Case 1:17-cv-00868-CFC-SRF Document 87 Filed 02/12/20 Page 1 of 4 PageID #: 1990
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`Frederick L. Cottrell III
`302-651-7509
`Cottrell@rlf.com
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`February 12, 2020
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`VIA CM/ECF & HAND DELIVERY
`The Honorable Sherry R. Fallon
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`District Court of Delaware
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`J. Caleb Boggs Federal Building
`Wilmington, DE 19801-3567
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`Re: University of Massachusetts and Carmel Laboratories, LLC. v. L’Oréal USA, Inc.,
`C.A. No. 17-868-CFC-SRF
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`Dear Judge Fallon:
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`Defendant L’Oréal USA, Inc. (“L’Oréal USA”) respectfully requests that this Court
`continue the document production deadline in this action from February 7, 2020 to March 6,
`2020. As of today, L’Oréal USA has produced documentation for over 120 products of the 156
`products the parties agree have been “accused” by Plaintiffs University of Massachusetts and
`Carmel Laboratories, LLC’s (together, “Plaintiffs”). More specifically, L’Oréal USA has
`produced financial records for all accused products, as well as for products that were launched
`after the expiration date of the asserted patents. L’Oréal USA has also produced marketing
`materials for 131 products and technical documents for 126 products. Unfortunately, due to
`Plaintiffs’ unwillingness to narrow its list of accused products, or to, at the very least, remove
`improperly accused products, L’Oréal USA requires more time to work through document
`production issues related to some of the requests for production. While, at this time, L’Oréal
`USA seeks only an extension of the document production deadline, the breadth of this case as
`described below may require L’Oréal USA to seek further relief from the Court as to additional
`deadlines in the coming months, perhaps even including the trial date, if Plaintiffs do not
`sufficiently narrow their list of accused products, as they previously promised to do.
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`Though Plaintiffs initiated this lawsuit over three years ago, they only recently identified
`the extremely large number of products they are accusing of infringement. Neither the original
`complaint, filed on June 30, 2017, nor the amended complaint, filed on August 18, 2017,
`identified any specific products that allegedly infringe the asserted claims of the asserted patents,
`save for one. (See D.I. 1, 13 ¶ 34 (identifying L’Oréal Paris RevitaLift Triple Power Deep-
`Acting Moisturizer).) Rather, the FAC vaguely defined the accused products as “a vast array of
`topical skincare products manufactured and sold by [L’Oréal USA] us[ing] the adenosine
`technology exclusively licensed to Carmel Labs.” (Id. ¶ 31.) It was not until October 10, 2019,
`when Plaintiffs served their Infringement Contentions, that they accused specific products of
`infringement—181 products, to be exact.1 (See Ex. B at Exhibit A thereto.)
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`1 Plaintiffs’ discovery requests did not elucidate matters. Though Plaintiffs served two sets of
`interrogatories and two sets of requests for production prior to serving their Infringement
`Contentions, these discovery requests did not seek information as to any specific product sold by
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`L’Oréal USA. Rather, they sought information as to any product that contains any level of
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`Case 1:17-cv-00868-CFC-SRF Document 87 Filed 02/12/20 Page 2 of 4 PageID #: 1991
`The Honorable Sherry R. Fallon
`Feb. 12, 2020
`Page 2
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`Importantly, L’Oréal USA could not have known which products Plaintiffs would accuse
`of infringement at the time the Scheduling Order issued, because that accusation is based on
`Plaintiffs’ claim construction theory and Plaintiffs’ purported confidential testing of the products.
`Even under Plaintiffs’ fundamentally flawed theory, it has not accused every L’Oréal USA
`product containing adenosine of infringement, but rather only those products that Plaintiffs assert
`fit within their claim construction. Thus, it was not until October 2019, three months after the
`Scheduling Order was entered, that L’Oréal USA first became aware of the vast scope of this
`litigation.2
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`On October 14, 2019, within days of receiving Plaintiffs’ Infringement Contentions,
`L’Oréal USA raised its concerns about the breadth of the accused products and the impending
`document production deadline during a call with Plaintiffs, but nevertheless sought to work
`cooperatively to find a feasible approach to discovery in this case, notwithstanding the scope of
`Plaintiffs’ demands. On that call, L’Oréal USA proposed, and Plaintiffs agreed, to a phased
`production of marketing materials for the accused products, to begin in mid-November.
