Flexiteek Americas, Inc. and Flexiteek International AS, Plaintiffs, v. Plasteak, Inc., and Plasdeck, Inc., Defendants CASE NO. 12-60215-CIV-SEITZ/SIMONTON Signed June 14, 2013 Counsel Daniel Devine, Michael Ingrassi Santucci, Santucci Priore, P.L., Scott Dale Smiley, Mark Christopher Johnson, The Concept Law Group, P.A., Fort Lauderdale, FL, for Plaintiffs. Ronald S. Kopp, Roetzel & Andress, Bruce H. Wilson, Akron, OH, J. Clark Dixon, Wadsworth Huott LLP, Miami, FL, Vijay Gibran Brijbasi, Dickinson Wright PLLC, Ft. Lauderdale, FL, for Defendants. Simonton, Andrea M., United States Magistrate Judge OMNIBUS DISCOVERY ORDER *1 This patent-infringement matter is before the undersigned Magistrate Judge upon Plaintiffs' Motion to Compel (DE # 84) and Defendants' Motion to Compel (DE # 81). Both Motions have been fully briefed (DE ## 89, 91, 98, 99). Discovery is referred to the undersigned by the Honorable Patricia A. Seitz, the District Judge assigned to the case (DE # 29). For the following reasons, Plaintiffs' Motion to Compel and Defendants' Motion to Compel are GRANTED, in part, and DENIED, in part. I. BACKGROUND This matter was initiated when Plaintiffs Flexiteek America, Inc., and Flexiteek International AS (“Flexiteek” or “Plaintiffs”) filed a Complaint against Defendants Plasteak, Inc., and Plasdeck, Inc., (“Plasteak” or “Defendants”) alleging Willful Direct Patent Infringement and Wilful Indirect Patent Infringement, both pursuant to Title 35 U.S.C. §§ 271, and further alleged violations of the Florida Deceptive and Unfair Trade Practices Act pursuant to Florida Statute § 501.201, et seq. In the Complaint, the Plaintiffs allege that the Defendants make, sell and retain profits from products which infringe upon a reexamined patent (“reexamined '881 patent”) for a teak wood decking alternative material held by the Plaintiffs which was issued by the United States Patent and Trademark Office (“USPO”), on December 6, 2011.[1] Plaintiffs seek relief in the form of “lost profits, other economic damages, and the amounts to which Defendant have been unjustly enriched,” “a reasonable royalty on the Accused Products and other infringing items, made, used, sold or offered for sale by Defendants,” and “disgorgement of the profits received by Defendants.” (DE # 1 at 13). In addition, the Plaintiffs seek temporary and permanent injunctive relief restraining and enjoining the Defendants from continuing to infringe upon the Plaintiffs' reexamined '881 patent. In their Answer, the Defendants generally deny the allegations in the Plaintiffs' Complaint and assert, inter alia, affirmative defenses of “Unenforceability” based upon the inequitable conduct of the Plaintiffs in the procurement of the patent, and further assert “Invalidity” of the patent based upon the failure of the patent to comply with the requirements of the patent laws of the United States including, 35 U.S.C. §§ 102, 103 and 112 (DE # 9). The Defendants further assert that the Plaintiffs are barred from recovery of any damages for any period of time prior to December 6, 2011, pursuant to the Defendants' intervening rights as provided in 35 U.S.C. §§ 307 and 252 (DE # 9 at 9). *2 The litigation between the Parties has been fraught with discovery disputes and the Parties have appeared before the undersigned for five informal discovery hearings. In addition, after the Parties cross-noticed an informal discovery hearing for more than forty discovery disputes, the undersigned directed the Parties to file Motions to Compel as to matters that remained unresolved after a good-faith conferral (DE # 66). Thereafter, the Parties filed the pending Motions to Compel which, among other things, address various general discovery disputes regarding the impact of the doctrine of intervening rights and the permissible scope of Defendants' discovery regarding Plaintiffs' products.[2] This Order addresses both the general discovery disputes between the Parties, e.g. application of the doctrine of intervening rights, scope of discovery related to the Plaintiffs' products, as well as, the specific objections raised by each Party in response to particular discovery requests.[3] II. DISCOVERY DISPUTES[4] A. General Discovery Disputes 1. Doctrine of Intervening Rights In response to various discovery requests propounded by the Plaintiffs, the Defendants raised several objections predicated upon the doctrine of intervening rights, which the Defendants contend should limit the scope of discovery to information and documents that came into existence after December 6, 2011, the date that the reexamined '881 Patent was issued.[5] In their Intervening Rights Memorandum Related to Discovery which the Defendants have submitted in support of this argument, Defendants contend that the doctrine of absolute intervening rights provides an accused infringer with the absolute right to use or sell a specific product that was made, used or purchased before the grant of a reissued patent, as long as that activity does not infringe upon a claim of the reissued patent that was also contained in the original patent.[6] The Defendants argue that because all of the claims from the original '881 patent were cancelled, it is not possible for the Defendants to have infringed upon the Plaintiffs' patent prior to December 6, 2011, when the patent was “reissued” as to twenty-eight entirely new claims. The Defendants therefore assert that because the doctrine of absolute intervening rights strip the Plaintiffs of any right to restrict items made before the date of the reissued patent, the Plaintiffs have no need to obtain discovery prior to that date for products that were already in existence (DE # 53 at 4). *3 The Defendants further explain that the doctrine of equitable intervening rights, rather than absolute intervening rights, similarly provides protection for the continued manufacture, use or sale of additional products covered by the reissued patent when the alleged infringer made “substantial preparations” towards the production of the alleged infringing products before the patent reissue date. The Defendants thus assert that the only relevant discovery as to items that were not made prior to the reissue date is discovery that evidences the Defendants' investments made or business commenced towards the manufacture of the alleged infringing products. Thus, the Defendants contend that for the time period prior to December 6, 2011, they should only have to produce evidence of investments made to commence business, and proof that their products remain unchanged after that date. Plaintiffs, on the other hand, contend that although the doctrine of absolute intervening rights may bar an award of profits from Defendants' sales of certain items which were already manufactured prior to December 6, 2011, the Plaintiffs are nevertheless entitled to obtain discovery regarding the items that the Defendants allege are entitled to either absolute or equitable intervening rights. The undersigned agrees, and for the following reasons, concludes that neither the doctrine of absolute intervening rights or equitable intervening rights prevent the Plaintiffs from obtaining discovery about the Defendants' products prior to December 6, 2011. Intervening rights is an affirmative defense that protects parties who are accused of infringing patent claims that are contained in a broadened reissue patent when the alleged infringement occurred before the reissue patent was granted. BIC Leisure Prods., Inc. v. Windsurfing Int'l, Inc., 1 F.3d 1214, 1220 (Fed. Cir. 1993). Title 35 U.S.C. § 252, which sets forth the intervening rights of an alleged infringer, states in relevant part, A reissued patent shall not abridge or affect the right of any person ... to continue the use of, to offer to sell, or to sell to others to be used, offered for sale, or sold, the specific thing so made, purchased, offered for sale, used, or imported unless the making, using, offering for sale, or selling of such thing infringes a valid claim of the reissued patent which was in the original patent. The court before which such matter is in question may provide for the continued manufacture, use, offer for sale, or sale of the thing made, purchased, offered for sale, used, or imported as specified, or for the manufacture, use, offer for sale, or sale in the United States of which substantial preparation was made before the grant of the reissue, and the court may also provide for the continued practice of any process patented by the reissue that is practiced, or for the practice of which substantial preparation was made, before the grant of the reissue, to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced before the grant of the reissue. 35 U.S.C. § 252 (2012). By its plain language, the statute provides for two types of intervening rights: 1) absolute intervening rights, and 2) equitable intervening rights. See 35 U.S.C. § 252. The policy behind this doctrine is to prevent injustice where the scope of patent claims through reexamination procedures reach products that a potential infringer has already begun to make, use, or sell, where those products were not previously considered infringing prior to the issuance of reexamined patent. See Sontag Chain Stores Co. v. Nat'l Nut Co., 310 U.S. 281, 293–95 (1940). In the case at bar, although the Defendants focus on whether any of the claims from the original '881 patent survived the reexmination and remain as part of the “new” '881 patent, in this context, that issue is irrelevant to the scope of the Plaintiffs' discovery requests. Rather, even assuming that the reexamined '881 patent consists of wholly new claims, the Defendants' assertion of the doctrine of absolute and equitable intervening rights would still permit the Plaintiffs to challenge the applicability of those doctrines to the Defendants' products made, used, sold or in the process of being made, used or sold, at the time that the reexamined '881 patent was issued. Such challenges would necessarily require the Plaintiffs to ascertain which of the Defendants' specific products were either manufactured or sold prior to December 6, 2011, for purposes of absolute intervening rights, or that were in the process of being made or sold, for purposes of equitable intervening rights. Indeed, as explained in University of Virginia Patent Foundation v. General Elec. Co., 702 F. Supp. 2d 904 (W.D. Va. 2011), *4 [A] ‘specific thing’ qualifies for absolute intervening rights only if in existence at the time of reissue.” Shockley v. Arcan, 248 F.3d 1349, 1360 (Fed. Cir. 2001) (stating that “the specific thing” refers “to the tangible article” which “was in existence” prior to reissue) (emphasis added). For example, in BIC Leisure Products, the court allowed the infringer an absolute intervening right to sell 10,870 sailboards that infringed the patent in suit because 5,245 of those sailboards had been manufactured before the reissue date and were being held in inventory, and another 5,625 sailboards had been purchased by the infringer by binding contract before the reissue date. 1 F.3d at 1222. In Shockley, the court held that absolute intervening rights did not protect the infringer's importation and sale of 10,000 mechanic's creepers because those creepers had not been manufactured prior to the reissue date. 248 F.3d at 1360. Id. at 915-16. The Court further explained as to equitable intervening rights, In determining whether an accused infringer is entitled to equitable intervening rights, a court considers whether substantial preparation was made before the issuance of the reexamined patent; whether there were existing orders or contracts at the time of the issuance of the reexamined patent; whether noninfringing goods can be manufactured from the inventory used to manufacture the infringing product, considering the cost of conversion; and whether the accused infringer was acting in good faith. Id. at 917. Implicit in the cases discussed above is the fact that the parties in those cases presented evidence to the trial courts regarding the existence and status of the items which were alleged to be protected by the doctrine of intervening rights. Similarly, in this case, in order for the Plaintiffs to challenge or