Case 1:17-cv-00868-CFC-SRF Document 173-1 Filed 05/21/20 Page 1 of 64 PageID #: 7135
`Case 1:17-cv-00868—CFC-SRF Document 173-1 Filed 05/21/20 Page 1 of 64 PageID #: 7135
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`EXHIBIT 1
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`EXHIBIT 1
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`Case 1:17-cv-00868-CFC-SRF Document 173-1 Filed 05/21/20 Page 2 of 64 PageID #: 7136
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` IN THE UNITED STATES DISTRICT COURT
` FOR THE DISTRICT OF DELAWARE
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`UNIVERSITY OF MASSACHUSETTS )
`MEDICAL SCHOOL and CARMEL )
`LABORATORIES, LLC, )
` )
` Plaintiffs, ) C.A. No.17-868-CFC-SRF
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`v. )
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`L'OREAL S.A. and L'OREAL )
`USA, INC., )
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` Defendants. )
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`Friday, April 24, 2020
`11:00 a.m.
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`844 King Street
`Wilmington, Delaware
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`BEFORE: THE HONORABLE SHERRY R. FALLON
` United States District Court Judge
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`APPEARANCES:
`FARNAN LLP
`BY: BRIAN FARNAN, ESQ.
` -and-
` SUSMAN GODFREY, LLP
` BY: JUSTIN A. NELSON, ESQ.
` BY: TAMAR LUSZTIG, ESQ.
` BY: BEATRICE FRANKLIN, ESQ.
`
`Counsel for the Plaintiffs
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`
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`Hawkins Reporting Service
`112 Burning Tree Road - Dover, Delaware 19904
`(302) 658-6697 FAX (302) 658-8418
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`THE COURT: Good morning,
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`everyone. It's Magistrate Judge Sherry Fallon.
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`I'm prepared to address the discovery dispute in
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`U Mass versus L'Oreal. Let me find out who is
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`on the call. First, do we have our court
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`stenographer, Ms. Gunning?
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`COURT REPORTER: Yes. This is
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`Stacy Ingram from Hawkins, Your Honor.
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`THE COURT: Oh, sorry, Stacy. I
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`was informed it might be Val Gunning. Thank you
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`for being available this morning. Is my law
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`clerk, Ms. Polito, on the line?
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`LAW CLERK: Yes, Judge, I'm on the
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`line.
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`THE COURT: All right. Thank you.
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`And let's start with appearances of counsel for
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`the University of Massachusetts, et al. Who is
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`on the line starting with Delaware counsel?
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`MR. FARNAN: Good morning, Your
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`Honor. Brian Farnan on behalf of the plaintiff
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`and with me is Justin Nelson, Tamar Lusztig and
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`Beatrice Franklin, all from Susman Godfrey.
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`THE COURT: All right. And who is
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`on the line for L'Oreal?
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`Hawkins Reporting Service
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`112 Burning Tree Road - Dover, Delaware 19904
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`(302) 658-6697 FAX (302) 658-8418
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`MS. MOWERY: Good morning, Your
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`Honor. This is Kate Mowery from Richards,
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`Layton & Finger on the line for L'Oreal USA. I
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`have Fred Cottrell on the line as well from my
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`office and then Isaac Ashkenazi from Paul
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`Hastings and Katherine Murray from Browne George
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`Ross.
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`Honor.
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`MS. MURRAY: Good morning, Your
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`THE COURT: Good morning,
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`everyone. Just making my notes here. I'll just
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`remind everyone, you're probably familiar with
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`this from the last time we did the call, but
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`please announce your name before you start
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`speaking. Since there is a slight delay since
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`we're all remotely connected, please speak
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`slowly so that the court stenographer can make
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`an accurate record of our proceedings today and
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`if you're not speaking, keep your phone on mute
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`so there aren't any outside or extraneous noises
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`interrupting or obscuring the audio on those who
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`are speaking. If you're going to cite to any
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`particular exhibits, the filings that I received
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`for this dispute were rather lengthy, just give
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`Hawkins Reporting Service
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`112 Burning Tree Road - Dover, Delaware 19904
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`(302) 658-6697 FAX (302) 658-8418
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`APPEARANCES CONTINUED:
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` RICHARDS, LAYTON & FINGER, P.A.
