case 5:13-cv-04057-blf document 173 filed 11/06/15 · pdf filei gilead science inc.’s...

GILEAD SCIENCE INC.’S AND DR. SEEGER’S OPPOSITION TO DEFENDANTS’ MOTION TO COMPEL Case No. 5:13-cv-04057-BLF/PSG

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John M. Farrell (CA Bar No. #99649) [email protected] FISH & RICHARDSON P.C. 500 Arguello Street, Suite 500 Redwood City, CA 94063 Telephone: (650) 839-5070 Facsimile: (650) 839-5071 Jonathan E. Singer (CA Bar No. #187908) [email protected] FISH & RICHARDSON P.C. 3200 RBC Plaza 60 South Sixth Street Minneapolis, MN 55402 Telephone: (612) 335-5070 Facsimile: (612) 288-9696 Juanita R. Brooks (CA Bar No. #75934) [email protected] FISH & RICHARDSON P.C. 12390 El Camino Real San Diego, CA 92130 Telephone: (858) 678-5070 Facsimile: (858) 678-5099 Attorneys for Plaintiff

GILEAD SCIENCES, INC.

Additional counsel listed on signature page UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

GILEAD SCIENCES, INC., Plaintiff,

v. MERCK & CO, INC., MERCK SHARP & DOHME CORP. and ISIS PHARMACEUTICALS, INC. Defendants.

Case No. 5:13-cv-04057-BLF/PSG GILEAD SCIENCES, INC.’S AND DR. SEEGER’S OPPOSITION TO DEFENDANTS’ MOTION TO COMPEL

Date: December 1, 2015 Time: 10:00 a.m. Place: Courtroom 5, 4th Floor Judge: Honorable Paul S. Grewal

Case 5:13-cv-04057-BLF Document 173 Filed 11/06/15 of 25

i GILEAD SCIENCE INC.’S AND DR. SEEGER’S OPPOSITION TO DEFENDANTS’ MOTION TO COMPEL

Case No. 5:13-cv-04057-BLF/PSG

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TABLE OF CONTENTS

I. STATEMENT OF ISSUES TO BE DECIDED ................................................................1

II. STATEMENT OF THE RELEVANT FACTS .................................................................2

A. PSI-6130’s Structure and Synthesis .......................................................................2

B. Dr. Seeger’s Testing of Samples Provided by Dr. Schinazi ..................................3

C. Gilead’s and Dr. Seeger’s Production of Additional Information Related to the Photographed Tubes .......................................................................7

D. Merck’s Unilateral and Unexplained Cancelling of Dr. Secrist’s Deposition ..............................................................................................................8

E. Merck’s Request for Inspection of the Photographed Tubes and a 30(b)(6) Witness, and Merck’s Refusal to Explain the Relevance .............................................................................................................10

F. Gilead’s Effort to Resolve the Motion to Compel without Court Involvement .........................................................................................................11

III. ARGUMENT ...................................................................................................................15

A. Legal Standards ....................................................................................................15

B. This Court Should Deny Merck’s Request for Sampling of the Photographed Tubes and Other Related Information, Including a 30(b)(6) Witness ................................................................................................16

1. Merck’s Request Should Be Denied Because Information Regarding the Photographed Tubes Is Irrelevant to This Case, Because Merck Already Has All Information Necessary to Identify the Material in the Photographed Tubes, and Because Producing the Information Merck Requests Would Be Unnecessarily Burdensome .............................................................................................16

2. Merck’s Motion Should Be Denied Because Even if the Photographed Tubes Contained PSI-6130, the Information Merck Seeks Would Still Be Irrelevant ...............................18

C. This Court Should Deny Merck’s Motion to Compel a Deposition of Dr. Secrist or Order Merck to Pay the Costs Incurred As a Result of Merck’s Improper Cancellation of His Scheduled Deposition ..........................................................................................18

D. This Court Should Order Merck to Reimburse Gilead its Reasonable Costs Incurred by Opposing Merck’s Motion, Including Attorneys’ Fees ....................................................................................20

IV. CONCLUSION ................................................................................................................21



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TABLE OF AUTHORITIES

Page(s)

Cases

ATS Products, Inc. v. Champion Fiberglass, Inc., 2015 WL 3561611 (N.D. Cal. June 8, 2015) ...........................................................................15

In re Facebook Privacy Litig., 2015 WL 3640518 (N.D. Cal. June 11, 2015) ...................................................................15, 17

Zig Zag Holdings LLC v. Hubbard, 2014 WL 3724800 (N.D. Cal. July 25, 2014) ..........................................................................15

Other Authorities

Fed. R. Civ. P. 26(b)(2)(C) ......................................................................................................15, 17

Fed. R. Civ. P. 37 .....................................................................................................................15, 20

Fed. R. Civ. P. 37(a)(5)(B) ..................................................................................................2, 15, 20


1 GILEAD SCIENCE INC.’S AND DR. SEEGER’S OPPOSITION TO DEFENDANTS’ MOTION TO COMPEL

Case No. 5:13-cv-04057-BLF/PSG

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I. STATEMENT OF ISSUES TO BE DECIDED

Gilead requests that this Court deny Merck’s request for inspection of tubes containing

material tested by Dr. Christoph Seeger in October of 2002 (defined by Merck as the

“Photographed Tubes”), as well as for other documents and testimony related to the

Photographed Tubes. Merck’s request is rooted in a demonstrably wrong assertion—that the

material in one of the Photographed Tubes is PSI-6130. Merck makes that assertion in the face

of overwhelming evidence that PSI-6130 did not exist in October of 2002 and based solely on

the unremarkable fact that one of the tubes contains material with a molecular weight identical to

PSI-6130’s weight of 259.2. However, Merck is already in possession of information clearly

identifying the compound in question as PSI-0194—a compound having a distinctly different

structure from PSI-6130, but sharing its molecular weight. Merck had this information before

filing its October 23, 2015 Motion to Compel Plaintiff and Dr. Seeger to Comply with Discovery

Requests and Subpoena (the “Motion”). Additionally, after Merck filed its Motion, Gilead

provided additional evidence unambiguously identifying the material in the Photographed Tubes

as including PSI-0194, and excluding PSI-6130. Nonetheless, despite Gilead’s requests, Merck

has refused to withdraw its Motion, unreasonably forcing Gilead to incur the costs of opposing

Merck’s meritless demands.

