This court concludes that oral argument will not materially assist in the resolution of this matter. Accordingly, having carefully reviewed the Motion and associated briefing [#52, #53], the docket, and applicable law, this GRANTS IN PART and DENIES IN PART the Plaintiff's Motion to Compel.

The court has discussed the factual background of this case in other orders, see, e.g., [#57], and therefore focuses only on the allegations most salient to the instant Motion to Compel. Plaintiff All Plastic contends it is a leading manufacturer of premium displays and containers for medicinal and recreational cannabis dispensaries. [#20 at ¶ 19]. All Plastic is the assignee of U.S. Patent No. 10,384,834 (the “ ‘834 Patent”) titled “Container for Providing Aromatic Sampling and Visualization of Contents.” [Id. at ¶¶ 20, 21]. The ‘834 Patent claims embodiments of a container that has a body and a lid that, when fitted together, form a sealed chamber. [Id. at ¶ 24]. The lid has a “viewing opening” coverable by a lens affixed thereto. [Id.]. Within the lid are multiple scent openings, coverable by a removable plug. [Id.].

All Plastic initiated this patent infringement action against Defendants SamDan LLC d/b/a Smokus Focus (“SamDan”), Samuel Whetsel (“Mr. Whetsel”), and Daniel Russell-Einhorn (“Mr. Russell-Einhorn”) (with Mr. Whetsel, “Individual Defendants” and collectively, “Defendants”) alleging that Defendants make, use, and sell containers for personal cannabis use, that infringe upon the ‘834 Patent. [#1]. All Plastic asserts a single cause of action, but multiple theories of patent infringement, i.e., by making, using, offering to sell, selling, importing, and exporting the JetPack containers, Defendants have thereby directly infringed, and have induced others to infringe, the Patent either literally or under the doctrine of equivalents pursuant to 35 U.S.C. § 271. See generally [id.]. All Plastic also claims that Defendants have willfully, deliberately, and intentionally infringed one or more claims of the Patent. [Id.].

On July 17, 2020, SamDan filed its Answer [#17], and Messrs. Whetsel and Russell-Einhorn filed their First Motion to Dismiss [#19]. On July 27, 2020, Plaintiff filed a First Amended Complaint for Patent Infringement and Demand for Jury Trial (“Amended Complaint”) [#20], as a matter of right pursuant to Rule 15(a)(1)(B) of the Federal Rules of Civil Procedure, thus mooting the first Motion to Dismiss. [#21, #27]. SamDan filed its First Amended Answer [#25] and the Individual Defendants filed a Second Motion to Dismiss on August 10, 2020 [#26]. This court denied the Second Motion to Dismiss on February 8, 2021. [#57].

*2 Relevant here, on December 8, 2020, the Parties appeared before the undersigned for a Discovery Hearing concerning Defendants’ designation of Attorney's Eyes Only information. [#43]. After directing the Parties to have a robust meet-and-confer and two discovery hearings, this court ordered Plaintiff to file a formal motion to compel and set Defendants’ response deadline, with no replies permitted absent leave of court. [#44]. On January 4, 2021, Plaintiff filed the instant Motion to Compel, seeking a court order compelling Defendants to produce various documents, re-designate materials already produced and designated “Confidential-Attorneys’ Eyes Only,” and remove redactions applied to materials produced on Defendants’ asserted basis of “relevance.” See generally [#48]. Defendants responded on January 19, 2021 [#52, #53], and Plaintiff did not seek leave to file a reply.

I. Rule 26(b)(1)

Rule 26(b)(1) of the Federal Rules of Civil Procedure defines the scope of permissible discovery in this action. Fed. R. Civ. P. 26(b)(1). The Rule permits discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case. Id. The applicable test is whether the evidence sought is relevant to any party's claim or defense and proportional to the needs of the case. Id. Rule 401 of the Federal Rules of Evidence defines relevant evidence as “evidence having any tendency to make the existence of any fact that is of consequence to the determination of the action more or less probable than it would be without the evidence.” Fed. R. Evid. 401. In defining the scope of appropriate discovery, the Parties and the court are directed to consider the importance of the issues at stake in the action, the amount in controversy, the parties’ relative access to relevant information, the parties’ resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit. Fed. R. Civ. P. 26(b)(1).

