UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF ILLINOIS, EASTERN DIVISION

INRE:

PETITION TO ENFORCE NON-PARTY

SUBPOENAS TO MCANDREWS HELD

& MALLOY LTD., TROY A.

GROETKEN, and YUFENG (ETHAN)

MA

SHIRELLC

Petitioner,

v.

MCANDREWS HELD & MALLOY

LTD., TROY A. GROETKEN, and

YUFENG (ETHAN) MA

Respondents.

SHIRELLC

Plaintiff,

v.

TRAVIS C. MICKLE, PH.D., and

KEMPHARM, INC.

Defendants.

Miscellaneous Case No:

REDACTED BRIEF IN SUPPORT OF

PETITION TO ENFORCE NONPARTY SUBPOENAS

Underlying Action Pending in United

States District Court

for the Western District of Virginia

Civil Case No. 7:10-cv-00434

Case: 1:11-mc-00479 Document #: 4 Filed: 10/27/11 Page 1 of 21 PageID #:7 Case: 1:11-cv-07730 Document #: 4 Filed: 10/27/11 Page 1 of 21 PageID #:7
TABLE OF CONTENTS

TABLE OF AUTHORITIES ......................................................................................................... iii

1. HISTORY OF THE PRESENT DISPUTE..........................................................................1

A. The NRP Patents ....... .............. ............... ............... .......... ............... ...... .................... I

B. The KemPharm Patents............................................................................................1

C. The Underlying Litigation .......................................................................................2

D. Information Is Copied from the NRP Patents to the KemPharm

Patents......................................................................................................................2

E. Respondents' Involvement with the Preparation and Filing of the

KemPharm Patents...................................................................................................2

F. Respondents Counsel the KemPharm Board ...........................................................2

G. Shire Serves Subpoenas for Deposition Testimony and Document

Production ...............................................................................................................3

H. Respondents Refuse to Comply with the Deposition Notices .................................3

1. Respondents Refuse to Produce Any Documents....................................................4

II. SUMMARY OF THE RELEVANT LAW ..........................................................................5

III. ARGUMENT .......................................................................................................................6

A. Shire's Petition Seeks Only Nonprivileged Testimony and

Documents .......... ......... .... ... ............ ................ ........ ..... .... ........ ........... ... ............. .....6

B. Respondents Should be Compelled to Comply with the Deposition

Notices .....................................................................................................................7

1. McAndrews Should be Compelled to Comply with the Rule

3 O(b )( 6) Deposition Notice.......................................................................... 7

a. Testimony Regarding the Date on Which

McAndrews was First Retained by KemPharm or

Dr. Mickle Is Relevant.....................................................................7

b. Testimony Regarding McAndrews' Involvement

with the KemPharm Patents Is Relevant....... ..................................8

c. Testimony Regarding Any Legal Opinion

00998532.DOC

Case: 1:11-mc-00479 Document #: 4 Filed: 10/27/11 Page 2 of 21 PageID #:8 Case: 1:11-cv-07730 Document #: 4 Filed: 10/27/11 Page 2 of 21 PageID #:8
McAndrews Authored Concerning the KemPharm

Patents, the Agreements at Issue in the Litigation,

and the NRP Patents is Relevant.... ........... ............... ......... .... ..........9

d. Testimony Regarding McAndrews' Involvement in

KemPharm's Raising of Capital with Private

Investors Is Relevant to the Underlying Litigation..........................9

e. Testimony Regarding McAndrews' Involvement

with the Employment Agreements Is Relevant . ............ ...............1 1

f. Testimony Regarding Communications Between

McAndrews and Investors of KemPharm Is

Relevant ....... ................... ....................... ..... ...... ............................ i i

g. Testimony Regarding Any Investment McAndrews

Has or Ever Had in KemPharm or Any Related

Entities Is Relevant .......................................................................12

h. Testimony Regarding Communications Between

McAndrews and Cambrex Corporation Is Relevant.....................12

2. Groetken Should be Compelled to Comply with the

Deposition Notice......................................................................... ........ .....13

3. Ma Should be Compelled to Comply with the Deposition

Notice.........................................................................................................13

C. Respondents Should be Compelled to Produce Documents and a

Privilege Log.......................................................................................................... 13

IV. CONCLUSION..................................................................................................................14

11 00998532DOC

Case: 1:11-mc-00479 Document #: 4 Filed: 10/27/11 Page 3 of 21 PageID #:9 Case: 1:11-cv-07730 Document #: 4 Filed: 10/27/11 Page 3 of 21 PageID #:9
TABLE OF AUTHORITIES

Cases

aaiPharma, Inc. v. Kremers Urban Development Co., 361 F. Supp. 2d 770, 776-

77 (N.D. IlL. 2005)............................................................................................................... 9

Bolder Co. v. Arvinmeritor, Inc., No. 03 C 4589, 2008 WL 4889017, at *2 (N.D.

