Case 1:17-cv-00868-CFC-SRF Document 218-1 Filed 06/25/20 Page 1 of 72 PageID #: 8057
`Case 1:17-cv-00868—CFC-SRF Document 218-1 Filed 06/25/20 Page 1 of 72 PageID #: 8057
`
`EXHIBIT A
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`EXHIBIT A
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`

`

`Case 1:17-cv-00868-CFC-SRF Document 218-1 Filed 06/25/20 Page 2 of 72 PageID #: 8058
`
`Serli Polatoglu
`
`From:
`Sent:
`To:
`
`Cc:
`
`Subject:
`
`Tamar Lusztig <TLusztig@susmangodfrey.com>
`Tuesday, May 26, 2020 7:20 AM
`Kasaraneni, Karthik; Dennis S. Ellis; PH-UMASS v. L’Oreal USDC; Dittmann, Eric W.;
`Frederick Cottrell; Ashkenazi, Isaac S.; Jason Rawnsley; Jeffrey Moyer; Palys, Joseph E.;
`Katharine Mowery; Katherine F. Murray; Modi, Naveen; Tymoczko, Nicholas; Serli
`Polatoglu
`Beatrice Franklin; Bill Carmody; Brian Farnan; Davida Brook; Justin A. Nelson; Keeley
`Lombardo; Lucas I. Silva; Matthew Lowrie; Michael J. Farnan ; Rodney Polanco
`RE: UMass v. L'Oreal: Depositions
`
`Karthik,
`
`We have a slight modification to make to the 30(b)(6) designations for next week.
`
`Subject to our written objections and our subsequent email exchange regarding scope, the following witnesses will
`testify about the following topics:
`
`Dr. McNamara: 7, 9, 11, 12, 13, 14, 15, 16, 20, 22, 26, 30, 33, 36, 37
`Dr. Dobson: 8, 23, 24, 25, 27, 28, 29, 30, 31, 32, 34, 35, 36, 38
`Mr. Wyrzykowski: 2, 10, 12, 13, 14, 15, 36
`Mr. Menard: 1, 3, 4, 5, 6, 17, 18, 19, 20, 21, 22, 37
`
`Thanks.
`
`-Tamar
`
`From: Tamar Lusztig
`Sent: Monday, May 18, 2020 7:26 PM
`To: Kasaraneni, Karthik <karthikkasaraneni@paulhastings.com>; Dennis Ellis <dellis@bgrfirm.com>; PH-UMASS v.
`L’Oreal USDC <PH-UMass-LOreal-USDC@paulhastings.com>; Dittmann, Eric W. <ericdittmann@paulhastings.com>;
`Frederick Cottrell <cottrell@rlf.com>; Ashkenazi, Isaac S. <isaacashkenazi@paulhastings.com>; Jason Rawnsley
`<rawnsley@rlf.com>; Jeffrey Moyer <moyer@rlf.com>; Palys, Joseph E. <josephpalys@paulhastings.com>; Katharine
`Mowery <mowery@rlf.com>; Katherine Murray <kmurray@bgrfirm.com>; Modi, Naveen
`<naveenmodi@paulhastings.com>; Tymoczko, Nicholas <nicholastymoczko@paulhastings.com>; Serli Polatoglu
`<spolatoglu@bgrfirm.com>
`Cc: Beatrice Franklin <BFranklin@susmangodfrey.com>; Bill Carmody <bcarmody@SusmanGodfrey.com>; Brian Farnan
`<bfarnan@farnanlaw.com>; Davida Brook <DBrook@susmangodfrey.com>; Justin A. Nelson
`<jnelson@SusmanGodfrey.com>; Keeley Lombardo <klombardo@susmangodfrey.com>; Lucas I. Silva
`<lsilva@foley.com>; Matthew Lowrie <mlowrie@foley.com>; Michael J. Farnan <mfarnan@farnanlaw.com>; Rodney
`Polanco <RPolanco@susmangodfrey.com>
`Subject: RE: UMass v. L'Oreal: Depositions
`
`Karthik,
`
`Dr. Michael Ethier will be available for his deposition on 6/2.
