Case 1:17-cv-00868-CFC-SRF Document 170 Filed 05/19/20 Page 1 of 4 PageID #: 6618
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`May 12, 2020
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`FILED UNDER SEAL
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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, et al. v. L'Oréal USA, Inc.
`(C.A. No. 17-cv-868-CFC-SRF)
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`Dear Magistrate Judge Fallon,
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`This is the fourth time Plaintiffs have had to request an order compelling L’Oréal to fulfill
`its most basic discovery obligations. See Feb. 28 Oral Order; Mar. 26 Oral Order; Apr. 24 Oral
`Order. Despite Plaintiffs’ diligent efforts over the past six months, L’Oréal has still not produced
`some of its most essential documents. And contrary to this Court’s recent admonition, L’Oréal
`still has not involved Plaintiffs in the process in order to assure a comprehensive search.
`Specifically, L’Oréal has failed to comply with the Court’s April 24 order requiring it to
`complete—by May 8—its production of: (1) organizational charts; (2) product development and
`business strategy documents responsive to RFPs 27, 32, 40, 41, 42, 53, 59, and 66; and (3)
`documents related to a 2014 FTC investigation. Since the hearing, L’Oréal produced 654 new
`documents—40% of which were related to its affirmative defenses and not to Plaintiffs’ requests.
`L’Oréal’s production remains woefully incomplete—as this new production confirms.
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`Documents Responsive to RFPs 27, 32, 40, 41, 42, 53, 59, and 66. On April 24, the Court
`ordered L’Oréal to supplement its responses to RFPs 27, 32, 53, and 59, which ask for documents
`related to product development and L’Oréal’s use of adenosine in its products. See Ex. A, Apr. 24
`Tr. 32:19-24. The Court observed that “[i]t shouldn’t be a guessing game for the plaintiffs to
`determine where L’Oreal is searching and have they conducted a thorough search,” and directed
`the parties to “please talk about it ahead of drafting the formal response.” Id. 33:17-20; 36:17-20.
`Similarly, for RFPs 40, 41, 42, and 66—seeking marketing and business strategy documents—the
`Court ordered L’Oréal to supplement those responses and continue to meet and confer with
`Plaintiffs regarding the appropriate scope of production. Id. 103:11-24.
`L’Oréal did not involve Plaintiffs in these searches. Immediately following the hearing,
`Plaintiffs sent an email asking to be involved at the front end of L’Oréal’s efforts to comply with
`the Court’s order, and posing specific questions about those efforts related to databases,
`custodians, and search terms. See Ex. B. L’Oréal finally responded, and the parties finally met and
`conferred eight days later (only four days before L’Oréal’s production was due), but L’Oréal did
`not meaningfully engage with Plaintiffs’ overtures, and still has not provided much of the
`information Plaintiffs are seeking. See Ex. C. Plaintiffs remain in the same disadvantaged position
`they were in when the parties last appeared before this Court. See D.I. 123, Ex. 8.
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`Case 1:17-cv-00868-CFC-SRF Document 170 Filed 05/19/20 Page 2 of 4 PageID #: 6619
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`In response to these RFPs, L’Oréal produced just 251 new documents. And even this
`limited production confirms the woeful deficiency of L’Oréal’s search, and that L’Oréal is
`withholding plainly responsive material. For example, only last week, and after it represented to
`both Plaintiffs and this Court that “to the extent that there is something really tied to a specific
`product rather than overall research on adenosine . . . Plaintiffs have that already,” Apr. 24 Tr.
`28:8-16, L’Oréal produced multiple emails discussing its decision to use adenosine in certain
`Accused Products. These documents are plainly relevant to the parties’ dispute. One, for example,
`states:
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`Ex. D; see also, e.g., Exs. E, F. Similarly, only last week, L’Oréal produced 100 product
`development records called “Magellan briefs” that, among other things, provide sales targets and
`development concepts for the Accused Products. See, e.g., Ex. G.
`Instead of engaging with Plaintiffs, L’Oréal now points to interrogatory and supplemental
`RFP responses served on May 8. See Exs. H, H-2. These responses fail to provide answers and
`ignore the specific issues raised by Plaintiffs. Those supplemental responses show, for example,
`that L’Oréal has not searched any custodians’ files for the names of the Accused Products, or the
`ingredient code for adenosine (“75156”). See id. It has not run a search in its central databases for
`the standalone term “adenosine.” And it has not searched for custodial files for any marketing or
`corporate custodians, see id., or responded to Plaintiffs’ request for information about the shared
`drives to which L’Oreal USA has access, see Ex. C. While L’Oréal cites thousands of pages of
`Bates numbers in those supplemental responses, it has never answered Plaintiffs’ questions about
`whether other potentially responsive documents exist. From what Plaintiffs can glean, L’Oréal ran
`few, if any, new searches following the April 24 hearing, and instead re-reviewed documents that
`had been previously collected but improperly withheld. Plaintiffs can only guess what other
`responsive documents may be outstanding. As the Court noted at the April 24 hearing, this is not
`a proper approach to discovery. See Apr. 24 Tr. 101:22-102:6.
