Case 1:17-cv-00868-CFC-SRF Document 168 Filed 05/18/20 Page 1 of 25 PageID #: 6568
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`)
`) C.A. No. 17-868-CFC-SRF
`)
`) PUBLIC REDACTED VERSION
`)
`
`) )
`
`
`)
`)
`)
`
`UNIVERSITY OF MASSACHUSETTS
`and CARMEL LABORATORIES, LLC,
`
` Plaintiffs,
`
`v.
`
`L’ORÉAL USA, INC.,
`
`Defendant.
`
`DEFENDANT L’ORÉAL USA, INC.’S OBJECTIONS TO
`MAGISTRATE JUDGE’S APRIL 24, 2020 ORDER
`
`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.
`
`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
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 168 Filed 05/18/20 Page 2 of 25 PageID #: 6569
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`Los Angeles, CA, 90067
`(310) 274-7100
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`
`
`Dated: May 8, 2020
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`
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`1
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`

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`Case 1:17-cv-00868-CFC-SRF Document 168 Filed 05/18/20 Page 3 of 25 PageID #: 6570
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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,
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` 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)
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` and (2) search for, review
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`and log privileged, internal communications regarding the Investigation
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` 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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`
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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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`

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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
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` 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
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` 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,
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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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`

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`Case 1:17-cv-00868-CFC-SRF Document 168 Filed 05/18/20 Page 7 of 25 PageID #: 6574
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`
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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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`

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`Case 1:17-cv-00868-CFC-SRF Document 168 Filed 05/18/20 Page 8 of 25 PageID #: 6575
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`
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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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`

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`Case 1:17-cv-00868-CFC-SRF Document 168 Filed 05/18/20 Page 9 of 25 PageID #: 6576
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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
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` 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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`7
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`

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`Case 1:17-cv-00868-CFC-SRF Document 168 Filed 05/18/20 Page 10 of 25 PageID #: 6577
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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
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` 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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`

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`Case 1:17-cv-00868-CFC-SRF Document 168 Filed 05/18/20 Page 11 of 25 PageID #: 6578
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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,
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` (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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`
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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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`

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`Case 1:17-cv-00868-CFC-SRF Document 168 Filed 05/18/20 Page 12 of 25 PageID #: 6579
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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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`10
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`

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`Case 1:17-cv-00868-CFC-SRF Document 168 Filed 05/18/20 Page 13 of 25 PageID #: 6580
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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.
`
`
`
`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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`
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`11
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`

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`Case 1:17-cv-00868-CFC-SRF Document 168 Filed 05/18/20 Page 14 of 25 PageID #: 6581
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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:
`
`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
`
`
`
`
`
`
`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
`
`
`
`
`
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 168 Filed 05/18/20 Page 15 of 25 PageID #: 6582
`Case 1:17-cv-00868—CFC-SRF Document 168 Filed 05/18/20 Page 15 of 25 PageID #: 6582
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`EXHIBIT A
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`EXHIBIT A
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`Case 1:17-cv-00868-CFC-SRF Document 168 Filed 05/18/20 Page 16 of 25 PageID #: 6583
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`1
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`IN THE UNITED STATES DISTRICT COURT
`IN AND FOR THE DISTRICT OF DELAWARE
`- - -
`
`UNIVERSITY OF MASSACHUSETTS
`and CARMEL LABORATORIES,
`LLC,
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` Plaintiffs,
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`1 2 3 4 5 6 7 8 9
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`CIVIL ACTION
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`NO. 17-868-CFC-SRF
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`:::::::::::
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` vs.
`L'ORÉAL USA, INC.,
` Defendant.
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` - - -
` Wilmington, Delaware
` Thursday, March 26, 2020
` 11:19 o'clock, a.m.
` ***Telephone conference
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`BEFORE: HONORABLE SHERRY F. FALLON, U.S.D.C.J.
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`APPEARANCES:
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` FARNAN LLP
` BY: MICHAEL J. FARNAN, ESQ.
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` Valerie J. Gunning
` Official Court Reporter
`
`1 of 36 sheets
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`Page 1 to 1 of 86
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`04/01/2020 11:44:31 AM
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`

