Case 1:17-cv-00868-CFC-SRF Document 91 Filed 02/19/20 Page 1 of 5 PageID #: 2402
`
`VIA E-FILING
`
` February 12, 2020
`
`The Honorable Sherry R. Fallon
`J. Caleb Boggs Federal Building
`844 N. King Street
`Room 3124, Unit 14
`Wilmington, DE 19801-3555
`
`FILED UNDER SEAL
`
`Re: University of Massachusetts, et al. v. L’Oréal USA, Inc., 17-868-CFC-SRF
`
`Dear Judge Fallon:
`
`We write in support of Plaintiffs’ request for an order directing Defendant to satisfy
`promptly its production obligations pursuant to Paragraph 6 of the Court’s Scheduling Order. D.I.
`46, 64. That Order required Defendant to produce, on December 20, 2019, “Source code
`specifications, schematics, flow charts, artwork, formulas, or other documentation sufficient to
`show the operation of any aspects or elements of an Accused Instrumentality.” Id. ¶ 6(a).1 To date,
`and despite numerous communications from Plaintiffs identifying deficiencies in this production
`and seeking supplementation, technical information is outstanding for the Accused Products in the
`chart attached as Exhibit A.
`
`Courts interpreting patent production rules analogous to Paragraph 6(a) consistently hold
`that it “requires the alleged infringer to produce any and all documents describing the operation of
`any aspects or elements of an accused instrumentality.” Edward D. Ioli Trust v. Avigilon Corp.,
`2012 WL 5830711, at *3 (E.D. Tex. 2012) (emphasis added); see also, e.g., NessCap Co. v.
`Maxwell Techs., 2008 WL 152147, at *3 (S.D. Cal. 2008) (“[T]his Court interprets the rule as
`requiring the alleged infringer to produce any and all documents describing the operation or
`structure of the patentee’s accused devices.”); Cryptography Research, Inc. v. Visa Int’l Serv.
`Ass’n, 2005 WL 1787421, at *2-3 (N.D. Cal. 2005) (ordering production of extensive variety of
`materials as falling within the “catchall ‘other documentation’ category”). This requirement is “not
`like other forms of discovery which require a formal request by the opposing party. Rather, it is
`the responsibility of the party itself to make disclosures that satisfy the Rules.” Edward D. Ioli,
`2012 WL 5830711, at *3 (quoting Cryptography Research, 2005 WL 1787421, at *3).
`
`In its December 20 production, Defendant identified ingredient lists/officialization
`documents, product packaging, and marketing materials as satisfying the requirement to produce
`documentation sufficient to show the operation of the Accused Products. See Exs. C-G. Despite
`the fact that Defendant’s public materials prominently advertise testing of the Accused Products,
`see, e.g., Ex. F (product packaging citing results from consumer evaluation), Ex. H (product
`packaging citing results from “a clinical study of upper layers of the skin”), Defendant produced
`no product testing information. For some Accused Products, Defendant did not produce any
`information at all; for others, only partial information was produced. See Ex. A-2. After Plaintiffs
`
`1 The Order also required Defendant to produce “All agreements that the party opposing infringement
`contends are comparable to a license that would result from a hypothetical reasonable royalty negotiation”
`and “All agreements that may be used to support the damages case of the party that is denying
`infringement.” Id. ¶ 6(c), (e). Defendant did not produce any agreements.
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 91 Filed 02/19/20 Page 2 of 5 PageID #: 2403
`
`Restricted – Attorneys’ Eyes Only
`
`repeatedly notified Defendant of the production deficiencies, Defendant made supplemental
`productions, but information is still missing for the products identified in Exhibit A.
`
`In the parties’ meet and confers, Defendant first asserted that its production deficiencies
`should be excused because of the large number of Accused Products. See Ex. I, at 4-5. That is no
`excuse. Indeed, as the Court observed in the order denying Defendant’s motion to dismiss,
`Plaintiffs’ complaint put Defendant “on notice that products containing adenosine made by the
`eighteen brands specified in the FAC are accused of infringement.” D.I. 31, at 9. Given that the
`Accused Products are a subset of Defendant’s adenosine-containing products, and only those that
`meet the claim limitations of the asserted patents, Defendant has been on notice of the scope of
`this case, and its attendant discovery obligations, for years.