` BY: KATHERINE MOWERY, ESQ.
` BY: FRED COTTRELL, ESQ.
`
` -and-
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` PAUL HASTINGS,
` BY: ISAAC ASHKENAZI, ESQ.
`
` -and-
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` BROWNE GEORGE ROSS, LLP
` BY: KATHERINE MURRAY, ESQ.
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` Counsel for the Defendants
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`Hawkins Reporting Service
`112 Burning Tree Road - Dover, Delaware 19904
`(302) 658-6697 FAX (302) 658-8418
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`Page 1 to 4 of 128
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`04/30/2020 02:54:00 AM
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`Case 1:17-cv-00868-CFC-SRF Document 173-1 Filed 05/21/20 Page 3 of 64 PageID #: 7137
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`especially for an hour and a half so far on the
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`myself in a world of two extremes. Plaintiff Plaintiff
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`2 has disclosed the summary sheet that they've 2 has disclosed the summary sheet that they've
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`phone now. And I know that my voice is not
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`great, so I feel very bad for Your Honor. I'd
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`relied upon in amending their infringement relied upon in amending their infringement
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`like to address three points quickly. Their
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`contentions and that's pretty much the extent, contentions and that's pretty much the extent,
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`5 as I read Gillette, as to what Judge Stark 5 as I read Gillette, as to what Judge Stark
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`argument that they only need to -- that they
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`6 permitted in Gillette, that if you're going to 6 permitted in Gillette, that if you're going to
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`could simply rely on the summary documents that
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`they get from an expert, including those, say
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`rely on those select images, you've waived the rely on those select images, you've waived the
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`8 privileges that may have once applied to that 8 privileges that may have once applied to that
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`that they plan on relying on these tests in the
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`9 disclosed images. And the problem with Gillette 9 disclosed images. And the problem with Gillette
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`case, but not get any other documents relating
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`to it, that really establish a precedent for
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`is that it's silent on the scope of discovery is that it's silent on the scope of discovery
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`gamesmanship. You can imagine that the parties
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`that Judge Stark permitted. Did he allow that Judge Stark permitted. Did he allow
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`would simply say or simply get a quick summary
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`full-blown expert discovery to commence because full-blown expert discovery to commence because
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`13 of the disclosure of those select images or did 13 of the disclosure of those select images or did
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`chart and not allow another party to investigate
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`14 he only permit the disclosure of the selected 14 he only permit the disclosure of the selected
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`the veracity of those opinions in the case --
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`earlier in the case than otherwise would be
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`images and whatever other documents went along images and whatever other documents went along
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`16 with them that were incorporated into the 16 with them that were incorporated into the
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`allowed for an expert discovery.
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`I also want to note that in
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`infringement contentions there. I don't know. infringement contentions there. I don't know.
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`18 The case doesn't give us any guidance. And with 18 The case doesn't give us any guidance. And with
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`Gillette the Court specifically said, this is at
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`the end of the portion that I quoted, it would
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`issues of privilege, I'm always treading issues of privilege, I'm always treading
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`not further the interest of fairness or
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`carefully and I don't necessarily want to open carefully and I don't necessarily want to open
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`efficiency to make defendants wait for expert
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`the door to full-blown premature expert the door to full-blown premature expert
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`22 discovery here before we have any expert report. 22 discovery here before we have any expert report.
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`discovery to learn if Gillette is relying on the
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`23 And that's the rub. 23 And that's the rub.
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`images. And then this is also key, in
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`parentheses, and only thereafter be in a
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`Now, is the -- if there is some Now, is the -- if there is some
`Hawkins Reporting Service
`Hawkins Reporting Service
`112 Burning Tree Road - Dover, Delaware 19904
`112 Burning Tree Road - Dover, Delaware 19904
`(302) 658-6697 FAX (302) 658-8418
`(302) 658-6697 FAX (302) 658-8418
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`position to analyze and potentially take
`discovery on them. And that's the point. This
`is stuff that, you know, they put at issue, Your
`Honor.
