Case 1:17-cv-00868-CFC-SRF Document 173 Filed 05/21/20 Page 1 of 5 PageID #: 7130
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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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`May 14, 2020
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`FILED UNDER SEAL
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`RE: University of Massachusetts, et al. v. L'Oréal USA, Inc.
`(C.A. No. 17-cv-868-CFC-SRF)
`Dear Magistrate Judge Fallon,
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`L’Oréal seeks relief on three “new” issues. But the Court already heard two of these issues.
`L’Oréal presents no new facts or law warranting revisiting the Court’s decision denying discovery
`into Plaintiffs’ privileged testing, and demands the same Teresian Carmelites documents the Court
`previously said were overbroad. The third issue is a meritless attack on Plaintiffs’ privilege log.
`The Court should deny the requested relief.
`L’Oréal’s Renewed Request for Discovery into Plaintiffs’ Privileged Testing. Plaintiffs’
`position on fact discovery into their infringement testing has been consistent throughout this case:
`they are willing to provide (and have already provided, see, e.g., D.I. 127 Ex. 1) the information
`relied on for infringement contentions— but further information is privileged consulting expert
`work product and premature during fact discovery. At the April 24 hearing, the Court rejected
`L’Oréal’s request for further fact discovery into Plaintiffs’ privileged testing, finding that “Plaintiff
`has disclosed the summary sheet they’ve relied on in amending their infringement contentions and
`that’s pretty much the extent, as I read Gillette, as to what Judge Stark permitted in Gillette.”
`Ex. 1 at 79:1-10 (emphasis added). In so ruling, the Court expressed concern about the possibility
`of “a snowball” of further expert discovery that would be “inappropriate at this stage of a
`litigation.” Id. at 83:16-22.1
`The Court’s denial was without prejudice to the parties “briefing this issue” with further
`authority. Id. at 82:21-84:11. Since then, Plaintiffs conferred with L’Oréal, and requested any
`further authority for its position. As of this filing, L’Oréal has not responded to Plaintiffs’ request,
`and instead raises the same question as a “new” issue here. See Ex. 3 at 1. The only additional case
`cited in its letter supports Plaintiffs. See Koninklijke Philips Elecs. N.V. v. ZOLL Med. Corp., No.
`CIV. 10-11041-NMG, 2013 WL 812484, at *2 (D. Mass. Mar. 4, 2013) (explaining that ZOLL
`“has not otherwise characterized the information as having been generated by ‘experts’” and it is
`therefore distinguishable from “a request for materials prepared by a non-testifying expert and,
`thus, was analyzed using the standards set forth in Rule 26(b) (4)(D), a provision which ZOLL has
`not sought to invoke”). The Third Circuit has explained that Rule 26(b)(4)(B) “precludes discovery
`against an expert informally consulted in preparation for trial.” In re Cendant Corp. Sec. Litig.,
`343 F.3d 658, 665 n.7 (3d Cir. 2003); see also Higher One, Inc. v. TouchNet Information Systems,
`Inc., 298 F.R.D. 82 (W.D. N.Y. 2014) (“Patentees failed to demonstrate exceptional circumstances
`that would justify discovery from adversary’s non-testifying consultant.”); Lambeth Magnetic
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`1 L’Oreal now demands precisely that “inappropriate” “expert discovery,” threatening to compel
`Rule 30(b)(6) testimony about Plaintiffs’ privileged consulting expert testing. See Ex. 2 at 2.
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`9 1 9 N . M A R K E T S T R E E T , 1 2 T H F L O O R , W I L M I N G T O N , D E 1 9 8 0 1
`P H O N E : ( 3 0 2 ) 7 7 7 – 0 3 0 0 (cid:476) F A X : ( 3 0 2 ) 7 7 7 – 0 3 0 1 (cid:476) W W W . F A R N A N L A W . C O M
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`Case 1:17-cv-00868-CFC-SRF Document 173 Filed 05/21/20 Page 2 of 5 PageID #: 7131
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`Structures, LLC v. Seagate Tech. (US) Holdings, Inc., No. CV 16-538, 2018 WL 466045, at *5
`(W.D. Pa. Jan. 18, 2018)(“Finding a waiver of privilege as to any testing cited at this early stage
`of litigation would cut against both the purpose of the privilege (protecting clients’ ability to seek
`preparatory advice without fear) and the purpose of the local rule (providing defendants with early
`notice of specific claims).”). The Court should deny a request for the same information at issue at
`the April 24 hearing, but in the form of an interrogatory instead of documents.
