Case 1:17-cv-00868-CFC-SRF Document 93 Filed 02/20/20 Page 1 of 4 PageID #: 2510
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`VIA E-FILING
`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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`
`
` February 13, 2020
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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 in response to Defendant’s letter requesting that the Court extend the document
`production deadline nunc pro tunc to March 6, 2020. The current document production deadline
`was February 7, 2020. As Plaintiffs detailed in their February 12 letter, see D.I. 88, Defendant also
`had a December 20, 2019 deadline to produce complete technical and financial information for all
`Accused Products; that production was incomplete, and remains incomplete nearly two months
`later. This is indicative of Defendant’s overall deficient production. Defendant has yet to produce
`any emails, product testing materials, files for its patents cited in Plaintiffs’ complaint, or
`documents related to its patent-clearing or licensing practices—to name just a few categories. The
`touchstone for whether a party has shown good cause for amending a scheduling order is whether
`“a more diligent pursuit of discovery was impossible.” Dow Chem. Canada Inc. v. HRD Corp.,
`287 F.R.D. 268, 270 (D. Del. 2012); see also Fed. R. Civ. P. 16(b)(4) (“A schedule may be
`modified only for good cause and with the judge’s consent.”); Compagnie des Grands Hotels
`d’Afrique S.A. v. Starwood Capital Grp. Global I LLC, 2019 WL 4740083, at *1 (D. Del. Sept.
`27, 2019) (“[S]cheduling orders are at the heart of case management. If they can be disregarded
`without a specific showing of good cause, their utility would be severely impaired.” (quoting
`Koplove v. Ford Motor Co., 795 F.2d 15, 18 (3d Cir. 1986)). It is apparent from Defendant’s
`production to date, and its attempted justifications—unsupported by legal authority—that
`Defendant has not met this standard.
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`Defendant was required to make a complete production of technical and financial
`information for all Accused Products on December 20, 2019. See D.I. 46 ¶ 6(a), 64. As of the
`December 20 deadline, Defendant had produced 623 documents, and had produced no technical
`documents for 21 products and no financial information for 51 products (even excluding products
`that only later did Defendant assert were not sold by L’Oréal USA). As of the February 7 document
`production deadline, Defendant had produced only 786 documents, and no documents had been
`produced for 8 products. Contrary to Defendant’s assertion, it has not produced financial records
`for all accused products. See D.I. 87, at 1; D.I. 88, Ex. A. To date, Defendant has produced no
`testing of any kind for any of the Accused Products, no emails, no consumer studies, and no patent
`licenses or settlement agreements. By contrast, Plaintiffs completed document production by the
`February 7 deadline, and are prepared to move on to depositions. See D.I. 86 (notice of service of
`Plaintiffs’ 30(b)(6) deposition notice). We cannot do so, however, without a complete production
`from Defendant.
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`Only on January 30, 2020—the morning of the parties’ meet and confer on the issue, and
`a week before the document production deadline—did Defendant provide its current proposal for
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`Case 1:17-cv-00868-CFC-SRF Document 93 Filed 02/20/20 Page 2 of 4 PageID #: 2511
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`extending the case schedule. See D.I. 88, Ex. I, at 8. Because of Defendant’s failure to timely
`complete the December 20 production required by the Scheduling Order, Plaintiffs were willing
`to consider an extension for the production of other responsive documents if Defendant would
`commit to producing the outstanding technical and financial information for the Accused Products
`by the February 7 document production deadline. See id., at 7. Defendant would not. Based on
`Defendant’s disregard for the Court’s current deadlines, Plaintiffs could not agree to allow
`Defendant to delay this case further. Plaintiffs are particularly troubled by Defendant’s comment
`in its letter that Defendant may “seek further relief from the Court as to additional deadlines in the
`coming months, perhaps even including the trial date.” D.I. 87, at 1. Needless to say, Plaintiffs
`oppose, and will continue to oppose, any extension of the schedule, particularly one that would
`result in moving the Court-ordered trial date. See Dow Chem., 287 F.R.D. at 270 (“In deciding
`whether to modify a scheduling order, the Court may consider any prejudice to the party opposing
`the modification. Prejudice may include the delay of a trial date.”).
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`Defendant’s only explanation for its production deficiencies is the number of Accused
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`Products Plaintiffs identified, pursuant to the Court’s schedule, along with its Infringement
`Contentions. See D.I. 87, at 1. As the Court observed, 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. Contrary to Defendant’s assertion that “the FAC vaguely
`defined the accused products,” D.I. 87, at 1, the FAC notified Defendant that the accused products
`would include “the following brands with products containing adenosine,” and then listed eighteen
`brands, D.I. 13 ¶ 31. Defendant says it “could not have known which products Plaintiffs would
`accuse.” D.I. 87, at 2. But Defendant knew, as of the 2017 FAC, that the accused products would
`at most be the group of its products that contain adenosine, and, indeed, the Accused Products
`consist of the subset of those adenosine-containing products that meet the claim limitations of the
`asserted patents. The number of Accused Products is therefore smaller, not larger, than what
`Defendant could reasonably have expected at the outset of this case.