`
`Subject to our written objections and our subsequent email exchange regarding scope, the following witnesses will
`testify about the following topics:
`
`1
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 218-1 Filed 06/25/20 Page 3 of 72 PageID #: 8059
`
`
`Dr. McNamara: 7, 9, 11, 12, 13, 14, 15, 16, 20, 22, 26, 30, 33, 36, 37
`Dr. Dobson: 8, 23, 24, 25, 27, 28, 29, 30, 31, 32, 34, 35, 36, 38
`Mr. Wyrzykowski: 1, 2, 3, 4, 5, 6, 10, 12, 13, 14, 15, 17, 18, 19, 20, 21, 22, 36, 37
`
`Could you please let us know by close of business tomorrow whether you intend to proceed with the Steinman,
`Warshawsky, or Decker depositions so that we can get them scheduled, or not, as the case may be? And similarly, can
`you please let us know by close of business tomorrow whether you plan to use a half day or less for any of the witnesses
`we will be presenting for deposition?
`
`Thanks!
`
`-Tamar
`
`From: Kasaraneni, Karthik <karthikkasaraneni@paulhastings.com>
`Sent: Monday, May 18, 2020 6:14 PM
`To: Tamar Lusztig <TLusztig@susmangodfrey.com>; Dennis Ellis <dellis@bgrfirm.com>; PH-UMASS v. L’Oreal USDC <PH-
`UMass-LOreal-USDC@paulhastings.com>; Dittmann, Eric W. <ericdittmann@paulhastings.com>; Frederick Cottrell
`<cottrell@rlf.com>; Ashkenazi, Isaac S. <isaacashkenazi@paulhastings.com>; Jason Rawnsley <rawnsley@rlf.com>;
`Jeffrey Moyer <moyer@rlf.com>; Palys, Joseph E. <josephpalys@paulhastings.com>; Katharine Mowery
`<mowery@rlf.com>; Katherine Murray <kmurray@bgrfirm.com>; Modi, Naveen <naveenmodi@paulhastings.com>;
`Tymoczko, Nicholas <nicholastymoczko@paulhastings.com>; Serli Polatoglu <spolatoglu@bgrfirm.com>
`Cc: Beatrice Franklin <BFranklin@susmangodfrey.com>; Bill Carmody <bcarmody@SusmanGodfrey.com>; Brian Farnan
`<bfarnan@farnanlaw.com>; Davida Brook <DBrook@susmangodfrey.com>; Justin A. Nelson
`<jnelson@SusmanGodfrey.com>; Keeley Lombardo <KLombardo@susmangodfrey.com>; Lucas I. Silva
`<lsilva@foley.com>; Matthew Lowrie <mlowrie@foley.com>; Michael J. Farnan <mfarnan@farnanlaw.com>; Rodney
`Polanco <RPolanco@susmangodfrey.com>
`Subject: RE: UMass v. L'Oreal: Depositions
`
`Tamar,
`
`
`Thank you for providing these dates. We are checking to see if they work for us. Please let us know which of these
`witnesses, if any, you will be designating as 30(b)(6) witnesses, and for which topics. Please also provide proposed
`deposition dates for the remaining witnesses.
`
`
`Thank you,
`Karthik
`
`
`From: Tamar Lusztig <TLusztig@susmangodfrey.com>
`Sent: Saturday, May 16, 2020 9:37 PM
`To: Dennis Ellis <dellis@bgrfirm.com>; PH-UMASS v. L’Oreal USDC <PH-UMass-LOreal-USDC@paulhastings.com>;
`Dittmann, Eric W. <ericdittmann@paulhastings.com>; Frederick Cottrell <cottrell@rlf.com>; Ashkenazi, Isaac S.
`<isaacashkenazi@paulhastings.com>; Jason Rawnsley <rawnsley@rlf.com>; Jeffrey Moyer <moyer@rlf.com>; Palys,
`Joseph E. <josephpalys@paulhastings.com>; Katharine Mowery <mowery@rlf.com>; Katherine Murray
`<kmurray@bgrfirm.com>; Modi, Naveen <naveenmodi@paulhastings.com>; Tymoczko, Nicholas
`<nicholastymoczko@paulhastings.com>; Serli Polatoglu <spolatoglu@bgrfirm.com>
`Cc: Beatrice Franklin <BFranklin@susmangodfrey.com>; Bill Carmody <bcarmody@SusmanGodfrey.com>; Brian Farnan
`<bfarnan@farnanlaw.com>; Davida Brook <DBrook@susmangodfrey.com>; Justin A. Nelson
`<jnelson@SusmanGodfrey.com>; Keeley Lombardo <KLombardo@susmangodfrey.com>; Lucas I. Silva
`<lsilva@foley.com>; Matthew Lowrie <mlowrie@foley.com>; Michael J. Farnan <mfarnan@farnanlaw.com>; Rodney
`
`2
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 218-1 Filed 06/25/20 Page 4 of 72 PageID #: 8060
`
`Polanco <RPolanco@susmangodfrey.com>; Tamar Lusztig <TLusztig@susmangodfrey.com>
`Subject: [EXT] UMass v. L'Oreal: Depositions
`
`Counsel,
`
`
`We are still confirming a few dates, but did not want to delay in getting you the below information. The following
`witnesses will be available for remote video depositions on the following dates:
`
`
`Dr. Jim McNamara: 5/27
`Dr. James Dobson: 5/27
`Dr. Satinder Rawat: 5/29
`Dr. Kevin Lehman: 6/1
`Renato Jose: 6/1
`Frank Gallagher: 6/2
`Paul Menard: 6/4
`Dennis Wyrzykowski 6/5
`
`
`For now, the depositions will begin at 10 AM in the deponent’s home time zone; though we reiterate our earlier request
`to let us know if any of the depositions will be going less than half a day in which case we may adjust.
