Case 1:17-cv-00868-CFC-SRF Document 231 Filed 06/30/20 Page 1 of 5 PageID #: 9180
`
`Frederick L. Cottrell III
`302-651-7509
`Cottrell@rlf.com
`
`May 13, 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 respectfully request that the
`Court order Plaintiffs to provide three focused categories of relevant discovery: (1) interrogatory
`responses relating to Plaintiffs’ testing conducted both before and during the course of this
`litigation; (2) documents relating to the Teresian Carmelites, which Plaintiffs recently confirmed
`they intend to discuss at trial; and (3) a supplementation of Plaintiffs’ privilege log or production
`of any non-privileged documents.1 A proposed Order is attached as Ex. A.
`
`1. L’Oréal USA’s Request That Plaintiffs Be Ordered to
`Supplement Their Responses to L’Oréal USA’s Interrogatory Nos. 1, 8, 9, and 11
`
`Interrogatory Nos. 1, 8, 9, and 11 seek, inter alia, information relating to any studies,
`evaluations, analysis, and testing of products that Plaintiffs contend are covered by the Patents-
`in-Suit. (See Ex. B at 4, N. Tymoczko April 8 Letter; see also Ex. C, Plaintiffs’ Suppl.
`Responses to Interrogatory Nos. 1, 8, 9, and 11.) Discovery has revealed that Plaintiffs
`conducted testing (1) in 2019, which serves as the sole basis for its assertion of infringement and
`(2) in 2010, before this litigation was filed. Plaintiffs’ interrogatory responses, however, do not
`address this testing. When informed of this deficiency, Plaintiffs agreed to supplement their
`responses to address “their testing of the Accused Products” (Ex. D at 2, B. Franklin April 13
`Email), but then backtracked and failed to do so, forcing L’Oréal USA to seek the Court’s
`assistance.
`
`First, as the Court is aware, L’Oréal USA has been seeking discovery of basic facts
`concerning Plaintiffs’ testing for the past seven months to prepare its claims and defenses. (See
`D.I. 121 at 1.) Plaintiffs have refused to provide any additional documents regarding their
`tests—even non-privileged documents containing the basic facts underlying these tests (i.e., the
`conditions and protocols, laboratory notebooks, and underlying data)—but represented on April
`
`1 Plaintiffs sent an email to L’Oréal USA yesterday that showed a willingness to provide
`30(b)(6) testimony on Topics 27-35 and 39, which were identified in the parties’ Joint Motion
`(D.I. 153). In the interest of cooperation and to avoid burdening the Court, L’Oréal USA has
`agreed to withdraw those topics from consideration at this time without prejudice to its right to
`raise any 30(b)(6)-related disputes to the extent the parties reach an impasse.
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 231 Filed 06/30/20 Page 2 of 5 PageID #: 9181
`The Honorable Sherry R. Fallon
`May 13, 2020
`Page 2
`
`13 that they would “provide a supplementary interrogatory response regarding their testing of
`the Accused Products.” (See Ex. D at 2, B. Franklin April 13 Email (emphasis added).)
`
`To that end, and following the Court’s directive during the April 24 conference,2 L’Oréal
`USA asked Plaintiffs to confirm that this promised supplemental interrogatory response would
`address eight specific, factual topics relating to the design and execution of the tests relied upon
`by Plaintiffs. (Ex. F at 5-6, N. Tymoczko April 28 Email.) Plaintiffs acknowledged that they
`could provide the requested information, but agreed to do so only if L’Oréal USA would agree
`that (1) “providing this information would satisfy [L’Oréal USA’s] demands for testing
`information regarding the accused products during fact discovery,” (2) L’Oréal USA “will not
`argue some additional waiver exists on the basis of us giving you the information you’re now
`asking for,” and (3) “any further discovery about this testing will occur during expert discovery.”
`(Ex. F at 4-5, T. Lusztig April 29 Email.) To avoid burdening the Court and to lessen the
`continued prejudicial delay in receiving this basic factual information, L’Oréal USA agreed to
`not argue that providing such information would in and of itself result in any waiver and to not
`seek additional information about the testing during fact discovery. (Ex. F at 2, N. Tymoczko
`May 4 Email.)
`
`Despite their previous commitment to supplement their interrogatory responses, including
`to answer basic factual questions regarding how the infringement contention tests were
`conducted, Plaintiffs suddenly reversed course and refused to provide any information
`whatsoever unless L’Oréal USA waived its right to seek appropriate relief (including potentially
`moving to preclude and/or strike portions of Plaintiffs’ forthcoming expert reports, if necessary)
`based on Plaintiffs’ failure to timely provide information regarding these tests.3 (See Ex. F at 1-
`2, T. Lusztig May 8 Email; N. Tymoczko May 10 Email.) Plaintiffs should not be permitted to
`renege on their commitment. Because the requested information is readily available to Plaintiffs,
`and given the concessions already agreed to by L’Oréal USA, Plaintiffs should be ordered to
`supplement their interrogatory responses with the requested information.