Gilead also requests that this Court deny Merck’s request to reschedule the deposition of

Gilead’s expert, Dr. Secrist—which deposition Merck unilaterally cancelled without justification

and without adequate explanation. Should the Court choose to order the deposition to proceed,

Gilead asks that the Court require Merck to pay the cost incurred by Gilead in preparing for the

deposition a second time. Merck cancelled the deposition on the pretext that it needed additional

time to consider documents related to Dr. Seeger (not Dr. Secrist) that were produced a day-and-

a-half before Dr. Secrist’s deposition, notwithstanding that production consisting of only 41

pages of additional material, largely cumulative to documents that long ago had been produced

to Merck. Additionally, Despite Gilead’s multiple requests, Merck refused to identify how the



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new documents related to Dr. Seeger were relevant to Dr. Secrist’s deposition and declined

Gilead’s offer to proceed with the deposition as scheduled and to hold a follow-up deposition, if

necessary, on the topic of the newly produced documents.

Finally, Gilead requests that this Court order Merck to reimburse Gilead the reasonable

costs it has incurred in connection with opposing this motion, including attorneys’ fees. If this

Court denies Merck’s motion—as it should—Rule 37(a)(5)(B) requires this Court to order Merck

to pay Gilead’s fees unless Merck’s Motion was “substantially justified.” As shown herein,

Merck’s motion was not justified, and an award of fees is, therefore, warranted.

II. STATEMENT OF THE RELEVANT FACTS

A. PSI-6130’s Structure and Synthesis

Gilead is a pharmaceutical company that markets the drug sofosbuvir using the brand

names Sovaldi® and Harvoni®. The discovery of sofosbuvir permanently changed the treatment

of HCV from a lengthy, unpredictable, and debilitating course of therapy to a speedy and highly

effective cure with far fewer side effects. An important aspect of sofosbuvir’s novel chemistry is

the placement of a fluorine atom (F) oriented down and a methyl group (Me or CH3) oriented up

at the 2’ position of the molecule. Nucleosides with this structure can be described as “2’-

methyl-up-2’-fluoro-down nucleosides”.

Synthesis of 2’-methyl-up-2’-fluoro-down nucleosides is extremely challenging. Merck

has presented no persuasive evidence that synthesis had ever been successfully done before

Jeremy Clark—a chemist at Gilead’s predecessor Pharmasset—discovered the correct route in

2003 and synthesized a 2’-methyl-up-2’-fluoro-down nucleoside known as PSI-6130. The

structure of PSI-6130—which has a molecular weight of 259.21—is as follows:

1 The molecular weight (MW) of a compound is the mass of one mole of a substance (e.g., a

molecule), and is often reported in units of grams per mole. The molecular weight of a molecule can be calculated by summing the masses of each constituent atom in the molecule.



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In multiple proceedings involving both Merck and its wholly-owned subsidiary Idenix,

all evidence has consistently shown that PSI-6130 was first synthesized by Mr. Clark sometime

in 2003.2 These proceedings include multiple inventorship disputes related to whether Gilead or

Idenix was the first to conceive and reduce to practice 2’-methyl-up-2’-fluoro-down nucleosides.

These disputes put the synthesis of PSI-6130 front and center, and in none of these proceedings

has any evidence been offered by any party suggesting that PSI-6130 was synthesized at any

time prior to Mr. Clark’s 2003 success.

B. Dr. Seeger’s Testing of Samples Provided by Dr. Schinazi

In October of 2002, Dr. Christoph Seeger (a researcher at Fox Chase Cancer Center)

contacted Dr. Raymond Schinazi (a professor at Emory University School of Medicine) about

obtaining samples of certain compounds for use in a study Dr. Seeger was conducting.3 On

October 30, 2002, Dr. Schinazi responded by providing samples of six compounds.4

Accompanying those samples was a letter identifying the compounds and their molecular weight.

As seen below, that letter disclosed that the samples in the second tube (compound number

2 See, e.g., Jean Decl. Exs. 31-32; Warden Decl. Ex. A. 3 Warden Decl. Ex. B. 4 Id.



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0194E) and the third tube (compound number 1834) had molecular weights of 259.2, identical to

that of PSI-6130.5

Photographs of the Photographed Tubes in which the samples were provided confirm that

the samples in the second and third tubes are compound numbers 0194E and 1834, respectively,

and that both of those compounds have a molecular weight of approximately 259.2.6

5 Id. 6 Warden Decl. Ex. C.



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Although compound numbers 1094E and 1834 (also known as PSI-0194 and PSI-1834)7

have identical molecular weights as PSI-6130, they have different structures and, unlike PSI-

6130, actually existed prior to October 2002. Significantly, as seen here, PSI-0194 and PSI-1834

both have oxygen and hydrogen at the 2’ position and, thus, unlike PSI-6130 (shown for

comparison) are not 2’-methyl-up-fluoro-down nucleosides:

7 Although the PSI prefix indicates that PSI-0194 and PSI-1834 are compounds registered in a

Pharmasset database, the letter from Dr. Schinazi to Dr. Seeger omitted the “PSI” prefix. That letter was also on Emory letterhead and did not otherwise contain any reference to Pharmasset.