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`we're not asking for different tests. We're
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`asking for the documents that form -- that
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`allowed for the summary chart to be created, the
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`protocols, the testing. You can't create that
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`chart. So if there's a waiver of that chart,
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`then the documents that are used to make up that
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`chart would have been waived, as the Court found
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`in the Gillette case.
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`THE COURT: Well, here's -- I'm
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`through with argument. I'm ready to make a I'm ready to make a
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`ruling on this and I'm going to deny it without ruling on this and I'm going to deny it without
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`17 prejudice right now. And here's why. I'm not 17 prejudice right now.
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`dismissing the parts of the Gillette opinion
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`that you've just quoted, Mr. Ashkenazi. I was
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`focused when I read the papers and listened to
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`arguments on the parenthetical that Judge Stark
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`put in this opinion about only thereafter be in
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`a position to analyze and potentially take
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`discovery on them. But I'm -- again, I find
`Hawkins Reporting Service
`112 Burning Tree Road - Dover, Delaware 19904
`(302) 658-6697 FAX (302) 658-8418
`04/30/2020 02:54:00 AM
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`really narrow information that defendants need
`really narrow information that defendants need
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`in order to interpret this summary chart that's in order to interpret this summary chart that's
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`the exhibit that we looked at, then I think it's the exhibit that we looked at, then I think it's
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`4 a matter of meeting and conferring with the 4 a matter of meeting and conferring with the
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`5 plaintiff to see if you can informally, you 5 plaintiff to see if you can informally, you
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`6 know, get a response to that. And absent that, 6 know, get a response to that. And absent that,
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`if it's something that L'Oreal wants to continue if it's something that L'Oreal wants to continue
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`to push for, then I'm going to need something to push for, then I'm going to need something
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`9 more than Gillette and I'm going to probably 9 more than Gillette and I'm going to probably
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`10 need some letter briefing on privilege waiver 10 need some letter briefing on privilege waiver
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`11 and how far it goes, because that's my issue 11 and how far it goes, because that's my issue
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`12 here. How far does it go, how far does that 12 here. How far does it go, how far does that
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`13 door swing open because a summary chart has been 13 door swing open because a summary chart has been
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`relied upon to amend infringement contentions. relied upon to amend infringement contentions.
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`I just don't know the answer to that. I don't I just don't know the answer to that. I don't
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`think I have a fulsome record right now to be think I have a fulsome record right now to be
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`17 able to decide that, so I err on the side of 17 able to decide that, so I err on the side of
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`18 being conservative, denying it without prejudice 18 being conservative, denying it without prejudice
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`if there is some informal agreement with respect if there is some informal agreement with respect
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`to some type of underlying documents that aid in to some type of underlying documents that aid in
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`the interpretation of that chart or whether the interpretation of that chart or whether
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`23 defendants are really seeking to engage in 23 defendants are really seeking to engage in
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`full-blown expert discovery early on without an full-blown expert discovery early on without an
`Hawkins Reporting Service
`112 Burning Tree Road - Dover, Delaware 19904
`(302) 658-6697 FAX (302) 658-8418
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`Case 1:17-cv-00868-CFC-SRF Document 173-1 Filed 05/21/20 Page 4 of 64 PageID #: 7138
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`11 expert report and nothing more than this chart.
`11 you contend it does, you know, and plaintiffs
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`expert report and nothing more than this chart.
`you contend it does, you know, and plaintiffs
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`2 So that's where I'm at.2 So that's where I'm at.