`
`Second, Defendant claimed that it could not identify certain Accused Products. That is
`implausible and would not, in any event, justify Defendant’s insufficient production. With their
`infringement contentions, Plaintiffs produced images of the Accused Products from Defendant’s
`own product packaging or public websites. See Ex. B. Plaintiffs sent the Bates numbers of these
`previously-produced images to Defendant, but it continued to claim it could not identify certain
`products. See Ex. I, at 13. But to date, Defendant has named only three specific products it is
`unable to identify: Lancôme Absolue L’Extrait Day Cream, Lancôme Rénergie Night, and
`Lancôme Teint Visionnaire. See id., at 6. As with every other Accused Product, these product
`names are taken from Defendant’s public materials, and Plaintiffs have produced product images
`from Defendant’s websites. See Ex. B. Defendant has more than enough information to identify
`these products and produce information about them.
`
`We address each category of missing information in turn below.
`
`1. Ingredient lists
`
`
`
`Formulation lists or officialization documents remain missing for 27 products. These
`documents are needed because they set forth the actual formulas for the Accused Products and
`other technical information relevant to the products’ composition. They are therefore crucial to
`understanding how the Accused Products operate. Defendant has provided no explanation for the
`production deficiency, except to say that it has been difficult to identify the internal formula
`numbers for these products. See Ex. I, at 4. Defendant’s delay of nearly two months in locating
`and producing these documents is inexcusable.
`
`
`2. Product packaging and marketing materials
`
`
`
`Defendant identified various kinds of product packaging and marketing materials as part
`of its Paragraph 6(a) production. These documents are highly relevant to showing the “operation
`of any aspects or elements of” the Accused Products. For example, the documents make claims
`about the effects the Accused Products have on the skin:
`• Packaging for L’Oréal Paris RevitaLift Double Lifting Eye Treatment claims that the
`product “
`
`
`
`.” Ex. F.
`
`2
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 91 Filed 02/19/20 Page 3 of 5 PageID #: 2404
`
`Restricted – Attorneys’ Eyes Only
`
`• Packaging for Kiehl’s Clearly Corrective Brightening and Smoothing Moisture Treatment
`says that the product is “
`
`
`.” Ex. H.
`• The marketing book for Kiehl’s Double Strength Deep Wrinkle Filler provides extensive
`descriptions about how the product operates, including claims that the product is
`“
`
`
`
`
`.” Ex. J.
`And the documents describe how the Accused Products are to be applied to the skin, including any
`limitations on their use. For example:
`• Packaging for the RevitaLift Double Lifting Eye Treatment includes application
`instructions and a diagram. Ex. F.
`• Packaging for Lancome Rénergie Lift Multi-Action Day Cream includes the warning not
`to apply the product to broken skin. Ex. L.
`Product packaging and marketing materials plainly are documents showing the operation of the
`Accused Products and should have been produced on December 20. See, e.g., Cryptography
`Research, 2005 WL 1787421, at *4 (ordering production of, among other things, “user manuals;
`tutorials; operating guides; [and] testing reports”). Defendant itself acknowledged the documents
`constitute part of its 6(a) obligation by identifying them as such in its December 20 production.
`
`Nevertheless, packaging remains outstanding for 28 products and marketing materials for
`
`68 products. See Ex. A. Defendant has argued that, so long as it eventually produces these materials
`in response to Plaintiffs’ Requests for Production, it has satisfied its discovery obligations. See Ex.
`I, at 4-5.2 This violates the purpose of Paragraph 6 of the Court’s Order, which is to require
`production of key information for the Accused Products at the outset of discovery, with the burden
`on the Defendant to identify and produce the relevant materials. See Nesscap, 2008 WL 152147,
`at *3 (rejecting the defendant’s position that would force patentees “to serve requests for
`production of documents, thereby prolonging the discovery period, increasing costs, and defeating
`one of the primary purposes of enacting patent local rules, which is to promote efficient discovery
`and reduce the potential for discovery disputes and wasted effort”); Edward D. Ioli, 2012 WL
`5830711, at *3 (“Such rules exist to further the goal of full, timely discovery and provide all parties
`with adequate notice and information with which to litigate their cases. . . .”). In any event, the
`document production deadline was February 7, and these materials are still outstanding.