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Significantly, Merck has been in possession of information disclosing that the compounds

tested by Dr. Seeger included PSI-0194 for more than a year. Specifically, Gilead’s October

2014 production included a laboratory notebook from a Pharmasset chemist identifying the

compounds as including PSI-0194.8 Merck cited the specific page on which PSI-0194 is

identified in its pre-Motion correspondence with Gilead and in its Motion, demonstrating that

Merck was aware of the identification of PSI-0194 before moving to compel.9 Similarly, for

nearly a year Merck has been in possession of the structure of PSI-0194—from which its

molecular weight can readily be calculated.10

In addition to receiving the above-cited information produced by Gilead regarding Dr.

Seeger’s testing, Merck was also made aware of Dr. Seeger’s testing of compounds provided by

Dr. Schinazi when, in December of 2014, Merck’s wholly-owned subsidiary, Idenix, subpoenaed

Dr. Seeger regarding that testing.11 Subsequently, in January of 2015, Dr. Seeger was questioned

about that testing during litigation between Gilead and Idenix in Canada, at which

representatives from Merck were present.12

8 See Jean Decl. Ex. 29. 9 Citing to that notebook page, Merck incorrectly and gratuitously attacks the character of Dr.

Seeger, asserting that the Pharmasset lab notebook “directly contradicts Dr. Seeger’s sworn testimony” that he had not performed testing for Pharmasset. (D.I. 158 at 18.) To the contrary, the evidence corroborates Dr. Seeger’s testimony that he did not perform testing on behalf of Pharmasset. (Jean Decl. Ex. 8 at 18:15-19:4; 21:22-22:21.) Specifically, the letter accompanying the compounds sent to Dr. Seeger was on Emory letterhead—not Pharmasset letterhead—and omitted the PSI prefixes from the compound names. (Warden Decl. Ex. __.) Similarly, that letter expressly stated that the compounds were being provided for use in Dr. Seeger’s experiments—and made no reference whatsoever to any Pharmasset experiments, or even to Pharmasset. (Id.) The Pharmasset lab notebook does not contradict that testimony; it shows only that the results of Dr. Seeger’s testing were subsequently provided to Pharmasset, not that the testing was done for Pharmasset. (Jean Decl. Ex. 29.) Moreover, there is no evidence that Dr. Seeger was even made aware that information related to his testing was ever provided to Pharmasset.

10 See Warden Decl. Ex. D. 11 Jean Decl. Ex. 8 at 18:8-19:4, 2018-21:20; Warden Decl. Ex. E at 6:6-9 (introduction of

Gerrard Devlin and Lisa Jakob of Merck to the court in Canadian trial). 12 Jean Decl. Ex. 8 at 20:1-17.



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C. Gilead’s and Dr. Seeger’s Production of Additional Information Related to the Photographed Tubes

On September 15, 2015—nearly a year after information related to Dr. Seeger’s testing

was first disclosed to Merck—Dr. Seeger provided deposition testimony in conjunction with his

expert opinion in this case. During that deposition, Dr. Seeger testified about the material in the

Photographed Tubes and testified, specifically, that in response to the earlier subpoena from

Idenix, he had taken a picture of the Photographed Tubes with his iPhone.13 Merck’s counsel

never asked Dr. Seeger whether he still had the physical tubes, and consequently Dr. Seeger

never testified, one way or the other, as to whether he still had the tubes.14 Shortly thereafter, on

September 28, 2015, Merck served a subpoena on Dr. Seeger seeking the photograph he had

taken and other information related to the Photographed Tubes, including other photographs,

communications, or documents and things identifying the material in the tubes.15

Simultaneously, Merck sent a letter to Gilead seeking the same categories of information.16 The

letter to Gilead also sought production of transcripts of any trial or deposition testimony given by

Dr. Seeger, without limitation as to subject matter or timeframe.17

13 Jean Decl. Ex. 8 at 17:14-21. 14 For a second time, Merck takes and unnecessary and unwarranted shot at Dr. Seeger’s

character, falsely asserting that on October 16, 2015 “Dr. Seeger (and Gilead) dropped a bombshell and contradicted Dr. Seeger’s prior sworn testimony that he did not have control of the Photographed Tubes.” (D.I. 148 at 14.) Merck’s counsel never asked Dr. Seeger whether he had the tubes, and Dr. Seeger never testified that he did not. Rather, Dr. Seeger was asked whether he could “go back and check” as to whether “Dr. Schinazi provided [him] with the structure” of the sample compounds. (Jean Decl. Ex. 8 at 17:8-14.) He answered by stating that the only information he had to show whether Dr. Schinazi had provided him with the structures was “a picture of the five tubes that Dr. Schinazi sent me.” (Id. at 17:14-18.) Thus, Dr. Seeger’s testimony was that the photographs of the tubes were the only things he had that would reveal whether Dr. Schinazi had sent him the structures. Dr. Seeger’s testimony was not that the photographs of the tubes were the only thing he had related to the tubes. To the contrary, Dr. Seeger testified that he had taken a picture of the tubes on his iPhone in response to Idenix’s subpoena only months before (id. at 17:16-18-14)—making it readily apparent that he must still have the tubes. Had Merck asked him if he had the tubes, he would have testified that he did. Merck never asked.

