Case 1:17-cv-00868-CFC-SRF Document 71 Filed 12/11/19 Page 1 of 4 PageID #: 1822
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`Frederick L. Cottrell III
`302-651-7509
`Cottrell@rlf.com
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`December 4, 2019
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`VIA CM/ECF & HAND DELIVERY
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`The Honorable Sherry R. Fallon
`District Court of Delaware
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`J. Caleb Boggs Federal Building
`Wilmington, DE 19801-3567
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`Re: Univ. of Massachusetts et al., v. L’Oréal USA, Inc., C.A. No. 17-868-CFC-SRF
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`Dear Judge Fallon:
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`I write on behalf of Defendant L’Oréal USA, Inc. to respectfully request that Plaintiffs be
`ordered to (1) supplement their infringement contentions to provide notice of how the accused
`products allegedly satisfy certain claim language in the patents-in-suit and (2) provide related
`testing information on which Plaintiffs rely to support such assertions, which they previously
`agreed to provide. (See Ex. 1 (Proposed Order).)
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`1.
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`The Patents-in-Suit and Plaintiffs’ Deficient Infringement Contentions
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`This is a patent infringement case in which Plaintiffs have accused more than 180
`L’Oréal USA products of infringing two patents. Those patents are directed to topically
`applying compositions containing adenosine for “enhancing the condition” of skin. Pertinent to
`this motion, Plaintiffs have provided claim charts in connection with their infringement
`contentions that separately address the claim language “wherein the adenosine concentration
`applied to the dermal cells is 10-4 M to 10-7 M”1 (the “concentration claim language”) and
`“without increasing dermal cell proliferation” (the “dermal cell claim language”). (See Ex. 2 at
`claim 1; Ex. 3, at claim 1.)
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`Under the Scheduling Order, Plaintiffs were required to serve infringement contentions
`on October 10 setting forth “specifically where and how each limitation of each asserted claim is
`found within each Accused Instrumentality.” (D.I. 46 at ¶ 3(c) (emphasis added).) For the claim
`language at issue, however, Plaintiffs simply parroted back that language and cited “forthcoming
`expert disclosures” and/or “defendants’ internal, to-be-produced documents” in each of the 268
`infringement claim charts they served. (See, e.g., Ex. 4 at 1[c], 1[f], 3.)2 L’Oréal USA promptly
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`1 The concentration range “10-4 M to 10-7 M” appears in claim 1 of the asserted ’327 patent.
`Claim 1 of the ’513 patent has the same language, but specifies a concentration range of “10-3 M
`to 10-7 M.” Dependent claims 3 in both patents further narrow the concentration ranges. In this
`letter, the concentration amounts from the patents-in-suit are collectively referred to as the
`“concentration claim language.”
`2 Plaintiffs’ ¶ 3(g) charts regarding their own products took the same approach, including the
`alleged reliance on L’Oréal USA’s documents. (See, e.g., Ex. 5 at 1[c], 1[f], 3.)
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`Case 1:17-cv-00868-CFC-SRF Document 71 Filed 12/11/19 Page 2 of 4 PageID #: 1823
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`The Honorable Sherry R. Fallon
`December 4, 2019
`Page 2
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`notified Plaintiffs that their barebones contentions and paragraph 3(g) charts were insufficient.
`(Ex. 6 (Oct. 28 Email).) Following a meet and confer, Plaintiffs agreed to produce “the data that
`[they] relied on to form the basis of [their] belief that these limitations are met.” (See Ex. 7 at 1-
`2 (Nov. 8 Email).)
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`Rather than provide the agreed-upon information, however, on November 13, Plaintiffs
`emailed L’Oréal USA a chart and cited two documents (one of which had not been previously
`produced). (Ex. 8 at 5 (Nov. 13 Email); Ex. 9 (“
`” document).) This
`chart simply lists product names and a series of numbers with no indication of what they mean or
`how they were obtained, and no other information related to this testing was provided.3
`Moreover, the document does not contain information for more than 60 accused products, and
`Plaintiffs have not linked the testing of one product to any other. Plaintiffs have also refused to
`amend their contentions in any way unless L’Oréal USA agreed that it would not seek further
`information. (E.g., Ex. 8 at 5 (Nov. 13 Email).) Following another meet and confer, Plaintiffs
`continued to refuse to supplement their contentions or to provide the requested information, thus
`forcing L’Oréal USA to seek relief from the Court. (Ex. 8 at 1, 4 (Nov. 14 & Nov. 19 Emails.))
