Case 1:17-cv-00868-CFC-SRF Document 110 Filed 03/30/20 Page 1 of 5 PageID #: 3627
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`UNIVERSITY OF MASSACHUSETTS and
`CARMEL LABORATORIES LLC,
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`v.
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`L’ORÉAL USA, INC.,
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`Plaintiffs,
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`Defendant.
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`C.A. No. 17-868-CFC-SRF
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`REDACTED VERSION
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`L’ORÉAL USA, INC.’S MARCH 20, 2020 OPPOSITION LETTER TO
`PLAINTIFFS’ DISCOVERY DISPUTE LETTER
`
`Frederick L. Cottrell, III (#2555)
`Katharine L. Mowery (#5629)
`Richards, Layton & Finger, P.A.
`One Rodney Square
`920 N. King Street
`Wilmington, Delaware 19801
`(302) 651-7700
`cottrell@rlf.com
`mowery@rlf.com
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`Attorneys for Defendant L’Oréal USA, Inc.
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`Of Counsel:
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`Eric W. Dittman
`Isaac S. Ashkenazi
`Nicholas A. Tymoczko
`Karthik R. Kasaraneni
`Paul Hastings LLP
`200 Park Avenue
`New York, NY 10166
`
`Dennis S. Ellis
`Katherine F. Murray
`Serli Polatoglu
`Paul Hastings LLP
`515 South Flower Street, 25th Floor
`Los Angeles, CA 90071
`(213) 683-6000
`
`Naveen Modi
`Joseph E. Palys
`Paul Hastings LLP
`875 15th Street, N.W.
`Washington, D.C. 20005
`(202) 551-1990
`
`Dated: March 20, 2020
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`Case 1:17-cv-00868-CFC-SRF Document 110 Filed 03/30/20 Page 2 of 5 PageID #: 3628
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`Dear Judge Fallon:
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`Defendant L’Oréal USA, Inc. (“L’Oréal USA”) writes in response to the letter filed by
`Plaintiffs University of Massachusetts and Carmel Laboratories, LLC (together, “Plaintiffs”) on
`March 19, 2020. Plaintiffs’ complaints are either unfounded, or were not the subject of any prior
`meet and confer discussions. As such, Plaintiffs’ requested relief should be denied.
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`1.
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`L’Oréal USA’s Production Pursuant to Scheduling Order, Paragraph 6 (D.I. 46)1
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`L’Oréal USA has produced marketing, technical, financial and testing documents in
`compliance with Paragraph 6 for all properly accused products2 that it has been able to locate
`following diligent searches. This includes documents for the products that Plaintiffs identified
`on February 12, 2020, and for which L’Oréal USA provided Bates numbers. (See D.I. 89, Ex.
`A.) Had Plaintiffs taken the time to review L’Oréal USA’s document production, they would
`have discovered as much. There is nothing to compel here.
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`Technical Documents: Plaintiffs contend that they are missing a formulation/ingredient
`list for one product: Lancome Renergie Eclat Multi-Lift. (D.I. 103, Ex. A.) L’Oréal USA
`produced this information to Plaintiffs in February. (See Exs. A, B.)
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`Financial Documents: L’Oréal USA has produced financial data for every accused
`product in this case, including improperly accused products. Plaintiffs’ sole complaint is that
`they are missing financial information for five products for 2011-2012. As explained in L’Oréal
`USA’s February 13, 2020 letter brief to the Court, and in several subsequent discussions with
`Plaintiffs, L’Oréal USA has been unable to locate this data because its financial databases for
`certain divisions begin with 2013. L’Oréal USA is working with its IT department to recreate
`this data for Plaintiffs, and will continue to keep Plaintiffs apprised of these efforts.
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`Product Packaging and Marketing Materials:3 L’Oréal USA has produced packaging
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`for every properly accused product that it has been able to locate. Indeed, these documents were
`produced starting in December 2019, and L’Oréal USA provided the Bates ranges for these
`documents in its last submission to the Court. (See D.I. 89, Ex. A at 2.) It is unclear why
`Plaintiffs continue to complain about documents that have been produced. (See, e.g., Ex. C
`(packaging for Lancome Visionnaire Advanced Skin Corrector produced Dec. 6, 2019, and
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`1 Plaintiffs detail the information they contend is missing in a chart attached as Exhibit A to their
`letter brief. Attached hereto for the Court’s convenience as Exhibit A is that same chart with an
`additional column explaining the status of the document production for those products.
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`2 Following L’Oréal USA’s submission to the Court on February 13, 2020, Plaintiffs agreed to
`withdraw several improperly accused products. Although Plaintiffs represented that they “have
`no intention of accusing products that post-date the [asserted] patent’s [sic] expiration” (D.I. 87,
`Ex. G at 7), they continue to include some of these products in their chart. (D.I. 103, Ex. A.)
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`3 It is unclear why Plaintiffs cite various Requests for Production when discussing the production
`of marketing materials. As Plaintiffs are aware and have not disputed, in October 2019, the
`parties reached an agreement regarding the scope of marketing materials to be produced in this
`case. (See D.I. 89 at 3-4.) That production is complete.