dispute the Defendants' determinations that certain of their products are entitled to protection under either absolute or equitable intervening rights, the Plaintiffs will have to present the Court with evidence that certain products do not qualify under the statute as either “the specific thing so made,” or as a thing for which “substantial preparation” has been made prior to the date of the reissued patent. The Defendants do not contend otherwise. The Defendants have failed to explain why the potential application of the doctrine of intervening rights to this action would preclude the Plaintiffs from challenging the Defendants' unilateral representation of the existence of or substantial preparation towards certain products prior to the date that the reexamined patent was issued, notwithstanding the fact that the existence of those products might limit the Plaintiffs' damage recovery. Moreover, the Defendants have failed to demonstrate that discovery of information regarding the Defendants' products would not be relevant to this action generally for purposes of ascertaining the scope of the Defendants' product lines for purposes of proving the alleged infringement. Further, to the extent, the Defendants request the Court to make a determination as to whether the doctrine of intervening rights bars the Plaintiffs from recovering certain damages, that request is premature and not a basis for denying discovery. Indeed, as noted by the District Court in the prior litigation between the instant Parties, “Intervening rights are a limitation on damages and, therefore, are not at issue unless and until the patent holder secures a liability judgment for infringement of the (reissued) patent.” Flexiteek Americas, Inc. v. PlasTEAK, Inc., 08-60996-CIV., 2012 WL 5364263, *18 n.17 (S.D. Fla. Sept. 10, 2012) citing BIC Leisure Prods., Inc. v. Windsurfing Int'l, Inc., 1 F.3d 1214, 1220–21 (Fed. Cir. 1993). Accordingly, the Defendants' general objections to the Plaintiffs' discovery requests based upon the doctrine of intervening rights are overruled. To the extent that the Defendants have withheld discovery solely on that basis, the Defendants shall respond to the Plaintiffs' discovery requests consistent with the above analysis, on or before June 28, 2013. 2. Permissible Scope of Discovery Regarding Plaintiffs' Products *5 In response to several of the Defendants' discovery requests, the Plaintiffs have objected to the scope of those requests so far as they seek information about the Plaintiffs' sales, products and/or the Plaintiffs' manufacturing and installation processes.[7] In the Memorandum of Law on the Permissible Scope of Defendants' Discovery Regarding Plaintiffs' products, the Plaintiffs argue that in patent infringement cases, the bulk of the relevant evidence comes from the accused infringer, and further contend that the focus in such cases is on the actions of the infringer and not the actions or the products of the patent holder. In response, the Defendants contend that the requested discovery is relevant because of the broad nature of the damages sought by the Plaintiffs, including a request for lost profits and a reasonable royalty. The Defendants further contend that such requests are also relevant to the defenses raised by Defendants in the action, including the defenses of intervening rights, inequitable conduct and patent misuse. The Defendants also argue that their defenses related to indefiniteness, and the contention that the Plaintiffs' products do not contain the limitations required by the patent, render the requested discovery relevant.[8] The Plaintiffs counter that they have produced numerous responsive documents including: 1) the entire product catalogue illustrating the Plaintiffs' products, including descriptions of those products; 2) part numbers for each of their products not contained in the product catalogue; 3) detailed sales information listing the sales by customers and by year; and, 4) various non-privileged correspondence between the Plaintiffs and the patent inventor, and between the Plaintiffs and their various distributors and resellers concerning the Defendants' products (DE # 96 at 2). In addition, the Plaintiffs maintain that their products and/or processes of manufacturing are simply not relevant to this matter, even given that the Plaintiffs seek to recover lost profits and/or reasonable royalty damages in their Complaint. In this regard, the Plaintiffs acknowledge that to determine a reasonable royalty, the Plaintiffs may attempt to create a “hypothetical negotiation” between the patentee and the infringer, but contend that the “hypothetical negotiation” analysis assumes that the patent was valid, enforceable and infringed. Plaintiffs thus contend that only discovery related to the licensing agreements and/or the hypothetical negotiation, as opposed to the Plaintiffs' manufacturing processes is relevant. Similarly, as to lost profit damages claims, Plaintiffs contend that none of the factors typically used by courts to determine lost profits require the Plaintiffs to render an opinion regarding the Plaintiffs' own products vis-a-vis the patent in-suit, as sought in the Defendants' discovery requests. Rather, Plaintiffs contend that they must only demonstrate that they have the capability to make the sales that the Defendants made through the infringing product. Plaintiffs therefore argue that discovery should be limited to only information and documents used to recreate the market including demonstrating demand for the patented market and that Plaintiffs are a participant in the relevant market. Finally, the Plaintiffs dispute that the defenses raised herein require the broad scope of discovery sought by the Defendants. *6 For the following reasons, the undersigned concludes, that under the facts of this case, in light of the damages sought by the Plaintiffs and the defenses raised by the Defendants, the Defendants are entitled to discover information related to the Plaintiffs' products and manufacturing capabilities for purposes of calculating a reasonable royalty and/or lost profits. A party is entitled to discovery “regarding any matter, not privileged, that is relevant to the claim or defense of any party.” Fed. R. Civ. P. 26(b)(1). In order to recover lost profits damages, a patentee must show a reasonable probability that, ‘but for’ the infringement, it would have made the sales that were made by the infringer. Golden Blount, Inc. v. Robert H. Peterson Co., 438 F.3d 1354, 1371 (Fed. Cir. 2006) (citing Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1545 (Fed. Cir. 1995) (en banc)). To show “but for” causation and entitlement to lost profits, a patentee must reconstruct the market to show “likely outcomes with infringement factored out of the economic picture.” Grain Processing Corp. v. Am. Maize-Prods., 185 F.3d 1341, 1350 (Fed. Cir. 1999). Such market reconstruction, though hypothetical, requires “sound economic proof of the nature of the market.” Id. accord Ericsson, Inc. v. Harris Corp., 352 F.3d 1369, 1377 (Fed. Cir. 2003). A patentee may establish a prima facie case for lost profits by application of the four-factor test set forth in Panduit Corp. v. Stahlin Brothers Fibre Works, Inc., 575 F.2d 1152, 1156 (6th Cir. 1978), which requires that the patentee establish: (1) demand for the patented product; (2) absence of acceptable non-infringing substitutes; (3) manufacturing and marketing capability to exploit the demand; and (4) the amount of the profit it would have made. Rite-Hite Corp., 56 F.3d at 1545 (citing Panduit, 575 F.2d at 1156). Once the patent owner establishes a reasonable probability of “but for” causation, “the burden then shifts to the accused infringer to show that [the patent owner's ‘but for’ causation claim] is unreasonable for some or all of the lost sales.” Rite-Hite, 56 F. 3d, at 1544. In this case, much of the information sought by the Defendants is relevant to determining whether the Plaintiff has established a prima facie case for lost profits under the Panduit factors. In BIC Leisure Products, Inc., v. Windsurfing International, Inc., 1 F. 3d 1214, 1216 (Fed. Cir. 1993), for example, the reviewing court reversed the trial court's determination, based upon a modified Panduit test, that the patent holder had satisfied the “but for” test for entitlement to lost profits. The Court opined that the trial court improperly failed to evaluate the market of the infringing and non-infringing products, including failing to consider the cheaper cost of the competitor's infringing product compared to the cost of the patented product where the difference in cost was due, in part, to the patent holder's continued use of a less efficient production process. Id. at 1216-1219. Thus, information regarding the Plaintiffs' method of manufacturing a product, including costs associated with that method, may be relevant to establishing and/or limiting the damages that the Plaintiffs may be entitled to recover under a claim for lost profits. In addition, the Defendants herein may seek to challenge the second Panduit factor, relating to the Plaintiffs' claims that there is an absence of noninfringing substitutes. Indeed, evidence that there is an absence of acceptable non-infringing substitutes “is relevant to, and is often a central issue, in assessing such ‘but for’ causation.” Abbott Diabetes Care Inc. v. Roche Diagnostics Corp., Case No. C05-03117 MJJ, 2007 WL 4166030, *2 (N.D. Cal. Nov. 19, 2007) (citing Rite–Hite Corp. v. Kelley Co., Inc., 56 F.3d 1538, 1545 (Fed. Cir. 1995)). Notably, in Rite-Hite Corp., the court, in evaluating whether the patent holder met its burden of demonstrating that there was an absence of noninfringing substitutes for purposes of determining lost profits, observed that if other products made or sold by the patent holder qualified as acceptable non-infringing substitutes and were not patented by the patent holder, the patent holder would have to prove that its customers would not have obtained the non-infringing substitute product from another third party in order to satisfy the second Panduit prong. Id. at 1548. Thus, information about other products sold and/or manufactured by the Plaintiffs, including whether those products are covered by the Plaintiffs' patent at issue, or are not patented, at all, may well be relevant to determining whether the Plaintiffs are able to establish the absence of non-intervening substitutes for purposes of calculating lost profits. *7 Similarly, the requested discovery is relevant to determining a reasonable royalty. In Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970), the court set forth a number of non-exhaustive factors relevant to determining the amount of a reasonable royalty for a patent license, including: .... 8. The established profitability of the product made under the patent; its commercial success; and its current popularity. 9. The utility and advantages of the patent property over the old modes or devices, if any, that had been used for working out similar results. 10. The nature of the patented invention; the character of the commercial embodiment of it as owned and produced by the licensor; and the benefits to those who have used the invention. ... 13. The portion of the realizable profit that should be credited to the invention as distinguished from non-patented elements, the manufacturing process, business risks, or significant features or improvements added by the infringer. Id. at 1120. These factors clearly urge that discovery beyond that suggested by Plaintiffs is relevant for purposes of determining a reasonable royalty. Particularly, factors 8, 9, 10 and 13 require discovery beyond the catalogue, products part numbers and sales records, and certain correspondence produced by the Plaintiffs. Therefore, while it is unclear at this point in the litigation the exact method in which the Plaintiffs will attempt to prove their loss profits and/or reasonable royalty damage claims, the Plaintiffs' other products, manufacturing capabilities and profit margin clearly are relevant to a determination of those damages, and thus are discoverable. Further, as to Defendants' defenses, to the extent that the Defendants seek discovery to establish the parameters of the patent, the requested discovery is relevant. In this regard, although not argued by either party in their papers, it is worth noting that the Plaintiffs have alleged that the Defendants' products infringe upon the reexamined '881 patent both “literally and/or under the Doctrine of Equivalents.” (DE # 1 at 7). Under the doctrine of equivalents, “a product or process that does not literally infringe ... the express terms of a patent claim may nonetheless be found to infringe if there is ‘equivalence’ between the elements of the accused product or process and the claimed elements of the patented invention.” Warner–Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 21 (1997). One way of proving infringement under the doctrine of equivalents is to show, for each claim limitation, that the accused product “performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented product.” Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1312 (Fed. Cir. 2009). This is a question of fact. Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1313 (Fed. Cir. 2003). Thus, the Plaintiffs' method and/or manufacturing process, for example, is relevant to determining whether the Defendants' products, actually perform substantially the same functions in the same way as the Plaintiffs' patented products, and whether certain characteristics of the Plaintiffs' products exist as only part of the manufacturing process, e.g. extruding process, as opposed to those elements of the product which fall within the scope of the patent, e.g., longitudinal slots. *8 In addition, although the Plaintiffs seek to limit the temporal scope of certain of the Defendants' discovery requests, the Plaintiffs have failed to demonstrate that the discovery sought by the Defendants beyond the dates proposed by the Plaintiffs would not be relevant to this action. By way of example, the Plaintiffs suggest that the Defendants should be limited to obtaining communications between the time that the Plaintiffs submitted the patent application to the USPO and the date that patent was issued. Plaintiffs contend that only this time frame is relevant for purposes of the Defendants' inequitable conduct claims because the only facts relevant for establishing inequitable conduct is the conduct of the Plaintiffs while prosecuting the patent claim, and not the Plaintiffs' actions after the patent was obtained. However, the Plaintiffs fail to recognize that communications that occur after the patent was issued may well reflect and refer to conduct occurring prior to the issuance of the original '881 patent, particularly under the facts of this case where the reexamined patent was not issued until December of 2011. Finally, the Plaintiffs have not contended that production of the requested discovery will result in an undue burden or hardship on the Plaintiffs. Therefore, the Defendants are entitled to discover information about the Plaintiffs' manufacturing process and capabilities, as well as information regarding the Plaintiffs' other similar products. Thus, to the extent that the Plaintiffs objected to responding to certain of the Defendants' discovery requests on the basis that the Plaintiffs' sales, products, manufacturing and installation processes are irrelevant to the instant patent litigation, the Plaintiffs' objections are overruled.[9] The Plaintiffs shall respond to the Defendants' discovery requests consistent with the above analysis on or before June 28, 2013. B. Specific Discovery Disputes 1. Plaintiffs' Motion to Compel (DE # 84)[10] a. Defendants' Responses to Plaintiffs Interrogatories 2-9 *9 Plaintiffs claim that the Defendants have failed to sufficiently identify the Defendants' products as requested in Plaintiffs' Interrogatories Nos. 2-9, and contend that the Defendants have instead improperly directed the Plaintiffs to answers provided to discovery requests during the prior litigation between the Parties. In response, Defendants contend that any disputes were resolved when the Defendants served their Third Supplemental Answers to Interrogatories on April 10, 2013. In addition, the Defendants contend that they have provided the Plaintiffs with invoices and other documents which contain product numbers, identification and prices. In their Reply, the Plaintiffs concede that the Defendants have provided supplemental responses to the Plaintiffs' discovery requests but state that deficiencies still exist in a number of the responses, as follows: Interrogatory No. 2 Plaintiffs' Interrogatory No. 2 states the following: Please identify all products or items currently and previously sold, offered for sale, developed, installed or used by you that involve, include or consist of Teak Decking, including their common commercial names, a description of each of the products and items and the model number or code or similar identifying marking and retail and wholesale prices for each. The Plaintiffs contend that the Defendants have failed to adequately provide the requested information in response to this Interrogatory because they have not provided information for the time period between March 2010 through September 2011 as to either Defendant and further contend that the Defendants' failure to provide an adequate answer has prevented the Plaintiffs from providing adequate responses to the Defendants' Interrogatories Nos. 16 and 23, for which the Defendants seek to compel better answers from the Plaintiffs.[11] The undersigned concludes that the information sought by the Plaintiffs in Interrogatory No. 2 is relevant. The Defendants do not contend otherwise. Accordingly, the Defendants must provide the requested information. However, at this juncture it remains unclear whether the Defendants have now provided all of the requested information in response to this Interrogatory, and if not, the basis for the Defendants' failure to do so for the particular time period identified by the Plaintiffs. Thus, in light of the undersigned's above ruling with regard to the application of the doctrine of intervening rights to this action, and assuming that the Defendants have withheld information responsive to this Interrogatory pursuant to that doctrine, the Defendants' objections are overruled. The Defendants shall provide a supplemental response to the Plaintiffs' Interrogatory No. 2 which includes responsive information for the time period of March 2010 through September 2011, for each Defendant, to the extent that the Defendants have failed to do so. Said supplemental response shall be served no later than June 28, 2013. Interrogatory Nos. 6, 7 & 9 *10 Interrogatory Nos. 6 and 7 seek information about distributors and retailers of the products identified in response to Interrogatory No. 2. Similarly, Interrogatory No. 9 requests the Defendants to identify all agreements, licenses, and financial documents regarding or pertaining to the use, sale or offer for sale relative to each and every items which identified in the answer to Interrogatory No. 2. As explained above, in response to Interrogatory No. 2, Defendants identified products that it has sold since December 6, 2011, but for products sold prior to that time only referred Plaintiffs to the Defendants' discovery answers from the prior litigation. Similarly, in response to Interrogatories 6, 7 and 9, for the time period between December 2006 and February 2010, the Defendants refer the Plaintiffs to the answers provided in the prior litigation and from that time forward, refer the Plaintiffs to documents produced in response to certain of the Plaintiffs' Requests for Production. Plaintiffs contend that this is improper because the Defendants fail to point to the exact discovery responses from the prior litigation which are responsive to these Interrogatories, and also fail to explain whether the Defendants are relying on the objections, including confidentiality, raised in the responses from the prior litigation. As there is no dispute that the information sought by the Plaintiffs in Interrogatory No. 2 is relevant, the same result attains to Interrogatory Nos. 6, 7 and 9. Accordingly, the Defendants must provide the requested information. However, again, at this juncture it remains unclear whether the Defendants have now provided all of the requested information in response to these Interrogatories, and if not, the basis for the Defendants' failure to do so for the particular time period identified by the Plaintiffs. Therefore, the Defendants shall provide supplemental responses to Plaintiffs' Interrogatory Nos. 6, 7 and 9 which provide a full and complete answer to the Interrogatories without reference to the responses given in the prior litigation between the Parties, to the extent that the Defendants have failed to do so. Further, to the extent that the Defendants have raised objections based upon confidentiality, those objections are overruled to the extent that the Stipulated Protective Order in the case (DE # 48), protects such information from disclosure. In addition, to the extent that the Defendants have failed to respond to the Interrogatories for the entire time period requested by the Plaintiffs, the Defendants shall include the information for any missing time periods in their supplemental responses. Said supplemental responses shall be served no later than June 28, 2013. b. Waiver of Attorney-Client-Privilege between Alvin Rockhill and the Defendants In the Plaintiffs' Request for Production Nos. 1 and 3, the Plaintiffs sought documents relating to meetings between the Defendants and third parties regarding the '881 patent and documents pertaining to any communication on or after December 6, 2011, between the Defendants and their experts pertaining to the instant proceedings. The Defendants objected to these Requests to the extent that they sought documents protected from disclosure by the attorney-client privilege and specifically objected to Request for Production No. 3 to the extent that it sought attorney-client privileged correspondence between Attorney Alvin Rockhill and the Defendants. The Plaintiffs contend that because Mr. Rockhill, who represented the Defendants in the ex parte reexamination patent proceedings, has been designated by the Defendants in this case as an expert on various issues including claims construction, infringement, validity and inequitable conduct, the Plaintiffs are entitled to discover not only the documents that Mr. Rockhill relied upon in formulating his opinion but are entitled to all communications relating to the subject matter of his proposed testimony. In response, the Defendants contend that any waiver of the attorney-client privilege is limited to expert disclosures as required by Fed. R. Civ. P. 26 (b)(4). Defendants therefore assert that they are only required to disclose Mr. Rockhill's communications with Defendants' Counsel for issues that: 1) relate to compensation; or 2) identify facts or data and/or assumptions that the Defendants' attorney provided to Mr. Rockhill that he relied upon in forming the opinions to be expressed. In addition, the Defendants contend that disclosure is limited to work product documents which are factual and non-opinion in nature. *11 In the Motion to Compel, the Plaintiffs state that on March 13, 2013, the documents at issue were turned over to the Plaintiffs (DE # 84 at 13), but still assert that certain documents included on the Defendants' Amended Privilege Log (approximately 80), should be submitted to the Court for an in camera review to determine whether the attorney-client privilege applies to the correspondence identified in that log. For the following reasons, the undersigned grants the Plaintiffs' Motion to Compel the documents at issue, in part. First, it is worth noting that it is undisputed that Attorney Alvin Rockhill represented William Gribble in the prosecution of other patents and represented the Defendants in the ex parte reexamination of the prior '881 patent, and now has been retained by the Defendants as an expert to testify on various issues. In addition, although the undersigned granted the Defendants the opportunity to brief the waiver issue on or before March 13, 2013, or to turn over the documents at issue to the Plaintiffs, the