Case 1:17-cv-00868-CFC-SRF Document 229 Filed 06/30/20 Page 1 of 5 PageID #: 9126
`
`Frederick L. Cottrell III
`302-651-7509
`Cottrell@rlf.com
`
`February 13, 2020
`
`VIA CM/ECF & HAND DELIVERY
`The Honorable Sherry R. Fallon
`District Court of Delaware
`J. Caleb Boggs Federal Building
`Wilmington, DE 19801-3567
`
`(cid:51)(cid:56)(cid:37)(cid:47)(cid:44)(cid:38)(cid:3)(cid:57)(cid:40)(cid:53)(cid:54)(cid:44)(cid:50)(cid:49)
`
`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 in response to the letter filed by
`Plaintiffs University of Massachusetts and Carmel Laboratories, LLC (together, “Plaintiffs”) on
`February 12, 2020. Plaintiffs’ request for “an order directing [L’Oréal USA] to satisfy promptly
`its production obligations” is unfounded and unnecessary. (D.I. 88 at 1.)
`
`L’Oréal USA is not withholding any documents identified in Plaintiffs’ letter. Rather,
`Plaintiffs have created a near-insurmountable task by accusing a vast number of products that
`only they contend qualify as accused products—a list that still, despite numerous meet and
`confer efforts to narrow this list, includes duplicate entries for the same product, products that
`were launched after the expiration of the patents, and a host of other issues. (See, e.g., Ex. A.)1
`Nonetheless, as detailed in L’Oréal USA’s letter brief seeking a one-month extension of the
`document production deadline (see D.I. 87), L’Oréal USA has produced financial information
`for every accused product, marketing information for 137 products, and technical documents for
`126 products.2
`
`Through the meet and confer process, L’Oréal USA repeatedly explained to Plaintiffs
`that the parties are not in dispute as to the documents that still need to be produced. Rather,
`L’Oréal USA simply needs more time to complete its production—hence, its request for a
`modest, one-month extension. L’Oréal USA is working through the outstanding issues in
`Plaintiffs’ accused products list, as well as collecting documents from foreign entities (e.g.,
`L’Oréal S.A. and L’Oréal Canada), without forcing Plaintiffs to proceed through the Hague
`Convention—an altogether more time-consuming process. L’Oréal USA believes it can
`complete its document production by its requested deadline of March 6, 2020. (D.I. 87.)
`Though L’Oréal USA objected to involving the Court to mediate this non-dispute, nevertheless,
`the parties find themselves here.
`
`1 Plaintiffs detail the information they contend is missing in a chart attached as Exhibit A to their
`letter brief. Attached hereto for the Court’s convenience as Ex. A is that same chart with an
`additional column explaining the status of the document production for those products.
`2 L’Oréal USA represented in its letter to the Court (D.I. 87) that it had produced marketing
`materials for 131 products. L’Oréal USA has since made another document production.
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`Case 1:17-cv-00868-CFC-SRF Document 229 Filed 06/30/20 Page 2 of 5 PageID #: 9127
`The Honorable Sherry R. Fallon
`Feb. 13, 2020
`Page 2
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`Plaintiffs’ complaint that L’Oréal USA has failed to produce documents called for by
`Paragraph 6 of the Scheduling Order is without merit. (See D.I. 46 at 6-7.) Plaintiffs contend
`that, pursuant to Paragraph 6(a), L’Oréal USA was required to produce all ingredient lists,
`marketing materials, and testing information for all 177 accused products by December 20, 2019
`(within 45 days of receiving Plaintiffs’ list of accused products), because, according to Plaintiffs,
`Paragraph 6 compels production of “any and all documents describing the operation” of the
`accused products. (D.I. 87 at 1.) This position cannot be reconciled with the plain language of
`Paragraph 6(a), which requires production of “[s]ource code, specifications, schematics, flow
`charts, artwork, formulas, or other documentation sufficient to show the operation of any
`aspects or elements,” of the accused products. (D.I. 46 at 6 (emphasis added).) This is exactly
`what L’Oréal USA did. Plaintiffs cannot credibly maintain that they do not know how these
`products operate; they are cosmetic products used on the skin. And, L’Oréal USA’s production
`more than suffices to show this.3 Indeed, Plaintiffs admit that L’Oréal USA has produced
`ingredient lists (“set[ting] forth the actual formulas of the Accused Products and other technical
`information relevant to the products’ composition”) and product packaging and marketing
`materials (which are “highly relevant to showing the ‘operation of any aspects or elements of’
`the Accused Products”). (D.I. 88 at 2.)
