United States District Court, D. Delaware
LIQWD, INC. and OLAPLEX LLC, Plaintiffs,
L'ORÉAL USA, INC., L'ORÉAL USA PRODUCTS, INC., L'ORÉAL USA S/D, INC., and REDKENS 5TH AVENUE, NYC, L.L.C., Defendants.
MEMORANDUM AND ORDER
F. BATAILLON SENIOR UNITED STATES DISTRICT JUDGE.
matter is before the Court on the objections, D.I. 729, filed
by the defendants to the oral order of the magistrate judge
entered on the docket sheet on March 8, 2019, Transcript D.I.
760, Ex. A, regarding discovery of post grant review (PGR)
documents. The magistrate judge denied defendants'
request to order plaintiffs to produce certain documents.
Defendants object to this determination. In this patent
infringement action filed by plaintiffs Liqwd, Inc. and
Olaplex LLC (together, "Olaplex") against
defendants L'Oreal USA, Inc., L'Oreal USA Products,
Inc., L'Oreal USA S/D, Inc., and Redken 5th Avenue NYC,
LLC (collectively, "L'Oreal"), Olaplex alleges
infringement of United States Patent Nos. 9, 498, 419
("the '419 patent") and 9, 668, 954 ("the
'954 patent"). D.I. 262 at ¶¶ 90-138.
standard of review is governed by 28 U.S.C. §
636(b)(1)(C) and Federal Rule of Civil Procedure 72(b). The
district court “shall make a de novo determination of
those portions of the report or specified proposed findings
or recommendations to which objection is made” and
“may also receive further evidence or recommit the
matter to the magistrate judge with instructions.” 28
U.S.C. § 636(b)(1)(C). Similarly, Rule 72(b)(3) requires
de novo review of any recommendation that is dispositive of a
claim or defense of a party.
Supreme Court has construed the statutory grant of authority
conferred on magistrate judges under 28 U.S.C. § 636 to
mean that nondispositive pretrial matters are governed by
§ 636(b)(1)(A) and dispositive matters are covered by
§ 636(b)(1)(B). Gomez v. United States, 490
U.S. 858, 873-74 (1989); see also Fed. R. Civ. P.
72(a). Under subparagraph (B), a district court may refer a
dispositive motion to a magistrate judge “to conduct
hearings, including evidentiary hearings, and to submit to a
judge of the court proposed findings of fact and
recommendations for the disposition.” 28 U.S.C. §
636(b)(1)(B); see EEOC v. City of Long
Branch, 866 F.3d 93, 99-100 (3d Cir. 2017). The product
of a magistrate judge, following a referral of a dispositive
matter, is often called a “report and
recommendation.” Id.“Parties ‘may
serve and file specific written objections to the proposed
findings and recommendations' within 14 days of being
served with a copy of the magistrate judge's report and
recommendation.” Id. (quoting Fed.R.Civ.P.
a party objects timely to a magistrate judge's report and
recommendation, the district court must ‘make a de novo
determination of those portions of the report or specified
proposed findings or recommendations to which objection is
made.'” EEOC, 866 F.3d at 99 (quoting 28
U.S.C. § 636(b)(1)).
magistrate judge held a telephone conference to determine the
discovery issues on March 8, 2018. The magistrate judge
ORAL ORDER: Pursuant to the ruling on the record during
today's teleconference, (1) In accordance with the
court's February 14, 2019, Order compelling production of
foreign patent files in the possession of Plaintiffs'
patent prosecution counsel, Plaintiffs shall make a partial,
rolling production of non-privileged foreign patent files
commencing today, and shall complete the production of
foreign patent files on or before March 12, 2019, along with
a preliminary privilege log. A final privilege log is due on
or before March 19, 2019. These are strict deadlines subject
to no further extensions. (2) No. supplementation of expert
discovery, motions for summary judgment, or Daubert motions
are permitted absent leave of court by motion made following
the meet and confer procedures ordered by the court on
February 14, 2019. If a party moves for leave to supplement,
such motion must be made on or before March 29, 2019, and the
court will strictly require a showing by the movant that such
supplementation is directly related to new information
produced in response to the court's orders of February 14
and this date and is not based on information previously
produced in discovery. (3) Defendants' request for
production of deposition transcripts and other documents
filed in the PGR proceedings after the court's February
14, 2019 ruling is denied. Signed by Judge Sherry R. Fallon
on 3/8/2019. (Polito, Rebecca) (Entered: 03/08/2019)
Order entered March 8, 2019.
contends it is entitled to have the requested documents,
arguing that (1) the documents comply with the PTAB's
rules; and (2) they are relevant to this case. L'Oreal
requested “All documents and things concerning the
prosecution, examination, opposition, post-grant review, or
any other patentability or validity activities for any and
all of Your patent application(s) and/or patent(s) . . .