`
`-Tamar
`
`Tamar Lusztig | Susman Godfrey LLP
`1301 Avenue of the Americas, 32nd Floor | New York, NY 10019
`212-729-2007 (direct) | 617-967-8748 (cell)
`
`
`3
`
`

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`Case 1:17-cv-00868-CFC-SRF Document 218-1 Filed 06/25/20 Page 5 of 72 PageID #: 8061
`Case 1:17-cv-00868—CFC-SRF Document 218-1 Filed 06/25/20 Page 5 of 72 PageID #: 8061
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`EXHIBIT B
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`EXHIBIT B
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`

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`Case 1:17-cv-00868-CFC-SRF Document 218-1 Filed 06/25/20 Page 6 of 72 PageID #: 8062
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`UNIVERSITY OF MASSACHUSETTS and
`CARMEL LABORATORIES, LLC,
`
` Plaintiffs,
`
`v.
`
`L’ORÉAL USA, INC.,
`
` Defendant.
`
`)
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`C.A. No. 17-868-CFC-SRF
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`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`L’ORÉAL USA’S NOTICE OF DEPOSITION OF PLAINTIFFS
`PURSUANT TO RULE 30(b)(6)
`
`PLEASE TAKE NOTICE that pursuant to Rule 30(b)(6) of the Federal Rules of Civil
`
`Procedure and the Orders of this Court, on a date and at a location to be agreed upon by the
`
`parties, and continuing day to day until completion, or resuming until completion on a date set by
`
`Defendant L’Oréal USA, Inc. (“L’Oréal USA” or “Defendant”), by further notice or by mutual
`
`agreement of the parties, attorneys for L’Oréal USA will take the following videotaped
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`deposition(s) upon oral examination, under oath, before a qualified notary public or certified
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`court reporter of Plaintiffs University of Massachusetts Medical School (“UMass”) and Carmel
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`Laboratories, LLC (“Carmel Labs”) (together, “Plaintiffs”) on the topics set forth in Schedule A.
`
`Plaintiffs shall identify the individual(s) they designate to testify on their behalf in response to
`
`the topics and the topics on which each such individual will provide testimony not less than ten
`
`(10) business days in advance of the commencement of the deposition(s). Plaintiffs must
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`designate persons with sufficient knowledge and preparation to testify on all information known
`
`or reasonably available to Plaintiffs on these topics. Defendant reserves the right to notice and
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`
`
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`
`
`
`

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`Case 1:17-cv-00868-CFC-SRF Document 218-1 Filed 06/25/20 Page 7 of 72 PageID #: 8063
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`
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`take further depositions of Plaintiffs as necessary on additional topics in accordance with Rule
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`30(b)(6).
`
`
`
`OF COUNSEL:
`
`Eric W. Dittmann
`Isaac S. Ashkenazi
`Nicholas A. Tymoczko
`Karthik R. Kasaraneni
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`(212) 318-6000
`
`Katherine F. Murray
`Serli Polatoglu
`PAUL HASTINGS LLP
`515 South Flower Street, 25th Floor
`Los Angeles, CA 90071
`(213) 683-6000
`Naveen Modi
`Joseph E. Palys
`PAUL HASTINGS LLP
`875 15th Street, N.W.