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`2.
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`Plaintiffs’ Contentions Are Deficient and Must Be
`Supplemented Consistent with Their Prior Commitment
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`“Infringement contentions . . . serve the purpose of providing notice to the Defendants of
`infringement theories beyond the mere language of the patent claim” and are “intended to require
`the party claiming infringement to crystallize its theories of the case early in the litigation and to
`adhere to those theories once disclosed.” E.g., Intellectual Ventures I LLC v. AT&T Mobility
`LLC, No. 13-1668-LPS, 2017 WL 658469, at *2 (D. Del. Feb. 14, 2017); Theranos, Inc. v. Fuisz
`Pharma LLC, No. 11-cv-05236-YGR, 2012 WL 6000798, at *2-4 (N.D. Cal. Nov. 30, 2012) (“In
`patent litigation, vague and conclusory contentions are inadequate.”). As explained below,
`Plaintiffs contentions fail to meet these standards.
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`Plaintiffs’ current infringement contentions are deficient because they do not contain any
`explanation of how the concentration or dermal cell limitations are allegedly met (and even the
`information from Plaintiffs’ November 13 email has not been incorporated). Instead, the
`contentions simply repeat the language of the claim and refer to “forthcoming” expert discovery.
`Such contentions fail to provide the requisite notice contemplated by the Scheduling Order, and
`defeat the very purpose of contentions by leaving L’Oréal USA guessing at Plaintiffs’
`infringement theories. See, e.g., Intellectual Ventures, 2017 WL 658469 at *2; HSM Portfolio
`LLC v. Fujitsu Ltd., No. 11-770-RGA (D. Del. May 7, 2014) (Ex. 10 at 1-3) (ordering
`supplementation of infringement contentions that said “nothing about . . . why [the claim
`limitation at issue] is present in the [accused] product”).
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`Moreover, the simple production of a summary chart with numbers does not cure
`Plaintiffs’ deficient contentions with respect to the concentration claim language because it does
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`3 The document file name is “
`,” one column bears the heading
`,” and another set of columns bears the heading “
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`,” but what this text represents has not been explained.
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`Case 1:17-cv-00868-CFC-SRF Document 71 Filed 12/11/19 Page 3 of 4 PageID #: 1824
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`The Honorable Sherry R. Fallon
`December 4, 2019
`Page 3
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`not contain any information about how those numbers were obtained or how the testing was
`performed, which, as with any scientific experiment, is essential to understanding the numerical
`information summarized therein. Where, as here, testing forms the basis for a plaintiff’s
`allegations, the testing information must be disclosed with the contentions. See, e.g.,
`Tessenderlo Kerley, Inc. v. Or-Cal, Inc., No. C 11-04100 WHA, 2012 WL 1253178, at *3-4
`(N.D. Cal. Apr. 13, 2012) (requiring supplementation and explaining that the patentee must
`“articulate the precise way in which it believes the products to be infringing” and, “to the extent
`testing data are the basis for this belief, this order finds its disclosure is required under Rule 3-
`1”).4
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`In Gillette Co. v. Dollar Shave Club, Inc., Chief Judge Stark addressed this very issue,
`and ordered the production of “documents that form[ed] the bases of [Plaintiff’s] infringement
`contentions” where Plaintiff “incorporated” select materials “from testing performed by non-
`testifying experts . . . into its infringement contentions.” No. 15-1158-LPS, 2018 WL 3528720,
`at *1 (D. Del. July 23, 2018).5 In so doing, the Court concluded that any alleged privilege or
`protection was “waived” by the voluntary disclosure, and that “it would not further the interests
`of fairness or efficiency to make Defendants wait for expert discovery to . . . be in a position to
`analyze and potentially take discovery on” the testing. Id. Consistent with the ruling in Gillette,
`Plaintiffs should be required, at a minimum, to provide documents regarding the “
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`,” including, for example, any testing conditions and protocols, underlying
`data, other results, and laboratory notebooks. This basic, non-privileged, factual information is
`distinct from expert opinion analyzing or interpreting the testing and should be provided without
`further delay.6
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`In addition, the chart is also insufficient because it does not contain entries for more than
`60 accused products or connect the tested products with any untested products. It is thus unclear
`how this testing relates to Plaintiffs’ infringement allegations for approximately one third of the
`accused products. To provide adequate notice of Plaintiffs’ infringement theories, their
`contentions must, at a minimum, specify which tested product provides the basis of their
`infringement claim for each untested product, as opposed to generically citing a chart concerning
`more than 100 different products.
