Case 1:17-cv-00868-CFC-SRF Document 70 Filed 12/09/19 Page 1 of 5 PageID #: 1695
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`December 5, 2019
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`VIA E-FILING
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`The Honorable Sherry R. Fallon
`J. Caleb Boggs Federal Building
`844 N. King Street
`Room 3124, Unit 14
`Wilmington, DE 19801-3555
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`Re: University of Massachusetts, et al. v. L’Oréal USA, Inc. (17-868-CFC-SRF)
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`Dear Judge Fallon:
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`We write on behalf of Plaintiffs to respond to Defendant’s December 4, 2019 letter. That
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`letter, which seeks an order compelling Plaintiffs to supplement their infringement contentions, as
`well as the production of expert “testing information,” mischaracterizes the parties’ discussions
`about these issues in addition to being contrary to well-established law.
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`A. The infringement contentions adequately disclose Plaintiffs’ infringement theories.
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`The Court’s order required a chart “identifying specifically where and how each limitation
`of each asserted claim is found within each” Accused Product, including the “identity of the
`structure[s], act[s], or material[s]” that “perform the claimed function.” D.I. 46 ¶ 3(a).1 This rule
`distinguishes “between the required identification of the precise element of any accused product
`alleged to practice a particular claim limitation, and every evidentiary item of proof showing that
`the accused element did in fact practice the limitation.” AntiCancer, Inc. v. Pfizer, Inc., 769 F.3d
`1323, 1330–31 (Fed. Cir. 2014); see also Creagri, Inc. v. Pinnaclife Inc., LLC, No. 11-CV-06635-
`LHK-PSG, 2012 WL 5389775, at *4 (N.D. Cal. Nov. 2, 2012) (“Creagri does not at this time have
`to prove through evidence that the recommended dosage in fact does infringe its patent. It only has
`to provide enough information for Pinnaclife to understand its theory of infringement.”); Ex. A at
`51:11-52:10 (Connolly, J: “[M]y understanding of infringement contentions are they’re
`contentions that articulate the theory of infringement . . . I do not understand the contention with
`infringement or of infringement to have to set forth each and every piece of evidence that a plaintiff
`of expects will support an infringement theory . . . . [an] infringement theory would say, well, your
`product works in the following manner, which is why it infringes.”).
`Defendant complains that Plaintiffs’ infringement contentions “parrot” claim language, but
`there is no rule that contentions cannot resemble claim language, as long as they put an infringer
`on notice of the theory of infringement. See Solannex, Inc. v. MiaSole, Inc., No. 11-CV-00171-
`PSG, 2013 WL 1701062, at *4 (N.D. Cal. Apr. 18, 2013) (finding contentions sufficient to “meet
`the L.R. 3-1 standard in putting MiaSolé on notice of Solannex’s infringement theory” although
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`1 The Court’s disclosure rule mirrors the Northern District of California Local Patent Rule 3-1,
`available at https://www.cand.uscourts.gov/rules/patent-local-rules/ . Accordingly, Plaintiffs cite
`cases from the Northern District of California interpreting that rule.
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`P H O N E : ( 3 0 2 ) 7 7 7 – 0 3 0 0 · F A X : ( 3 0 2 ) 7 7 7 – 0 3 0 1 · W W W . F A R N A N L A W . C O M
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`Case 1:17-cv-00868-CFC-SRF Document 70 Filed 12/09/19 Page 2 of 5 PageID #: 1696
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`certain “infringement explanations do closely mirror the claim language”). The patents disclose
`methods for the topical application of a composition containing adenosine, wherein the adenosine
`that is “applied to the dermal cells” is within certain numerical ranges. Plaintiffs’ contentions
`disclose that “using,” (i.e., “topically applying”) each Accused Product applies “a concentration
`of adenosine of approximately” the claimed ranges to the dermal cells. See, e.g., Def.’s Ex. 4, 5
`(two representative claim charts2). This puts Defendant on notice of Plaintiffs’ infringement theory
`that the “structure[s], act[s], or material[s]” of its products that meet this claim limitation is their
`topical use, which causes the claimed concentration of adenosine to reach the dermal cells.3
`Save its protest about the similarity between the language in the claim charts and in the
`patents, Defendant’s letter does not identify what it is unable to understand about Plaintiffs’
`straightforward theory of infringement, nor was Defendant able to explain its position on any of
`the parties’ meet and confers. Defendant suggests that Plaintiffs’ theory of infringement cannot
`hold water because compositions that “contain 0.1% adenosine” do not infringe the patent, but that
`claim construction argument was rejected by the PTO multiple times during Defendant’s failed
`IPR attempt. See Ex. B at 8-15 (denying inter partes review for the ’327 patent, finding that
`“wherein the adenosine concentration applied to the dermal cells is 10-4 M to 10-7 M” discloses
`a concentration that is “applied to the dermal cells,” not “in the composition”); Ex. C at 7-14 (same
`for the ’513 patent); see also Renesas Tech. Corp. v. Nanya Tech. Corp., No. C03-05709JF(HRL),
`2005 WL 2000926, at *5 (N.D. Cal. Aug. 18, 2005) (“[Rule 3-1] does not require plaintiff to
`produce evidence of infringement or to set forth ironclad and irrefutable claim constructions, nor
`does it require a plaintiff to provide support for its contentions.”) (quotation omitted).
