Case 1:17-cv-00868-CFC-SRF Document 227 Filed 06/30/20 Page 1 of 5 PageID #: 8972
`
`VIA E-FILING
`The Honorable Sherry R. Fallon
`J. Caleb Boggs Federal Building
`844 N. King Street
`Wilmington, DE 19801-3568
`
`May 13, 2020
`
`PUBLIC VERSION
`
`RE: University of Massachusetts, et al. v. L'Oréal USA, Inc.
`(C.A. No. 17-cv-868-CFC-SRF)
`
`Dear Magistrate Judge Fallon,
`
`Plaintiffs move the Court order for an order compelling L’Oréal to comply with its
`discovery obligations by: (1) searching for and identifying all products responsive to Interrogatory
`No. 3; (2) searching for and producing documents relevant to Plaintiffs’ willfulness claim; (3)
`searching for and producing relevant licenses; (4) revising its deficient privilege log; and (5)
`providing information regarding its litigation hold.
`L’Oréal continues to shirk its discovery obligations and refuses to meaningfully engage
`with Plaintiffs. L’Oréal’s own May 12 letter shows that Plaintiffs’ concerns are well-founded.
`Indeed, L’Oréal concedes that—despite its earlier representations to this Court that its production
`of such documents was complete—responsive documents discussing adenosine, testing of the
`Accused Products, and development of the Accused Products appear to have been collected and
`reviewed but not produced until the Court ordered L’Oréal to supplement its production. See D.I.
`155, at 1 (additional production resulted from “a re-review of emails collected from R&I
`custodians discussing adenosine [and] a re-review of documents collected from a central database
`for any further product-specific testing”) (emphasis added). This “re-review” yielded plainly
`responsive documents that, for example, discussed adenosine as a
` in
`one of the Accused Products. D.I. 156, Ex. D. It produced marketing documents for the Accused
`Products that L’Oréal previously, and repeatedly, represented it could not find. See Exs. R (D.I.
`105, Ex. A), S. L’Oréal also produced an entire category of documents—“Magellan briefs”—that
`Plaintiffs had never seen before. L’Oréal’s May 12 letter makes plain that the situation is even
`worse than Plaintiffs thought, as not only has L’Oréal failed to conduct adequate searches, it has
`withheld responsive materials it previously told Plaintiffs and this Court it had searched for and
`produced.
`Plaintiffs have been trying to work with L’Oréal to close out document discovery, but have
`been met at every turn with delay, stonewalling, or simply silence. This Court should order L’Oréal
`to run Plaintiffs’ searches and produce all non-privileged documents that are returned, and for
`L’Oréal to provide sufficient information about its privilege assertions and litigation hold.
`Plaintiffs accordingly ask the Court to order the relief laid out in the attached proposed order.
`
`Plaintiffs’ Interrogatory No. 3. Since as far back as June 2017, “L’Oréal [has been] on
`notice that products containing adenosine made by the eighteen brands specified in the FAC,” D.I.
`
`9 1 9 N . M A R K E T S T R E E T , 1 2 T H F L O O R , W I L M I N G T O N , D E 1 9 8 0 1
`P H O N E : ( 3 0 2 ) 7 7 7 – 0 3 0 0 (cid:476) F A X : ( 3 0 2 ) 7 7 7 – 0 3 0 1 (cid:476) W W W . F A R N A N L A W . C O M
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 227 Filed 06/30/20 Page 2 of 5 PageID #: 8973
`
`31, are the subject of this lawsuit. That notice should have triggered L’Oréal to investigate which
`products are at issue—i.e., which of its products contain adenosine—in order to, at the very least,
`implement an adequate litigation hold.
`As soon as discovery opened in July 2019, Plaintiffs served an interrogatory asking L’Oréal
`to “[i]dentify every product You have ever sold in the United States that contains adenosine as an
`ingredient, including but not limited to every name You have sold such product under.” See Ex.
`A. Plaintiffs need this information in order to test L’Oréal’s products to determine whether they
`meet the limitations of the asserted patents. Despite Plaintiffs’ thorough investigation, they cannot
`know if they have located every relevant L’Oréal product based on public information (particularly
`where some relevant L’Oréal products sold in the United States during the damages period have
`been discontinued).
