Case 1:17-cv-00868-CFC-SRF Document 151 Filed 05/08/20 Page 1 of 14 PageID #: 4936
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`UNIVERSITY OF MASSACHUSETTS
`and CARMEL LABORATORIES, LLC,
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` Plaintiffs,
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`v.
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`L’ORÉAL USA, INC.,
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`Defendant.
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`)
`) C.A. No. 17-868-CFC-SRF
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`) CONFIDENTIAL—
`) FILED UNDER SEAL
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`)
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`DEFENDANT L’ORÉAL USA, INC.’S OBJECTIONS TO
`MAGISTRATE JUDGE’S APRIL 24, 2020 ORDER
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`
`Frederick L. Cottrell, III (#2555)
`Jeffrey L. Moyer (#3309)
`Katharine L. Mowery (#5629)
`Richards, Layton & Finger, P.A.
`One Rodney Square
`920 N. King Street
`Wilmington, Delaware 19801
`(302) 651-7700
`cottrell@rlf.com
`moyer@rlf.com
`mowery@rlf.com
`
`Attorneys for Defendant L’Oréal
`USA, Inc.
`
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`OF COUNSEL:
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`Eric W. Dittmann
`Isaac S. Ashkenazi
`Nicholas A. Tymoczko
`Karthik R. Kasaraneni
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`
`Naveen Modi
`Joseph E. Palys
`PAUL HASTINGS LLP
`875 15th Street, N.W.
`Washington, D.C. 20005
`(202) 551-1990
`
`Dennis S. Ellis
`Katherine F. Murray
`Serli Polatoglu
`BROWNE GEORGE ROSS LLP
`2121 Avenue of the Stars
`Suite 2800
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`

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`Case 1:17-cv-00868-CFC-SRF Document 151 Filed 05/08/20 Page 2 of 14 PageID #: 4937
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`Los Angeles, CA, 90067
`(310) 274-7100
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`Dated: May 8, 2020
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`1
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`Case 1:17-cv-00868-CFC-SRF Document 151 Filed 05/08/20 Page 3 of 14 PageID #: 4938
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`I.
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`INTRODUCTION
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`Defendant L’Oréal USA, Inc. (“L’Oréal USA”) objects, in part, to the
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`Magistrate Judge’s April 24, 2020 Order (the “Order”) granting Plaintiffs’ request
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`to compel L’Oréal USA’s production of external and internal communications
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`regarding Federal Trade Commission (“FTC”) Investigation DOCKET NO. C-
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`4489 (the “Investigation”). (See D.I. 144, Ex. A at 113:1-10; D.I. 123 at
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`[Proposed] Order.) While L’Oréal USA is producing to Plaintiffs its
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`communications with the FTC pertaining to the Investigation, as well as
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`documents supporting the challenged claims for the products at issue therein, it
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`objects to the remainder of the Order. That is, L’Oréal USA objects to the Order
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`insofar as it requires L’Oréal USA to: (1) produce the entire volume of its
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`production to the FTC, totaling over 7,000 documents; and (2) search for, review
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`and log privileged, internal communications regarding the Investigation that span
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`at least three years. These aspects of the Order are “clearly erroneous” and
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`“contrary to law” for two principal reasons.1 Fed. R. Civ. P. 72(a).
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`1 L’Oréal USA believes that the logistical issues implicated by the Order, including
`the impact of the global health crisis, are currently before the Magistrate Judge,
`and will be dealt with during the parties’ upcoming discovery conference on May
`18, 2020. (See D.I. 144, Ex. A at 113:1-14; see also Oral Order (May 7, 2020)
`(ordering L’Oréal USA to be prepared to discuss the “location and the volume of
`the documents, the efforts made to review the documents, and the anticipated
`timing of the document production and submission of a privilege log, if any”
`during the May 18th discovery conference).)
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`1
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`First, the Order is overbroad and unduly burdensome. This is based, in large
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`part, on Plaintiffs’ representation to the Magistrate Judge that they had narrowed
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`their request, which was originally before the Court on March 26, 2020. Plaintiffs
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`initially sought the “production of any communication with the FTC or any agency
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`regarding the accused products.” (Ex. A at 73:6-9 (emphasis added); see also Ex.