Defendants elected not to submit a brief, and instead turned over, at least, some of the documents in dispute. Nonetheless, the Defendants argue in their Response to the Plaintiffs' Motion to Compel that any requirement that Mr. Rockhill disclose information because of his designation as an expert in this case be limited to disclosure of work-product facts or data upon which he relied to formulate his opinion, and not be extended to all work-product including opinion work product. Although it is unclear if the documents at issue have been produced by the Defendants, that notwithstanding, the relevant case law does not support the Defendants' interpretation of the scope of the waiver of the attorney client privilege under the facts of this case. In Multiform Dessicants Inc., v. Stanhope Products, Co., Inc., 930 F. Supp. 45 (W.D.N.Y. 1996) a patent infringement action, the court rejected a plaintiff's argument that by designating its patent attorney as both a fact witness and an expert witness, the plaintiff had not waived the attorney client privilege beyond those documents that the attorney expert had considered or relied upon in formulating his opinion. In so doing, the court noted that the expert's report reflected that he was going to provide testimony on a variety of issues including the defendant's infringement, the defendant's defenses of noninfringement and inequitable conduct, and the prior art. Id. The court therefore concluded the plaintiff had “waived the attorney-client privilege as to all communications pertaining to the patent prosecution.” Id. at 48-9; accord Mushroom Assoc., v. Monterey Mushrooms, Inc., Case No. C-91-1092 BAC (PJH), 1992 WL 442898, *4 (N.D. Cal. Aug. 21, 1992) (finding attorney client privilege waived and directing production of all documents related to patents where plaintiffs designated attorney who conducted prosecution of patents as an expert witness). Similarly, in Vaughan Furniture Co. Inc., v. Featureline Manufacturing, Inc., 156 F.R.D. 123 (M.D.N.C. 1994), the court opined that a party had waived both the attorney client privilege and work product protection by designating its attorney as an expert witness in an infringement action. The court reasoned that because the party intended to use the attorney's opinions to affect the factfinding process, the party's waiver extended to opinion work product documents to the extent the opinions contained therein related to the subject matter about which the expert planned to testify at trial. Id. at 128. The court therefore concluded that the attorney/expert had to produce all documents he considered in the process of formulating his expert opinion, including documents containing opinions, even if the opinions were rejected as a basis for his opinions. Id. The court however held that documents that were totally unrelated to the subject matter of the expert's opinion, e.g., documents reviewed by the attorney in order to provide help in answering discovery requests and discussing matters of trial strategy, did not have to be produced. Id. at 128-9. *12 In the case at bar, the expert report submitted by Mr. Rockhill states that he has been engaged by the Defendants to provide his opinion as to issues relating to the construction of the claims issued in the ex parte reexamination of the '881 patent, inequitable conduct during the prosecution and procurement of the patent, and analysis of the Defendants' products relative to the claims issues in the '881 patent (DE # 121-3). Thus, the Defendants have waived the attorney client privilege as to all communications pertaining to the patent prosecution. In addition, the Defendants have waived any work product protection, including opinion work product, that relates to the subject matter of his testimony. Despite the above authorities, the Defendants cite to In Re Echostar, 448 F. 3d 1294 (Fed. Cir. 2006), for the proposition that the Plaintiffs should not be permitted to obtain opinion work product beyond fact and/or non-opinion work product. However, In Re Echostar involved an advice of counsel waiver rather than a waiver based upon a party's designation of its attorney as an expert witness. Thus, it is distinguishable from the instant case, as the question therein was the purported infringer's state of mind, and only the opinion advice provided by the attorney to the infringer was relevant, rather than all of the attorney's opinion work product related to that advice. In this case, however, it is the attorney's very own opinions which form the basis of the expert's opinions. Thus, to the extent that those opinions relate to the subject matter about which the expert will testify, they must be disclosed. It is for this same reason that the Defendants' contention that the disclosures should be limited to those materials that are required to be disclosed by an expert pursuant to the current version of Federal Rule of Civil Procedure 26 is without merit. The Defendants fail to appreciate the distinction between disclosure of attorney communications relied upon by an expert as contemplated by Rule 26, and communications between an attorney and the client regarding the subject matter which the attorney will testify about as an expert at trial, which contain that attorney's own opinions. Accordingly, the Defendants must produce responsive documents between Mr. Rockhill and the Defendants which relate to those subjects identified in Mr. Rockhill's expert report including, construction of the claims issued in the ex parte reexamination of the '881 patent, inequitable conduct during the prosecution and procurement of the patent, and analysis of the Defendants' products relative to the claims issues in the '881 patent. Finally, although the Plaintiffs have requested that the Court conduct an in camera review of the documents identified in the Defendants' Amended Privilege Log which relate to communications between Mr. Rockhill or his office and the Defendants, the undersigned concludes that an in camera inspection is not necessary. The undersigned has reviewed the Defendants' Amended Privilege Log and notes that it appears that all of the correspondence between either Mr. Rockhill or his office and the Defendants, which have been designated as attorney client and work product protected, identify the document as either “regarding prosecution of Defendants' patent,” or “regarding reexamination of Whitaker patent.” Thus, the Defendants, now having the benefit of the undersigned's ruling on the application of any waiver based upon the Defendants' designation of Mr. Rockhill as an expert witness, shall identify and produce those documents previously withheld which fall within the scope of the waiver as determined by the undersigned. Said production must be made on or before June 28, 2013. c. Confidentiality Designations *13 In the Motion to Compel, the Plaintiffs seek to have the Court remove several of the “Attorneys' Eyes Only” designations that the Defendants have placed on various documents. The Defendants counter that the documents explain in detail how the Defendants manufacture their product and thus contains trade secrets and sensitive commercial information which Defendants do not want disclosed to a direct competitor like Flexiteek. In reply, the Plaintiffs state that this dispute has been resolved as to most of the documents at issue because the Defendants have agreed to remove the “Attorneys' Eyes Only” designation on several of the documents. However, the Defendants maintain the “Attorneys' Eyes Only” designation on Documents PLAS 297-353 is proper, and the Plaintiffs therefore request that the Court conduct an in camera review of those documents to determine whether they should retain that designation. The documents at issue are two analyses of the Defendants' product conducted by Drs. Adel F. Halasa and Avraam I. Isayev. The undersigned has conducted an in camera review of those documents and concludes that the analyses do, in fact, contain information regarding the manufacturing process of the Defendants' purported infringing product. However, a portion of the documents (PLAS 000305-000348) appear only to contain the Curriculum Vitae (“CV”) of Dr. Isayev. The Stipulated Protective Order in this case permits the Parties to designate particular documents as “Attorneys' Eyes Only” which limits the disclosure of such documents to Counsel for the Parties, and experts retained by the Parties, once an agreement to abide by the Protective Order is executed by a particular expert (DE # 48 at 3-4). The Plaintiffs have not explained why the analyses at issue should not be designated “Attorneys' Eyes Only,” and/or the need for Plaintiffs' Counsel to show the analyses to the Plaintiffs. Therefore, the Plaintiffs' request to have the “Attorneys' Eyes Only” designation lifted as to the two analyses provided by Drs. Halasa and Avraam (PLAS 000297-000304 and PLAS000349-000353) is denied. However, the CV of Dr. Isayev appears to contain no information that would require an “Attorneys' Eyes Only” designation, and thus that designation is lifted, and may be shown to the Plaintiffs. d. Email Correspondence Produced by Defendants that Omits the Sender, Recipient, Date and Subject of the Emails In response to the Plaintiffs' request to compel the Defendants to produce emails which display the sender, receipt, date and subject of the emails, the Defendants contend that the communications at issue are not actually emails but were documents printed from the Defendants' order entry system. The Defendants state that they are attempting to trace the documents back to the computer from which they were sent or received in an effort to provide Plaintiffs with the requested sender, recipient and date information. In the Reply and the Joint Statement of Unresolved Discovery Disputes, the Plaintiffs state that the Defendants have still failed to produce the requested information. In light of the Defendants' statement in their Response to the Motion to Compel, the Defendants shall provide the information requested from the emails and/or provide a written response to the applicable discovery requests stating that the Defendants have been unable to trace and/or retrieve the requested information. Said response shall be provided on or before June 28, 2013. e. Defendants' Objections to Requests for Production Nos. 15-17[12] *14 The Plaintiffs seek to compel responses to Requests for Production Nos. 15-17 which generally seek the production of documents relating to opinions about the infringement and validity of the '881 patent. Specifically, Request for Production No. 15 requests “all documents that refer or relate to opinions involving the issue of patent infringement in connection with the '881 Patent.” Request for Production No. 16 requests “all documents that refer to, relate to, or regard opinions involving the issue of patent validity and/or potential invalidity in connection with '881 Patent.” Request for Production No. 17 requests “all documents that relate or refer to any thing, correspondence or communication of any kind that set forth, ... a comparison between the claims of the '881 Patent and each Teak Decking product....” The Defendants object to these Requests based upon the doctrine of intervening rights to the extent that the Requests seek information beyond the “investments made or business commenced” by the Defendants (DE # 89 at 13). The Defendants also contend that the documents sought in these Requests far exceed the scope of this action by requesting information on all of the Defendants' products even if those products are not alleged to be infringing products. The undersigned disagrees with the Defendants' interpretation of the Plaintiffs' Requests at issue. The Plaintiffs' requests properly seek to obtain documents which compare the Defendants' products to the claims of '881 patent, and do not seek information about all of the Defendants' products. In addition, as discussed at length above in the Doctrine of Intervening Rights section, that doctrine does not limit the scope of discovery in the manner suggested by the Defendants but rather necessarily permits the Plaintiffs to discover information regarding the Defendants' products and product lines which may infringe upon the '881 reexamined patent. Therefore, the Defendants objections are overruled. On or before June 28, 2013, the Defendants shall produce additional documents responsive to the Plaintiffs' Requests for Production Nos. 15-17, to the extent that those documents relate to the '881 patent as described in those Requests. f. Request for Production No. 30 Request for Production No. 30 seeks “all correspondence with any third party or the public relating or referring, directly or indirectly to either of the Plaintiffs, their products, patent, principals or any litigation relative thereto.” Defendants object to this Request as being overly broad as to time and scope and contend, much like the Plaintiffs' Request for Production No. 12, which this Court limited in a prior informal discovery order (DE # 52), that the Request should also be so limited.