Case 1:17-cv-00868-CFC-SRF Document 133 Filed 04/27/20 Page 1 of 4 PageID #: 4716
`
`Frederick L. Cottrell III
`302-651-7509
`Cottrell@rlf.com
`
`April 20, 2020
`
`VIA CM/ECF
`
`The Honorable Sherry R. Fallon
`District Court of Delaware
`J. Caleb Boggs Federal Building
`Wilmington, DE 19801-3567
`
`PUBLIC REDACTED VERSION
`
`Re: Univ. of Massachusetts et al. v. L’Oréal USA, Inc., C.A. No. 17-868-CFC-SRF
`
`Dear Judge Fallon:
`
`I write on behalf of Defendant L’Oréal USA, Inc. (“L’Oréal USA”) to respectfully
`request that the Court order Plaintiffs to (1) produce the non-privileged, basic factual information
`underlying the testing affirmatively disclosed and relied on as their sole basis for asserting
`infringement and (2) meet and confer with L’Oréal USA regarding an appropriate extension of
`the case schedule to propose to Judge Connolly to ameliorate the prejudice already suffered as a
`result of Plaintiffs’ failure to timely produce such information.1 (See Ex. 1 (Proposed Order).)
`
`The patents-in-suit are directed to topically applying compositions containing adenosine
`for “enhancing the condition” of skin “wherein the adenosine concentration applied to the dermal
`cells is,” e.g., 10-4 M to 10-7 M (the “concentration claim language”). Plaintiffs’ sole basis for
`asserting more than 150 L’Oréal USA products infringe the concentration claim language (i.e.,
`the sole basis for bringing this lawsuit) is testing conducted by one or more of Plaintiffs’ experts.
`(See, e.g., Ex. A at 1[f], 3; Ex. B at 1-2, 5; Ex. C, ADENOSINE_00003794.) Because Plaintiffs’
`testing formed the sole basis for their infringement allegations, and they affirmatively relied on
`and disclosed such testing in their infringement contentions, Plaintiffs have (and appear not to
`contest that they have) waived any work-product protection for the information underlying the
`testing. See, e.g., Gillette Co. v. Dollar Shave Club, Inc., No. 15-1158-LPS, 2018 WL 3528720,
`at *1 (D. Del. July 23, 2018) (ordering the production of “documents that form[ed] the bases of
`[Plaintiff’s] infringement contentions” where Plaintiff “incorporated” select materials “from
`testing performed by non-testifying experts . . . into its infringement contentions”).2 Despite not
`contesting that the factual information underlying their testing is within their control and not
`protected, Plaintiffs have continually resisted producing this basic information for the past six
`months, thereby prejudicing L’Oréal USA’s ability to prepare its defenses.
`
`1 To the extent an appropriate extension cannot be granted, given Plaintiffs’ evasive conduct
`and failure to timely produce that information to L’Oréal USA’s significant prejudice, L’Oréal
`USA requests in the alternative that Plaintiffs be precluded from relying on their infringement
`testing in this action.
`2 The briefing in Gillette makes clear that the defendants were seeking “documents regarding
`[Plaintiff’s] tests, such as those regarding the testing conditions and protocols, the underlying
`data, other images, or test reports.” (D.I. 68, Ex. 11 at Brief Page 1.)
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 133 Filed 04/27/20 Page 2 of 4 PageID #: 4717
`
`The Honorable Sherry R. Fallon
`April 20, 2020
`Page 2
`
`1.
`
`Plaintiffs Have Consistently Attempted to Hide
`Their Infringement Theories and Related Factual Information
`
`For the concentration claim language, Plaintiffs’ initial infringement contentions (served
`
`on October 10, 2019) simply parroted back that language and cited “forthcoming expert
`disclosures” in each of the 268 infringement claim charts they served. (See, e.g., Ex. A at 1[f], 3;
`D.I. 68 at 1.) When notified of their deficient contentions, and following a meet and confer,
`Plaintiffs provided L’Oréal USA only a chart containing numbers that purport to reflect the final
`results of analytical testing. (See Ex. D at 1-2 (Nov. 13 T. Lusztig Email to S. Polatoglu); Ex. E,
`Plaintiffs’ number chart.) This belated disclosure, made on November 13, 2019, established that
`expert testing was in fact the sole basis for Plaintiffs’ infringement contentions. Nevertheless,
`Plaintiffs refused to supplement their contentions or provide certain basic information
`concerning this testing, even though they had agreed to produce “the data that [they] relied on to
`form the basis of [their] belief that these limitations are met.” (See Ex. F at 1 (Nov. 8 T. Lusztig
`Email to S. Polatoglu).) As a result, L’Oréal USA was forced to seek relief from the Court,
`which in turn ordered Plaintiffs to supplement their infringement contentions. (Dec. 9 Hearing
`Tr. 36:5-14.)