`
`Moreover, Plaintiffs’ demand for any and all documents describing the operation of the
`accused products is based on a tortured reading of the plain language of Paragraph 6(a) that has
`since been discredited by the Federal Circuit as an abuse of the district courts’ discretion. See
`Drone Techs., Inc. v. Parrot S.A., 838 F.3d 1283, 1298-99 (Fed. Cir. 2016) (“[T]he district court
`appears to have overlooked the ‘sufficient to show’ limitation in LPR 3.1 by forcing Parrot to
`turn over ‘all’ of its technical information ‘relating to the operation of the accused products.’ . . .
`Thus, even if Drone was entitled to some source code, the court provided no rationale for forcing
`Parrot to produce all of its source code and other technical documents . . . .”). Similarly, here,
`Plaintiffs have not indicated what about L’Oréal USA’s December 20, 2019 production was
`insufficient to “show the operation” of the accused products. Plaintiffs declined to answer this
`question during the meet and confer process, which they shunned repeatedly. (See D.I. 87, Ex. G
`at 9-11; see also Drone Techs., 838 F.3d at 1298 (“Without any explanation from Drone as to
`any deficiencies in Parrot’s initial production, the court could not have determined that Parrot
`had not met its burden under the local rules.”).) Where, as here, Plaintiffs have not indicated a
`specific insufficiency in their understanding of the operation of the accused products based on
`L’Oréal USA’s initial production, it would be improper to find that L’Oréal USA did not satisfy
`its obligations under Paragraph 6(a).
`
`Plaintiffs’ attempt to broaden the requirements of Paragraph 6(a) to cover testing
`documents is also contrary to their own conduct in this case. Like Paragraph 6(a), Paragraph
`
`
`3 For this reason, it is of no moment that some of L’Oréal USA’s documents refer to testing the
`effects of some products. Plaintiffs’ argument—based on discredited “any and all” case law—
`that marketing claims associated with a product change the requirements of what must be
`produced under the plain language of the Scheduling Order makes no sense. Instead, as noted
`below, the Federal Circuit has indicated that the proper question is one of sufficiency, not of
`document type. See Drone Techs., Inc. v. Parrot S.A., 838 F.3d 1283, 1298-1300 (Fed. Cir.
`2016).
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`Case 1:17-cv-00868-CFC-SRF Document 229 Filed 06/30/20 Page 3 of 5 PageID #: 9128
`The Honorable Sherry R. Fallon
`Feb. 13, 2020
`Page 3
`4(e) of the Scheduling Order requires Plaintiffs to produce “documents sufficient to show the
`operation of any aspects or elements of” its own products that “practice[] the claimed
`invention.” (D.I. 46 at 4.) Tellingly, Plaintiffs did not produce any product-specific testing in
`connection with this obligation.4 Instead, consistent with the plain language of the Scheduling
`Order (and the scope of L’Oréal USA’s production), Plaintiffs produced only documents to
`“show the operation” of their Paragraph 3(g) products. (See Ex. C (screenshots of the product
`pages for the four Paragraph 3(g) products from the Camel Labs website).) This is not
`surprising, as Plaintiffs’ current position would collapse the distinction between this production
`of a discrete set of early technical documents required by the Scheduling Order, and the more
`complete technical document production common in patent cases and covered by the document
`production deadline.5
`
`With respect to marketing materials, L’Oréal USA has produced marketing documents
`for 137 products, including product packaging for 134 products. Documents other than the
`carton “artwork” were not due by December 20, 2019 under the express terms of the Scheduling
`Order, and in any event, the parties agreed in October 2019 that marketing materials would be
`produced in phases, to commence in mid-November. (See D.I. 87, Ex. C at 1 (confirming the
`parties’ agreement that “L’Oréal USA would provide targeted marketing materials for 30
`products at a time, which would include product packaging and launch materials”).) L’Oréal
`USA even asked Plaintiffs to provide a list of products they were particularly interested in, so
`that L’Oréal USA could include the marketing materials for those products in the first phase of
`production. (Id.) Plaintiffs ignored that request, much like they now seek to ignore the parties’
`agreement, referencing it only in a footnote in their brief. (See D.I. 88 at 3, n.2.)
`
`Months after agreeing that L’Oréal USA’s planned manner of production of the
`marketing materials was an appropriate way to proceed, Plaintiffs suddenly began complaining
`about L’Oréal USA’s supposedly deficient marketing production, citing the Paragraph 6 deadline
`of the Scheduling Order. As L’Oréal USA explained in follow-up email correspondence,
`Plaintiff’s new position, that all marketing documents were due in December, cannot be
`reconciled with either the terms of the Scheduling Order or the agreement reached between the
`parties in October, that L’Oréal USA would produce marketing documents in five phases,
`commencing mid-November. (See D.I. 87, Ex. G at 15.)6 L’Oréal USA has, and continues to,
`
`4 Given Plaintiffs’ current position, this is especially remarkable because the documents
`Plaintiffs did produce showed that such product testing had been performed. (See, e.g., Ex. B
`(detailing a
`
`) The only
`other documents Plaintiffs cited in connection with their obligations under Paragraph 4(e) were
`public statements, patents, patent application publications, and articles by L’Oréal USA or
`L’Oréal S.A. (which was dismissed as a party to this case).