`Washington, D.C. 20005
`(202) 551-1990
`
`
`Dated: April 8, 2020
`
`
`
`
`
`
`
`
`/s/ Katharine L. Mowery
`Frederick L. Cottrell, III (#2555)
`Jeffrey L. Moyer (#3309)
`Katharine L. Mowery (#5629)
`RICHARDS, LAYTON & FINGER, P.A.
`One Rodney Square
`920 N. King Street
`Wilmington, DE 19801
`(302) 651-7700
`cottrell@rlf.com
`moyer@rlf.com
`mowery@rlf.com
`
`Attorneys for Defendant
`L’Oréal USA, Inc.
`
`
`
`2
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`

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`Case 1:17-cv-00868-CFC-SRF Document 218-1 Filed 06/25/20 Page 8 of 72 PageID #: 8064
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`
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`SCHEDULE A
`
`DEFINITIONS
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`1. As used herein, the term “’327 patent” means United States Patent No. 6,423,327.
`
`2. As used herein, the term “’513 patent” means United States Patent No. 6,645,513.
`
`3. As used herein, the terms “Asserted Patents” and “Patents-in-Suit” mean, collectively,
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`the ’327 patent and the ’513 patent.
`
`4. As used herein, the term “PTO” means the United States Patent and Trademark Office.
`
`5. As used herein, the term “Related Patents and Applications” shall mean any and all
`
`patents and patent applications that claim priority, directly or indirectly, to the Patents-in-Suit or
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`to which at least the Patents-in-Suit claim priority, directly or indirectly (including any
`
`continuations, continuations-in-part, divisionals, provisional applications, reexaminations, or
`
`reissue patents or patent applications), whether domestic or foreign.
`
`6. As used herein, the term “Document” is defined broadly to be given the full scope of that
`
`term contemplated in Rule 34 of the Federal Rules of Civil Procedure, including but not limited
`
`to correspondence, memoranda, transcripts of any conversation or testimony, recordings,
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`stenographic or handwritten notes, studies, publications, books, pamphlets, pictures (drawings
`
`and photographs), films, microfilms, voice recordings, reports, recommendations, faxes, listings
`
`of telephone calls, emails, diaries, text messages, social media content, and computer programs
`
`and files or other electronically stored information (translated into a reasonably usable form, if
`
`necessary, by any Person or entity that has control of such records), and includes all tangible
`
`things, all originals (or, if originals are not available, identical copies thereof), all non-identical
`
`copies of a document, all drafts of final documents, all other written, printed, or recorded matter
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`of any kind, and all other data compilations from which information can be obtained and
`
`
`
`
`
`3
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`

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`Case 1:17-cv-00868-CFC-SRF Document 218-1 Filed 06/25/20 Page 9 of 72 PageID #: 8065
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`translated if necessary, that are or have been in your actual or constructive possession or control,
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`regardless of the medium on which they are produced, reproduced, or stored, and, without
`
`limitation, all things meeting the definitions of “writings” and “recordings” as set forth in Fed. R.
`
`Evid. 1001.
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`7. As used herein, the term “Things” means any physical or tangible item, including
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`samples, prototypes, and packaging.
`
`8. As used herein, the term “Concerning” means in any way, directly or indirectly,
`
`regarding, considering, constituting, comprising, covering, defining, describing, involving,
`
`underlying, modifying, amending, confirming, mentioning, endorsing, recording, evidencing,
`
`pertaining to, referring to, reflecting, relating to, representing, supporting, qualifying,
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`terminating, revoking, canceling, negating, or having any connection with the matter discussed.
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`9. As used herein, the term “Communication” refers to all conversations, agreements,
`
`inquiries, or replies, whether in person, by telephone, in writing, or by means of electronic
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`transmittal devices, and includes, but is not limited to, all correspondence, emails, recordings,
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`transmittal slips, memoranda, telephone communications, voice messages, or notes.
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`10. As used herein, the terms “You,” “Your,” “UMass,” “Carmel Labs,” or “Plaintiffs” mean
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`University of Massachusetts and/or Carmel Laboratories, LLC, and their respective officers,
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`directors, representatives, employees, agents, partners, corporate parents, subsidiaries, affiliates,
`
`predecessors, and successors, including any entities or Persons acting on behalf of the University
`
`of Massachusetts and/or Carmel Laboratories, LLC and the named inventors of the Patents-in-
`
`Suit and/or Related Patents and Applications.
`
`11. As used herein, the term “Person” means any natural person or business, legal, or
`
`governmental entity or association.
