Case 1:17-cv-00868-CFC-SRF Document 183 Filed 06/03/20 Page 1 of 9 PageID #: 7343
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Plaintiffs,
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`v.
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`Defendant.
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` Case No. 17-cv-868-CFC-SRF
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`UNIVERSITY OF MASSACHUSETTS and
`CARMEL LABORATORIES, LLC,
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`L’ORÉAL USA, INC.,
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`NOTICE OF DEPOSITION PURSUANT TO RULE 30(b)(6)
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`PLEASE TAKE NOTICE that, pursuant to Rule 30(b)(6) of the Federal Rules of Civil
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`Procedure, on June 15, 2020, via remote deposition software, counsel for the University of
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`Massachusetts and Carmel Laboratories, LLC will take the videotaped deposition of the designated
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`representative of L’Oréal USA, Inc., best able to testify as to Topics 6, 7, 8, 9, 10, 16, 18, and 32
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`set forth in Exhibit 1. L’Oréal USA, Inc., has a duty to designate one or more officers, directors,
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`managing agents, or other persons with sufficient knowledge to testify fully regarding topics 6, 7,
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`8, 9, 10, 16, 18, and 32 listed in Exhibit 1.
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`The deposition will be taken before a Notary Public or some other officer authorized by
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`law to administer oaths, who will appear remotely, for use at trial. The above deposition will be
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`recorded by stenographic means, audiotaped, videotaped, and/or transcribed using realtime
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`interactive transcription (e.g., LiveNote). Further, given the deposition will be taken remotely, it
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`may feature instant audio and visual display of each participant, include real-time electronic
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`recording and capture of exhibits, and utilize paperless exhibit display. The deposition will
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`continue from day to day until completed.
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`1
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`Case 1:17-cv-00868-CFC-SRF Document 183 Filed 06/03/20 Page 2 of 9 PageID #: 7344
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`Respectfully submitted,
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`FARNAN LLP
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`/s/ Brian E. Farnan
`Brian E. Farnan (Bar No. 4089)
`Michael J. Farnan (Bar No. 5165)
`919 North Market Street, 12th Floor
`Wilmington, DE 19801
`Telephone: (302) 777-0300
`Facsimile: (302) 777-0301
`bfarnan@farnanlaw.com
`mfarnan@farnanlaw.com
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`
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`Attorneys for University of Massachusetts
`and Carmel Laboratories, LLC
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`DATED: June 3, 2020
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`Of Counsel:
`William Christopher Carmody
`Tamar E. Lusztig
`Beatrice C. Franklin
`SUSMAN GODFREY L.L.P.
`1301 Avenue of the Americas, 32nd Floor
`New York, NY 10019
`Telephone: (212) 336-8330
`Facsimile: (212) 336-8340
`bcarmody@susmangodfrey.com
`tlusztig@susmangodfrey.com
`bfranklin@susmangodfrey.com
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`Justin A. Nelson
`SUSMAN GODFREY L.L.P.
`1000 Louisiana Street, Suite 5100
`Houston, Texas 77002
`Telephone: (713) 651-9366
`Facsimile: (713) 654-6666
`jnelson@susmangodfrey.com
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`Matthew B. Lowrie
`FOLEY & LARDNER LLP
`111 Huntington Avenue, Suite 2600
`Boston, MA 02199
`Telephone: (617) 342-4000
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`2
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`Case 1:17-cv-00868-CFC-SRF Document 183 Filed 06/03/20 Page 3 of 9 PageID #: 7345
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`Attorneys for Carmel Laboratories, LLC
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`Attorney for University of Massachusetts
`Medical School
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`Facsimile: (617) 342-4001
`mlowrie@foley.com
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`COMMONWEALTH OF MASSACHUSETTS,
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`By its attorney,
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`MAURA HEALEY
`ATTORNEY GENERAL
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`By: William Christopher Carmody
`William Christopher Carmody
`Special Assistant Attorney General
`SUSMAN GODFREY L.L.P.