II. Rule 26(c)

Rule 26(c) of the Federal Rules of Civil Procedure contemplates that a court may, for good cause, issue an order to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense. Fed. R. Civ. P. 26(c). Under the terms of the Rule, a court may enter such order (1) specifying terms, for disclosure or discovery and/or (2) requiring that a trade secret or other confidential research, development, or commercial information not be revealed or be revealed in a specified way. Fed. R. Civ. P. 26(c)(1)(B), (G). The party seeking a protective order bears the burden of establishing its necessity, Centurion Indus., Inc. v. Warren Steurer & Assoc., 665 F.2d 323, 325 (10th Cir. 1981), but the entry of a protective order is left to the sound discretion of the court, see Rohrbough v. Harris, 549 F.3d 1313, 1321 (10th Cir. 2008). As part of the exercise of its discretion, the court may specify the terms for disclosure. Fed. R. Civ. P. 26(C)(1)(B).

While a protective order may be appropriate where a trade secret or other confidential information is at issue, the existence of a trade secret is not required. Instead, the good cause standard is highly flexible, having been designed to accommodate all relevant interests as they arise. See Rohrbough, 549 F.3d at 1321. “With regard to an attorney's-eyes-only provision, confidential information that may be used against the company by a direct competitor in the lawsuit is generally afforded more protection.” Netquote, Inc. v. Byrd, No. 07-cv-00630-DME-MEH, 2007 WL 2438947, at *1 (D. Colo. Aug. 23, 2007). Courts in this District have afforded attorney's eyes only (or “AEO”) designations where customer lists and sales lists, see Quickpen Int'l, Inc. v. Bittinger, No. 06-cv-02265-DME-MEH, 2007 WL 1686723, *1 (D. Colo. June 8, 2007), and released and unreleased product designs, see Covelo Clothing, Inc. v. Atlandia Imports, Inc., No. 07-cv-02403-MSK-MEH, 2007 WL 4287731, *2 (D. Colo. Dec. 5, 2007), are at issue. Outside the District of Colorado, courts have permitted AEO designations with respect to financial information regarding sales and profits, see Pepsi-Cola Bottling Co. of Pittsburg v. Bottling Grp., L.L.C., No. 07-2315-JAR, 2008 WL 234326, at *3 (D. Kan. Jan. 28, 2008); inventory lists, invoices, proofs of payment or deposit, and bills of lading, see Usov v. Lazar, No. 13 CIV. 818, 2015 WL 585773, at *1 (S.D.N.Y. Feb. 10, 2015), but see Tradewell, Inc. v. Am. Sensors Elecs., Inc., No. 96 CIV. 2474 DAB, 1997 WL 79867, at *1 (S.D.N.Y. Feb. 25, 1997) (declining to uphold an AEO designation and observing that such designation might have a material impact on how counsel could represent client); and sensitive technical information, see Layne Christensen Co. v. Purolite Co., 271 F.R.D. 240, 247 (D. Kan. 2010).

I. Confidential-Attorney's Eyes Only Information

*3 Plaintiff advances three arguments to support its contention that “[m]ost of the materials designated by Defendants do not qualify as AEO,” [#48 at 10]: (1) materials designated as AEO by Defendants are not highly sensitive in nature [id. at 10–13]; (2) the maintenance of Defendants’ unwarranted AEO designations will prejudice All Plastic's ability to litigate this case because Plaintiff's counsel can share with their client almost “no material fact” learned from Defendants in this action [id. at 13–14]; and (3) Plaintiff should not bear the expense of objecting to every single one of Defendants’ designations to ensure Defendants’ compliance with their duty to review documents in good faith before designating them as AEO, as per the Protective Order [id. at 14–15]. Defendants[2] counter that the Protective Order, Federal Rules of Civil Procedure, and controlling legal authority all support the use of AEO designations as a means of protecting from disclosure to direct competitors any confidential, commercially-sensitive business information. [#52 at 4–5].

This court first looks to the Protective Order and the definition of “Confidential-Attorney's Eyes Only,” that was disputed by the Parties and adjudicated by the court. [#33, #34, #35]. Then this court considers the various arguments potentially affecting the interpretation of the AEO designation to articulate the framework to be applied to its analysis.

A. Applicable Framework

Pursuant to the Protective Order entered in this matter [#36], “Confidential Information” is defined to include

[Id. at ¶ 1(b)]. “Confidential – Attorneys’ Eyes Only” materials may be properly designated as AEO if the information:

[Id. at ¶ 1(c)].