`
`
`
`
`
`4
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`

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`Case 1:17-cv-00868-CFC-SRF Document 218-1 Filed 06/25/20 Page 10 of 72 PageID #:
`8066
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`12. As used herein, the term “product” or “products” refers to any product, device, apparatus,
`
`process, method, system, media, or instrumentality.
`
`13. As used herein, the term “Easeamine Product(s)” refers to any product (whether
`
`conceived, under development, developed, marketed, offered for sale, sold, or the like) identified
`
`in paragraphs 14-17 of the First Amended Complaint (D.I. 13), including the “anti-aging face
`
`cream” identified as “Easeamine,” as well as any previous or later generations or versions, and
`
`derivations of those products, including any derivation currently under consideration and/or
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`development.
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`14. As used herein, the term “Accused Products” refers to any product that You accuse
`
`L’Oréal USA of infringing any claim of any of the Patents-in-Suit.
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`15. As used herein, the term “Customer” means any Persons, including distributors and
`
`salons, to whom You have offered to sell or have sold any of Your Easeamine Products.
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`16. Any Person Concerning a corporation or business entity, and any reference to a
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`corporation or business entity, includes all entities and Persons acting on the entity’s behalf as
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`well as all affiliates, divisions, parents, subsidiaries, predecessors, and successors thereof.
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`17. The terms “and” and “or” shall be interpreted liberally as conjunctive, disjunctive, or
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`both so that the fullest request for disclosure of information is achieved.
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`18. The term “all” means all and each and the term “each” means each and all so that the
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`fullest request for disclosure of information is achieved.
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`19. The singular includes the plural and the plural includes the singular so that the fullest
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`request for disclosure of information is achieved.
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`INSTRUCTIONS
`
`1. All terms not otherwise defined herein shall have their ordinary meanings.
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`5
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`Case 1:17-cv-00868-CFC-SRF Document 218-1 Filed 06/25/20 Page 11 of 72 PageID #:
`8067
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`2. The plural form of words shall also mean and include the singular form of the same.
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`Similarly, the singular form of words shall also mean and include the plural form of the same.
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`3. The terms “or” and “and” shall be construed conjunctively or disjunctively whenever
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`necessary to bring within the scope of the topics identified below any information that might
`
`otherwise be construed as outside of their scope.
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`4. The terms “any,” “all,” “each,” and “every” mean “each and every.”
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`5. All verbs used herein shall be construed to include all tenses.
`
`TOPICS
`
`1. The distribution of Easeamine Products, including Your Communications with
`
`distributors and potential distributors of Easeamine Products, regarding all distribution of
`
`Easeamine Products.
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`2. Your Communications and agreements with beauty insiders, beauty influencers, skincare
`
`professionals, distributors, journalists, reporters, bloggers, marketing professionals in the beauty
`
`industry (including skincare), and social media influencers regarding the Accused Products.
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`3. Your Communications and agreements with beauty insiders, beauty influencers, skincare
`
`professionals, distributors, journalists, reporters, bloggers, marketing professionals in the beauty
`
`industry (including skincare), and social media influencers regarding Easeamine Products.
`
`4. Monthly sales of Easeamine Products since inception, by distributor and SKU, on a unit
`
`and revenue basis.
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`5. Monthly profits and costs for Easeamine Products since inception, by distributor and
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`SKU.
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`6. The projected gross and net unit sales volumes, unit selling process, sales revenue, profit
`
`margins, and costs for the Easeamine Products.
`
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`6
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`

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`Case 1:17-cv-00868-CFC-SRF Document 218-1 Filed 06/25/20 Page 12 of 72 PageID #:
`8068
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`7. Ownership and any rights to the Asserted Patents, including by You and any other
`
`Person, including the identity of such owners(s), the date(s) when such ownership was obtained,
`
`the facts and circumstances concerning such ownership, all Documents Concerning such
`
`ownership, any agreements (oral or in writing) relating to such ownership, and any all facts and
`
`circumstances relating to any offer(s) to convey any rights and/ownership to any entity or Person
`
`(whether performed or not).
`
`8. The manufacture of the Easeamine Products, including the ingredients used, the absolute
`
`and relative quantities of the ingredients in the Easeamine Products’ formulation, and how and
`
`why those ingredients were selected.
`
`9. Your Communications with any Persons other than L’Oréal USA to license and/or
`
`enforce any of the Asserted Patents, including any meetings with such Persons, all facts and
`
`circumstances Concerning such meetings, the identity of Person(s) involved with such meetings,
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`all Communications relating to such meetings, and all Documents relating to such meetings.