`1301 Avenue of the Americas, 32nd Floor
`New York, NY 10019
`Telephone: (212) 336-8330
`Facsimile: (212) 336-8340
`bcarmody@susmangodfrey.com
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`3
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`Case 1:17-cv-00868-CFC-SRF Document 183 Filed 06/03/20 Page 4 of 9 PageID #: 7346
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`EXHIBIT 1
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`Definitions
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`1. The terms “Defendant,” “You,” “Your,” or “L’Oréal” shall refer to defendant L’Oréal
`USA, Inc., and shall include L’Oréal S.A. as well as L’Oréal USA Inc.’s parent,
`subsidiaries, affiliates, divisions, successors or assignees, and their respective officers,
`directors, employees, consultants, representatives, and agents.
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`2. The term “Document” or “Documents” is used in the broadest sense permitted by the
`Federal Rules of Civil Procedure and means the original (or any copy when originals are
`not available) and any drafts or non-identical copies thereof.
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`3. The terms “Asserted Patents” and “Patents-in-Suit” shall mean United States Patents No.
`6,423,327 and 6,645,513.
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`4. The term “Accused Products” refers to the products listed in Exhibit A to Plaintiffs’
`Disclosure of Asserted Claims and Initial Infringement Contentions, served on October 10,
`2019, subject to any subsequent supplement or amendment
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`5. The terms “all” and “each” shall be construed as “and,” “each,” and “and/or.”
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`6. The term “any” should be understood in either its most or least inclusive sense as will bring
`within the scope of the topic all responses that might otherwise be construed to be out of
`its scope.
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`7. The term “including” shall mean including but not limited to.
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`8. The terms “relate,” “relating,” or “related” mean in any way, directly or indirectly, in whole
`or part, relating to, concerning, referring to, discussing, mentioning, regarding, pertaining
`to, describing, reflecting, containing, analyzing, studying, reporting on, commenting on,
`evidencing, constituting, setting forth, considering, recommending, modifying, amending,
`confirming, endorsing, representing, supporting, qualifying, terminating, revoking,
`refuting, undermining, canceling, contradicting or negating.
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`9. The terms “and” and “or” shall be construed disjunctively or conjunctively as necessary
`to bring within the scope of these topics all information which might otherwise be
`construed to be outside their scope.
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`10. The terms “sale,” “sales,” “sell” or “sold” shall include sales, licenses, leases, loans,
`consignments, distribution to resellers or others (including, but not limited to, to
`Your related and affiliated entities) and all other methods of product distribution
`whether direct or indirect, and whether the product is distributed singly or in
`combination with or as part of another product, and whether or not revenue was or
`will be received therefrom.
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`Case 1:17-cv-00868-CFC-SRF Document 183 Filed 06/03/20 Page 5 of 9 PageID #: 7347
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`Topics
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`1. How L’Oréal realizes, recognizes, and classifies revenues from the Accused Products,
`including a description of L’Oréal’s methodology for characterizing revenue as U.S. or
`international for U.S. tax purposes.
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`2. L’Oréal’s accounting practices pertaining to the Accused Products, including L’Oréal’s
`methods of accounting for revenues, costs, profits, methods or depreciation, allocation of
`expenses, inventory measurements, profit allocation, losses, and assignments of debt.
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`3. L’Oréal’s methods for valuing the Accused Products with respect to their contributions to
`good will, user retention, advertising revenue, collection of user data, and/or contribution
`to other revenue-generating products of L’Oréal.
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`4. L’Oréal’s revenues, assigned costs, profit margins, and total profits for the Accused
`Products.
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`5. For the financial records and/or financial summary documents produced by L’Oréal in this
`litigation, the circumstances under which those records were generated, the accounting
`methods and practices employed in generating such records, the underlying data from
`which such records were generated, the explanation of any terms or legends in such
`records, and reconciliation of those figures to those disclosed in public filings, including
`the definitions and amounts of any deductions and allowances necessary for reconciliation.
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`6. License agreements, settlement agreements, and/or royalty agreements relating to the
`Accused Products or to L’Oréal’s damages contentions that L’Oréal, or its affiliates or
`assigns, has entered into from 2005 to the present or that cover that period.