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`Case 1:17-cv-00868-CFC-SRF Document 110 Filed 03/30/20 Page 3 of 5 PageID #: 3629
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`identified to Plaintiffs by Bates numbers); Ex. D (marketing material for Absolue Revitalizing
`products produced Feb. 10, 2020.)
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`Testing Documents: As a preliminary matter, the issues Plaintiffs complain about
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`relating to testing documents were never raised during the parties’ meet and confer discussions.
`Indeed, the first time Plaintiffs ever identified products for which they believe they are missing
`testing documents was yesterday, in their submission to the Court. (D.I. 103, Ex. A.) A
`preliminary review of the products identified by Plaintiffs confirms that their chart is inaccurate.
`It is also not accurate that Plaintiffs are unable to match the testing documents to the accused
`products without L’Oréal USA identifying Bates numbers for the 20,000 pages of testing
`documents it produced. Starting in November 2019, L’Oréal USA produced technical
`documents identifying the formula numbers for each accused product. Those formula numbers
`also appear on L’Oréal USA’s testing documents, thus allowing Plaintiffs to match the testing
`documents to the accused products. For instance, the first page of the officialization document
`for Kiehl’s Powerful Wrinkle Reducing Cream with SPF 30 identifies the formula number for
`that product as 685562 31. (See Ex. E.) That formula number also appears on that product’s
`testing documents, which, contrary to Plaintiffs’ representation, were produced. (See Ex. F.)
`The same is true for several other products identified for the first time in Plaintiffs’ chart. (See,
`e.g., Ex. G (L’Oréal Paris Youth Code Texture Perfector Serum Concentrate); Ex. H (Vichy
`Idealia Day Cream); Ex. I (L’Oréal Paris RevitaLift Triple Power Eye Treatment). Plaintiffs
`cannot demand broad discovery from L’Oréal USA and then complain that L’Oréal USA did not
`produce the documents simply because Plaintiffs have not taken the time to review them.
`L’Oréal USA has produced all testing documents for every properly accused product that it has
`been able to locate following a reasonably diligent search.
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`2.
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`Plaintiffs’ Rule 30(b)(6) Deposition Notice
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`Plaintiffs’ demand that L’Oréal USA produce a single witness to testify on the twelve
`broad topics identified in Plaintiffs’ February 21, 2020 Rule 30(b)(6) deposition notice (the
`“Notice”) by April 3, 2020 should be denied.
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`As a preliminary matter, the Notice is overly broad. As L’Oréal USA explained to
`Plaintiffs on March 12, 2020, the topics in the Notice seek testimony covering 13 brands, each of
`which operate independently, 4 financial divisions, and research and innovation departments
`which are located in a different state. Accordingly, L’Oréal USA explained that this one
`deposition could require upwards of 15 witnesses. Notwithstanding this, Plaintiffs were
`unwilling to narrow the scope of the topics and demanded that L’Oréal USA produce as few
`witnesses as possible. In an effort to move the case forward, L’Oréal USA agreed to consider
`narrowing the number of witnesses for this deposition, so long as they could be properly
`educated. L’Oréal USA explained, however, that it would take time to educate any witness on so
`many topics, as they would need to meet with employees from numerous brands and divisions.
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`On March 17, 2020, L’Oréal USA provided the name of a 30(b)(6) witness to Plaintiffs.
`However, given the current global health crisis, L’Oréal USA informed Plaintiffs that it was
`“unable at this time to commit to a deposition day,” and noted that, if Plaintiffs “insist on
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`Case 1:17-cv-00868-CFC-SRF Document 110 Filed 03/30/20 Page 4 of 5 PageID #: 3630
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`proceeding with a [] deposition . . . we will need to seek guidance from the Court as to timing.”4
`(Id.) L’Oréal USA did not, as Plaintiffs contend, “refuse[] to go forward with scheduling any
`depositions.” (D.I. 103 at 3.) Rather, L’Oréal USA explained that Plaintiffs’ arbitrary deadline
`of April 3, 2020 to complete this deposition was unworkable, especially given Plaintiffs’ demand
`that L’Oréal USA educate one witness rather than produce the witnesses who were actually
`involved with the document collection process. In addition, given the current health risks and
`travel restrictions in place, it is unclear when L’Oréal USA’s counsel will be able to meet with
`the witness to prepare for the deposition. Given that this deposition covers document collection
`issues and Plaintiffs are asking a witness to identify and categorize documents by Bates number
`(see Ex. J at Topic No. 42), L’Oréal USA’s counsel needs to be able to meet with the deponent in
`person to go through the documents, and to conduct follow-up interviews with the L’Oréal USA
`employees who were involved in the document collection process. Presently, the attorneys likely
`to work with the witness and represent her at the deposition are in Los Angeles and subject to a
`“Stay at Home” order that is likely to last at least until April 19, 2020.