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`2 have counter authority, again, I don't think I 2 have counter authority, again, I don't think I
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`3 have a fulsome enough record or have a specific 3 have a fulsome enough record or have a specific
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`MR. ASHKENAZI: Your Honor, if I
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`4 enough understanding of what else may be out 4 enough understanding of what else may be out
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`may just to quickly address two of the points
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`you made. And I understand Your Honor has --
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`there in order to make a ruling on this right there in order to make a ruling on this right
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`6 now and I'm concerned about opening the door to 6 now and I'm concerned about opening the door to
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`where Your Honor is coming from, but I think
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`7 premature expert discovery. Say hypothetically 7 premature expert discovery. Say hypothetically
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`there's a misunderstanding on two points.
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`First, we're not asking for full-blown expert
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`they produce the testing protocol and then they produce the testing protocol and then
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`discovery, we're not asking them to create any
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`there's, you know, again, documents that are not there's, you know, again, documents that are not
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`10 dually created but that you suspect and have 10 dually created but that you suspect and have
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`documents. Every single expert has an
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`experiment at protocol that's established before
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`reason to believe are currently in the reason to believe are currently in the
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`12 possession of what our expert came up with this 12 possession of what our expert came up with this
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`the experiment, we just want that. We want
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`that. There's results that are collected, we
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`summary chart. Then suppose there's some summary chart. Then suppose there's some
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`14 deficiency in that, and then there's a motion to 14 deficiency in that, and then there's a motion to
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`want those results. That's it. Existing
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`documents that go to the test. No
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`compel the underlying explanation for that and compel the underlying explanation for that and
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`communications with their experts. I apologize
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`then before you know it we're on a snowball then before you know it we're on a snowball
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`if that wasn't clear. That's what we're asking
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`course to take a deposition of an expert in this course to take a deposition of an expert in this
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`for. Now, they've said -- I don't know where a
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`case to get at the information underlying the case to get at the information underlying the
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`meet and confer is going to add anything here.
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`summary chart and underlying the documents which summary chart and underlying the documents which
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`They said they don't have any documents and will
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`support the summary chart and that's exactly the support the summary chart and that's exactly the
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`not give us any other documents relating to this
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`type of expert discovery path that I find is type of expert discovery path that I find is
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`test. Now, you know, with respect to -- if
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`inappropriate at this stage of a litigation. So inappropriate at this stage of a litigation. So
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`they're going to say we have all the information
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`those are my concerns. And I hear you and I those are my concerns. And I hear you and I
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`24 hear your reasons for needing this and inability 24 hear your reasons for needing this and inability
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`that we need from the tests, then I'd ask then
`Hawkins Reporting Service
`Hawkins Reporting Service
`112 Burning Tree Road - Dover, Delaware 19904
`112 Burning Tree Road - Dover, Delaware 19904
`(302) 658-6697 FAX (302) 658-8418
`(302) 658-6697 FAX (302) 658-8418
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`that Your Honor order them that if they're not
`to interpret the chart, but perhaps between you
`to interpret the chart, but perhaps between you
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`2 and plaintiffs' counsel there can be some level 2 and plaintiffs' counsel there can be some level
`willing to give us any additional documents they
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`3 of understanding of interpreting this chart and 3 of understanding of interpreting this chart and
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`be precluded from relying on -- they should be
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`precluded on relying on any other facts that are
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`the protocols and the underlying data underneath the protocols and the underlying data underneath
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`not included in that summary chart. That's it.
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`it and that can be resolved informally. And if it and that can be resolved informally. And if
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`6 not, then we're going to have to brief this 6 not, then we're going to have to brief this
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`They're hiding the facts and then at the same
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`time they plan on using it against us in expert
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`issue, opening up the privilege waiver and full issue, opening up the privilege waiver and full
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`8 on, full blown early on expert discovery without 8 on, full blown early on expert discovery without
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`discovery for these very tests.
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`9 expert opinion. So that's my concern. And 9 expert opinion. So that's my concern. And
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`And the last point I'd make, Your
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`Honor, is that the Court in Gillette ordered the
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`that's what we're going to deal with in the that's what we're going to deal with in the
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`production of documents, it granted the motion
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`future if the parties can't work it out.future if the parties can't work it out.
