Case 1:17-cv-00868-CFC-SRF Document 135 Filed 04/28/20 Page 1 of 4 PageID #: 4789
`Case 1:17-cv-00868-CFC-SRF Document 135 Filed 04/28/20 Page 1 of 4 PageID #: 4789
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`FARNANW
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`April 21, 2020
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`VIA E—FILIJNG
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`The Honorable Sherry R. Fallon
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`J. Caleb Boggs Federal Building
`844 N. King Street
`Wihnington, DE 19801-3568
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`FILED UNDER SEAL
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`RE:
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`University ofMassachusetts Medical School, et al. v. L '0re'al S.A., et a1.
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`1C.A. No. 17-cv—868-CFC-Sflj)
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`Dear Magistrate Judge Fallon:
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`We write to provide an update on the issues that were raised during the March 26, 2020
`conference, and renew certain requests that the Comt previously denied without prejudice.
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`l. Defendant’s Production of Marketing: Sales: and Business Documents
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`This Court previously ordered Defendant to produce “all outstanding technical and
`financial information for each of the Accused Products, including officialization documents,
`formulation lists, product packaging, marketing materials, and product testing materials on or
`before February 28, 2020.” Nonetheless, at the March teleconference, the Court denied Plaintiffs’
`request for the production of further marketing and business materials from Defendant without
`prejudice to Plaintiffs articulating a more specific request, including because of Defendant’s
`representation that the parties had agreed that Defendant would substantially limit its production.
`After the hearing, Plaintiffs reviewed the correspondence reflecting this purported agreement,
`which Defendant mischaracterized. In October, the parties agreed that Defendant would make a
`“targeted” production in response to Plaintiffs’ RFP. No. 31, that “would include” (not be limited
`to) “product packaging and launch materials.” See Ex. 1. The parties made no such agreement with
`respect to Plaintiffs’ other requests for marketing, sales, and business documents. See, e.g., D.I.
`120 at Ex. 6 RFP No. 40, 41, 42, and 66. Nor did the parties agree Plaintiffs would be precluded
`from requesting anything further. On the parties’ recent calls, Defendant represented that its
`production is limited to a unilaterally-selected “sampling” of packaging and launch materials, and
`that Plaintiffs waived their right to finther discoverable materials by agreeing Defendant’s
`production could be “targeted” with respect to RFP No. 31. After Plaintiffs pointed out they had
`not even received “launch materials” for a large nlunber ofAccused Products, see Ex. 2, Defendant
`agreed to search for and produce missing launch materials.
`Pursuant to the Court’s order, Plaintiffs specifically requested docmnents reflecting
`Defendant’s strategic business plans for the Accused Products, such as product differentiation,
`sales projections and forecasts, and product timelines. See March 26, 2020 Hr. Tr. at 39:8-24.
`Defendant’s docmnent retention policies—which Plaintiffs only received last month—indicate
`that it creates such documents. These documents provide the business justification for nascent
`and/or in develo ment
`roducts. See, e.
`. Ex. 3 at 5 -”); Ex. 4 at 5_
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`fl”). Save some generic, limited statements inthe launch
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`reduced such
`materials, see, e.g., Ex. 6 (launch book for Lancome , Defendant has not
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`documents. See also Ex. 9 at 11
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`Case 1:17-cv-00868-CFC-SRF Document 135 Filed 04/28/20 Page 2 of 4 PageID #: 4790
`Case 1:17-cv-00868—CFC—SRF Document 135 Filed 04/28/20 Page 2 of 4 PageID #: 4790
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`Plaintiffs raised these documents with Defendant on their April 14, 2020 call. Defendant
`would not confirm whether it is willing to search for and produce these documents. When Plaintiffs
`raised the issue again, asking for a status update on the parties’ April 20, 2020 call, Defendant
`claimed this was a “new” issue, and refused to discuss it further. Defendant’s position is incorrect
`on both fronts. See Ex 2; D1. 103 at 2 (requesting, for example, “strategic business plans, and
`forecasts regarding customer demand for the Accused Products”).
`Plaintiffs request the Court order Defendant produce business strategy documents related
`to the Accused Products, including documents reflecting product differentiation, sales projections
`and forecasts, and product timelines. These documents go directly to the benefits of the Accused
`Products and adenosine, as well as damages for any Georgia-Pacific analysis.
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`2. Defendant’s Production of Testing Materials
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`The parties have met and conferred about this issue, and Defendant represented that,
`despite public statements on its websites that certain Accused Products are supported by clinical
`testing, which does not appear to have been produced, it has not been able to locate any further
`clinical testing. Similarly, Defendant represented that it has not conducted adenosine penetration
`testing. Accordingly, Plaintiffs do not currently seek relief on these issues, without prejudice to
`renewing its requests should new information come to light.
`One narrow category of testing documents remains, which relates to testing conducted by
`a former L’Oréal S.A. employee, M.L. Abella. Defendant cites this testing on its own website as
`demonstrating that adenosine enhances the condition of skin, the claimed ob'ect of the asserted
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`atents. See D1. 120 at Ex. 1.