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`Moreover, while Plaintiffs have suggested that the deposition occur via videoconference,
`the nature of the topics to be covered at this deposition render this extremely difficult, and will
`unfairly prejudice L’Oréal USA, as it is simply not feasible to inspect documents through a
`videoconference, especially when the deponent and her counsel will be in different locations. In
`addition, given the topics at issue, attorney-client privilege issues are likely to arise. L’Oréal
`USA’s witness should be able to discuss those issues with counsel in person, not on a separate
`videoconference during the deposition. Finally, it is unclear at this time whether L’Oréal USA’s
`witness would even be allowed to travel to a location for a videoconference.
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`Plaintiffs cannot manufacture an urgent need for a document collection deposition in an
`attempt to force L’Oréal USA to give up its right to effective counsel. L’Oréal USA remains
`ready to proceed with the deposition as soon as its counsel and deponent are able to travel.
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`3.
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`Plaintiffs’ Requests for Production
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`Documents Related to Adenosine Penetration Testing (Request Nos. 8, 25, and 50):
`L’Oréal USA has already produced its non-privileged documents in response to Request Nos. 8,
`25, and 50, including adenosine penetration and accused products testing, and there is thus
`nothing to compel. For the first time in their March 19 letter to the Court, Plaintiffs took the
`position that these Requests separately require documents post-dating this litigation including
`any potential testing conducted by experts in connection with future expert reports.5 The parties
`have not met and conferred on this latter issue, and it is not properly before the Court.
`Regardless, Plaintiffs’ attempt to obtain advanced disclosure of any potential work-product
`testing conducted in connection with expert discovery should be rejected. This request
`contravenes the Scheduling Order, which separately provides for expert reports and disclosures,
`
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`4 L’Oréal USA also suggested alternative measures—e.g., conducting the deposition through
`written questions or interrogatories, per Rules 31 and 33. (D.I. 103, Ex. D at 1.) Given the
`topics at issue, L’Oréal USA maintains that such options are viable. (Id.)
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`5 Contrary to Plaintiffs’ assertions, such testing has no connection with the Court’s February 18
`Order regarding document production pursuant to Paragraph 6 of the Scheduling Order.
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`Case 1:17-cv-00868-CFC-SRF Document 110 Filed 03/30/20 Page 5 of 5 PageID #: 3631
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`and is contrary to Plaintiffs’ own positions in this case.6 (D.I. 69.) There is nothing to compel,
`and Plaintiffs’ attempt to circumvent the Court’s orders and the meet and confer process should
`be rejected.
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`Damages Reports Produced in the Liqwd, Inc. v. L’Oréal USA Action (Request No.
`49): Plaintiffs argue that, because L’Oréal USA “has failed to produce a single comparable
`license agreement to Plaintiffs,” the damages expert reports and testimony L’Oréal USA relied
`on in Liqwd are necessary “to gain any insight whatsoever into [L’Oréal USA]’s licensing
`practices and policies.” (D.I. 103 at 4.) This logic underscores the irrelevance of Plaintiffs’
`request. Given that L’Oréal USA does not license its technology, L’Oréal USA did not produce
`any third-party license agreements in Liqwd. Rather, L’Oréal USA produced only license
`agreements with L’Oréal S.A., its parent company, regarding the three hair-care brands at issue
`in that case, none of which are involved in this case. Here, L’Oréal USA has likewise produced
`the license agreements with L’Oréal S.A. that cover the brands at issue. The expert reports
`exchanged in Liqwd also contain confidential information pertaining to the plaintiffs in that
`matter, which are not relevant here.
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`Documents Produced to Any Government Agency Regarding the Accused Products
`(Request No. 65): Plaintiffs broadly seek “any representations [L’Oréal USA] made about the
`marketing or testing of the Accused Products.” (D.I. 103 at 4.) The Request is in no way
`cabined—it encompasses documents made to any government agency concerning any matter
`involving the accused products. This could implicate documents concerning claims of product
`liability and other issues having nothing to do with this case. L’Oréal USA has produced the
`underlying marketing and testing data for the accused products. As such, any documents
`responsive to Request No. 65 that would be relevant to this case would be duplicative and
`cumulative of documents that have already been produced. Indeed, when L’Oréal USA
`explained this during the parties’ meet and confer, Plaintiffs confirmed that they were seeking
`duplicative information.
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`For the foregoing reasons, L’Oréal USA respectfully requests that Plaintiffs’ requested
`relief be denied.
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`Respectfully,
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`/s/ Frederick L. Cottrell, III
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`Frederick L. Cottrell, III (#2555)
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`cc: Counsel of Record (via CM/ECF and E-Mail)
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`6 Unlike Plaintiffs, who made the strategic decision to rely on testing as the sole basis for their
`infringement contentions and thus, to disclose such testing during fact discovery, L’Oréal USA
`served comprehensive invalidity contentions whose sufficiency was not challenged. And, as
`Plaintiffs have previously acknowledged, contentions do not require the disclosure of specific
`evidence. (See, e.g., D.I. 69, Plaintiffs’ December 5, 2019 letter.)
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