`
`10. Your Communications with L’Oréal USA to license and/or enforce any of the Asserted
`
`Patents, including any meetings with L’Oréal USA, all facts and circumstances Concerning such
`
`meetings, the identity of Person(s) involved with such meetings, all Communications relating to
`
`such meetings, and all Documents relating to such meetings.
`
`11. Licenses, and negotiations related thereto, Concerning the Asserted Patents or the
`
`Easeamine Products, including nature, scope, royalty rate, and terms of such licenses, and the
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`identity of all licensees, as well as all entities who were offered and declined a license to the
`
`Asserted Patents and the reasons related thereto.
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`12. Royalties paid by or to You Concerning the Asserted Patents or the Easeamine Products.
`
`
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`
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`7
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`

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`Case 1:17-cv-00868-CFC-SRF Document 218-1 Filed 06/25/20 Page 13 of 72 PageID #:
`8069
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`13. Your policies relating to licensing any other Person’s patents or technology, including
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`patents relating to the Easeamine Products.
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`14. Your licensing or potential licensing of the Asserted Patents, including the identification
`
`of all facts You considered in connection with any decision to license or potentially license the
`
`Asserted Patents.
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`15. Your licensing policies related to the Asserted Patents or the Easeamine Products.
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`16. Your knowledge of any industry standard royalty rate for the Asserted Patents or the
`
`Easeamine Products.
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`17. The pricing of the Easeamine Products, including pricing strategies, pricing decisions,
`
`pricing analyses, pricing negotiations, pricing forecasts, pricing plans, product evaluation
`
`analyses, credits and discounts.
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`18. Your knowledge of the market for the Easeamine Products and any products that are or
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`were, at any time, competitors to the Easeamine Products, including the market share of each and
`
`the advertising for each.
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`19. Any criticism of You and the Easeamine Products, including, but not limited to, the
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`quality of the Easeamine Products.
`
`20. The enforcement, or contemplated enforcement, of the Asserted Patents against other
`
`competitors to You or L’Oréal USA.
`
`21. An explanation of all of Your Documents that purport to set forth sales figures, pricing
`
`figures, cost information, profit figures, and projections of these figures for the Easeamine
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`Products.
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`22. Any product or design-around that is an acceptable non-infringing alternative to the
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`inventions recited in any of the asserted claims in the Asserted Patents.
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`8
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`Case 1:17-cv-00868-CFC-SRF Document 218-1 Filed 06/25/20 Page 14 of 72 PageID #:
`8070
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`23. The respective contributions of each named inventor to the alleged inventions and other
`
`subject matter described and/or claimed in the Patents-in-Suit, and the location and identity of
`
`any documents evidencing the same.
`
`24. The dates and circumstances under which the alleged inventions and other subject matter
`
`described and/or claimed in the Patents-in-Suit were: (i) first conceived; (ii) first observed
`
`experimentally; (iii) first recorded or otherwise described in writing; (iv) first reduced to
`
`practice; and (v) the documents that demonstrate all of the above.
`
`25. The disclosures of the alleged inventions and other subject matter described and/or
`
`claimed in the Patents-in-Suit, including but not limited to Invention Disclosure No. UMMC97-
`
`32, including but not limited to the facts and circumstances Concerning the drafting, preparation,
`
`and filing thereof, and any analysis of the prior art related thereto.
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`26. The facts and circumstances Concerning maintaining the file for Invention Disclosure
`
`No. UMMC97-32, including but not limited to: decisions to initiate, continue, or abandon
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`prosecution of the Patents-in-Suit and any Related Patents and Applications; decision to initiate,
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`continue, or abandon licensing efforts related to the alleged inventions and other subject matter
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`described and/or claimed in the Patents-in-Suit and any Related Patents and Applications; and
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`decisions to collect or waive royalties owed by licensees of the same.
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`27. The research and development efforts, if any, Concerning the alleged inventions and
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`other subject matter described and/or claimed in the Patents-in-Suit, including dates.
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`28. The data, test results, figures, examples, tables, formulations, compositions, preparations,
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`and processes Concerning the subject matter described and/or claimed in the Patents-in-Suit and
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`any Related Patents and Applications, including but not limited to the data underlying the
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`examples included therein and submitted during prosecution.
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`29. The research, analysis, study, testing, evaluation, and/or consideration of the amount
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`and/or concentration of topically applied adenosine or any topically applied composition
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`containing adenosine that reaches the “dermal cell layer,” including but not limited to the dates,
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`formulations of the tested compositions, methodologies used, and results.
