhertu® outside of the United States. The
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`bulk vials of Enhertu® are purchased by non-party DS US
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`Despite these uncontestable facts, which are included in the sworn declarations in support of the
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`pending motions, SGI continues to pursue litigation in this District―a forum that has no
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`connection to the dispute and in which DS Japan has no contacts to confer personal jurisdiction.
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`Document Topic No. 23
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`This topic literally seeks all documents4 regarding the relationship between DS Japan and
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`any DS Japan Affiliate regardless of time or subject matter. (See SGI Mot. Ex. A.) During meet
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`and confers, SGI verbally narrowed this topic to seek information regarding DS Japan’s
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`relationship with its affiliates as to the distribution of Enhertu® in the United States. (SGI Mot. at
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`4.) The relationship, as explained above and known to SGI from the declarations submitted in
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`support of DS Japan’s motions to dismiss and to transfer, is that DS Japan sells bulk vials of
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`3 As noted in SGI’s motion, the document topics overlap with its interrogatories as well as its
`30(b)(6) deposition topics. (SGI Mot. at 4 n.5.) DS Japan’s arguments in response to each of
`SGI’s document requests herein are its arguments to the corresponding interrogatories and
`deposition topics.
`4 The agreed upon overlapping discovery requests obviate SGI’s need for “all documents.”
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`Case 2:20-cv-00337-JRG Document 62 Filed 03/02/21 Page 4 of 10 PageID #: 426
`Case 2:20-cv-00337-JRG Document 62 Filed 03/02/21 Page 4 of 10 PageID #: 426
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`Enhefiu® to non-panty DS US~— As reflected
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`in Exhibit 1, SGI will be receiving an interrogatory response, extensive docrunents, and testimony
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`regarding that relationship, inclusive of any DS Japan Affiliate. SGI has not pointed to any specific
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`information. responsive to this topic, which it is not receiving. Thus, DS Japan is left to presume
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`that SGI’s only dispute is that it is not receiving “all documents”—
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`That demand is impractical. Every document that non-party DS US and DS Japan has generated
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`every day since non-party DS US was granted approval to sell Enhertu® in 2019, cannot be
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`proportional to the needs of this jm‘isdiction/venue inquiry. Fluther, SGI’s reliance on a DS Japan
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`chart that simply identities corporate, business. and functional Imits of the Daiichi Sankyo Group
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`does not justify the breadth of this request. as the chart does not speak to DS Japan’s manufacture
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`and selling of bulk Vials of Enhertu® or DS Japan’s control over any affiliates.
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`Document Topic No. 3
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`This topic, which seeks DS Japan’s gross revenues from the sales of Errhertu® in Texas,
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`ignores the fact that non—party DS US is the only company licensed to sell Enhertu® in the United
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`States, and that non-party DS US purchases the bulk vials of Enhertu®, and not the finished
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`product, from DS Japan.
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`(See SGI Mot. Ex. A.) Thus, DS Japan carmot produce documents
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`showing revenue for the sale of Enhertu® to any entity in the United States, as no such scenario
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`exists, but SGI mischaracterizes this reality as a refusal to produce information. (SGI Mot. at 3.)
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`Despite this topic’s false premise, DS Japan is serving an interrogatory response, producing
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`extensive docmnents, and_
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`(See Ex. 1.) Additionally, non-party DS US is providing an interrogatory response, producing
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`Case 2:20-cv-00337-JRG Document 62 Filed 03/02/21 Page 5 of 10 PageID #: 427
`Case 2:20-cv-00337-JRG Document 62 Filed 03/02/21 Page 5 of 10 PageID #: 427
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`extensive documents, and—
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`_ and through these documents, SGI may ascertain the “identity ofeach such entity
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`. that sells or distributes Enhe11u®” in the United States. (See Ex. 1.)
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`The information produced in response to this topic is focused on the period since October
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`20, 2020, which is the date the patent-in—suit issued. Although SGI argues against this temporal
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`limitation, it has provided no support for its argument that information pre-dating October 20, 2020
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`could be relevant to proof of jurisdiction/venue; indeed, such information is irrelevant to the
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`pending motions. See ETS-Lindgren, Inc. v. MVG, Inc. , No. A-15-CA-00456-SS, 2015 US. Dist.