`

`Case 1:17-cv-00868-CFC-SRF Document 168 Filed 05/18/20 Page 17 of 25 PageID #: 6584
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`than here.
`
`They are looking for an absence of documents.
`They are not going to be in the Olaplex case. What we're
`going to have is damages expert reports that largely have to
`be redacted because it's really a lot of Olaplex's lost
`profit information, and that is what the Olaplex case is
`based on, their lost profits, not L'Oréal's.
`What we have produced in this case are the
`intracompany transfer agreements between L'Oréal USA and
`L'Oréal SA for the brands that are involved in this
`particular case.
`Now, we don't believe those are comparable
`because they're intracompany agreements, but we have
`produced them. To avoid a dispute, we went ahead and gave
`them those. There's not going to be any intelligence that
`they are going to gain from the Olaplex expert reports
`relating to Olaplex's lost profits theory, and it's not like
`we provided a whole treasure-trove of agreements and
`policies in that case that we have not given here.
`So what they are basically asking us to do is go
`through these multiple expert reports and deposition
`testimony, redact all the information that is confidential
`to Olaplex which under the protective order we cannot
`provide to the other side because they want to get a sneak
`peak of what's going to happen during the expert damage
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`needs to be redacted. We don't think that the materials are
`going to be so voluminous that the burden of redacting them
`outweighs the benefit of development of -- -
`THE COURT: All right. Having -- go ahead.
`MS. MURRAY: I was going to say, Your Honor, if
`they have access to the trial transcripts which would have
`the testimony they need, I don't see why they would need to
`have reports at the deposition. They said they have access
`to unredacted trial transcripts.
`THE COURT: All right. Having read the
`materials and heard oral argument on this and on that last
`point, what I was going to say is the plaintiffs certainly
`have access to anything that's publicly available on the
`Court docket for the Olaplex and L'Oréal case, but this
`request is denied.
`In the Court's view, damages analyses are fact
`and case specific even when you have the same defendant
`involved in recent patent litigation. You can't put a
`one-size-fits-all analysis just because in one case
`defendants took a position. That's not to say that you
`can't access what's publicly available and, you know,
`utilize it if you are going to utilize it in
`cross-examination of certain representatives of a party or
`that party's experts. But in the Court's view, the
`plaintiffs' articulated reason, which is to, quote unquote
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`Franklin?
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`phase of the case. It doesn't seem relevant and it's a lot
`of work for L'Oréal to do for them to see that they are
`going to get exactly the same information. We don't have
`licensing policies or practices or comparable agreements.
`THE COURT: All right. Any rebuttal, Ms.
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`"gain any insight whatsoever into L'Oréal's licensing
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`practices and policies" does not fulfill the standard for
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`relevance and proportionality to sustain its request under
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`Rule 26, and on that basis, it is denied.
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`What is the next issue, Ms. Franklin?
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`MS. FRANKLIN: Next, and I'm sure Your HonorMS. FRANKLIN: Next, and I'm sure Your Honor
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`77 will be happy to hear, the last issue is our request for
`7
`will be happy to hear, the last issue is our request for
`MS. FRANKLIN: Yes, Your Honor. So we're not
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`production of any communication with the FTC or any agencyproduction of any communication with the FTC or any agency
`looking for the Olaplex expert materials simply to get a
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`regarding the accused products. And the investigation inregarding the accused products.
`view into L'Oréal's licensing policies. We're trying to get
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`particular that we have in mind is one that we know about
`a view into what the reasonable royalty calculation would
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`based on public materials, which was an FTC investigation
`look like and what position L'Oréal would take. Obviously,
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`into L'Oréal's use code product lines. That's a product
`L'Oréal's expert took a position on what that position would
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`line that contains adenosine for some of its products.
`be in the Olaplex case. Again, since I'm reviewing the
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`Many of its products are accused products in
`trial transcripts, which I will note were not redacted, the
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`this case. As we understand it, the FTC investigated
`expert relied on, as I said, profit metrics, forecasts,
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`whether certain claims L'Oréal was making about the
`things like that.
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`products, anti-aging efficacy, was investigating whether or
`It's hard for us to see how these can't possibly
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`not those claims are substantiated.
`be relevant because as the IP Bridge case makes clear, it's
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`There was a consent order entered in the case,
`the same defendant. Even if it's different technology, they
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`which we attached as an exhibit to our letter, and among
`would presumably take a consistent position or at least
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`other things, we understand from the consent order it seems
`somewhat of a consistent position, consistent enough that
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`that the FTC was focused on public statements about the
`the materials would be relevant in licensing negotiations or
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`accused products, marketing materials, and then the testing
`the hypothetical negotiations with different parties.
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`that underlay those statements.
`As for burden, again, the trial transcripts were
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`We believe that any communications L'Oréal had
`not redacted or sealed. We understand that some material
`04/01/2020 11:44:31 AM
`19 of 36 sheets
`Page 70 to 73 of 86
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`

