Case 1:17-cv-00868-CFC-SRF Document 137 Filed 04/29/20 Page 1 of 3 PageID #: 4863
`
`Frederick L. Cottrell III
`302-651-7509
`Cottrell@rlf.com
`
`April 22, 2020
`
`VIA CM/ECF
`The Honorable Sherry R. Fallon
`District Court of Delaware
`J. Caleb Boggs Federal Building
`Wilmington, DE 19801-3567
`
`REDACTED VERSION
`
`Re: University of Massachusetts and Carmel Laboratories, LLC v. L’Oréal USA, Inc.,
`C.A. No. 17-868-CFC-SRF
`
`Dear Judge Fallon:
`
`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
`April 20, 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.
`
`1. L’Oréal USA’s Product Development Records
`
`Plaintiffs have misrepresented the parties’ meet and confers on this dispute, and also
`expanded their request for documents beyond those previously sought. As an initial matter,
`L’Oréal USA has already produced extensive information regarding the accused products,
`including, but not limited to, officialization documents (which show the composition of each
`product), product packaging, marketing materials (in accordance with the parties’ agreement
`discussed below), and product testing. During the April 14 meet and confer, Plaintiffs explained
`that they were now requesting that L’Oréal USA collect any and all documents related to the
`development of the more than 150 accused products in this case.1 L’Oréal USA explained the
`overbroad and unduly burdensome nature of this request, including the difficulties associated
`with L’Oréal USA even attempting to search for such documents. Plaintiffs then proposed a
`compromise, requesting that L’Oréal USA provide additional details in response to Interrogatory
`No. 6 regarding why adenosine is generally used in L’Oréal USA products. Contrary to
`Plaintiffs’ assertion (D.I. 120 at 1-2), L’Oréal USA never “withdrew” any offer to supplement its
`response to Interrogatory No. 6; instead, the parties’ correspondence makes clear that L’Oréal
`USA was considering Plaintiffs’ proposal. (D.I. 120, Ex. 9 at 4, April 17 S. Polatoglu Email to
`Counsel (“Plaintiffs offered that L’Oréal USA could supplement its response to Interrogatory
`No. 6 as a ‘compromise.’ L’Oréal USA is considering this proposal.”).) L’Oréal USA intends to
`provide such a supplementation to Interrogatory No. 6, which would resolve this dispute based
`on Plaintiffs’ compromise offer.
`
`Unfortunately, however, in what has become a recurring theme in this case, Plaintiffs
`
`1 The document requests identified in Plaintiffs’ letter do not encompass the overbroad discovery
`Plaintiffs currently seek. (D.I. 120, Ex. 8 at RFPs No. 27, 32; Ex. 6 at RFPs No. 53, 59.)
`
`

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`Case 1:17-cv-00868-CFC-SRF Document 137 Filed 04/29/20 Page 2 of 3 PageID #: 4864
`The Honorable Sherry R. Fallon
`April 22, 2020
`Page 2
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`now seek discovery even beyond that discussed during the meet and confers. Specifically, under
`the guise of seeking “product development documents,” Plaintiffs are requesting extensive
`amounts of marketing information (e.g.,
`
`
`
`). (D.I. 120 at 2.)2 As L’Oréal USA previously explained, the parties
`reached an agreement in October 2019 to produce a sampling of marketing documents for each
`of the accused products. L’Oréal USA assumed the parties had reached that agreement in good
`faith, and it has worked diligently since October to produce marketing materials for more than
`150 accused products, which it has done. At no time during that production did Plaintiffs
`complain that L’Oréal USA was providing the wrong documents or that they wished to expand
`the scope of the parties’ agreement. Nonetheless, and despite the Court already ruling on this
`issue during the discovery conference held on March 26, L’Oréal USA has agreed to search for
`any additional launch books for the accused products.
`
`
`
`2. L’Oréal S.A.’s Patent Records and L’Oréal USA’s Inventor Files
`
`Plaintiffs’ request that L’Oréal USA search the files of four individuals listed as inventors
`on the Galey and Cornell applications—which were filed more than 15 years ago—for
`documents that may reference the patents-in-suit is a fishing expedition. Plaintiffs assert that
`these applications are somehow relevant to their willfulness allegations because both received
`rejections from the Patent Office over one of the patents-in-suit, and the Galey application
`referenced one of those patents in a short paragraph discussing the prior art. To the extent there
`is any relevant information regarding the Galey and Cornell applications, however, such
`information is contained in the patent prosecution files already produced by L’Oréal USA.3
`Further, L’Oréal USA has already searched L’Oréal USA and L’Oréal S.A.’s central repository
`for research relating to adenosine, and produced any of those documents that were related to the
`Galey and Cornell applications months ago, to the extent they exist. For example, L’Oréal USA
`produced an official report relating to the experiment reported in the Galey application.