.”. Request No. 7, March 26, 2018. Plaintiffs refused
to provide the additional documents. The Court, on August 1,
2018, initially ordered production of the PGR documents,
stating: “I can't really see any reason not to
compel at the very least the production of, you know,
L'Oréal and Olaplex materials used in the PGR
proceedings in this case. . . . [T]o the extent
L'Oréal and Olaplex documents are produced in the
PTAB, there's no reason not to produce them, as far as I
can see.” Tr. D.I. 647-1, at 79:9-22, 08/01/2018.
Plaintiffs did not immediately produce these documents, so
the Court ordered them to produce the “complete
unredacted file history from the [co-pending] PGR to the
extent it [had] not already been produced pursuant to [the
Court's] August 1 ruling.” D.I. 676, Ex. A at
86:14-22. Plaintiffs made the request to PTAB to produce the
PGR documents to defendants.
March 8, 2019, defendants asked the Court to require Olaplex
to produce missing documents. D.I. 676 1-2. During a
telephonic hearing on March 8, 2019, the magistrate judge
found that it was “reluctant to compel production of
materials” because it was “unclear . . . whether
or not they will become part of the PTAB's
proceedings.” D.I. 729, (03/08/2019 Tr. at 48:17-21.
The magistrate judge further stated that “on the
request for production of the Christal and Dr. Edward Borish
depositions and any other related documents that may have
been filed subsequent to the order I previously entered for
production of confidential filings in the PGRs through
February 14, 2019 stand as previously stated. I'm not
going to expand that ruling today.”
Id. at (03/08/2019 Tr. 729-1 at 48:22-49:5).
Consequently, the Court did not order Olaplex to produce the
further PGR documents.
responded to the objections filed by the defendants. D.I.
760. Plaintiffs contend that Judge Fallon has repeatedly
denied defendants' request for use of the PGR files.
See D.I. 647, Ex. D, 8/1/2018 Hearing Tr. 80:2-81-2;
D.I. 643 at 3; and D.I. 192. In the March 8, 2019 Order,
Judge Fallon again denied Loreal's third request for
additional confidential documents filed in the PGR
proceedings. Judge Fallon stated that her August 1 Oral Order
did not give a blanket ongoing order that everything
that's filed then has to be turned around and
produced. Transcript D.I. 729-1, Ex. A at
50:15-21, March 8, 2019 hearing transcript; 2/14/19 Hearing
Tr. 760-1 at 86:15-17. Instead, the Court ordered Olaplex to
supplement its production “through the present”
(i.e., February 14, 2019). Id. at 86:21-22.
Court has carefully reviewed the order of the magistrate
judge, the record, the relevant law, and the arguments of the
parties. The Court finds no clear error and no abuse of
discretion in the analysis of the magistrate judge. The Court
has found no evidence that the requested documents and
unredacted documents are relevant to this litigation. Fact
discovery is done and has been so since December 21, 2018.
Judge Fallon's claim construction order issued on January
8, 2019. Expert discovery and motions are completed. The
Court agrees that discovery must end at some point, absent
extenuating reasons which are not present in this case.
Plaintiffs have already complied on two occasions and
produced relevant PGR documents, once following Judge
Fallon's August 1, 2018 ruling (D.I. 647-1, Ex. D, 8/1/18
Hearing Tr. at 80:2-81:2); and again, in accordance with
Judge Fallon's February 14, 2019 ruling (D.I. 760-1, Ex.
A, 02/14/19 Tr. at 86:14-22). The transcript as redacted of
Dr. Borish is publicly available. D.I. 729, Ex. A at 49:6-9.
“Discovery must have an end point, and the decision to
cut off discovery is ...