Case 1:17-cv-00868-CFC-SRF Document 218 Filed 06/25/20 Page 1 of 5 PageID #: 8052
`
`Frederick L. Cottrell III
`302-651-7509
`Cottrell@rlf.com
`
`June 18, 2020
`
`VIA CM/ECF
`The Honorable Sherry R. Fallon
`District Court of Delaware
`J. Caleb Boggs Federal Building
`Wilmington, DE 19801-3567
`
`PUBLIC VERSION
`
`Re: University of Massachusetts and Carmel Laboratories, LLC v. L’Oréal USA, Inc.,
`C.A. No. 17-868-CFC-SRF
`
`Dear Judge Fallon:
`
`Defendant L’Oréal USA, Inc. (“L’Oréal USA”) seeks an order remedying issues that
`arose during the June 10, 2020 deposition of Dennis Wyrzykowski. (D.I. 207.) Specifically,
`L’Oréal USA requests that: (1) the Court overrule counsel’s objection that—despite counsel’s
`own designation of Mr. Wyrzykowski as a Rule 30(b)(6) deponent (cf. Ex. A at 1-2)1—Mr.
`Wyrzykowski’s testimony was elicited solely pursuant to Rule 30(b)(1), and not Rule 30(b)(6);
`(2) Mr. Wyrzykowski be ordered to appear for one more full day of deposition prior to June 30,
`2020; and (3) the Court overrule counsel’s privilege objections to questions posed to Mr.
`Wyrzykowski regarding the details of statements he made in letters to L’Oréal in 2015 and 2016
`about product testing allegedly conducted.
`
`Mr. Wyrzykowski is the founder and President of Plaintiff Carmel Laboratories (“Carmel
`Labs”). He also negotiated the license agreement between Carmel Labs and Plaintiff University
`of Massachusetts (“UMass”) that covered the asserted patents. L’Oréal USA noticed Mr.
`Wyrzykowski’s deposition pursuant to Rule 30(b)(1) on May 4, 2020. (Ex. B.) On May 18,
`2020, Plaintiffs designated Mr. Wyrzykowski as the witness responsible for 19 of L’Oréal
`USA’s Rule 30(b)(6) deposition topics. (Ex. A at 2.) Plaintiffs provided a single date for Mr.
`Wyrzykowski’s deposition, insisting no alternative date would be provided. (See generally Ex.
`C.) L’Oréal USA offered other dates in advance of its discovery cut-off date, but not until
`L’Oréal USA would agree to let the deposition proceed after the discovery cut-off dates, when
`all other depositions of Plaintiffs’ witnesses were complete, did Plaintiffs offer an alternative
`date for Mr. Wyrzykowski—Wednesday, June 10th at 10:00 a.m. EST. (Ex. D at 1.) Then, the
`night of June 8th, Plaintiffs insisted they had a “hard stop of 6pm ET,” and thus suggested the
`deposition begin at 9:00 a.m. EST (6:00 a.m. PST). (Ex. E.) Plaintiffs had done the same thing
`with UMass’ Rule 30(b)(6) designee, Dr. James McNamara, requiring his deposition begin at
`8:30 a.m. EST (5:30 a.m. PST) with a hard stop at 5:30 p.m. EST. (Ex. F at 1.)
`
`On May 26, 2020, Plaintiffs retracted a dozen topics on which Mr. Wyrzykowski was
`originally designated, leaving him to handle only seven topics, just two of which he would cover
`on his own (rather than in conjunction with other Rule 30(b)(6) witnesses). (Ex. A at 1.) The
`
`1 All references to “Rules” herein refer to the Federal Rules of Civil Procedure.