IlL. July 2, 2008)................................. ................. .......... ....... ...... ................. .................... .... 7

Buonauro v. City of Berwyn, No. 08 C 6687, 2011 WL 2110133, at *2 (N.D. IlL.

May 25, 2011) .....................................................................................................................7

Camphausen v. Schweitzer, No. 10 C 3605, 2010 WL 4539452, at *3 (N.D. Il.

Nov. 3, 2010) ...................................................................................................................... 7

Channelmark Corp., v. Destination Prods. Intl, Inc., No. 99 C 214,2000 U.S.

Dist. LEXIS 9854, at *10-14 (N.D. IlL. July 7, 2000)......................................................... 7

Golden Voice Tech. & Training, LLC v. Foley & Lardner, No. 03 C 6469, 2003

U.S. Dist. LEXIS 22393, at * 6-8 (N.D. IlL. Dec. 11,2003)............................................... 6

Heraeus Kuzler, GmbHv. Biomet, Inc., 633 F.3d 591,598 (7th Cir. 2011) .................................. 8

Kodish v. Oakbrook Terace Fire Prot. Dist., 235 F.R.D. 447, 450 (N.D. Il. 2006)...................... 7

Sauer v. Exelon Generation Co., No. 10 C 3258, 2011 WL 3584780, at *5 (N.D.

IlL. Aug. 15, 2011)...........................................................................................................7,8

Statutes

Fed. R. Civ. P. 26(b)(1)...................................................................................................................6

iii 00998532.DOC

Case: 1:11-mc-00479 Document #: 4 Filed: 10/27/11 Page 4 of 21 PageID #:10 Case: 1:11-cv-07730 Document #: 4 Filed: 10/27/11 Page 4 of 21 PageID #:10
Pursuant to Federal Rules of Civil Procedure 26(b), 34(c), 37, and 45, and Local Rule

37.2, Shire LLC ("Shire") petitions this Court to enforce subpoenas against respondents

McAndrews Held & Malloy ("McAndrews"), Troy A. Groetken, and Yufeng (Ethan) Ma.

I. HISTORY OF THE PRESENT DISPUTE

The subpoenas at issue in this Motion stem from an underlying litigation captioned Shire

LLC v. Travis C. Mickle, Ph.D., and KemPharm, Inc., pending in the Western District of

Virginia (No.7: 1O-cv-00434). As detailed in the Complaint (Ex. A), Defendant Travis Mickle

("Dr. Mickle") was previously employed by New River Pharmaceuticals Inc. ("NRP"). (Ex. A at

irir 17-32.) Shire, the current Petitioner, acquired NR in 2007.

A. The NRP Patents

While at NRP, Dr. Mickle signed an employment agreement ("the Employment

Agreement"). (Id. at ir 18.) The Employment Agreement prevented Dr. Mickle from using

NRP's confidential information outside of the company. (Id.) Dr. Mickle also signed several

patent assignment agreements ("the Assignment Agreements"). (Id. at ir 38.)

The Assignment Agreements, along with the Employment Agreement, required Dr.

Mickle to assign his rights in certain discoveries and inventions to NRP. (Id. at irir 18 and 38.)

In fact, while at NRP Dr. Mickle was named as the lead inventor on several patents that were

assigned to NRP (hereinafter referred to as "the NRP Patents"). (Id. at irir 33-37.)

B. The KernPharrn Patents

In violation of his obligations to NRP under the Employment Agreement, Dr.

Mickle used NRP's confidential information to start his own company, KemPharm, Inc.

("KemPharm"). (Id. at irir 50 and 54-75.) Dr. Mickle also fied patent applications and

assigned them to KemPharm (hereinafter referred to as "the KemPharm Patents"). This was in

1 00998532DOC

Case: 1:11-mc-00479 Document #: 4 Filed: 10/27/11 Page 5 of 21 PageID #:11 Case: 1:11-cv-07730 Document #: 4 Filed: 10/27/11 Page 5 of 21 PageID #:11
violation of his obligations to assign patent applications to NR. (Id. at irir 54-55.)

C. The Underlying Litigation

Shire sued Dr. Mickle and KemPharm alleging, among other things, that Dr. Mickle

violated both the Employment Agreement and Assignment Agreements. (Id. at irir 1, 76-113.)

Shire also alleges that KemPharm tortiously interfered with Dr. Mickle's contractual obligations

to NRP. (Id. at irir 1, 114-24.) The case is set for trial on February 21, 2012, discovery ends

November 21,2011, and dispositive motions due November 17,2011.