`Indeed the only “new” thing about L’Oréal’s motion is its argument that Plaintiffs
`purportedly agreed to give it privileged information. This argument fails for at least two reasons.
`First, this “new” information comes from an email dated April 13, 2020—i.e., well before the
`April 24 hearing, and before the parties submitted their letter briefs for the April 24 hearing. See
`D.I. 121. There is nothing “new” about this. Second, nowhere in the email do Plaintiffs agree to
`provide the information L’Oréal seeks. Some history is helpful here: On April 8, L’Oréal requested
`Plaintiffs supplement interrogatory responses, including interrogatories covering a broad range of
`testing issues, such as analysis conducted by the inventors of the asserted patents. See Ex. 5 at 1-
`2. Plaintiffs agreed to supplement, but noted they would not provide privileged information. See
`Ex. 4 at 2 (explaining that Plaintiffs “will not be producing any privileged work product”).
`Plaintiffs began working on gathering information, including by interviewing the inventors, and
`had planned to include in those supplements the non-privileged information regarding their
`infringement testing—i.e., by citing, by bates number, the testing reports Plaintiffs have produced.
`After the April 24 hearing, while Plaintiffs were working on these supplements, L’Oréal made
`clear that it wanted a lengthy narrative supplement providing the privileged information the Court
`had just held it was not entitled to, including information Plaintiffs could not have relied on for
`their infringement contentions. See Ex. 3 at 4 (“We are working on the interrogatory supplement
`we said we would serve, but had not planned to address the many detailed questions you posed
`only yesterday.”).
`Despite the Court’s recent order saying they were not required to provide this information,
`Plaintiffs offered to try to obtain the narrative requested by L’Oréal—in exchange for some
`reasonable assurances that providing further information would not kick off “a snowball course”
`into premature expert discovery. See id. (“To be clear, we do not believe that we need to provide
`any more information during fact discovery regarding the testing of the accused products, but are
`willing to provide the information you requested in your email and hope that we can reach a
`compromise that satisfies both of our concerns.”). L’Oréal rejected that compromise by reserving
`the right to argue preclusion, despite Plaintiffs’ voluntary disclosure, and to undo the deal if
`L’Oréal unilaterally determines that the voluntarily-provided information is not “full and
`complete.” See id. at 2. Put differently, L’Oréal wanted Plaintiffs to provide the very information
`the Court had just ruled Plaintiffs were not required to produce, in exchange for nothing. Since
`that was “not a fair compromise,” id. at 2, Plaintiffs served the promised supplement describing
`inventor research, but without citing the bates numbers of the testing reports. See D.I. 160 Ex. C.
`To the extent that what L’Oréal wants is what Plaintiffs had offered—an interrogatory
`supplement identifying by bates number the non-privileged testing reports Plaintiffs have
`produced—Plaintiffs will serve such a supplement this week. But L’Oréal’s correspondence makes
`clear what it wants is for Plaintiffs to provide privileged information, for which it has no authority
`supporting its entitlement, while reserving all rights to argue that Plaintiffs still have not provided
`enough.
`The same is true for information about Plaintiffs’ pre-suit testing that L’Oréal demands.
`Plaintiffs have never agreed to provide this plainly privileged information. See, e.g., Cendant, 343
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`2
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`Case 1:17-cv-00868-CFC-SRF Document 173 Filed 05/21/20 Page 3 of 5 PageID #: 7132
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`F.3d at 665 n.7. The email L’Oréal relies on merely agrees to supplement interrogatory responses;
`it does not agree to provide privileged information, or even mention pre-suit testing. See D.I. 160
`Ex. I at 2 (“We confirmed we will prepare supplementary responses to your interrogatories No. 1,
`4, 5, 6, 8, 9, 10, 11, 12, 13, 14, and 15.”). L’Oréal argues it needs an interrogatory response in
`order to evaluate Plaintiffs’ privilege claim, but cites no authority for testing privilege in that way.