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`7. License agreements, settlement agreements, and/or royalty agreements relating to
`L’Oréal’s use of adenosine in its products and/or otherwise relating to the Accused
`Products.
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`8. Any patents or proprietary technology owned or licensed by L’Oréal relating to adenosine.
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`9. From 2008 to the present, L’Oréal’s evaluation of patents or other proprietary technology
`relating to the Accused Products, and L’Oréal’s methods or practices for determining
`values or royalty rates for such technology.
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`10. L’Oréal’s policies and practices concerning patent licensing, including any standard or
`preferred terms for license agreements and the process or practices by which L’Oréal
`determines the nature, scope, and terms of license agreements in which L’Oréal or its
`affiliates or assigns is a licensee.
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`11. L’Oréal’s marketing and financial plans, market studies, reports, forecasts, surveys,
`strategies, and projections for the sale, use, or monetization of the Accused Products,
`including L’Oréal’s media and advertising campaigns related to the Accused Products.
`This topic is limited to 2010 to the present.
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`12. L’Oréal’s advertisements, public presentations, or public statements that reference or show
`the Accused Products.
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`13. The importance of the Accused Products to L’Oréal’s revenues, profit, and market strategy.
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`14. The importance of any specific component or feature of the Accused Products, including
`the use of adenosine, to pricing, sales, or marketing of the Accused Products, and any
`analysis concerning the same.
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`15. Surveys, studies, research, or analyses done by or on behalf of L’Oréal regarding its
`competitors’ use of adenosine in cosmetic skincare products.
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`16. Surveys, studies, research, or analyses done by or on behalf of L’Oréal regarding
`reasonable royalty rates for license rights to intellectual property.
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`17. Cost/benefit analyses related to the inclusion/exclusion of adenosine in the Accused
`Products.
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`18. Your patent-clearing policies and procedures, as well as policies and procedures for
`reviewing potential licensing needs.
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`19. Your analysis, including your receipt of third-party analysis, of competitors in the
`marketplace for the Accused Products, including competitor assessments, product
`comparisons, feature assessments, and market share analyses.
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`20. L’Oréal’s ownership of the following brands: Biotherm; Decleor; Garnier; Giorgio
`Armani; IT Cosmetics; Kiehl’s; La Roche Posay; Lancome; L’Oréal Paris; Maybelline;
`NYX; Shu Uemura; SkinCeuticals; The Body Shop; Vichy; Yves Saint Laurent.
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`21. Consumer/customer surveys and market research that relates to the Accused Products,
`including how such surveys are conducted, what ingredients and product features are
`important to consumers, and any consumer/customer preferences as to the performance and
`characteristics of the Accused Products.
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`22. Your marketing of the Accused Products.
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`23. How Your customers apply or otherwise use the Accused Products, including instructions
`on how to apply the Accused Products.
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`24. Any and all products that You assert are acceptable non-infringing alternatives or design
`around alternatives to each of the Accused Products and information about such non-
`infringing alternatives or design-around alternatives, including but not limited to when
`such alternatives were designed and developed; whether they were ever sold or
`implemented, by whom, the number of units sold, and the time period that they were on
`sale; the cost to design (including costs associated with engineering, costs such as royalties
`associated with the inclusion of other intellectual property to facilitate any proposed
`alternative, time/delay to market) and to manufacture such alternatives, as well as the price
`at which they were sold; all performance characteristics of such alternatives, why such
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`alternatives do not infringe the Asserted Claims; and all reasons why any such alternative
`would be an acceptable substitute.
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`25. The identity, location, and format of any documents disclosing the operation,
`characteristics, and performance of the Accused Products.
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`26. The person(s) most directly responsible for designing the Accused Products.
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`27. The inception, planning, development, and creation of each of the Accused Products,
`including why that Accused Product was developed, what key features distinguished it
`from other products, why such key features were developed, the persons involved in
`developing such key features, what market and technical studies were made in connection
`with the development, and what were the goals and target customers for that Accused
`Product.
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`28. How, when, and through whom L’Oréal first became aware of the Patents-in-Suit.
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`29. All communications with third parties relating to the Patents-in-Suit.