`Moreover, despite L’Oréal’s specific representation by email to Plaintiffs in October 2019
`and to this Court in February, it has not searched L’Oréal S.A. files. See Ex. I (“[W]e are not going
`to insist that Plaintiffs proceed through the Hague to obtain documents from L’Oréal S.A. Rather,
`we will make all reasonable efforts to collect and produce any relevant documents maintained by
`L’Oréal S.A.”); Feb. 18 Hr. Tr. at 6:17-23 (“[A] part of what we have agreed to do is to produce
`documents without requiring plaintiffs to go through the Hague Commission to get documents
`from the parent company, L’Oréal S.A., and we have been doing that.”). Likewise, as discussed
`below, L’Oréal apparently has not searched L’Oréal USA executives for strategy documents
`related to the accused products.
`L’Oréal has drawn out this dispute by failing to comply with both aspects of this Court’s
`most recent order by failing to conduct a search and failing to consult with Plaintiffs. To effectuate
`its prior orders, this Court should order L’Oréal to immediately provide the specific information,
`and run the specific searches, requested below and in the Proposed Order. L’Oréal should likewise
`be required to provide a written certification that it has complied with this Court’s orders. The
`following describes in brief what Plaintiffs’ Proposed Order seeks:
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`Case 1:17-cv-00868-CFC-SRF Document 170 Filed 05/19/20 Page 3 of 4 PageID #: 6620
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`The Search Terms “Adenosine” and “75156” Run Across Certain Databases and L’Oréal
`S.A. Custodians: Amazingly, despite adenosine being central to this case and a very specific term,
`L’Oréal has not searched for “adenosine” or its code number on the most relevant databases. And
`it never searched S.A. custodians Plaintiffs identified as having potentially relevant documents.
`Business Strategy and “Magellan” Documents Similar to Those Just Produced:
`Defendant’s recent production just revealed that it does keep the business strategy documents
`requested by Plaintiffs. It just has not produced all of them for the relevant timeframe. Exs. J, K.
`Likewise, Plaintiffs learned that L’Oréal possesses so-called “Magellan briefs” that discuss
`forecasts and strategy for each Accused Product, but it has not produced all of them. Ex. G.
`Directory of Shared Files and Folders: Plaintiffs do not know what else may be missing.
`A directory of shared files will help reveal what exists. Plaintiffs will supply ten reasonable, limited
`search terms to the drives Plaintiffs identify as containing potential responsive material.
`Given the parties’ behavior to date—including Plaintiffs’ diligence and L’Oréal’s
`stonewalling—and given the advanced stage of this case—including the fast approaching deadline
`for depositions—this Court should order the specific disclosures and searches identified in
`Plaintiff’s concurrently filed proposed order on the dates specified therein.
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`Organizational Charts. This seemingly minor failure exemplifies the problems at hand.
`On April 24, the Court ordered L’Oréal to produce organizational charts by May 8. Apr. 24 Tr.
`52:2-7. On that date, L’Oréal produced some organizational charts, including charts for its finance,
`brand, and research divisions, but not others. But it did not produce a chart for its corporate
`leadership and L’Oréal USA marketing teams—information Plaintiffs need to, among other things,
`understand the adequacy of L’Oréal’s document searches; request depositions; and address
`L’Oréal’s assertion that there is no one person capable of appearing as a 30(b)(6) witness on a
`variety of topics. See Ex. L. Moreover, L’Oréal has refused to confirm it will provide this Court-
`ordered information at any point in the future, let alone by a date certain. These charts also may
`reveal additional custodians that should have been searched, but Plaintiffs do not yet have
`sufficient information to know.
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`Documents Related to the 2014 FTC Investigation.
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`That dispute is now with the District Court, and will not succeed. See Westinghouse Elec. Corp. v.
`Republic of Philippines, 951 F.2d 1414 (3d Cir. 1991) (rejecting government investigation
`privilege). Indeed, even the one Arkansas district court case L’Oréal cites finding a limited
`privilege holds that the underlying source documents provided to the government agency should
`be produced. See Concord Boat Corp. v. Brunswick Corp., 1997 WL 34854479, at *6 (E.D. Ark.
`Jun. 13. 1997) (“[A]ll of the business documents produced in response to the FTC subpoenas have
`already been produced to Plaintiffs.”).
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`Case 1:17-cv-00868-CFC-SRF Document 170 Filed 05/19/20 Page 4 of 4 PageID #: 6621
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`cc: Counsel of Record (via E-Mail)
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`Respectfully submitted,
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`/s/ Brian E. Farnan
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`Brian E. Farnan
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