[13] In addition, the Defendants contend that they have already produced documents responsive to this Request. In their Reply, Plaintiffs contend that this Request is not over broad and contend that unlike the Defendants' response to Request for Production No. 12, which sought correspondence between Defendants and distributors of Teak Decking products which the Court limited in scope because Defendants had already produced over 1000 responsive documents and the Plaintiffs were able to obtain the requested information from other discovery requests, the Defendants have only produced forty-four documents responsive to this request. In addition, the Plaintiffs contend that such documents are relevant to the Plaintiffs' claim under the Florida Deceptive and Unfair Trade Practices Act. *15 The undersigned concludes that the requested documents are relevant and must be produced. In this regard, the undersigned notes that the Defendants have not contended that production of such documents would be unduly burdensome. Thus, given that the Defendants have not disputed that they have only produced forty-four documents in response to this Request, and given that the particular documents, if any exist, are likely relevant to the Plaintiffs' Florida Deceptive and Unfair Trade Practices claims, the Defendants are directed to produce additional responsive documents on or before June 28, 2013. g. Gaps in Time for Production of Documents for Requests for Production Nos. 11 and 12 The Plaintiffs contend that the Defendants' responses to Request for Production Nos. 11 and 12, which sought correspondence between Tek-Dek, Ltd. and Defendants and correspondence between Defendants and distributors of Teak Decking products, appear to have gaps in their production and state that the Defendants have failed to confirm that all responsive documents were produced. In response, the Defendants contend that they have advised the Plaintiffs that they have produced all responsive emails. Plaintiffs contend that the last email produced required a response from Mr. Gribble and that no response to that email was produced. In addition, the Plaintiffs contend that at Mr. Gribble's deposition, he would not confirm whether he responded to that last email produced by the Defendants. Therefore, the Plaintiffs suggest that not all emails have been produced in response. The Plaintiffs do, however, acknowledge that the Defendants have agreed to produce any omitted emails between the Defendants and Tek-Dek, Ltd. Therefore, on or before June 28, 2013, the Defendants shall produce any outstanding correspondence responsive to this Request and/or confirm in writing, by way of a supplemental response to Request for Production Nos. 11 and 12, that no additional emails exist. h. Request for Production No. 25 Plaintiffs' Request for Production No. 25 sought all documents which demonstrate the inventive/creative steps which the Defendants took to arrive at the chemical compositions of their Teak Decking products. The Defendants objected to this request as seeking proprietary information, trade secrets and other confidential commercial information. In the Motion to Compel, the Plaintiffs contend that because there is a stipulated confidentiality order, the Defendants' proprietary concerns are unwarranted. In response, the Defendants contend that their objection actually was to the relevance of the particular Request because the '881 patent does not claim any particular chemical composition and thus, the documents do not bear on the infringement claims. In their Reply, the Plaintiffs contend that the requested information is directly relevant to the patent infringement claims because it demonstrates the process which the Defendants utilize to arrive at making different colors, designs, textures, surfaces and other material properties for their Teak Decking products, which may increase or decrease the ability of the product to be curved and demonstrate the products' response to heat. Based upon the nature of the patent at issue, and given that the Plaintiffs' claims of infringement will necessarily involve an analysis of the properties of the Defendants' Teak-Decking products, the Defendants' objection is overruled and the Defendants are directed to produce documents responsive to this Request, to the extent that the documents reflect the process used in making the Defendants' products. However, absent an additional showing of need to disclose the documents to the Plaintiffs themselves, as opposed to Plaintiffs' Counsel and the Plaintiffs' experts, given the proprietary nature of the Defendants' process in making their Teak Decking and related products, the documents may be designated “Attorneys Eyes Only.” The Defendants shall produce said documents on or before June 28, 2013. i. Miscellaneous Attachments *16 The Parties dispute whether various documents that Defendants promised would be produced and were referenced in responses as “Attached” to various emails were provided. To the extent that the Defendants have failed to produce any outstanding documents that the Defendants agreed to produce in response to the Plaintiffs' Interrogatories or Requests for Production, the Defendants shall do so, on or before June 28, 2013. 2. Defendants' Motion to Compel[14] a. Interrogatory No. 9 1) Waiver of Attorney Client Privilege as to Foreign Patent Proceedings The Defendants have filed their Motion to Compel seeking to have the Plaintiffs provide a response to Interrogatory No. 9, which requests that the Plaintiffs “identify each patent application filed by Flexiteek in a foreign country which is related to the '881 Patent, or which contains similar, with at least one element the same, to any one or more of the claims and/or alleged inventions of the '881 Patent...”. The Plaintiffs objected to the Interrogatory, among other things, to the extent it sought information which violated the attorney client privilege and any work product protected information. In response, the Defendants contend that in the last trial involving the instant litigants, Svein Abrahamsen, the President and CEO of Plaintiff Flexiteek International AS, (“FIAS”) waived any objections to the production of purported attorney-client privileged documents by raising “advice of counsel” as a defense in that action. The Plaintiffs counter that the advice of counsel has not been raised in this action, and therefore contend that the privilege has not been waived. At the outset, based upon the prior litigation, it is clear that the Plaintiffs waived, in part, the attorney client privilege and work product protection in that litigation by relying on the advice of counsel defense in response to the Defendants' claims of inequitable conduct. That privilege and protection are not now restored simply because new litigation has commenced. In other words, the Plaintiffs' waiver of the attorney client privilege and work product protection related to the advice of counsel defense exists to the same extent in this litigation as it did during the prior litigation. Indeed, once a privilege has been waived, the privilege is generally lost for all purposes and in all forums. (Genentech, Inc. v. U.S. Int'l Trade Comm'n, 122 F.3d 1409, 1416 (Fed. Cir. 1997)). Thus, documents that were created before and during the prior litigation are subject to the same waiver in this action. The Defendants must therefore produce all documents from that litigation that were withheld solely on that basis, to the extent those documents fall into the scope of that waiver discussed below. The Court therefore now turns to what remains in dispute as to this issue in this case; whether the attorney client privilege and/or work product doctrine has been waived as to documents created after the prior litigation based upon the likelihood that the advice of counsel defense will be raised in this action. The undersigned answers that query in the affirmative for the following reasons. First, as correctly argued by the Defendants, they have raised the issue of inequitable conduct in their Affirmative Defenses in this litigation, much like they did in the prior litigation.[15] The Defendants therefore contend that the Plaintiffs are likely to raise the advice of counsel defense in this litigation as well. In response, although the Plaintiffs stop short of disavowing their intention to raise the advice of counsel defense in this action, they nonetheless argue that advice of counsel has not yet been raised in the instant action, and thus contend that the inequitable conduct allegations raised by the Defendant are irrelevant to this issue.[16]However, the record, belies the Plaintiffs' contentions. *17 Indeed, according to the Declaration of Svein Abrahamsen, which was filed in the previous litigation between the Parties related to the original '881 patent, in 2002 FIAS acquired a patent for synthetic decking material in New Zealand, over which FIAS initiated litigation against Tek-Dek NZ, LTD (DE # 81 at 10). The Tek-Dek action was ultimately settled but not before Tek-Dek filed an application seeking the revocation of the New Zealand patent. The Declaration states that the decision of the New Zealand patent office was rendered on March 31, 2005, prior to the '881 original patent being issued by the USPO. However, based upon the advice of Counsel in Norway, Mr. Abrahamsen elected not to submit additional materials to the USPO related to the newly sought patent, including any prior art determinations by the New Zealand Patent Office. After reviewing Mr. Abrahamsen's Declaration, which has been submitted in support of the Defendants' Motion to Compel, and considering the record as a whole, the undersigned concludes that the advice of counsel defense is likely to be at issue in this case, where the Defendants claim inequitable conduct by the Plaintiffs related to the reexamined '881 patent. It is for this reason that this case is distinguishable from Adobe Systems, Inc. v. Wowza Media Sys., LLC, Case No. 11-2243 CW (JSC), 2012 WL 6554003 (N.D. Cal. Dec. 14, 2012), which the Plaintiffs cite to in support of their assertion that the advice of counsel defense is irrelevant to the instant case. Unlike the Defendants herein, the defendants in Adobe did not allege inequitable conduct on the part of the plaintiff in obtaining the patent at issue, and thus the advice of counsel issue was never raised. Here, the Plaintiffs have previously raised the advice of counsel defense to inequitable conduct allegations involving the original patent. Moreover, as stated above, the Plaintiffs have refused to confirm that they do not intend to raise the advice of counsel defense in response to the Defendants' claim of inequitable conduct. Thus, it is patently unfair to permit the Plaintiffs to leave the door open to raising such a defense at trial, and to prevent the Defendants from obtaining discovery relevant to that defense. Therefore, the defense of advice of counsel which the Plaintiffs raised in defense of the inequitable conduct claims for the original '881 patent is relevant to the instant action.