`That is what privilege logs are for. Documents related to Plaintiffs’ pre-suit testing are logged on
`their privilege log. L’Oréal’s motion should be denied.
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`L’Oréal’s Renewed Request for Discovery into Non-Party Teresian Carmelites. At the
`March 26 hearing, the Court ordered the parties to try to resolve this issue, and if they could not,
`that L’Oréal may “serve a narrowly tailored request for production . . . [that is] relevant and
`proportional to the needs of the case.” Ex. 7 at 11:19-25. After, Plaintiffs explained to L’Oréal that
`they plan to introduce limited evidence about the Teresian Carmelites, and Dennis Wyrzkowski’s
`affiliation. Specifically, they just need to be able to put facts in context, like who witnesses are,
`and how and why Carmel Labs came to license the asserted patents—via Mr. Wyrzykowski’s
`introduction, through the Teresian Carmelites, to Dr. Dobson. Somewhat shockingly, L’Oréal’s
`position was that Plaintiffs must agree to omit these basic narrative facts altogether. See Ex. 9 at ¶
`2. Because Plaintiffs cannot agree to such an overbroad and unworkable limine, L’Oréal now seeks
`“All Documents and Things Concerning the financial condition and outlays of the Teresian
`Carmelites,” and “All Documents and Things Concerning Dennis Wyrzykowski’s affiliation with
`the Teresian Carmelites, including All Documents and Things Concerning his separation from the
`Teresian Carmelites and/or his decision to cease monastic life.” See Ex. 6 at RFP No. 138, 140.
`To be clear, Plaintiffs have already produced all documents relating to (i) “the founding of
`Plaintiff Carmel Labs, including why it was founded and that it is a subsidiary of the Teresian
`Carmelites,” (ii) “communications between the Teresian Carmelites and L’Oréal USA and/or
`L’Oréal S.A.,”2 and (iii) “documents and/or evidence that mentions the Teresian Carmelites that
`is also related to or which regards otherwise relevant issues, such as adenosine, this lawsuit, the
`Asserted Patents, the inventors of the Asserted Patents, Plaintiffs, the Easeamine Products, and/or
`the Accused Products.” See Ex. 9 at ¶¶ 1, 3. However, documents going to this non-party’s
`financial condition, or why Mr. Wyrzkowski left monastic life, have zero relevance to this case.
`With respect to documents concerning the Teresian Carmelites’ “financial condition and
`outlays,” L’Oréal claims it needs these documents because the FAC put “the Teresian Carmelites’
`financial relationship with Carmel Labs” at issue. D.I. 160 at 4. But the Court directed L’Oréal to
`serve “narrowly tailored request[s]” that take into account that Plaintiffs “do not intend to pursue
`claims in the first amended complaint relating to the Teresian Carmelites financial condition.”
`Ex. 7 at 11:5-12 (emphasis added). The only facts at issue are that Carmel Labs is a subsidiary of
`the Teresian Carmelites and provided it with funds; Plaintiffs have already produced the relevant
`and responsive documents about that narrow issue. See Ex. 6 at RFP No. 137. With respect to Mr.
`Wyrzykowski’s personal decision to leave monastic life, L’Oréal has never articulated what
`relevance these details of his personal life have to any claim or defense in this case. L’Oréal’s
`request that Plaintiffs produce documents about Mr. Wyrzykowski’s personal life is irrelevant and
`burdensome. Its motion should be denied.
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`2 Plaintiffs clarified they meant “communications between Carmel Labs and L’Oreal, which
`reference the Teresian Carmelites, and which both sides have produced in this case.” See Ex. 8.
