Case 1:17-cv-00868-CFC-SRF Document 219 Filed 06/26/20 Page 1 of 5 PageID #: 8129
`
`Frederick L. Cottrell III
`302-651-7509
`Cottrell@rlf.com
`
`June 19, 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”) writes to respond to the issues Plaintiffs
`raised in their June 18, 2020 letter brief (D.I. 211).
`
`Plaintiffs’ Renewed “Adenosine” Search Request: The Court should deny Plaintiffs’
`request, which is yet another attempt to improperly expand a previous motion to compel. (D.I.
`201 at 2.) After moving to compel only particular documents (D.I. 156 at 1-3), Plaintiffs now
`reframe their request to require L’Oréal USA to conduct (1) a vastly overbroad search that
`Plaintiffs previously represented to the Court they were not seeking and (2) brand new searches
`involving roughly 250 search terms—proposed for the first time one business day before filing
`their motion—that are tantamount to a request for L’Oréal USA to completely redo its document
`collection, review, and production. Particularly given that the parties will be exchanging
`opening expert reports one week from today, and in light of the extensive document-production
`efforts already undertaken by L’Oréal USA, Plaintiffs’ request should be denied.
`
`Plaintiffs have repeatedly acknowledged that this case is not about adenosine; rather, the
`patents-in-suit relate to a very narrow method of using adenosine, which includes applying an
`adenosine composition such that, according to Plaintiffs, a particular adenosine concentration
`“reaches the dermal cell layer” (i.e., below the outer “epidermal” layer) of the user’s skin. (See,
`e.g., D.I. 164, Ex. A at 1 (“[T]he Accused Products are the subset of [adenosine-containing]
`products . . . .”) (emphasis added); D.I. 93 at 2 (“[T]he Accused Products consist of the subset of
`those adenosine containing products that meet the claim limitations of the asserted patents.”)
`(emphasis added).) Indeed, when discussing the very requests on which Plaintiffs are now
`moving to compel in April, Plaintiffs stated that they were not seeking overbroad discovery
`regarding the term “adenosine.” (See Ex. A, April 24 Tr. at 8:9-16 (“Again, we don’t need all
`documents relating or referring to adenosine, but what we’re asking for here is documents
`related to their decision to include adenosine as an ingredient in your product. And specifically
`what we’re asking for here is documents related to including adenosine in the accused
`products specifically.”) (emphasis added).) Yet, despite the extensive collection and production
`undertaken by L’Oréal USA in response to Plaintiffs’ ever-expanding document demands,1 that
`
`1 L’Oréal USA’s extensive efforts, included, inter alia, searches of the MILOR database for
`responsive documents by using a number of search terms, including but not limited to
`“adenosine AND skin,” “adenosine AND (dermal OR dermis),” “adenosine AND (antiaging OR
`
`

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`Case 1:17-cv-00868-CFC-SRF Document 219 Filed 06/26/20 Page 2 of 5 PageID #: 8130
`The Honorable Sherry R. Fallon
`June 19, 2020
`Page 2
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`very request is now the focus of Plaintiffs’ unjustified and unwieldy motion. (D.I. 211 at 2
`(seeking an order “to produce all non-privileged documents hitting on [‘adenosine’]”).)
`
`During the May 18 hearing, the Court denied this same request, i.e., a broad search of the
`MILOR database for “adenosine,” in light of the associated undue burden and lack of
`proportionality, especially at this late stage of the case. (Ex. C, May 18 Tr. at 49:21-52:9; see
`also id. at 44:13-18 (L’Oréal USA representing that the search would implicate tens of thousands
`of documents).) Instead, the Court ordered L’Oréal USA to provide Plaintiffs with the specific
`number of documents returned for the term “adenosine” by May 22 (id. at 49:21-50:13), and
`L’Oréal USA complied a day early, verifying that it would yield 50,293 results (D.I. 211, Ex. A
`at 6, May 21 K. Kasaraneni Email). In response to this unworkable result, rather than
`meaningfully attempt to resolve the dispute with narrow, non-cumulative search terms, the
`record is clear that Plaintiffs stalled until the eleventh hour before proposing any sort of
`narrowed search.2 (D.I. 211, Ex. A at 2-5, May 21, May 29, June 5 D. Brook Emails.) In fact, it
`was not until June 12—more than three weeks after the last conference, and just one business
`day before the joint motion for this conference was due—that Plaintiffs proposed, without any
`attempted justification, roughly 250 new search terms for L’Oréal USA to run. (D.I. 211, Ex. A
`at 1, June 12 N. Carullo Email; id., Ex. B at 1-3.)