Not Limited to Trade Secrets. Contrary to Plaintiff's contentions [#48 at 21], neither the definition of “Confidential - Attorney's Eyes Only” nor Rule 26(c) and its interpreting case law mandates that the AEO designation be limited to established trade secrets as discussed above. Indeed, even the proposal by Plaintiff – which sought to incorporate the Model Protective Order for the United States District Court for the Northern District of California and was declined by the court – was not that restrictive. [#34-1 at 5; #35, #36]. And any requirement for the court to determine, in the first instance, if all designated “Confidential-Attorney's Eyes Only,” constituted, as a matter of law, a trade secret would invite side litigation and run counter to this court's intention, i.e., to facilitate the efficient production of documents and avoid unnecessary disputes arising from the designation of documents that might not ultimately be significant to the adjudication of the merits. [#35; #36 at 2].

*4 Not Precluded Due to Relevance. Next, this court respectfully disagrees with Plaintiff's contention that “AEO designation is improper if the documents are relevant.” [#48 at 13]. Taken to its logical end, there would be no justification for a tier of documents to be designated as “Confidential-Attorney's Eyes Only” because the scope of all discovery under Rule 26(b)(1) is limited to material that is “relevant to any party's claim or defense and proportional to the needs of the case.” Fed. R. Civ. P. 26(b)(1) (emphasis added). Nor is this court persuaded that that the importance of the discovery in resolving the issues precludes proper designation of information as “Confidential-Attorney's Eyes Only.” [#48 at 13]. Instead, the case law directs this court to focus upon whether confidential information may be used against the disclosing party to gain competitive advantage in the industry. Netquote, 2007 WL 2438947, at *1; U.S. ex rel. Daugherty v. Bostwick Labs., No. 1:08-CV-354, 2013 WL 3270355, at *10 (S.D. Ohio June 26, 2013) (observing that an AEO designation “strikes the appropriate balance between a litigant's right to relevant discoverable information and the legitimate concerns surrounding disclosure of highly confidential and sensitive information to a direct competitor”) (collecting cases).

Designating Party Retains Burden of Proof. Finally, this court briefly addresses Plaintiff's concerns regarding the respective burdens to the Parties under the Protective Order. This court made clear that a designation of material by a Party as either “Confidential” or “Confidential - Attorney's Eyes Only” was not a finding by the court that material, as a legal matter, constituted such. See Stroup v. United Airlines, Inc., No. 15-CV-01389-WYD-CBS, 2016 WL 7176717, at *4 (D. Colo. Sept. 16, 2016) (citing In re Estate of Martin Luther King, Jr., Inc. v. CBS, Inc., 184 F. Supp. 2d 1353, 1362 (N.D. Ga. 2002) (“[C]alling a document confidential does not make it so in the eyes of the court.”)). It bears noting that regardless of the context (e.g., prior to production or during a challenge to the designation after production), the designating party bears the burden of establishing that a particular document or category of documents warrant the “Confidential-Attorney's Eyes Only” designation. [#36 at 4 ¶ 2]; Stroup, 2016 WL 7176717, at *3.

B. Over-designation of Materials as Confidential-Attorney's Eyes Only

With this framework in mind, this court recognizes that, as a matter of principle, the over-designation of materials as “Confidential Attorney's Eyes Only” is contrary to the spirit of the Protective Order and the Federal Rules of Civil Procedure, including but not limited to Rule 26(g) that provides that by signing discovery responses, counsel of record is certifying that the discovery responses are consistent with the Federal Rules of Civil Procedure and warranted by existing law, or by a nonfrivolous argument for extending, modifying, or reversing existing law, or for establishing new law and are not interposed for any improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of litigation. Fed. R. Civ. P. 26(g)(1)(B). But upon review of the record before it, this court finds as follows.

First, the percentage of documents designated as AEO, standing alone [#48 at 8], does not establish for the court that Defendants’ documents have been over-designated. Instead, it is more appropriate for the court to consider Plaintiff's substantive concerns, i.e., (1) documents that are publicly available have been improperly designated as AEO; (2) documents that reflect publicly available information, such as customer information, should not bear the AEO designation; and (3) routine, “stale” business information have been improperly designated as AEO.

Second, upon review of the record before the court, this court finds that certain categories of documents are not properly designated as “Confidential-Attorney's Eyes Only.” For instance, communication between Plaintiff's counsel and Mr. Whetsel is not properly designated under the Protective Order at all. [#50-10 at 001616].[3] Nor are materials offered to potential customers or investors, given that there has been no showing that such materials (or the pricing contained therein) were only offered under any confidentiality agreements to third parties. [Id. at 7; #52].