`Per usual in this case, the parties have engaged in an extended meet and confer process yet
`L’Oréal has not produced any more information. L’Oréal’s first response to Plaintiffs’
`Interrogatory No. 3, served approximately one month before Plaintiffs’ infringement contentions
`were due, identified a limited number of responsive products. It omitted many products Plaintiffs
`had already discovered contained adenosine through public information. See Exs. B, C. Plaintiffs
`immediately contacted L’Oréal to request a supplement. That supplement did not come until
`December 2019—approximately five months after Plaintiffs served the interrogatory, three
`months after Plaintiffs first requested a supplement, and after Plaintiffs had already served their
`infringement contentions. See Ex. D. Even that response identified few products Plaintiffs were
`not already aware of based on their diligent public searches. Accordingly, Plaintiffs raised the issue
`again, and after it threatened again to move to compel, L’Oréal agreed to further supplement its
`response on the parties’ April 14, 2020 meet and confer. See Ex. E. But in that supplement, instead
`of identifying further products, which is what the interrogatory asks for, L’Oréal simply
`complained about the burden of responding, and then referred to thousands of pages in its
`production without further explanation. See Ex. F, at 73-76.
`It appears that L’Oréal did not take any additional steps to search when it agreed to
`supplement. In order to identify its own responsive products, L’Oréal apparently conducted a
`manual review of carton artwork. See Ex. G, at 12. This manual process led to significant gaps by
`L’Oréal’s own admission. L’Oréal admits that, after Plaintiffs’ Infringement Contentions
`identified numerous products not included in L’Oréal’s prior response, L’Oréal did not conduct
`any additional searches for other products containing adenosine. Id., at 12-13. What L’Oréal did
`not do—but easily could—is simply run the term “adenosine” as well as its code number on its
`databases, see D.I. 156, match the results up to the products it has sold in the United States—
`matching formula numbers and product names, as it did for the FTC, see Ex. T--and supplement
`its response with any missing products. L’Oréal has objected that such a process would be
`cumbersome. But not only does it strain credulity to think that L’Oréal cannot run searches to
`identify its products and formulas containing adenosine, L’Oréal has known literally for three
`years that this case revolves around L’Oréal’s products containing adenosine. It goes to the heart
`of Plaintiffs’ case.
`
`2
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 227 Filed 06/30/20 Page 3 of 5 PageID #: 8974
`
`Documents regarding L’Oréal’s knowledge of the Patents-in-Suit. At the beginning of
`discovery, Plaintiffs served several RFPs going to L’Oréal’s knowledge of the Patents-in-Suit. See
`Ex. H. Although L’Oréal now contends that the parties have not met and conferred on these issues,
`the parties first discussed them on March 3, when L’Oréal represented that its search for and
`production of documents responsive to these requests was complete. See Ex. I. Once again,
`however, it has become clear that Defendant’s searches were inadequate. Specifically, during the
`April 23 deposition, L’Oréal testified that it only searched for these responsive documents using
`terms like “Dobson” and “Ethier,” the inventors’ names, in the files of just two L’Oréal USA Legal
`custodians. See Ex. J, at 57:5-16, 60:3-19; Ex. K. Furthermore, L’Oréal searched for only the full
`patent number, and no abbreviations such as “327 patent.” Id. And it did not search the L’Oréal
`S.A. custodians Plaintiffs identified as having knowledge of the Patents-in-Suit.
`Plaintiffs promptly proposed a tailored set of additional searches: searching the inventor
`names and patent numbers through more custodians, including L’Oréal S.A. custodians; searching
`the terms “adenosine” and “75156” in central databases that hold product testing and development
`documents; and searching for “right to market” studies1 for products containing adenosine,
`including two products that were in development during the time L’Oréal contacted the inventor.
`See Ex. D.I. 156, Ex. B. The parties further discussed these requests during their May 5 meet and
`confer. Hearing nothing, Plaintiffs followed-up three more times. See D.I. 156, Ex. C. L’Oréal did
`not respond until after it made its Court-ordered production last week. Id. L’Oréal has refused to
`run the key searches described here and in the attached proposed order. L’Oréal has since
`confirmed that it is unwilling to run the requested searches.
`These searches would yield plainly responsive documents. As to search terms, documents
`hitting on the inventors’ names and patent numbers would be plainly relevant to this case. As for
`central databases, including MILOR: These databases house key documents like testing reports
`and technical dossiers, relating to both product development and patent applications. And as for
`L’Oréal S.A. custodians: L’Oréal has already said it would search for and produce documents from
`S.A. files. See D.I. 156, at 2. The custodians identified in Plaintiffs’ Initial Disclosures are those
`who communicated with Plaintiffs or worked on adenosine research and submitted patent
`applications citing the Patents-in-Suit. Documents produced to date show that L’Oréal USA and
`S.A. scientists work together. Other S.A. custodians also may have relevant knowledge, but
`L’Oréal refuses to search.