D. Information Is Copied from the NR Patents to the KemPharm Patents

The KemPharm Patents contain information that was copied from the NRP Patents. For

example, Exhibits Band C respectively compare KemPharm US Provisional Application Nos.

60/869,375 ("the '375 provisional application") and 60/888,870 ("the '870 provisional

application") with NRP Patent No. 7,105,486 ("the '486 patent"). These comparisons

demonstrate that sentences, and even entire paragraphs, were lifted from the' 486 patent and

copied into the KemPharm provisional applications.

E. Respondents' Involvement with the Preparation and Filng of the

KemPharm Patents

McAndrews was the prosecuting law firm of the KemPharm Patents and Ma was one of

the prosecuting attorneys on the KemPharm Patents. (See Ex. D; Ex. E.) Because of their role in

the prosecution of the KemPharm Patents, McAndrews and Ma have firsthand knowledge

regarding the copied information. Specifically, they know who copied the information, when it

was copied, where it was copied, why it was copied, and how it was copied.

F. Respondents Counsel the KemPharm Board

Prior to this lawsuit, McAndrews provided legal advice concerning the subject matter of

this litigation. For example, Exhibit F, a transcript of a recording of an August 7, 2009

2 00998532.DOC

Case: 1:11-mc-00479 Document #: 4 Filed: 10/27/11 Page 6 of 21 PageID #:12 Case: 1:11-cv-07730 Document #: 4 Filed: 10/27/11 Page 6 of 21 PageID #:12
KemPharm Board Meeting, demonstrates that Groetken, as a representative of McAndrews,

spoke to the Board. (See Ex. Fat 21-41.) Additionally, the Minutes of that meeting (Ex. G)

contain the following statement regarding Groetken's discussion with the Board:

G. Shire Serves Subpoenas for Deposition Testimony and Document Production

Shire recognized the importance of the facts surrounding the information that was copied

from the NRP Patents to the KemPharm Patents. Thus, under Federal Rule of Civil Procedure

45, Shire caused subpoenas to be personally served on Respondents. (Exs. H, I, and J).

H. Respondents Refuse to Comply with the Deposition Notices

On October 5,2011, Respondents fied a Consolidated Response and Objections to

Shire's subpoenas. (See Ex. K at 5-8.) In a meet and confer telephone conference on October

10,2011, Shire attempted to resolve Respondents' objections to the Rule 30(b)(6) deposition

topics. Respondents, however, maintained that they wil not appear for deposition.

Respondents' position was that they were not in a position to provide discoverable information,

which they defined as "evidence that could be used for some admissible purpose at triaL."

On October 11,2011 (Ex. L), Respondents announced that they were "taking the

deposition dates off calendar but wil agree to reschedule them if we can agree on what

deposition scope, if any, is appropriate." (Ex. L at 1.)

In a follow-up letter to Respondents on October 14,2011 (Ex. M), Shire pointed out that,

contrary to Respondents' contention, evidence need not be admissible to be relevant and thus

discoverable. (See Ex. Mat 1.) Shire further clarified that under Rule 26(b)(1) relevant

inadmissible evidence is discoverable if it is "reasonably calculated to lead to the discovery of

3 00998532DOC

Case: 1:11-mc-00479 Document #: 4 Filed: 10/27/11 Page 7 of 21 PageID #:13 Case: 1:11-cv-07730 Document #: 4 Filed: 10/27/11 Page 7 of 21 PageID #:13
admissible evidence." (Id. at 1-2.) Additionally, Shire included a chart providing, in detail, by

topic, the discoverable nature of the deposition testimony sought by Shire. (See id. at 2-7.)

Shire requested a response by October 17, 2011. (Id. at 1.) Despite this request,

Respondents did not respond until October 24,2011 (Ex. N) and only after receiving two

reminder emails (Exs. 0 and P). In their response, Respondents layout further objections to the

deposition and refused to appear for deposition. (See Ex. N at 1-3.)

I. Respondents Refuse to Produce Any Documents

The subpoenas set October 5,2011, for the production of documents. Respondents did

not produce any documents in response to the subpoenas. Instead, they filed the Consolidated

Response and Objections which merely contained general, boilerplate objections to the requests

for production and there was no attempt to set forth the basis for any privilege objections; no

privilege log was served. (See Ex. K at 2-4.) In short, Respondents simply took the unilateral

position that they needed to do nothing in response to the subpoenas beyond fiing objections.

In the October 10 meet and confer conference, Shire attempted to ascertain Respondents'

specific issues with the production requests. Respondents, however, failed to raise any specific

objections to any ofthe requests, yet they maintained their unilateral refusal to search any of

their records for responsive documents. Respondents' only bases for their refusal were that any

documents would be duplicative of the documents requested from KemPharm and Dr. Mickle,

and that the benefit to the litigation is outweighed by the burden on Respondents. Despite their

argument on the duplicative nature of any production responding to the subpoenas, Respondents

admitted that their emails have not been searched in the underlying litigation.

