Case 1:17-cv-00868-CFC-SRF Document 136 Filed 04/29/20 Page 1 of 5 PageID #: 4833
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`April 22, 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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`We write to respond to Defendant’s request that Plaintiffs collect documents from their
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`consulting experts that Plaintiffs are not in possession of, have no knowledge about, and therefore
`did not, and could not have, relied on to form the basis of their infringement contentions. As
`explained further below, Plaintiffs have gone above and beyond in providing substantial
`information to Defendants, and it is Defendants who have engaged in a pattern of delay, including
`refusing to disclose their technical information and theories to Plaintiffs.
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`1. Background
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`Plaintiffs served their initial infringement contentions in October 2019, which closely
`tracked the claim language of the asserted patents because—as Plaintiffs have long asserted—the
`claim language can and should easily be understood according to its plain and ordinary meaning.
`That interpretation was recently adopted by Judge Connolly during claim construction:
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`THE COURT: . . . [T]he method involve[s] the topically applying to the skin a
`composition that includes a concentration . . . and this is the key, the wherein clause,
`referring now to the adenosine concentration that is applied to the dermal cells,
`which is part of the skin, but what the wherein clause is defining is that the
`measurement is ten to the negative 4M to ten to the negative 7M when it comes to
`the ’327 patent, claim 1 . . . all of that falls within the composition, which is
`topically applied to the skin, and obviously, that is occurring through the epidermis,
`which is the outer layer of the skin. So I actually found this to be one of the cases
`where I thought it was very, very clear from the claim language itself . . . And I
`think the written description makes it clear that there is a penetration of the
`concentration from the epidermal through the skin to the dermal cells . . . I think
`the claim language here as I’ve just articulated is quite clear . . . .
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`See Apr. 6, 2020 Hr. Tr. 56:19-58:25; see also D.I. 114 (ordering plain and ordinary meaning).
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`Nonetheless, when this Court ordered Plaintiffs to “provide supplemental infringement
`contentions that serve the purpose of providing notice to the Defendants of the infringement
`contentions beyond the mere language of the claims,” Dec. 9, 2019 Hr. Tr. 36:1-14, Plaintiffs did
`so, serving amended contentions which set forth (consistent with claim construction ruling) that
`“[a]pplying the [relevant accused product] topically causes adenosine to penetrate through the
`epidermal layer to apply to the dermal cell layer in a concentration of approximately [the claimed
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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 136 Filed 04/29/20 Page 2 of 5 PageID #: 4834
`Case 1:17-cv-00868—CFC—SRF Document 136 Filed 04/29/20 Page 2 of 5 PageID #: 4834
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`numerical ranges].” D.I. 124 Ex. B. Although the Corut denied Defendant’s request for
`“production of the underlying test data,” Dec. 9, 2019 Hr. Tr. 36:15-17, in order to provide
`Defendant with as much notice as possible, Plaintiffs also produced the testing data they had
`received from their consulting experts, which is what Plaintiffs actually relied on for their
`infringement contentions. See D1. 124 Ex. C.
`Although Defendant protests it is prejudiced by these reports, its letter makes plain that the
`reports disclose substantial testing information,
`includin the methodolo
`used. Defendant
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`acknowledoes that the re 01ts show that
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`“protoco s” t at De e11 nt now
`ta,” “proce ures,” an
`T 5 rs precrse y t e “1111 er ying
`demands, and the same information that Plaintiffs relied on for their infringement contentions.
`Plaintiffs did not receive or rely 011 “other results” for their contentions, nor does Defendant
`articulate how it is prejudiced by not knowing, for example,—
`used.
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`After Plaintiffs made this production in December 2019, Plaintiffs explained to Defendant
`they had produced the full testing data they had relied on for their infringement contentions, and
`had no other such testing materials, save communications with their experts, which Defendant has
`repeatedly confirmed it
`is not seeking. Plaintiffs did not hear back from Defendant for
`approximately three months, and assumed the issue had been put to bed. See D.I. 124 Ex. G. When
`Defendant reiterated the same question months later, Plaintiffs reconfnmed that they had produced
`all the testing data they had actually relied on, but “we have some new testing results that we will
`produce to you this week.” 10’. Ex. J. Plaintiffs produced that m testing on April 10, 2020, as
`well as two other docmnents generated by their consulting experts, which are not infi‘ingement
`testing and which Plaintiffs did not rely on for contentions, which Plaintiffs provided in the interest
`of maximrmr disclosure. See id.
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`Defendant misleadingly characterizes these documents as “additional penetration testing
`of accused products .