*5 Third, this court finds that given the undisputed competitive nature of the relationship between the Parties, and the significant amount of distrust that has been reflected in this action, it is appropriate for Defendants to designate competitive information that has been maintained as confidential and that might provide a business advantage to a direct competitor, such as customer and supplier identification and communications, invoices, and sales information, as “Confidential-Attorney's Eyes Only.” The fact that some of Defendants’ customers can be ascertained by publicly-available information does not mandate disclosure of both publicly-available and privately-held customer information. In other words, the availability of the identity of some customers does not undercut the propriety of the AEO designation for all customer identification. See Quickpen, 2007 WL 1686723, at *1. Nor does Plaintiff persuade this court that SamDan's substantive communications with its customers are publicly available, or necessarily “stale” because they occurred in the past. [#48 at 12]. Indeed, this court ascertains no evidence, distinct from attorney argument, that the manufacturing costs, customer-specific pricing, and financial information (such as sales data) associated with Defendants’ products accused of infringement is outdated or no longer of competitive interest, particularly given the ongoing competition between the Parties.

Based on the record before it, this court is not persuaded that there has been wholesale over-designation. Nevertheless, this court ORDERS Defendants to DOWN-DESIGNATE and/or PRODUCE UNREDACTED VERSIONS of all documents that are publicly available and materials that have been made available to prospective customers and/or investors without confidentiality, including but not limited to advertisements, direct marketing, or investor presentations. To the extent that Defendants claim any confidentiality associated with such materials, Defendants should be prepared to submit all such confidentiality agreements and/or other admissible evidence for the court's in camera consideration no later than February 26, 2021, with a Notice to opposing counsel and the court regarding the specific entities implicated. Such Notice shall be maintained as “Confidential – Attorney's Eyes Only” unless further Order of the court changes the designation.

C. Interference with Client Communication

The court now turns to consider whether the designation of financial information by Defendants, regardless of its propriety under the definition in the Protective Order and the interpreting case law, should be modified because it prevents Plaintiff's counsel from effectively communicating with and advising her client with respect to damages and potential infringers. Defendants counter that the AEO designation has been applied to only documents containing “highly sensitive” information pertaining to “pricing, vendor or customer related information ... and business and/or marketing strategies,” to ensure that All Plastic “could not make improper use of this litigation to obtain sensitive information ... that it could use to unfairly compete with Smokus in the marketplace.” [#52 at 6].

D. Damages

The Patent Act provides that “[u]pon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court.” 35 U.S.C. § 284. The most common approach to the calculation of a reasonable royalty is determined by considering a hypothetical negotiation between a “willing” licensor and a “willing” licensee. See Univ. of Colo. Found., Inc. v. Am. Cyanamid Co., 216 F. Supp. 2d 1188, 1197 (D. Colo. 2002), aff'd, 342 F.3d 1298 (Fed. Cir. 2003). The Federal Circuit has adopted the Georgia–Pacific factors as the benchmark for reasonable royalty determinations. See Golight, Inc. v. Wal-Mart Stores, Inc., 216 F. Supp. 2d 1175, 1182 (D. Colo. 2002), aff'd, 355 F.3d 1327 (Fed. Cir. 2004) (citing SmithKline Diagnostics, Inc. v. Helena Labs. Corp., 926 F.2d 1161, 1168 (Fed. Cir. 1991)). Those factors include:

Georgia-Pac. Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970), modified sub nom. Georgia-Pac. Corp. v. U.S. Plywood-Champion Papers, Inc., 446 F.2d 295 (2d Cir. 1971).[4]

“To get lost profits as actual damages, the patent owner must demonstrate that there was a reasonable probability that, but for the infringement, it would have made the infringer's sales.” State Indus., Inc. v. Mor-Flo Indus., Inc., 883 F.2d 1573, 1577 (Fed. Cir. 1989). In a two-competitor market, plaintiffs may be able to establish an one-to-one correlation between lost sales and the alleged infringer's sales. Id. In other cases, courts rely upon the Panduit factors, where the patent owner must prove: “(1) demand for the patented product, (2) absence of acceptable noninfringing substitutes, (3) his manufacturing and marketing capability to exploit the demand, and (4) the amount of the profit he would have made.” Panduit Corp. v. Stahlin Bros. Fibre Works, 575 F.2d 1152, 1156 (6th Cir. 1978).