`Similarly, L’Oréal has refused to search for and either produce right to market studies for
`products containing adenosine because of unexplained “burden” or because Plaintiffs have asked
`for such studies for products that were apparently not sold in the United States. See D.I. 156, Ex.
`C. 2 These documents are plainly relevant, however, as they go to the heart of Plaintiffs’ willfulness
`
`
`1 A right to market inquiry occurs when L’Oréal wants
` Ex. J, 17:1-6.
`2 On the parties’ May 12 call, L’Oréal asserted, without authority, that all right to market
`materials would be privileged. Even if so, the fact of a study is not privileged, the documents are
`responsive and must be logged, and a log would provide Plaintiffs with highly relevant
`
`3
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 227 Filed 06/30/20 Page 4 of 5 PageID #: 8975
`
`and copying claim. Even if a product were not sold in the United States, a right to market study
`for that product could be the basis for L’Oréal’s knowledge of the Patents-in-Suit. Plaintiffs
`accordingly request that L’Oréal be ordered to run the searches in the attached proposed order, and
`produce all non-privileged documents returned from those searches.
`
`Licenses relevant to the calculation of a reasonable royalty. L’Oréal does not dispute
`that it must search for and produce relevant licenses. Yet it has repeatedly represented that it has
`no comparable licenses. See Ex. I. The problem with this representation is that, as recently as April
`23, L’Oréal testified that the company has not searched for licenses related to (1) the Accused
`Products; (2) adenosine; or (3) topical skincare products. See Ex. J, at 144:15-22, 176:8-16.
`Plaintiffs request that L’Oréal search for and produce all such licenses.
`
`L’Oréal’s Privilege Log. Plaintiffs have notified L’Oréal of numerous specific
`deficiencies in its revised privilege log. See Exs. L, M, Q. As Plaintiffs described to L’Oréal, many
`of the entries do not include any attorney, either in the to/from/cc fields, nor in the entry’s
`description. Nor does the description contain sufficient information for Plaintiff to be able to assess
`why the document is privileged, despite the lack of an attorney connected with the document.
`L’Oréal’s descriptions are all one of a limited variety of generic entries such as “Correspondence
`providing legal advice regarding patent prosecution” or “Document providing legal advice
`regarding intellectual property.” See Exs. N, O. This language does not “describe the nature of the
`documents . . . in a manner that, without revealing information itself privileged or protected, will
`enable [Plaintiffs] to assess the claim.” Fed. R. Civ. P. 26(b)(5)(A)(ii).
`Moreover, L’Oréal has never logged over 150 documents that contain redactions—a
`number that has only grown since L’Oréal’s last production. L’Oréal has not provided an updated
`log, nor a date certain by which it will provide an updated log. See Ex. M. Plaintiffs therefore
`request that the Court order L’Oréal to revise its privilege log to: (1) include any redactions; and
`(2) provide sufficiently detailed descriptions for any entries that do not contain an attorney or that
`contain a third party so that Plaintiffs can evaluate L’Oréal’s assertions of privilege.
`
`L’Oréal’s Litigation Hold. L’Oréal’s document retention policies suggest that emails are
`routinely destroyed after six months, see Ex. J, at 43:7-45:8. L’Oréal has been on notice of its
`infringement since at least April 2015 when it corresponded with Carmel Labs. Ex. P. At the April
`23 document deposition, L’Oréal testified it issued a litigation hold
` Ex. J, at
`26:4-8. L’Oréal could not identify who had received the hold. Id. at 26:9-13. Plaintiffs followed
`up by email regarding the precise date of the litigation hold and to whom it was issued. See Ex. Q.
`Despite saying it would do so, L’Oréal has not yet provided this information. Plaintiffs ask that
`the Court order the information be promptly produced.
`
`
`information—including, for example, if a right to market study were conducted around the time
`L’Oréal contacted Dr. Dobson.
`
`4
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 227 Filed 06/30/20 Page 5 of 5 PageID #: 8976
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Brian E. Farnan
`
`Brian E. Farnan
`
`cc: Counsel of Record (via E-Mail)
`
`5
`
`