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`30. The research, analysis, study, testing, evaluation, and/or consideration of the effect of
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`adenosine on cell proliferation, such as dermal cell proliferation, including but not limited to the
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`dates, formulations of the tested compositions, methodologies used, and results.
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`31. The research, analysis, study, testing, evaluation, and/or consideration of the effect of
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`adenosine on the condition of unbroken skin of a mammal, including wrinkling, roughness,
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`dryness, or laxity of the skin, including but not limited to the dates, formulations of the tested
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`compositions, methodologies used, and results.
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`32. Clinical studies conducted Concerning the subject matter of the Patents-in-Suit, including
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`but not limited to: (i) the purpose and planning of such clinical studies; (ii) the formulations of
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`the compositions used in such clinical studies; (iii) the protocols of such clinical studies; (iv)
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`conduct of the clinical trials; (v) the results of such clinical studies; (vi) the internal or external
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`publications, reports, or presentations of such clinical studies; (vii) the individuals involved in
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`any such study; (viii) the internal and external communications Concerning any such study
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`(including with physicians, patients, and regulatory agencies); (ix) any documents Concerning
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`any such study; and (x) dates of any such study.
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`33. The preparation, filing, and prosecution (including appeals or any other issuance or
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`validity proceeding before any national or international patent authority or court) of the
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`applications for the Patents-in-Suit and any Related Patents and Applications, including but not
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`limited to United States Patent App. No. 09/179,006, United States Patent App. No. 09/672,348,
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`10
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`United States Patent App. No. 10/184,810, United States Patent App. No. 10/680,370, United
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`States Patent App. No. 11/473,512, United States Patent App. No. 11/804,904, Canadian Patent
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`App. No. 2,347,979, European Patent App. No. 99 97 0915, Australian Patent App. No.
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`12310/00, Japanese Patent App. No. 2000-577976, and Korean Patent App. No. 10-2001-
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`7005134, and International Patent App. No. PCT/US99/25020.
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`34. The affidavits, declarations, and bases for any other factual information submitted to or
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`prepared for submission to a national or international patent authority or court, including but not
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`limited to the United States Patent and Trademark Office, Canadian Intellectual Property Office,
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`European Patent Office, IP Australia, Japan Patent Office, Korean Intellectual Property Office,
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`Patent Court of Korea, or World Intellectual Property Organization, during prosecution of the
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`Patents-in-Suit and any Related Patents and Applications, including experiments and studies
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`underlying statements in the affidavits or declarations.
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`35. Preparation and submission of the following declarations: (i) “Declaration under 37
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`C.F.R. § 1.132” by James G. Dobson, Jr., Ph.D. and Michael F. Ethier, Ph.D. dated February 11,
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`2002 (U.S. Patent App. No. 09/672,348) filed with the United States Patent and Trademark
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`Office; (ii) “Declaration to Support Korean Patent Application No. 2001-7005134” by James G.
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`Dobson, Jr., Ph.D. and Michael F. Ethier, Ph.D. dated October 21, 2004 (Korean Patent App. No.
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`10-2001-7005134) filed with the Korean Intellectual Property Office; (iii) “Declaration to
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`Support Appeal of Korean Patent Application No. 2001-7005134” by James G. Dobson, Jr.,
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`Ph.D. and Michael F. Ethier, Ph.D. dated June 11, 2007 (Korean Patent App. No. 10-2001-
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`7005134) filed with the Patent Court of Korea; and (iv) “Second Declaration to Support Appeal
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`of Korean Patent Application No. 2001-7005134” by James G. Dobson, Jr., Ph.D. and Michael
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`F. Ethier, Ph.D. dated June 29, 2007 (Korean Patent App. No. 10-2001-7005134) filed with the
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`Patent Court of Korea.
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`36. The facts and circumstances, and the execution of, all communications between You or
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`anyone on Your behalf and L’Oréal USA, L’Oréal S.A., and/or their alleged agents before this
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`litigation, including but not limited to the allegations that, “[i]n fall of 2003, an agent of [L’Oréal
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`USA and L’Oréal S.A.] contacted Dr. Dobson to discuss the patents-in-suit” (D.I. 13 at ¶¶ 23,
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`57) and “[i]n March 2015, Brother Dennis Wyrzykowski, President of Teresian Carmelites and
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`Carmel Labs, sent a letter to Jean-Paul Agon, CEO of L’Oréal” (id. at ¶ 30).”