*7 The Supreme Court has framed the damages inquiry between competitors as “had the Infringer not infringed, what would [the] Patent Holder[ ] have made?” Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 507, 84 S. Ct. 1526, 12 L. Ed. 2d 457 (1964). Thus, the focus of the two most prevalent tests is not upon the alleged infringer's information, but information most likely within the custody and control of the patent owner or third parties. Indeed, the Federal Circuit has observed that an infringer's pricing and profit margin are not particularly relevant to the reasonable royalty calculation. Rite-Hite, 56 F.3d at 1555 (citations omitted). Similarly, the particular pricing, or specific manufacturing costs, or the identities of the third-party manufacturers, distributors, and/or customers do not appear particularly relevant to the estimation of damages at this point. And this court is also not persuaded that the information reflected upon specific invoices – such as the identity of the manufacturer or the terms of sales—are necessary to appropriately advise All Plastic regarding litigation strategy at this point or that All Plastic's desire to “assess[ ] its damages independent from counsel,” [#48 at 16] overrides Defendants’ concerns, particularly given the competitive sensitivities, the level of distrust between the Parties, and the fact that Defendants did not choose to be subject to litigation or discovery. Lastly, this court notes that the fact that a contract allows for disclosure to third parties under certain circumstances does not override this court's obligation to weigh the Parties’ competing interests or fashion appropriate terms for disclosure. [#48 at 13; #48-4].

Regardless of the damages Plaintiff seeks, this court finds that it is appropriate for Defendants’ sensitive internal business information that has been maintained as confidential, such as confidential customer, vendor, and manufacturing identities, cost inputs and confidential pricing, to be disclosed to a specially-retained expert, or approved non-specially retained expert, for review and analysis if outside counsel alone cannot appropriately calculate damages.[5] [#36 at 7]. Insofar as Plaintiff argues that it is required to know the identities of these third parties to determine whether or not to bring claims against them in their own right, it is axiomatic that discovery is not intended to afford a party an opportunity to seek information for an unasserted claim, or a yet-to-be filed case. See, e.g., Cuomo v. Clearing House Ass'n, LLC, 557 U.S. 519, 531 (2009) (observing that “[j]udges are trusted to prevent ‘fishing expeditions’ or an undirected rummaging through [materials] for evidence of some unknown wrongdoing”). The continued AEO protection of this information also seeks to prevent any side or additional conflict that might arise from inadvertent disclosure. Cf. UCC Ueshima Coffee Co. v. Tully's Coffee Corp., No. C06-1604RSL, 2007 WL 710092, at *2 (W.D. Wash. Mar. 6, 2007) (recognizing that permitting disclosure of a party's list of business contacts directly to representative of a direct competitor could harm a party “[r]egardless of whether defendant actively uses the information”).

There is an exception to the conclusion that all commercially sensitive data be shielded, at this juncture, from Plaintiff's representatives. The total number of allegedly infringing units (but not the supporting documentation) sold by Defendants is necessarily part of the foundation for a lost profit or reasonable royalty calculation and this court finds that this total number alone is necessary for Plaintiff to understand and ascertain the magnitude of potential damages for the purposes of litigation and settlement. Thus, this court concludes that Plaintiff's counsel should be permitted to disclose, and update, the total number of alleged infringing units in accordance with the “Confidential” designation under the Protective Order. And while Plaintiff has raised the issue of convoyed sales[6] [#48 at 17], this theory of damages has yet to be developed in any meaningful way and it not plainly evident to this court at this juncture that any of Defendants’ other products are appropriately characterized as convoyed sales. Nevertheless, if Plaintiff establishes that convoyed sales are an issue, Plaintiff would also be permitted to understand the types and total number of units associated with such sales. Further, Plaintiff maintains the right to seek down-designation of other specific documents and/or information, first through conferral with opposing counsel and next through the provisions of the Protective Order. [#36 at ¶ 24]. While this court recognizes that this mechanism places responsibility upon a party to seek relief from the court if the disclosing party disagrees as to the proper designation, this court notes that the burden of establishing the propriety of the designation remains with party seeking protection and focuses disputes on information and/or documents that are truly important for the litigation. And all the while, this court maintains authority under the Federal Rules of Civil Procedure and its inherent authority to address and sanction inappropriate designations (or refusals to down-designate) at whatever scale.