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`

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`Case 1:17-cv-00868-CFC-SRF Document 218 Filed 06/25/20 Page 2 of 5 PageID #: 8053
`The Honorable Sherry R. Fallon
`June 18, 2020
`Page 2
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`topics formerly assigned to Mr. Wyrzykowski were shifted to Dr. McNamara and Carmel Labs’
`new designee, Mr. Paul Menard, whose depositions were proceeding just one day and nine days
`later, respectively. However, these witnesses were not capable of handling the topics originally
`assigned to Mr. Wyrzykowski, and in many instances indicated that Mr. Wyrzykowski would be
`the appropriate witness to testify on such matters. (See, e.g., Ex. G at 60:15-25, 61:5-15, 70:17-
`71:8, 89:18-90:2, 121:10-122:6, 203:10-14, 207:14-23, 233:9-19, 302:1-8 (Mr. Menard, who left
`Carmel Labs in 2014, testifying repeatedly that he did not have information relating to topics on
`which he was designated, and that Mr. Wyrzykowski would be the person with the sought-after
`information).)2
`
`L’Oréal USA understood that Mr. Wyrzykowski would be made available for deposition
`in both his personal capacity and pursuant to Rule 30(b)(6) on the same date, as is customary.
`L’Oréal USA communicated as much to Plaintiffs, and Plaintiffs did not contest this assertion.
`(See Ex. E (addressing the witness’ “criticality”).) Despite this, at the start of Mr.
`Wyrzykowski’s deposition—without previously raising this issue or meeting and conferring on
`this issue—Plaintiffs’ counsel asserted that he was being presented “in his individual capacity
`only.” (Ex. I at 12:19-24.) Counsel continued to interpose this objection to questions regarding
`the topics upon which Mr. Wyrzykowski was designated. (See, e.g., id. at 134:17-135:8; 266:9-
`267:8.) The effect of this objection is unclear. (See id. at 186:25-187:22; 195:24-196:12 (Mr.
`Wyrzykowski confirming that he was testifying as a corporate designee).)3 In any event, any
`
`2 Plaintiffs also produced nearly a thousand pages of key documents just days before the
`beginning of fact depositions. Specifically, Plaintiffs produced hundreds of pages of licensing
`agreements the night of Friday, May 22nd—effectively 2 business days before the deposition of
`Dr. James McNamara, the UMass’ Rule 30(b)(6) witness for all licensing topics. Then, the night
`before Dr. McNamara’s deposition, UMass produced even more key policies and licensing
`agreements, including a license agreement covering the asserted patents in this case, well after
`Plaintiffs represented that their production had been completed. Furthermore, Plaintiffs have still
`failed to produce additional license agreements its deponents have identified as relevant to this
`case and which are called for by L’Oréal USA’s Request for Production Nos. 73, 80, and 113, as
`well as Paragraph 4(f), (g), and (h) of the Scheduling Order. (See Ex. H at 89:18-91:25; D.I. 46 ¶
`4.) Because Plaintiffs have promised to do so, L’Oréal USA does not move to compel here. (Ex.
`I at 2.) Plaintiffs also noticed the deposition of Mr. Thomas Sarakatsannis, the General Counsel
`and Chief Ethics Officer of L’Oréal USA. L’Oréal USA explained during meet-and-confer
`discussions that Plaintiffs cannot show that they are entitled to such an apex deposition—let
`alone a deposition of the head lawyer of L’Oréal USA—particularly as L’Oréal USA is
`producing Roy Diaz on the topics Plaintiffs insist on exploring with Mr. Sarakatsannis. Plaintiffs
`have since re-noticed Mr. Sarakatsannis’ deposition for a date after Mr. Diaz’s deposition, and
`have stated that they will re-evaluate the need to take Mr. Sarakatsannis’ deposition after Mr.
`Diaz’s deposition is completed. L’Oréal USA maintains that any deposition of Mr.
`Sarakatsannis would be improper, and reserves all rights on this issue. (Id. at 5.)
`
`3 Mr. Wyrzykowski’s admission that he was testifying as a corporate designee notwithstanding,
`L’Oréal USA cannot be sure if the basis of counsel’s objection that this deposition was
`proceeding solely pursuant to Rule 30(b)(1) is an attempt for Mr. Wyrzykowski to state that he is
`more knowledgeable about his designated topics in his 30(b)(6) capacity. To prevent any
`ambiguity on this front, the Court should overrule counsel’s objections.