Subsequently, Respondents reiterated their argument on the duplicative nature of any

document production, requesting that Shire demonstrate that there is not any overlap in the

4 00998532.DOC

Case: 1:11-mc-00479 Document #: 4 Filed: 10/27/11 Page 8 of 21 PageID #:14 Case: 1:11-cv-07730 Document #: 4 Filed: 10/27/11 Page 8 of 21 PageID #:14
documents sought by the subpoena and those requested in the underlying litigation. (Ex. L at 1-

2.) Respondents argued that their emails were not searched in the underlying litigation because

"Shire never requested a search ofthesemailboxes pursuant to our agreed ESI plan." (Id.at 2.)

In a follow-up letter, Shire pointed out that since Respondents' emails were not searched

in the underlying litigation their argument about the duplicative nature of the documents is

unfounded. (See Ex. Mat 8.) Shire also explained that the obligations under the ESI plan in the

underlying litigation are separate from Respondents' obligations under the subpoena. (See id.)

Respondents maintained that they wil not produce documents or a privilege log in

response to the subpoena. (See Ex. Nat 1.) Respondents additionally discussed the burden that

would be involved in a search ofGroetken's and Ma's emails and ultimately concluded that

unless the scope of the production requests is substantially restricted they wil not produce

documents in response to the production requests. (See id. at 1.)

II. SUMMARY OF THE RELEVANT LAW

A petition to enforce a subpoena is appropriate to compel respondents to produce

otherwise discoverable information. See, e.g., Golden Voice Tech. & Training, LLC v. Foley &

Lardner, No. 03 C 6469, 2003 U.S. Dist. LEXIS 22393, at * 6-8 (N.D. Il. Dec. 11, 2003)

(enforcing subpoena for patent infringement litigation biling records); Channelmark Corp., v.

Destination Prods. Intl, Inc., No. 99 C 214, 2000 U.S. Dist. LEXIS 9854, at *10-14 (N.D. IlL.

July 7, 2000) (enforcing subpoena for non-party testimony and documents relevant to fraud

claim). Discovery is permitted on any nonprivileged matter that "is relevant to any part's claim

or defense-including the existence, description, nature, custody, condition, and location of any

documents or other tangible things and the identity and location of persons who know of any

discoverable matter." Fed. R. Civ. P. 26(b)(l). The appropriate question during discovery is not

5 00998532.DOC

Case: 1:11-mc-00479 Document #: 4 Filed: 10/27/11 Page 9 of 21 PageID #:15 Case: 1:11-cv-07730 Document #: 4 Filed: 10/27/11 Page 9 of 21 PageID #:15
whether the information is admissible, but whether the information is relevant. See Camphausen

v. Schweitzer, No. 10 C 3605, 2010 WL 4539452, at *3 (N.D. IlL. Nov. 3, 2010). In fact, Rule

26(b)( 1) states that relevant inadmissible evidence is discoverable if it is "reasonably calculated

to lead to the discovery of admissible evidence." Fed. R. Civ. P. 26(b)(l); see also Bolder Co. v.

Arvinmeritor, Inc., No. 03 C 4589,2008 WL 4889017, at *2 (N.D. IlL. July 2,2008) ("The

evidence itself need not be admissible so long as it may lead to admissible evidence.").

In ruling on motions to compel discovery, courts have traditionally embraced a liberal

interpretation of the discovery rules. See Camphausen, 2010 WL 4539452, at * 1. Courts

consistently look negatively upon significant restrictions placed upon the discovery process. See

Kodish v. Oakbrook Terace Fire Prot. Dist., 235 F.R.D. 447, 450 (N.D. IlL. 2006).

The burden is on the objecting party to demonstrate why a discovery request is improper.

See id. "Responses to production requests must clearly assert the basis of a part's objection, if

any, in relation to the specific documents in question, and broad objections to all of a part's

requests are unavailing." Buonauro v. City of Berwyn, No. 08 C 6687, 2011 WL 2110133, at *2

(N.D. Il. May 25,2011). A party objecting to discovery as unduly burdensome must

specifically demonstrate why that is so. See Sauer v. Exelon Generation Co., No. 10 C 3258,

2011 WL 3584780, at *5 (N.D. IlL. Aug. 15,2011) (citations omitted). Merely stating, without

support, as respondents have done here, that the burden and expense would be considerable is

insufficient to outweigh the requesting part's right to potentially relevant documents. See id.