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`37. The factual bases for Plaintiffs’ asserted secondary considerations of nonobviousness
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`with respect to the asserted claims of the Patents-in-Suit, and any asserted nexus between such
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`secondary considerations and the asserted claims of the Patents-in-Suit, that allegedly support
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`Your nonobviousness positions for the Patents-in-Suit.
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`38. All public and third-party disclosures, publications, public uses, sales, and offers for sale
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`of or Concerning the subject matter described and/or claimed in the Patents-in-Suit or any other
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`adenosine skin-care compositions by Plaintiffs or the alleged inventors, if any, before October
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`26, 1998, including any communications between Plaintiffs or the alleged inventors and any
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`third party Concerning the same.
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`39. The facts, circumstances, investigators, laboratories, test methodologies and parameters,
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`products and product lots tested, and test results associated with the testing referenced in the
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`correspondence between Plaintiffs and L’Oréal USA or L’Oréal S.A., including but not limited
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`to the March 17, 2015 letter from Dennis W. Wyrzykowski to Jean-Paul Agon, the May 27, 2015
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`letter from Dennis W. Wyrzykowski to Denis Boulard, the June 24, 2015 letter from Dennis W.
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`Wyrzykowski to Denis Boulard, the April 1, 2016 e-mail from Matthew A. Ambrose to Michelle
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`O’Brien, and the April 13, 2016 email from Matthew A. Ambrose to Michelle O’Brien.
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`Case 1:17-cv-00868-CFC-SRF Document 218-1 Filed 06/25/20 Page 19 of 72 PageID #:
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`CERTIFICATE OF SERVICE
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`I hereby certify that on April 8, 2020, a true and correct copy of the foregoing document
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`was caused to be served upon the following counsel of record as indicated:
`
`VIA ELECTRONIC MAIL
`Brian E. Farnan
`Michael J. Farnan
`919 North Market Street
`12th Floor
`Wilmington, DE 19801
`(302) 777-0300
`bfarnan@farnanlaw.com
`mfarnan@farnanlaw.com
`
`
`VIA ELECTRONIC MAIL
`William C. Carmody
`Tamar E. Lusztig
`Beatrice C. Franklin
`Susman Godfrey LLP
`1301 Avenue of the Americas, 32nd Floor
`New York, NY 10019
`bcarmody@susmangodfrey.com
`tlusztig@susmangodfrey.com
`bfranklin@susmangodfrey.com
`
`Justin A. Nelson
`Susman Godfrey LLP
`1000 Louisiana Street, Suite 5100
`Houston, TX 77002
`(713) 651-9366
`jnelson@susmangodfrey.com
`
`
`
`/s/ Katharine L. Mowery
`Katharine L. Mowery (#5629)
`mowery@rlf.com
`
`
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`Case 1:17-cv-00868-CFC-SRF Document 218-1 Filed 06/25/20 Page 20 of 72 PageID #:
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`EXHIBIT C
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`

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`Case 1:17-cv-00868-CFC-SRF Document 218-1 Filed 06/25/20 Page 21 of 72 PageID #:
`8077
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`Serli Polatoglu
`
`From:
`Sent:
`To:
`
`Cc:
`
`Subject:
`
`Katherine F. Murray
`Monday, May 25, 2020 8:47 PM
`Tamar Lusztig; Beatrice Franklin; Bill Carmody; Brian Farnan; Davida Brook; Justin A.
`Nelson; Keeley Lombardo; Michael J. Farnan ; Rodney Polanco
`PH-UMASS v. L’Oreal USDC; Dittmann, Eric W.; Frederick Cottrell; Ashkenazi, Isaac S.;
`Jason Rawnsley; Jeffrey Moyer; Palys, Joseph E.; Katharine Mowery; Modi, Naveen;
`Tymoczko, Nicholas; Serli Polatoglu; Kasaraneni, Karthik; Dennis S. Ellis; Maggie Icart
`RE: UMass v. L'Oreal: Depositions
`
`Tamar,
`
`To accommodate Dr. McNamara we will agree to start earlier, at 10am ET. We will try to conclude by 5:30pm ET, but
`that invariably will depend on many factors, including the testimony of the witness and the length of breaks. We will not
`agree to take the deposition for less time than is allowed. The same applies to the other depositions for which you have
`likewise appeared to set identical “hard stop” times of 6pm ET. We have no intention of wasting time at depositions but
`also will not