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`30. All investigations, studies, discussions, actions, and decisions by L’Oréal in light of Your
`knowledge of the Patents-in-Suit.
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`31. How Your response to knowledge of the Patents-in-Suit deviated from or accorded with
`Your intellectual property policies.
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`32. All licenses you hold relating to U.S. Patent Nos. 9,018,177; 9,023,826; 9,072,919; and
`9,107,853, and the negotiations that resulted in those licenses, including any documents
`and/or information You received as part of such licenses.
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`33. All testing of, including clinical or dermatological surveys relating to, the Accused
`Products.
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`34. All testing You or Your affiliates have performed relating to dermal cell proliferation.
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`35. All testing You or Your affiliates have performed involving adenosine.
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`36. Any research or academic publications You have funded or otherwise supported involving
`adenosine.
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`37. When and the reason(s) why You determined to use adenosine as an ingredient in any
`product You have sold in the United States, including but not limited to any testing and/or
`research that was relevant to Your decision to include adenosine in Your products.
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`38. When and the reason(s) why You determined not to include adenosine as an ingredient in
`products presented as equivalent, similar, or related to discontinued Accused Products that
`contained adenosine.
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`39. All testing You or Your affiliates have performed that involves testing the amount or
`concentration of an ingredient that reaches the dermal layer of the skin.
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`40. Your classification or categorization of product ingredients, including which ingredients
`You classify as conditioning agents, transdermal delivery agents, emollients, humectants,
`occlusive agents, or penetration enhancers.
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`41. Whether You produced documents to Plaintiffs in this case as those documents were kept
`in the usual course of business, and the extent (if any) to which You produced documents
`other than as they were kept in the usual course of business.
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`42. The identity, location, and nature of the files that were the source of the documents You
`produced to Plaintiffs in this action, and a description by Bates range of the documents
`produced from each file and location.
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`43. The identity, job function, office location, and employer of the custodians whose
`documents You produced to Plaintiffs in this action, and a description by Bates range of
`the documents produced from each custodian’s files.
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`44. The status of Your document collection and production efforts, including a description of
`the files or document repositories that You have not yet searched or from which you have
`not produced responsive documents.
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`45. Potentially responsive documents that have not yet been produced, including the reason for
`non-production.
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`46. The steps taken by You to preserve and collect documents and things potentially relevant
`to this lawsuit, including the search terms used for collecting potentially responsive emails
`and other electronically stored information.
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`47. Your retention, storage, and access policies for financial data, officialization documents,
`marketing materials, product packaging, product tests, product test results, and product
`samples.
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`48. For financial information, technical information, product packaging, or marketing
`materials for each Accused Product that has not been located or produced in this litigation:
`the circumstances under which the documents or information were kept; the retention
`policy that applied to the documents or information; the date on which the documents or
`information were deleted, lost, or destroyed; and the circumstances under which the
`documents or information were deleted, lost or destroyed.
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`49. Communications You have had with anyone regarding this lawsuit.
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`50. Whether and which documents and/or things produced in this litigation were collected from
`the files of L’Oréal S.A., or are otherwise documents and/or things created and/or
`maintained by L’Oréal S.A.
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`51. Whether and how documents and/or things created and/or maintained by L’Oréal S.A.—
`including but not limited to documents and things related to product research, revenue and
`profit information, product tests and their results, patent filings, product samples, and
`L’Oréal S.A.’s communications with potential patent licensors—can be requested,
`accessed, or obtained by L’Oréal USA, including but not limited to computer server access,
`shared document access, hard copies, and/or communications about any of the same.
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`52. Whether and how documents and/or things created and/or maintained by L’Oréal USA—
`including but not limited to documents and things related to product research, revenue and
`profit information, product tests and their results, patent filings, product samples, and
`L’Oréal USA’s communications with potential patent licensors—can be requested,
`accessed, or obtained by L’Oréal S.A., including but not limited to computer server access,
`shared document access, hard copies, and/or communications about any of the same.
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`53. Whether and how L’Oréal S.A. and L’Oréal USA communicate on corporate matters,
`including but not limited to sales of products, testing of products, marketing of products,
`revenue and profits from those products, and/or allegations of patent infringement.
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