Case 1:17-cv-00868-CFC-SRF Document 232 Filed 06/30/20 Page 1 of 5 PageID #: 9309
`
`Frederick L. Cottrell III
`302-651-7509
`Cottrell@rlf.com
`
`May 14, 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 May 13, 2019 letter brief (D.I. 159).
`Plaintiffs’ Interrogatory No. 3: As an initial matter, contrary to Plaintiffs’ assertion,
`this case is not about adenosine. Adenosine is a naturally occurring molecule that is present in
`every human cell. And the prior art is replete with references to adenosine’s use in cosmetic
`compositions, including at concentrations present in the accused products for years before
`Plaintiffs’ patents were even filed. 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. To that end, Plaintiffs have not asserted that every
`adenosine-containing product that L’Oréal USA has sold infringes the patents-in-suit, nor can
`they.1 (See, e.g., Ex. A at 1 (“[T]he Accused Products are the subset of [adenosine-containing]
`products . . . .”); 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).)
`L’Oréal USA has fully complied with its obligations at each stage of the discovery
`process with respect to Interrogatory No. 3. The Interrogatory, which was served in July 2019,
`asked L’Oréal USA to identify every product L’Oréal USA has ever sold containing adenosine
`(D.I. 159, Ex. A at 7). As the law requires Plaintiffs, not L’Oréal USA, to identify the products
`that underlie Plaintiffs’ infringement theories, L’Oréal USA did not interpret this Interrogatory
`(served in advance of Plaintiffs’ infringement contentions) as a request to locate possibly
`accused products. See, e.g., Magnadyne Corp. v. Best Buy Co., 2010 WL 11520525, at *2 (C.D.
`Cal. Feb. 22, 2010) (it is plaintiff’s responsibility to identify the accused products); Ethicon LLC
`v. Intuitive Surgical, Inc., 2018 WL 1392341, at *3 (D. Del. Feb. 12, 2018) (“‘[M]ere suspicion
`or speculation’ that [defendant]’s unaccused [product] will infringe the asserted patents . . . is not
`enough to render the requested discovery relevant to [plaintiff]’s infringement claims.”).
`Thus, L’Oréal USA objected to the Interrogatory as overbroad, unduly burdensome, and
`not proportionate to the needs of this case, but provided a substantive response to the
`Interrogatory, answering as much as it could, by identifying 126 products. (See D.I. 159, Ex. B
`
`1 Plaintiffs have thus necessarily had to assert infringement against the accused products in this
`case based on testing the concentration of adenosine at a particular skin location after application
`of those products. (See, e.g., Ex. D.I. 121 at Ex. A-C.)
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 232 Filed 06/30/20 Page 2 of 5 PageID #: 9310
`The Honorable Sherry R. Fallon
`May 14, 2020
`Page 2
`at Response to Interrogatory No. 3.) See Fed. R. Civ. P. 33(b)(3) (requiring parties to respond to
`interrogatories to the extent not objectionable); Ahdom v. Lopez, 2017 WL 3537083, at *2 (E.D.
`Cal. Aug. 17, 2017) (“A responding party is not generally required to conduct extensive research
`in order to answer an interrogatory, but a reasonable effort to respond must be made.”). This was
`not an easy task, as L’Oréal USA had to manually review carton artwork for skincare products to
`confirm they contain adenosine. On October 10, 2019, Plaintiffs served their infringement
`contentions, which accused 181 products, but which excluded many of the products identified by
`L’Oréal USA.2 Thereafter, the parties discussed a workable approach to discovery in light of the
`vast number of accused products, and the appropriate bounds of the case and Interrogatory No. 3.
`Plaintiffs confirmed during the parties’ discussions that they were accusing only a “subset” of
`products containing adenosine, and it was these products to which the case related. (See, e.g.,
`Ex. A at 1; see also D.I. 93 at 2.). As part of those discussions, L’Oréal USA asked Plaintiffs to
`provide any information they had on products they believed were missing from L’Oréal USA’s
`response to Interrogatory No. 3. (See, e.g., D.I. 159, Ex. C at 6.) Plaintiffs never responded. On
`November 27, 2019, L’Oréal USA served a supplemental response to Interrogatory No. 3 after
`confirming that the new products identified in Plaintiffs’ infringement contentions contained
`adenosine and were sold in the U.S. (D.I. 159, Ex. D at 64-66 (corrected version served on
`December 3).) For 111 days, Plaintiffs never raised any issues with this response.