[17] Accordingly, the Plaintiffs have waived the attorney client privilege and work product protection for certain documents based upon the advice of counsel defense asserted by Svein Abrahamsen in the prior litigation, which may similarly be raised herein. The Court must now therefore determine the scope of the waiver of the attorney client privilege and/or work product protection based upon the relevance of the Plaintiffs' defense of advice of counsel in this action as to documents that were created after the prior litigation. In this regard, the Plaintiffs assert that assuming arguendo that the possibility that the advice of counsel defense will be raised in this action constitutes a waiver of the attorney client privilege and work product protection, said waiver should be construed extremely narrowly. Specifically, Plaintiffs assert that disclosure should be limited to legal advice given about whether matters related to prior art should have been disclosed to the USPO, which was the only issue to which the advice of counsel defense was raised in the prior litigation. *18 In In re EchoStar, 448 F.3d, 1298 (Fed. Cir. 2006), the court addressed the scope of waiver of privilege in the context of an advice of counsel defense to a willful patent infringement claim. The court concluded that an alleged infringer waives aspects of both the attorney-client privilege and work-product protection when the infringer raises the advice of counsel defense. Id. at 1300-01. In arriving at its conclusion, the court stated that the advice of counsel defense “requires the court to decide, inter alia, whether counsel's opinion was thorough enough to instill a belief in the infringer that a court might reasonably hold the patent is invalid, not infringed, or unenforceable.” Id. (internal quotations and citations omitted). Specifically with respect to the attorney-client privilege, the court opined, “when a party defends its actions by disclosing an attorney-client communication, it waives the attorney-client privilege as to all such communications regarding the same subject matter.” Id. at 1301. Similarly, the court held that work product protection is waived “for any document or opinion that embodies or discusses a communication to or from [an accused infringer] concerning whether that patent is valid, enforceable, and infringed by the accused.” Id. at 1304; accord Outside the Box Innovations, Inc. v. Travel Caddy, Inc., 455 F. Supp. 2d 1374, 1376 (N.D. Ga. 2006) (noting that the focus in determining the scope of waiver is on the act of communicating an opinion from counsel to client.) (citations omitted). Based upon the relevant case law, and the specific facts of this case, the undersigned concludes that the Plaintiffs have waived the attorney client privilege and the work product protection to the extent that Svein Abrahamsen asserted the advice of counsel defense in the prosecution of the original '881 patent. Therefore, in response to Defendants' Interrogatory No. 9, the Plaintiffs must produce any withheld documents or correspondence between Mr. Svein Abrahamsen and his attorneys which relate to his failure to present, based upon the advise of counsel, prior art and/or decisions of the New Zealand patent office related to prior art in the prosecution of the New Zealand patent to the USPO during the prosecution of the '881 patent at issue in the instant case. The undersigned notes that the Defendants have requested that the Court conduct an in camera review of the documents identified in the Plaintiffs' privilege log to determine which documents fall into the scope of the waiver. However, such an in camera review is not necessary in this case where the Defendants do not allege that the Plaintiffs have improperly identified certain documents as attorney client privileged or work product protected but rather assert that those protections have been waived based upon the advice of counsel defense. Thus, the Plaintiffs, now having the benefit of the undersigned's ruling on the application of any waiver based upon the Defendants' allegation of inequitable conduct and the Plaintiffs' likely defense of advice of counsel to that claim, shall identify and produce those documents previously withheld which fall within the scope of the waiver as determined by the undersigned.[18] The Plaintiffs shall therefore produce said documents on or before June 28, 2013.[19] 2) Interrogatory No. 9-Shifting of Costs Related to Production In addition, to the objection that the information sought by Interrogatory No. 9 is protected by the attorney-client privilege and work product doctrine, the Plaintiffs also contend that the costs associated with producing all of the foreign patent history is unduly burdensome. In support of this assertion, the Plaintiffs have submitted the Declaration of Peter Thomasson, a Swedish Patent attorney at the firm of Ehrner & Delmar Patentbyra AB, which represented Flexiteek on a global basis for all its patent activities (DE # 91-1). In that Declaration, Mr. Thomasson states that his firm estimates that it will cost approximately $17,000.00, plus courier costs to review, copy and produce the requested documents. Mr. Thomasson contends that the production will require his personal review of the paper files held in his firm's office, related to all countries, in order to identify the relevant documents. *19 The Plaintiffs contend that cost shifting is therefore appropriate in this case because as contemplated by Federal Rule of Civil Procedure 26, the burden of the proposed discovery outweighs its likely benefits considering, among other things, the needs of the case, the amount in controversy, the parties' resources and the importance of the discovery in resolving the issues of the case. In addition, the Plaintiffs contend that the Court should consider the specificity of the discovery requests, the likelihood of discovery critical information and the availability of such information from other sources. Further, the Plaintiffs contend that they have already produced numerous documents including the file history or the '881 patent, the correlating reexamination file history of the '881 patent, and documents considered by the Plaintiffs' experts and documents relating to the prosecution of Plaintiffs' foreign patents from the Australian Patent Office and the European Patent Office (DE # 91 at 9). Finally, the Plaintiffs contend that they have informed the Defendants how to obtain certain publicly available documents and assert that it is inconceivable that the Defendants are still searching for new defenses after nearly five years of litigation between the Parties. The Defendants, however, state that, in an effort to minimize the costs to Plaintiffs, they are willing to limit the production of information/documents responsive to Interrogatory No. 9 to the patent prosecution history for the New Zealand patent and attempts by anyone to revoke or challenge any foreign patent in courts or patent offices. For the following reasons, the undersigned concludes that the costs of production of documents responsive to the Defendants' requested discovery should not be shifted under the facts of this case. First, the Federal Rules maintain a presumption that parties are required to satisfy their own costs in responding to discovery requests. Oppenheimer Fund. Inc. v. Sanders, 437 U.S. 340 (1978). Exceptions to this rule usually occur in cases where a party seeks the production of electronic discovery where the responding party contends that the requested documents are “not reasonably accessible because of undue burden or cost.” See U & I Corp. v. Advanced Med. Design, Inc., 251 F.R.D. 667, 674 (M.D. Fla. 2008); accord Rowe Entm't, Inc. v. The William Morris Agency, Inc., 205 F.R.D. 421 (S.D.N.Y. 2002) (shifting discovery costs to party requesting discovery where costs for electronic discovery would total, at least, over sixty thousand dollars for one of the responding parties, by the requesting parties' estimate). In this case, there is no indication that the Defendants have requested electronic discovery which will cause the Plaintiffs to incur significant costs. The Plaintiffs have not suggested, and Mr. Thomasson has not stated in his Declaration, that the Plaintiffs will be required to hire an independent third party to review and produce the requested documents. Rather, as the Defendants correctly point out, in this case, the documents at issue are housed by the Plaintiffs' own patent attorneys. Moreover, in his Declaration, Mr. Thomasson describes the documents that need to be reviewed as taking up approximately one meter of shelf space, but provides no estimate of the number of documents that will actually have to be reviewed. Thus, seemingly, the are not a large number of documents, and Mr. Thomasson has not suggested that his review of those documents will disrupt the business of the firm or otherwise create an undue hardship. As such, the undersigned concludes that cost-shifting is not appropriate under the facts of this case, and the Plaintiffs must bear the costs of producing relevant, non-privileged documents from their Attorneys, in response to the Defendants' discovery requests. All such documents shall be produced on or before June 28, 2013, absent additional relief from the undersigned. b. Interrogatory No. 11 Defendants' Interrogatory No. 11 sought information about persons who had taken a license under the '881 Patent, including information about meetings and discussions related to that licensing. In response to this Interrogatory, the Plaintiffs raised a number of objections including contending that correspondence leading to any license agreement is irrelevant where, as in this case, the actual licensing agreements have been produced. Plaintiffs further contend that the interrogatory seeks trade secret information. *20 In the Motion to Compel, the Defendants contended that this Interrogatory is directly related to determining an appropriate royalty. In addition, the Defendants assert that the Plaintiffs have implicitly withdrawn some of their objections to the relevance of the requested correspondence because the Plaintiffs have subsequently produced some of the negotiations between the Plaintiffs and other non-party entities related to licensing agreements. The Defendants however contend that the Plaintiffs should also provide information regarding partnership negotiations between Flexiteek International AS and Flexiteek Americas, Inc. The Plaintiffs contend that they have produced responsive documents in lieu of a further written response and state that the Plaintiffs will supplement their answer to provide further responsive documents. The Plaintiffs also assert that information regarding negotiations between Defendant Flexiteek International AS and Flexiteek Americas, Inc., is not relevant to determining a reasonable royalty because such negotiations are not arms-length transactions due to the nature of the relationship between those entities. That notwithstanding, the Plaintiffs state that there are no additional documents and/or correspondence responsive to this Interrogatory. In their Reply, the Defendants contend that even if the negotiations between Flexiteek International AS and Flexiteek Americas, Inc., are not relevant to determining a royalty, any such information is relevant for determining the true relationship between the two entities, which the Defendants have attempted to ascertain through other discovery requests. The Defendants further contend that the only documentation that the Plaintiffs have produced responsive to this Interrogatory as it pertains to Flexiteek International AS and Flexiteek Americas, Inc., is a royalty agreement. Based upon the arguments advanced by the Parties in their respective filings, the undersigned concludes that with regard to this Interrogatory, the Defendants' request to compel is not well-founded. Although the Defendants may want to obtain additional information about the relationship between Flexiteek International AS and Flexiteek Americas, Inc., and may be entitled to obtain said information in response to other discovery requests, the Plaintiffs have stated that they do not have any other documents and/or correspondence responsive to this particular discovery request that have not already been produced (DE # 91 at 15). In addition, the Plaintiffs have agreed to produce documents responsive to the Interrogatory reflecting negotiations between Plaintiffs and other entities. As such, there appear to be no