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`to compel and it granted the motion to compel
`MR. ASHKENAZI: Your Honor, on
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`the exact documents and types of documents as
`that point for the meet and confer, I think it
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`here. That's where I pointed Your Honor to in
`would be helpful, you know, if they're not
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`the briefing, which is it shows what the parties
`willing to give us any facts now, if they
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`sought, they sought testing conditions and
`believe that we have all the facts we need now,
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`protocols, underlying data, other images or test
`then they should be precluded on relying on
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`reports and that's the only thing we're asking
`anything else and we leave -- you know, we could
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`for right now. And that's what the Court
`have the meet and confer, but I would ask that
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`ordered to be granted in Gillette, Your Honor.
`if they don't give us any of the facts
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`THE COURT: All right. Well, my THE COURT: All right. Well, my
`underlying the tests, if he they try to
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`22 order stands. I'm going to direct the parties 22 order stands. I'm going to direct the parties
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`introduce additional facts that are not present
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`23 again, meet and confer on that. If Gillette 23 again, meet and confer on that. If Gillette
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`in the summary charts then they should be
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`stands for the production of such documents that stands for the production of such documents that
`precluded on using those.
`Hawkins Reporting Service
`Hawkins Reporting Service
`112 Burning Tree Road - Dover, Delaware 19904
`112 Burning Tree Road - Dover, Delaware 19904
`(302) 658-6697 FAX (302) 658-8418
`(302) 658-6697 FAX (302) 658-8418
`04/30/2020 02:54:00 AM
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`Case 1:17-cv-00868-CFC-SRF Document 173-1 Filed 05/21/20 Page 5 of 64 PageID #: 7139
`Case 1:17-cv-00868—CFC-SRF Document 173-1 Filed 05/21/20 Page 5 of 64 PageID #: 7139
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`EXHIBIT 2
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`EXHIBIT 2
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`Case 1:17-cv-00868-CFC-SRF Document 173-1 Filed 05/21/20 Page 6 of 64 PageID #: 7140
`
`Tamar Lusztig
`Kasaraneni, Karthik; Justin A. Nelson; Bill Carmody; Beatrice Franklin; Rodney Polanco; Keeley Lombardo; Brian E. Farnan; Michael J. Farnan
`PH-UMASS v. L’Oreal USDC; Dittmann, Eric W.; Ashkenazi, Isaac S.; Tymoczko, Nicholas; Frederick Cottrell; Katharine Mowery; Jason Rawnsley; Jeffrey Moyer;
`Dennis S. Ellis; Katherine F. Murray; Serli Polatoglu; Davida Brook
`RE: UMass et al. v. L’Oréal USA
`Tuesday, May 12, 2020 2:31:00 PM
`image001.png
`
`From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`Karthik,
`
` have responded in line in red below.
`
` I
`
`
`-Tamar
`
`From: Kasaraneni, Karthik <karthikkasaraneni@paulhastings.com>
`Sent: Friday, May 8, 2020 9:29 PM
`To: Tamar Lusztig <TLusztig@susmangodfrey.com>; Justin A. Nelson <jnelson@SusmanGodfrey.com>; Bill Carmody
`<bcarmody@SusmanGodfrey.com>; Beatrice Franklin <BFranklin@susmangodfrey.com>; Rodney Polanco
`<RPolanco@susmangodfrey.com>; Keeley Lombardo <KLombardo@susmangodfrey.com>; Brian E. Farnan
`<bfarnan@farnanlaw.com>; Michael J. Farnan <mfarnan@farnanlaw.com>
`Cc: PH-UMASS v. L’Oreal USDC <PH-UMass-LOreal-USDC@paulhastings.com>; Dittmann, Eric W. <ericdittmann@paulhastings.com>;
`Ashkenazi, Isaac S. <isaacashkenazi@paulhastings.com>; Tymoczko, Nicholas <nicholastymoczko@paulhastings.com>; Frederick
`Cottrell <cottrell@rlf.com>; Katharine Mowery <mowery@rlf.com>; Jason Rawnsley <rawnsley@rlf.com>; Jeffrey Moyer
`<moyer@rlf.com>; Dennis S. Ellis <dellis@bgrfirm.com>; Katherine F. Murray <kmurray@bgrfirm.com>; Serli Polatoglu
`<spolatoglu@bgrfirm.com>; Davida Brook <DBrook@susmangodfrey.com>
`Subject: RE: UMass et al. v. L’Oréal USA
`
`Counsel,
`
`Thank you for taking the time to speak with us on Tuesday regarding your responses to L’Oréal USA’s 30(b)(6) Topics. The following is
`a summary of what the Parties discussed on that call.