`
`The sheer breadth and volume of the proposed search terms make clear that Plaintiffs’
`“proposal” is designed to prejudice L’Oréal USA by distracting it from the critical expert
`discovery phase of the case.3 (See D.I. 211, Ex. B at 1-3.) Taking into account “Each Accused
`Product’s Name,” the list includes almost 250 terms, does not hone in on potentially relevant
`documents—much less documents that are the subject of Plaintiffs’ original motion to compel—
`and, based on the number alone, would entail a disproportionate burden involving hundreds of
`searches and collection and review of thousands of documents that would not be relevant to
`Plaintiffs’ motion. This is apparent from Plaintiffs’ inclusion of such general terms as “spf” and
`“uv,” as well as the newly injected “marketing terms” (e.g., “important,” “main”). In short,
`
`
`anti-aging),” terms related to the inventors, Plaintiffs, and patents-in-suit, and now the term
`“75156.” (See, e.g., D.I. 155, Ex. A (L’Oréal USA’s Supp. Response to RFP 27); D.I. 164 at 3;
`id., Ex. C at 12; D.I. 211, Ex. A at 3, K. Kasaraneni June 4 Email.) Indeed, Plaintiffs have been
`aware of the relevant search terms since April 23. (See Ex. B, Al-Ebinni Tr. at 35:17-36:19.)
`
`2 Plaintiffs’ interim proposal was a “random sampling” of ~1,000 documents from the
`“adenosine” search, which would no doubt be followed by requests relating to the remaining
`50,000+ documents. Such an effort would require manually collecting the 1,000 documents,
`reviewing them for privilege (regardless of relevance or responsiveness), negotiating the
`production of any additional documents, and then addressing inevitable disputes relating to fact
`depositions.
`
`3 Notably, Plaintiffs have been purporting to hold fact depositions open pending any new
`document production by L’Oréal USA, but did not propose any “narrowing” search request until
`most of the relevant depositions had been completed. Plaintiffs certainly knew that all or almost
`all depositions would be complete by the time any further documents could be produced. This
`sequence would, in line with Plaintiffs’ strategy, necessitate new depositions of L’Oréal USA
`employees. Moreover, this request was made just one week before opening expert reports were
`originally due, a date the parties had pushed back by a week just one day earlier. (D.I. 202.)
`This is not only improper, but further highlights the untimeliness of Plaintiffs’ request.
`
`

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`Case 1:17-cv-00868-CFC-SRF Document 219 Filed 06/26/20 Page 3 of 5 PageID #: 8131
`The Honorable Sherry R. Fallon
`June 19, 2020
`Page 3
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`during the final days of fact discovery, Plaintiffs are attempting to start over from square one.
`(See Ex. D at 1, 3, June 16 K. Kasaraneni Email.)
`
`Regarding the “75156” search, in the interest of cooperation and in an attempt (albeit
`futile) to avoid a dispute, L’Oréal USA—contrary to Plaintiffs’ assertion (D.I. 211 at 1)—
`collected and reviewed the more than 800 documents returned from its search of the MILOR
`database for that term, even though such a review was unnecessary in light of L’Oréal USA’s
`previous efforts. (D.I. 211, Ex. A at 3, June 4 K. Kasaraneni Email; Ex. D at 1, 3, June 16 K.