additional documents and/or information to compel Plaintiffs to produce and therefore the Defendants' request is denied, as moot as to Interrogatory No. 11. c. Interrogatories Nos. 16 & 23 These two interrogatories request that the Plaintiffs identify certain of the Defendants' products, by product number, which were offered or sold by the Defendants which the Plaintiffs believe to be within the scope of the '881 patent. In response, the Plaintiffs contend that they previously have been unable to fully respond to these requests because the Defendants had failed to provide product information requested by the Plaintiffs. However, the Plaintiffs further state that they have now received the Defendants' Third Supplemental Response to the Plaintiffs' Interrogatories and intend to provide a supplemental answer to the Defendants' discovery requests. Therefore, on or before June 28, 2013, the Plaintiffs shall provide a supplemental answer to Defendants' Interrogatories Nos. 16 and 23. d. Interrogatory No. 18 *21 This interrogatory sought information about the facts that the Plaintiffs relied upon for the Plaintiffs' contention that the Defendants made deceptive statements that resulted in significant damages and irreparable harm as alleged in Count IV of the Plaintiffs' Complaint. The Plaintiffs objected to this Interrogatory because Plaintiffs contend that it sought information that was within the possession of the Defendants. In addition, the Plaintiffs contended that the Plaintiffs' inability to answer this Interrogatory fully was due to the Defendants' failure to produce certain documents and to permit the Plaintiffs to conduct depositions of the Defendants' employees and/or officers. However, the Plaintiffs state that additional documents have been exchanged since the time that the Plaintiffs first responded to this Interrogatory and the undersigned is aware that most, if not all, of the depositions of the Defendants' employees and/or officers have already occurred, and thus the Plaintiffs' objections are now moot. Therefore, on or before June 28, 2013, the Plaintiffs shall provide a supplemental answer to Defendants' Interrogatory No. 18. The Plaintiffs' supplemental response shall include the facts to support the Plaintiffs' allegation in Count IV of the Complaint that the Defendants' statements have caused “significant damages and irreparable harm.” e. Interrogatory No. 19 This Interrogatory sought information about the business and corporate relationship between the Plaintiffs. In response, the Plaintiffs identified Flexiteek Americas, Inc., as a wholly owned subsidiary of Flexiteek International AS. The Defendants sought to compel a better response to this Interrogatory because the Plaintiffs failed to describe the business relationship between the Plaintiffs including the sharing of losses and profits and royalties paid between those entities. The Plaintiffs contend that their response to this Interrogatory was sufficient and further contend that because the Plaintiffs' corporate representatives' depositions have already been conducted, the Defendants have had a full opportunity to inquire into the business relationship between the Plaintiffs. In addition, the Plaintiffs state that they have already produced any agreements between the Plaintiffs and have advised that no further documentation exists. The Defendants reply that the corporate representative produced by Plaintiff Flexiteek International AS was Tom Jacques, an employee of Flexiteek Americas, Inc., who had very little information responsive to the Defendants' deposition notice, which included a request for information about the interaction between the two entities. The undersigned concludes that the Defendants' Motion to Compel a better response to Interrogatory No. 19 will be denied without prejudice at this point. On May 2, 2013, the Court issued an Order Following Informal Discovery Conference wherein the undersigned ordered the Plaintiffs to produce a more knowledgeable corporate representative with respect to, among other things, the financial relationship between the Plaintiff corporations with the deposition to occur by the end of May 2013 (DE # 107 at 2). Therefore, the Defendants' request for more information regarding the relationship between the Plaintiffs likely is moot. However, on or before June 28, 2013, the Defendants may seek additional relief on this issue if appropriate. f. Interrogatory No. 21 Interrogatory No. 21 sought information about the annual gross sales and net profits for both Plaintiffs. The Defendants contend that the Plaintiffs failed to provide the annual net profits for Flexiteek International AS and failed to provide separate sales information for sales that fall within the claims of '881 patent. In response, the Plaintiffs contend that they have produced all responsive documents including profit and loss statements for Flexiteek International AS that were prepared by a Norwegian accountant. In addition, the Plaintiffs contend that they have produced documents of the sales of the Plaintiffs' products between 2002 and 2013. Thus, Plaintiffs contend that they have produced the responsive documents and assert that the Defendants are simply not satisfied with what those documents reflect. *22 The Defendants' Motion to Compel additional information responsive to this Interrogatory is denied, without prejudice at this point, based upon the representations by Plaintiffs that documents responsive to this Interrogatory have been produced. In reaching this conclusion, the undersigned notes that the Defendants were able to inquire into the financial records of Flexiteek International AS at the deposition of the Flexiteek International AS corporate representative's deposition, discussed above as to Interrogatory No. 19. Accordingly, the Defendants' request is denied without prejudice to seek additional relief if the Defendants discover, after conducting the additional corporate representative deposition, that the information provided by the Plaintiffs in the spreadsheets fails to provide calculations and/or information that the Plaintiffs currently maintain as to the sales and profits for Flexiteek International AS related to products that fall within the scope of '881 patent. The Defendants must seek such relief, if appropriate, on or before June 28, 2013. g. Interrogatory No. 22 This Interrogatory requested information about Plaintiffs' damages calculations related to the damages requested in the prayer of the Plaintiffs' Complaint. The Plaintiffs originally indicated that they were unable to fully respond to this Interrogatory because the Defendants had failed to produce all of the information requested by the Plaintiffs regarding the Defendants' finances. However, in response to the Defendants' Motion to Compel, the Plaintiffs state that the Defendants have produced additional financial documents but contend that there are “irregularities” in those documents. The Defendants, on the other hand, contend that for purposes of certain damages, e.g. a reasonable royalty and lost profits, the Defendants' financial documents are not needed for the Plaintiffs' damage calculations and further contend that the Defendants have produced substantial financial information to the Plaintiffs. In addition, the Defendants contend that the Plaintiffs have failed to provide an expert report as to the Plaintiffs' damage calculations. The undersigned concludes that the Plaintiffs must provide a more detailed response to this Interrogatory. In addition, at the June 6, 2013 hearing held before the District Judge in this matter, the Plaintiffs indicated that they could provide an answer to this interrogatory by Monday, June 10, 2013, and were ordered to so by the District Judge. As such, consistent with the District Judge's ruling, the Plaintiffs must provide a calculation of damages in this action on or before the close of business on June 10, 2013. h. Request for Production No. 21 This Request seeks the production of documents regarding prior art that relate to the disputed claim terms. The Plaintiffs objected to this request due to the costs associated with obtaining the files from the Plaintiffs' foreign counsel. For the same reasons discussed above with regard to Interrogatory No. 11, the Plaintiffs shall obtain and produce the requested documents with the costs to be borne by the Plaintiff. i. Requests for Production Nos. 31 and 32 Requests for Production Nos. 31 and 32 sought the production of correspondence between the Plaintiffs and any third party or the public relating to the Defendants or their products or patents. The Defendants stated in their Reply to the Motion to Compel that this issue has been resolved based upon the Plaintiffs' representation that they will supplement their Responses. Therefore, the undersigned need not reach this issue because it is moot. j. Requests for Production Nos. 34 and 35 Requests for Production Nos. 34 and 35 sought the production of purchase orders and sales of Teak Decking products from 2007 to the present and documents sufficient to show the cost of manufacture of each of the Plaintiffs' Teak Decking products from 2007 through the present. In response, the Plaintiffs objected to the extent that the request was unduly burdensome because such records are maintained in a physical file. The Plaintiffs however agreed to make such documents available to the Defendants for inspection and copying of such documents at a date and time agreeable by both Parties. The Plaintiffs further state that they have produced a representative sample of the documents to the Defendants for responsive documents for the time frame of 2002-2013. *23 In Reply, the Defendants assert that they have requested the Plaintiffs to produce additional representative samples of their invoices because the Plaintiffs have only produced a handful of representative invoices. In addition, the Defendants state that they have not agreed to accept the representative invoice samples in lieu of inspecting all of the responsive documents at the Plaintiffs' offices. In addition, the Defendants clarify that they are seeking production of quarterly reports that the corporate representative for Flexiteek International AS testified he had in his possession and, according to the Defendants, were given to the corporate representative for preparation of his deposition. Based upon the statements of the Parties in their filings, the undersigned concludes that the Defendants are entitled to obtain the requested documents, and orders that on or before June 28, 2013, the Plaintiffs produce additional representative samples of the invoices and records responsive to the Defendants' request. In addition, on or before June 28, 2013, the Plaintiffs shall produce a copy of the quarterly report alluded to by the corporate representative in his deposition referred to by the Defendants in the Motion to Compel. If, after the Plaintiffs produce additional sample invoices, the Defendants still seek to review the Plaintiffs' invoices rather than relying upon those representative samples, the Parties shall confer to determine a mutually convenient time for the Defendants to review such invoices at the Plaintiffs' office. If the Parties are unable to agree or have other disputes related to this issue, the Defendants shall seek additional relief from the Court no later than July 2, 2013. 