`
`With respect to Topics 7, 9, 10, 11, 12, 13, 14, 15, 18, 20, 21, 23, 25, 26, 36, and 38, we discussed how Plaintiffs’ original responses
`were too narrow, and Plaintiffs agreed to provide a witness(es) on the full scope of these topics.
`
`This doesn’t quite capture the full extent of what we discussed, which was:
`
`
`Topic 7—We said we don’t object to providing testimony on this topic, but will prepare a witness reasonably rather than on, for
`example, “all facts and circumstances.” If there are particular issues you’d like the witness prepared on, please let us know in
`advance.
`Topic 9—We had limited our written response to licensing, and you asked us to include enforcement. We agreed.
`Topic 10—We said we don’t object to providing testimony on this topic, but will prepare a witness reasonably rather than on,
`for example, “any all facts and circumstances,” “all documents,” and “all communications.” If there are particular issues or
`documents you’d like the witness prepared on, please let us know in advance.
`Topic 11—We said we don’t object to providing testimony on this topic, but will prepare a witness reasonably rather than
`preparing a witness to have memorized “all entities” who were ever offered a license.
`Topic 12—You asked us to present a witness from Carmel Labs on this topic as well, and we agreed.
`Topic 13—You asked us to present a witness from Carmel Labs on this topic as well, and we agreed.
`Topic 14—You asked us to present a witness from Carmel Labs on this topic as well, and we agreed.
`Topic 15—You asked us to present a witness from Carmel Labs on this topic as well, and we agreed.
`Topic 18—You asked us to present a witness able to testify about business and/or marketing plans from Carmel Labs, and we
`agreed.
`Topic 20—We explained that information about the contemplated enforcement of the asserted patents will generally be
`privileged, but agreed to present a witness on any non-privileged contemplated enforcement, if any.
`Topic 21—We said we don’t object to providing testimony on this topic, but will prepare a witness reasonably rather than on
`“all Your documents.” If there are particular documents you’d like the witness prepared on, please let us know in advance.
`Topic 23—You asked us to provide testimony about documents reflecting the inventors’ work, and we agreed.
`Topic 25—We did not discuss this topic. We had previously agreed in writing to provide you, subject to our objections, with a
`witness “to testify about any non-privileged aspects of this topic.” Are you now asking us to provide a witness about privileged
`aspects of this topic?
`Topic 26—We previously agreed in writing to provide a witness to testify about “non-privileged aspects of the prosecution of
`the Asserted Patents.” You asked us to include non-privileged aspects of the prosecution of related patents, and non-privileged
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 173-1 Filed 05/21/20 Page 7 of 64 PageID #: 7141
`
`aspects (if any) about “decisions to collect or waive royalties owed by licensees.” We agreed.
`Topic 36—We previously agreed in writing to provide a witness to testify about “non-privileged aspects of Carmel Labs’ and Dr.
`Dobson’s communications with L’Oréal USA and/or L’Oréal S.A.” You asked us to also provide a witness about UMass’
`communications with L’Oreal, and we agreed.
`Topic 38-- We said we don’t object to providing testimony on this topic, but will prepare a witness reasonably rather than on,
`for example, “all” disclosures and “any” communications. If there are particular issues or communications you’d like the
`witness prepared on, please let us know in advance.