`Specifically, the parties agreed that “L’Oréal USA would provide targeted marketing materials
`for 30 products at a time, which would include product packaging and launch materials.” (Ex. C
`at 1.) To accommodate Plaintiffs, L’Oréal USA asked Plaintiffs to provide it “with a list of any
`products Plaintiffs are particularly interested in so we can include those products in the first
`phase.” (Id.) L’Oréal USA reiterated this request in a follow-up email. (Id.) Plaintiffs never
`provided L’Oréal USA with any such list.
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`During that same call, L’Oréal USA also offered to obtain documents from its French
`parent, L’Oréal S.A., noting that it was “not going to insist that Plaintiffs proceed through the
`Hague to obtain documents from L’Oréal S.A.,” even though L’Oréal S.A. had been dismissed
`from the case. (Id.) Specifically, L’Oréal USA voluntarily agreed to “make all reasonable
`efforts to collect and produce any relevant documents maintained by L’Oréal S.A.” (Id.) This
`undertaking, while still ongoing and time-consuming, has resulted in Plaintiffs obtaining
`responsive documents much sooner than if they had been forced to proceed through the Hague.
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`On October 29, 2019, Plaintiffs served L’Oréal USA with proposed Amended
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`adenosine, regardless of the concentration. (See, e.g., Ex. A at 7, Interrogatory No. 3 (seeking
`the identification of “every product [L’Oréal USA] has ever sold in the United States that
`contains adenosine as an ingredient”).) Indeed, Plaintiffs did not serve discovery requests
`pertaining to any specific accused product until December 18, 2019, well after they served their
`Infringement Contentions.
`2 During meet and confer discussions, Plaintiffs have relied on the Court’s Report and
`Recommendation denying L’Oréal USA’s motion to dismiss to argue that L’Oréal USA was on
`notice that any product containing adenosine was accused of infringement. (See D.I. 31 at 9.)
`This argument fails. As Plaintiffs are well-aware, the claims in the asserted patents are limited to
`a particular concentration of adenosine, and there are a number of L’Oréal USA products
`containing adenosine Plaintiffs do not accuse of infringement. Thus, the fact that L’Oréal USA
`was aware that it sold products containing adenosine did not mean that L’Oréal USA was on
`notice as to the scope of the products that would be accused in this case. That notice was not
`provided until October 2019.
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`Case 1:17-cv-00868-CFC-SRF Document 87 Filed 02/12/20 Page 3 of 4 PageID #: 1992
`The Honorable Sherry R. Fallon
`Feb. 12, 2020
`Page 3
`Infringement Contentions, wherein they identified one additional accused product, bringing the
`total number of accused products to 182. Within days, L’Oréal USA expressed concern to
`Plaintiffs that, “[a]t this juncture, the unsupported nature of Plaintiffs’ infringement contentions,
`as well as the large number of accused products, have rendered the current case schedule
`unworkable.” (Ex. D at 1.) L’Oréal USA proposed “that Plaintiffs either agree to significantly
`reduce the number of accused products or that the parties discuss amending the current
`scheduling order.” (Id.) Plaintiffs did not, and have refused to, significantly reduce the number
`of accused products in this case. On November 8, 2019, L’Oréal USA provided Plaintiffs with a
`proposed new case schedule for consideration. (Ex. E at 1; Ex. E-1 at 1.) Plaintiffs refused to
`consider moving any discovery dates, agreeing only to continue dates associated with claim
`construction briefing.3 (Ex. F at 1-2.) At that time, L’Oréal USA informed Plaintiffs that it
`would make best efforts to comply with the discovery dates, but, given the number of accused
`products, that may not be possible.