`
`
`3. Testing information
`
`
`
`Numerous materials Defendant has already produced refer to clinical and consumer testing
`of the Accused Products. For example:
`• Packaging for the RevitaLift Double Lifting Eye Treatment claims that a consumer
`evaluation reported that “
`
`
`
`2 Defendant has also argued that the parties’ agreement that Defendant could stage its production of
`marketing materials pursuant to Plaintiffs’ Request for Production No. 31 lessened its obligations under
`Paragraph 6(a). Plaintiffs never agreed to extend the deadline for Defendant to make its Paragraph 6(a)
`production.
`
`3
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 91 Filed 02/19/20 Page 4 of 5 PageID #: 2405
`
`Restricted – Attorneys’ Eyes Only
`
`
`
`.” Ex. F.
`• Packaging for the Clearly Corrective Brightening and Smoothing Moisture Treatment touts
`results from “
`.” Ex. H.
`• The marketing book for the Double Strength Deep Wrinkle Filler includes a summary of
`test results from a “
`
`.” Ex. J.
`Yet Defendant did not include any testing information reflecting these “consumer evaluation” or
`“clinical stud[ies]” in its December 20 production. Such testing data shows how the Accused
`Products actually operate—and, indeed, Defendant relies on this data to make public claims about
`Accused Products’ effect on skin. This internal testing information should have been produced
`pursuant to Paragraph 6(a). See NessCap, 2008 WL 152147, at *3 (analogous patent rule “offers
`the plaintiff a procedure for procuring additional [product] information, which the plaintiff could
`not obtain before initiating the litigation”); Cryptography Research, 2005 WL 1787421, at *4
`(ordering the production of “testing reports,” “software implementation analyses and/or
`evaluations,” “test suites,” and “test scripts,” among other things).
`
`In response to Plaintiffs’ repeated requests to explain why Defendant did not produce this
`
`information on December 20, Defendant said only that Plaintiffs did not include testing
`information in its similar production pursuant to Paragraph 4(e). Any deficiencies in Plaintiffs’
`own production (which Plaintiffs certainly do not admit) would not reduce Defendant’s own
`discovery obligations. Moreover, the parties are differently situated: Defendant relies specifically
`on this very testing data to make public claims about how the Accused Products operate, while
`Plaintiffs’ own products instead rely on the Patents-in-Suit. See, e.g., Ex. L. By putting the testing
`information in issue through its own public statements, Defendant has acknowledged its
`importance to understanding the Accused Products, and should have produced the testing
`accordingly. See, e.g., I-Flow Corp. v. Apex Med. Techs., 250 F.R.D. 508, 512 (S.D. Cal. 2008)
`(relying on the defendant’s public statements about “years of research” to order additional
`documentation for the accused product). Defendant also should have produced any testing related
`specifically to the adenosine penetration of the Accused Products. Cf. D.I. 71, at 3-4 (Defendant’s
`letter contending that Plaintiffs’ adenosine testing data was immediately needed to “prepare its
`noninfringement and invalidity defenses . . . and develop related evidence during fact discovery”).
`
`
`4. Financial Information
`
`
`
`The Scheduling Order also required Defendant to produce “Documents sufficient to show
`the sales, revenue, cost, and profits for Accused Instrumentalities . . . for any period of alleged
`infringement” on December 20. D.I. 46 ¶ 6(d). Defendant’s initial production of financial data was
`incomplete—information was missing entirely for nearly a third of the Accused Products, and for
`several product divisions for 2011-2012. After two meet-and-confers and many written
`communications where Plaintiffs sought the missing information, Defendant produced nearly all
`the outstanding information on February 7, 2020. Financial data for certain years is still missing
`for six products, and Plaintiffs expect Defendant to provide that data by the end of this week.
`
`For the foregoing reasons, Plaintiffs respectfully request that the Court order production of
`the outstanding materials, including product packaging, marketing materials, and product testing.
`
`4
`
`

`

`Case 1:17-cv-00868-CFC-SRF Document 91 Filed 02/19/20 Page 5 of 5 PageID #: 2406
`
`Restricted – Attorneys’ Eyes Only
`
`cc: Counsel of Record (Via E-Mail)
`
`Respectfully submitted,
`
`/s/ Brian E. Farnan
`
`Brian E. Farnan
`
`5
`
`