Case 1:17-cv-00868-CFC-SRF Document 132 Filed 04/27/20 Page 1 of 4 PageID #: 4532
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`April 20, 2020
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`VIA E-FILING
`The Honorable Sherry R. Fallon
`J. Caleb Boggs Federal Building
`844 N. King Street
`Wilmington, DE 19801-3568
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`RE: University of Massachusetts Medical School, et al. v. L'Oréal S.A., et al.
`(C.A. No. 17-cv-868-CFC-SRF)
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`FILED UNDER SEAL
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`Dear Magistrate Judge Fallon,
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`Plaintiffs write to respectfully move the Court to order Defendant to produce three narrow
`categories of outstanding documents: (1) certain development records for the Accused Products;
`(2) certain documents related to Defendant’s patent applications that cite the asserted patents; and
`(3) organizational charts reflecting the structure of Defendant’s business and personnel.
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`1. Defendant’s Product Development Records
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`The two asserted patents claim methods for using adenosine to enhance skin by applying
`adenosine to the dermal cells, which increases the size and function of dermal fibroblast cells and
`consequently improves wrinkling and skin smoothness.1 On Defendant’s websites, it claims to
`include adenosine in its products for “providing anti-aging benefits,” including “significant
`improvements in the visible signs of aging as well as improving skin smoothness.” Ex. 1 (print-
`out from the L’Oréal Paris U.S.A. website).2
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` But, although Defendant includes adenosine that
`operates at the dermal cell level in the manner claimed in the asserted patents in at least
`approximately 150 Accused Products,
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`Plaintiffs served an interrogatory seeking precisely this information in July 2019, asking
`Defendant to “describe in detail when and the reason(s) why You determined to use adenosine as
`an ingredient in any product You have sold in the United States, including but not limited to any
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`1 Plaintiffs recently won their motion for claim construction adopting this interpretation, over
`Defendant’s interpretation that the patents do not operate at the dermal cell level. See D.I. 114.
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`2 Also attached as Exhibit 6 to Plaintiffs’ June 30, 2017 Complaint, D.I. 1.
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`3 While Defendant produced product testing for some Accused Products, as previously ordered by
`the Court, Defendant has produced documents reflecting the inclusion of adenosine in its
`formulations for only the following products:
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`9 1 9 N . M A R K E T S T R E E T , 1 2 T H F L O O R , W I L M I N G T O N , D E 1 9 8 0 1
`P H O N E : ( 3 0 2 ) 7 7 7 – 0 3 0 0 (cid:476) F A X : ( 3 0 2 ) 7 7 7 – 0 3 0 1 (cid:476) W W W . F A R N A N L A W . C O M
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`Case 1:17-cv-00868-CFC-SRF Document 132 Filed 04/27/20 Page 2 of 4 PageID #: 4533
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`testing and/or research that was relevant to Your decision to include adenosine in Your products.”
`See Ex. 3 at 7 (Interrogatory No. 6).
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`Plaintiffs emailed and met and conferred telephonically with Defendants about this issue,
`and clarified they are only looking for product development records related to the claimed
`technology—i.e., documents related to Defendant’s decision to include adenosine in the Accused
`Products, and/or documents related to the Accused Products’ ability to enhance skin, with or
`without the inclusion of adenosine. Defendant argued that these documents are “irrelevant” and it
`would be burdensome for unspecified reasons for Defendant to collect and produce any further
`documents whatsoever. Plaintiff said that the missing product development information is
`compounded by Defendant’s incomplete and apparently inaccurate response to Plaintiffs’
`Interrogatory No. 6; Defendant purported it would supplement that response on the parties’ call,
`but later withdrew that offer. See Ex. 9.
`In short, Plaintiffs request the Court order Defendant to produce product development
`records related to Defendant’s decision to include adenosine in the Accused Products, instead of
`or in addition to any other ingredient that may reduce wrinkling, roughness, dryness, or laxity of
`the skin, along with a complete response to Plaintiffs’ Interrogatory No. 6. These are narrow
`requests critical to damages, among other issues.
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`2. Defendant’s Patent Records and Inventor Files
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`Plaintiffs have contended since filing of the original Complaint that Defendant has known
`about the asserted patents since as early as 2002, including because Defendant’s patents and
`applications cite and describe the asserted patents as important inventions related to using
`adenosine for skincare. See, e.g., Ex. 10 at [0018] (explaining Plaintiffs’ asserted patents teach
`“that adenosine or an analog of adenosine be used in a composition that is topically applied to the
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`2
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`Case 1:17-cv-00868-CFC-SRF Document 132 Filed 04/27/20 Page 3 of 4 PageID #: 4534
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`skin to improve skin condition and in particular to combat lines, skin laxity, skin dryness and
`pigmentary blemishes” and “that adenosine increases the size of fibroblasts and increases the
`synthesis of proteins by fibroblasts.”); see also D.I. 1 ¶¶ 19-22 and Ex. 4. Indeed, two of
`Defendant’s patent applications (the “Galey” and “Cornell” applications), both of which relate to
`using adenosine to enhance skin, were rejected by the Patent Office over Plaintiffs’ asserted
`patents. See Ex. 11 (Galey) at 4-16; Ex. 12 (Cornell) at 3-5.