`
`
`With respect to Topic 16, Plaintiffs agreed to provide a witness on any standard royalty rates that Plaintiffs use, for example, for
`cosmetics or for the cosmetics industry. We explained that Plaintiffs do not use any standard royalty rates for cosmetics or the
`cosmetics industry, but, to the extent we have knowledge, we can present a witness.
`
`With respect to Topic 19, we agreed to limit this topic to any criticism about which Plaintiffs are aware. Please confirm that you will
`provide a witness for this Topic. We don’t object to providing this testimony, but, per our discussion, we do not plan to educate a
`witness about criticisms that have been made about Easeamine.
`
`With respect to Topic 22, Plaintiffs objected to this topic (seeking testimony regarding “[a]ny product or design-around that is an
`acceptable non-infringing alternative to the inventions recited in any of the asserted claims in the Asserted Patents”) in its entirety as
`seeking expert testimony and refused to put up a witness. We can provide a witness to give fact (not expert) testimony within
`Plaintiffs’ knowledge on this topic, to the extent they have any.
`
`With respect to Topics 27-29, 31, and 32, Plaintiffs agreed to provide a witness to discuss the scope of these topics as it relates to the
`work conducted by or on behalf of Plaintiffs and/or the inventors of the patents-in-suit. We explained that we are entitled to
`corporate testimony on any responsive information about which Plaintiffs are aware, even work of third parties. Plaintiffs have
`refused to provide any such testimony. We can provide a witness to give fact testimony limited to Plaintiffs’ knowledge of third party
`work, to the extent they have any. We will not educate a witness to testify on third party activities.
`
`With further respect to Topic 31, Plaintiffs also stated that they were refusing to provide a witness to testify regarding the penetration
`With further respect to Topic 31, Plaintiffs also stated that they were refusing to provide a witness to testify regarding the penetration
`testing identified in their Infringement Contentions. As we have discussed repeatedly, this is not a proper topic for fact witness
`testing identified in their Infringement Contentions. A
`testimony.
`
`With respect to Topic 30, after we indicated that this topic is limited as written to adenosine, Plaintiffs indicated that they would likely
`be able to put up a witness on this topic, but needed to confirm. We await your confirmation. We previously agreed in writing to
`provide a witness to testify about “the research on the effect of adenosine on cell proliferation conducted by the inventors of the
`Asserted Patents.” You asked us to provide testimony about UMass work, apart from inventor work, related to the effect of adenosine
`on cell proliferation. We can do so, to the extent there is any that can be discovered through a reasonable investigation.
`
`With respect to Topics 33-35, Plaintiffs indicated that they would likely be able to designate a witness to provide factual testimony on
`these topics. We await your confirmation. For each of these topics, we previously agreed in writing to provide a witness to testify
`about nonprivileged aspects of the prosecution of the Asserted Patents. You asked us to include related patents as well. We can do
`that.
`
`With respect to Topic 37, Plaintiffs agreed to put up a witness to provide factual testimony related to Plaintiffs’ response to L’Oréal
`USA’s Interrogatory No. 15. We already agreed in writing to provide you with a witness to testify about “the non-privileged facts within
`Plaintiffs’ knowledge and control that are described in Plaintiffs’ response to Defendant’s interrogatory No. 15.”
`
`With respect to Topic 39, Plaintiffs indicated that everything relating to the testing described in this topic is privileged, and that the
`correspondence cited by the Topic is covered by other Topics. We disagreed, and indicated that the parties appear to be at an
`impasse. The topic calls for testimony about privileged testing; it does not call for testimony about correspondence. However, L’Oreal
`has served other topics about communications between Plaintiffs and L’Oreal (e.g., No. 10) that we have agreed to provide testimony
`on.
`
`Plaintiffs also stated that they will make reasonable efforts to prepare their witnesses on 30(b)(6) deposition topics, but requested
`that if there are any specific documents about which we would like a witness to be prepared to testify, that we identify those
`documents in advance.