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`LEXIS 149906, at *16 01V.D. Tex. Nov. 4, 2015) (rejecting discovery on pre-issuance offers to
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`sell for jurisdictional discovery); NerLearn, LLC v. Allen Interactions, Inc. , 859 F.3d 1371, 1379-
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`80 (Fed. Cir. 2017) (alleged acts by accused infringer in forum, which were done before patent
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`issued, could not support exercise of specific personal jurisdiction for patent infringement claim).
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`Given the extent of discovery that DS Japan and non-party DS US are providing and the inherent
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`false premise of SGI’s topic, no finther identifiable information needs to be produced.
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`Document Topic No. 4
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`This topic requests all agreements between DS Japan or any DS Japan affiliate, and any
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`person that sells or distributes Enheitu® in Texas, regardless of time and subject matter. (See SGI
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`Mot. Ex. A.) The topic also incorrectly assumes the existence of multiple entities selling Enhertu®
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`in the United States, even though the public record shows that non—party DS US is the only
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`company that is licensed to sell Enhertu® in the United States. During meet and confers, SGI
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`verbally restricted this topic to agreements relating to the sale or distribution of Enhe11u®. As
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`reflected in Exhibit 1, SGI will be receiving an interrogatory response, extensive doc1u11ents, and
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`Case 2:20-cv-00337-JRG Document 62 Filed 03/02/21 Page 6 of 10 PageID #: 428
`Case 2:20-cv-00337-JRG Document 62 Filed 03/02/21 Page 6 of 10 PageID #: 428
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`_ There is no other discovery that reasonably could be produced and SGI has
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`not identified any information that it has not or will not receive.
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`Document Topic No. 5
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`This topic requests all documents related to DS Japan’s or any of its affiliate’s activities
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`relating to the research, development, testing, manufacture, marketing, use, importation, sale,
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`and/or offer to sell of Enhertu®.
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`(See SGI Mot. Ex. A.) The topic is not limited to the United
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`States.
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`Instead, it would cover at least every single document generated by DS Japan and its
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`affiliates since DS Japan discovered Enhertu®— including every single
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`docrunent concerning research, development, testing, rnanufactrue, etc. worldwide to date. That
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`is an impossible amount of information to collect and certainly is not proportional to the needs of
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`the jurisdictional/venue inquiry. Apparently recognizing the extreme breadth of this topic, when
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`asked what does SGI really want by this request, SGI identified just two things: (1) information
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`relating to DS Japan’s involvement in a certain clinical trial involving Enhertu® where the
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`University of Texas MD. Anderson Center is involved, and (2) doc1m1ents reflecting the presence
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`of any Enhertu® sales representative in Texas. In response, and as reflected in Exhibit 1, SGI will
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`be receiving discovery regarding DS Japan’s participation in clinical trials involving DS—8201 in
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`Texas. and_
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`— (See Ex. 1) Despite this infounation. SGI still
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`complains, but DS Japan carnrot produce documents for nonexistent activities.
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`Case 2:20-cv-00337-JRG Document 62 Filed 03/02/21 Page 7 of 10 PageID #: 429
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`Specifically, SGI argues that DS Japan should produce “all documents” related to its
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`activities in Texas, without limit to subject matter, in order to show its “contacts with Texas.” In
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`support, SGI first states that “DSC can dispute neither that it manufactures and supplies
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`ENHERTU® for U.S. sale, nor that it holds the trademark of ENHERTU® for U.S. sales and
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`marketing.” (SGI Mot. at 6.) On the contrary, DS Japan manufactures only bulk vials of
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`Enhertu®,
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` Further, although DS Japan
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`holds the trademark for Enhertu®, this fact alone does not subject DS Japan to jurisdiction in any
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`forum within the United States, nor does it justify the breadth of SGI’s topic. United States ex rel.
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`Banignan v. Organon USA Inc., No. 07-12153-RWZ, 2012 U.S. Dist. LEXIS 49661, at *20 (D.
