Case 1:17-cv-00868-CFC-SRF Document 201 Filed 06/08/20 Page 1 of 6 PageID #: 7462
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELA WARE
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`UNIVERSITY OF
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`MASSACHUSETTS and
`CARMEL LABO RA TORIES, LLC, )
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`Plaintiffs,
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`V.
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`Civil Action No. 17-868-CFC-SRF
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`L'OREAL USA, INC.,
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`Defendant.
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`MEMORANDUM ORDER
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`Defendant L'Oreal USA, Inc. has filed objections to the Magistrate Judge's
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`April 24, 2020 oral discovery ruling requiring L'Oreal to produce communications
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`made in connection with a Federal Trade Commission (FTC) investigation. D.I.
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`151.
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`The ruling in question traces its roots to Plaintiffs' March 19, 2020 letter
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`motion for an order to compel L'Oreal to comply with Plaintiffs' Request for
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`Production (RFP) No. 65. D.I. 103 at 1, 4. RFP 65 called for the production of
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`"documents produced, in any litigation or investigation, to any government entity
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`or agency that refer or related to Accused Products." Id. at 4. In denying the
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`motion at a March 26, 2020 hearing, the Magistrate Judge explained:
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`
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELA WARE
`
`)
`UNIVERSITY OF
`)
`MASSACHUSETTS and
`CARMEL LABO RA TORIES, LLC, )
`)
`)
`)
`)
`)
`)
`)
`)
`
`Plaintiffs,
`
`V.
`
`Civil Action No. 17-868-CFC-SRF
`
`L'OREAL USA, INC.,
`
`Defendant.
`
`MEMORANDUM ORDER
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`Defendant L'Oreal USA, Inc. has filed objections to the Magistrate Judge's
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`April 24, 2020 oral discovery ruling requiring L'Oreal to produce communications
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`made in connection with a Federal Trade Commission (FTC) investigation. D.I.
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`151.
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`The ruling in question traces its roots to Plaintiffs' March 19, 2020 letter
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`motion for an order to compel L'Oreal to comply with Plaintiffs' Request for
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`Production (RFP) No. 65. D.I. 103 at 1, 4. RFP 65 called for the production of
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`"documents produced, in any litigation or investigation, to any government entity
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`or agency that refer or related to Accused Products." Id. at 4. In denying the
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`motion at a March 26, 2020 hearing, the Magistrate Judge explained:
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`
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`Case 1:17-cv-00868-CFC-SRF Document 201 Filed 06/08/20 Page 2 of 6 PageID #: 7463
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`I find [RFP 65 's] request for all documents from all
`government entities or agencies overbroad and not
`relevant or proportional to the needs of the case under
`Rule 26. It is a fishing expedition in the Court's view.
`However, having said that, to the extent that plaintiffs are
`aware of a federal investigation and have a reasonable
`belief that the document production from L'Oreal does
`not address documents that were produced in connection
`with that federal investigation in which the plaintiffs can
`make a showing are relevant and reasonably proportional
`to the needs of the case, then the plaintiffs can pursue the
`conversation with L'Oreal for specific documents
`specific to that investigation . . . . So that is my 1uling
`without prejudice.
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`Tr. 78:5-24.
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`In a letter dated April 21, 2020, Plaintiffs renewed their motion with respect
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`to RFP 65. The letter reads in relevant part:
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`At the last hearing, this Court denied without
`prejudice Plaintiffs' request regarding government
`investigations into the accused products and asked
`Plaintiffs to narrow the request. Plaintiffs have now
`done so, limiting the request to communications related
`to one particular investigation. Yet Defendant is still
`refusing to produce these highly relevant documents .
`. . . Plaintiffs request is limited to Defendant's
`internal and external communications about [a] specific
`FTC investigation.
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`D.I. 123 at 2 (emphasis added). This is verbal legerdemain. While it is true that
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`Plaintiffs had narrowed the scope of the original RFP 65 to a single investigation,
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`they had also expanded the scope of the revised request beyond RFP 65' s original
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`terms to cover inte1nal communications.
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`2
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`Case 1:17-cv-00868-CFC-SRF Document 201 Filed 06/08/20 Page 3 of 6 PageID #: 7464
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`L'Oreal either failed to read Plaintiffs' letter carefully or made an intentional
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`( and misguided) decision not to bring Plaintiffs' wiliness to the Magistrate Judge's
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`attention. Instead, L'Oreal made the following argument in opposition to
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`Plaintiffs' renewed motion:
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`Plaintiffs have not meaningfully narrowed their request,
`as they continue to seek documents regarding FTC
`investigations into every Accused Product. Moreover,
`even if Plaintiffs had narrowed their request to seek only
`documents pertaining to an investigation of a single
`product or line of products-the L 'Oreal USA Paris
`Youth Code products-they cannot demonstrate that
`such a request is noncumulative. L'Oreal USA has
`already produced the underlying marketing materials for
`those products, as well as the testing documents that
`support the marketing claims made therein. Forcing
`L'Oreal USA to search for communications relating to an
`investigation that does not relate to the claims made in
`this litigation, and that was resolved nearly six years ago,
`is not proportionate to the needs of the case.