*8 Finally, before turning to the issue of document redactions, this court briefly addresses the other concerns raised by Plaintiff in its Motion to Compel regarding the accuracy and completeness of the financial data provided by Defendants and their counsel. Though this court hoped the Parties could avoid engaging experts for such analysis until after exhausting informal discussions, it is evident from the frequency and tone of the discovery disputes that the opportunity for resolution without formal discovery has likely passed. Further, this court finds it difficult to follow the incongruities identified by Plaintiff, see generally [#48]; the proffered explanation by Defendants regarding the invoices, see [#52 at 14–15]; and is disinclined to attempt to deconstruct the propriety of Defendants’ financial information disclosures based on attorney argument alone. Instead, this court concludes that Plaintiff's s substantive arguments regarding the accuracy of data provided by Defendants are more effectively raised to and addressed once other evidence, such as expert declarations or testimony from Defendants, are also available for the court's consideration. But this court specifically advises all Parties that to the extent that this action moves toward trial, this court may not allow continued designation of this data as “Confidential-Attorney's Eyes Only” due to its adoption of the principle that “[c]ourts are public institutions which exist for the public to serve the public interest. Even a superficial recognition of our judicial history compels one to recognize that secret court proceedings are anathema to a free society.” M.M. v. Zavaras, 939 F. Supp. 799, 801 (D. Colo. 1996).

II. Redactions for Relevancy

Plaintiff contends that its requests for production were appropriately tailored to obtain documents relevant to the instant action by limiting the production to those including a scent vent and magnification window. [#48 at 16]. But Defendants appear to have imposed their own limits by further narrowing their collection of responsive documents under a “relevance” lens by “performing a keyword search and pulling any document that had the word Jetpack or Budbar or All Plastic” contained therein. [Id.]. According to All Plastic, the Defendants unilaterally created a third tier of designations in this case by redacting portions of documents otherwise discoverable based on an “arbitrary definition of relevance,” including all evidence related to Quasar, Payload, and Gas Giant products, and associated invoices. [#48 at 15]. Defendants counter that it has produced all relevant documents and only redacted non-discoverable information. [#52 at 11–13].

Objections to discovery requests under Rule 34 must be made with “specificity” and “an objection must state whether any responsive materials are being withheld on the basis of the objection.” Fed. R. Civ. P. 34(b)(2)(B)-(C). The responding party has the obligation to explain and support its objections. Witt v. GC Servs. Ltd. Partnership, 307 F.R.D. 554, 561 (D. Colo. 2014). Unlike Rule 30(c)(2), which governs deposition objections and precludes all objections other than ones to maintain privilege, Rule 34(b)(2)(C) governs objections to requests for production and has no such restriction. Based on the interplay of Rule 34 and Rule 26(b)(1), some courts have found that redaction of irrelevant material is an acceptable means of interposing such an objection and a better alternative than not producing documents in their entirety. See, e.g., Spano v. Boeing Co., No. 3:06-CV-00743DRHDGW, 2008 WL 1774460, at *2 (S.D. Ill. Apr. 16, 2008).

Other courts, including those within the Tenth Circuit, have held that redactions to otherwise discoverable documents are entirely inconsistent with Rule 34, see Ullman v. Denco, Inc., No. 214CV00843SMVGBW, 2015 WL 11111288, at *1 (D.N.M. Sept. 17, 2015) (finding that relevance as a basis for redaction would be improper because the relevance of a document sought pursuant to Rule 34 is determined once, as a single unit); HR Tech., Inc. v. Imura Int'l U.S.A., Inc., No. 08-2220-JWL, 2010 WL 4792388, at *6 (D. Kan. Nov. 17, 2010) (rejecting relevance as a basis for redactions under Rule 34); Orion Power Midwest, L.P. v. Am. Coal Sales Co., No. 2:05-CV-555, 2008 WL 4462301, at *2 (W.D. Pa. Sept. 30, 2008) (holding that “there is no express or implied support for the insertion of another step in the process (with its attendant expense and delay) in which a party would scrub responsive documents of non-responsive information”).

Still other courts fall along the spectrum. Considering whether redactions are appropriate, such courts have held that a party redacting information on otherwise discoverable documents bear the burden to show why redactions are proper and necessary, particularly in light of an entered protective order. See McNabb v. City of Overland Park, No. 12-CV-2331 CM/TJJ, 2014 WL 1152958, at *4 (D. Kan. Mar. 21, 2014). Finding no binding authority from either the Tenth Circuit nor the District of Colorado, this court is persuaded by the articulation the United States District Court for the Northern District of Ohio:

Beverage Distributors, Inc. v. Miller Brewing Co., No. 2:08-CV-1112, 2010 WL 1727640, at *4 (S.D. Ohio Apr. 28, 2010).