15 Warden Decl. Ex. F. 16 Jean Decl. Ex. 11A. 17 Id.



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Prior to Merck’s September 28, 2015 subpoena and letter, Merck had never before

requested production of information related to Dr. Seeger’s testing of the compounds provided

by Dr. Schinazi. Although Merck’s letter—and likewise, its Motion—identifies Requests for

Production Nos. 11, 21, 29, 38, and 41 as seeking that information, those requests ask only for

information related to the development of sofosbuvir or related to Gilead’s invalidity defenses.18

As described supra Part II(B), because the Photographed Tubes do not contain PSI-6130—nor

do they contain any other compound related to sofosbuvir or Gilead’s invalidity defenses—

information regarding the Photographed Tubes was not responsive to those requests. Similarly,

because Gilead did not know that Merck purportedly believed (without the least foundation) PSI-

6130 was in one of the Photographed Tubes, Gilead did now know that Merck believed

information regarding those tubes was relevant until it received Merck’s September 28, 2015

letter.

Although Merck had not requested information regarding the Photographed Tubes during

the fact discovery period, and although Gilead and Dr. Seeger did not understand the relevance

of Merck’s September 28, 2015 requests, on October 12, 2015, Gilead and Dr. Seeger agreed to

produce all information in their possession responsive to Merck’s requests. Specifically, on that

date Dr. Seeger produced his photograph of the tubes (and informed Merck that he had no other

responsive documents in his possession)19 and Gilead informed Merck that it would search for

and produce all responsive and non-privileged documents in its possession.20

D. Merck’s Unilateral and Unexplained Cancelling of Dr. Secrist’s Deposition

On October 13, 2015—only fifteen days after Merck first requested information

regarding the Photographed Tubes and only one day after Gilead agreed to produce it—Merck

informed Gilead that if it did not produce all requested information by the next day, Merck

18 See D.I. 158 at 7-8. 19 See Jean Decl. Ex. 33. 20 See Jean Decl. Exs. 13.



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would “seek relief from the Court.”21 Then, the next morning, Merck took the position—for the

first time—that if Gilead did not produce all requested information by the end of that day, Merck

would cancel, and seek to reschedule, the October 16, 2015 deposition of a different Gilead

expert, Dr. Secrist.22 Because Merck had never before asserted that the production of Dr.

Seeger’s documents were relevant to, or would otherwise impact, Dr. Secrist’s deposition—and

because, at that time, Merck had still never made Gilead aware of its untenable theory that one of

the Photographed Tubes contains PSI-6130—Gilead asked Merck to please “explain how the

documents you requested related to Dr. Seeger and Pharmasset are relevant to Dr. Secrist’s

deposition.”23 Merck refused, stating that “with regards to your request for a proffer for the

relevance of these documents to Dr. Secrist’s deposition, you should not be surprised that we did

not share with you our internal thought processes about Dr. Secrist’s expert report and what

issues that we may question him on.”24

Despite Merck’s refusal to explain the relevance of the documents, Gilead complied with

Merck’s request and, by the end of the day, produced all information in Gilead’s possession

responsive to Merck’s requests.25 Nonetheless, later that evening Merck cancelled Dr. Secrist’s

deposition, scheduled for two days later on October 16, 2015.26 As excuse, Merck cited the

volume of new documents related to Dr. Seeger (not Dr. Secrist) that Gilead produced.27 Gilead

promptly responded to inform Merck that the volume of documents related to Dr. Seeger was

quite small—only 41 pages—and that the bulk of Gilead’s production was Dr. Seeger’s (not Dr.

21 Jean Decl. Ex. 15. 22 Warden Decl. Ex. G at 6. 23 Id. at 5. 24 Id. at 4. In its Motion, Merck twice makes the misleading suggestion that Gilead had ignored

Merck’s request to meet and confer regarding production of the information requested in Merck’s September 28, 2015 letter. (See D.I. 148 at 12, 17.) However, Merck’s Motion omits that its September 28, 2015 letter requested a meet and confer only if Gilead was unwilling to produce the requested information. As discussed above, Gilead was not unwilling to produce the requested information and, in fact, has already produced all information in its possession that is responsive to Merck’s requests.

25 See Jean Decl. Ex. 18. 26 See Warden Decl. Ex. G at 2-3. 27 Id.



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Secrist’s) deposition and trial testimony that Merck had expressly asked Gilead to produce,

without limitation for subject matter or timeframe.28 Gilead reminded Merck that, although

those transcripts (which all related to proceedings involving Idenix) had already been available

to Merck, Gilead had produced them at Merck’s request as a courtesy.29

In its letter, Gilead also told Merck that Dr. Secrist (who has nothing to do with a thirteen

year old interaction between Emory and Dr. Seeger) was ready to be deposed on time in the

expert discovery period—an important date to keep because Judge Freeman ordered that

summary judgment briefs had to be filed two weeks later. Gilead further stated that if, somehow,

the information related to the Photographed Tubes related to Dr. Secrist, Gilead would discuss

with Merck a follow on deposition.30 Gilead made clear it could not agree to make Dr. Secrist

available for a full deposition after the October 16, 2015 close of expert discovery absent a court

order.31 Merck, without explanation, refused Gilead’s offer. At no point did Merck ever give a

reason for why a full day was insufficient time to review the 41 pages of largely cumulative

information produced by Gilead, or for why the that information was relevant to Dr. Secrist’s

deposition, or for why that information could not be covered in a follow-up deposition with Dr.

Secrist, as Gilead offered.

E. Merck’s Request for Inspection of the Photographed Tubes and a 30(b)(6) Witness, and Merck’s Refusal to Explain the Relevance

On the evening of October 15, 2015, shortly after cancelling Dr. Secrist’s deposition,

Merck sent a letter requesting that Gilead and Dr. Seeger produce the Photographed Tubes for

inspection and sampling and that Gilead also produce a 30(b)(6) witness on topics related to the

Photographed Tubes.32 Because Merck had not previously requested production of the actual

28 Id. at 1-2. 29 Id. 30 Id. at 1-2. 31 Id. at 1. 32 See Jean Decl. Ex. 21B. On the following day, Merck also issued subpoenas to Fox Chase

Cancer Center, Emory University, and Dr. Schinazi seeking the same categories of information.