`
`Nor can Plaintiffs justify backtracking on that pledge by now claiming this factual
`
`
`2 The Court denied without prejudice L’Oréal USA’s previous request for documents relating to
`these tests (D.I. 121), and encouraged the parties to work together with respect to discovery of
`the basic factual information sought by L’Oréal USA (Ex. E at 80:15-81:1 (“I don’t think I have
`a fulsome record right now to be able to decide that, so I err on the side of being conservative,
`denying it without prejudice and leaving it to the parties to continue to see if there is some
`informal agreement with respect to some type of underlying documents that aid in the
`interpretation of that chart or whether defendants are really seeking to engage in full-blown
`expert discovery early on without an expert report and nothing more than this chart.”)).
`
`3 Given that L’Oréal USA does not have certain basic information regarding Plaintiffs’ testing,
`and does not know what information Plaintiffs’ experts will rely upon, the Court made clear that
`the denial of L’Oréal USA’s previous request for documents relating to these tests was without
`prejudice to raising this issue during expert discovery should it be determined that Plaintiffs
`withheld facts concerning these tests during fact discovery. (Ex. E at 85:4-16.) Plaintiffs’
`request that L’Oréal USA waive these rights recognized by the Court as a condition for receiving
`basic factual information relating to Plaintiffs’ testing is therefore improper.
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 231 Filed 06/30/20 Page 3 of 5 PageID #: 9182
`The Honorable Sherry R. Fallon
`May 13, 2020
`Page 3
`
`information is privileged. Even putting aside that such a claim is belied by Plaintiffs’
`commitment to providing this information (notwithstanding their subsequent refusal),4 a patentee
`cannot disclose only testing results while concealing related facts. See Koninklijke Philips Elec.
`N.V. et al. v. Zoll Medical Corp., 2013 WL 812484, at *2-3 (D. Mass. Mar. 4, 2013) (ordering
`that “technical information regarding the dates, parameters, and results of the tests referenced
`throughout ZOLL’s preliminary infringement contentions” be provided and rejecting argument
`that such information was privileged because request did “not extend to communications from,
`or substantive discussion with, counsel”). This is consistent with the ruling in Gillette, where the
`defendants sought, and the Court ordered production of, information regarding “the testing
`conditions and protocols” underlying “results from tests of Defendants’ products” incorporated
`into the plaintiffs’ infringement contentions. See D.I. 68, Ex. 11, at 3 of 37; Gillette Co. v.
`Dollar Shave Club, Inc., 2018 WL 3528720, at *1 (D. Del. July 23, 2018).
`
`Second, Plaintiffs’ responses to Interrogatory Nos. 1, 8, 9, and 11 are likewise deficient
`because they do not include any information concerning the 2010 testing of L’Oréal USA
`products that Plaintiffs conducted referenced in 2015 and 2016 correspondence between the
`parties leading up to this litigation. (See, e.g., Exs. G at 2-4, H at 14413-14.) L’Oréal USA is
`entitled to interrogatory responses that provide non-privileged, factual information regarding this
`testing, such as when it was conducted, by whom, and (if work-product protection is asserted)
`that it was conducted in anticipation of this litigation. Once again, after L’Oréal USA asked that
`Plaintiffs include information about “Carmel Laboratories’ 2010 competitor testing” (Ex. B at 2,
`N. Tymoczko April 8 Letter), Plaintiffs agreed to supplement their responses to provide this type
`of basic factual information (Ex. I at 5, T. Lusztig April 14 Email), but then did not (see Ex. C).
`
`2. L’Oréal USA’s Request That Plaintiffs Supplement and Correct Their Privilege Log
`
`Plaintiffs’ privilege log identifies purportedly privileged documents with descriptions that
`are insufficient for L’Oréal USA to understand the basis for Plaintiffs’ privilege assertions. (Ex.
`J at 1, K. Kasaraneni May 5 Email.) In particular, Plaintiffs assert work-product protection over
`documents dating as far back as 2008, but do not identify the specific litigation forming the basis
`of those claims. See In re Oxbow Carbon LLC Unitholder Litig., 2017 WL 959396, at *5 (Del.
`Ch. Mar. 13, 2017) (“When a party seeks to invoke the work product doctrine, a party cannot
`merely recite ‘in anticipation of litigation’ as a formulaic set of magic words. A party must
`identify the specific litigation that forms the basis of the work product claim.”). Without at least
`this information, L’Oréal USA cannot determine whether the assertion is appropriate, or whether
`the work involved non-privileged, routine investigations that would have been performed
`regardless of whether litigation ensued. See Sandvik Intellectual Property AB v. Kennametal,
`Inc., 2011 WL 466696, at *3 (W.D. Pa. Feb. 4, 2011) (finding work product privilege did not
`apply to investigations before plaintiff’s letter to defendant alleging infringement). This concern
`is particularly acute with respect to several entries addressing third-party communications
`between non-attorneys, where the third party is described merely as an “agent” or “accountant”
`performing generic “research” in anticipation of “potential” or “anticipated” litigation. (See,
`e.g., Ex. K at Entries No. 148, 149, 194, 220, 968, 969, 973.) It also extends to various internal
`
`
`4 To be clear, L’Oréal USA does not seek Plaintiffs’ experts’ opinions or communications with
`counsel, nor does L’Oréal USA seek early expert discovery such as depositions of Plaintiffs’
`experts. Rather, L’Oréal USA seeks only factual information regarding the testing at issue.