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`Mass. Apr. 9, 2012) (acknowledging lack of authority supporting claim that trademark ownership
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`is “continuous and systematic contact” for general jurisdiction purposes). SGI’s next argument
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`also fails, as DS Japan’s joint presentation at a San Antonio Breast Cancer Symposium, which
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`occurred before the asserted patent’s issuance date, does not support specific jurisdiction. Tercica,
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`Inc. v. Insmed Inc., No. C 05-5027 SBA, 2006 U.S. Dist. LEXIS 41804, at *44-45 (N.D. Cal. June
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`9, 2006) (presentation at investor conference where no products were offered for sale and no sales
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`were made is not enough to establish specific jurisdiction); NexLearn, 859 F.3d at 1379-80. The
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`current production is more than sufficient discovery as to the assertions made by DS Japan in its
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`motions to dismiss and transfer.
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`Document Topic No. 6
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`This topic requests information related to a statement included in the background section
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`of DS Japan’s motion to transfer, “[i]n 2015, [DS Japan] terminated the Agreement and continued
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`with its own independent ADC research, which led to the discovery of Enhertu®,” which has no
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`connection to questions of jurisdiction and venue. (See SGI Mot. Ex. A.) SGI’s only explanation
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`Case 2:20-cv-00337-JRG Document 62 Filed 03/02/21 Page 8 of 10 PageID #: 430
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`for this topic’s relevance to issues of jurisdiction and venue is DS Japan’s inclusion of the above
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`statement in its motion to transfer. SGI, however, admits that the documents it seeks “are directly
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`relevant to the merits of this case” or sources of proof outside of Texas, neither of which is
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`necessary to assist SGI in responding to the pending motions. (SGI Mot. at 7.) Contrary to SGI’s
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`argument, the sole purpose of this topic is to seek information for use in the Parties’ ongoing
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`arbitration, as the arbitration’s fact discovery (that was limited in scope) has now closed.
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`Nevertheless, DS Japan has agreed to produce documents, testimony, and an interrogatory
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`response demonstrating its termination of the Parties’ July 2, 2008 Collaboration Agreement. (See
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`Ex. 1.) Further, it is a matter of public record that after termination of that agreement, DS Japan
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`continued with its own independent ADC research and that Enhertu® was discovered in Japan;
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`regardless, such documents are not necessary to respond to the pending motions.
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`Deposition Topic No. 7
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`This topic requests the facts and bases set forth in each of the declarations submitted in
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`support of DS Japan’s motion to transfer and motions to dismiss. (See SGI Mot. Ex. A.) SGI,
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`however, omits the fact that it served subpoenas requesting 30(b)(1) testimony on non-party DS
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`US employees, Dan Switzer and Kevin Smith, as well as non-party AZ US’s employee, Albert
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`Bucci, all of whom have agreed to be deposed in their individual capacities in the upcoming weeks.
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`(See Ex. 1.) Thus, it would be unnecessary and duplicative to require DS Japan’s corporate
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`representative to testify as to the same facts.
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`* * *
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`In conclusion, SGI has not met its burden and its motion to compel should be denied.
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`Case 2:20-cv-00337-JRG Document 62 Filed 03/02/21 Page 9 of 10 PageID #: 431
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`Respectfully submitted,
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`/s/ Preston K. Ratliff II
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`Deron R. Dacus
`State Bar No. 00790553
`The Dacus Firm, P.C.
`821 ESE Loop 323, Suite 430
`Tyler, Texas, 75701
`+1 (903) 705-1117
`+1 (903) 581-2543 facsimile
`ddacus@dacusfirm.com
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`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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`Attorneys for 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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`for Defendant Daiichi
`Attorneys
`Sankyo Company, Limited
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`Dated: February 26, 2021
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`Case 2:20-cv-00337-JRG Document 62 Filed 03/02/21 Page 10 of 10 PageID #: 432
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who have consented to
`electronic service are being served with a copy of this document via electronic mail on February
`26, 2021. I also hereby certify that all counsel of record who have consented to electronic service
`are being served with a notice of filing of this document, under seal, pursuant to Local Rule CV-
`5(a)(7) on February 26, 2021.
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` /s/ Preston K. Ratliff II
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