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tubes, Gilead and Dr. Seeger had not previously considered whether they could be produced.33

Gilead and Dr. Seeger informed Merck that, although Dr. Seeger had possession of the

Photographed Tubes,34 Gilead and Dr. Seeger did “not believe the Photographed Tubes are

relevant” but were “considering [Merck’s] request.”35 In its follow-up letter on October 20,

2015, Merck did not even attempt to explain the relevance of its requests, but still insisted on

inspection of the Photographed Tubes and a 30(b)(6) witness.36 In their October 22, 2015

response, Gilead and Dr. Seeger told Merck that because “Merck has yet to identify how

inspection or sampling is relevant to any issue in this case,” they would not agree to make the

Photographed Tubes available.37 Gilead also explained that, because the request for a 30(b)(6)

deponent had come on the final day of expert discovery (and long after the close of fact

discovery), and in light of other upcoming deadlines—in particularly, the October 29 deadline

for summary judgment motions—Gilead would not make a 30(b)(6) deponent available.38

Although Gilead’s October 22, 2015 letter was at least the third time Gilead had sought an

explanation for the relevance of information related to the Photographed Tubes, Merck still did

not offer any explanation. Instead, Merck filed its Motion.

F. Gilead’s Effort to Resolve the Motion to Compel without Court Involvement

Only upon reviewing Merck’s Motion did Gilead learn, for the first time, of the purported

relevance of the Photographed Tubes and of Merck’s misguided theory that that material in the

second such tube may contain PSI-6130 because that tube contained material with a molecular

33 Merck has taken the position that its September 28, 2015 request for production of

“documents and things identifying (1) any nucleoside analog compound sent to any laboratory by Dr. Schinazi” encompassed production of the Photographed Tubes. (See Jean Decl. Ex. 25 at 1.) Although the Photographed Tubes might literally be considered “things identifying” the compounds sent to Dr. Seeger, Gilead and Dr. Seeger did not interpret it that way, and did not understand that Merck was seeking production of the physical tubes until receiving Merck’s October 15, 2015 letter. (See Jean Decl. Ex. 22.)

34 See Jean Decl. Ex. 24. 35 Jean Decl. Ex. 22. 36 See Jean Decl. Ex. 25. 37 Jean Decl. Ex. 26. 38 See id.



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weight identical to PSI-6130. Thereafter, on October 29, 2015, Gilead wrote to Merck,

identifying information already in Merck’s possession demonstrating that the material in the

second tube is PSI-0194, not PSI-6130.39 Specifically, Gilead directed Merck to the page in the

Pharmasset lab notebook identifying the compounds tested by Dr. Seeger as including PSI-0194

and to the document identifying the structure of PSI-0194.40

Additionally, in its October 29, 2015 letter, Gilead directed Merck to Dr. Schinazi’s

letter, described supra Part II(B), which Dr. Schinazi had produced earlier that day in response to

Merck’s subpoena, and which expressly identifies the material provided to Dr. Seeger as

including “0194E” and “1834”—two compounds having a molecular weight of 259.2—and as

not including PSI-6130.41 Gilead also provided Merck with the additional photographs described

supra Part II(B), which Dr. Seeger had taken after learning of Merck’s unsupported theory that

the second tube contains PSI-6130.42

In light of the information that had already been in Merck’s possession and the

corroborating evidence contained in Dr. Schinazi’s letter and the new photographs—which

conclusively establish the identity of the material in the Photographed Tubes as including PSI-

0194 and PSI-1834 and excluding PSI-6130—Gilead requested that Merck withdraw its

Motion.43 Additionally, although Gilead believes that Merck’s cancellation of Dr. Secrist’s

deposition was without justification, Gilead agreed to make Dr. Secrist available for a deposition

if Merck would agree to bear the costs associated with Dr. Secrist’s cancelled deposition.44

Gilead requested that Merck please let Gilead know if it would be withdrawing its Motion by

November 2, 2015, so that Gilead did not unnecessarily waste time and money drafting this

opposition to Merck’s Motion.45

39 See Warden Decl. Ex. H. 40 See id. (citing Jean Decl. Ex. 29). 41 Id. 42 Id. 43 Id. 44 Id. 45 Id.



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Merck waited until after 9:00 pm on November 5, 2015—the night before this opposition

was due—to respond to Gilead’s letter.46 In that response, Merck refused to withdraw its

Motion, without even acknowledging the evidence Gilead cited showing that PSI-6130 was not

in the Photographed Tubes.47 Merck took the position that the reason for its Motion was not

merely to identify the contents of the tubes—despite that being the only justification Merck

provided to this Court—and Merck generically asserted that the information it sought is relevant

to “rebutting statements made by Drs. Seeger and Secrist regarding the alleged invalidity of the

patents in suit for lack of enablement, practical utility, and written description.”48 But Merck did

not identify how that information could in any way be relevant to any statements made by either

expert—particularly in light of the clear evidence that PSI-6130 is not in any of the

Photographed Tubes.49

In that November 5, 2015 response, Merck also insisted that Gilead and Dr. Seeger

produce even more irrelevant information related to what Merck wrongly asserted were “dozens

of other samples” it had purportedly discovered had been sent to Dr. Seeger.50 Merck supported

its misguided assertion that Dr. Seeger had received other samples by citing a Pharmasset lab

notebook page describing compounds having a “CS” prefix, and Merck misleadingly represented

that the document made reference to a “Christoph Seeger Code.”51 In fact, the notebook makes

no mention of Dr. Seeger,52 and Merck merely assumed, and then insisted, that CS must refer to