`(Compare Ex. A at 7, 10-11 with D.I. 120, Ex. 10 at [0047]-[0067], Figure.)
`
`During the April 14 meet and confer, Plaintiffs asked L’Oréal USA to search the
`inventors’ files from more than 15 years ago for any documents that reference or discuss the
`
`
`2 Indeed, Plaintiffs’ reference to L’Oréal USA’s document retention policies is a red herring
`meant to imply that L’Oréal USA is withholding relevant documents, which it is not. For
`example, Plaintiffs list
`
`
`
` but L’Oréal USA has produced several hundred pages of such
`
`documents. (E.g., Ex. A.)
`
` 3
`
` After L’Oréal USA realized that a technical glitch had prevented complete production of
`certain patent prosecution documents, L’Oréal USA notified Plaintiffs of this issue during the
`April 14 meet and confer and that it was in the process of being remedied. (D.I. 120, Ex. 9 at 4,
`April 17 S. Polatoglu Email to Counsel.) As of this filing, L’Oréal USA has produced the
`remaining non-privileged patent prosecution documents, none of which pertain to the Galey or
`Cornell applications.
`
`
`

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`Case 1:17-cv-00868-CFC-SRF Document 137 Filed 04/29/20 Page 3 of 3 PageID #: 4865
`The Honorable Sherry R. Fallon
`April 22, 2020
`Page 3
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`patents-in-suit.4 (D.I. 120 at 3.) Despite yet another belated request for documents, and contrary
`to Plaintiffs’ allegations, L’Oréal USA did not “refuse[]” to search those files (id.), as even
`Plaintiffs’ own summary of that conference indicates (D.I. 120, Ex. 9 at 8, April 14 T. Lusztig
`Email to Counsel (“We explained we would like you to search the inventor files for the inventors
`on two L’Oreal patents . . . . You said you will consider this request.”)).
`
`L’Oréal USA has been investigating the feasibility of Plaintiffs’ request, including by
`attempting to determine what kind of “inventor files” may be available with respect to the Galey
`and Cornell applications, and what such a collection would entail under the unique circumstance
`presented by the ongoing global health crisis. For example, the inventors of the Cornell
`application left L’Oréal USA more than a decade ago (see, e.g., D.I. 120 at Exs. 14, 16), and
`identifying any relevant documents from the files of the Galey application’s inventors would
`involve searching nearly 20-year-old files that would exist in France.
`
`
`3. L’Oréal USA’s Organizational Charts
`
`Plaintiffs never raised the issue of organizational charts during the April 14 meet and
`confer. Defendants alerted Plaintiffs to this when they sought to include organizational charts in
`the joint motion to be filed with the Court. Nonetheless, in a follow up meet and confer
`discussion held on April 20, after Plaintiffs submitted their letter briefs seeking organizational
`charts, Plaintiffs finally discussed this issue with L’Oréal USA, noting that they were looking for
`organizational charts for the marketing, financial and R&I divisions of L’Oréal USA going back
`to 2011—6 years from the filing of the lawsuit. In a subsequent email sent yesterday, April 21,
`Plaintiffs indicated that they would be willing to limit their request to current organizational
`charts maintained at the company, “without prejudice to our asking for additional org charts if a
`specific need arises.” L’Oréal USA has agreed to search for these records and will provide them
`as soon as it can locate them.
`
`For the foregoing reasons, L’Oréal USA respectfully requests that Plaintiffs’ requested
`relief be denied.
`
`Respectfully,
`
`/s/ Frederick L. Cottrell, III
`
`Frederick L. Cottrell, III (#2555)
`
`
`cc: Counsel of Record (via CM/ECF and E-Mail)
`
`
`4 L’Oréal USA notes that a search for electronic files from so many years ago would far exceed
`the six-year time period specified in ¶ 4(e) of the Default Standard for Discovery, Including
`Discovery of Electronically Stored Information (“ESI”).
`
`
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`