`Kasaraneni Email.) Indeed, even though Plaintiffs’ request with respect to this search term was
`focused on the reasons for including adenosine in the accused products (see Ex. C, May 18 Tr. at
`34:20-35:15), L’Oréal USA nonetheless reviewed the documents more broadly for
`responsiveness. Only two of these more than 800 documents were produced, and only out of an
`abundance of caution, as even those two documents are irrelevant to Plaintiffs’ allegations
`concerning the accused products. Despite Plaintiffs’ assertions to the contrary, the remaining
`documents were either non-responsive4 or duplicative of documents already produced through
`previous, appropriate searches. (D.I. 211, Ex. A at 3, June 4 K. Kasaraneni Email.) Nonetheless,
`Plaintiffs now seek to have L’Oréal USA re-review those documents for privilege and produce
`each and every document returned for that search term, regardless of responsiveness or relevance
`to the issues in this case. This is the definition of a fishing expedition.
`
`Plaintiffs’ New Request For U.S. Financial Information: L’Oréal USA has complied
`with the Scheduling Order and Plaintiffs’ requests for financial information. At no time since
`L’Oréal USA’s December 2019 production of financial records did Plaintiffs raise any questions
`regarding the type of financial information provided, nor did Plaintiffs serve discovery seeking
`additional financial information. Instead, on February 12, 2020, Plaintiffs confirmed that
`“Defendant produced nearly all the outstanding [financial] information on February 7, 2020,”
`and that Plaintiffs were only missing 2011-2012 financial data for five products. (D.I. 88.)
`L’Oréal USA produced that information on April 1, 2020. Plaintiffs never discussed the
`financial information again until last week, when they demanded additional data, including line
`items that roll into the cost data L’Oréal USA previously provided. Although Plaintiffs’ request
`is beyond the scope of any discovery request and wholly untimely, to avoid further disputes,
`L’Oréal USA is willing to provide the information identified in Plaintiffs’ proposed order, and
`will attempt to do so by June 30, 2020.5
`
`Plaintiffs’ New Request for Non-US Sales Information: On June 14, 2020—the night
`before the joint motion was due—Plaintiffs demanded that L’Oréal USA produce non-U.S. sales
`data for the accused products. (Ex. D at 2, June 14 N. Carullo Email.) As counsel have been
`
`
`4 At the May 18 conference, L’Oréal USA provided several examples of the type of non-
`responsive documents contained in MILOR returned by untargeted terms like “adenosine” and
`“75156,” including, inter alia, confidentiality agreements, compliance certificates, and supplier-
`related documents. (Ex. C, May 18 Tr. at 39:7-24.)
`
`5 Plaintiffs’ contention that “another L’Oréal witness has confirmed that this [newly requested
`financial] information can be had at the push of a button” grossly mischaracterizes the testimony.
`When asked if she can obtain gross sales numbers, Ms. Arnera, testifying on behalf of Lancôme,
`explained that she can request financial reports for her brand. (D.I. 211 at 3; id., Ex. G at 47:10-
`25.) She did not state that the granular financial information Plaintiffs are belatedly requesting is
`readily available.
`
`

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`Case 1:17-cv-00868-CFC-SRF Document 219 Filed 06/26/20 Page 4 of 5 PageID #: 8132
`The Honorable Sherry R. Fallon
`June 19, 2020
`Page 4
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`involved with depositions every day since June 14, there has been no meet and confer on this
`issue—neither recently nor in the nearly nine months since L’Oréal USA served Plaintiffs with
`its objections to non-US sales, stating that, “[w]ith respect to method patents, actionable patent
`infringement cannot occur outside the United States.” (Ex. E at 3-4 (citing 35 U.S.C. § 271(a);
`Enplas Display Device Corp. v. Seoul Semiconductor Co., Ltd., 909 F.3d 398, 408 (Fed. Cir.