`Nonetheless, in an attempt to avoid this needless dispute, and although infringement
`contentions “require specific allegations” rather than “evidence of infringement,” Plaintiffs offered
`to provide Defendants with the data that Plaintiffs relied on to support their belief that the accused
`products meet this limitation. Comcast Cable Commc’ns, LLC v. OpenTV, Inc., No. C 16-06180
`WHA, 2017 WL 2630088, at *2 (N.D. Cal. June 19, 2017). On November 13, 2019, Plaintiffs did
`provide that data in the form of a document showing, among other things, infringing ranges for
`120 tested Accused Products. See Def.’s Ex. 8 at 5, Ex. 9. In response, Defendant now
`manufactures a new complaint that it needs unidentified expert discovery from Plaintiffs to
`understand the operation of its own products, and that the ordinary timing of expert discovery,
`agreed on by the parties months ago, is “sandbagging.”
`Plaintiffs’ contentions as served put Defendant on notice of their theory of infringement by
`plainly disclosing that applying the Accused Products topically causes adenosine in the claimed
`ranges to reach to the dermal cell layer. Although nothing more is required at this stage, Plaintiffs
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`2 Defendant omits the other 274 claim charts Plaintiffs served, covering all accused products. In
`the interest of saving space, Plaintiffs have not attached those charts to their letter but will
`immediately provide them to the Court upon request.
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` Defendant previously complained Plaintiffs’ theory that another claim limitation regarding
`dermal cell proliferation was not sufficiently disclosed, but Defendant now appears to concede that
`the information received from Plaintiffs on this limitation is sufficient. See Def.’s Letter at 4.
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`Case 1:17-cv-00868-CFC-SRF Document 70 Filed 12/09/19 Page 3 of 5 PageID #: 1697
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`went above and beyond in trying to resolve this dispute. Defendant’s demands are a moving target,
`and not grounded in any reasonable understanding of what the rules require. Defendant’s motion
`should be denied outright. If the Court orders Plaintiffs to supplement their infringement
`contentions in any way, it should order Plaintiffs to supplement with the data they have already
`provided Defendants, which goes well beyond what is required to demonstrate Plaintiffs’ “theory
`of infringement.” Ex. A at 51:12-13.
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`B. Defendant’s argument that Plaintiffs waived privilege over “testing information,”
`raised for first time in its December 4, 2019 letter, should be rejected.
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`Because contentions serve to disclose theories of infringement rather than evidentiary
`proof, testing data is not required. See Creagri, 2012 WL 5389775 at *3 (“Pinnaclife suggests that
`Creagri must provide testing data or other facts beyond what it has so far indicated to support its
`contentions. Pinnaclife’s argument overstates the requirements of Patent L.R. 3–1.”). On the
`parties’ call in which Plaintiffs offered to provide Defendant with certain data, the parties agreed
`that disclosure of a “theory of infringement is not expert discovery.” Def.’s Ex. 8 at 2. Despite that
`agreement, Defendant now seeks to turn its unfounded request for supplementation of Plaintiffs’
`infringement contentions into an astonishing request for expert work product.
`As a threshold matter, Defendant never raised its new waiver argument with Plaintiffs
`during any of their previous meet and confers. On those calls, Defendant requested supporting
`data, which Plaintiffs provided in order to avoid motion practice, premised on an agreement that
`Plaintiffs would not be providing “expert discovery.” After Plaintiffs provided the data,
`Defendants invented a new request for “laboratory notebooks and experimental protocols,” which
`it contended “must be provided” as a routine part of infringement contentions. Id. at 4. Defendant
`did not raise a waiver argument, or its RFPs, with Plaintiffs before submitting yesterday’s letter.
`But see Def.’s Letter at 3 n.6 and Ex. 1, 12 (seeking an order compelling Plaintiffs to produce
`privileged documents in response to Defendant’s RFP No. 33). Because Defendant did not even
`attempt to meet and confer with Plaintiffs about this waiver issue—nor did Defendant tee this issue
`up in the parties’ joint motion for a telephonic hearing—this aspect of Defendant’s motion should
`be denied. See, e.g. Ex. D at 9:22-25 (Stark, J: “I’m denying IV’s request, and I’m doing so for
`failure to adequately meet and confer in compliance at least with the spirit of the discovery
`procedures I have, if not the letter of them as well.”); D.I. 62 (requesting a teleconference to
`address “Defendant’s request that Plaintiffs supplement their infringement contentions”).