Quasar, Payload, and Gas Giant products. Plaintiff argues that Defendants have improperly excluded information about their Quasar, Payload, and Gas Giant products that should be encompassed by its discovery requests that seek information regarding products with “scent vent” and “display” consistent with its definition of “JetPack.” [#48 at 9; #50-12]. Defendants insist that they have produced documents reflecting the term “JetPack,” along with “All Plastic” and “Budbar.” [#52 at 12]. Respectfully, both arguments fail to address whether information and documents regarding Quasar, Payload, and Gas Giant are relevant and/or already included in the production.

On one hand, the only accused products identified in the operative Amended Complaint are the JetPack and the Jetpack Infinity. [#20 at ¶ 27]. There is no mention of the Quasar, Payload, or Gas Giant Products. See generally [id.]. Because they are not filed with the court, it is unclear whether the Parties identified these three additional products in its infringement contentions and claim charts due no later than October 1, 2020. [#31 at 5].

On the other hand, it appears that the Quasar, Payload, and Gas Giant products are distinct from the JetPack products [#50-12], and there is no argument that they are subsumed by the tern “JetPack.” [#52]. There is also no suggestion that information about these additional products would be captured by terms associated with Plaintiff, i.e., “Budbar” and “All Plastic,” when they are Defendants’ products. Thus, Defendants’ Response that they produced all documents reflecting “JetPack,” “Budbar” and “All Plastic,” and their associated families [#52 at 12], does not address whether documents have been properly withheld or redacted.

Without further information, this court cannot ascertain the relevancy of the redactions. For instance, there is no evidence from either side as to whether the Quasar, Payload, and Gas Giant products are offered for sale in the United States or whether they fall within the claims of the ‘834 Patent. Comparison of the redacted documents [#50-11] with the unredacted versions provided by Defendants for in camera review cannot answer those questions. And the time and resources required for the court to intervene to adjudicate this discrete issue, the appropriate designation of marketing materials, potential issues regarding convoyed sales, and the frequency and tenor of the other discovery disputes raised to date, underscore the conclusion that redactions for relevancy are simply untenable in this action because it inserts another step in the process, with its attendant expense, delay, and invitation for further discord.

Thus, the court ORDERS Defendants to produce UNREDACTED copies of all documents that have been redacted on the basis of lack of relevance no later than February 26, 2021. Defendants may maintain “Confidential – Attorney's Eyes Only” designations if appropriate under the Protective Order and consistent with this Order.

III. Additional Issues

A. Custodians Omitted from Production

*10 Based on Defendants’ representations in the Response that they have searched and produced documents “regardless of custodian and produced those results in December,” [#52 at 13], and Plaintiff's admission that it had not substantively reviewed the production [#48 at 19], this court does not pass substantively on this issue. The court trusts that in the intervening month, Plaintiff has had an opportunity to review the production. To the extent that there are specific concerns regarding omitted custodians, the Parties are directed to meet and confer and raise such issue, if necessary, to the court no later than February 26, 2021.

B. Business Entity Information

The court next turns to the Parties’ respective arguments regarding the discoverability of business entity information, including but not limited to tax records. [#50 at 19; #52 at 13]. It appears that Defendants’ main contention is that business entity records including tax records are not discoverable because they are not relevant. This court respectfully disagrees, as it has determined that dismissal of the Individual Defendants is not warranted at this juncture. [#57]. In addition, the Tenth Circuit and courts in this District have considered whether entities have submitted certain tax filings in discerning whether piercing the corporate veil is appropriate. See Mackey v. Burke, 751 F.2d 322, 327 (10th Cir. 1984) (noting evidence of failure to pay the annual franchise tax reflects a failure to maintain corporate formalities); Echostar Satellite Corp. v. Ultraview Satellite, Inc., No. 01-CV-00739-JLK, 2009 WL 1011204, at *9 (D. Colo. Apr. 15, 2009) (noting that the filing of separate tax returns suggests that corporate formalities were followed). See also Vincent v. Lindsey Mgmt. Co., No. 12-CV-210-JED-PJC, 2013 WL 6732661, at *10 (N.D. Okla. Dec. 19, 2013) (granting summary judgment based on undisputed evidence showing that the parties filed tax returns individually and separately from the corporate entity). Thus, Defendants shall RESPOND to any outstanding discovery seeking business entity information, reserving the right to make appropriate objections based on privilege, no later than February 26, 2021.