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`D.I. 124 at 3. L'Oreal essentially repeated these arguments during the April 24,
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`2020 discovery hearing held before the Magistrate Judge. At no point in its letter
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`response or during oral argument on the renewed motion did L'Oreal argue that
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`Plaintiffs' request should be denied because RFP 65 did not cover internal
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`communications. Nor did it argue that Plaintiffs' renewed motion should be
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`denied on the grounds that complying with Plaintiffs' request would require
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`L'Oreal to produce more than 7,000 documents and to search for, review and log
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`privileged, internal communications regarding the Investigation that span at least
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`3
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`Case 1:17-cv-00868-CFC-SRF Document 201 Filed 06/08/20 Page 4 of 6 PageID #: 7465
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`three years. Finally, L'Oreal did not argue in front of the Magistrate Judge that
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`"the asserted patents in this case relate to the use of adenosine at specified
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`concentrations, which was not a focus of the FTC investigation." D.I. 151 at 5.
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`At the conclusion of argument, the Magistrate Judge stated:
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`... I will grant plaintiffs' request to compel the
`production of documents responsive to request for
`production number 65 limited to the single 2014 FTC
`investigation cited by the plaintiff1 s] in their letter brief,
`including the internal and external communications
`regarding the specific FTC investigation.
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`Tr. 113:1-8.
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`The Magistrate Judge had the authority to make her ruling pursuant to 28
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`U.S.C. § 636(b)(l)(A) and Federal Rule of Civil Procedure 72(a).
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`L'Oreal objects to the Magistrate Judge's ruling "insofar as it requires
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`L'Oreal USA to: (1) produce the entire volume of its production to the FTC,
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`totaling over 7,000 documents; and (2) search for, review and log privileged,
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`internal communications regarding the Investigation that span at least three years."
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`Id. at 1. L'Oreal argues that "Plaintiffs' erroneous representation to the Magistrate
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`Judge that they had narrowed their request, which was originally before the Comt
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`on March 26, 2020, precipitated the Order." Id. And it contends that "the asserted
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`patents in this case relate to the use of adenosine at specified concentrations, which
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`was not a focus of the FTC investigation." Id. at 5.
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`4
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`Case 1:17-cv-00868-CFC-SRF Document 201 Filed 06/08/20 Page 5 of 6 PageID #: 7466
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`The problem with these arguments is that they were not_raised before the
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`Magistrate Judge in the first instance. Accordingly, L'Oreal has waived them.
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`Burtch v. Milberg Factors, Inc., No. CIV.A. 07-556-JJF-LP, 2009 WL 1529861, at
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`*3 (D. Del. May 31, 2009), affd, 662 F.3d 212 (3d Cir. 2011), and affd, 662 F.3d
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`212 (3d Cir. 2011).
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`I am somewhat sympathetic to L'Oreal's situation, and I certainly do not
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`approve of the manner in which Plaintiffs worded their renewed motion. Had the
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`matter been before me in the first instance, I would not have compelled the
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`production of internal communications since RFP 65 did not call for their
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`production. But this Court could not meet the demands of its heavy caseload if
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`sophisticated litigants like L'Oreal were permitted to save for their objections to
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`Magistrate Judge rulings arguments they should have raised before the Magistrate
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`Judge in the first place. It would also be unfair to our Magistrate Judges, who are
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`inundated with discovery disputes, to countenance that practice.
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`L'Oreal argues that the fact "[t]hat Plaintiffs' brief and proposed order was
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`seeking documents outside of their request [in RFP 65] was not apparent until after
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`the Magistrate Judge's Order was issued, and Plaintiffs never pointed that out to
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`the Court." D.I. 151 at 6 n.3 ( emphasis added). Plaintiffs, however, explicitly
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`stated in their renewed motion and in the proposed order they provided the
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`Magistrate Judge that they were seeking internal communications. L'Oreal's
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`5
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`Case 1:17-cv-00868-CFC-SRF Document 201 Filed 06/08/20 Page 6 of 6 PageID #: 7467
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`carelessness in reading the renewed motion and proposed order does not justify
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`dispensing with the rule that arguments need to be raised in the first instance with
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`the Magistrate Judge.
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`NOW THEREFORE, IT IS HEREBY ORDERED that L'Oreal's Objections
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`(D.I. 151) are OVERRULED.
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`Date
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`United States Dj. ict Judge
`i/
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`6
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