“Christoph Seeger.” But, just as not everything with a molecular weight of 259.2 is PSI-6130,

not everything with the initials “CS” is Christoph Seeger. In this case, “CS” stands for Chu-

Schinazi, and refers to compounds that were synthesized by Dr. David C.K. Chu, a professor at

the University of Georgia. Merck was already in possession of documents linking those

46 Warden Decl. Ex. I. 47 Id. 48 Id. 49 Id. 50 Id. 51 Id. 52 See Warden Decl. Ex. J.



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compounds to Dr. Chu, including a compound data sheet specifically identifying Dr. Chu as the

source of CS compounds identified by Merck.53 A former Pharmasset employee, Ann Montross,

also testified during her deposition in the Idenix case—which transcript is available to Merck—

that a CS prefix means the compound came from Dr. Chu’s lab and that it was sent to

Pharmasset for testing:

Page 35:

12 Q How can you tell that those were not

13 synthesized by Pharmasset?

14 A They have a label of a CS number.

15 Q What does a CS number indicate to you?

16 A That it came from Dr. Chu’s lab.

17 Q So Dr. Chu’s lab was synthesizing

18 compounds to be tested by Pharmasset?

25 THE WITNESS: Yes.54

Gilead responded to Merck on November 6, 2015, directing Merck to the evidence

already in its possession showing that “CS” does not refer to Dr. Seeger, and, again, noting that

other than Merck’s misguided theory that one of the Photographed Tubes contained PSI-6130,

Merck had never identified how information related to the Photographed Tubes could be

relevant.55 Gilead again requested that Merck withdraw its Motion, and explained that if Merck

did not do so, Gilead would seek appropriate sanctions, including attorneys’ fees.56 Merck did

not withdraw its Motion and, thus, Gilead filed this opposition.

53 See Warden Decl. Exs. K. 54 Warden Decl. Ex. L. 55 Warden Decl. Ex. M. 56 Id.



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III. ARGUMENT

A. Legal Standards

Under Rule 26, discovery is limited to information “regarding any nonprivileged matter

that is relevant to any party’s claim or defense.” Where a party seeking discovery brings a

motion to compel, that party bears the burden of proving relevance. See, e.g., In re Facebook

Privacy Litig., 2015 WL 3640518, at *1 (N.D. Cal. June 11, 2015) (denying a motion to compel

on relevance grounds and explaining that “[t]he party seeking to compel discovery bears the

initial burden of establishing that its request is relevant”).

Even when information sought is relevant, courts are required to limit discovery where

“(1) the discovery sought is unreasonably cumulative or duplicative . . . (2) the party seeking

discovery has had ample opportunity to obtain the information by discovery in the action; or (3)

the burden or expense of the proposed discovery outweighs its likely benefit.” Fed. R. Civ. P.

26(b)(2)(C). See also ATS Products, Inc. v. Champion Fiberglass, Inc., 2015 WL 3561611, at *6

(N.D. Cal. June 8, 2015) (“[S]imply because the discovery sought is relevant does not mean that

the court must permit it.”)

Under Rule 37, when a court denies a motion to compel, it “must, after giving an

opportunity to be heard, require the movant . . . to pay the party or deponent who opposed the

motion its reasonable expenses incurred in opposing the motion, including attorney’s fees,”

unless the court determines that the motion was “substantially justified or other circumstances

make an award of expenses unjust.” Fed. R. Civ. P. 37(a)(5)(B). Additionally “the burden of

showing substantial justification and special circumstances is on the party being sanctioned.”

Zig Zag Holdings LLC v. Hubbard, 2014 WL 3724800, at *1 (N.D. Cal. July 25, 2014).



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B. This Court Should Deny Merck’s Request for Sampling of the Photographed Tubes and Other Related Information, Including a 30(b)(6) Witness

1. Merck’s Request Should Be Denied Because Information Regarding the Photographed Tubes Is Irrelevant to This Case, Because Merck Already Has All Information Necessary to Identify the Material in the Photographed Tubes, and Because Producing the Information Merck Requests Would Be Unnecessarily Burdensome

Merck’s Motion is premised exclusively on the demonstrably wrong assertion that one of

the Photographed Tubes may contain PSI-6130, and Merck has not identified any other way in

which the Photographed Tubes could be relevant. Merck’s assertion that one of the tubes may

contain PSI-6130 is based solely on the fact that the second tube contains material having a

molecular weight identical to PSI-6130’s weight of 259.2. Despite that unremarkable fact,57 the

information cited above demonstrates conclusively that, although the Photographed Tubes

contain two nucleoside with molecular weights of 259.2, the tubes do not contain PSI-6130.

Because the Photographed Tubes do not contain PSI-6130 or any other 2’-methyl-up-2’fluoro-

down nucleoside—nor could they given the consistent evidence in this and other proceedings

that PSI-6130 was not synthesized until months after Dr. Seeger was given the tubes—Merck

cannot meet its burden of showing that the information it seeks is relevant to any issue in this

case. Moreover, even to the extent the identity of that material were relevant, Merck is already

in possession of the identity of that material and, thus, any inspection or sampling of the tubes

would be merely redundant.

Merck’s continued insistence in that, notwithstanding PSI-6130 not being in the

Photographed Tubes, information related to those tubes is relevant to rebutting statements made

by Dr. Secrist and Dr. Seeger is insufficient to meet its burden of proving relevance. As this

57 Merck, of all parties, should be unsurprised by the fact that many different nucleosides can

share identical molecular weights. Merck’s own patents list the molecular weight of approximately sixty example nucleosides, many of which share a molecular weight with at least one of the other examples. (See Jean Decl. Ex. 2 at 108:8-109:7.) In fact, some molecular weights are shared by as many as seven different example nucleosides.