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 231 Filed 06/30/20 Page 4 of 5 PageID #: 9183
`The Honorable Sherry R. Fallon
`May 13, 2020
`Page 4
`
`communications from the same time period. (See, e.g., id. at Entries No. 27, 132, 145, 151, 171,
`208.) Plaintiffs should be ordered to either (1) supplement their privilege log descriptions to
`explain which litigation was at issue and provide factual information regarding the nature of the
`alleged work product or (2) produce any non-privileged documents.5
`
`3. L’Oréal USA’s Request for Documents Relating to the Teresian Carmelites
`
`Plaintiffs should be ordered to produce documents pertaining to: (1) the financial
`condition and outlays of the Teresian Carmelites since 2008; and (2) former Teresian Carmelites
`(and Carmel Labs) President Dennis Wyrzykowski’s decision to separate from the organization.
`(See Ex. M at RFP Nos. 138, 140.) Plaintiffs placed these matters at issue when they made
`several allegations concerning the Teresian Carmelites’ finances and Mr. Wyrzykowski in their
`First Amended Complaint. (See, e.g., D.I. 14 at ¶¶ 14, 15, 17, 28-30.) In September 2019,
`L’Oréal USA served document requests pertaining to these allegations. (See D.I. 104 at 1; id. at
`Ex. A.) Plaintiffs refused to produce responsive documents, contending that the production was
`unnecessary because, as L’Oréal USA understood it, Plaintiffs would not be introducing
`evidence or argument regarding the Teresian Carmelites during summary judgment or at trial.
`(D.I. 104 at 2; id. at Ex. A at Plaintiffs’ Suppl. Responses to RFP Nos. 11, 30-33, 45, 84, 87, 92,
`and 95.) Yet, when L’Oréal USA sent Plaintiffs a draft stipulation reflecting Plaintiffs’ position,
`Plaintiffs refused to sign it. Pursuant to this Court’s Order, the parties further met and conferred
`in an attempt agree on “what information, if any, regarding the Teresian Carmelites is in or out.”
`(Ex. N at 11:5-12.) The Court also instructed that, if the parties could not agree on a stipulation,
`L’Oréal USA could propound document requests covering the topics to which Plaintiffs refused
`to respond that are “narrowly tailored” and “relevant and proportional to the needs of the case.”
`(Id. at 11:17-12:6.) During subsequent discussions, Plaintiffs disclosed that they did intend to
`introduce evidence at trial pertaining to the Teresian Carmelites’ financial relationship with
`Carmel Labs and Mr. Wyrzykowski’s affiliation with the monastery (even though that affiliation
`has ceased). (See Ex. O at 1-2, 7-8.) In light of this position, L’Oréal USA served specific
`discovery requests pertaining to these two categories. (See Ex. M.) Plaintiffs refused to produce
`responsive documents, and confirmed that they are withholding documents based on their belief
`that the requested information is not relevant. (See id. at Responses to RFP Nos. 138, 140; see
`also Ex. P at 1.) Simply put, Plaintiffs intend to introduce evidence about the Teresian
`Carmelites, and to describe Mr. Wyrzykowski as a member of that monastery, yet refuse to allow
`discovery into the Teresian Carmelites’ financial outlays and Mr. Wyrzykowski’s disassociation
`from that monastery. (See Ex. O at 1-2, 7-8.) Plaintiffs cannot have it both ways: If the
`Teresian Carmelites and Mr. Wyrzykowski’s affiliation thereto are to be discussed at trial, then
`L’Oréal USA is entitled to discovery on these issues. See Hubbard v. Bankatlantic Bancorp,
`Inc., 2009 WL 3856458, at *5 (S.D. Fla. Nov. 17, 2009) (“[T]he understandable desire for
`privacy must give way to Defendants’ rights to discovery.”); see also Minerva Surgical, Inc. v.
`Hologic, Inc., 2019 WL 5092254 at *3 (D. Del. 2019) (allowing discovery where protective
`order was in place).
`
`
`5 To the extent Plaintiffs assert L’Oréal USA’s privilege log is deficient for failing to identify
`attorneys or provide sufficient privilege descriptions, the same deficiencies are present in
`Plaintiffs’ May 11 Revised Privilege Log. Any order to supplement should therefore be
`reciprocal, as L’Oréal USA offered (Ex. L, May 12 K. Kasaraneni Email), but Plaintiffs rejected.
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 231 Filed 06/30/20 Page 5 of 5 PageID #: 9184
`The Honorable Sherry R. Fallon
`May 13, 2020
`Page 5
`
`Respectfully,
`
`/s/ Frederick L. Cottrell, III
`
`Frederick L. Cottrell, III (#2555)
`
`
`cc: Counsel of Record (via CM/ECF and E-Mail)
`
`