Case 1:17-cv-00868-CFC-SRF Document 233 Filed 06/30/20 Page 1 of 4 PageID #: 9403
`
`Frederick L. Cottrell III
`302-651-7509
`Cottrell@rlf.com
`
`May 12, 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 address the issues discussed
`during the parties’ April 24 teleconference, pursuant to the Court’s Oral Order. (See D.I. 153.)
`
`1. Plaintiffs’ Request That L’Oréal USA Search for and Produce Additional
`Documents Responsive to RFP Nos. 27, 32, 40-42, 53, 59, and 66
`
`During the April 24 conference, Plaintiffs requested product development documents
`regarding L’Oréal USA’s “inclusion of adenosine in” the accused products in response to RFP
`Nos. 27, 32, 53, and 59 (D.I. 120 at 1 n.3), which Plaintiffs asserted to be relevant to “damages”
`(id. at 2). On May 8, L’Oréal USA provided supplemental responses to those RFPs, and
`produced additional documents, in satisfaction of the Court’s April 24 Order. In doing so, and
`despite its previous searches already exceeding what was required,1 L’Oréal USA re-reviewed its
`collection and conducted good-faith follow-up searches to identify any additional potentially
`relevant documents. These significant efforts detailed in L’Oréal USA’s supplemental RFP
`responses included a re-review of emails collected from R&I custodians discussing adenosine, a
`re-review of documents collected from a central database for any further product-specific testing,
`and a collection of development documents known as “Magellan briefs” from another central
`repository. (See, e.g., Ex. A, First Supplemental Objections and Response to RFP 27.)2
`Although many of the documents located through these additional efforts did not even refer to
`adenosine, L’Oréal USA nonetheless produced them to avoid any further disputes. Thus, all
`potentially responsive documents have now been produced, and L’Oréal USA has complied with
`its obligations. As of this filing, Plaintiffs have not identified what additional documents they
`seek. To the extent they attempt to use this briefing to continue their pattern of seeking
`
`1 For example, L’Oréal USA collected documents from 26 custodians and produced electronic
`documents dating as far back as 2002, exceeding the Court’s Default Standard for Discovery.
`2 L’Oréal USA provided further information on this issue through a supplemental response to
`Plaintiffs’ Interrogatory No. 6, which explained how the document categories described in its
`supplemental RFP responses related to the development of the accused products (e.g., Magellan
`briefs, “officialization” and “INCI” documents, “technical dossiers,” and “test syntheses”).
`(See Ex. B, Second Supplemental Objections and Response to Interrogatory No. 6.)
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`Case 1:17-cv-00868-CFC-SRF Document 233 Filed 06/30/20 Page 2 of 4 PageID #: 9404
`The Honorable Sherry R. Fallon
`May 12, 2020
`Page 2
`additional document categories, their request should be denied so that the parties can focus on
`completing fact discovery.
`
`L’Oréal USA has also met its obligations with respect to RFP Nos. 40-42 and 66, as it
`
`has (1) supplemented its responses thereto, as directed by the Court, and (2) produced the
`additional documents sought by Plaintiffs. (See Ex. C at 100:24-104:13; Ex. A, First
`Supplemental Objections and Responses to RFP Nos. 40-42, 66.) Plaintiffs served these RFPs
`directed to marketing materials on December 18, 2019—less than two months before fact
`discovery was then set to close, and after L’Oréal USA had already produced thousands of pages
`of marketing materials. (See, e.g., D.I. 124 at 1; id., Ex. A at 39:1-14.) Though the Court denied
`Plaintiffs’ initial motion to compel with respect to these Requests,3 reasoning that Plaintiffs were
`“seeking a very general and broad order that allows them to basically go on a fishing expedition”
`(id., Ex. A at 39:8-24), Plaintiffs renewed their request for certain additional marketing
`documents in advance of the April 24, 2020 hearing, indicating that their requests sought launch
`files and final concept documents that included positioning, pricing, claims, consumer research,
`forecasting, projections, budgets, timelines, and business plans. (Ex. C at 92:4-95:21.) During
`the April 24 hearing, L’Oréal USA explained that every brand operates differently and may not
`have the same category of documents, but agreed to search for and produce additional concept
`and strategy documents beyond what it had previously produced. (Ex. C at 97:8-100:23.)
`
`Following the Court’s ruling that L’Oréal USA supplement its responses to RFP Nos. 40-
`
`42 and 66 (id. at 103:11-18), L’Oréal USA searched for additional marketing and business
`documents, including the categories of documents requested by Plaintiffs (and without limiting
`the time period for these documents), and has been working diligently to collect and produce
`these materials, including through May 5, May 7 and May 8 productions to Plaintiffs. Because
`L’Oréal USA has required the assistance of certain L’Oréal S.A. employees, who are not readily
`available, to obtain some of the requested materials, it has taken significant time and effort to
`gather these documents. L’Oréal USA expects to make a further production of these documents
`this week. In short, L’Oréal USA has satisfied its obligations with respect to these RFPs. This
`has been a monumental effort spanning more than ten brands, each of which operates differently,
`with different employees working around the clock to meet Plaintiffs’ broad demands.