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court has explained, “a party’s ipse dixit assertion of relevance without more is insufficient to

meet its burden on a motion to compel.” Facebook, 2015 WL 3640518 at *4.

Allowing inspection of the tubes (of dubious utility, given their age) would also impose

an unwelcome burden on Dr. Seeger and his employer, Fox Chase Cancer Center. Similarly,

requiring Gilead to prepare and put up a 30(b)(6) witness at this late stage—during the midst of

briefing on summary judgment motions—would be a burden that, given the irrelevance and

redundancy of the information Merck is seeking, is clearly not outweighed by Merck’s desire for

another source of confirmation that the compound in the tube is not PSI-6130. Additionally,

Gilead and Dr. Seeger have no assurances that, if they allowed inspection and sampling of the

tubes, Merck would be content. Indeed, each time Gilead and Dr. Seeger have provided Merck

with what it asks for, Merck has come back seeking more irrelevant information with only the

shakiest of justifications. That trend has culminated in Merck’s most recent insistence that

Gilead and Dr. Seeger produce information related to work done by Dr. Chu, merely as a result

of “Chu-Schinazi” sharing the same initials as “Christoph Seeger.” Thus, the burden Gilead and

Dr. Seeger seek to avoid is not merely the burden of allowing inspection and sampling of the

Photographed Tubes, but the burden associated with continuing endlessly down this line of

discovery that has absolutely no connection to anything in this case.

The fact that Merck also waited until months after the close of fact discovery to seek

information related to Dr. Seeger’s testing—despite having been made aware of that testing a

year earlier—also weighs against granting Merck’s request. In short, not only is the information

Merck requests totally irrelevant—which, by itself, requires denial of Merck’s Motion—this is a

case where all three circumstances for which Rule 26 mandates limiting discovery even of

relevant evidence are present: “(1) the discovery [Merck seeks] is unreasonably cumulative or

duplicative . . . (2) [Merck] has had ample opportunity to obtain”—and in fact is in possession

of—“the information by discovery in the action; [and] (3) the burden or expense of the proposed

discovery outweighs its likely benefit.” Fed. R. Civ. P. 26(b)(2)(C). This Court should therefore

deny Merck’s motion.



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2. Merck’s Motion Should Be Denied Because Even if the Photographed Tubes Contained PSI-6130, the Information Merck Seeks Would Still Be Irrelevant

Although the evidence establishes, without question, that the Photographed Tubes do not

contain PSI-6130—and could not, since it had not yet been synthesized when Dr. Seeger

received the tubes in October of 2002—this Court should deny Merck’s motion for the additional

reason that, even if the tubes did contain PSI-6130, it would be irrelevant to this case. Merck

argues that, because Merck’s patent application was published before Dr. Seeger received the

Photographed Tubes in October of 2002, then “[i]f PSI-6130 was present in any one of the tubes

sent on or around October 28, 2002, this is strong evidence that one of ordinary skill in the art

was enabled by the disclosure of Merck’s specification to make and then test compounds falling

within the claims of the patents-in-suit.”58 What Merck ignores, however, is that the same

argument (however flawed and unpersuasive) is available to Merck regardless of whether PSI-

6130 was first synthesized by Mr. Clark in 2003—as all the evidence in numerous proceedings

has established—or by some unknown chemist in late 2002. In both the reality and in Merck’s

fantasy, a chemist synthesized PSI-6130 at some point after the publication of Merck’s patents.

Although Gilead disagrees with Merck’s reasoning regarding the import of that timeline, whether

the first synthesis of PSI-6130 happened in late 2002 or early 2003 and whether it was performed

by Mr. Clark or some other chemist simply makes no difference to the argument Merck wants to

present.

C. This Court Should Deny Merck’s Motion to Compel a Deposition of Dr. Secrist or Order Merck to Pay the Costs Incurred As a Result of Merck’s Improper Cancellation of His Scheduled Deposition

Merck lacked any justification for its unilateral cancellation of Dr. Secrist’s deposition,

which was done after Gilead had already incurred expenses related to Dr. Secrist’s travel costs

and related to the fees for attorney time and Dr. Secrist’s time. From Merck’s refusal to identify

the relevance of the Photographed Tubes coupled with Merck’s refusal to accept Gilead’s offer

58 D.I. 158 at 19-20.



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to depose Dr. Secrist as scheduled and, if necessary, to hold a follow-up deposition, it is apparent

that Merck used this dispute as a pretext for cancelling Dr. Secrist’s deposition. That conclusion

is buttressed by the dubious and easily refuted “evidence” relied on by Merck to support the

belief that the Photographed Tubes contain PSI-6130 and the tenuous connection of that issue to

any topics on which Dr. Secrist opined. It is also buttressed by Merck’s shifting target—first

telling Gilead that it would cancel the deposition if Gilead did not complete its production by

October 14, 2015 and then, after Gilead completed that production as requested, telling Gilead

that it was cancelling the deposition because of the volume of pages Gilead had produced. The

disingenuousness of that latter position is exemplified by Merck’s failure to disclose in its

Motion that the 4,700 pages produced by Gilead included only 41 pages related to the

Photographed Tubes, with the remainder being Dr. Seeger’s trial and deposition transcripts that

had already been available to Merck.59

Despite Merck’s unjustified cancellation of Dr. Secrist’s deposition, Gilead proposed to

Merck that it would make Dr. Secrist available for another deposition if Merck would reimburse

the costs incurred by Gilead in conjunction with the cancelled deposition. Merck has not

accepted, and so Gilead asks the Court to deny the request for the deposition, or in the

alternative, order the fees and expenses to be paid. Additionally, this Court should not permit