`Defendant’s position is also meritless, and unsupported by the cases it cites. Tessenderlo
`Kerley, Inc. v. OR-Cal, Inc. held that “[t]o fulfill its Rule 3-1 obligation, plaintiff need not provide
`evidentiary support, i.e., append a report of its allegedly privileged testing results. The accuracy
`of plaintiff’s tests are not at issue at the initial disclosure stage.” No. C 11-04100 WHA, 2012 WL
`1253178, at *4 (N.D. Cal. Apr. 13, 2012). To the extent Tessenderlo required the production of
`any data, Plaintiffs already provided that to Defendant. See Def.’s Ex. 9. If, like Plaintiffs, a patent-
`holder relies on expert testing to form the basis of its belief that there is infringement, “reliance on
`that data” for contentions does not waive privilege because “infringement contentions provide
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`Case 1:17-cv-00868-CFC-SRF Document 70 Filed 12/09/19 Page 4 of 5 PageID #: 1698
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`notice of the accusing party’s specific infringement theories, and are not considered evidence. . . .
`[Thus,] privilege may remain intact.” Id.; see also Lambeth Magnetic Structures, LLC v. Seagate
`Tech. (US) Holdings, Inc., No. CV 16-538, 2018 WL 466045, at *5 (W.D. Pa. Jan. 18, 2018)
`(“Finding a waiver of privilege as to any testing cited at this early stage of litigation would cut
`against both the purpose of the privilege (protecting clients’ ability to seek preparatory advice
`without fear) and the purpose of the local rule (providing defendants with early notice of specific
`claims).”); Kimberly-Clark Worldwide, Inc. v. First Quality Baby Prod., LLC, No. 1:CV-09-1685,
`2010 WL 4537002, at *2 (M.D. Pa. Nov. 3, 2010) (“KC using testing data to put First Quality on
`notice is not relying on the materials as evidence in support of its infringement theories.”). Gillette
`Co. v. Dollar Shave Club, Inc., which Defendant relies on, is likewise inapposite because Plaintiffs
`did not disclose expert-created materials as “evidence on which [they] would be relying in future
`stages of this case.” No. CV 15-1158-LPS-CJB, 2018 WL 3528720, at *1 (D. Del. July 23, 2018).
`If Plaintiffs later decide to use this data as evidence in the case for the purposes of expert reports,
`they will provide to Defendant all the materials required pursuant to Rule 26(a)(2)(B).
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`C. Representative testing is sufficient to support preliminary infringement contentions.
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`Defendant suggests it is improper that Plaintiffs tested a selection of 120 accused products,
`but “[a] par[t]y claiming infringement does not have to reverse engineer every one of a defendant’s
`products. Instead, a plaintiff must only demonstrate why it believed before filing the claim that it
`had a reasonable chance of proving infringement.” Infineon Techs. AG v. Volterra Semiconductor,
`No. C-11-06239 MMC (DMR), 2013 WL 5366131, at *4 (N.D. Cal. July 31, 2013).
`This Court has already explained that Defendant has been “on notice that products
`containing adenosine made by the eighteen brands specified in the FAC are accused of
`infringement.” D.I. 31 at 9. That is what Plaintiffs accused, supported by testing results for 120
`products that Plaintiffs’ claim charts show are substantially similar—described by Defendant in
`public materials as providing the same results to consumers, and comprised of the same common
`ingredients—to all approximately 180 accused products. See ParkerVision, Inc. v. Qualcomm Inc.,
`No. 6:14-CV-687-ORL, 2015 WL 4751354, at *3 (M.D. Fla. Aug. 11, 2015) (“[W]here a plaintiff
`accuses a large number of products and asserts that each accused product infringes the asserted
`technology in the same way, a representative accused product can be used to outline the plaintiff’s
`infringement contentions against other accused products.”). Defendant’s complaint that Plaintiffs
`had not tested every product before serving contentions is particularly galling where the majority
`of the untested products were discontinued by Defendant, but Defendant has thus far refused to
`provide them to Plaintiffs. See, e.g., Ex. E, F; see also SAGE Electrochromics Inc. v. View Inc.,
`No. C-12-06441 JST (DMR), 2013 WL 4777164, at *2 (N.D. Cal. Sept. 6, 2013) (“[I]n arguing
`that Patent Local Rule 3–1 requires reverse engineering, View overstates Rule 3–1’s specificity
`requirement. . . . It does not require Plaintiff to reverse engineer every product it has accused,
`especially where the products are not reasonably available to the public.”).
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`Plaintiffs respectfully request the Court deny Defendant’s motion.
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`Case 1:17-cv-00868-CFC-SRF Document 70 Filed 12/09/19 Page 5 of 5 PageID #: 1699
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`Respectfully submitted,
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`/s/ Brian E. Farnan
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`Brian E. Farnan
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`cc: Counsel of Record (Via E-Mail)
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