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`B at Request for Production No. 65 (seeking “[a]ll documents produced, in any
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`litigation or investigation, to any government entity or agency that refer or relate to
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`the Accused Products”).) The Magistrate Judge denied this request, deeming it a
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`“fishing expedition.” (Ex. A at 78:7-8.) Less than one month later, Plaintiffs
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`renewed their request under the guise that they had narrowed it, “limit[ing] [it] to
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`Defendant’s internal and external communications about th[e] specific FTC
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`investigation”—by far, the largest investigation implicated by the request. (D.I.
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`123 at 2.) In doing so, rather than narrow the request, Plaintiffs expanded its
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`scope, as they removed the limitation that the responsive documents relate to the
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`accused products, and for the first time requested privileged, internal
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`communications relating to the Investigation in addition to the external
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`communications initially sought. This expanded request was never actually served
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`in discovery, but rather proposed in connection with a discovery conference with
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`the Magistrate Judge. Because the Order is based on this purported narrowing of
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`the request by Plaintiffs that did not amount to any narrowing at all (and actually
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`2
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`broadened it), the Order is erroneous. (See D.I. 144, Ex. A at 113:1-8 (granting
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`Plaintiffs’ request “to compel the production of documents responsive to requests
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`[sic] for production number 65” because it was limited to a “single 2014 FTC
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`investigation”).)
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`Second, the Order errs in implicating numerous privileged documents.
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`While the Magistrate Judge retained jurisdiction on the issue of privilege (see D.I.
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`144, Ex. A at 113:1-24; Oral Order (May 7, 2020)), even setting aside the privilege
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`concerns raised by Plaintiffs’ request for internal communications, the Order
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`requires L’Oréal USA to go through its entire production file to the FTC (over
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`7,000 documents, all of which reside with L’Oréal USA’s former counsel for the
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`Investigation), to ensure it does not contain privileged documents, or documents
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`that should otherwise be withheld from production for confidentiality reasons, as
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`the FTC entered a confidentiality order exempting the Investigation from Freedom
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`of Information Act (FOIA) requests.2 L’Oréal USA cannot simply hand these
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`documents over to Plaintiffs wholesale, and the review and logging of such
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`2 L’Oréal USA is producing to Plaintiffs its direct external communications with
`the FTC pertaining to the Investigation, as well as documents supporting the
`challenged claims for the products at issue therein. However, L’Oréal USA
`objects to producing all of the documents it produced to the FTC in connection
`with the Investigation (the production file containing over 7,000 documents
`referenced above), which more broadly, inter alia, provide support for its claim
`substantiation and other issues in the Investigation completely unrelated to this
`case.
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`3
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`documents would be unduly burdensome, particularly in view of their irrelevance
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`to this case.
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`As stated, L’Oréal USA intends today, as the Magistrate Judge ordered, to
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`make a substantive production of any external communications between L’Oréal
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`USA and the FTC. Anything further than this would be improper, given that
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`discovery in this matter is set to close next month, and the utility of the discovery
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`is far outweighed by the burden that would be placed on L’Oréal USA at this late
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`stage of the proceedings. L’Oréal USA respectfully requests that this Court sustain
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`its Objections to the Order, and requests that, at a minimum, Plaintiffs be
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`compelled to show specifically with reference to the documents L’Oréal USA is
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`producing why a further production would be appropriate. Cf. LabMD, Inc. v.
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`Tiversa Holding Corp., 2019 WL 3081659, at *5 (W.D. Pa. July. 15, 2019) (“[T]he
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`Court will not permit discovery in this case to be used as a fishing expedition for
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`other cases or long since concluded investigations”).
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`II. LEGAL STANDARD
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`The Order is a non-dispositive pretrial ruling governed by 28 U.S.C. §
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`636(b)(1)(A) and Rule 72(a) of the Federal Rules of Civil Procedure, and can be
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`overturned to the extent it is “clearly erroneous or [] contrary to law.” Fed. R. Civ.