Merck to rely on the lack of a deposition of Dr. Secrist to support its opposition to Gilead’s

59 In a similar vein, Merck misleadingly suggest that Gilead produced another 50,000

documents on October 22, 2014 that are somehow germane to the Photographed Tubes or this Motion. (D.I. 158 at 16.) Those 50,000 pages are a red herring. That production was the result of a subpoena served by Idenix in August of 2015 on a former Pharmasset employee, Mr. Roemer, a third-party witness. (See Warden Decl. Ex. N.) After that subpoena was served, Gilead discovered that Mr. Roemer had retained electronic documents from his time at Pharmasset. Id. As Gilead informed Merck at that time, Gilead worked through Mr. Roemer’s counsel to take possession of those documents as expeditiously as possible and promptly began the process of reviewing those documents for production. Id. The October 22, 2015 production was the fifth and final set of Mr. Roemer’s documents—the previous four of which were received by Merck without complaint. Id. It was not until Merck was preparing to file this Motion that it first made any issue of that production, despite Mr. Roemer’s documents having no bearing on the pending Motion, on the Photographed Tubes, or on Dr. Secrist’s deposition.



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pending motion for summary judgment. Merck has Dr. Secrist’s expert reports, which

reasonably identify the opinions Dr. Secrist will provide and permit Merck to respond to

Gilead’s motion. To the extent Merck suffers any disadvantage from having not deposed Dr.

Secrist, it is a disadvantage of Merck’s own making and there is no unfair prejudice to Merck.

By contrast, allowing Merck to use its improper cancellation of Dr. Secrist’s deposition to its

own advantage in opposing Gilead’s motion for summary judgment would unfairly prejudice

Gilead.

D. This Court Should Order Merck to Reimburse Gilead its Reasonable Costs Incurred by Opposing Merck’s Motion, Including Attorneys’ Fees

As the above-described facts make clear, Merck’s motion is not substantially justified, as

required under Rule 37 to avoid paying Gilead’s reasonable costs and fees. See Fed. R. Civ. P.

37(a)(5)(B). Rather, before moving to compel Merck could have, and should have, made the

minimal effort of evaluating the structure of PSI-0194—which was identified in the very

documents being cited by Merck in its correspondence with Gilead—to determine whether that

compound had a molecular weight of 259.2. Had Merck done so, Merck would have discovered

that the Photographed Tubes do not contain PSI-6130 and would have known that its Motion was

unnecessary. Even if Merck’s failure to identify PSI-0194 on its own were justified, however,

had Merck meaningfully participated in the meet and confer process by identifying the purported

relevance of the Photographed Tubes and related documents before moving to compel—as

Gilead repeatedly requested —Gilead would have pointed Merck to the evidence regarding PSI-

0194, which, again, would have shown Merck that its Motion was unnecessary. Finally, even if

Merck were justified in its failure to meaningfully meet and confer, Merck should have

withdrawn its Motion after Gilead sent its October 29, 2015 letter providing Merck with

conclusive evidence that the Photographed Tubes do not contain PSI-6130. Merck refused to do

so, instead insisting the Gilead and Dr. Seeger produce even more irrelevant documents related

to the Chu-Schinazi compounds, forcing Gilead to unnecessarily incur the costs of opposing

Merck’s Motion.



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Merck’s conduct shows that its present efforts are not motivated by any genuine desire

for the information requested in its Motion. Rather, those efforts appear to be only a pretext for,

in the first instance, cancelling Dr. Secrist’s deposition and, in the second instance,

manufacturing a “dispute of fact” on which Merck might rely to justify its opposition to Gilead’s

motion for summary judgment. It remains to be seen whether Merck will, in fact, try to leverage

its abuse of the discovery process to its own advantage in its summary judgment opposition.

But, regardless of whether it does or not, Gilead should not bear the costs that Merck’s

unjustified Motion have made necessary. Gilead, therefore, requests that this Court order Merck

to reimburse Gilead’s reasonable expenses incurred by opposing this Motion, including Gilead’s

attorneys’ fees.

IV. CONCLUSION

For the foregoing reasons, Gilead respectfully requests that this Court deny Merck’s

Motion as it relates to inspection of the Photographed Tubes and to production of information or

testimony related to those tubes. Gilead further requests that this Court deny Merck’s Motion as

it relates to the deposition of Dr. Secrist or in the alternative require Merck to reimburse Gilead

for the costs incurred in conjunction of Dr. Secrist’s cancelled deposition. Finally, Gilead

requests that this Court order Merck to reimburse Gilead its reasonable costs incurred in

opposing this Motion, including attorneys’ fees.

Dated: November 6, 2015 FISH & RICHARDSON P.C. By: /s/ Douglas E. McCann Douglas E. McCann

Attorneys for Plaintiff GILEAD SCIENCES, INC.

Additional counsel: Douglas E. McCann (Pro Hac Vice) [email protected] Gregory R. Booker (Pro Hac Vice)



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[email protected] Robert M. Oakes (Pro Hac Vice) [email protected] Elizabeth Flanagan (Pro Hac Vice) [email protected] Joseph B. Warden (Pro Hac Vice) [email protected] FISH & RICHARDSON P.C. 222 Delaware Avenue, 17th Floor Wilmington, DE 19801 Telephone: (302) 652-5070 Facsimile: (302) 652-0607

CERTIFICATE OF SERVICE

The undersigned hereby certifies that a true and correct copy of the above and foregoing

document has been served on November 6, 2015, to all counsel of record who are deemed to

have consented to electronic service via the Court’s CM/ECF system per Civil Local Rule 5-

1(h)(1).

/s/ Joseph B. Warden


case 5:13-cv-04057-blf document 173 filed 11/06/15 · pdf filei gilead science inc.’s...

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