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`. that appears to have been conducted nearly a year ago, in May 2019,” but
`does not attach the documents to its letter so the Court can see for itself. These docrunents are not
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`May 2019 penetration testing of accused products. The produced “new testing results,” D.I. 124
`Ex. J, are dated on their face March 30, 2020 (“Mar3020”). See Ex. 1. Plaintiffs had previously
`not been able to conduct testing of certain Accused Products because Defendant had discontinued
`them, but refused to provide samples of these products pursuant to Plaintiffs’ RFPS. See D.I. 123
`Ex. 8. Plaintiffs accused these products on the basis of their apparent similarity to other tested
`products, see D1. 124 Ex. B, and, once it was eventually able to fmd and test them, immediately
`produced the results to Defendant. The two other recently produced do not entail any testing
`whatsoever of the Accused Products, relating instead to some general background work conducted
`by Plaintiffs’ consulting experts in 2019 that Plaintiffs did not rely on for contentions. But mindful
`of the Court’s recent direction in the March teleconference, see Hr. Tr. 51 :5—54:23, Plaintiff
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`decided to produce them.
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`Case 1:17-cv-00868-CFC-SRF Document 136 Filed 04/29/20 Page 3 of 5 PageID #: 4835
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`Defendant has the testing data that Plaintiffs actually relied on for their infringement
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`contentions, as well as the other documents Plaintiffs received from their consultant lab, save
`privileged communications. Defendant now asks the Court to order Plaintiffs to collect additional,
`unknown documents from their consulting experts, that Plaintiffs did not rely on for their
`infringement contentions. For the reasons explained below, that request should be denied.
`2. Rule 26(b)(4)(B) Protects Consulting Expert Materials
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`Contrary to Defendant’s assertion, Plaintiffs have certainly not agreed to waive work-
`product or other privilege protection over its expert materials. Rule 26(b)(4)(B) provides that “a
`party may not, by interrogatories or deposition, discover facts known or opinions held by an expert
`who has been retained or specially employed by another party in anticipation of litigation or to
`prepare for trial and who is not expected to be called as a witness at trial.” It “precludes discovery
`against an expert informally consulted in preparation for trial.” In re Cendant Corp. Sec. Litig.,
`343 F.3d 658, 665 n.7 (3d Cir. 2003). The rule applies where a party has “not yet decided” whether
`to designate a consulting expert as a testifying expert. United States v. 215.7 Acres of Land, More
`or Less, Situate in Kent Cty., State of Del., 719 F. Supp. 273, 280 (D. Del. 1989) (“[W]hen and if
`the Government decides that these experts will be called at trial, the Bergolds will be entitled to
`certain information regarding their testimony.”). The only exception to this rule is “upon a showing
`of exceptional circumstances under which it is impracticable for the party seeking discovery to
`obtain facts or opinions on the same subject by other means.’” Cendant, 343 F.3d at 665 n.7
`(quoting Fed. R. Civ. Pro. 26(b)(4(B)). “Once such a showing has been made, a court, before
`ordering discovery, must analyze the policy considerations underlying the rule to determine
`whether they outweigh the exceptional circumstances.” Id.
`The consulting expert rule is “designed to promote fairness by precluding unreasonable
`access to an opposing party’s diligent trial preparation.” Bio-Tech. Gen. Corp. v. Novo Nordisk,
`No. 02-235-SLR, 2003 WL 21057238, at *2 (D. Del. May 7, 2003) (citing Advisory Committee
`Notes, Fed .R. Civ. P. 26(b)(4)(B); Ager v. Jane C. Stormont Hosp. & Training School for Nurses,
`622 F.2d 496, 502 (10th Cir.1980)). It is unsettled “whether Rule 26(b)(4)(D) is even subject to
`waiver,” but the “general trend” is “to find that it is not.” Eidos Display, LLC v. Chunghwa Picture
`Tubes, Ltd., 296 F.R.D. 3, 7-8 (D.D.C. 2013) (citing cases from all over the country denying
`discovery from consulting experts). But even where some courts do find waiver, it is limited to the
`specific consultant documents put at issue. See generally id. at 8-9 (“[T]o the extent that Eidos has
`waived anything, it has only waived Dr. Rubloff’s Declaration itself.”) (discussing cases).
`Gillette Co. v. Dollar Shave Club, Inc., No. CV 15-1158-LPS-CJB, 2018 WL 3528720 (D.