(citing Heraeus Kuzler, GmbH v. Biomet, Inc., 633 F.3d 591,598 (7th Cir. 2011)).

III. ARGUMENT

A. Shire's Petition Seeks Only Nonprivileged Testimony and Documents

Respondents have completely refused to comply with the subpoenas by improperly

6 00998532.DOC

Case: 1:11-mc-00479 Document #: 4 Filed: 10/27/11 Page 10 of 21 PageID #:16 Case: 1:11-cv-07730 Document #: 4 Filed: 10/27/11 Page 10 of 21 PageID #:16
arguing that the testimony and documents sought are privileged. This is absurd. Respondents

failed to raise specific privilege objections and instead merely cited boilerplate privilege

objections. For the reasons outlined below, Shire is seeking and entitled to nonprivileged

testimony and documents in response to the subpoenas.

B. Respondents Should be Compelled to Comply with the Deposition Notices

1. McAndrews Should be Compelled to Comply with the Rule 30(b)(6)

Deposition Notice

Shire's Rule 30(b)(6) Deposition Notice to McAndrews contains sixteen deposition

topics that fall into eight different categories: (1) the date on which McAndrews was first

retained by KemPharm or Dr. Mickle; (2) McAndrews' involvement with the KemPharm

Patents; (3) legal opinions McAndrews authored concerning the KemPharm Patents, the

agreements at issue in the litigation, and the NRP Patents; (4) McAndrews' involvement in

KemPharm's raising of capital with private investors; (5) McAndrews' involvement with the

employment agreements KemPharm entered into with its employees; (6) communications

between McAndrews and investors of KemP harm; (7) any investment McAndrews has or ever

had in KemPharm or any related entities; and (8) communications between McAndrews and

Cambrex Corporation.

Each Rule 30(b )(6) deposition topic seeks information that is relevant to the underlying

litigation and thus, McAndrews should be compelled to designate one or more individuals to

testify on its behalf with respect to each topic.

a. Testimony Regarding the Date on Which McAndrews was

First Retained by KemPharm or Dr. Mickle Is Relevant

Deposition topic 1 requests testimony concerning the date on which McAndrews was first

retained by KemPharm or Mickle and the nature of such representation. This topic is relevant

7 00998532DOC

Case: 1:11-mc-00479 Document #: 4 Filed: 10/27/11 Page 11 of 21 PageID #:17 Case: 1:11-cv-07730 Document #: 4 Filed: 10/27/11 Page 11 of 21 PageID #:17
and non-privileged and McAndrews should be compelled to designate a witness on this topic.

The record is clear that at some time prior to the filing dates of the '375 and '870

provisional applications, information was copied from the NRP Patents to those provisional

applications. (Ex. C & D). Therefore, the dates on which McAndrews was first retained by

KemPharm or Dr. Mickle and the nature of such representation is relevant to determine whether

McAndrews was involved in the copying. See aaiPharma, Inc. v. Kremers Urban Development

Co., 361 F. Supp. 2d 770,776-77 (N.D. Il. 2005) (explaining that information regarding

counsel's "level of involvement" in patent prosecution was relevant and not privileged).

b. Testimony Regarding McAndrews' Involvement with the

KemPharm Patents Is Relevant

Deposition topics 2-6 request testimony concerning McAndrews' involvement with the

KemPharm Patents. All of these topics are relevant and McAndrews should be compelled to

designate one or more individuals to testify on its behalf with respect to these matters.

Shire contends that the KemPharm Patents rightly belong to Shire. This contention is

supported by the fact that information was copied from the NRP Patents to the KemPharm

Patents. As the prosecuting law firm, McAndrews has knowledge of all of the facts and

circumstances surrounding the KemPharm Patents, including all communications related to the

KemPharm Patents as well as the identification of each individual involved with the KemPharm

Patents and the nature of their involvement. Specifically, McAndrews knows who copied the

information, when it was copied, where it was copied, why it was copied, and how it was copied.

Non-privileged information such as the date, author, recipient, and general subject matter of any

information or communications regarding the KemPharm patents is directly relevant to Shire's

claim that it is the rightful owner of the KemPharm Patents.

8 00998532DOC

Case: 1:11-mc-00479 Document #: 4 Filed: 10/27/11 Page 12 of 21 PageID #:18 Case: 1:11-cv-07730 Document #: 4 Filed: 10/27/11 Page 12 of 21 PageID #:18
c. Testimony Regarding Any Legal Opinion McAndrews

Authored Concerning the KemPharm Patents, the Agreements

at Issue in the Litigation, and the NRP Patents is Relevant

Deposition topic 7 requests testimony concerning any legal opinion McAndrews

authored, whether written or oral, dealing with the KemPharm Patents, the Employment

Agreement, the Assignment Agreements, the settlement agreement between Dr. Mickle and

NRP, and the NRP Patents, and the nature of each such opinion. This request is relevant and

McAndrews should be compelled to designate a witness on its behalf with respect to this matter.