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`On December 16, 2019, Plaintiffs served their Second Amended Infringement
`Contentions, which withdrew five accused products, leaving the count at 177. As L’Oréal USA
`continued its investigation and document production, it noted obvious deficiencies in the accused
`products list. For instance, several of the accused products simply did not exist, as the product
`names identified by Plaintiffs could not be located in any L’Oréal USA database. Several other
`products were not ever sold by L’Oréal USA. Others appeared on the list multiple times, under
`different names. Others still were not sold by L’Oréal USA until after 2019—i.e., well after the
`expiration of the asserted patents. All of this took considerable time and effort to determine.4
`L’Oréal USA voiced these concerns to Plaintiffs, again noting that the sheer number of accused
`products rendered document collection and production a slow-moving and arduous task, albeit
`one L’Oréal USA was pursuing as quickly as possible. (Ex. G at 16.) As L’Oréal USA
`explained in follow-up correspondence, “[g]iven the errors in both the list of accused products . .
`. and Plaintiffs’ unwillingness to narrow the case to a workable number of products, it is taking
`time to wade through all of the issues . . . .” (Id. at 13.) L’Oréal USA further explained:
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`[A]s we have previously discussed, we have been trying to work
`with you to move this case along as fast as possible, but in light of
`the 180+ accused products (some of which L’Oréal USA cannot
`identify in this system, because as you note, the names you
`provided differ from the names used by L’Oréal USA and because
`Plaintiffs have accused the same products two or three times),
`along with your unreasonable demands for discovery, we will need
`to request an extension of at least the February 7th document
`production deadline.
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`3 Plaintiffs initially conditioned continuing these dates on L’Oréal USA’s acceptance of
`Plaintiffs’ deficient infringement contentions. Plaintiffs withdrew this improper condition after
`L’Oréal USA objected to it. (Ex. F at 1-2.)
`4 Indeed, Plaintiffs initially accused products spanning 16 brands, including non-L’Oréal USA
`brands, all of which operate separately, requiring discussions with numerous different
`individuals on several different topics. These efforts are ongoing.
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`Case 1:17-cv-00868-CFC-SRF Document 87 Filed 02/12/20 Page 4 of 4 PageID #: 1993
`The Honorable Sherry R. Fallon
`Feb. 12, 2020
`Page 4
`(Id.) L’Oréal USA asked whether Plaintiffs would be agreeable to such an extension. Plaintiffs
`did not respond for a week, but agreed to discuss the matter during a meet and confer call on
`January 30, 2020. (See id. at 14.) L’Oréal USA circulated a proposed amended schedule in
`advance of that call—the same proposed schedule it circulated months earlier, in November
`2019, which proposed a document production deadline of March 27, 2020. (Id. at 5.)
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`In follow-up email correspondence, counsel for Plaintiffs stated that they would agree to
`extend the document production deadline to February 28, 2020, “if and only if” L’Oréal USA
`would agree to “remedy the deficiencies in its production pursuant to Paragraph 6 of the
`Scheduling Order no later than . . . February 7, 2020.” (Id.) This was, of course, an empty
`gesture, as Plaintiffs knew that the parties had a disagreement regarding the scope of the
`document production called for by Paragraph 6 of the Scheduling Order. L’Oréal USA asked
`Plaintiffs to withdraw this improper condition, but Plaintiffs refused. (Id. at 2-3.)
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`L’Oréal USA has met the standard of good cause for an extension under Rule 16(b)(4).
`While L’Oréal USA has made significant strides in its document production and has produced
`documents for the vast majority of the accused products, it requires additional time to continue
`its investigation and complete its production, as it continues to find errors with Plaintiffs’ list of
`accused products. As of January 31, 2020, L’Oréal USA had identified 21 improperly accused
`products (i.e., products that were not sold by L’Oréal USA, are duplicate names of other
`products, or were launched after the expiration of the asserted patents).5 L’Oréal USA provided
`this count to Plaintiffs and asked them to let L’Oréal USA know if their count differed. (Ex. G at
`2.) L’Oréal USA also asked Plaintiffs to provide an updated accused products list so that
`everyone could be on the same page. (Id.) Plaintiffs refused to do either, thus forcing L’Oréal
`USA to continue its investigation into many products for which, at this time, it has been unable
`to locate records. As of today, L’Oréal USA has identified 32 products that are improperly listed
`as accused products. Plaintiffs’ refusal to work with L’Oréal USA to arrive at the proper scope
`of accused products for this case necessitates this modest extension.
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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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`5 L’Oréal USA disputes that any accused product infringes the asserted claims, but for purposes
`of this discovery dispute, L’Oréal USA refers to “improperly accused products” as those which
`objectively cannot be part of the case for the reasons noted above.
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