`2018)); see also Ex. F at 3-4 (L’Oréal USA’s April 20, 2020 First Supplemental Objections and
`Responses to Plaintiffs’ Interrogatory Nos. 7, 8, restating this objection).) Plaintiffs cannot raise
`this untimely request for the first time during the final week of fact discovery, particularly given
`that it would require an overbroad, unduly burdensome, and irrelevant investigation regarding
`ex-U.S. sales, if any, for more than 150 products being accused of infringement in the U.S.
`
`Plaintiffs’ request is also substantively improper. The law is clear that infringement of a
`method patent can occur only in the U.S., and thus products sold outside the U.S. cannot be
`included in any damages calculation. Enplas, 909 F.3d at 408 (“liability for induced
`infringement under § 271(b)” requires a “patentee [to] prove[] the defendant possessed the
`requisite knowledge and specific intent to induce direct infringement in the United States”); see
`also Kajeet, Inc. v. Qustodio, LLC, 2019 WL 8060078, at *13 (C.D. Cal. Oct. 22, 2019)
`(information regarding defendant’s foreign sales is not relevant to the hypothetical negotiation of
`the reasonable royalty amount because defendant would not be liable for foreign sales that do not
`violate U.S. patent laws.)
`
`Plaintiffs’ Renewed Request Regarding Interrogatory No. 3: Plaintiffs’ (improper
`fourth) request that L’Oréal USA amend its response to Interrogatory No. 3 to identify additional
`products containing adenosine is even more improper now than it was when Plaintiffs raised this
`issue at the last discovery conference. First, Plaintiffs did not seek leave to raise this request
`again in the joint motion, nor did they obtain permission to raise a fourth issue. See May 19,
`2020 Oral Order (limiting parties to three issues). There has also been no meet and confer on
`this renewed request. In any event, as this Court noted in May, “[a]t this stage, the parties should
`be . . . narrowing or focusing on the number of accused products instead of broadening that
`number, and the discovery is not relevant or proportional to the needs of the case.” (Ex. C, May
`18 Tr. at 97:12-98:14.) This rings even more true now, as the parties are in their last week of
`fact discovery, with expert reports due next week. Plaintiffs do not even attempt to address any
`of the issues raised in the previous briefing on this issue, including the undue burden associated
`with their request. See D.I. 164 at 1-2. As the Court held in Ethicon LLC v. Intuitive Surgical,
`Inc., 2018 WL 1392341, at *3 (D. Del. Feb. 12, 2018), “mere suspicion or speculation’ that an
`unaccused [product] will infringe the asserted patents . . . is not enough to render the requested
`discovery relevant to [plaintiff]’s infringement claims.”); see also Micro Motion, Inc., 894 F.2d
`1318, 1326-27 (Fed. Cir. 1990) (“The discovery rules are designed to assist a party to prove a
`claim it reasonably believes to be viable without discovery, not to find out if it has any basis for a
`claim.”). The Court’s ruling was consistent with the requirement that Plaintiffs, not L’Oréal
`USA, identify the products that underlie their infringement theories. See Magnadyne Corp. v.
`Best Buy Co., 2010 WL 11520525, at *2 (C.D. Cal. Feb. 22, 2010) (it is the plaintiff’s
`responsibility to identify the accused products). Notwithstanding this obligation, more than nine
`months ago, L’Oréal USA identified over one hundred products for Plaintiffs, and Plaintiffs
`elected not to accuse many of those products. Plaintiffs’ renewed request to add more products
`to the case at this stage is improper and not proportionate to the needs of the case.
`
`
`
`

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`Case 1:17-cv-00868-CFC-SRF Document 219 Filed 06/26/20 Page 5 of 5 PageID #: 8133
`The Honorable Sherry R. Fallon
`June 19, 2020
`Page 5
`
`Respectfully,
`
`/s/ Frederick L. Cottrell, III
`
`Frederick L. Cottrell, III (#2555)
`
`
`cc: Counsel of Record (via CM/ECF and E-Mail)
`
`