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`P. 72(a). If the Objector can demonstrate that the Order was “arbitrary, fanciful or
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`unreasonable,” reversal of the Order is appropriate. See Lindy Bros. Builders of
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`4
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`Philadelphia v. Am. Radiator & Standard Sanitary Corp., 540 F.2d 102, 115 (3d
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`Cir. 1976).
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`III. ARGUMENT
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`The Magistrate Judge’s Order granting Plaintiffs’ request to compel the
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`production of L’Oréal USA’s internal and external communications pertaining to
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`the FTC Investigation is in error. Plaintiffs’ modified request is overbroad, and
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`seeks the production of documents that are irrelevant and not proportionate to the
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`needs of the case.
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`Plaintiffs’ erroneous representation to the Magistrate Judge that they had
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`narrowed their request, which was originally before the Court on March 26, 2020,
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`precipitated the Order. In December 2019, Plaintiffs propounded a Document
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`Request seeking “[a]ll documents produced, in any litigation or investigation, to
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`any government entity or agency that refer or relate to the Accused Products.”
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`(Ex. B at Request for Production No. 65.) Given that there are over 150 accused
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`products in this case, L’Oréal USA objected to this Request as overly broad and
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`unduly burdensome, and also on the grounds that the information sought was not
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`relevant, as the asserted patents in this case relate to the use of adenosine at
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`specified concentrations, which was not a focus of the FTC Investigation.
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`Plaintiffs then moved to compel, informing the Court that they were seeking
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`“representations Defendant made about the marketing or testing of the Accused
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`5
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`Products.” (D.I. 103 at 4.) During the March 26, 2020 discovery conference with
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`the Magistrate Judge, L’Oréal USA explained the impropriety of such a request,
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`noting among other things that Plaintiffs’ demand was burdensome, especially
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`since L’Oréal USA had already produced the public marketing statements and any
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`testing for the products at issue. (See Ex. A at 75:7-76:11.) The Court agreed,
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`denying Plaintiffs’ request without prejudice on the grounds that it was
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`“cumulative,” “overbroad,” and “not relevant or proportional to the needs of the
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`case under Rule 26.” (Id. at 77:23-78:24.)
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`Less than one month later, Plaintiffs renewed their request stating that they
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`had narrowed it, “limiting the request to communications related to one particular
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`investigation”—the FTC Investigation. (D.I. 123 at 2.) However, the FTC
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`Investigation was by far the largest investigation implicated by the request. More
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`importantly, while Plaintiffs were originally only seeking L’Oréal USA’s external
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`communications relating to the accused products, Plaintiffs also now sought—for
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`the first time—internal communications pertaining to the FTC Investigation,
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`without limitation to the products involved.3 The Document Request spurring this
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`dispute did not seek internal communications or products other than those accused
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`3 Plaintiffs’ Request for Production No. 65 does not seek internal communications
`relating to FTC investigations. That Plaintiffs’ brief and proposed order was
`seeking documents outside of their request was not apparent until after the
`Magistrate Judge’s Order was issued, and Plaintiffs never pointed that out to the
`Court.
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`6
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`in the case (See Ex. B at Request for Production No. 65; see also Ex. A at 73:6-9
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`(Plaintiffs seeking “production of any communication with the FTC or any agency
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`regarding the accused products.”).) Thus, rather than narrow the request, Plaintiffs
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`expanded its scope. See Castro v. Albert C. Wagner Youth Corr. Facility, 2009
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`WL 2231264, at *2 n.2 (D.N.J. July 22, 2009) (“[A] party filing a motion
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`to compel discovery must first have actually served a discovery request upon the
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`adverse party.”) (emphasis added); Whitely v. CDCR, 2018 WL 3159878, at *4
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`(E.D. Cal. June 28, 2018) (“[T]he court will weigh only the discovery requests that
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`were actually propounded rather than the new ones in his motion to compel.”)
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`(emphasis added).
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`L’Oréal USA will produce its external communications with the FTC, as
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`ordered by the Magistrate Judge. However, L’Oréal USA simply cannot go
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`through its production to the FTC without shouldering considerable burden.