3. Production of Template Relied upon by Dr. Frank Jones The Defendants have requested that the Plaintiffs be required to produce a “template” upon which Dr. Jones, one of the Plaintiffs' experts, purportedly relied in arriving at his opinion in this action. Specifically, the Defendants contend that Counsel for the Plaintiffs forwarded a template and a draft opinion of Dr. Rhee, another of the Plaintiffs' experts, to Dr. Jones for consideration. The Plaintiffs object to the production of those materials contending that pursuant to Federal Rule of Civil Procedure 26 (b)(4), the materials need not be produced as they did not identify facts or data that the expert considered in forming his opinions and did not identify assumptions relied upon by Dr. Jones in arriving at his opinion. In the May 2, 2013 Order issued following an informal discovery hearing, the undersigned directed the Plaintiffs to submit an affidavit from Dr. Jones related to the documents at issue. The Plaintiffs timely complied (DE # 114). The undersigned has reviewed Dr. Jones' Declaration as well as conducting an in camera review of the documents at issue. In his Declaration, Dr. Jones states that he did not rely upon or consider the content of the draft reports in rendering his opinion for his expert report. Dr. Jones further states that he did not need to rely on such documents because he relied on other materials including the claims prosecution and reexamination history, the product catalog for Plasteak and specimens of the Defendants' products. Based upon the representations made by Dr. Jones in the Declaration, and an in camera inspection of the materials at issue, i.e., the template and draft reports, the undersigned concludes that the Plaintiffs need not produce those materials as they were not relied upon by Dr. Jones and he did not consider those materials in arriving at his opinion. III. CONCLUSION Accordingly, for the foregoing reasons, it is ORDERED AND ADJUDGED that Plaintiffs' Motion to Compel (DE # 84) is GRANTED, in part, and DENIED, in part. The Plaintiffs shall supplement their responses to the Defendants' discovery requests as set out fully above within the time frame specified for each request. *24 It is further ORDERED AND ADJUDGED that Defendants' Motion to Compel (DE # 81) is GRANTED, in part, and DENIED, in part. The Defendants shall supplement their responses to the Plaintiffs' discovery requests as set out fully above within the time frame specified for each request. DONE AND ORDERED in chambers in Miami, Florida, on June 14, 2013. Footnotes [1] The original patent was issued on May 24, 2005, for a “Shape Conforming Surface Covering” designated U.S. Patent No. 6,895,881, and was the source of litigation in another patent infringement case between the same parties assigned to a different District Judge in this District. See Case No. 08-60996-CIV-COHN/SELTZER. Ultimately, the patent at issue in that case was cancelled and the Plaintiffs filed this action after a reexamined patent for the application and use of the “Shape Conforming Surface Covering” was issued on December 6, 2011 (DE # 1-7 at 3). [2] In addition to referring to these general discovery issues in their respective Motions to Compel, the Parties also submitted separate memoranda of law regarding the doctrine of intervening rights (DE ## 43, 53) and the permissible scope of the Defendants' discovery requests regarding the Plaintiffs' products (DE ## 72, 87, 96). [3] Discovery disputes related to the European Privacy Act and the production of emails of Derek Whitaker, the original holder of the patent at issue, have been addressed by way of separate order. [4] Federal Circuit law applies when deciding whether particular written or other materials are discoverable in a patent case, if those materials relate to an issue of substantive patent law. Advanced Cardiovascular Sys. v. Medtronic, Inc., 265 F.3d 1294, 1307 (Fed. Cir. 2001). Therefore, the undersigned applies Federal Circuit law to the disputes at issue. [5] The specific discovery requests at issue are Plaintiffs' Interrogatories Nos. 2-10 and Requests for Production 8, 10-13, 15-18, 21, 27-35, and 37-38. The specific discovery requests and the effect of the doctrine of intervening rights on those requests are addressed below in turn as addressed in the Plaintiffs' Motion to Compel. [6] At the February 1, 2013, informal discovery hearing, the undersigned ordered the Parties to each file a Memorandum of Law related to the Doctrine of Intervening Rights and the implications of that doctrine on the discovery disputes at issue. In compliance with that Order, the Parties filed their respective Memorandums of Law (DE ## 43, 51, 53). [7] The Plaintiffs state that this issue relates to Defendants' Interrogatory Nos. 6, 14 and 15 and Request for Production Nos. 12-13, 15-17, 22-30 and 33. [8] In response to the Plaintiffs' Memorandum, the Defendants raise issues related to the issuance of third-party subpoenas to Plaintiffs' installers/distributors. The undersigned only addresses discovery related to the permissible scope of Defendants' discovery related to the Plaintiffs' products in the discovery requests propounded to the Plaintiffs. However, to the extent that the Plaintiffs have objected to the issuance of third party subpoenas referenced in the Defendants' response and the Plaintiffs' reply, the Parties shall take guidance from the rulings herein to the extent applicable. [9] The Plaintiffs must therefore provide complete responses, to the extent that the Plaintiffs have not already done so, to: Interrogatories Nos. 6 and 14, without limitation to the temporal scope; Interrogatory No. 15, to the extent that the Plaintiffs have not identified each product offered or sold by Plaintiffs which Plaintiffs believe to be within the scope of one or more of the claims of the '881 patent; Requests for Production Nos. 12, 22, 13, 15-17, 30, 23, 24, 25, 26, 27-29, 33, without limitation to the temporal scope and to the extent that the Plaintiffs failed to provide documents and/or correspondence reflecting the manufacturing process, identification of Plaintiffs' products, the creative process and marketing of their products and website materials, to the extent that those documents were described in those Requests, and to the extent that those items pertain to the '881 patent or the claims or defenses raised in this action, consistent with the undersigned's analysis of the permissible scope of discovery. [10] Pursuant to the undersigned's May 29, 2013, Order directing the Parties to identify any discovery issues that remained in dispute, the Parties have submitted a Joint Statement of Unresolved Discovery Disputes (DE # 133). To the extent that the Plaintiffs did not identify certain issues that were previously raised in their Motion to Compel in the Joint Statement, the undersigned has not addressed those issues in this Omnibus Order, as it is assumed that those issues were resolved by the Parties. Therefore, the Plaintiffs' request for sanctions arising from the Defendants' improper cancellation of depositions is denied as moot because that issue was not identified in the Joint Statement. To the extent that the Plaintiffs seek to raise additional discovery matters that were identified in the Plaintiffs' Amended Cross-Notice of Hearing in relation to the April 26, 2012 informal discovery hearing, the undersigned notes that the Court's May 2, 2013 Order (DE # 107) permitted the Parties to set any remaining discovery disputes for a further informal discovery conference, but the Parties have not done so as of the date of this Order. [11] Defendants' Interrogatory No. 16 states “Identify, by product number, product name, trade designation or other appropriate description, each product offered for sale or sold by PLASTEAK or PLASDECK which Flexiteek believes to be within the scope or one or more claims of the '881 Patent.” Defendants' Interrogatory No. 23 states, “List by product number all of the “Accused Products” used, made, sold or offered for sale by PLASTEAK, which Flexiteek contends infringes the '881 Patent.” In response to these Interrogatories, the Plaintiffs responded, among other things, that they are unable to provide specific product numbers because they have not been provided by Defendants. These two Interrogatories are at issue in the Defendants' Motion to Compel wherein the Defendants contend that the Plaintiffs should be able to answer the Interrogatories because the Defendants have produced a copy of their product catalog in response to the Plaintiffs' discovery requests, and are addressed below in this Order (DE # 98 at 7). [12] In the Plaintiffs' Motion to Compel, the Plaintiffs state that the Defendants agreed to withdraw their objections to Plaintiffs' Request for Production Nos. 27-28, 32-35 and 37-38 (DE # 84 at 15). However, as discussed below in section (j), the Plaintiffs contend that the Defendants have failed to produce the requested documents despite withdrawing their objections thereto. Accordingly, as ordered below, the Defendants shall produce the outstanding documents for which the Defendants' have withdrawn their objections on or before June 28, 2013. [13] At the February 13, 2013 informal discovery hearing, the Plaintiffs sought to compel the Defendants to produce additional documents in response to the Plaintiffs' Request for Production No. 12, which sought correspondence and agreements between any distributor or retailer of Teak Decking products and the Defendants (DE # 52 at 5). The undersigned concluded that the more than 1,000 pages of documents that the Defendants had already produced in response to the Request, in conjunction with the other documents produced in response to the Plaintiffs' other discovery requests, were sufficient to provide the Plaintiffs with the relevant information, and that any additional information obtained through additional production would be minimal (DE # 52 at 6). [14] Pursuant to the undersigned's May 29, 2013, Order directing the Parties to identify any discovery issues that remained in dispute, the Parties have submitted a Joint Statement of Resolved Discovery Disputes (DE # 133). To the extent that the Defendants did not identify certain issues that were previously raised in their Motion to Compel in the Joint Statement, the undersigned has not addressed those issues in this Omnibus Order, as it is assumed that those issues were resolved by the Parties. [15] Inequitable conduct is an equitable defense to patent infringement that, if proved, bars enforcement of a patent. Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1286 (Fed. Cir. 2011). To prevail on a claim of inequitable conduct, the accused infringer must prove that the patentee acted with the specific intent to deceive the entity charged with issuing the patent. Id. (citing Star Scientific Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366 (Fed. Cir. 2008)). Unlike other deficiencies, inequitable conduct cannot be cured by reissue. Therasense, Inc., 649 F. 3d, at 1288, (citing Aventis Pharma S.A. v. Amphastar Pharm., Inc., 525 F.3d 1334, 1341 n.6. (Fed. Cir. 2008)). Nor can inequitable conduct be cured by reexamination. Id. (citing Molins PLC v. Textron, Inc., 48 F.3d 1172, 1182 (Fed. Cir. 1995)). [16] In addition, the Plaintiffs contend that to the extent that the Defendants have raised the inequitable conduct, the Defendants have failed to plead that affirmative defense with requisite specificity. Despite this contention, the Plaintiffs did not file a motion to strike, a motion for more definite statement, or otherwise respond to that affirmative defense. As such, the Defendants' claim of inequitable conduct related to the reexamined '881 patent remains in this case. [17] The Plaintiffs have also argued in response to the Motion to Compel that the crime-fraud exception does not constitute waiver because the Defendants are unable to establish a prima facie case of common law fraud (DE # 91 at 5). However, the Defendants did not argue the crime fraud exception as a basis for waiver of the attorney client privilege or work product protection in their Motion to Compel, so the undersigned does not address that argument. [18] The undersigned has reviewed the Plaintiffs' privilege log and notes that the entries appear to be sufficiently identified so that the Defendants are able to challenge the failure of the Plaintiffs to produce any documents that fall within the scope of the waiver as determined in this Order, if appropriate. [19] The Plaintiffs have not filed a Reply to the Defendants' Affirmative Defenses. In addition, the Plaintiffs have declined to affirm that they do not intend to rely upon the advice of counsel defense in response to the Defendants' claim of inequitable conduct. Therefore, because the defense of inequitable conduct remains in this case, unless the Plaintiffs file a notice confirming that they do not intend to rely upon the advice of counsel defense in response to the Defendants' claims of inequitable conduct, the Plaintiffs must produce the documents at issue.