`
`Regards,
`Karthik
`
`
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 173-1 Filed 05/21/20 Page 8 of 64 PageID #: 7142
`
`From: Kasaraneni, Karthik <karthikkasaraneni@paulhastings.com>
`Sent: Monday, May 4, 2020 3:30 PM
`To: Tamar Lusztig <TLusztig@susmangodfrey.com>; Justin A. Nelson <jnelson@SusmanGodfrey.com>; Bill Carmody
`<bcarmody@SusmanGodfrey.com>; Beatrice Franklin <BFranklin@susmangodfrey.com>; Rodney Polanco
`<RPolanco@susmangodfrey.com>; Keeley Lombardo <KLombardo@susmangodfrey.com>; Brian E. Farnan
`<bfarnan@farnanlaw.com>; Michael J. Farnan <mfarnan@farnanlaw.com>
`Cc: PH-UMASS v. L’Oreal USDC <PH-UMass-LOreal-USDC@paulhastings.com>; Dittmann, Eric W. <ericdittmann@paulhastings.com>;
`Ashkenazi, Isaac S. <isaacashkenazi@paulhastings.com>; Tymoczko, Nicholas <nicholastymoczko@paulhastings.com>; Frederick
`Cottrell <cottrell@rlf.com>; Katharine Mowery <mowery@rlf.com>; Jason Rawnsley <rawnsley@rlf.com>; Jeffrey Moyer
`<moyer@rlf.com>; Dennis S. Ellis <dellis@bgrfirm.com>; Katherine F. Murray <kmurray@bgrfirm.com>; Serli Polatoglu
`<spolatoglu@bgrfirm.com>; Davida Brook <DBrook@susmangodfrey.com>
`Subject: RE: UMass et al. v. L’Oréal USA
`
`Tamar,
`
`Tuesday at 3:30 PM EDT works for us. We will circulate a dial-in.
`
`Note that we are in receipt of Beatrice’s email from Friday afternoon summarizing Thursday’s meet and confer. We disagree with
`some of Plaintiffs’ characterizations of the conversation, and we are working to respond as soon as practicable, including by proposing
`a separate timeslot to discuss the outstanding issues.
`
`Regards,
`Karthik
`
`
`From: Tamar Lusztig <TLusztig@susmangodfrey.com>
`Sent: Sunday, May 3, 2020 3:51 PM
`To: Kasaraneni, Karthik <karthikkasaraneni@paulhastings.com>; Justin A. Nelson <jnelson@SusmanGodfrey.com>; Bill Carmody
`<bcarmody@SusmanGodfrey.com>; Beatrice Franklin <BFranklin@susmangodfrey.com>; Rodney Polanco
`<RPolanco@susmangodfrey.com>; Keeley Lombardo <KLombardo@susmangodfrey.com>; Brian E. Farnan
`<bfarnan@farnanlaw.com>; Michael J. Farnan <mfarnan@farnanlaw.com>
`Cc: PH-UMASS v. L’Oreal USDC <PH-UMass-LOreal-USDC@paulhastings.com>; Dittmann, Eric W. <ericdittmann@paulhastings.com>;
`Ashkenazi, Isaac S. <isaacashkenazi@paulhastings.com>; Tymoczko, Nicholas <nicholastymoczko@paulhastings.com>; Frederick
`Cottrell <cottrell@rlf.com>; Katharine Mowery <mowery@rlf.com>; Jason Rawnsley <rawnsley@rlf.com>; Jeffrey Moyer
`<moyer@rlf.com>; Dennis S. Ellis <dellis@bgrfirm.com>; Katherine F. Murray <kmurray@bgrfirm.com>; Serli Polatoglu
`<spolatoglu@bgrfirm.com>; Davida Brook <DBrook@susmangodfrey.com>
`Subject: [EXT] RE: UMass et al. v. L’Oréal USA
`
`We could do Tuesday at 3:30 PM ET. If that works for you, please send a dial-in.
`
`From: Kasaraneni, Karthik <karthikkasaraneni@paulhastings.com>
`Sent: Friday, May 1, 2020 4:24 PM
`To: Justin A. Nelson <jnelso