`5 In further recognition that testing documents were not required to be produced on December
`20, 2019 pursuant to Paragraph 6(a), on December 18, 2019, Plaintiffs served a document
`request seeking “[a]ll documents that refer or relate to testing of any Accused Product.” (Ex. D,
`Request for Production No. 50.)
`6 Plaintiffs’ contention that L’Oréal USA “acknowledged th[at] [marketing materials] constitute
`part of its 6(a) obligation by identifying them as such in its December 20 production” is belied
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`Case 1:17-cv-00868-CFC-SRF Document 229 Filed 06/30/20 Page 4 of 5 PageID #: 9129
`The Honorable Sherry R. Fallon
`Feb. 13, 2020
`Page 4
`abide by the parties’ October 2019 agreement to produce marketing documents in phases, and
`has nearly completed that production.
`
`Similarly, L’Oréal USA has produced financial records for every accused product, as
`well as for products launched in 2019, showing that that they are improperly accused. L’Oréal
`USA has explained several times to Plaintiffs that its financial databases for certain divisions do
`not include data earlier than 2013, which affects, at most, five accused products. L’Oréal USA is
`working to obtain the 2011 and 2012 data for those five products, to the extent those products
`were even sold during that time period.
`
`There can be no dispute that L’Oréal USA has been diligent in its document production
`efforts. However, as detailed more fully in L’Oréal USA’s letter brief (see D.I. 87), L’Oréal
`USA has been hampered in its efforts by Plaintiffs’ refusal to work with L’Oréal USA to
`streamline the case. For instance, L’Oréal USA has identified 32 products that never should
`have been added as accused products. Even now, after L’Oréal USA produced records showing
`that certain products were improperly accused, Plaintiffs continue to demand discovery on those
`products, requiring L’Oréal USA to expend time and resources addressing Plaintiffs’ complaints.
`For instance, at least nine of the products identified in Plaintiffs’ Exhibit A were launched in
`2019, after the asserted patents expired. (See Ex. A.) At least one other product is a duplicate, as
`Plaintiffs themselves acknowledged in an email dated January 23, 2020. (See D.I. 87, Ex. G at
`12.) Eight other products do not belong to any L’Oréal USA brand, which L’Oréal USA
`explained to Plaintiffs during discovery. Moreover, with respect to at least 11 other products on
`Plaintiffs’ list, L’Oréal USA has indeed produced the requested documents for those products.
`(See Ex. A.) In sum, out of the 145 properly accused products in this case, L’Oréal USA has
`produced financial records for all of them. L’Oréal USA has also produced marketing records
`for 137 products and technical documents for 126 products. While L’Oréal USA has repeatedly
`asked Plaintiffs to update their accused product list so that the parties can be on the same page
`with respect to discovery, Plaintiffs refuse to do so. (See D.I. 87, Ex. G at 2.) As for the
`outstanding documents that L’Oréal USA has been unable to locate, L’Oréal USA is attempting
`to obtain those documents from other sources, including France and Canada.
`
`In sum, L’Oréal USA has met its obligations under the Scheduling Order, it has not
`refused to produce responsive documents, and there is nothing for this Court to compel.
`
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`by the very email they rely upon. (D.I. 88 at 3.) As explained above, L’Oréal USA entered into
`a separate agreement regarding the phased production of marketing documents, which included
`carton artwork. That L’Oréal USA referenced some of the marketing materials it had produced
`as of December 20, 2019 in its email identifying documents responsive to Paragraph 6 does not
`nullify the parties’ agreement. Indeed, L’Oréal USA made clear in that very email that “[a]s we
`previously discussed during one of our meet and confers in October, L’Oréal USA is
`phasing its production of marketing materials in light of the large number of accused
`products in this case. Thus, we reserve the right to supplement the above productions in due
`course.” (D.I. 88, Ex. C (emphasis added).) Plaintiffs never responded or otherwise complained
`about the phased production, until now.
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`Case 1:17-cv-00868-CFC-SRF Document 229 Filed 06/30/20 Page 5 of 5 PageID #: 9130
`The Honorable Sherry R. Fallon
`Feb. 13, 2020
`Page 5
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`Respectfully,
`
`/s/ Frederick L. Cottrell, III
`
`Frederick L. Cottrell, III (#2555)
`
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`cc: Counsel of Record (via CM/ECF and E-Mail)
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