`
`
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`Case 1:17-cv-00868-CFC-SRF Document 218 Filed 06/25/20 Page 3 of 5 PageID #: 8054
`The Honorable Sherry R. Fallon
`June 18, 2020
`Page 3
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`statement Mr. Wyrzykowski made during his deposition constitutes a party admission. See
`generally Fed. R. Evid. 801(d)(2). As such, L’Oréal USA respectfully requests that this Court
`overrule counsel’s objection that Mr. Wyrzykowski’s June 10th deposition proceeded solely
`pursuant to Rule 30(b)(1), and not Rule 30(b)(6).
`
`L’Oréal USA also requests that Mr. Wyrzykowski be ordered to appear for one more full
`day of deposition prior to June 30, 2020, to cover areas for which he was designated and not
`inquired or instructed not to answer (particularly in light of the issues described in footnote 5
`below). Although Plaintiffs appear to agree with this request (Ex. I at 1), a Court order is needed
`to provide clarity on the propriety of Plaintiffs’ Rule 30(b)(1) versus Rule 30(b)(6) objection.
`L’Oréal USA is reluctant to proceed without such clarity, as it fears Plaintiffs, in this second
`deposition, will object and instruct the witness not to answer based on the contention that a
`particular question now cannot be answered by Mr. Wyrzykowski in his personal capacity
`because he will be testifying pursuant to Rule 30(b)(6).
`
`There were several instances where Plaintiffs’ counsel instructed Mr. Wyrzykowski not
`to answer a question,4 but the most egregious example was when counsel refused to permit Mr.
`Wyrzykowski to testify about statements he made in correspondence to L’Oréal in 2015 and
`2016 regarding pre-litigation product testing.5 Counsel instructed the witness not to answer any
`questions related to this topic on privilege grounds. (See Ex. J at 245:19-247:22; 252:3-
`255:4.) If Mr. Wyrzykowski only knew information related to this subject because his counsel
`performed the tests and told him the details, those communications might have been privileged.
`See, e.g., Westinghouse Elec. Corp. v. Republic of Philippines, 951 F.2d 1414, 1426 n.12 (3d Cir.
`1991) (partial disclosure of privileged materials waives the privilege “only as to those
`communications actually disclosed, unless a partial waiver would be unfair to the party’s
`adversary”; “[i]f partial waiver does disadvantage the disclosing party’s adversary by, for
`
`
`4 There were 39 instructions not to answer in total, including some on spurious grounds. (See,
`e.g., Ex. J at 149:21-152:3 (instructing witness not to answer why he shaved his beard two weeks
`ago on privilege grounds). See also id. at 75:6-80:12; 87:10-23; 111:17-113:21 (instructing
`witness not to testify as to what documents he reviewed or who he spoke with in preparation for
`his deposition as a Rule 30(b)(6) designee); cf. (Ex. K at 116:4-21 (Plaintiffs’ counsel confirming
`that the documents a deponent reviewed in preparation of his deposition is not privileged
`information).) See also Promos Techs., Inc. v. Freescale Semiconductor, Inc., 2007 WL
`4480636, at *1 (D. Del. Dec. 20, 2007) (“Defendant has cited Sporck v. Piel, 759 F.2d 312, 316
`(3d Cir. 1985), as support for counsel’s work product privilege assertion. The Sporck case facts
`are clearly distinguishable from the facts here, specifically with regard to the questions asked,
`information sought and the fact that the deponent was a 30(b)(6) witness, not a party.”)
`(emphasis added). L’Oréal USA does not seek an order on each of these, hoping that guidance
`from the Court will make for a smoother second deposition and allow for the testimony needed
`to be provided.
`
`5 At 1:41 a.m. EST this morning, Plaintiffs’ counsel sent L’Oréal USA an email asserting that the
`parties did not previously meet and confer about Mr. Wyrzykowksi’s testimony regarding
`statements he made in correspondence to L’Oréal in 2015 and 2016 regarding pre-litigation
`product testing. This is mistaken. L’Oréal USA detailed its position on this issue to Plaintiffs in
`email correspondence prior to the parties’ June 12, 2020 meet and confer. (Ex. I at 8.)
`
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`

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`Case 1:17-cv-00868-CFC-SRF Document 218 Filed 06/25/20 Page 4 of 5 PageID #: 8055
`The Honorable Sherry R. Fallon
`June 18, 2020
`Page 4
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`example, allowing the disclosing party to present a one-sided story to the court, then privilege
`will be waived as to all communications on the same subject”). But L’Oréal USA was not
`seeking those communications. (See Ex. J at 251:7-253:1.)