`Plaintiffs may claim that Interrogatory No. 3 requires L’Oréal USA to now identify
`products beyond the accused products notwithstanding the objections served and maintained by
`L’Oréal USA since September. The law does not place such a burden on L’Oréal USA, see, e.g.,
`Micro Motion, Inc. v. Kane Steel Co., Inc., 894 F.2d 1318, 1326-27 (Fed. Cir. 1990), much less
`at this late stage of the proceedings. Indeed, the Micro Motion court stated: “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.” Id. Plaintiffs’ expectations aside,
`consistent with this authority, L’Oréal USA amended its Interrogatory No. 3 response in
`November to identify the specific documents under FRCP 33(d) that relate to the accused
`products. If Plaintiffs truly had an issue with L’Oréal USA’s objections or responses to
`Interrogatory No. 3, they should have raised it then—particularly given the numerous categories
`of documents Plaintiffs have requested for each and every accused product—rather than seek to
`reset the litigation at this stage. Moreover, Plaintiffs’ request that L’Oréal USA conduct searches
`using the word “adenosine” to identify new products is not even workable,
`
`
`
`
` This is why L’Oréal USA had to manually review carton artwork, which provides
`the product name and ingredient list, to identify products containing adenosine. (See D.I. 159,
`Ex. G at 11-13.) This process was extensive.3
`Plaintiffs’ apparent quest to now expand the case beyond the more than 150 products
`already accused of infringement is improper, and would prejudice L’Oréal USA’s ability to
`prepare for depositions during this last month of discovery.
`
`2 Plaintiffs did not explain their decision not to accuse these additional identified products.
`3 Plaintiffs cite a document produced in the FTC Investigation to suggest that L’Oréal USA can
`easily identify additional products containing adenosine. (D.I. 159, Ex. T.) Not so. From the
`outset, the FTC investigation involved a defined set of products, by name. Unlike here, L’Oréal
`USA was not asked to link an ingredient to a formula number to a product name to sales data.
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 232 Filed 06/30/20 Page 3 of 5 PageID #: 9311
`The Honorable Sherry R. Fallon
`May 14, 2020
`Page 3
`
`Documents Regarding L’Oréal USA’s Knowledge of the Patents-in-Suit: As
`discussed above, this case is not about adenosine itself, or even the mere use of adenosine in
`cosmetic compositions by L’Oréal USA and many other companies for decades. Plaintiffs’
`letter, however, seeks to significantly broaden discovery at this late stage to burden L’Oréal USA
`when the parties should be focused on completing fact discovery and preparing expert reports
`due on June 19. L’Oréal USA has made tremendous efforts to produce relevant documents in
`this case, including in response to Plaintiffs’ ever-expanding, belated requests. (See, e.g., D.I.
`155, Ex. A (L’Oréal USA’s Supp. Responses to RFP Nos. 27, 32, 40-42, 53, 59).)
`Plaintiffs, however, are not entitled to every single document L’Oréal USA has regarding
`adenosine, much less under the guise of “knowledge of the patents-in-suit.” Thus, unlimited
`searches for “adenosine” or “75156”—which are anything but “tailored” terms—in central
`databases containing product testing and development documents would be overbroad, unduly
`burdensome, and certainly far exceed the scope required to assess whether L’Oréal USA had
`knowledge of the patents-in-suit.4 For the reasons discussed above, the search terms already run
`through MILOR (including, but not limited, “adenosine AND skin” and “adenosine AND
`(dermal OR dermis)”) are sufficient to capture documents relating to the use of adenosine as
`relevant to the patents-in-suit. (See, e.g., id. (Supp. Response to RFP No. 27).) Any other use of
`adenosine is irrelevant. Plaintiffs also complain that L’Oréal USA has searched only two
`custodians for “Dobson” and “Ethier.” That is not true: L’Oréal USA has used such terms in
`conjunction with “adenosine” to search the MILOR database and emails from R&I
`custodians. (See Ex. C at 3-4, 12.) Moreover, a search through MILOR for “Dobson” or
`“Ethier” by themselves did not return any additional responsive documents.
`Plaintiffs also request that L’Oréal USA search the files of non-party L’Oréal S.A.
`employees, including, for the first time, an indeterminate set of “custodians Defendant’s
`investigation has revealed.” (See Ex. D.I. 159, Proposed Order.) That request is overbroad and
`unrelated to whether L’Oréal USA had knowledge of the patents-in-suit, or whether L’Oréal USA
`infringes the patents-in-suit. Moreover, Plaintiffs have been aware of L’Oréal USA’s 26
`document custodians since March 18, when L’Oréal USA disclosed them in its supplemental
`response to Interrogatory No. 11.5 (Ex. D.) Plaintiffs’ request is also untimely: Plaintiffs did
`not raise this new, expanded request for more than a month, despite having ample opportunity
`(including an intervening Court conference) to do so. Finally, even the identification of high-
`level L’Oréal S.A. executives in Plaintiffs’ initial disclosures (e.g., CEO; Director of Corporate
`Acquisitions, Licensing, and External Business Development; Global Head of Patents) is an
`apparent attempt to harass L’Oréal USA and in no way proportional to the needs of the case.6
`Although L’Oréal USA has already exceeded its discovery obligations by producing documents
`from the central repositories of non-party L’Oréal S.A. and searching for files of L’Oréal S.A.