`
`Following the Court’s Order, Plaintiffs supplemented their infringement contentions and
`expressly relied on the results of their expert testing, citing both the previously disclosed chart
`and documents reflecting only the high-level results of the testing relied on and disclosed by
`Plaintiffs. (See, e.g., Ex. A at 1[f], 3; Ex. B at 1-2, 5, Ex. C, ADENOSINE_00003794.)
`Importantly, though, the cited documents did not include documents concerning basic facts about
`the testing relied on by Plaintiffs, including the testing conditions and protocols, underlying data,
`other results, and laboratory notebooks that L’Oréal USA had been explicitly requesting since
`November, and such information is indisputably not provided in, or apparent from, the produced
`documents.3 (See, e.g., Ex. D at 1, Nov. 14 Email from S. Polatoglu to Counsel; D.I. 68 at 3; Ex.
`C, ADENOSINE_00003794.) Accordingly, L’Oréal USA reiterated its request that Plaintiffs
`produce such information without further delay. (Ex. G at 1-2, Dec. 31 Email from N.
`Tymoczko to Counsel (“Please confirm that Plaintiffs will promptly produce the documents and
`information created in the connection with that testing, including, for example, testing conditions
`and protocols, underlying data, other results, and laboratory notebooks.”).) In response,
`Plaintiffs represented that they “produced all of the testing data that Plaintiffs received and relied
`on for infringement contentions. Save communications with its consulting experts, which
`L’Oreal represented to the Court it is not seeking production of, Plaintiffs have no other
`materials related to this testing.” (Id. at 1, Jan. 7 Email from T. Lusztig to N. Tymoczko
`(emphasis added).)
`
`
`
`3 This information includes, for example, (1) the experimental protocols to understand how
`the tests were conducted, (2) details regarding the type and source of
` skin referenced
`in the summary charts Plaintiffs produced, (3) information regarding how Plaintiffs’ expert(s)
`prepared the products they tested, including how they added what they refer to as
`
` to the accused products, and (4) the specific analytical techniques and procedures used in
`the experiments.
`
`

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`Case 1:17-cv-00868-CFC-SRF Document 133 Filed 04/27/20 Page 3 of 4 PageID #: 4718
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`The Honorable Sherry R. Fallon
`April 20, 2020
`Page 3
`
`Based on Plaintiffs’ representation, L’Oréal USA diligently attempted to surmise the
`missing information. For example, because Plaintiffs previously agreed to produce documents
`“within Plaintiffs’ possession, custody, or control” “[c]oncerning any testing or analysis of any
`Accused Product” (Ex. H, Supplemental Response to RFP No. 121), L’Oréal USA reviewed the
`documents produced by the document production deadline in February to identify informative
`documents with respect to the testing. Plaintiffs produced no such documents.4 As a result,
`L’Oréal USA was forced once again to raise with Plaintiffs their failure to produce documents
`concerning the facts and circumstances of its infringement contention testing.5 (Ex. J, Mar. 27 to
`Apr. 13 Email Correspondence between the parties.) Although Plaintiffs continued their
`attempts to evade this issue, it eventually became clear that Plaintiffs were simply refusing to
`produce documents that necessarily exist under the guise that those documents are in their
`experts’—and not Plaintiffs’—possession.
`
`Plaintiffs Should Be Required to Produce
`Their Infringement Contention Testing Documents
`
`Having put their own testing at issue to justify bringing this lawsuit, Plaintiffs cannot
`now contend that underlying factual information, including basic facts about the conditions and
`conduct of the disclosed-and-relied-upon testing, is protected from disclosure.6
`
`Having abandoned their initial argument to avoid disclosure (i.e., work-product
`protection), Plaintiffs now appear to be taking the remarkable position that they need not provide
`the requested information because it is in their experts’ hands, and Plaintiffs are somehow not
`obliged to ask for it. This argument defies logic. It is undisputed that Plaintiffs have engaged
`one or more experts to conduct testing on their behalf, received documents from their experts
`regarding that testing, and affirmatively relied on it in their infringement contentions. It is
`likewise undisputed that Plaintiffs could in fact simply also ask their experts for these additional
`
`2.