`Del. July 23, 2018), which Defendant relies on heavily, is entirely consistent with the rule as
`explained above, and supports Plaintiffs. In Gillette, the plaintiff incorporated “select images—
`from testing performed by non-testifying experts—into its infringement contentions,” which
`“waived any protection that may have once applied to the disclosed images.” Id. at *1. The parties
`in Gillette appear to have agreed that plaintiff actually relied on unproduced “documents regarding
`[its consultant’s] tests, such as those regarding testing conditions and protocols, the underlying
`data, other images, or tests reports.” See D.I. 548; D.I. 552. Accordingly, the Gillette plaintiff was
`ordered to produce the documents subject to their limited waiver, i.e., the “documents that form
`the bases of its infringement contentions,” which in that case apparently included protocols, other
`images, and test reports in the plaintiff’s possession that had not been produced. Id.
`Here, Plaintiffs have already produced the “documents that form the bases of its
`infringement contentions”: the very “test reports” Defendant attached to its letter, which reflect
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`Case 1:17-cv-00868-CFC-SRF Document 136 Filed 04/29/20 Page 4 of 5 PageID #: 4836
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`“testing conditions and protocols” and the “underlying data” on which Plaintiffs relied. What
`Defendant is actually asking the Court to order is for Plaintiffs to collect new documents from its
`consulting experts, which Plaintiffs did not rely on for their infringement contentions, and produce
`those. Defendant cites no authority supporting such a request,2 which contravenes the purpose of
`the rules to allow “counsel to obtain the expert advice they need to properly evaluate and present
`their clients’ positions without fear that every consultation with an expert may yield grist for the
`discovery mill.” Cendant, 343 F.3d at 665 n.7 (quoting Moore’s Federal Practice § 26.80[2] at
`26–236.5). Defendant has not even tried to show “exceptional circumstances,” nor could it. See
`Higher One, Inc. v. TouchNet Information Systems, Inc., 298 F.R.D. 82 (W.D. N.Y. 2014)
`(“Patentees failed to demonstrate exceptional circumstances that would justify discovery from
`adversary’s non-testifying consultant. The subpoena served on the expert would therefore be
`quashed.”); Wright & Miller Federal Practice and Procedure § 2032 (“[O]rdinarily each party has
`a full opportunity to retain its own experts; unlike fact witnesses they are not unique and, in an era
`when experts’ services are widely marketed, the supply of potential witnesses is often large.”).
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`3. Defendant’s Claims of Prejudice are Backwards
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`Defendant, without elaborating precisely what trial preparation it is unable to perform
`given the substantial information Plaintiffs have provided, claims prejudice purportedly justifying
`delaying the trial. In fact, it is Plaintiffs who are prejudiced by Defendant’s failure to provide
`discovery, including into its adenosine testing and technical theories of the case.
`For example, Defendant complains about Plaintiffs’ response to Defendant’s overbroad
`Interrogatory No. 8, which asked Plaintiffs to catalog in extensive detail all facts regarding “any
`research, studies, evaluations, market research, analysis, development, manufacture, formulation,
`testing (including the methodologies used and the results thereof), and the like.” See D.I. 124 Ex.
`I. Defendant waited until late February to serve this Interrogatory, Plaintiffs timely responded by
`identifying responsive documents pursuant to Rule 33(d), and when Defendant demanded a
`supplement, Plaintiffs agreed. In contrast, in July 2019, Plaintiffs served an interrogatory asking
`Defendant to describe its “testing, including the methodology and results, regarding or relating to
`adenosine’s effect on human skin,” and to date, the only response Defendant has provided is to
`deny it has conducted any such testing, which is directly contradicted by its own public and
`produced documents. See Ex. 4 at Interrogatory No. 5; see also Ex. 3; D.I. 123 at 2. Similarly,
`where Plaintiffs have provided a response to Defendant’s invalidity interrogatory that is consistent
`with the Court’s claim construction order, see Ex. 7, and has agreed to supplement further,
`Defendant’s response to Plaintiffs’ corresponding infringement interrogatory (which Plaintiffs
`served months before Defendant’s invalidity interrogatory) is evasive and inconsistent with the
`claim construction order, but Defendant refuses to even discuss it with Plaintiffs. See Ex. 5 at
`Interrogatory No. 14; Ex. 6.
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`In short, the only prejudicial delay is Defendant’s, and its requests should be denied.
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`2 Save Gillette, which supports Plaintiffs, Defendant cites only two cases, Mercy Catholic Med.
`Ctr. v. Thompson, 380 F.3d 142 (3d Cir. 2004) and Duarte v. St. Paul Fire & Marine Ins. Co., No.
`EP-14-CV-305-KC, 2015 WL 7709433 (W.D. Tex. Sept. 25, 2015), neither of which order the
`collection of documents from a consulting expert. Mercy did not involve expert documents, and
`Duarte required the collection of documents from a testifying expert.
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`Case 1:17-cv-00868-CFC-SRF Document 136 Filed 04/29/20 Page 5 of 5 PageID #: 4837
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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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