The time period when KemPharm's Board first became aware of Dr. Mickle's obligations

to NRP and the action the Board subsequently took, or did not take, to ensure that Dr. Mickle

honored those obligations are relevant to Shire's tortious interference with contract claim.

McAndrews provided legal advice concerning the subject matter ofthis litigation prior to

Shire's initiation of the lawsuit. (Ex. F and G). Non-privileged information such as the date,

author, recipient, and general subject matter of any legal opinion McAndrews authored

concerning the KemPharm Patents, the NRP Patents, and the agreements at issue in this litigation

may demonstrate that KemPharm had knowledge of the legal implications of Dr. Mickle's

agreements with NRP. KemPharm's knowledge of the legal implications of those obligations

and what, if anything, the company did to ensure that Dr. Mickle honored those obligations,

bears directly on Shire's tortious interference with contract claim against KemPharm.

d. Testimony Regarding McAndrews' Involvement in

KemPharm's Raising of Capital with Private Investors Is

Relevant

Deposition topics 8-10 request testimony concerning McAndrews' involvement in

KemPharm's raising of capital with private investors. Specifically, KemPharm issued Series A,

B, and C Private Placement Confidential Offering Memoranda to potential private investors that

9 00998532DOC

Case: 1:11-mc-00479 Document #: 4 Filed: 10/27/11 Page 13 of 21 PageID #:19 Case: 1:11-cv-07730 Document #: 4 Filed: 10/27/11 Page 13 of 21 PageID #:19
contained references to the possibilty of litigation with Shire regarding the contracts between

Dr. Mickle and NRP. Notably, under the "Litigation Risk" heading ofKemPharm's Series A, B,

and C Private Placement Confidential Offering Memoranda (Exs. Q, R, and S respectively), it

states that

(See Ex. Q at DFN003842; Ex. Rat SHR0000442; Ex. Sat VQ0000319.)

Further, under the "Intellectual Propert" heading of Exhibit B to KemPharm's Series A, B, and

C Private Placement Confidential Offering Memoranda, it states:

(Ex. Qat DFN003891; Ex. Rat SHR0000489; Ex. S at VQ0000344.)

On November 2,2010, after the litigation was commenced, KemPharm issued an

amendment to its third private placement memorandum (Ex. T). The amendment contains the

following statement:

(Ex. Tat VQ0000489.)

If McAndrews provided any information or opinions to KemPharm to support or provoke

these statements, Shire is entitled to know at least non-privileged information such as the date,

author, recipient, and general subject matter of the information or opinions. Shire is entitled to

testimony on these items because when KemPharm first became aware of Mickle's obligations to

NRP and the actions they subsequently took, or did not take, to ensure that Mickle honored those

10 00998532.DOC

Case: 1:11-mc-00479 Document #: 4 Filed: 10/27/11 Page 14 of 21 PageID #:20 Case: 1:11-cv-07730 Document #: 4 Filed: 10/27/11 Page 14 of 21 PageID #:20
obligations are relevant to Shire's tortious interference with contract claim against KemPharm.

e. Testimony Regarding McAndrews' Involvement with the

KenPharm Employment Agreements Is Relevant

Deposition topics 11, 15, and 16 request testimony concerning McAndrews' involvement

with the employment agreements KemPharm entered into with its employees. These requests are

relevant and McAndrews should be compelled to designate a witness on these matters.

The "Employment Agreements" section ofKemPharm's Series A, Band C Private

Placement Confidential Offering Memoranda states that KemPharm entered into employment

agreements with all of its employees. (See Ex. Q at DFN003910; Ex. Rat SHR0000496; Ex. S

at VQ0000411.) The section further describes these agreements, stating that

(Ex. Q at DFN003910; Ex. Rat SHR0000496; Ex. Sat VQ0000411.)

KemPharm and Dr. Mickle are challenging the reasonableness of the Employment

Agreement between Dr. Mickle and NRP. If McAndrews drafted any of the employment

agreements that KemPharm entered into with its employees, authored any legal opinion

concerning those agreements, or provided any information or opinions to support the statements

in the "Employment Agreements" section described above, Shire is entitled to know the date,

author, recipient, and general subject matter ofthe information or opinions. Such non-privileged

information about KemPharm's employment agreements is directly relevant to the

reasonableness ofthe Employment Agreement between Dr. Mickle and NRP.

f. Testimony Regarding Communications Between McAndrews

and Investors of KemPharm Is Relevant

Deposition topic 12 requests testimony on communications McAndrews has had with any

actual or potential KemPharm investor concerning the KemPharm Patents, the Employment

11 00998532.DOC

Case: 1:11-mc-00479 Document #: 4 Filed: 10/27/11 Page 15 of 21 PageID #:21 Case: 1:11-cv-07730 Document #: 4 Filed: 10/27/11 Page 15 of 21 PageID #:21
Agreement, the Assignment Agreements, and the NRP Patents. This request is relevant and

McAndrews should be compelled to designate one or more witnesses testify on this matter.