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`Moreover, L’Oréal USA has no readily available means consistent with its
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`document retention policies of collecting a broader set of documents related to
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`internal communications pertaining to the investigation, which in any event would
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`undoubtedly be privileged. See Westinghouse Elec. Corp. v. Republic of
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`Philippines, 951 F.2d 1414, 1428 (3d Cir. 1991) (“[T]he work-product doctrine
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`promotes the adversary system directly by protecting the confidentiality of papers
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`prepared by or on behalf of attorneys in anticipation of litigation.”). As such, this
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`Court should determine that L’Oréal USA’s production of its external
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`communications with the FTC suffices, as the Order was based on a
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`misunderstanding before the Magistrate Judge regarding: (1) the scope of the
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`discovery request at issue; and (2) the burden on L’Oréal USA to respond to the
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`request, which is unduly significant.4 (See D.I. 144, Ex. A at 110:12-18 (“I was
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`concerned about [the request] being overbroad with respect to agency
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`investigations that were requested by plaintiffs at the last hearing. I understand
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`that now plaintiff has made an effort to correct the concern that the Court had
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`previously.”); id. at 113:1-8 (granting Plaintiffs’ request, referencing that it
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`implicates a “single 2014 FTC investigation”).)
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`Furthermore, the Order is contrary to law because it compels the production
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`of irrelevant documents not proportional to the needs of the case. During the April
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`24th discovery conference, Plaintiffs informed the Court that they wanted to
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`explore whether L’Oréal USA was “relying on adenosine to support anti-aging
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`4 While Plaintiffs may assert that L’Oréal USA waived this argument, they would
`be mistaken. L’Oréal USA has consistently raised the issues of overbreadth and
`burden in connection with this request—both in its objections to the underlying
`Document Request, and during the March 26, 2020 discovery hearing on this
`matter. (See Ex. B at Objections to Request for Production No. 65; Ex. A at 75:7-
`76:11.) It was only through obfuscation that Plaintiffs were able to minimize the
`issue of burden during the April 24, 2020 hearing—during which, Plaintiffs’
`unwarranted broadening of the request notwithstanding, L’Oréal USA again raised
`this issue. (D.I. 144, Ex. A at 111:22-112:11.)
`8
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`properties of their lotions.” (D.I. 144, Ex. A at 111:8-13.) However, as the
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`documents L’Oréal USA is producing to Plaintiffs show, adenosine was not a
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`focus of the Investigation. Indeed, L’Oréal USA’s own White Paper submitted to
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`the FTC during the Investigation summarizing its claims substantiation does not
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`even include the word “adenosine.” (See also Ex. A at 75:7-76:11 (L’Oréal USA’s
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`counsel noting “[t]he amount of burden that would be involved in having to locate
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`litigation files and communications with any agency about these products, I mean,
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`it’s enormous and not proportional to the needs of the case.”); id. at 77:23-78:24
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`(the Court agreeing with L’Oréal USA).) “Where, as here, the defendant
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`challenge[d] the relevance of discovery, the burden first rests with plaintiff to
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`articulate that the material sought is relevant.” Pollock v. Energy Corp. of Am.,
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`2014 WL 562726, at *2 (W.D. Pa. Feb. 11, 2014). Plaintiffs failed to do so.5 As
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`5 While Plaintiffs did assert that any underlying marketing or testing materials
`relating to adenosine for the accused products that L’Oréal USA produced to the
`FTC would be relevant to the instant case, L’Oréal USA already produced those
`materials to Plaintiffs, rendering the documents sought by the Order cumulative.
`(See D.I. 144, Ex. A at 111:23-112:11 (L’Oréal USA’s counsel explaining that
`“[w]e’ve given them the marketing for these products, we’ve given them the
`underlying testing that supported those claims.”); Ex. A, 75:9-76:11 (same); id. at
`78:1-4 (the Court denying Plaintiffs’ initial request on the grounds that it sought
`“cumulative production of documents that have already been produced by L’Oréal
`with regard to testing and marketing of products”). See also D.I. 144, Ex. A at
`111:22-112:11 (“[I]t’s a burden to L’Oréal to have to look for a six year old
`investigation relating to claims made about the products and representations made
`about the products and the underlying science behind the products when all those
`underlying products have already been produced in the case.”).)