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`Allowing Plaintiffs to withhold this information and hide their infringement positions
`until expert discovery severely prejudices L’Oréal USA by hindering its ability to prepare its
`noninfringement and invalidity defenses (including its invalidity contentions, which are due on
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`4 Similar to the Scheduling Order here, the local patent rules applicable to the Tessenderlo
`case required “[a] chart identifying specifically where each limitation of each asserted claim is
`found within each Accused Instrumentality.” Id. at *1.
`5 The briefing in that case makes clear that the defendants were seeking “documents
`regarding [plaintiff’s] tests, such as those regarding the testing conditions and protocols, the
`underlying data, other images, or test reports.” (Ex. 11 at Brief Page 1.)
`6 Indeed, in response to L’Oréal USA’s requests for production, Plaintiffs have agreed to
`produce “documents Concerning any testing or analysis of any Accused Product,” and should not
`be able to shield these materials from disclosure now with claims of privilege, work-product, or
`“forthcoming expert disclosures.” (See Ex. 12 at 33.)
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`Case 1:17-cv-00868-CFC-SRF Document 71 Filed 12/11/19 Page 4 of 4 PageID #: 1825
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`The Honorable Sherry R. Fallon
`December 4, 2019
`Page 4
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`December 13) and develop related evidence during fact discovery. The prejudice is especially
`acute here because the accused products contain adenosine in concentrations that Plaintiffs
`expressly distinguished during patent prosecution. For example, many of the accused products
` adenosine, which Plaintiffs explained during prosecution was higher than the
`concentrations covered by the asserted claims. (See, e.g., Ex. 13 at 4-5 (distinguishing prior art
`compositions with “0.1%” adenosine, which equates to “3.8 x 10-3 M” in the terminology of the
`asserted claims, as “relatively high” and stating that the “proposed amended claims would recite
`a maximum concentration of adenosine of 10-4 M.”).)7 Given Plaintiffs’ prior representations,
`L’Oréal USA is entitled to meaningful infringement contentions identifying how Plaintiffs can
`now claim that these same concentrations somehow infringe their patents. Indeed, in opposing
`L’Oréal USA’s motion to dismiss, Plaintiffs expressly acknowledged that contentions (as
`opposed to pleadings) must provide notice “beyond the mere language of the patent claim” and
`“set forth how the accused products meet the claim limitations,” yet now seek to avoid those
`very requirements until expert discovery. (D.I. 19 at 2-3.) This only compounds the prejudice,
`as the Scheduling Order currently provides only three weeks between the service of Plaintiffs’
`opening infringement report and L’Oréal USA’s response. Without notice of their infringement
`contentions, Plaintiffs will be permitted to use expert discovery to sandbag L’Oréal USA, forcing
`L’Oréal USA to respond to information on which Plaintiffs have already stated they will rely and
`that Plaintiffs are sitting on right now.
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`3.
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`Plaintiffs’ Infringement Contentions for the Dermal Cell Language
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`In their November 13 email, Plaintiffs suggested that they could agree to supplement
`their contentions with respect to the dermal cell claim language to cite the “
`” chart, ETHIER_00000041, and CARMEL LABS_00000710, but sought to
`impermissibly condition that supplementation on L’Oréal USA otherwise accepting the
`sufficiency of their contentions. (See Ex. 8 at 5.) If Plaintiffs were to serve amended contentions
`citing these three documents from their email to confirm that this is the basis for their
`infringement allegations, it would resolve this aspect of the parties’ dispute.
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`* * * * *
`Accordingly, Plaintiffs should be required to provide supplemental contentions and
`documents regarding the underlying testing consistent with the attached proposed order.
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`Respectfully,
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`/s/ Frederick L. Cottrell, III
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`Frederick L. Cottrell, III (#2555)
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`cc: Counsel of Record (via CM/ECF and E-Mail)
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`7 While these arguments may implicate claim construction and other merits-related issues, as
`the Court recognized in the motion to dismiss proceedings (D.I. 31 at 11-12), that does not
`excuse Plaintiffs from providing meaningful factual disclosures in their contentions.
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