Case 2:20-cv-00337-JRG Document 82 Filed 04/21/21 Page 1 of 8 PageID #: 2691
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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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`Civil Action No. 2:20-CV-00337-JRG
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`SEAGEN INC.’S SURREPLY TO DAIICHI SANKYO CO., LTD.’S MOTION TO
`TRANSFER UNDER 28 U.S.C. § 1404 TO THE DISTRICT OF DELAWARE
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`Case 2:20-cv-00337-JRG Document 82 Filed 04/21/21 Page 2 of 8 PageID #: 2692
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`I.
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`INTRODUCTION
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`Daiichi Sankyo Co., Ltd.’s reply confirms that Delaware is not clearly more convenient
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`than this District. DSC does not dispute that:
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`• Seagen filed here long before DSC filed in Delaware;1
`• The DSC employees involved in the development, manufacturing, and supply
`chain for the accused product Enhertu are in Japan, not Delaware;
`• DSC has not identified any relevant documents in Delaware;
`• Neither DSC nor DSI has a physical presence in Delaware; and
`• DSC’s own evidence shows court congestion favors denying transfer.
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`Instead, DSC insists that non-parties Daiichi Sankyo, Inc. and AstraZeneca
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`Pharmaceuticals LP (“AstraZeneca US”) are the only entities with relevant evidence in this
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`litigation. But it is DSC that has the highly relevant evidence of its development, manufacturing,
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`and importation of the infringing product, and it will be DSC’s witnesses who are needed to
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`show that DSC used Seagen’s proprietary linker technology in Japan to develop Enhertu. This
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`forum is at least as convenient as Delaware to consider these issues. Transfer is unwarranted.
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`II.
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`ARGUMENT
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`A.
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`DSC Artificially Narrows The Universe Of Potential Trial Witnesses To DSI
`And AstraZeneca US Witnesses
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`DSC chooses to focus the transfer analysis on documents from two non-party entities
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`(DSI and AstraZeneca US), despite its contention that the convenience of witnesses is a critical
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`part of this analysis. They should not be the focus.
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`There are twelve non-party distributors, including four within the subpoena power of this
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`Court, that DSC identified only after the parties served initial disclosures. (Dkt. 70-7; Dkt. 70-8;
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`Dkt. 66-6 at 14–15.)
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`1 DSC relies on Micron Tech., Inc. v. Mosaid Techs., Inc. to argue that the general rule for first-
`filed cases should not apply here. Reply at 1 n.1; Micron, 518 F.3d 897, 904 (Fed. Cir. 2008).
`But Micron affirmed that “[t]he general rule favors the forum of the first-filed action” and held
`that the first-filed jurisdiction was the more convenient forum. Micron, 518 F.3d at 904–05.
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`Against these two witnesses, DSC acknowledges that the four inventors of the ’039
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`patent reside on the West Coast. (Reply at 2 n.2.) One of these, Toni Kline, is also a non-party,
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`but unlike Messrs. Switzer and Bucci, she is not obligated to provide testimony to DSC upon
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`request. DSC also concedes that it disclosed employees in Japan who developed the infringing
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`product. (Id.)
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` DSC asserts, with no supporting evidence, that the travel time for these
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`witnesses to the District of Delaware would be less than or equal to the travel time to the Eastern
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`District of Texas. (Reply at 2 n.2.) That is demonstrably false. Seagen submitted a declaration
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`showing that witnesses in Japan and the West Coast had shorter travel times to this District,
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`which stands unrebutted. (Opp’n at 6 n.4; Dkt. 66-1 ¶ 19.) The Court should not consider
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`DSC’s unsupported allegations in the travel analysis.
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`Finally, DSC has still not identified any DSI or AstraZeneca US documents that are
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`found solely in Delaware. (Reply at 3, n.3.) By contrast, there is relevant evidence in Texas, and
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`Seagen has subpoenaed two third-party entities within this Court’s subpoena power regarding
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`DSC’s research, development, and testing of Enhertu. (Dkt. 68 at 1.) The power of this Court to
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`compel attendance of witnesses from these entities could be an important factor for trial,
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`especially if DSC continues to contest its activities within the US.
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`B.
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`DSC’s Witnesses In Japan Are Highly Relevant To The Case
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`DSC has failed to rebut that it has more dispositive information than its US subsidiary.
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`DSC’s documents show that DSC itself expected to book US sales of Enhertu and that lauded its
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`own US launch as a significant achievement. (Dkt. 67-28 at 2; Dkt. 67-22 at 5.) Further, DSC
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`Case 2:20-cv-00337-JRG Document 82 Filed 04/21/21 Page 4 of 8 PageID #: 2694
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`concedes it developed the manufacturing process for Enhertu in Japan. (Dkt. 24-1 ¶ 6.)
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` Only DSC witnesses in Japan have the relevant
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`knowledge on these topics; they are “the leaders who direct and plan the supply chain of
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`Enhertu®.” (Dkt. 24-1 ¶ 6.) And DSC also directly infringes via importation into the US. Thus,
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`the location of numerous DSC witnesses in Japan cannot be ignored in the transfer analysis.