C. Limited Production of Invoices/Orders

As discussed above, see supra Section I.D, this court has insufficient evidence to determine whether invoices and orders have been improperly withheld. Thus, this court does not pass on this issue substantively.

D. Conferral Requirements

Finally, this court acknowledges that counsel in this matter is attempting to zealously represent their respective clients. Rule 37(a)(1) of the Federal Rules of Civil Procedure and Local Rule of Civil Practice 7.1(a) contemplate a robust meet-and-confer process. Fed. R. Civ. P. 37(a)(1); D.C.COLO.LCivR 7.1(a). The Local Rule specifically directs the attorney for the moving party to “confer or make reasonable good faith efforts to confer with any opposing counsel or unrepresented party to resolve any disputed matter.” D.C.COLO.LCivR 7.1(a). The purpose of the Rules is to prompt the Parties to actually discuss, in a meaningful manner, whether compliance, or a compromise, may be reached without court intervention. Equally significant to this court is that “one of the many reasons why Rule 7.1[(a)] is in place is to encourage and maintain civility between and among counsel.” See Visor v. Sprint/United Mgm't Co., Case No. Civ.A. 97–K–1730, 1997 WL 796989, *2 (D. Colo. Dec. 31, 1997).

This court recognizes the difficulties in a hard-fought action. But it also encourages counsel to be mindful of the Colorado Principles of Professionalism that provide: “as licensed professionals, we understand that the law is more than a business; it is also a calling.... We understand and accept our role in the American justice system.” Colorado Principles of Professionalism (2011). The de-escalation of conflict is essential to the fair and efficient adjudication of this action and confidence in the civil justice system as a whole. This court is optimistic that, by redirecting some efforts, counsel in this matter can be leaders in that right.

*11 For the reasons stated herein, IT IS ORDERED that:

Plaintiff's Motion to Compel and attachments thereto are filed in redacted form at docket entry [#48; #48-1 through #48-14]. This court previously granted Level 1 Restriction to the unredacted Motion to Compel [#48] and the unredacted attachments thereto [#48-1 through #48-14], except as to [#48-3] and [#48-9]. [#51, filed January 12, 2021]. For clarity and simplicity, this court refers to the publicly-available version of the Motion to Compel [#48].

The court notes that the Response is submitted on behalf of Defendant “Samdan LLC, d/b/a Smokus Focus “Smokus”)” only, to the exclusion of Messrs. Whetsel and Russell-Einhorn, see [#52 at 1], but that defense counsel also submits a Declaration “in Support of Defendants’ Opposition to Plaintiff's Motion to Compel” [id. (emphasis added); #53], and interchangeably refers to “Smokus” and “Defendants” throughout the Response.

In this instance alone, this court refers to the Bates number of the document from the original production because the page number assigned by the court's Electronic Court Filing (“ECF”) system has been obscured by the manner in which the document has been repeatedly filed. Otherwise, the page number refers to that assigned by the ECF system.

Another, less prominent method to calculate a reasonable royalty is referred to as the “analytical method,” which focuses on the infringer's projections of profit for the infringing product. See Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1296 (Fed. Cir. 2015); Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1324 (Fed. Cir. 2009) (citing TWM Mfg. Co. v. Dura Corp., 789 F.2d 895, 899 (Fed. Cir. 1986)).

The same will hold true if Defendants seek Plaintiff's sensitive business information, such as license agreements.

Though Plaintiff suggests it would be entitled to discovery regarding the sales and marketing of all accessories “that may be sold because of the infringing sales,” [#48 at 17], it later implicitly acknowledges that the controlling case law does not define “convoyed sales” so broadly. Instead, “[a] convoyed sale refers to the relationship between the sale of a patented product and a functionally associated non-patented product. A patentee may recover lost profits on unpatented components sold with a patented item, a convoyed sale, if both the patented and unpatented products together were considered to be components of a single assembly or parts of a complete machine, or they together constituted a functional unit.” Am. Seating Co. v. USSC Grp., Inc., 514 F.3d 1262, 1268 (Fed. Cir. 2008) (internal quotation marks omitted). Thus, without at least a prima facie showing that these additional accessories, such as “security tethers, anti-tamper seals, [or] locking rings” are “considered to be components of a single assembly or parts of a complete machine, or they together constituted a functional unit,” this court cannot conclude on the record before it that Defendants have improperly withheld such information.