`
`
`4 Confronted with Plaintiffs’ consistent and ongoing refusal to provide information necessary
`to understand their infringement contentions, L’Oréal USA also served an interrogatory seeking
`information regarding Plaintiffs’ infringement tests. (Ex. I, Interrogatory No. 8.) Plaintiffs’
`interrogatory response did not, however, provide the requested information or even address their
`infringement contention testing concerning the concentration claim language, nor did it identify
`any documents related to this testing, notwithstanding Plaintiffs’ reliance on Rule 33(d). (Id.)
`Although Plaintiffs provided no excuse for their failure to properly respond to this interrogatory,
`on April 13, Plaintiffs agreed to supplement their interrogatory response. L’Oréal USA has yet
`to receive that supplementation, and such supplementation would in any event be inadequate
`because, without a Court order, L’Oréal USA will very likely continue to receive incomplete
`information.
`5 To make matters worse, on April 10, Plaintiffs produced documents concerning additional
`penetration testing of accused products—which Plaintiffs represented on January 7 did not
`exist—that appears to have been conducted nearly a year ago, in May 2019.
`6 To be clear, L’Oréal USA is not seeking communications with Plaintiffs’ experts or draft
`reports, but rather factual information underlying the testing Plaintiffs have put at issue.
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 133 Filed 04/27/20 Page 4 of 4 PageID #: 4719
`
`The Honorable Sherry R. Fallon
`April 20, 2020
`Page 4
`
`materials, and that their experts would in turn provide them, but that Plaintiffs are unwilling to
`do so until expert discovery.
`
`Plaintiffs should not be able to use the fiction that these documents are not in their
`“possession, custody, or control” to avoid disclosure, as the required materials are in Plaintiffs’
`control and have already been at issue in this case for more than six months. See, e.g., Mercy
`Catholic Med. Ctr. v. Thompson, 380 F.3d 142, 160 (3d Cir. 2004) (“In the context of
`Fed.R.Civ.P. 34(a), so long as the party has the legal right or ability to obtain the documents
`from another source upon demand, that party is deemed to have control.”); Duarte v. St. Paul
`Fire & Marine Ins. Co., No. EP-14-CV-305-KC, 2015 WL 7709433, at *5 (W.D. Tex. Sept. 25,
`2015) (holding that a party’s expert’s documents are within the “control” of that party under
`Rule 34, and rejecting the argument that the party did “not have the legal right to demand
`production of the [documents] from [their expert] solely because he is [the party’s] expert”).
`
`Plaintiffs’ continual refusal to produce this basic information—months after they were
`required to do so under the Scheduling Order (D.I. 46)—has severely prejudiced L’Oréal USA
`by limiting its ability to prepare its defenses. The prejudice is especially acute here given the
`short time between the close of fact discovery and expert reports, and in view of Plaintiffs’
`ongoing refusal to provide any modifications to the case schedule.7
`
`Given Plaintiffs’ “evasive or incomplete disclosure, answer, or response” under Fed. R.
`Civ. P. 37(c)(1)(C), L’Oréal USA respectfully requests that Plaintiffs be required to (1) produce
`the requested documents immediately and (2) meet and confer regarding an appropriate
`extension of one to two months to the case schedule to be proposed to Judge Connolly or,
`alternatively, that Plaintiffs be precluded from relying on their infringement testing in this case.
`
`
`
`Respectfully,
`
`/s/ Frederick L. Cottrell, III
`
`Frederick L. Cottrell, III (#2555)
`
`
`cc: Counsel of Record (via CM/ECF and E-Mail)
`
`
`
`7 Given the significant complications from the current health crisis, including the need to take
`and defend potentially more than 30 depositions over the next 30 days, an extension of the case
`schedule is necessary. Notwithstanding their representation to the Court that they “are going to
`be more than reasonable to accommodate any type of discovery extension or other manner to
`accommodate the challenges that [the health crisis] is going to impose on all of us” (Mar. 26
`Hearing Tr. at 82:17-20), Plaintiffs have refused to work with L’Oréal USA on such extensions.
`Moreover, Plaintiffs’ refusal to provide the requested testing information has only exacerbated
`the difficulties facing L’Oréal USA during this time period.
`
`