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`1.
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`DSC Imports The Infringing Product And Therefore Infringes
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`Ignoring DSC’s role in developing and manufacturing the infringing product,
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` “Import” simply
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`means “to bring into the country.” See Canton R. Co. v. Rogan, 340 U.S. 511, 515 (1951).
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` A party need not be the “importer of record” to be the “importer.” See 19 C.F.R. § 101.1
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`(“‘Importer’ means the person primarily liable for the payment of any duties on the merchandise,
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`or an authorized agent acting on his behalf. The importer may be: . . . (3) The actual owner of
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`the merchandise . . . , or (4) The transferee of the merchandise . . . .” (emphasis added)).
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`2 Where self-serving witness testimony conflicts with contemporaneous documentary evidence,
`the testimony should be accorded less weight. Cf. United States v. U.S. Gypsum Co., 333 U.S.
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`Case 2:20-cv-00337-JRG Document 82 Filed 04/21/21 Page 5 of 8 PageID #: 2695
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` DSC therefore
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`is an importer under the Patent Act. Nuance Commc’ns, Inc. v. Abbyy Software House, 626 F.3d
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`1222, 1233 (Fed. Cir. 2010) (foreign defendant that retained ownership of software after it
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`entered California “has sufficient presence in the forum for importation under 35 U.S.C. §
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`271(a).”). Its attempts to downplay its role and the importance of its witnesses in Japan should
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`be disregarded.
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`2.
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`DSC’s Witnesses Are Also Relevant To Indirect Infringement,
`Contributory Infringement, And Willful Infringement
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`DSC also asserts without basis that its “research, development, and manufacturing
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`activities cannot constitute infringing acts.” (Reply at 4.) Not only does this assertion ignore the
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`fact that such evidence is still relevant to the case, it is untrue. DSC imports accused product in
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`violation of § 271(a). Its actions also constitute indirect infringement under § 271(b) as it
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`induces infringement by others, including distributors, pharmacies, and customers of the
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`infringing product. Compl. ¶ 25; see Enplas Display Device Corp. v. Seoul Semiconductor Co.,
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`909 F.3d 398, 408 (Fed. Cir. 2018) (“liability for induced infringement under § 271(b) can be
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`imposed based on extraterritorial acts”). DSC’s actions in offering to sell and selling within the
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`US and importing components of Enhertu also constitute contributory infringement under
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`§ 271(c). Compl. ¶ 26; cf. Ricoh Co. v. Quanta Computer Inc., 550 F.3d 1325, 1337–38, 1340
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`(Fed. Cir. 2008) (vacating summary judgment of no contributory infringement where defendant
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`imported a product containing an infringing component). Individuals in Japan—not the US—are
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`best situated to testify to these facts,
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`364, 396 (1948) (“Where such testimony is in conflict with contemporaneous documents we can
`give it little weight, particularly when the crucial issues involve mixed questions of law and
`fact.”).
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`Further, DSC scientists in Japan have relevant information to DSC’s willful infringement.
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`They are the individuals who had access to Seagen’s linker technology prior to allegedly
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`discovering the infringing product. Whether they used this information in developing Enhertu is
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`currently at issue in the case.
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`C.
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`DSC Admits No Public Interest Factor Favors Transfer
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`Although asserting that “public interest factors weigh heavily in favor of transfer,” DSC
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`only argues that the relative positions of this case and the later-filed Delaware action should not
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`be considered in the transfer analysis. (Reply at 4–5.) There is no strong showing of
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`convenience for material witnesses and location of documentary evidence that would trump the
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`judicial economy in this District, where trial has been set for April 2022.3 (Dkt. 48 at 1.) The
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`Delaware case has no schedule and discovery is not open. This factor weighs against transfer.
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`D.
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`Further Jurisdictional Discovery Will Additionally Support Denying
`Transfer
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`DSC claims that “additional discovery still will support the convenience of the District of
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`Delaware.” (Reply at 5.) At the same time, DSC is attempting to block any further discovery.
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`(Dkt. 58.) If DSC truly believed discovery would support its opposition, it would not have
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`opposed Seagen’s motion.
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`III. CONCLUSION
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`Despite DSC’s attempts to pivot this case to non-party witnesses and evidence, it still has
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`not shown that Delaware is a clearly more convenient forum than the Eastern District of Texas.
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`The Court should deny the motion to transfer.
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`3 Although the Delaware court has not issued a scheduling order in the second-filed declaratory
`judgment action, DSC does not rebut its own evidence which shows that this District is faster to
`trial than the District of Delaware. (Opp’n at 12.) This factor weighs against transfer.
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`Case 2:20-cv-00337-JRG Document 82 Filed 04/21/21 Page 7 of 8 PageID #: 2697
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`Dated: April 15, 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 82 Filed 04/21/21 Page 8 of 8 PageID #: 2698
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing document was filed electronically in
`compliance with Local Rule CV-5(a). All counsel of record were served with a true and correct
`copy of the foregoing document by electronic mail on April 15, 2021.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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