To the extent that McAndrews has had communications with any actual or potential

KemPharm investor concerning the substance ofthis litigation, these communications are not

attorney-client communications and are directly relevant to the litigation. For example, if

McAndrews made statements to investors that are inconsistent to the information provided in

KemPharm's and Mickle's pleadings, Shire is entitled to knowledge of this inconsistency.

g. Testimony Regarding Any Investment McAndrews Has or

Ever Had in KemPharm or Any Related Entities Is Relevant

Deposition topic 13 requests testimony concerning any investment or interest

McAndrews has or ever had in KemPharmor or any related or affiliated entities or predecessors.

This request is relevant and non-privileged and McAndrews should be compelled to designate

one or more individuals to testify on its behalf with respect to this matter.

Any investment or interest McAndrews has or ever had in any ofthese entities is relevant

to any possible bias in the testimony of the McAndrews' witness(es).

h. Testimony Regarding Communications Between McAndrews

and Cambrex Corporation Is Relevant

Deposition topic 14 requests testimony on all communications McAndrews has had with

Cambrex Corporation regarding synthesis or analysis of amphetamine conjugated to amino acid.

This request is relevant and non-privileged and McAndrews should be compelled to designate

one or more individuals to testify on its behalf with respect to this matter.

KemPharm contracted Cambrex to synthesize and analyze amphetamine conjugated to

amino acid. Interestingly, Cambrex was the same vendor that NRP used to synthesize and

analyze amphetamine conjugated to amino acid. As the prosecuting law firm of the KemPharm

12 00998532.DOC

Case: 1:11-mc-00479 Document #: 4 Filed: 10/27/11 Page 16 of 21 PageID #:22 Case: 1:11-cv-07730 Document #: 4 Filed: 10/27/11 Page 16 of 21 PageID #:22
Patents, McAndrews may have used the synthesis or analysis in the prosecution of the patents

and applications. Therefore, communications with Cambrex regarding synthesis or analysis are

relevant to Shire's claim that the KemPharm Patents rightly belong to Shire.

2. Groetken Should be Compelled to Comply with the Deposition Notice

As discussed above, the time period when KemPharm's Board first became aware of Dr.

Mickle's legal obligations to NRP and the steps the Board subsequently took, or did not take, to

ensure that Dr. Mickle complied with those obligations are relevant. Groetken, as a

representative of McAndrews, has provided legal advice to KemPharm prior to Shire's initiation

of the underlying lawsuit. (See Ex. F at 21-41; Ex. G.) Specifically, Groetken has counseled the

KemPharm Board (See Ex. G.)

The date, author, recipient, and general subject matter of any legal opinion Groetken

authored, whether written or oral, concerning the facts and circumstances at issue in this

litigation, may demonstrate that KemPharm had knowledge of the legal implications of Dr.

Mickle's agreements with NRP. This knowledge bears directly on Shire's tortious interference

claim. Therefore, Groetken should be compelled to testify with respect to these matters.

3. Ma Should be Compelled to Comply with the Deposition Notice

As a prosecuting attorney of the KemPharm Patents, Ma has firsthand knowledge of the

facts and circumstances that resulted in information being copied from the NRP Patents to the

KemPharm Patents. This information is directly relevant to Shire's claim that the KemPharm

Patents rightly belong to Shire. Therefore, Ma should be compelled to testify as well.

C. Respondents Should be Compelled to Produce Documents and a Privilege

Log

Respondents' Consolidated Response and Objections to Shire's subpoenas merely

contained general, boilerplate objections to Shire's document requests. (See Ex. Kat 2-4.)

13 00998532DOC

Case: 1:11-mc-00479 Document #: 4 Filed: 10/27/11 Page 17 of 21 PageID #:23 Case: 1:11-cv-07730 Document #: 4 Filed: 10/27/11 Page 17 of 21 PageID #:23
Further, in the meet and confer process, Respondents did not raise any specific objections to the

relevance of the document requests. Instead, Respondents relied on the allegedly unduly

burdensome duplicative nature of any document production.

Respondents contend that any documents that would be produced in response to the

subpoenas are duplicative of the documents already requested from the parties. Interestingly,

Respondents simultaneously acknowledge that their emails were not searched in the underlying

litigation. Therefore, Respondents duplicative nature argument is baseless.