`Where Plaintiffs contend that Defendant was aware of the asserted patents, had its own
`related applications rejected over the asserted patents, failed to obtain a license from Plaintiffs,
`and then went ahead with its plans to make the Accused Products regardless, these rejected patent
`applications are critical to indirect infringement and willfulness. See, e.g., D.I. 31 at 12-17 (this
`Court’s Report and Recommendation referencing the same facts as critical to the same issues).
`Accordingly, Plaintiffs served several related document requests, as early as July 2019. See, e.g.
`Ex. 6 at RFP No. 43; Ex. 8 at RFP No. 1, 2, 13, 22, 23, and 32. To date, Defendant has not even
`produced the full file histories of these patents and patent applications.
`The parties met and conferred about this issue, and Defendant represented that it would
`supplement its production of file histories. Plaintiffs requested that Defendant also search the
`inventor files for at least the Galey and Cornell applications—both of which claim using adenosine
`to enhance skin, and both of which were rejected over the asserted patents—for responsive
`documents that are not in the public file histories and which relate to the benefits of adenosine,
`and Defendant’s knowledge of the asserted patents. Defendant refused, objecting that these
`inventor files are in the possession of a third party, its parent company L’Oréal S.A.
`That argument does not hold water for at least two reasons. First, the invention claimed in
`the Cornell patent application was invented by employees of Defendant L’Oreal U.S.A., not its
`parent company. Compare Ex. 13 with Ex. 14-16
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`, and it should finally
`search for relevant and responsive documents in the files of these inventors, whom Plaintiffs
`disclosed in their August 2019 initial disclosures, see Ex. 17.
`Second, with respect to the Galey application, this request is limited to the files of a single
`inventor (Mr. Galey), see Ex. 10, and these files are particularly important both because the Galey
`application is the first L’Oréal patent or application to cite to or reference the asserted patents,
`and because Mr. Galey made extensive representations about the asserted patents in his efforts to
`obtain patent protection for his own, ultimately rejected invention. See Ex. 18. It is critical for
`Plaintiffs to know what responsive and relevant documents are in Mr. Galey’s files that are not
`part of the public file history. Defendant has represented and demonstrated it is readily able to
`obtain documents from L’Oréal S.A. See, e.g. Feb. 18, 2020 Hr. Tr. at 6:17-23 (“The one thing I
`would add, Your Honor, is as we noted in the papers, a part of what we have agreed to do is to
`produce documents without requiring plaintiffs to go through the Hague Commission to get
`documents from the parent company, L’Oreal S.A., and we have been doing that.”); see also
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`Defendant should not be permitted to pick and choose which documents it wants to
`produce, providing Plaintiffs with documents that may help its defense while refusing to search
`for and produce documents that tend to show its infringement has been willful.
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`3
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`Case 1:17-cv-00868-CFC-SRF Document 132 Filed 04/27/20 Page 4 of 4 PageID #: 4535
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`3. Organizational Charts
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`Plaintiffs served a request for Defendant’s organizational charts in July, and never received
`them. See Ex. 20 at RFP No. 35. Organizational charts are critical to prosecuting Plaintiffs’ case,
`because
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` In March 2020, and only after Plaintiffs filed a letter requesting a
`teleconference with the Court to address this issue, see D.I. 100, Defendant identified certain
`witnesses whose files it had searched for responsive documents. To date, Defendant has never
`supplemented its initial disclosures identifying which, if any witnesses, it may bring to trial, and
`which, if any witnesses may have discoverable information. Plaintiffs need this information to
`move forward with individual depositions.
`Indeed, the same information is critical to move forward Plaintiffs’ 30(b)(6) depositions of
`Defendant. Thus far, on the parties’ meet and confers about Plaintiffs’ deposition notice,
`Defendant has objected that Plaintiffs’ topics are unreasonably burdensome and will each require
`dozens of witnesses to testify from each individual brand owned by Defendant, because there is
`no overlap whatsoever between the personnel from these different brands. Defendant has used this
`claim to justify its delays in providing witnesses for deposition, although Defendant’s website
`suggests that there are individuals who oversee for, for example, marketing, finances, and research
`& innovation not at the individual brand level. See Ex. 22.4
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`For the reasons described above, Plaintiffs respectfully request the Court grant their
`motion.
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`Respectfully submitted,
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`/s/ Brian E. Farnan
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`Brian E. Farnan
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`cc: Counsel of Record (Via E-Mail)
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`4 Although Plaintiffs raised this issue on telephonic meet and confers, including on the April 14,
`2020 call, after Plaintiffs added this issue to the parties’ joint motion, Defendants claimed the
`parties had never discussed it. That is incorrect, see Ex. 23, and in any event is irrelevant, given
`that Plaintiffs immediately offered to meet and confer again about this narrow issue, which
`Defendant did not agree to do before the deadline for this letter. See Ex. 24.
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`4
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