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`3
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`Case 1:17-cv-00868-CFC-SRF Document 173 Filed 05/21/20 Page 4 of 5 PageID #: 7133
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`L’Oréal’s Request for a Further Revised Privilege Log.3 L’Oréal asks the Court to order
`additional information for certain entries in Plaintiffs’ privilege log, suggesting that that “the same
`deficiencies” Plaintiffs identified in L’Oréal’s log, see D.I. 159, are in Plaintiffs’. D.I. 160, at 4, n.
`5. A simple comparison refutes this. Plaintiffs’ typical description: “Confidential communication
`among Carmel Labs employees, board members, and retained consulting expert re. potential
`infringement reflecting work product created at the direction of counsel in anticipation of
`litigation.” D.I. 160, Ex. K, at Entry No. 968. L’Oréal’s typical description: “Document
`providing legal advice regarding intellectual property.” D.I. 159, Ex. N, at Entry No. 557.
`The entries L’Oréal identifies as deficient claim work-product protection for materials
`generated in anticipation of “potential infringement” litigation. Contrary to L’Oréal’s log,
`Plaintiffs’ entries including third parties identify the parties and describe their relationship to
`Plaintiffs and the privileged work product—marketing agent, accountant, testing agent, consulting
`expert. See Entries No. 148, 149, 194, 220, 968, 969, 973. Other entries in the log show that
`Plaintiffs were communicating with counsel at the same time. See, e.g., Entry No. 967 (confidential
`communication including expert, Plaintiffs, and outside counsel). This is more than enough to
`show that the documents were prepared in connection with possible litigation. See, e.g., Phillips
`Electronic N. Am. Corp. v. Universal Electronics Inc., 892 F. Supp. 108, 110 (D. Del. 1995)
`(distinguishing between testing performed in the normal course of business, and privileged testing
`performed as part of patent infringement investigation); United States v. Veolia Env’t N. Am.
`Operations, Inc., 2013 WL 5779653, at *5 (D. Del. 2013) (observing that retention of outside
`counsel showed litigation was reasonably anticipated). It is unclear what more information
`Plaintiffs could provide that would not be privileged. See Fed. R. Civ. P. 26(b)(5)(A)(ii) (privilege
`log should describe documents “without revealing information itself privileged or protected”).
`L’Oréal’s request for further information regarding Plaintiffs’ infringement analyses is improper.
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`In arguing otherwise, L’Oréal relies on two easily distinguishable cases. The Court in
`Sandvik found that testing the defendant performed as part of its routine patent-clearing
`investigations without anticipating specific litigation was not privileged—but that later testing
`conducted when the plaintiff had notified the defendant of potential infringement was privileged.
`Sandvik Intellectual Property AB v. Kennametal, Inc., 2011 WL 466696, at *4 (W.D. Pa. 2011).
`Plaintiffs’ log already shows that the privileged documents were generated in anticipation of
`potential infringement litigation. In re Oxbow Carbon LLC Unitholder Litigation, 2017 WL
`959396 (Del. Ch. 2017), is even further afield. The challenged log entries there consisted only of
`a “generic description,” the substance of which showed the documents related to “a business
`matter, not a litigation matter” (such as employee practices or travel policies), and the only
`recipient of any of the communications was an HR employee. Id., at *6. This is nothing like the
`entries in Plaintiffs’ log, which explain that the privileged documents were created in connection
`with potential infringement litigation and show the involvement of counsel.
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`As for the “various internal communications,” its May 13 letter is the first time L’Oréal
`has raised any issue with these entries. See Ex. 10. Again, Plaintiffs are at a loss for what more
`non-privileged information they can provide to show that materials created in connection with
`“potential infringement” are entitled to work-product protection.
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`3 After L’Oréal questioned the presence of third parties in certain entries in Plaintiffs’ log,
`Plaintiffs reviewed their log and provided a revised log within six days. See Ex. 10. L’Oréal
`never raised the issues addressed in its letter.
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`Case 1:17-cv-00868-CFC-SRF Document 173 Filed 05/21/20 Page 5 of 5 PageID #: 7134
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`Respectfully submitted,
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`/s/ Brian E. Farnan
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`Brian E. Farnan
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`cc: Counsel of Record (via E-Mail)
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`5
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