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`Defendant faults Plaintiffs’ purported “unwillingness to narrow its list of accused products,
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`or to, at the very least, remove improperly accused products.” Id., at 1. Defendant gives no reason,
`much less any authority, to support the idea that Plaintiffs should voluntarily remove Accused
`Products that Plaintiffs believe infringe the Patents-in-Suit. As for “improperly accused” products,
`Defendant has never provided Plaintiffs with a list of the products it believes are improperly
`accused, despite the parties’ many written and verbal communications. Defendant repeatedly
`asserted, as it does now, that “several of the accused products simply did not exist,” id., at 3, but
`Plaintiffs provided Defendant with ample information to identify each Accused Product—
`including product packaging and public websites. See D.I. 88, Ex. B.
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`Defendant also says that some products “were not ever sold by L’Oréal USA” or were sold
`outside the damages period. D.I. 87, at 3. Again, Defendant has never provided Plaintiffs with a
`list of these products. Defendant has only belatedly, and piecemeal, suggested that certain products
`were not sold by L’Oréal USA during the relevant time. For example, despite the fact that Plaintiffs
`listed The Body Shop as one of the specific brands in the FAC, it was not until Defendant provided
`its Objections and Responses to Plaintiffs’ Third Set of Interrogatories on January 17, 2020, that
`Defendant stated that L’Oréal USA never sold products under The Body Shop brand. Ex. N, at 13.
`And it was only in an email following several inquiries from Plaintiffs that Defendant identified
`two products apparently launched in 2019. D.I. 88, Ex. I, at 15. One of these products, Kiehl’s
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`Case 1:17-cv-00868-CFC-SRF Document 93 Filed 02/20/20 Page 3 of 4 PageID #: 2512
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`Super Multi-Corrective Cream SPF 30, does in fact show sales in 2017 and 2018. See Ex. O
`(excerpt from LOUSA0005996). If Defendant believed that the presence of improperly accused
`products would impede its efforts to meet the Court’s deadlines, it could have identified those
`products and sought relief long before the deadline. That would have given the parties the
`opportunity to ascertain whether the products do, in fact, fall outside the scope of the case. “Where,
`as here, the party knows or is in possession of the information that forms the basis of the later
`motion to amend at the outset of litigation, the party is presumptively not diligent.” Boston
`Scientific Corp. v. Edwards Lifesciences Corp., 2018 WL 5043754, at *3 (D. Del. Sept. 19, 2018)
`(quotations omitted); see also id. (“Boston Scientific’s failure to seek leave to amend based on the
`representations made in Edwards’ discovery responses, and concomitant failure to further explore
`Edwards LLC’s precise role through additional discovery, precludes a finding of diligence.”); Dow
`Chemical, 287 F.R.D. at 271 (denying request to extend discovery because requesting party did
`not timely challenge opposing party’s interpretation of and response to interrogatory).
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`Not only was Defendant not diligent in raising issues with Plaintiffs, it has not been diligent
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`in seeking relief from the Court. Defendant had an obligation to make a complete production of
`financial and technical information for all Accused Products on December 20, and yet Defendant
`did not identify an issue with any product or brand until Plaintiffs repeatedly identified the
`deficiencies in that production and requested supplementation. See D.I. 88, Ex. I, at 17. And
`Defendant did not move the Court to amend the document production deadline until February 4,
`just three days before the deadline and at which point Defendant had already admitted it would not
`comply with the Court’s schedule. See id., at 12. “By waiting so long to do so, with seemingly no
`justification for delay other than an unfounded hope” that Plaintiffs might narrow the list of
`Accused Products or agree to extend the case schedule, Defendant “ha[s] failed to show the good
`cause required for the Court to grant [its] Motion.” Meda Pharm. Inc. v. Teva Pharm. USA, Inc.,
`2016 WL 6693113, at *2 (D. Del. Nov. 14, 2016); see also, e.g., MacQueen v. Union Carbide
`Corp., 2015 WL 167674, at *9 (D. Del. Jan. 8, 2015) (“Plaintiff’s lack of diligence is demonstrated
`not only in her significant delay in propounding discovery in the first instance, but also by her
`delay in failing to come forward earlier with any request for an extension.”).
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`Finally, Defendant’s complaints with respect to a small number of Accused Products do
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`not explain why Defendant has failed to provide documents responsive to the vast majority of
`Plaintiffs’ discovery requests—for example, any emails or communications discussing adenosine
`or the Patents-in-Suit; any agreements or documents related to Defendant’s licensing practices;
`any documents related to Defendant’s patents cited in the FAC; or any product testing of any kind
`whatsoever. Plaintiffs served their First Set of Requests for the Production of Documents on July
`15, 2019, before the Scheduling Order was even entered. See D.I. 43; Ex. P. The need for
`Defendant to produce responsive documents by February 7, 2020, is hardly a new development.
`Accordingly, Defendant has failed to show good cause for any amendment to the Scheduling
`Order. See Compagnie des Grands Hotels d’Afrique, 2019 WL 4740083, at *3 (“Plaintiff has not
`supported its request with any ‘new information’ . . . Rather, plaintiff asks the court to reconsider
`the scheduling order deadline based upon time pressures of its own making rather than good
`cause.”).
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`Plaintiffs respectfully request that the Court deny Defendant’s request to extend the
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`document production deadline and order that it produce all outstanding documents no later than
`February 25, 2020.
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`Case 1:17-cv-00868-CFC-SRF Document 93 Filed 02/20/20 Page 4 of 4 PageID #: 2513
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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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