`employees Jean-Baptiste Galley and Marie-Laurence Abella, this new, belated, and untargeted
`
`4 For example, such terms would return entirely irrelevant documents, such as certificates of
`analysis from adenosine suppliers or those relating to research regarding the use of adenosine in
`products other than cosmetics.
`5 This search went above and beyond the 10 custodians required by the Court’s Default Standard
`for Discovery.
`6 As has become commonplace, Plaintiffs’ proposed order is so broad as to include unspecific
`custodians, including “any L’Oréal S.A. custodians Defendant’s investigation has revealed may
`have knowledge of the Patents-in-Suit or the inventors.” (D.I. 159, Proposed Order.)
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 232 Filed 06/30/20 Page 4 of 5 PageID #: 9312
`The Honorable Sherry R. Fallon
`May 14, 2020
`Page 4
`request for documents from employee files of non-party L’Oréal S.A. custodians is a bridge too
`far, and is entirely irrelevant to determining L’Oréal USA’s knowledge of the patents-in-suit.
`With respect to “right to market” documents, L’Oréal USA offered to collect and log7
`such documents for the accused products. Plaintiffs refused that offer, and instead insisted on
`L’Oréal USA collecting such documents for any and all products containing adenosine, even if
`those products are not accused of infringement in this case. Given the multi-step, manual search
`necessary for identifying and collecting such “right to market” documents for each accused
`product individually (let alone for any and all products containing adenosine), and the fact that
`they will merely be logged given their privileged nature, this request is overly broad, unduly
`burdensome, and not proportional to the needs of the case.
`License Agreements and Litigation Hold: As L’Oréal USA explained during the
`March 26 conference, it has not located relevant license agreements. (Ex. E at 69:11-21.)
`Nonetheless, L’Oréal USA produced its license agreements with L’Oréal S.A., which cover the
`brands implicated in this case.8 In addition, yesterday, as agreed, L’Oréal USA provided
`Plaintiffs with the dates it issued litigation holds and the names of the recipients of those holds.
`L’Oréal USA’s Privilege Log: L’Oréal USA has invested considerable time and effort
`in ensuring its privilege log includes enough factual detail for Plaintiffs to assess L’Oréal USA’s
`privilege claims, even with respect to entries of questionable relevance to this case. Plaintiffs
`have not explained how any of the alleged deficiencies actually impact their privilege analysis,
`nor have they addressed L’Oréal USA’s repeatedly stated concern that Plaintiffs’ positions are at
`odds with their own privilege log. (Ex. F at 1; Ex. G at 1, 12.) For example, “many of the
`entries [in Plaintiffs’ log] do not include any attorney, either in the to/from/cc fields, nor in the
`entry’s description.” (D.I. 159 at 4; D.I. 160, Ex. K at Entry Nos. 1-12, 176.)9 Likewise,
`Plaintiffs’ supplemental log contains entries that are substantively indistinguishable from those
`they complain about in L’Oréal USA’s log. (See, e.g., D.I. 160, Ex. K at Entry Nos. 133, 136-37
`(“re. patent prosecution”) and 4-12, 152-65 (“reflecting legal advice”).) Finally, L’Oréal USA
`has already indicated that it will provide a redaction log, and is diligently working to do so, even
`as it continues to produce more documents. Regardless, in an attempt to avoid burdening the
`Court with this peripheral issue, L’Oréal USA offered to agree to a mutual exchange of
`supplemental privilege logs to address Plaintiffs’ concerns to the extent possible, which Plaintiffs
`refused. (See also D.I. 160 at 4 n.5.) Plaintiffs’ request should be denied or, in the alternative,
`the Court should order a mutual supplementation.
`
`7 Because they involve a determination that there is no legal obstacle to bringing the product at
`issue to market, these right to market documents are by their very nature privileged.
`8 Plaintiffs’ reliance on deposition testimony to argue that L’Oréal USA did not search for license
`agreements is misplaced. This testimony related to an R&I retention policy, and Ms. Al-Ebbinni
`was discussing documents maintained by third parties, not L’Oréal USA. As Ms. Al-Ebbinni
`later testified, L’Oréal USA searched for license agreements relating to this case,
`
`
`
`9 Plaintiffs’ May 11 supplement did not correct this incongruity. (D.I. 160, Ex. L at 1.) Nor
`have Plaintiffs indicated the names associated with many email addresses appearing on their
`privilege log, let alone explained which names or email addresses correspond to attorneys.
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 232 Filed 06/30/20 Page 5 of 5 PageID #: 9313
`The Honorable Sherry R. Fallon
`May 14, 2020
`Page 5
`
`
`Respectfully,
`
`/s/ Frederick L. Cottrell, III
`
`Frederick L. Cottrell, III (#2555)
`
`
`cc: Counsel of Record (via CM/ECF and E-Mail)
`Attachments
`
`