Respondents further assert that they wil not search their emails or produce a privilege log

in response to the subpoenas because the benefit to the litigation is outweighed by the burden to

Respondents. However, a general assertion of the burdensome nature of the production, without

support, is insufficient. See Sauer, 2011 WL 3584780, at *5.

Shire is seeking Respondents to search for and produce any responsive non-privileged

documents. This includes the metadata of the final electronically stored versions of the '375 and

'870 provisional applications fied with the United States Patent and Trademark Office. The

metadata wil provide the information necessary to ascertain who copied the information from

the NRP Patents to the KemPharm Patents and when this information was copied. This

information is relevant to Shire's claim that it is the rightful owner of the KemPharm Patents.

Respondents' failure has resulted in prejudice to Shire because Shire wil be forced to

postpone depositions until it receives Respondents' documents. Therefore, Respondents should

be compelled to respond fully to the production requests, and to produce a privilege log.

iv. CONCLUSION

Under Federal Rule of Civil Procedure 45( c )(2)(B) and for the reasons set forth herein,

Respondents McAndrews Held & Malloy Ltd., Troy A. Groetken, and Yufeng (Ethan) Ma have

14 00998532DOC

Case: 1:11-mc-00479 Document #: 4 Filed: 10/27/11 Page 18 of 21 PageID #:24 Case: 1:11-cv-07730 Document #: 4 Filed: 10/27/11 Page 18 of 21 PageID #:24
no basis to object or otherwise refuse to comply with the valid subpoenas served upon them.

Accordingly, Shire requests that the Court enter an Order: (1) compelling Respondents to appear

for a deposition; and (2) setting a firm deadline for Respondents to produce documents in

response to their subpoenas.

Dated: October 27,2011 Respectfully submitted,

By: lsi Steven R. Trybus

Steven R. Trybus

JENNER & BLOCK LLP

353 N. Clark St.

Chicago, IL 60654

Telephone: (312) 923-8307

Fax: (312) 923-8407

Email: strybus@jenner.com

and

By: lsi Eugene LeDonne

Eugene LeDonne (application for Pro Hac

Vice forthcoming)

FROMMER LAWRNCE & HAUG LLP

745 Fifth Avenue

New York, NY 10151

Telephone: (212) 588-0800

Facsimile: (212) 588-0500

Email: eledonne@flhlaw.com

ATTORNEYS FOR SHIRE, L.L.C

15 00998532DOC

Case: 1:11-mc-00479 Document #: 4 Filed: 10/27/11 Page 19 of 21 PageID #:25 Case: 1:11-cv-07730 Document #: 4 Filed: 10/27/11 Page 19 of 21 PageID #:25
CERTIFICATE OF SERVICE

I hereby certify that on October 27,2011, pursuant to LR 5.3, I electronically fied the

foregoing document with the Clerk of Court using the ECF system and that a file-stamped copy

of this Motion to Compel Compliance was sent to following by both electronic mail and U.S.

Mail:

Gregory C. Schodde

Patricia J. McGrath

Thomas J. Wimbiscus

McAndrews, Held & Malloy, Ltd.

500 West Madison, 34th Floor

Chicago, IL 60661

gschodde@mcandrewsip.com

pmcgrath@mcandrews-ip.com

twimbiscus@mcandrews-ip.com

Dated: October 27,2011

John E. Davidson

Davidson & Kitzmann, PLC

2 i 1 East High Street

Charlottesvile, VA 22902

jed@dklawyers.com

Respectfully submitted,

By: lsi Steven R. Trybus

Steven R. Trybus

JENNER & BLOCK LLP

353 N. Clark St.

Chicago, IL 60654

Telephone: (312) 923-8307

Fax: (312) 923-8407

Email: strybus@jenner.com

and

By: lsi Eugene LeDonne

Eugene LeDonne (application for Pro Hac

16 00998532DOC

Case: 1:11-mc-00479 Document #: 4 Filed: 10/27/11 Page 20 of 21 PageID #:26 Case: 1:11-cv-07730 Document #: 4 Filed: 10/27/11 Page 20 of 21 PageID #:26
Vice forthcoming)

FROMMER LAWRENCE & HAUG LLP

745 Fifth Avenue

New York, NY 10151

Telephone: (212) 588-0800

Facsimile: (212) 588-0500

Email: eledonne@flh1aw.com

ATTORNEYS FOR SHIRE, L.L.C

17 00998532DOC

Case: 1:11-mc-00479 Document #: 4 Filed: 10/27/11 Page 21 of 21 PageID #:27 Case: 1:11-cv-07730 Document #: 4 Filed: 10/27/11 Page 21 of 21 PageID #:27