`
`2. Plaintiffs’ Request for Production No. 35 (Organizational Charts)
`
`On May 8, 2020, L’Oréal USA produced over 100 pages of organizational charts,
`notwithstanding Plaintiffs’ failure to meet and confer on this issue before adding it to the
`April 24 discovery conference agenda. (See D.I. 118 at 2 n.3.) To be clear, Plaintiffs served
`RFP No. 35, the document request from which this matter stems, in July 2019—nine months
`before raising any concerns regarding this request. Regardless, L’Oréal USA agreed to meet and
`confer shortly after this issue was raised, at which time Plaintiffs explained that they sought
`current organizational charts pertaining to the L’Oréal USA’s Research & Innovation, marketing,
`and finance departments. (See Ex. D at 2.) L’Oréal USA agreed to search for these records, and
`
`3 These Requests were never properly teed up for the Court’s consideration, as they were first
`discussed at the March 26, 2020 discovery conference without being included on the agenda for
`that call. (See D.I. 100.) Indeed, Plaintiffs have on various occasions expanded or otherwise
`blurred the issues properly before the Court. (See, e.g., infra Sections 2, 3.)
`
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`Case 1:17-cv-00868-CFC-SRF Document 233 Filed 06/30/20 Page 3 of 4 PageID #: 9405
`The Honorable Sherry R. Fallon
`May 12, 2020
`Page 3
`so informed the Court. (D.I. 126 at 3.) L’Oréal USA then produced these records on May 8,
`2020. It is unclear why Plaintiffs have added this issue to the agenda once again.
`
`3. Plaintiffs’ Request for Production No. 65 (FTC Investigation Communications)
`
`On April 24, 2020, the Court ordered L’Oréal USA to produce documents “limited to the
`
`single 2014 FTC investigation cited by plaintiffs in their letter brief, including the internal and
`external communications regarding the specific FTC investigation.” (D.I. 144, Ex. C at 113:1-
`8.) On May 8, 2020, L’Oréal USA produced its communications with the FTC regarding the
`investigation, as well as documents supporting the challenged claims for the products at issue
`therein. This production included more than 1,000 pages, as well as four hyperlinked files
`providing claim-by-claim substantiation for those products. L’Oréal USA filed Objections to the
`remainder of the Court’s Order. (See D.I. 151.) To the extent L’Oréal USA is also obligated to
`produce its entire production to the FTC in connection with the investigation—contrary to
`Plaintiffs’ representation that they “limit[ed] the request to communications” for one
`investigation (D.I. 123 at 2)—that production file consists of more than 7,000 documents
`(approximately 50,000 pages). L’Oréal USA is diligently working with its counsel for the FTC
`investigation to obtain these documents, which it believes it would require an additional two to
`three weeks to produce given, among other things, the limitations of reviewing these documents
`electronically from remote servers that are not always performing efficiently.
`
`On the other hand, Plaintiffs’ request for internal and external communications related to
`
`the FTC investigation is substantially broader than Plaintiffs’ RFP No. 65, which sought only
`external communications relating to the Accused Products. (D.I. 151, Ex. B at RFP No. 65
`(seeking “documents produced, in any litigation or investigation, to any government entity or
`agency that refer or relate to the Accused Products”).) Thus, contrary to the above-quoted
`representation, Plaintiffs improperly expanded this aspect of their request in their April 21
`briefing, to which L’Oréal USA could not respond through simultaneous briefing (and which
`was not apparent to L’Oreal USA’s counsel until after the Court’s ruling). (See D.I. 123 at 2; id.,
`[Proposed] Order at 2.) L’Oréal USA has thus complied with RFP No. 65 as narrowed,
`producing all external communications with the FTC pertaining to the investigation. It should
`not have to produce documents in response to Plaintiffs’ last-minute demand for internal,
`privileged communications that are not covered by the RFP at issue. See, e.g., Whitely v. CDCR,
`2018 WL 3159878, at *4 (E.D. Cal. June 28, 2018) (“[T]he court will weigh only the discovery
`requests that were actually propounded rather than the new ones in his motion to compel.”).
`
`Accordingly, L’Oréal USA maintains that producing its production file to the FTC is
`
`unduly burdensome at this late stage of discovery, unless and until Plaintiffs identify anything in
`the already-produced documents supporting further review and production. L’Oréal USA’s
`production to date evinces that such review and production would not be proportional to the
`needs of this case, as L’Oréal USA’s “White Paper” submitted to the FTC at the close of the
`investigation (which summarized the challenged claims, the products at issue, and the
`L’Oréal USA’s substantiation for those products) does not even reference the word “adenosine.”
`“Where, as here, the defendant challenge[d] the relevance of discovery, the burden first rests
`with plaintiff to articulate that the material sought is relevant.” Pollock v. Energy Corp. of Am.,
`2014 WL 562726, at *2 (W.D. Pa. Feb. 11, 2014). L’Oréal USA therefore respectfully requests
`that the Court deem production of the external FTC communications to be sufficient.
`
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`Case 1:17-cv-00868-CFC-SRF Document 233 Filed 06/30/20 Page 4 of 4 PageID #: 9406
`The Honorable Sherry R. Fallon
`May 12, 2020
`Page 4
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`Respectfully,
`
`/s/ Frederick L. Cottrell, III
`
`Frederick L. Cottrell, III (#2555)
`
`
`cc: Counsel of Record (via CM/ECF and E-Mail)
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