`
`Counsel representing Mr. Wyrzykowski at his deposition apparently realized the unsound
`nature of her position by later trying to retract her several instructions not to answer. (Ex. J at
`257:7-259:4.) L’Oréal USA, up against a ticking clock,6 declined to ask the same questions that
`had been objected to all over again. Plaintiffs’ counsel then proceeded to ask questions nearly
`identical to those posed by L’Oréal USA’s counsel on this topic during her direct examination of
`the deponent—the same questions she had objected to just minutes before. Plaintiffs’ counsel
`then prohibited L’Oréal USA from exploring Mr. Wyrzykowski’s answers on re-cross,
`terminating the deposition with L’Oréal USA’s total examination time at just 7 hours and 11
`minutes. (Ex. J at 289:1-290:18.) Plaintiffs’ refusal to allow re-cross was more than
`unprofessional; it was legally improper. Cf. Lipscomb v. Groves, 187 F.2d 40, 44–45 (3d Cir.
`1951) (holding that it was error to allow the introduction of a witness’ “incomplete and
`improper” deposition testimony into evidence at trial, as that deposition was taken via written
`interrogatories, and the witness failed to respond to appellant’s re-cross interrogatories). This
`Court should order Plaintiffs to produce Mr. Wyrzykowski for another deposition, and permit
`L’Oréal USA’s counsel to question him regarding non-privileged facts regarding statements he
`made about pre-litigation testing to L’Oréal, particularly as his own counsel’s questioning
`opened the door on this topic during direct examination. See Samick Music Corp. v. Delaware
`Music Indus., Inc., 1992 WL 39052, at *4 (D. Del. Feb. 12, 1992) (permitting belated
`amendment of answer to assert additional counterclaim in part because plaintiff “opened the door
`to the issue in this litigation by affirmatively questioning [defendant]’s personnel about it in the
`first two depositions taken in the case”).
`
`
`
`
`
`6 Of some note are the specific obstacles counsel for L’Oréal USA faced conducting the
`examination of Mr. Wyrzykowski. Mr. Wyrzykowski requested that the question posed be
`rephrased nearly each time counsel objected to form, making this request 81 times throughout
`the deposition. He also requested that the question posed be repeated 49 times. Plaintiffs’
`counsel also failed to disclose that Mr. Wyrzykowski has a medical condition that requires he
`take additional time to review documents; Mr. Wyrzykowski revealed as much to L’Oréal USA’s
`counsel more than halfway through his deposition. (Ex. J at 250:24-251:4.) Mr. Wyrzykowski
`spent 23 minutes reviewing the first exhibit—an 8-page printout of Mr. Wyrzykowski’s
`biography appearing on a website he was familiar with. (Id. at 43:18-55:18 and Exhibit 210
`thereto.) Had Plaintiffs’ counsel brought this to L’Oréal USA’s attention earlier, L’Oréal USA
`would have attempted to work with Plaintiffs’ counsel to ensure timely review of the documents
`in advance, so as not to waste time during the deposition. But Plaintiffs chose not to do so;
`instead, they chose to have Mr. Wyrzykowski take substantial time to read the entirety of any
`document shown to him to answer the most basic question posed about the document. (See, e.g.,
`id. at 248:16-249:22.) Plaintiffs also refused to permit Mr. Wyrzykowski to review documents
`during breaks to expedite the process (notwithstanding their previous request for a “hard stop” at
`6pm EST). (See Ex. J at 50:25-55:2; Ex. E.) All of this further complicated the deposition
`unnecessarily, to say the least.
`
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`Case 1:17-cv-00868-CFC-SRF Document 218 Filed 06/25/20 Page 5 of 5 PageID #: 8056
`The Honorable Sherry R. Fallon
`June 18, 2020
`Page 5
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`Respectfully,
`
`/s/ Frederick L. Cottrell, III
`
`Frederick L. Cottrell, III (#2555)
`
`
`cc: Counsel of Record (via CM/ECF and E-Mail)
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