`9
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`such, their request should have been denied. See LabMD, Inc., 2019 WL 3081659,
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`at *5.
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`Discovery in this matter is set to close next month. L’Oréal USA already
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`has produced tens of thousands of pages in this case, while Plaintiffs continue to
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`assert that they do not have responsive documents at every turn. This case should
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`be getting smaller, not larger. As it currently stands, the Order would force
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`L’Oréal USA to take a substantially time-consuming detour for irrelevant
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`documents, which would prejudice L’Oréal USA in its ability to complete
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`discovery, including depositions, within the remaining time allotted. This burden
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`to L’Oréal USA far outweighs Plaintiffs’ desire for additional, irrelevant
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`documents.
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`IV. CONCLUSION
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`For the foregoing reasons, L’Oréal USA respectfully requests that the Court
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`sustain its Objections to the Court’s ruling regarding the production of FTC
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`documents to the extent that it requires L’Oréal USA to produce documents
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`beyond the external communications it is already producing.
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`Case 1:17-cv-00868-CFC-SRF Document 151 Filed 05/08/20 Page 13 of 14 PageID #: 4948
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`/s/ Frederick L. Cottrell, III
`Frederick L. Cottrell, III (#2555)
`Jeffrey L. Moyer (#3309)
`Katharine L. Mowery (#5629)
`Richards, Layton & Finger, P.A.
`One Rodney Square
`920 N. King Street
`Wilmington, Delaware 19801
`(302) 651-7700
`cottrell@rlf.com
`moyer@rlf.com
`mowery@rlf.com
`
`Attorneys for Defendant L’Oréal
`USA, Inc.
`
`
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`OF COUNSEL:
`
`Eric W. Dittmann
`Isaac S. Ashkenazi
`Nicholas A. Tymoczko
`Karthik R. Kasaraneni
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`
`Naveen Modi
`Joseph E. Palys
`PAUL HASTINGS LLP
`875 15th Street, N.W.
`Washington, D.C. 20005
`(202) 551-1990
`
`Dennis S. Ellis
`Katherine F. Murray
`Serli Polatoglu
`BROWNE GEORGE ROSS LLP
`2121 Avenue of the Stars
`Suite 2800
`Los Angeles, CA, 90067
`(310) 274-7100
`
`
`
`Dated: May 8, 2020
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`11
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`Case 1:17-cv-00868-CFC-SRF Document 151 Filed 05/08/20 Page 14 of 14 PageID #: 4949
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`CERTIFICATE OF SERVICE
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`I hereby certify that on May 8, 2020, a true and correct copy of the foregoing document
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`were filed with the Clerk of Court via CM/ECF which will send notification of such filing to
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`counsel of record and I further certify that a true and correct copy of the foregoing document was
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`caused to be served on the following counsel of record as indicated:
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`VIA ELECTRONIC MAIL:
`Brian E. Farnan
`Michael J. Farnan
`919 North Market Street
`12th Floor
`Wilmington, DE 19801
`(302) 777-0300
`bfarnan@farnanlaw.com
`mfarnan@farnanlaw.com
`
`
`
`
`
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`VIA ELECTRONIC MAIL:
`William C. Carmody
`Tamar E. Lusztig
`Beatrice C. Franklin
`Susman Godfrey LLP
`1301 Avenue of the Americas, 32nd Floor
`New York, NY 10019
`bcarmody@susmangodfrey.com
`tlusztig@susmangodfrey.com
`bfranklin@susmangodfrey.com
`
`Justin A. Nelson
`Susman Godfrey LLP
`1000 Louisiana Street, Suite 5100
`Houston, TX 77002
`(713) 651-9366
`jnelson@susmangodfrey.com
`
`
`/s/ Katharine L. Mowery
`
`Katharine L. Mowery (#5629)
`mowery@rlf.com
`
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`
`
`
`
`