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`See Ex. 7. Plaintiffs
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`identified Abella in their initial disclosures, but Defendant has not searched Abella’s files for
`documents related to her adenosine research, although its document retention policies indicate it
`maintains such documents. See D.I. 120 at Ex. 7 at 1—2. Defendant appears to argue that documents
`summarizing or generally referring to Abella’s research, such as her brief public article, should
`suffice, but Plaintiffs are entitled to see the complete research that Defendant relies on to support
`its statements about the skin-enhancing properties of adenosine.
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`3. Defendant’s Production of Communications With and About the FTC Investigation
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`At the last hearing, this Court denied without prejudice Plaintiffs’ request regarding
`government investigations into the accused products, and asked Plaintiffs to narrow the request.
`Plaintiffs have now done so, limiting the request to communications related to one particular
`investigation. Yet Defendant is still refusing to produce these highly relevant documents.
`Around 2014, the FTC alleged that Defendant misled the public with respect to its claims
`about the anti-aging aspects of its products. That investigation appears to have concluded with an
`order that Defendant support such public anti—aging claims with “competent and reliable scientific
`evidence.” See D1. 103 Ex. J. Plaintiffs’ request is limited to Defendant’s internal and external
`communications about that specific FTC investigation. Communications about this investigation
`are not cumulative—no such documents have been produced—and they are highly relevant, as
`they relate to Defendant’s representations about the anti-aging properties of the Accused Products,
`including whether that effect is achieved through adenosine or through yet unidentified non-
`infringing alternatives. Indeed, it is difficult to think of more relevant documents than what the
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`Case 1:17-cv-00868-CFC-SRF Document 135 Filed 04/28/20 Page 3 of 4 PageID #: 4791
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`Defendant said about the Accused Products in an investigation into their anti-aging benefits—the
`very benefit offered by the inclusion of adenosine in the Accused Products. The information
`Defendant relied on to support its claims—and must continue to rely on under the FTC Order—
`goes to the heart of Plaintiffs’ case.
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`4. Defendant’s Request for Documents Regarding the Teresian Carmelites
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`Plaintiffs sent Defendant an edited stipulation a few days after the last teleconference,
`making it clear precisely which narrow issues related to the Teresian Carmelites Plaintiffs believe
`are relevant: the founding of Carmel Labs, including that it was founded to support the Teresian
`Carmelites, which is a monastery, and communications between Defendant and Carmel Labs
`(which mention the Teresian Carmelites). Plaintiffs have produced all relevant documents into
`those subjects. See Ex. 5. These representations make clear that Defendant’s broad requests—
`which seek, for example, all documents related to a witness’ decision to “cease monastic life,” and
`related to the Teresian Carmelites’ financial condition—are overbroad and irrelevant. Defendant
`refused to sign a stipulation containing language in which both parties agreed these issues are
`irrelevant, but to date has never served the narrow, revised requests the Court ordered, nor is it
`clear what more those requests would ask for, given Plaintiffs’ representations.
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`5. The Case Schedule
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`Plaintiffs are approaching the three-year anniversary of filing suit. Defendant has been
`angling to delay this case since discovery began, when the Court denied its request for an extended
`schedule and ordered a reasonable, 18-month schedule. Since that time, Defendant has engaged in
`a pattern of repeated delay, failing to produce documents on the Court-ordered schedule, refusing
`to accommodate Plaintiffs’ repeated requests to meet and confer or file joint letters requesting
`Court intervention on ripe discovery disputes, and changing its position repeatedly. See Ex. 8.
`Now Defendant wants to be rewarded for that bad behavior with a delayed trial. See Hon.
`Colm F. Connolly summary judgment rule (parties will “lose their trial date” and “no new trial
`date will be given” until dispositive motions are decided if the dispositive motion deadline is
`extended). Plaintiffs remain ready and willing to work through any genuine concrete scheduling
`issues that arise, but Defendant has not raised any. The fact that the parties are now approaching
`the end of fact discovery with a lot of work left to do is not a reason for delay—it is a reason for
`the parties to work together cooperatively and quickly to get the work done. If specific issues arise,
`Plaintiffs explained to Defendant that there is likely room in the current schedule for an additional
`two weeks of targeted depositions without moving the deadline for dispositive motions or the trial
`date. But to date, Defendant has not raised any such concrete issues, instead seeking a blanket
`extension for no particular purpose. Although Defendant now claims its request is necessitated by
`a purported delay in Plaintiffs providing Defendant with infringement testing materials, Plaintiffs
`provided Defendant with the same materials they relied on for their infringement contentions in
`December, Defendant let the issue lie for months, and only now, when it is trying to justify a
`substantial delay, does it cry prejudice. This Court’s General Order makes clear that all deadlines
`remain in force. Plaintiffs just prevailed at the Markman hearing, and want to press forward with
`the case under the Court’s existing deadlines. While Plaintiffs will remain flexible on particular
`needs, it would be unfair and prejudicial to Plaintiffs to delay the trial at this point—particularly
`where Plaintiffs have been pushing Defendant for months to produce discovery.
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`Case 1:17-cv-00868-CFC-SRF Document 135 Filed 04/28/20 Page 4 of 4 PageID #: 4792
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`cc: Counsel of Record (Via E-Mail)
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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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`4
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