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`Case 1:17-cv-00868-CFC-SRF Document 168 Filed 05/18/20 Page 18 of 25 PageID #: 6585
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`with the FTC or any other agency in a similar investigation
`would be highly relevant to our claims because it involved
`the, both the public claims that L'Oréal makes about the
`accused products and its own internal understanding about
`how those products work.
`L'Oréal says that it's not going to provide that
`information because it would be duplicative of the marketing
`and testing materials we already have.
`We understand that in any government
`investigation, there would be at least some communications
`that are distinct from the public --
`THE COURT: Ms. Franklin, go ahead. Say that
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`again.
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`MS. FRANKLIN: Sorry. Our understanding is that
`in any government investigation there would be, you know, at
`the very least communication with the agency about the
`marketing materials and testing materials that we may
`already have.
`We're not asking for the production of any
`marketing materials that L'Oréal has already produced, but
`we would certainly like to see what L'Oréal said about those
`marking materials or about the product testing to the FTC,
`and similarly, we'd like to see what L'Oréal has said about
`its products to any other agency, again, because this is
`relevant to L'Oréal's own understanding about how the
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`packaging litigation involving one of the cosmetic products,
`packaging litigation involving one of the cosmetic products,
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`22 we now have to dig our files for every single piece of
`we now have to dig our files for every single piece of
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`paper.paper.
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`If they really want to see the public statementsIf they really want to see the public statements
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`55 made about these products and the testing of the product,
`made about these products and the testing of the product,
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`they need to look at what was produced to them. This is athey need to look at what was produced to them. This is a
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`huge fishing expedition. The amount of burden that would behuge fishing expedition. The amount of burden that would be
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`involved in having to locate litigation files andinvolved in having to locate litigation files and
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`communications with any agency about these products, I mean,communications with any agency about these products, I mean,
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`it's enormous and it's not proportional to the needs of theit's enormous and it's not proportional to the needs of the
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`case. They have the documents that they need on this.case. They have the documents that they need on this.
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`MS. FRANKLIN: May I respond, Your Honor?
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`THE COURT: You may.
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`MS. FRANKLIN: So we're not seeking public
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`documents. Most of the documents with respect to the use
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`code investigation by the FTC are not public. Publications
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`to the agency as far as we can tell are not public. The
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`consent order is public, which we were able to find, but
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`publications directed between L'Oréal and FTC are not.
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`If they are public, you know, again, we see no
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`reason why -- I'm sorry. What I what's going to say, the
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`materials that are public, if L'Oréal has produced them to
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`us already, we're not seeking additional product, but we are
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`seeking documents that we can't get from the public record,
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`documents that, again, have not argued that these documents
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`accused products work.
`I will also note the fact that adenosine is
`specifically intended to have an anti-aging benefit. With
`respect to the FTC investigation into use code,
`communications that L'Oréal made about what adenosine does
`or doesn't do would be very relevant to our claim.
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`THE COURT: All right. I will hear from L'OréalTHE COURT: All right. I will hear from L'Oréal
`
`
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`on this.on this.
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`would be irrelevant because they make claims about whether
`or not the accused products have anti-aging effects.
`Our request seeks only documents produced in
`litigation to any government entity or agency. We're not
`looking for, you know, documents that are produced in
`litigation with random individuals who may have some sort of
`product liability claim against L'Oréal.
`And, again, if L'Oréal raised this on some of
`the meet and confers, that L'Oréal was willing to identify
`specific investigations or government litigations that they
`were willing to produce documents for, we could have had a
`that conversation. But again, despite the fact that we
`specifically identified a federal investigation into
`products that are accused in our case, L'Oréal refused to
`even consider producing documents for that investigation or
`any other.
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`
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`MS. MURRAY: Yes, Your Honor. It's Kathy MurrayMS. MURRAY: Yes, Your Honor. It's Kathy Murray
`
`
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`again.again.
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